Registered Patent Agent

37 C.f.r. § 11.6

• Patent agents are listed on the USPTO register of recognized practitioners
• USPTO controls who can practice before it in patent matters

What Patent Agents can do

• Prepare and file patent applications (utility, design, plant, provisional)
• Prosecute pending applications (respond to office actions, interviews, appeals to PTAB)
• Represent clients in inter partes review (IPR) and other PTAB proceedings
• Represent clients in USPTO appeals (PTAB, Board of Patent Appeals)
• Provide patent prosecution advice and opinions
• Draft patent claims
• Conduct patent searching
• Handle reissue and reexamination proceedings

What Patent Agents Cannot do

• Represent clients in federal district court patent litigation (only licensed attorneys can appear in federal court)
• Represent clients in ITC proceedings (attorneys only)
• Provide legal advice outside the USPTO (e.g., contract negotiation, licensing agreements, IP strategy that doesn't involve USPTO practice)
• Sign contracts as counsel

Patent Attorney Additional Rights

• A patent attorney is both a registered USPTO practitioner AND a licensed attorney
• Can handle all USPTO practice AND federal court litigation
• Can provide legal advice on licensing, M&A, contracts
• Can represent clients before the ITC

Quality

• For pure prosecution work (application drafting and prosecution), patent agents with strong technical backgrounds can be equal to or better than patent attorneys
• Many top patent agents have PhDs in highly specialized technical fields.

Technical Education Requirement

• Must have a qualifying scientific or technical degree from a US college or university, or a foreign degree equivalent
• CATEGORY A DEGREES (automatically qualify): bachelor's degree or higher in: biological sciences
• Biochemistry
• Biomedical engineering
• Botany
• Chemical engineering
• Chemistry
• Computer science
• Electrical engineering
• Electronics engineering
• Food technology
• Genetics
• Immunology
• Marine technology
• Materials science
• Microbiology
• Molecular biology
• Nuclear engineering
• Petroleum engineering
• Pharmacy
• Physics
• CATEGORY B DEGREES (may qualify with additional coursework): other bachelor's degrees in science or engineering may qualify if the applicant demonstrates sufficient technical knowledge through specific coursework

General Requirements (37 C.f.r. § 11.7)

• Good moral character and reputation
• US citizen, US national, or person residing in the US

USPTO Patent Bar Exam (Praxis)

• 100-question multiple choice exam
• 3 hours
• Tests knowledge of USPTO rules and procedures
• MPEP (Manual of Patent Examining Procedure) is the primary reference
• Approximately 50-60% pass rate on first attempt
• Available by computer at Prometric testing centers
• Exam covers: patent prosecution procedure
• USPTO forms
• Deadlines and extensions
• Claim drafting principles
• Rejections and responses
• Appeals
• POST-GRANT PROCEEDINGS (IPR, PGR, CBM overview)

Application Process

• File application with USPTO OED (Office of Enrollment and Discipline)
• Submit transcripts
• Pass background check
• Pay registration fee ($100 for initial registration)
• Receive registration number and certificate

IPR and PTAB Representation

• Patent agents can represent both petitioners (challengers) and patent owners in: inter partes review (IPR — §§ 311-319)
• Post-grant review (PGR — §§ 321-329)
• Covered business method review (CBM — expired March 2020 but remaining proceedings continued)
• Ex parte reexamination appeals
• Inter partes reexamination appeals (pre-AIA)
• Derivation proceedings
• Patent term extension proceedings

Appearing Before PTAB

• Patent agents can: file petitions and patent owner responses
• File reply briefs
• Participate in oral arguments before the Board
• Take depositions of expert witnesses (in some circumstances)
• File motions to amend

Litigation Disconnect

• A challenge arises when a patent agent handles PTAB proceedings and litigation simultaneously
• The patent agent cannot participate in the district court litigation
• A separate litigation attorney must be engaged
• Coordination between patent agent (PTAB) and litigation counsel (district court) is essential
• In practice, many law firms use patent agents for PTAB proceedings even when litigation counsel handles the court case

Unauthorized Practice of Law

• A patent agent who provides legal advice beyond USPTO practice (e.g., advising on contract terms in a license agreement) is potentially engaging in unauthorized practice of law (UPL)
• Patent agents must carefully limit their practice to USPTO matters

Professional Responsibility

• Patent agents are subject to USPTO OED (Office of Enrollment and Discipline) rules and the USPTO Rules of Professional Conduct
• Same ethical obligations as patent attorneys in USPTO practice
• Can be suspended or excluded from practice by OED.

Hire a Patent Agent When

• You need pure USPTO prosecution work: application drafting and prosecution, responding to office actions, PTAB proceedings
• You want specialized technical expertise without paying for a law degree: a PhD patent agent in molecular biology may draft better biotech claims than a general patent attorney
• You have a limited budget: patent agents typically charge 20-40% less than patent attorneys for prosecution work
• You are a startup or solo inventor primarily seeking patent protection without immediate litigation plans

Hire a Patent Attorney When

• You anticipate patent litigation (only attorneys can litigate)
• You need licensing agreements, IP contracts, or other legal advice
• You need representation in federal court or the ITC
• You want a single practitioner who can handle both prosecution and litigation risk
• Your technology involves regulatory issues that intersect with patent (FDA, SEC)
• You are doing M&A where IP due diligence and deal terms are intertwined
• PATENT AGENT + LITIGATION COUNSEL COMBINATION: many companies use patent agents for prosecution (for cost savings and technical depth) and separate litigation counsel for enforcement
• Works well with good communication and coordination

Evaluating Quality

• Look for: technical degree aligned with your invention's field
• USPTO registration number (verifiable at USPTO website)
• Prosecution experience in your technology area
• Number of patents issued
• Writing samples

Cost Comparison

• Small law firm patent attorney: $350-$600/hour
• Registered patent agent in a law firm: $250-$450/hour
• Independent patent agent: $150-$350/hour
• Quality varies widely within each category — don't choose on price alone.

Governing Rules

• USPTO Rules of Professional Conduct (37 C.F.R. §§ 11.100-11.901): adapted from ABA Model Rules
• Apply to both patent attorneys and patent agents
• OED (Office of Enrollment and Discipline): USPTO body that oversees registered practitioners
• Investigates and disciplines patent agents and attorneys

Duty of Candor and Good Faith (§ 11.303)

• Duty not to make false statements to the USPTO
• Corresponds to and overlaps with the duty of candor under 37 C.F.R. § 1.56
• Filing a patent application knowing it contains false information can result in inequitable conduct AND professional discipline

Competence (§ 11.101)

• Must have legal knowledge, skill, thoroughness, and preparation reasonably necessary for the representation
• May not take on matters outside the agent's technical competence

Client Confidentiality (§ 11.106)

• All client communications are confidential
• Subject to attorney-client privilege equivalent before USPTO (IN RE GRAND JURY SUBPOENA, Fed. Cir. 2001: communications with patent agents may be privileged in USPTO proceedings; more uncertain in litigation)

Conflict of Interest (§§ 11.107-11.117)

• Cannot simultaneously represent conflicting interests without full disclosure and consent
• Specific rules for former client conflicts and concurrent conflicts

Disciplinary Procedures

• Any person can file a grievance with OED
• OED investigates
• Sanctions range from reprimand to suspension to exclusion from practice
• Decisions can be appealed to the USPTO Director and federal courts

Financial Responsibility

• Holding client funds (e.g., maintenance fee advance funds) requires proper accounting
• Misappropriation = exclusion from practice.