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From Wikipedia, the free 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 in some jurisdictions. In some jurisdictions the terms are interchangeable, in others the latter is generally used only if the person qualified as a lawyer.

Contents

Qualification regimes

In Europe, 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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Australia

Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys (the "PSB").[1]

To apply to become an Australian patent attorney, one must:

  1. pass the nine topics set out in Schedule 5 to the Patent Regulations 1991.
  2. hold a suitable tertiary educational qualification in a field of technology that contains potentially patentable subject matter.
  3. be a resident in Australia
  4. have worked for a year as:
    1. a technical assistant (trainee patent attorney) in a patent attorney's practice;
    2. an employee in a company in Australia, practising patent matters on behalf of that company; or
    3. an examiner of patents at IP Australia (the Australian Patent Office).
  5. be of good fame, integrity or character, and not have been convicted within the past five years of offences against Patents, Trade Marks and Designs legislation.[2]

Until the late 1990s, topics were mainly taught and examined by members of the patent attorney profession under the oversight of the PSB, but this process has now been brought into the university system within Australia.

Once registered, a Patent and Trademark Attorney may be elected as a Fellow of the Institute of Patent and Trade Mark Attorneys of Australia.[3]

Canada

To become a registered patent agent in Canada one must complete a series of four qualifying exams after having worked in the field for 12 months.

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 the exam over several years. In order to pass, 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, or if the candidate failed one of the papers.

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 apply for U.S. patent agent status in order to act on behalf of Canadian resident applicants before the United States Patent and Trademark Office (USPTO).

European Patent Organisation

The task of the European Patent Office (EPO), which is the main organ of the European Patent Organisation, is to grant European patents (and also to hear and determine third-party challenges to the validity of European patents, in opposition proceedings).[4] The EPO is not legally bound to the European Union, instead being an international body set up under an entirely different international treaty, the European Patent Convention (EPC).

In order to be entitled to represent clients (generally patent applicants, proprietors and opponents) before the EPO, a patent attorney must first be registered to act in that capacity as a professional representative. To be registered, an individual must qualify as a European patent attorney and, to that end, must pass a written examination, the European Qualifying Examination (EQE). [5] The EQE consists of four papers [5] sat over three days, each day lasting between 6 hours and seven and a half hours. In order to enroll for the examination, an engineering or scientific degree is required (though long experience in a scientific domain can be sufficient under certain very limited conditions), and the candidate must also have practised under supervision for at least three years in the domain of national or European patent law.

The EPC sets out the circumstances under which an applicant for a European patent must be represented by a professional representative in proceedings before the EPO. [6] Typically, a representative is required if the patent applicant (or all of them if more than one) do not have a place of business in an EPC contracting state.

Germany

In Germany, only Patent Attorneys (or Attorneys-at-Law, who are entitled to represent clients in all fields of law) 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. They are further entitled to represent their clients before the German federal court of patents (and trademarks) and in patent cases (nullity) before the German Supreme Court. [7] However, independent from their nationality, any natural person or any legal person who does not domicile in Germany or who has no place of business in Germany needs to be represented by a German patent attorney or attorney-at-law to participate in procedures and to claim any rights before the DPMA and the German federal court of patents (Bundespatentgericht, BPatG), however not before the German Supreme Court (Bundesgerichtshof, BGH) which is second instance for nullity proceedings in patents.[citation needed]

Japan

Patent specialists in Japan are known as benrishi and must take a qualifying exam to receive the title. Benrishi are allowed to practice a variety of intellectual property law (patent, trademark, copyright, unfair competition and trade secret) and are given the power to represent clients in litigation and arbitration within the area specified by Patent Attorney Law in Japan. Barristers (bengoshi) are also qualified to work as patent attorneys in Article 3 of Practicing Attorney Law in Japan.[citation needed]

New Zealand

To become registered as a Patent Attorney in New Zealand, one must:

  1. be a New Zealand citizen, Commonwealth citizen (British subject) or a citizen of the Republic of Ireland.
  2. be aged 21 (twenty one) years of age or over.
  3. have passed the New Zealand Patent Attorney Examinations.
  4. be of good character.
  5. have been employed for a period(s) of at least three years by a Patent Attorney in New Zealand, The Patent Office, or in a form of employment that offers substantially similar practical experience - see section 100 of the Patents Act 1953. [8]:

Registration as a Patent Attorney may then lead to election as a Fellow in the New Zealand Institute of Patent Attorneys.

Moreover, Australian Patent Attorneys are able to obtain registration to become New Zealand Patent Attorneys, and vice versa, as a result of a trans Tasman agreement between the two countries [9] Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys[10].

