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Overview of this article:
- Patent agents and patent attorneys can both draft, file, and prosecute your patents at the USPTO.
- Patent agents and patent attorneys are both required to sit for the same examination to be licensed at the USPTO.
- Patent attorneys can provide legal advice.
Starting a new business comes with many decisions. Those decisions can involve choosing your target market, decisions on partners, or decisions on contractors. One of the most important contractors that is typically involved with a company from their conception to their exit are patent practitioners. Patents are used to “protect” how an invention works (utility) or how the invention looks (design). A patent practitioner is an individual that has passed the registration examination. Without going into much detail, that individual must have a technical degree in order to qualify and sit for the registration examination or “patent bar”. Attending a graduate law school program is not a requirement to sit for the patent bar.
Our team continues to hear the argument about who should you hire to help you file a patent at the USPTO. The answer can be simply answered once you have an understanding of the parties involved with patent drafting, or prosecution and additionally depends on what service you need. As we mentioned before, there are two types of patent practitioners: Patent Agents and Patent Attorneys. This is where the confusion starts and normally ends in the inventor paying a steep price. Doing the research first will help inventor’s understand what services are needed to pick the correct practitioner. To do so startup founders and inventors must understand the differences between the two types of licensed practitioners. Some companies try to convince the startup community that there is a third practitioner type called a patent examiners, but the USPTO only recognizes Patent Agents and Patent Attorneys. Patent examiners are those individuals who are employed by the USPTO to review and examine patent applications to determine the allowability of the claims. So, what is the difference between the two types of licensed practitioners? We detail that below!
What is a Patent Attorney?
A patent attorney is an attorney that has passed the patent bar exam and is licensed at the USPTO to write and prosecute patent applications, and file PCT applications with the USPTO as the receiving entity. The patent bar exam is a federal exam that grants them the right to represent clients before the USPTO. A patent attorney can also provide legal advice because they have passed a state bar exam and are licensed to practice law.
What is a Patent Agent?
A patent agent is a licensed professional that has passed the same patent bar exam as a patent attorney and is licensed at the USPTO to write and prosecute patent applications, and file PCT applications with the USPTO as the receiving entity. Their license allows them to do everything that a patent attorney can except provide legal advice.
Let us look at a typical timeline for patenting an invention. The process for a utility patent can either start with a provisional or non-provisional patent application. Once you file your provisional at the USPTO, the clock starts ticking. Inventors will then need to file a nonprovisional before the 12 month expiration date of the provisional. Sometime after the filing date of the nonprovisional, an examiner at the USPTO will review the application against several conditions and issue an office action. The office action must be responded to in order to maintain a patent pending status and avoid abandonment of the application. We outline the cost of patent protection here.
Now that the patent process has been overviewed, let’s compare what each patent practitioner is licensed to do.
If you are starting your company and developing your intellectual property you are a long way from litigation in a state or federal court or needing an infringement analysis. Patent agents can do everything a patent attorney can at the USPTO except provide litigation in a state or federal court and infringement analysis.
So as many wise men have told you, “Why buy the cow when you only need the milk?”
In most cases patent agents can accomplish the tasks you need at a more reasonable cost.
For example, if you hire an experienced patent attorney you can expect the hourly rates to be between $275 to $400 per hour in areas outside major metropolitan areas and somewhere between $400 to $800+ per hour in major metropolitan areas.
If you hire an experienced patent agent who has the USPTO license and qualifications, you can expect the hourly rates to be between $125 to $200 per hour in areas outside major metropolitan areas and somewhere between $150 to $225+ per hour in major metropolitan areas. It is important to realize, that whoever you choose, does not need to be geographically close to your office or home. The most qualified patent agents may not live in your state or area but can help you draft and file your patents.
It is always important to do your own due diligence on the patent agent or patent attorney you choose. Experience and customer service triumphs over anything. If you are looking for experience our founder, Joel Douglas, is the named inventor on 103 granted US patents, has taught entrepreneurship and intellectual property at Trinity College (Hartford, CT) and Florida Gulf Coast University. He has helped hundreds of inventors achieve their goal of obtaining patent protection. He oversees all the patent work at Menlo Park Patents and works with all our USPTO licensed patent agents.
Another benefit one can get from using an experienced patent agent is that they typically provide fixed fee services. They can do this because in most cases they do not work for law firms which usually are structured around a partnership that also adds cost.
At Menlo Park Patents, our structured methodology ensures that every invention receives a strong patent at an affordable and fixed rate. We do not charge for emails, telephone calls, letters, or have a retainer which are typical costs we see charged to clients by law firms.
For more information and to schedule a FREE 15-minute consultation visit us at: www.menloparkpatents.com
