Patent application attorney vs. patent litigation lawyer: What are the differences?

What is a patent application attorney (patent prosecutor) versus a patent litigator?

Patent practitioners generally fall under one of two practice areas: 1) patent litigation, or 2) patent prosecution. There are some patent attorneys who have done both litigation and prosecution, but most practitioners will lean to one practice area over time. A patent prosecutor is essentially a patent application attorney who files utility and design patent applications with the USPTO.

Are patent litigators required to be registered to practice before the USPTO?

A patent litigator is an attorney who represents clients in patent lawsuits, such as patent infringement litigation in federal court. Patent litigators are not necessarily registered patent attorneys. There is no requirement that a patent litigator must be registered to practice before the USPTO.

Are patent prosecutors required to be registered to practice before the USPTO?

Patent prosecutors are required to be registered to practice before the USPTO in order to file patent applications on behalf of clients. Keep in mind that patent practitioners may include both patent agents and patent attorneys. Patent agents, however, cannot practice any area of law other than patent prosecution. So patent agents cannot litigate, file trademark applications or handle adversarial IP matters.

Do you need a litigator or patent application attorney?

Start with your patent needs. Then find the right type of patent attorney. Do you have patents that need to be enforced against infringing competitors? Then hire a patent litigator.

If the infringing goods are sold on Amazon, consider using the Amazon neutral patent evaluation process which is a lot cheaper than a lawsuit in federal court.

If you want to file a patent application, hire a patent application attorney. See if you can find the number of granted utility patents or design patents obtained by a particular patent practitioner or firm by searching here.

Does it help to hire a patent application attorney with patent litigation experience?

Some patent attorneys may have spent a good deal of their career in patent litigation before devoting their practice to filings patents. I’m one of those guys. I made a lifestyle choice to focus on patent prosecution in order to be there for my family (and possibly prolong my life). Patent litigation involves extensive traveling and short deadlines.

While I focus primarily on patent prosecution now, my patent litigation experience has certainly equipped me to write stronger patent applications. I understand how claim construction works. I’ve wrestled with opposing counsel on narrowing or broadening the meaning of certain claim terms in order to pursue infringement or invalidity contentions. We understand how prior art may be used to try to invalidate a patent. I’ve played the semantics game to carve out certain definitions of claim terms in order to support noninfringement.

All of this patent litigation experience informs our patent writing process. We’re not just trying to convince the patent examiner to allow claims. We’re also pursuing patents that will help our clients withstand potential challenges in the future.

Are you looking for the right patent application attorney?

Call (949) 223-9623 or email patent attorney Vic Lin at to see how we can help you with your patent application.

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