PATENT LAWYER & AGENT DIRECTORIES
FREQUENTLY ASKED QUESTIONS
1. HOW DOES A PATENT ATTORNEY DIFFER FROM A PATENT AGENT?
The U.S. Patent & Trademark Office determines who, other than an inventor for
himself, can prepare and prosecute patent applications nationwide before that
federal agency, including
administrative appeals and post-grant procedures within the PTO. The PTO licenses a U.S. citizen, or U.S.
resident, who demonstrates sufficient scientific training and passes a PTO
examination as a "patent agent" (25%); but one also a lawyer in some state is licensed
as a "patent attorney" (75%). The names, addresses and phone numbers
of all active patent attorneys and agents are maintained in a PTO Register (also
called "Roster"), now searchable online over the internet.
The PTO waives its examination for former PTO employees with at least four years
patent examining experience; many agents and attorneys have become licensed this
way. Also, a foreign patent attorney may be registered
without examination as a U.S. patent agent strictly for filing and prosecuting
patent applications of applicants located his country, provided that country
offers U.S. patent agents and attorneys reciprocal privileges.
Because patent agents are not lawyers, they cannot conduct
litigation before courts, such as a patent application rejected by the PTO that
is appealed to a federal
court or a patent-related dispute litigated before a federal or state court. But a lawyer is not required to be a PTO-licensed patent
attorney to handle patent-related litigation before a federal or state court to
which the lawyer has been admitted; i.e., some lawyers doing patent-related
litigation aren't "patent attorneys" as that term is used by the PTO.
Moreover, a lawyer can advise and litigate on many intellectual property law
matters not involving patents, such as trade secrets, copyrights and internet
law, not normally within the testing and competence of a patent agent.
2. WHO CAN PROSECUTE U.S. TRADEMARK & SERVICEMARK APPLICATIONS?
The trademark branch of the PTO allows an owner, or an
officer in the case of an organization, to file and prosecute his U.S. trademark
or servicemark application. It requires any other representative of an
applicant to be a lawyer in some state. The PTO does not conduct an
examination for trademark lawyers or maintain a registry of them as it does for
patent agents and patent attorneys.
3. WHY ARE PATENT ATTORNEYS & AGENTS OFTEN DIFFICULT
Although agents and attorneys frequently move and change
affiliations and phone numbers, the PTO has been less diligent than most state
bar associations and commercial lawyer directories in requiring licensees to
keep their PTO Register listing current. Besides notoriously out of date
and full of typos, the PTO online Register does not provide a licensee's email
address or their employer's webpage. Moreover, because no error trapping
or style manual has been applied during data entry, address, phone and employer
records are difficult to search. Fortunately, as most (75%) licensees are
also lawyers, more current information can be found from
bar association and commercial lawyer directories; but patent agents are
frequently neglected in lawyer directories.