We are sticklers for detail, and so when talking with customers, we often use the very clunky term “USPTO registered practitioner” when other people would just say “patent attorney.” We use this term, registered practitioner, because patent attorney is too narrow. Also, you may miss an important detail about registered practitioners, namely that they are registered to practice patent law.
A USPTO registered practitioner is an individual who is credentialed by the US Patent & Trademark Office to represent people or groups before the Patent Office in matters relating to patents – mainly in the submitting and prosecuting of patent applications. To gain this credential, a practitioner most meet a minimum educational requirement (that is, they have to have a sufficient number of college credit in engineering or sciences) and pass a test of knowledge of patent law (the Patent Bar exam). Also, registered practitioners must maintain standards for ethical behavior in their practices, and they are subject to review by the Patent Office to ensure that they are properly serving their clients.
There are two types of registered practitioners, patent attorneys and patent agents. Patent agents have only their registered practitioner credential, which means that they are only allowed to practice patent law before the Patent Office. Patent attorneys can practice patent law and engage in other forms of legal representation, such as preparing and negotiating licensing agreements, and representing parties in court. In addition to having the registered practitioner credential from the Patent Office, a patent attorney will have a law degree and be a member in good standing of a bar association.
In the eyes of the Patent Office, a patent attorney and patent agent are the same thing. Both can represent you throughout your patent application process. It’s only in the other areas outside the patent office where there is a difference.
Questions
Where do I find a Registered Practitioner?
When we do a search for an independent inventor, we offer referrals to registered practitioners in our network. These are practitioners whom we do search and administrative assistant work for, so we do have ongoing relationships with then.
If you are looking to hire a registered practitioner, you can check to see if he or she is in good standing with the Patent Office by checking the USPTO Office of Enrollment and Discipline webpage. All practitioners have registration numbers, which you can search in the OED database.
Why would I hire a patent agent if they are limited?
Good question. After all, there are lots of things that could come in the future that would require an attorney, so doesn’t it make sense to just start with an attorney? My answer is that although patent agents are limited to just practicing before the Office, they can still be very good at what they do. Also, many patent agents have greater experience on the technical side of invention and not just that patent writing side. We work with several patent agents who regularly take on design and CAD projects for their clients. It’s really more a matter of working with someone you think will do a good job for you on your application.
One other thing to keep in mind if you are looking to work with a patent attorney is that they may limit their practice area to just handling patent applications and nothing more. In other words, they may not serve in litigation matters.
Can’t I Just have my attorney friend represent me?
People often have attorney associates (my cousin Vinny, for example) whom they would like to work with on submitting a patent application. Unless the attorney is registered by the Patent Office, this is not allowed.
What about trademarks?
Though they call it “the US Patent & Trademark Office,” these two branches of IP have many distinctions, and one is that trademark representation does not require the registered practitioner credential. However, you do have to at least be an attorney to represent a client in a trademark matter. Again, don’t just hire your cousin Vinny because he’s cheap. Make sure that your attorney actually practices trademark law.
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