Patent Attorney

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Patent Attorney

It is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition. The term is used differently in different countries, and thus may or may not require the same legal qualifications as a general legal practitioner.

The titles patent agent and patent lawyer are also used. The latter is generally used only if the person qualified as a lawyer.

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In the United States, practitioners may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to represent clients before the Patent Office part of the United States Patent and Trademark Office (USPTO). They may provide patentability opinions as well as prepare, file and prosecute patent applications for their clients before the Patent Office.

Patent attorneys, however, are also admitted to the practice of law in at least one state or territory (e.g., American Samoa) of the United States. Hence patent attorneys can additionally provide legal services outside the Patent Office. These services include advising a client on the legal matters related to the licensing of the invention; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement; whether someone is infringing upon the claims of a client's issued patent; and conversely, whether a client is infringing the claims of someone else's issued patent. Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the United States Patent and Trademark Office (USPTO).

In order to be registered as a patent agent or patent attorney, one must pass the USPTO registration examination [2]. This is a 100-question, multiple-choice test. The exam contains 10 performance questions which do not count towards the exam taker's final score. The required score to pass is 70%, or 63 correct out of 90, but only (on average) 40% of examinees attain this score. The examination is frequently referred to as the patent bar, but it is not necessary to have a law degree to sit for the exam.
The USPTO additionally requires that all candidates for registration have adequate scientific and technical training sufficient to provide valuable service to clients. This requirement is typically met with a bachelor's degree in a field of natural science or technology. These fields include applied mathematics, computer science, chemistry, physics, biology, or engineering. The technical training requirement can also be satisfied by passing the Fundamentals of Engineering exam (FE exam), or by demonstrating sufficient science coursework or applicable life experience. Degrees in the abstract sciences, or "soft sciences," such as sociology, are not sufficient by themselves to meet the technical training requirement.

Before June 2004, the USPTO registration exam was a pencil-and-paper test given at approximately 15 locations around the country. The USPTO has moved to a computer-based examination, which can be taken on any business day at any of several hundred locations around the country. Once applicants have been approved to sit for the exam, they have 90 days in which to schedule an examination date with the USPTO contractor that administers the exam. The pencil-and-paper test is still offered once a year at the USPTO's office. The examination is intended to measure the applicant's familiarity with USPTO procedures, ethics rules, federal statutes and regulations. The applicant is allowed to use an electronic copy of the Manual of Patent Examining Procedure (MPEP) in the computer-based examination, and a paper copy of the MPEP in the pencil-and-paper test, but no other material. A large number of questions typically deal with the proper drafting and handling of a U.S. patent application or international application.
Law students who pass the registration exam and become admitted as patent agents before admission to the bar are allowed to change registration to patent attorney upon supplying USPTO with proof of admission to a state or territorial bar.