The words patent agent and patent attorney are frequently used interchangeably, and there is a lot of disparity between the two words. They are different in terms of their qualifications as well as the procedures they can perform in the patent law. 

Patent Agent: An individual who is well qualified to prosecute patents (drafting and filing a patent application) before the Controller of Patents is recognized as a patent agent. As the drafting of a patent compels certain technical as well as legal knowledge, only a person well qualified in both areas will be able to attain the responsibilities of patent prosecution. The patents can be prosecuted through a registered Indian patent agent. In the Indian Patents Act, 1970, Section 126 illustrates the qualifications for becoming a patent agent. The requirements as per the law for becoming a patent agent are:

  1. The individual should be a citizen of India;
  2. He/she should have completed the age of 21 years;
  3. He/she should have attained a degree in science, engineering, or technology from any University ascertained under the law for the time being in force in the territory of India;
  4. He/she should have qualified for the exam prescribed for the purpose; and 
  5. The qualifying exam stated in the section is the Patent Agent Exam that the Controller General of Patents is accomplished every year or two. The final call is dependent on the discretion of the Patent Office. Qualifying in this exam is a must to be a registered Indian patent agent.

Role of Patent Agent: The patent agent is qualified for patent filing and prosecution procedures. The role of a patent agent is illustrated in section 127 of the Indian Patents Act, 1970, wherein a patent agent is authorized to:

  1. Practice before the Controller; and
  2. Formulate all documents, transact all business and expel such other processes as may be specified in connection with any proceeding before the Controller under the Act

Patent Attorney: Initially, it is significant to quote that the word ‘Patent Attorney‘ does not specify India’s statute. The patent attorney is usually used interchangeably with the term patent agent. Though, an attorney is an advocate. By this, a patent attorney is a person who is allowed to handle patent litigation by carrying a law degree. The patent attorney or patent lawyer is an advocate who practices law in the Court. This means that a person who has a law degree and has enrolled with a State Bar Council is an advocate who can handle patent litigation and is, therefore, a patent attorney. It is significant to quote that a patent attorney does not inevitably possess a science, technology, or engineering degree.

Patent attorney and its role: Primarily, the position of a patent attorney is similar to the role of an advocate. Thus, the patent attorney can precisely handle patent litigation. This implies that a patent attorney represents the patent cases in the tribunals. It is essential to quote that a patent attorney cannot file for a patent, and this means that a patent attorney is not allowed to do patent prosecution. They can regulate only the litigation things of patents and provide a legal opinion on the patent matters.

Difference between a patent agent and patent attorney: 

The distinction between a patent agent and a patent attorney is mainly on two standards; qualifications and roles that they perform in their routine work:

  1. Patent agent must possess a degree in science, technology, or engineering must qualify for the Patent agent exam. However, the degree of law is not mandatory.
  2. There is a mandatory requirement that the patent attorney has a law degree and qualify for the state bar council exam. A degree in science, technology, and engineering is not required.
  3. Patent agents can practice before the Controller and do patent filing, prosecution, and further represent the applicant in the patent hearing.
  4. Patent attorneys can only practice before courts and tribunals, litigate the patent matter and provide the legal opinion.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

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    Iram I. Saifi is a law student with developed advanced research skills in Intellectual Property Laws. As an Indian citizen, she comprehends firsthand the damage IP crime can do to an economy and the necessity for an influential IP regime. She has expertise in Trademarks law and currently practising the same in the field along with this, and she is working with numerous tech and growing startups to strengthen and formulate their IPRs. Iram is a rigorous believer in IPR and working in the IPR industry dedicatedly. She is also an IPR speaker and guides many youngsters about the laws and importance of IPR in this advanced and technological world.