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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 nationwide 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 TO LOCATE?

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.

 


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