Patent Agent vs. Patent Lawyer – Which Do You Need?

ATMAC Last update: June 28, 2021

Canada

In Canada, only registered patent agents are legally allowed to represent third parties such as inventors and companies to obtain patents. This may come as a bit of a shock since you’ve likely run into lawyers offering patent services.

Lawyers are not allowed to represent third parties at the Canadian Intellectual Property Office (CIPO) unless the lawyer is also registered as a patent agent. However, there is nothing stopping a lawyer in Canada from calling themselves a “Patent Lawyer” or “Patent Attorney” even if they are not a registered patent agent and therefore not allowed to draft and file patents for third parties.

This commonly happens when a non-agent lawyer calls themselves a “Patent Lawyer” because they specialize in patent litigation (disputing patents in court). This can be very confusing to inventors because they usually think someone called a “Patent Lawyer” should be able to help them get a patent, and some lawyers take on this kind of work under that mistaken assumption. Behind the scenes these lawyers get a registered patent agent to rubber stamp the application and file it for them.

The reason these lawyers don’t become patent agents themselves is due to four very difficult exams forming the Patent Agent Qualifying Examination, which must be passed by all individuals in Canada wanting to become a registered patent agent. You can see both Andrew's registration as a patent agent in Canada and ATMAC registration as a patent firm on the College of Patent and Trademark Agents (CPATA) National Patent Agent Registry:

United States

In the United States, only registered patent agents and patent attorneys are allowed to represent third parties such as inventors and companies to obtain patents, and Canadian patent agents are able to be registered as US patent agents for representation of Canadian residents. Unlike in Canada, a lawyer in the US can only call themselves a “Patent Attorney” if they meet the qualifications for registration and are therefore listed on the US Patent Practitioner Registry. You can see Andrew’s registration as a patent agent in the US for representation of Canadian residents based on his being of good standing as a patent agent in Canada on United States Patent and Trademark Office (USPTO) website:

Andrew’s US patent agent registration allows him to directly represent residents of Canada at the US Patent and Trademark Office (USPTO).

Andrew also has a certificate from the USPTO stating his registration as a US patent agent.


Privileged communications

One other point worth mentioning is that registered patent agents in both Canada and the US benefit from agent-client privilege meaning that advice and opinions related to protecting inventions communicated in confidence between a client and their registered patent agent are privileged. Privilege means that whatever ideas, advice or opinions were communicated, are protected and confidential. Some lawyers try to advertise or imply that it’s somehow more confidential to discuss patentability with a true lawyer because of attorney-client privilege – but this is not the case. For communications related to protecting inventions, a registered patent agent offers the full legal benefit.

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