• Patent attorneys are licensed to practice before the U.S. Patent and Trademark Office (USPTO).
• Trial Attorneys are licensed to practice general law and are experienced in all realms of civil litigation.
• Patent attorneys file for patents while trial attorneys enforce patents.
Patent Attorney vs. Trial Attorney, what’s the difference?
For a long time, there has been a notion that a patent owner needs a patent attorney to enforce the rights held under that patent. However, this notion is misleading. In order to understand how this notion is misleading, it is important to understand the difference between a patent attorney and a trial attorney.
Patent attorneys are licensed to practice before the United States Patent and Trademark Office (the “USPTO”). In order to acquire a Patent License, one must sit for the Patent Bar. To do so, you must not only have a law degree, you must also have a bachelor’s degree in a technical field i.e. Biology, Physics, or Engineering. A trial attorney need only be an attorney who has passed the required bar in a specific location. Therefore, a lawyer who has passed the Texas Bar Exam may be a trial lawyer in Texas. Moreover, in order to enforce a patent through litigation, both a Patent attorney and the trial attorney must be admitted to practice before the Federal District where litigation will be brought. Therefore, one main difference between a patent attorney and a trial attorney is the educational background.
Do Patent Attorneys Try Cases?
In most scenarios, a patent attorney is the attorney an inventor will go to in order to file and obtain ultimate rights in a patent. This process is called the Patent Prosecution. During the prosecution of a patent, the patent attorney and the USPTO board examiner will exchange a series of correspondence and filings. Assuming the subject matter of the invention is patentable, once the patent attorney has given all the requisite information to the examiner, the examiner will issue a patent. The patent prosecution does not involve a court or a jury and is considered to be more or less transactional. Typically, patent attorneys are not known for trying cases, but in some instances, you will find a patent attorney who is also a superb trial attorney. However, since it is easier to specialize in patent prosecution, it is rare to find one that does both exceptionally well.
Should I Hire a Trial Attorney to Enforce My Patent?
As explained above, sometimes you may find a patent attorney who is also a superb trial attorney. Trial attorneys, however, try cases day in and day out. They specialize in being in front of both a court and a jury. The easiest way to think about the differences between a patent attorney and trial attorney is that patent attorneys file patents while trial attorneys enforce patents.
Written by*:
Jorge Mares
WATTS GUERRA, LLP
4 Dominion Drive, Bldg 3, Suite 100
San Antonio, Texas 78257
Office (210) 447-0500
Email: jmares@guerrallp.com
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* This information is provided to supply relevant information concerning patent enforcement, and should not be received as legal advice. Legal advice is only given to persons or entities with whom Watts Guerra LLP has established an attorney-client relationship. Available remedies vary from case to case and depend on the underlying facts of each. If you have another lawyer, you should consult with your own attorney, and rely upon his or her advice, rather than the information contained herein.
© Watts Guerra LLP 2015
