What Does a Patent Attorney Do? The Work, the Scope and the Path

A patent attorney does not have to do all of these, and our job board lists openings by practice: patent prosecution jobs and patent litigation jobs.

Sources: 37 C.F.R. § 11.5; 35 U.S.C. § 134, § 141, § 261, § 302, § 311; 28 U.S.C. § 1338.

"Prosecution" is the process of obtaining a patent from the USPTO. The USPTO's rule on practice in patent matters, 37 C.F.R. § 11.5(b)(1), lists the core tasks:

• Advising before filing: consulting with the client in contemplation of filing, including whether to rely on other forms of protection available under state law.
• Drafting: writing the specification and the claims of the application.
• Office action responses: when an examiner rejects a claim or makes an objection or requirement, the USPTO must state its reasons (35 U.S.C. § 132(a)). The attorney drafts an amendment or a reply with written argument for patentability. An amendment may not introduce new matter.
• Appeals: an applicant whose claims have been twice rejected may appeal to the Patent Trial and Appeal Board (PTAB) (35 U.S.C. § 134(a)), and from the Board's decision to the U.S. Court of Appeals for the Federal Circuit (§ 141(a)).
• Other papers: petitions, interference and derivation papers, and reexamination filings.

Deadlines drive the work. If the applicant fails to prosecute within six months after an office action, or within a shorter period of at least 30 days that the USPTO sets in the action, the application is abandoned (35 U.S.C. § 133). The applicant can also request continued examination of the application (§ 132(b)).

Sources: 37 C.F.R. § 11.5; 35 U.S.C. § 132, § 133, § 134, § 141.

After a patent issues, patent attorneys represent petitioners who want claims cancelled and patent owners who defend them:

• Inter partes review (IPR): a petition by someone other than the patent owner, limited to grounds under §§ 102 and 103 and to prior art consisting of patents or printed publications, filed after the later of nine months from grant or the end of an instituted post-grant review (35 U.S.C. § 311).
• Post-grant review (PGR): any invalidity ground under § 282(b)(2) or (3), but only within nine months after grant or reissue (§ 321).
• Ex parte reexamination: any person may request it at any time, on the basis of prior art cited under § 301 (§ 302).

In PTAB trials, a represented party must name a lead counsel and at least one back-up counsel, and lead counsel must be a registered practitioner (37 C.F.R. § 42.10(a)). The Board may admit other counsel pro hac vice, for example an experienced litigating attorney who is not registered, if lead counsel is registered (§ 42.10(c)). The two main trials are compared in IPR vs. PGR, and the PTAB is set against court in PTAB vs. district court.

Sources: 35 U.S.C. § 302, § 311, § 321; 37 C.F.R. § 42.10.

Whoever without authority makes, uses, offers to sell or sells a patented invention in the United States, or imports it, during the patent's term infringes the patent; so does whoever actively induces infringement, and certain sellers of components are liable as contributory infringers (35 U.S.C. § 271(a) to (c)).

Federal district courts have original jurisdiction of civil actions arising under the patent laws, and no state court has jurisdiction of those claims (28 U.S.C. § 1338(a)). Appeals go to the Federal Circuit (28 U.S.C. § 1295(a)(1)), which also hears appeals from the PTAB (§ 1295(a)(4)(A)).

Litigation is where the attorney's bar membership matters. The Supreme Court explained in Sperry v. Florida that USPTO registration "does not authorize the general practice of patent law, but sanctions only the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications." Representing a party in an infringement suit is outside that grant, so it is work for lawyers.

Sources: 35 U.S.C. § 271; 28 U.S.C. § 1338, § 1295; Sperry v. Florida, 373 U.S. 379 (1963).

Clients ask patent attorneys whether a product infringes someone else's patent, whether a patent is valid, and whether an invention is better protected by a patent or by state law, such as trade secret protection. Patent registration covers advising a client in contemplation of a filing and considering alternative protection under state law (37 C.F.R. § 11.5(b)(1)).

