Patents are a nuanced and complex set of property rights requiring various skills at various levels of their management. Once a scientific invention has been made, the procedure to register with the Patent Office and secure a patent and later safeguard this patent and its bundle of affiliated rights from infringement requires the services of two important persons – a Patent Attorney and a Patent Agent. explains their respective roles while also distinguishing between the two similar terms which the common man tends to often use interchangeably. (This Article may be read as a sequel to our previous article regarding careers in patent law.)
Patent agents possess vast knowledge in scientific or technical areas. It’s not unusual for these professionals to hold a graduate degree or a Ph.D. Moreover, they have passed the Patent Agent Exam which qualifies them to file patent applications, advise clients as to the patentability of their inventions and to assess prior art. In order to be appointed as a patent agent, an individual needs to have a degree in science or technology or engineering. However, a degree in law is not required to be appointed as a Patent Agent. Additionally, they also possess knowledge of the Patents Act, 1970 which is the primarily patent related legislation in India. Given the fact that drafting a patent requires specific technical as well as legal knowledge, only a person qualified in both domains will be able to fulfill the obligations of patent prosecution. This aids them in conducting patent prosecution proceedings before the Controller of Patents, in representing their clients and defending the patent application and granted patents.
While patent agents are qualified to handle almost any patent prosecution matter before the Indian Patent Office, they are expressly prohibited from providing legal advice. Accordingly, clients who need legal counsel for any business-related matter that is connected to their pursuit of a patent will need to work with a patent lawyer.
Patent attorneys are entitled to legal practice. They closely consult with clients and tender legal advice regarding the management of their patent and derived rights. In India, they are referred to as Patent Lawyers. They attend Law School and have to pass the All India Bar Examination to obtain a certificate of practice which entitles them to practice in a court of law. In the United States of America, patent attorneys are required to have a degree in science or technology besides a law degree. Patent attorneys in the US have to clear the US Patent Bar as well as the respective State’s Bar Exam. In India, it is not mandatory for a patent lawyer to have a science/technology related degree. It would suffice to have a law degree and to be enrolled in any State Bar Council. It is pertinent to note that patent lawyers can only practice in a court of law and cannot appear in proceedings before the Controller of Patents which is exclusively the domain of Patent Agents. While patent agents take part in patent prosecution, it is patent attorneys who conduct patent litigation. A patent attorney has knowledge regarding the broader implications of the invention, procedures of the courts and can also lead arguments for licencing, importation, infringement, etc., based on other disciplines of law.
At the end of the day, both patent agents and attorneys are valuable persons whose goal is to protect and maximise their clients’ ideas and inventions. They each have their own strengths and often work together to produce patents and applications, with agents doing the initial drafts and attorneys protecting them from the world at large. The work done by a patent agent also sets the stage for any future litigation that may arise. A job well done by the patent agent would mean that the patent has been drafted in a comprehensive manner and in a manner suitable to the interests of the inventor. This would later help the patent attorney at the litigation stage to ensure that the patent is interpreted correctly and in a manner that the inventor intended it to be viewed, thereby safeguarding the patentee’s rights and interest in the invention. Thus we see that a patent agent and a patent attorney even if working at different stages work as supplementary to each other.