Patent Agent vs. Patent Attorney: Role in Patent Prosecution

A Patent Agent is not an advocate and neither does he necessarily have a qualification in law. On the other hand, a Patent Attorney is someone who has passed the bar exam and is entitled to practice before the court.

Both the terms Patent Agent and Patent Attorney are used synonymously, but they have different connotations. Patent agents primarily advise on patent issues and assist in patent prosecution (filing the patent application). However, a patent attorney primarily focuses on patent litigation but also can aid in patent prosecution. 

Who is a Patent Agent?

A patent agent is certified professional who is licensed by the Indian patent office to advise the inventors as well as patent applicants with their patent applications. They also help in the preparation and filing of the patent application.

Patent agents aid inventors with finishing and submitting all their patent-application documentation, probing for prior art, and writing inventor’s legally enforceable claims related to ownership of the invention. The revision of rejected patent application is also done by the patent agent.

More On: Checklist of Documents Required for Patent Registration

Who is a Patent Attorney?

Unlike, patent agents, the term 'Patent Attorney' is not defined in the Patent Act. A patent attorney is any person who is permitted to deal with patent litigation as they hold a law degree and are entitled to practice before the Indian Court.

As a patent attorney often handles both patent prosecution and litigation, it is interchangeably used with the patent agent. A patent attorney does not necessarily have a degree in science, technology or engineering. However, he is a qualified lawyer with a valid bar registration. 

Statutory Provisions Regarding Patent Agent

A patent agent has been defined in Indian Patent act under provision 127 of the Indian Patent Act,1970.

As per section 127, the Patent Agent is allowed to:

  • Help the patent applicant to file a patent application before the controller of the patent.

  • A patent agent is entitled to prepare all the documents, and perform any other procedures before the controller under the patent act.

Also Read: Detailed Explanation about Patent Priority Date

Difference Between Patent Agent and Patent Attorney

 

 

Patent Agent

Patent Attorney

Qualification

Qualification degree in law is not necessary Must have qualification degree in Law to be considered a patent attorney.
Qualified in the field of science, technology or engineering No qualification in the field of science technology or engineering required.
The patent agent needs to pass the patent agent examination. Should be enrolled in any of the state bar council.

Role

Patent prosecution Patent litigation
Patent agent practice before the Controller of Patents  A patent attorney represents the applicant before the Court on Law

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