Patent attorneys are specialized attorneys who help inventors secure patents in their ideas. By way of background, defining the role of "attorney" in the US is instructive. Attorneys are authorized by the highest court in the jurisdiction to practice law. In my case, the Maryland Court of Appeals, the highest court in Maryland, admitted me to practice law in every court in Maryland. The requirements to practice law in every state are similar: 1) earn a juris doctor degree from an American Bar Association accredited graduate school; 2) achieve a passing score on the attorney examination, i.e, the “bar exam”; and 3) demonstrate good moral character. Passing the bar exam is the most infamous requirement. Candidates who satisfy these requirements are generally admitted to the state’s bar and conferred the title "attorney."
Anyone can be sued or arrested and summoned to court. It follows that anyone can represent themselves. (When you represent yourself, you are appearing before the court in proper person, or pro se.) Lawyers can practice law before courts in the state in which they are licensed and also represent others. Keep in mind that not every attorney’s law practice requires them to go to court. Attorneys who argue cases before a court are litigation attorneys. There are also attorneys who represent clients in negotiations and write up agreements and contracts. These attorneys are colloquially referred to as transactional attorneys.
Patent attorneys are subject matter specialists.
Patent attorneys hold an additional license from the United States Patent and Trademark Office (USPTO) to practice law in patent matters. Patent attorneys must: hold a technical degree, like an engineering or science degree; have a license to practice law in a state ( or District of Columbia); pass a specialized patent attorney exam; and demonstrate good moral character. The Maryland attorney rules recognize the unique qualifications of patent attorneys - “patent attorney” is the only specialization honored by the Maryland Attorney Rules. Learn more about the qualifications of patent attorneys here.
A patent attorney is a hybrid of litigation and transactional attorney. Patent attorneys draft and file patent applications, which is transactional. Patent attorneys also represent clients in litigation proceedings before the USPTO’s court for certain patent disputes - the Patent Trial and Appeals Board (PTAB).
Contrast Patent Attorney and Patent Agent
The USPTO licenses non-attorney engineers and scientists with STEM degrees to represent patent applicants on a limited basis as patent agents. Patent agents can represent patent applicants in applications. If a patent application or a patent is the subject of litigation, a patent agent cannot practice before the PTAB since she does not hold a law license. Patent agents have to demonstrate a working understanding of patent law to pass the USPTO exam. However, they are not trained to read and interpret case law like attorneys. The upshot is that attorneys are skilled at processing evolving precedent - updated by way of federal case law - in real time. Patent agents are not qualified to read and understand case law.
Other considerations for Early Stage Companies
Early-stage companies should consider their need for additional transactional support. When your patent/trademark/ copyright application is granted and you own a new intangible asset, you will likely need an attorney to help assign title to the right entity. If you want to license your intellectual property asset to a competitor then an attorney can support negotiation and drafting of licensing agreements.
Despite being specialists, a patent attorney can often provide transactional support to help Early stage companies grow smart. As a case in point I have drafted agreements to support internal and B2B transactions concerning my clients’ intellectual property. For example, a company’s founders should execute an assignment transferring the title of key intellectual property assets to the company. In certain circumstances a confidentiality agreement is a helpful tool to protect proprietary information. You can buy a package of business agreement templates drafted by me online here: https://gregtinchlaw.gumroad.com/l/biz_templates.
Book your free intellectual property assessment here.
J. Greg Tinch - Founder and Principal of Tinch Law Firm, P.C. - helps businesses reduce risk by understanding business law and leveraging intellectual property assets. Greg has counseled all types of decision makers from early-stage startups to federal government officials on patents, trademarks, copyrights, and transactional and entity formation aspects of business law. Greg's intellectual property practice is informed by his interest in public policy, experience working in Congress and litigating civil cases in Maryland.