Too frequently in business matters, intellectual property issues can make or break a situation. IP asset creation and management is an investment, and the selection of the right IP professional — whether it is a patent agent, patent attorney, or otherwise — is crucial.
But how should you choose?
I believe that the handling of intellectual property matters is more of an art than a science, requiring a broad perspective around the invention and the business/technology/legal environment around the invention in order to create the most valuable IP asset possible. The fact is, not every IP professional is an artisan that can accomplish what you need from them.
How do you find one that can provide the services you want?
First, know that there are three main categories of IP professionals:
- Patent or trademark attorneys
- Patent agents
- IP strategists
Each of these professionals provide slightly different types of services, so let’s consider each type.
Patent / Trademark Attorney
At the most basic level, an attorney is a person who has obtained a Juris Doctor degree from an accredited law school and has passed the bar exam for the state or states in which they practice law. Having these qualifications allows the attorney to represent clients in front of the courts for which they are admitted.
Patent attorneys take this qualification and credential a step further.
In order to be able to represent clients in front of the IP examining bodies of specific countries, attorneys must pass a registration exam for each of those countries. For example, in the US, you must pass the USPTO Registration Examination to become a registered patent practitioner in order to practice before the USPTO. One requirement of eligibility for the USPTO exam is to have a scientific or technical degree, so the assumption is that the registered patent practitioner is able to understand highly complex technologies that become the basis of new inventions.
Within the patent/trademark attorney category, there are two types of specialties:
- Prosecution: i.e., negotiating patent or trademark applications with examiners at patent offices on behalf of clients
- Litigation: i.e., enforcing clients’ IP rights or defending clients in IP-related legal actions.
In most cases, a prosecution specialist may not be skilled in IP litigation, and vice versa. Oftentimes, patent/trademark attorneys are also knowledgeable about copyright law and trade secret law, as copyright and trade secret protection are sometimes appropriate alternatives to patent or trademark protection.
In the U.S., a patent agent is someone with a technical background who has passed the USPTO Registration Examination. A registered U.S. patent agent can represent clients before the USPTO, like a patent/trademark attorney. However, unlike an attorney, a patent agent cannot represent clients before the court system.
The nomenclature can be a bit confusing in countries outside of the U.S. For example, a person who has passed the European Qualifying Examination is called a European patent attorney, regardless of whether the person has a law degree from an accredited university.
While a patent agent may only represent clients before the patent office, patent agents often have stronger technical qualifications than patent attorneys, as many people who choose to become patent agents have more hands-on work experience in scientific research or technology development and have obtained advanced degrees in their technical fields. Patent agents may also provide better value for clients due to their (normally) lower billing rates compared to patent/trademark attorneys.
A recent trend in the IP profession is the emergence of IP strategists, who often provide a broader perspective over the entire innovation lifecycle.
Many IP strategists have experience in a variety of aspects of IP asset management and monetization, such as patent prosecution at law firms, IP strategy development within companies, negotiation of IP assets with third parties, and patent litigation. Some IP strategists also have strong technical backgrounds including product development experience, and some even have entrepreneurial experience as a founder or an early startup employee.
While IP strategists are often highly experienced patent prosecutors/litigators, they can provide services beyond those offered by patent/trademark attorneys and patent agents, as they are able to consider your innovation as part of your overall business and technology development strategies.
Whereas patent attorneys and patent agents focus mainly on specific innovations or on a particular IP asset for enforcement, for example, IP strategists look at how IP can benefit the asset owner in a larger context, beyond the attainment of an issued patent.
An IP strategist who is also a patent/trademark attorney or a patent agent can provide even more value to the client, bringing together legal expertise and business and/or technical experience that someone who went straight from college to a law firm may not have.
At Patents Integrated, we are a different kind of patent agent. We aren’t patent attorneys. We aren’t business consultants. We aren’t product developers. We’re more than that, pulling from multiple disciplines to create IP strategies that not only protect our clients’ innovations but fully support their long-term business growth plans. Learn more.