Singapore

To become registered as a Patent Agent in Singapore, one must:[11]

  1. be a resident in Singapore;
  2. hold a university degree or equivalent qualification approved by the Registrar;
  3. have passed the Graduate Certificate in IP Law Course jointly offered by the IP Academy, Singapore and the Faculty of Law, National University of Singapore.[12];
  4. have passed the 4 patent examinations[13]; and
  5. has completed internship in patent agency work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule, for a continuous period of at least 12 months; or a total period of at least 12 months within a continuous period of 24 months.

Once registered, a Patent Agent may then be elected as an ordinary member of the Association of Patent Agents of Singapore.

United Kingdom

Any person can act at the UK Patent Office, but the titles "Patent Attorney" (which is synonymous with "Patent Agent") and "Registered Patent Attorney" (which is synonymous with "Registered Patent Agent") are reserved for those duly qualified[14].

Qualification is achieved by passing the JEB[15] patent foundation level papers (or gaining an exemption by passing certain university courses such as that organised by Queen Mary University in London) and then the JEB patent advanced level papers[16].

The JEB patent foundation papers are P1 - Patent Law and Procedures, P5 - Overseas Patent Law, D&C - Designs & Copyright, Law - Basic English Law, T1 - Basic UK Trademarks and T5 - Overseas Trademarks.

The JEB patent advanced papers are P2 - Patent Practice, P3 - Drafting a Patent Application, P4 - Amending a Patent Application and P6 - Infringement and Validity of a Patent. Exemptions from P3 and P4 can be obtained by passing the corresponding European Qualifying Exams (Papers A & B respectively).

Membership of the Chartered Institute of Patent Attorneys as a fellow gives the right to call oneself a Chartered Patent Agent or Chartered Patent Attorney. (To become a fellow, a person must have passed the UK Advanced Level exams, have accrued sufficient professional experience and be nominated by two existing fellows.[17]

United States

In the United States, a practitioner may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to practice and represent clients before the Patent Office, part of the United States Patent and Trademark Office (USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent applications. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida.[18] However, the USPTO Rules of Ethics and Professionalism, effective as of September 15, 2008, specifically clarifies that patent agents may not provide an "opinion of validity of another party's patent when the client is contemplating litigation and not seeking reexamination" because such activity "could not be reasonably necessary and incident to the preparation and prosecution" of a client's patent.[19]

Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. In the time since the USPTO issued the first patent in 1790, approximately 62,000 citizens have passed the USPTO registration examination, allowing them to be registered to prosecute patent applications.[20] (This total does not include current patent examiners, who are not allowed to serve as patent attorneys or agents and thus do not appear on the list of enrolled practitioners.) Today, about 38,000 people are on the list of registered patent attorneys and agents, with slightly less than 29,000 of them also licensed to practice law.[21] Of the states, California has the most patent attorneys (and agents), followed by New York and Texas [22]. Per capita, Delaware has more patent attorneys (and agents) than any state (not including DC). Both Patent Attorneys and Patent Agents are generally required to have a technical degree (such as engineering, chemistry or physics) and must take and pass the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office.[23] Since patent attorneys are admitted to practice law in a state or territory, they can additionally provide legal services outside the Patent Office if practicing within the jurisdiction they are admitted to practice or if the law of the jurisdiction otherwise permits them to practice although not admitted in that jurisdiction. These legal services include advising a client on matters relating 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 USPTO.

In order to be registered as a patent agent or patent attorney, one must pass the USPTO registration examination.[24] This exam, commonly referred to as the "patent bar," tests a candidate's knowledge of patent law and USPTO policies and procedures as set forth in the Manual of Patent Examining Procedure (MPEP). Upon successful completion of the examination, one will be labeled as a "patent attorney" if he/she has already been admitted to a state or territorial bar. However, engineers, scientists and any other science based majors, as well as law students and law graduates who are not admitted to a bar, will be labeled as "patent agents" since they cannot give legal advice nor represent clients in court. The latest exam result statistics are from June 9, 2005 through October 17, 2006: during that time, 58.2% of the 4,165 candidates passed the exam, which was based upon MPEP, 8th Edition, Revision 2. [25] The current exam is based on MPEP, 8th Edition, Revision 4, as of October 19, 2006. (No tests were given based upon MPEP, 8th Edition, Revision 3.) Applicants who are not United States citizens and do not reside in the U.S. are not eligible for registration except as permitted by 37 CFR § 11.6(c). [26] None of the world's countries except Canada reciprocates to U.S. citizens the right which the U.S. grants to their citizens. [27]

A candidate must also have an adequate scientific and technical background or education to understand a client's invention. The educational requirement can be met by a bachelor's degree in a specifically enumerated major, such as Biology, Computer Science,[28] Chemistry, Biochemistry, Microbiology, Physics, and Biomedical, Chemical, Civil, Electrical or Mechanical Engineering.[29] This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B[30] or Category C. Category B provides four distinct qualification options, where each option sets a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. One can qualify under Category C by showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the ways in which one can qualify for the USPTO registration examination are outlined in the USPTO Registration Statement. Degrees in the social sciences, mathematics, or philosophy by themselves do not meet this requirement.

