Though the terms patent agent and patent attorney are often used
interchangeably, there is a lot of difference between the two
terms. They are different in terms of their qualifications as well
as the functions they can perform. This post will elucidate the
difference between the two and explain their respective roles in
patent prosecution and patent litigation process.
Who is a patent agent?
A person who is qualified to prosecute patents (i.e. drafting
and filing a patent application) is known as a patent agent. Given
the fact the
drafting a patent requires specific technical as well as legal
knowledge, only a person qualified in both domains will be able to
fulfill the obligations of patent prosecution. In India, a patent
can be prosecuted through a registered Indian patent agent. Section 126 of the
Indian Patents Act, 1970 envisages the qualifications for becoming
a patent agent.
The statutory requirements for becoming a patent agent are:
Be a citizen of India;
Have completed the age of 21
Have obtained a degree in science,
engineering or technology from any University established under law
for the time being in force in the territory of India.
Have passed the qualifying
exam prescribed for the purpose.
The qualifying exam stated in point (d) is the Patent Agent
Exam that is conducted every year by the Controller General of
Patents. Passing this exam is a must in order to qualify as a
Indian patent agent.
From the preceding listed qualifications, two things are
In order to become a patent agent, a
degree in law is not required. A degree in science,
engineering or technology is a must.
An individual with a degree in law
does not automatically qualify as a patent agent unless he meets
the above requirements.
What is the role of a patent agent?
As stated above a patent agent is qualified for patent
prosecution. The role of a patent agent is described in section 127
of the Indian Patents Act, 1970. According to Section 127, a patent
agent is entitled to:
Practice before the Controller;
Prepare all documents, transact all
business and discharge such other functions as may be prescribed in
connection with any proceeding before the Controller under this
Who is a patent attorney?
At the outset, it is important to note that the term 'Patent
Attorney' does not find a place in any Statute in India. In
fact, a patent attorney is usually used interchangeably with a
patent agent. However, an attorney is an advocate. By virtue of
this, a patent attorney is an individual who is entitled to deal
with patent litigation by virtue of holding a law degree. A patent
attorney or patent lawyer is an advocate. This means that an
individual who has a law degree and has enrolled with a State Bar
Council is an advocate who can deal with patent litigation and is
hence a patent attorney. It is important to note here that a patent
attorney does not necessarily posses a degree in science,
technology or engineering.
What is the role of a patent attorney?
Mainly, the role of a patent attorney is the same as the role of
an advocate. Thus, a patent attorney can specifically deal with
patent litigation. This means that a patent attorney represents
patent cases in the courts. It is important to note that a patent
attorney cannot file for a patent. This means that a patent
attorney is not entitled to do patent prosecution, only the
litigation aspect of patents can be handled by him.
What is the difference between a patent agent and a patent
Particularly, the difference between a patent agent and a patent
attorney is on two criteria; qualification and role. The below
table will give a comprehensive view of the differences:
1. Must possess
a degree in science, technology or engineering
1. Degree in science,
technology or engineering not necessary
2. Degree in law is not
2. Must have a degree in
3. Must pass the Patent
3. Must be enrolled in
any State Bar Council
2. Practises before the
2. Practises before the
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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