Frequently Asked Questions about Federally-Licensed Patent Attorneys
1. What is a Federally-Licensed Patent Attorney?
Patent law in the United States is federal law. A Federally-Licensed Patent Attorney is federally registered to practice before the United States Patent and Trademark Office as a result of having achieved one or more technical qualifications and passing the Examination for Registration to Practice Before the United States Patent and Trademark Office (also known as the “Patent Bar Exam”). Thus, a federally-licensed patent attorney is licensed to represent clients in preparing, filing and prosecuting patent applications before the USPTO. Additionally, a patent attorney in the United States may render patentability opinions, and may represent clients in all aspects of intellectual property, such as patent preparation and prosecution, including post-patent-issuance procedures, such as reexaminations, patent litigation and patent licensing.
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2. What is the difference between a Patent Attorney and a Patent Agent?
The United States enjoys two primary types of patent practitioners, the patent attorney (or patent lawyer) and the patent agent. Patent attorneys and patent agents are both federally registered to practice before the United States Patent and Trademark Office as a result of having achieved one or more technical qualifications and passing the Examination for Registration to Practice Before the United States Patent and Trademark Office (also known as the “Patent Bar Exam”). Thus, both patent attorneys and patent agents are licensed to represent clients in preparing, filing and prosecuting patent applications before the USPTO. Additionally, patent attorneys and patent agents in the United States may also render Patentability Opinions, as decided by the United States Supreme Court in Sperry v. Florida (373 U.S. (1963).
An important distinction between a patent attorney and a patent agent arises from the rendering of legal opinions related to patents, however. As recently stated by the USPTO in its Rules of Ethics and Professionalism (effective September 15, 2008), patent agents may not provide a legal “opinion of validity of another party’s patent when the client is contemplating litigation and not seeking reexamination” because such activity “could not be reasonably necessary and incident to the preparation and prosecution” of a client’s patent. Therefore, it is extremely important for clients to closely examine and forecast the purpose of any opinions they seek to obtain. Finally, a patent attorney can represent their clients in all forms of litigation and before any court where they are licensed to practice, whereas patent agents are relegated to matters before the USPTO.
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3. Why is it better to retain a firm located near the USPTO?
While the USPTO is located in Alexandria, Virginia, just outside of Washington, D.C., California has the largest number of patent attorneys and agents, followed by New York and Texas. Additionally, and excluding Washington, DC, Delaware has the largest number of attorneys and agents per capita. The challenge faced by patent attorneys and agents across the country, however, is that they lack proximity to the USPTO, making it extremely difficult and expensive for them to arrange examiner interviews, or face-to-face meetings with the patent examiners working at the USPTO.
Thus, a firm located near the USPTO has the advantage of being able to quickly and efficiently contact and meet with patent examiners to promote the prosecution of their patent applications, saving clients significant travel costs and time.
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