Patent attorney

From Free net encyclopedia

A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition. The term is used differently in different countries, and thus may or may not require the same legal qualifications as a general legal practitioner.

The titles patent agent and patent lawyer are also used. The latter is generally used only if the person qualified as a lawyer.

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Qualification regimes

In Europe, the requirements for practising as patent attorney before national patent offices should be distinguished from those needed for practising before the European Patent Office (EPO). On the national level, the requirements are not harmonized across the European Union, except that the EU makes sure that respective professional qualifications are mutually recognised to some degree.

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Canada

To become a registered patent agent in Canada one must first complete a twelve-month mentorship training program as well as complete a series of four qualifying exams.

Each of the four exams (also referred to individually as Paper A, B, C, and D) is four hours in length. Paper A relates to the preparation of a patent application. Paper B relates to the validity of a patent. Paper C relates to the preparation of a response to an Official Action. Paper D relates to the infringement of a patent. Unlike the US system, the Canadian examination format is paper based and is offered once yearly in April. Results are posted in the autumn of the same year.

The exam is notoriously challenging and most applicants attempt writing the exam over several years. In order to pass the exam, candidates must score a minimum of 50 out of 100 on each paper, with a minimum aggregate mark of 240 on all four papers. Recent amendments to the pass requirements enable candidates to carry forward paper marks (greater than 60 out of 100), if the minimum aggregate mark is not achieved.

Review courses are held each summer and fall by IPIC (Intellectual Property Institute of Canada). The summer course tends to be more general in scope than the fall course, where drafting practice examinations is emphasised.

Once certified, a registered patent agent is given powers under the Canadian Patent Act to represent applicants applying to the Canadian Patent Office to obtain patent protection. Canadian registered patent agents may act on behalf of non-resident companies before the USPTO.

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European Patent Organisation

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In order to be entitled to represent clients (mainly applicants, proprietors of patent and opponents) before the European Patent Office (EPO), which is not legally bound to the European Union, a patent attorney must be registered as professional representative before the EPO. That is, an attorney must be qualified as "European Patent Attorney" and, to this purpose, the attorney must pass a pencil-and-paper examination, the European qualifying examination (EQE). In addition, an engineering or scientific degree is required (though a long experience in a scientific domain can be sufficient under certain conditions) and at least three years of practice in the domain of national or European patent law.

The European Patent Convention (EPC) precisely specifies in which case it is required to be represented a professional representative in proceedings (Art. 133 EPC [1]). Effectively, a representative is required if all the applicants for a patent do not have a place of business in an EPC contracting state.

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Germany

In Germany, only Patent Attorneys (beneath Attorneys-at-Law, who are generally entitled to represent everybody everywhere) are entitled to represent clients from abroad before the German Patent and Trade Mark Office (DPMA). German Patent Attorneys have done their university degrees in engineering or natural sciences and practised in industry before being accepted for additional three years education, i. e. passing a legal training of two years with an established attorney, at the same time studies of German Law and afterwards a training in intellectual property and an examination at the DPMA. German residents however are entitled to represent themselves and employees to represent their employer before the DPMA.

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Japan

Patent specialists in Japan are known as benrishi and must take a qualifying exam to receive the title. While not qualified as attorneys, they are given many attorney-like powers within the field of intellectual property law, including the ability to represent clients in litigation and arbitration. Barristers (bengoshi) are also qualified to work in patent law.

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United Kingdom

The United Kingdom has a series of exams (Foundation Papers followed by Advanced Papers) one must pass in order to be entered on the Register of Patent Agents. The examinations can be retaken and an exemption to the Foundation Exams can be gained by completing certain 3-month Intellectual Property courses. This gives the successful candidate right to call themselves a Registered Patent Attorney or Registered Patent Agent; the terms are synonymous in the UK. Membership of the Chartered Institute of Patent Agents as a fellow gives the right to call oneself a Chartered Patent Agent or Chartered Patent Attorney. Note that there is no restriction on representation, merely the terms listed; however any applicant for a Patent must give an address for service within the United Kingdom or Isle of Man.

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United States

In the United States, practitioners may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to represent clients before the Patent Office part of the United States Patent and Trademark Office (USPTO). They may provide patentability opinions as well as prepare, file and prosecute patent applications for their clients before the Patent Office.

Patent attorneys, however, are also admitted to the practice of law in at least one state or territory (e.g., American Samoa) of the United States. Hence patent attorneys can additionally provide legal services outside the Patent Office. These services include advising a client on the legal matters related to the licensing of the invention; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement; whether someone is infringing upon the claims of a client's issued patent; and conversely, whether a client is infringing the claims of someone else's issued patent. Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the United States Patent and Trademark Office (USPTO).

In order to be registered as a patent agent or patent attorney, one must pass the USPTO registration examination [2]. This is a 100-question, 6-hour, multiple-choice test. The exam contains 10 performance questions which do not count towards the exam taker's final score. The required score to pass is 70%, or 63 correct out of 90, but only (on average) 40% of examinees attain this score. The examination is frequently referred to as the patent bar, but it is not necessary to have a law degree to sit for the exam.

The USPTO additionally requires that all candidates for registration have adequate scientific and technical training sufficient to provide valuable service to clients. This requirement is typically met with a bachelor's degree in a field of natural science or technology. These fields include applied mathematics, computer science, chemistry, physics, biology, or engineering. The technical training requirement can also be satisfied by passing the Fundamentals of Engineering exam (FE exam), or by demonstrating sufficient science coursework or applicable life experience.

Degrees in the abstract sciences, or "soft sciences," such as sociology, or even mathematics, are not sufficient by themselves to meet the technical training requirement. However, the scientific and technical training requirement can be fulfilled by submitting proof of 40 semester hours of undergraduate courses in the above fields, 8 of which must consist of either two consecutive semesters of physics for scientists and engineers with laboratory, or two consecutive semesters of general chemistry with laboratory. All 40 semester hours can be completed at community colleges, and do not have to result in any bachelor of science degree.

Before June 2004, the USPTO registration exam was a pencil-and-paper test given at approximately 15 locations around the country. The USPTO has moved to a computer-based examination, which can be taken on any business day at any of several hundred locations around the country. Once applicants have been approved to sit for the exam, they have 90 days in which to schedule an examination date with the USPTO contractor that administers the exam. The pencil-and-paper test is still offered once a year at the USPTO's office. The examination is intended to measure the applicant's familiarity with USPTO procedures, ethics rules, federal statutes and regulations. The applicant is allowed to use an electronic copy of the Manual of Patent Examining Procedure (MPEP) in the computer-based examination, and a paper copy of the MPEP in the pencil-and-paper test, but no other material. A large number of questions typically deal with the proper drafting and handling of a U.S. patent application or international application.

Law students who pass the registration exam and become admitted as patent agents before admission to the bar are allowed to change registration to patent attorney upon supplying USPTO with proof of admission to a state or territorial bar.

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Notable patent attorneys and agents

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Fictional characters who are patent attorneys

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See also

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External links

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