So You Want to be a Patent Attorney or Agent? Episode 89

Why Become a Patent Agent or Patent Attorney?

A lot of people ask me how to become a patent agent or patent attorney. Maybe it’s because they’ve been listening to my podcast and they’re thinking, Ex parte reexaminations, inter partes reviews, requests for continued examination, PCT applications—sign me up! They want to be part of the exciting world of patent procedures where the adrenaline never stops.

Before you jump into a career as a patent agent or patent attorney, let’s first go over what these roles are and how to qualify for them.

What Is a Patent Agent?

A patent agent is a person who is legally allowed to prepare and file patent applications and act as an intermediary between inventors and the U.S. Patent and Trademark Office (USPTO).

Only two types of people can file patent applications:

1. The inventor

2. A registered patent agent or patent attorney acting on behalf of the inventor

Even if you have a business attorney for other legal matters, that attorney cannot file a patent application unless they are also a registered patent attorney.

How to Become a Patent Agent (This is accurate as of 2019, rules may have changed)

To become a patent agent, you must pass the Patent Bar Exam, a test administered by the USPTO covering patent law, rules, and procedures. The exam includes both legal concepts (such as novelty and obviousness) and procedural knowledge (such as which documents must be filed electronically versus by mail).

The exam is computer-based, administered by Prometric Testing Centers, and consists of 100 multiple-choice questions over six hours. It is open book, meaning you can reference an electronic version of the Manual of Patent Examining Procedure (MPEP)—a 3,000+ page guidebook. However, if you’re not already familiar with the material, you won’t have enough time to look up every answer during the test.

Who Is Eligible to Take the Patent Bar Exam?

Not everyone is allowed to take the exam. You must have a science or engineering background to qualify under one of three categories:

Category A: Automatic Qualification

If you have a bachelor’s degree in an approved field (such as biology, physics, chemistry, or engineering), you automatically qualify. Some degrees, like computer science, must meet specific accreditation requirements.

Category B: Course-Based Qualification

If your degree is not on the pre-approved list, you can still qualify if you have taken enough science or engineering coursework. You will need to submit official transcripts and course descriptions for the USPTO to review.

Category C: Practical Engineering or Scientific Experience

If you lack the required coursework, you can qualify by passing the Fundamentals of Engineering (FE) Exam, which tests general engineering knowledge.

Additional Requirements

Before taking the exam, you must also demonstrate good moral character, meaning you cannot have a felony conviction for crimes of moral turpitude or have been disciplined in another profession without review by the USPTO.

Exam Difficulty and Passing Rate

The pass rate for the Patent Bar is typically between 40% and 50%, making it a challenging exam—even for people with advanced degrees or those who have passed a state bar exam.

Once you apply and receive approval to take the exam, you have 90 days to schedule and complete the test. You will receive your results immediately after finishing. If you pass, you will receive an official confirmation soon after. If you fail, you will receive a score report to see how close you were to passing.

Costs of Taking the Patent Bar Exam (2019 Costs)

The approximate costs are:

• $40 application fee

• $200 exam fee

• $160 testing center fee

• $100 registration fee after passing

This totals around $500, but fees may change, so check with the USPTO for the most up-to-date information.

What Is a Patent Attorney?

A patent attorney is simply a patent agent who is also a licensed attorney.

If you pass the Patent Bar but are not an attorney, you become a patent agent. If you later attend law school and pass a state bar exam, you can then upgrade to a patent attorney.

Differences Between Patent Agents and Patent Attorneys

At the USPTO, both patent agents and patent attorneys can:

• Prepare and file patent applications

• Represent inventors in patent prosecution

However, outside the USPTO, only patent attorneys can:

• Represent clients in state and federal court

• Provide legal opinions on patent infringement and validity

• Draft patent licensing agreements

Career Prospects for Patent Agents vs. Patent Attorneys

If you want to start your own practice, it may be harder as a patent agent because clients often prefer working with attorneys who can handle trademarks, business law, and litigation as well.

However, large law firms and corporations frequently hire both patent attorneys and patent agents. Since patent agents don’t have law degrees, they typically earn less than patent attorneys but still have lucrative career prospects.

Conclusion

Becoming a patent agent or patent attorney can be a rewarding career, but it requires significant effort, technical expertise, and legal knowledge. If you have a science or engineering background and a passion for intellectual property, it may be the perfect career for you.

I’m Adam Diament, and until next time, keep on inventing.