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7. U.S. Patent Practitioners: Attorneys and Agents

The term 'patent practitioner' broadly refers to patent agents and patent attorneys. Patent practitioners have met the minimum legal, scientific, and technical requirements of the Patent Office, have passed a patent bar exam, and, in addition, have agreed to uphold a standard of professional conduct. In order to maintain his standing before the Patent Office, the patent practitioner has agreed to keep his client's invention confidential, and not to take any personal benefit from his knowledge of his client's invention, disclosing it to others only when necessary to effectively represent his client.

In addition to meeting the qualifications which the Patent Office requires of patent agents, the US patent attorney must have earned a law degree from an accredited university, and have passed an intensive state bar examination and an ethics examination. Further, the FBI must perform a background check on the attorney-candidate, and a state bar committee must approve the attorney-candidate's application to practice law. Still further, the State Bar Association requires that the patent attorney continue his legal education through attending seminars and conferences on recent developments in the law. Only when the attorney-candidate has met all these requirements, does the attorney-candidate become a US patent attorney.

The above differences in qualifications between patent attorneys and patent agents are significant. From a practical standpoint, patent attorneys-at-law are familiar with courtroom procedure, case law, and tactics used to enforce your patent after it issues. The patent attorney may represent you in law suits against infringers, or in drafting license agreements with manufacturers. In contrast, the state bar rules and federal law prohibit a patent agent from providing many of the services which patent attorneys routinely provide (such as those discussed above). The patent agent may, however, do anything which the Patent Office considers necessary to obtain a patent for you. In addition, he may provide general advice concerning copyrights, trademarks, and license agreements. [A patent agent may provide advice on copyrights and trademarks only to the extent necessary for his client to determine whether the client should seek patent protection]. Therefore, if merely obtaining a patent is all you seek, hiring a patent agent may be significantly less expensive than hiring a patent attorney. In addition, hiring a patent agent is almost always a better choice than trying to write, file, and prosecute a patent application yourself. However, if you seek an enforceable patent, then using a patent attorney is almost always the best choice. The patent attorney is aware of some of the common pitfalls of the court system. He or she is generally much more capable of structuring your patent application to avoid these pitfalls. In addition, a patent application is both a legal and a technical document. As such, a patent application is difficult to write properly. Because a patent attorney is trained in both technical and legal writing, he or she is better equipped to write these difficult legal documents.

[FN: Although they have a right to refer to themselves using the English word "attorney", European Patent Attorneys are patent agents and not attorneys-at-law. This does not mean they are generally not well trained -- they are. It's just that they do not have the formal legal education required to be an attorney-at-law. Therefore it may be best to have European patent litigation managed by a European attorney-at-law, while the technical aspects be handled by your European patent agent (mandataire or patentanwalt)]

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