Patent Agent Explained: Role, Process, and Requirements Guide

What Is a Patent Agent?

A patent agent, also known as a patent practitioner, is a professional licensed by the United States Patent and Trademark Office (USPTO) to advise on and assist inventors with patent applications. Patent agents can give patentability opinions and help prepare and file patent application documents. They act similarly to patent attorneys, but they have legal limitations.

Patent agents assist inventors with completing and submitting all patent-application paperwork, searching for prior art, writing the inventor's legally enforceable claims of ownership to the invention, revising rejected patent applications, and deciding when it's best to abandon an application.

In 2021, more than 48,000 people were registered as patent attorneys and agents in the U.S., and over 36,000 of them were also licensed attorneys. Patent attorneys are patent agents who also practice law. One can search for a licensed patent agent at the USPTO's website. The USPTO recommends engaging patent agents or attorneys due to the complexity of patent law.

The Role and Functions of Patent Agents

The USPTO suggests hiring a patent attorney or agent due to the complex legal process of patent applications. In the United States, patent agents can perform many of the same tasks as patent attorneys, including representing clients before the USPTO. However, unlike patent attorneys, patent agents cannot represent clients in other legal settings, such as prosecuting a patent infringement in court.

Differences Between Patent Agents and Patent Attorneys

Clients needing help with filing a patent application can hire a patent agent to save money, as they only pay for the necessary expertise. Although not widely recommended, it's possible to file a patent application pro se, or without professional help. Someone who has considerable free time and sufficient interest to learn about and manage the complexities of the process might choose the do-it-yourself route.

The right patent agent needs expertise in the invention's subject and should have experience with the applicant type, whether individual or corporate. If an inventor does hire a patent agent rather than represent themselves, the USPTO will only communicate with the agent regarding the filed patent application.

Qualifications and Requirements for Patent Agents

While patent agents are not required to have completed law school or passed the state bar exam, they must have passed the USPTO's "patent bar exam," which is formally called the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office. A patent agent might be a current or former university professor; many patent agents have advanced degrees. Patent agents sometimes work for law firms and assist patent attorneys in preparing cases. However, as agents, they cannot represent clients in a regular courtroom. 

The USPTO registration examination measures an applicant's knowledge of U.S. patent procedures, federal rules, regulations, and ethical guidelines. The exam, which features 100 multiple-choice questions, is offered year-round. Candidates have six hours to complete the test, which is divided into three-hour morning and afternoon sessions of 50 questions each. 

The Bottom Line

Patent agents are crucial professionals for navigating the complexities of patent applications, licensed by the USPTO to assist inventors. It's cost effective to hire a patent agent over a patent attorney for those who are specifically focused on filing patent applications, although agents have limitations regarding legal representation outside of the USPTO. Patent agents are not required to have a legal background, but passing the USPTO patent bar exam is mandatory, underscoring their expertise in patent law procedures.

It's important to select a patent agent with subject-matter expertise relevant to the invention and experience with the type of client. There are several potential challenges in self-filing patent applications and professional help is recommended due to the complexity of the patenting process.