A candidate must also possess "good moral character and reputation" (37 CFR 11.7). If practicing outside the United States, a patent agent or patent attorney must be a U.S. citizen.

India

In India, a person registered to practice before Indian Patent Office is called a "Registered Patent Agent" or simply "Patent agent". The Indian Patent Law specifically does not mention the designation of "Patent Attorney". The Indian Patent Agent can thus be considered the counterpart of the Patent Attorney in Australia, EPO or Japan.

Indian Patent Office conducts a qualifying examination for patent agent registration twice a year. Indian Patent Law mandates a science or technical degree for person(s) to appear for the qualifying examination. Other criteria for eligibility include being an Indian Citizen, and 21 years of age. There are approximately 1400 registered patent agents in India.[citation needed] However many of the patent agents got themselves registered without appearing for the qualifying examination before the amendment that took place in 2003. It can also be inferred that many of them who got registered before the amendment took place do not have any science or technical degree.

Ireland

Under Section 107 of Ireland's Patents Act, 1992 entry in the Register of Patent Agents requires that the applicant resides and has a place in a member state of the European Union and possesses the prescribed educational and professional qualifications, which are:

    • Leaving Certificate or equivalent: a C grade in at least two higher level subjects (or ordinary level B grade) and a D grade in at least three other subjects
    • First-year university (or equivalent) education in engineering, chemistry, or physics
    • Employment for at least 3 years in the office of a registered patent agent in an EU member state
    • Success at the following examinations:
      • Irish law and practice of patents (set by Irish Patents Office)
      • Drafting of patent specifications (set by United Kingdom's JEB, Advanced Paper P3)
      • Amendment of patent specifications (set by United Kingdom's JEB, Advanced Paper P4)
      • Infringement and validity (set by United Kingdom's JEB, Advanced Paper P6)

As in the UK (see above), exemptions from the Drafting and Amendment papers can be obtained if the equivalent papers in the European Qualifying Examination have been passed.

Notable patent attorneys and agents

See List of patent attorneys and agents, including fictional characters who are patent attorneys.

References

  1. ^ Professional Standards Board - About
  2. ^ http://www.psb.gov.au/patreg.htm
  3. ^ Institute of Patent and Trade Mark Attorneys of Australia
  4. ^ See Article 4(3) EPC and also EPC Part V from Article 99 EPC to Article 105 inclusive.
  5. ^ a b European Patent Office web site, The European qualifying examination (EQE), consulted on November 23, 2006.
  6. ^ Article 133 EPC
  7. ^ § 111 IV PatG
  8. ^ http://www.legislation.govt.nz/act/public/1953/0064/latest/DLM281008.html?search=ts_act_patents_resel&p=1.
  9. ^ http://www.med.govt.nz/templates/MultipageDocumentPage____2370.aspx.
  10. ^ http://www.iponz.govt.nz/cms/iponz/patent-attorney-information/the-patent-attorney-register/; http://www.iponz.govt.nz/cms/iponz/patent-attorney-information/trans-tasman-mutual-recognition-arrangement-for-the-patent-attorney-profession.
  11. ^ Requirements For Becoming a Registered Patent Agent from the Intellectual Property Office of Singapore
  12. ^ Graduate Certificate in IP Law Course information from the IP Academy
  13. ^ Patent Agents Qualifying Examination from the Intellectual Property Office of Singapore
  14. ^ Copyright, Designs and Patents Act 1988, section 276
  15. ^ Joint Examination Board
  16. ^ Copyright, Designs and Patents Act 1988, section 275; Register of Patent Agents Rules 1990; Regulations for the Examinations for the Registration of Patent Agents & Trade Mark Agents 1991.
  17. ^ http://www.cipa.org.uk/download_files/application_form_uk.pdf CIPA Membership Application Form including extract from Bye Laws.
  18. ^ 373 U.S. 379 (1963).
  19. ^ PTO Revises Rules of Ethics and Professionalism, PatentlyO blog, August 15, 2008
  20. ^ Patent Attorneys and Agents: Listings by Geographic Region
  21. ^ Patent Attorney/Agent Search
  22. ^ http://www.averyindex.com/2007_patent_states.php Top Patent States
  23. ^ http://www.averyindex.com/2007_patent_states_pc.php Top Patent States (Per Capita)
  24. ^ http://www.uspto.gov/web/offices/dcom/olia/oed/grb.pdf General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, January 2008
  25. ^ RESULTS OF THE REGISTRATION EXAMINATION BASED ON MPEP 8 th EDITION, REVISION 2
  26. ^ General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, January 2008, "Eligibility of Aliens," p. 8
  27. ^ The provision on Aliens, 37 C.F.R. 11.6(c)
  28. ^ Computer Science Eligibility
  29. ^ Patent Bar Undergraduate Degrees
  30. ^ Patent Bar Qualifications: Category B

See also

External links


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