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

ATMAC Nov 13 2017

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 many 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 which must be passed by all individuals in Canada who are not already licensed patent agents of good standing in their home country. The annual pass rate for the Canadian exams is typically between 10-20% (you can even view the annual results rates within the Government Patent Agent Exam Reports). A firm can also be registered as a patent agent if at least one member has passed the exam. You can see both Andrew’s and ATMAC’s registration as a patent agent in Canada on CIPO’s National Patent Agent List.

ATMAC can also demonstrate this with a government issued certificate.

Similarly in the United States, only registered patent agents and lawyers are allowed to represent third parties such as inventors and companies to obtain patents. To be registered in the US, an individual either needs to pass a multiple choice exam (not as difficult as the four Canadian patent agent exam papers) or be of good standing as a patent agent in their home country. 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. The US does not allow firms to also be listed on the registry. You can see Andrew’s individual registration as a patent agent in the US based on his being of good standing as a patent agent in Canada here. 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. No one, including a court of law, can force either party to disclose these communications. Many 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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