Patent Attorney Versus Patent Agent

If you are filing a U.S. patent application, you may be tempted to use a patent “agent” instead of a patent “attorney”.

After all a patent “agent” will probably be cheaper than a patent attorney.

A U.S. patent “agent” has the legal authority to prepare, file, and prosecute U.S. patent applications, just like a U.S. patent “attorney”.

So why not just hire a patent “agent”?  What is the big deal?

Well, when you consider what a patent “agent” is not, and what a patent “agent” cannot do, you realize how much better it is to have a patent “attorney” or “lawyer” prepare and file your U.S. patent application.

A patent “agent” is not an “attorney” or “lawyer”.

This is the heart of the matter.   An attorney or lawyer typically has gone to law school for 3 years, has received a Law Degree (such as a Juris Doctor) from a law school, and has passed the rigorous requirements of one or more U.S. state bar examinations.  For example, Walter J. Tencza, Jr. Esq, (732-549-3007; email: patent@patentnow.com; PATENTNOW.COM®) is a registered patent attorney, who went to Fordham Law School for 3 years, received his Law Degree from Fordham and passed both the New York state bar and the New Jersey bar examinations.

In addition, an “attorney” or “lawyer” may have practiced law on a range of legal matters, not just preparing, filing, and prosecuting patent applications, but for example preparing patent infringement opinions, filing patent appeals to the Federal Circuit, litigating intellectual property matters in court, and preparing, filing, and prosecuting trademark matters.

Walter J. Tencza, Jr., Esq.  (732-549-3007; email: patent@patentnow.com; PATENTNOW.COM®) has been practicing patent, trademark, copyright and other law for about twenty-five years, including not just preparing, filing, and prosecuting patent applications, but litigating intellectual property related matters in courts, preparing patent infringement opinions, preparing non disclosure agreements and licensing contracts, and preparing, filing, and prosecuting trademark matters.

Patent “Attorneys”, from going to law school, from obtaining a Law Degree, from passing one or more state bar examinations, and from practicing law on a range of issues, have a deep understanding of the Law.  How to research it.  How to apply it.  How different cases, statutes, rules, and regulations can interact and affect one another.

Patent “Agents” have not gone to law school, have not gotten a law degree, and have not passed any state bar examination.

Patent “Agents” cannot litigate intellectual property matters or any other matters in courts.

Patent “Agents” cannot render any opinion on patent infringement.

Patent “Agents” cannot prepare licensing agreement or non disclosure agreements.

Patent “Agents” cannot prepare, file, and prosecute trademark matters.

Patent “Agents” cannot file patent appeals in the Federal Circuit court or challenge a decision in a District Court.

Furthermore, client communications with a Patent “Agent” are not protected as broadly as Communications with a Patent “Attorney” 

For example, communications with a Patent “Agent” regarding possible patent infringement, possible patent litigation in courts, trademark issues, and licensing issues would in all likelihood not be protected by Attorney (or Agent) Client Privilege, whereas communications regarding such subject matter with a Patent “Attorney” in appropriate circumstances would be protected by Attorney-Client Privilege.

Because of all of the Foregoing, Patents prepared by Patent “Agents” may be Inferior to Patents prepared by Patent “Attorneys”  

There is a saying that patents should be prepared with “an eye toward litigation”.

However, If a patent “agent” cannot go to court, cannot even render a legal opinion on infringement, and did not go to law school, what kind of an “eye” will a patent “agent” have for preparing strong patents.

And if a patent “agent” is not qualified to give an opinion of infringement, what incentive does a patent “agent” have to keep up with, or even be aware of patent “infringement” law.

Most inventors don’t just want patents.  They want patents that will protect them.  They want patents they can use to sue someone for infringement if someone “takes” their invention.

How can a Patent “Agent” prepare a strong patent, when a Patent “Agent” cannot even answer the question every inventor wants to know:

Would that infringe my Patent?

Call Walter J. Tencza Jr., Esq. now, at 732-549-3007, or email at patent@patentnow.com (PATENTNOW.COM®), for a free phone consultation to find out more.

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Copyright 2016 Law Office of Walter Tencza, Jr. All Rights Reserved.

Legal Disclaimer- the information provided herein is not legal advice.  Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship.  Although effort has been made to ensure that the answers are correct, Law Office of Walter Tencza Jr. and Patentnow.com® cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only.  Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.

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