The United States Patent Office qualifies persons to represent clients in their applications for patents and related activities before the Office. These persons are assigned a Registration Number and referred to as “Registered Patent Practitioners”. Each practitioner must either have worked as an examiner in the Office for a period of time or else must have passed a very rigid “Patent Bar Exam”. If the practitioner has passed the exam and is a lawyer specializing in any discipline (Criminal law, Housing law, Securities law, etc), then he will be added to the USPTO’s Roster of registered practitioners as a Patent Attorney. Otherwise he will be added to the Office’s Roster as a Patent Agent. The Patent Office does not otherwise significantly distinguish between Patent Agents and Patent Attorneys and all rules, requirements, and qualifications of registration with the Office are identical for Agents and Attorneys.
Agents will typically, but not always, charge a lower fee than attorneys. In deciding who to hire, you should consider whether an attorney’s sometimes-unrelated legal standing justifies paying more than an equally or more qualified Agent for your particular circumstance. Patent Agents and Patent Attorneys (Patent Lawyers) have exactly the same qualifications to practice and represent inventors before the US Patent Office, so if any Patent Attorney tells you that his/her status as an attorney makes him/her more qualified to represent you before the Office than a registered Patent Agent, he/she is not being truthful. In fact, many Patent Agents are far more competent and experienced than many Patent Attorneys.
Patents are by nature very technical instruments, and while a Patent Attorney may have a technical degree too, he/she will likely have spent years learning aspects of State and Federal Laws that never come into play during the patenting process. But, in my experience, Patent Agents are often more purely focused on engineering and their technology of expertise and the patent laws related to it. If you have invented an improvement in wireless communication technology, is a Patent Attorney who has a Chemical Engineering degree and a degree in Real Estate Law going to understand and articulate your improvement better than a Patent Agent who has a PhD in Wireless Communications?
The main difference between an Attorney and an Agent lies in the fact that, as a member of a State Bar, the attorney can also represent you in other legal activities, such as registering a trademark, executing licenses, giving legal advice and opinions, etc. The attorney may also be able to assist you with other aspects of your business, such as counseling on non-IP matters. But most Agents will have an associated attorney to provide those services to their clients on an as-needed basis, without having to pay for the availability of those rarely-needed services all the time.
Attorneys may explain that they may also represent you if you need to litigate over a patent (assert your patent against an infringer or defend against an infringement claim from another patentee). But in my experience, using the same attorney or firm to litigate a patent that he/she prosecuted is rare… and oftentimes ill-advised. Patent litigators are a very specialized breed that rarely get involved with prosecuting patent applications before the Office. They are typically good at litigating because of their courtroom skills… not their technical skills. In fact, the best patent litigators I have known were not even Patent Attorneys… They were not registered with the Patent Office. And you should be mindful of the conflicts that can arise when you hire the same attorney or firm to litigate a patent that had written and obtained it.
The bottom line is that you should carefully select a Registered Patent Practitioner based on his expertise in the field of your invention, as well as your budget. Select an attorney if you need services that require an attorney, but don’t be misled into thinking that those services are required to best prepare and prosecute your patent application. In other words, you should give the most weight to the specific skills of the particular individual rather than to whether he is an attorney or an agent.