An opinion of counsel is a choice, not a duty: under 35 U.S.C. § 298, an accused infringer's failure to obtain the advice of counsel, or to present it to the court or jury, may not be used to prove willful infringement or intent to induce infringement.

Sources: 37 C.F.R. § 11.5; 35 U.S.C. § 298.

Patents have the attributes of personal property. Applications and patents are assignable by a written instrument, and an owner may grant an exclusive right to the whole or any specified part of the United States (35 U.S.C. § 261). Patent attorneys draft and negotiate these assignments and licenses, often as part of a financing, acquisition or settlement.

Recording matters: an assignment, grant or conveyance is void against a later purchaser or mortgagee for value without notice unless it is recorded at the USPTO within three months from its date or before the later purchase or mortgage (§ 261).

Here too the scope differs. Registration alone lets a practitioner draft an assignment only in a narrow case: for the patent owner, in contemplation of filing or prosecution, replicating the terms of an obligation to assign that already exists (37 C.F.R. § 11.5(b)(1)(ii)).

Sources: 35 U.S.C. § 261; 37 C.F.R. § 11.5.

Registration entitles a person to practice before the USPTO only in patent matters (§ 11.5(a)). In Sperry, a Florida patent agent who was not a lawyer had been sued by the Florida Bar for the unauthorized practice of law. The Supreme Court held that Florida may not stop a registered practitioner from performing tasks "incident to the preparation and prosecution of patent applications", because federal law authorizes that practice, but that the state otherwise keeps control over the practice of law within its borders.

More on the choice is in patent agent vs. patent attorney.

Sources: 37 C.F.R. § 11.1, § 11.5, § 11.6, § 11.7, § 11.14; Sperry v. Florida.

• Law firms: prosecution, PTAB and litigation practices. See patent attorney jobs.
• In-house: companies hire patent attorneys into their own legal departments. See in-house patent jobs on our board.
• Government: the USPTO itself hires patent attorneys; a "Patent Attorney" opening in Alexandria, Virginia was on its jobs page on October 18, 2026. The USPTO also hires scientists and engineers as patent examiners.

A former USPTO employee who goes into practice must sign an undertaking not to represent others on matters they worked on personally and substantially at the Office, and for two years on those pending under their official responsibility in their last year (37 C.F.R. § 11.10(b)). For pay, see our patent salary data, drawn from the ranges stated in postings on our own job board.

Sources: USPTO jobs; 37 C.F.R. § 11.10.

1. Meet the scientific and technical requirement (§ 11.7(a)(2)(ii)); the qualifying degrees and coursework are in patent bar requirements.
2. Pass the USPTO registration examination (the "patent bar"), unless OED waives it for a qualifying former USPTO employee (§ 11.7(b)(1)(ii), (d)).
3. Show good moral character and reputation (§ 11.7(a)(2)(i)).
4. Become an attorney: an active member in good standing of a state bar (§ 11.1). Then register as a patent attorney (§ 11.6(a)).

A registered patent agent who later becomes an attorney may ask to be registered as a patent attorney (§ 11.7(l)), so the two credentials can come in either order. The full path, with fees and timing, is in how to become a patent attorney.

Sources: 37 C.F.R. § 11.7, § 11.6, § 11.1.

• "Any lawyer who handles patents is a patent attorney." A lawyer may represent others before the USPTO in patent matters only if registered under § 11.6, given limited recognition, or admitted pro hac vice in a Board proceeding (§ 11.10(a)).
• "A patent agent can do everything a patent attorney does." Agents prosecute patents and practice at the PTAB, but registration does not authorize trademark practice (§ 11.14(b)) or the general practice of patent law (Sperry).
• "Patent registration lets an attorney handle trademarks." It does not by itself (§ 11.14(a)); a lawyer may practice in trademark matters because they are an attorney.
• "Without an opinion letter, infringement is willful." Not by itself: § 298 bars using the absence of advice of counsel to prove willfulness.

Sources: 37 C.F.R. § 11.10, § 11.14; Sperry v. Florida; 35 U.S.C. § 298.