Why choose a Patent Attorney or a Patent Agent?

patent filing

To protect and commercialize an invention, the inventor must get a patent for it in India (or abroad as well). To do so, one must traverse the complex path of patent filing and patent examination before attaining the promised land: a patent registration or grant. An inventor may choose to do so himself as no one is better acquainted with the invention than him. However, patents are interwoven with legal technicalities and it is generally advised to hire a professional who is well-versed with the deadlines, patentability requirements, forms, fees, etc.

Patent professionals are of two types in general: ‘patent attorney’ and ‘patent agent’. The key differences between them are as follows:

  Patent
attorney
Patent Agent Discussion
Have passed the Indian
Patent Agent exam?
🙂 🙂 Both have qualified the
examination. Their names
must be in the list.
Can give advice on the
patentability of an
invention?
🙂 🙂 Both are competent to
provide such advice.
Can draft a patent in
accordance with all the
rules?
🙂 🙂 Both are competent in the
art of drafting.
Can file a patent for
publication?
🙂 🙂 Both are competent to file
the patent application.
Can practice and represent
an inventor before the Controller?
🙂 🙂 Both are legally qualified to
appear before the
Controller.
Can respond to an office
action?
🙂 🙂 Both can file the response to
FERs and office action.
Possesses a technical
background?
🙂 🙂 Both must possess a technical degree as a basic
qualification.
Possesses a degree in law
or legal studies?
🙂 🙂 Only patent attorneys have
attended law school.
Can give advice regarding
licensing and pooling of patent?
 🙂 🙁 Only patent attorneys can
provide such advice.
Can give advice regarding
infringement of patent?
🙂 🙁 As infringement is a legal
question, patent attorneys
are best suited for it.
Can represent the inventor
in a Court of law?
🙂 🙁 Only Patent attorneys being
advocates can appear in a Court of law.

Hence, a patent attorney has more experience in defending a patent from a legal perspective. On the other hand, a patent agent can perform all the functions which a patent attorney can except the legal domain.

Leave a Reply

Close Menu