Menlo Park Patents Blog:

Making the right choices in your startup or new business venture can determine if you spend more of your capital or not. Afterall, every business is always fighting to keep their doors open. Who you choose to handle protecting your innovation with a patent matters and can determine the short term and long term costs your business will pay. Whether you’re an West Coast inventor or entrepreneur in Menlo Park, California or East Coast based in New York City, you may wonder whether to hire a patent agent or a patent attorney to help with gaining patent protection for your innovation. Understanding the differences can save an entrepreneur or founder of a startup time and money while ensuring strong patent protection.

The United States Patent and Trademark Office (USPTO) does not require a state law license to practice at the USPTO.  A law license does not help a practitioner draft a patent, file a patent, prosecute a patent, defend a patent at the USPTO Trial and Appeal Board or negotiate with an examiner. At the USPTO all practitioners are equally qualified whether they are patent agents or patent attorneys. So why does the USPTO have patent agents and patent attorney designation.  The answer is trademarks.  To represent a client in a trademark application you must be an attorney. Trademarks are not patents and are a different type of intellectual property.  Patent agents provide specialized expertise in the technical aspects of patents which allows inventors to forgo hiring a costly lawyer.

What is the difference between a patent attorney and a patent agent?  

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The requirements for practicing at the USPTO are identical for both patent agents and patent attorneys.  Both must have a technical degree: BS, MS, or PHD in a technical field and they must pass the Patent Bar Exam to be registered to practice by the United States Patent and Trademark Office (USPTO).  A patent attorney besides being a patent agent are also state licensed lawyers.  This means that they can practice law and give legal advice with respect to the state or territory where they are licensed to practice.  This does not help them with any activities at the USPTO and if your patent is contested you would be well advised to find the best litigator who has experience defending or prosecuting patents in your field at the specific court where the legal action is being heard.

The difference between a patent agent and patent attorney can be summarized as follows:

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From the comparison above it is obvious that a patent agent can do everything with respect to the patent prosecution process that a patent attorney can do at a significantly lower cost.

However, most patent agents have several years of experience in the specific field you are trying to secure a patent in and have worked on products that use similar technology. Lawyers have spent a long time learning the laws of the specific state they are licensed in and usually have less actual experience with technology than a patent agent. The old adage holds true here if you want to build a house better, hire a carpenter and not a building inspector.

Both patent agents and patent attorneys are licensed to practice at the USPTO with regards to writing, filing and prosecuting a patent which leads us to the question: “Why spend more of your capital with a patent attorney?”

If you need a non-disclosure agreement or a trademark you should contract for the services of a suitable business lawyer who specializes in these types of services or a copyright/trademark service company that can help you file your copyright or trademark for a significantly lower fee.  

Check out our partner WizardIP for a low cost and informative solution to protecting your brand!

By doing so you do not pay a higher rate for patent services and you can selectively pay different rates for different levels of service when you need them.  Many patent agents have relationships with business consultants and copyright and trademark service providers which will make it easy for founders or entrepreneurs to source these additional services.

The patent process: What you do and what your patent agent does?

The dilemma faced by all entrepreneurs and inventors is if their patent will be challenged in court. This is the primary argument used by patent attorneys to justify their higher fees.

Let’s look at some facts and determine the probability of your patent being challenged in court.

The following table looks at the number of patent applications filed in the US and the number of patents challenged either in court or at the Patent Trial and Appeal Board (PTAB) on an annual basis.  Note that  Patent Agents in the United States are authorized to practice in patent prosecution matters before the USPTO.  The authorized practice includes both preparation and prosecution of patent applications as well as appeals and AIA review proceedings before Patent Trial and Appeal Board (“PTAB”).  Many of the following disputes were proceedings at the PTAB and could easily be handled by your patent agent.

Specifically, in the 21^st century nearly 60% of all new court cases involved high-tech companies. High-Tech = Technologies relating to software, hardware, medical and networking. If your invention is outside of this area, then the probability your invention will be challenged is extremely small. Remember the statistics are over stated because a patent can be contested over the life of the patent which is 20 years and that makes the calculation of the percentage of new disputes versus filings for the year even smaller. For example if we look at 2021 the total number of patents filed during the 20 year period between 2000 and 2020 is approximately  10,146,287.  Using the disputed total number of 5204 the percent of new disputes versus filings is actually 0.005% which is an insignificant number.

If one looks at the statistics, then we start to realize that the probability of your patent being challenged is very low.  So why would you pay a high hourly rate for every aspect of your intellectual property needs when you can conserve your cash and get the same service from a licensed patent agent. A patent agent can provide you with all the services that you need for a significantly lower cost.  If you are ever challenged then you can always secure the services of an attorney to defend your patent in court.

Let’s look at the average cost and see what you can save.

As with any new startup, or business, saving and ensuring that your capital is well spent is of great importance. Particularly with startups as capital can run out very quickly. Therefore, by using a patent agent you can get the same or better service for your patent prosecution at the USPTO and save money.  

At Menlo Park Patents, we often say that we are most competitively priced firm in the nation, and that is for good reason.  Many of our clients have chosen our team as we produce quality, and help startups and founders decrease the initial investment into their high risk ventures.