Patent attorney
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. The latter is generally used only if the person qualified as a lawyer.
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[edit] 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.
[edit] Australia
To become registered as a Patent and Trademark Attorney in Australia, one must:
1. have the passed nine prescribed exams
2. hold a degree etc in a field of technology that contains potentially patentable subject matter
3. be ordinarily resident in Australia
4. have worked for a year as either; a technical assistant in a patent attorney's practice; been employed in Australia in a company practising patent matters on behalf of a company, or been an examiner of patents at IP Australia.
5. be of good fame, integrity or character not have been convicted within the past five years of offences against Patents, Trade Marks and Designs legislation.
Once registered a Patent and Trademark Attorney may be elected as a Fellow to the Institute of Patent and Trade Mark Attorneys of Australia
[edit] 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 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.
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 also act on behalf of non-resident companies before the United States Patent and Trademark Office (USPTO).
[edit] 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.<ref>Article 4(3) EPC</ref> 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 pencil-and-paper examination, the European Qualifying Examination (EQE). <ref name="EQE"> European Patent Office web site, The European qualifying examination (EQE), consulted on November 23, 2006. </ref> The EQE consists of four papers <ref name="EQE"/> 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. <ref>Article 133 EPC</ref> 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.
[edit] 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. German residents however are entitled to represent themselves and employees to represent their employer before the DPMA.
[edit] 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.
[edit] New Zealand
In order 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. 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.
Registration as a Patent Attorney may then lead to election as a Fellow in the New Zealand Institute of Patent Attorneys.
[edit] Singapore
To become registered as a Patent Agent in Singapore, one must:<ref>Requirements For Becoming a Registered Patent Agent from the Intellectual Property Office of Singapore</ref>
- be a resident in Singapore;
- hold a university degree or equivalent qualification approved by the Registrar;
- have passed the patent and trademark law course;
- have passed the 4 patent examinations<ref>Patent Agents Qualifying Examination from the Intellectual Property Office of Singapore</ref>; and
- have been supervised by a registered patent agent(or equivalent) for at least 12 months.
Once registered a Patent agent may then be elected as an ordinary member of the Association of Patent Agents of Singapore.
[edit] United Kingdom
Any person can act at the UK Patent Office, but the titles Chartered Patent Attorney", "Chartered Patent Agent", Registered Patent Attorney and Registered Patent Agent (these terms are synonymous in the UK) are reserved for those duly qualified.
Qualification is achieved by passing (or gaining an exemption from by passing certain university courses and from the European Qualifying Exams) the JEB patent foundation level papers, and the JEB patent advanced level papers.
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.
The Advanced papers are notoriously difficult. Exemptions from P3 and P4 can be obtained by passing the corresponding European Qualifying Exams (Papers A & B respectively).
On average it takes 8 years from entering the profession for an individual to pass these exams (see the Sherr Report - where science meets Law).
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).
[edit] 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 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 for their clients before the Patent Office. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida.<ref>373 U.S. 379 (1963).</ref>
Patent attorneys 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 USPTO.
In order to be registered as a patent agent or patent attorney, one must pass the USPTO registration examination<ref>http://www.uspto.gov/web/offices/dcom/olia/oed/grb15nov05.pdf General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, Nov. 2005</ref>. 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). The most recently reported statistic for candidates passing the exam was 56.4%, for the period between July 26, 2004 and June 9, 2005. This was the period immediately after the primary examination method changed from pencil-and-paper to computer-based, but before changing to the MPEP 8th edition revision 2.<ref>http://www.uspto.gov/web/offices/dcom/olia/oed/exam_results_mpep8ed_rev1.htm</ref>
A candidate must also have adequate scientific and technical training to understand a client's invention. The training requirement can be met by a bachelor's degree in the natural sciences (e.g. physics) or engineering. This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B or Category C. Category B provides four distinct qualification options where each option requires a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. One can qualify under Category C through a showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the various 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).
[edit] India
In India, a person registered to practice before "Indian Patent Office" is called as "Registered Patent Agent" or simply "Patent agent". A patent agent having a law degree is generally called as Patent Attorney, although Indian Patent Law specifically does not mention the designation of "Patent Attorney". 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 criterias for eligibility include being an Indian Citizen, and 21 years of age. There are approximately 1100 registered patent agents in India. However many of the patent agents got themselves registered without appearing for the qualifying examination before the amendment that took place recently has mandated the patent agent qualifying examination. It can also be inferred that many of them who got registered before the amendment took place does not have any science or technical degree.
[edit] Notable patent attorneys and agents
- Alfred Ely Beach, inventor of the New York City Subway
- Sharon Bowles, British MEP
- Andrew C. Greenberg, co-creator of Wizardry computer game
- G. Donald Harrison, builder of music organs
- Irving Kayton, former law professor, author of Kayton on Patents
- Stephan Kinsella, Libertarian legal theorist.
- Daniel Ravicher, Senior Counsel to the Free Software Foundation
- Greg "Fossilman" Raymer, winner of the main event at the 2004 World Series of Poker
- Jason Schultz, leader of the Electronic Frontier Foundation Patent Busting Project
- Günter Wächtershäuser, Origin of life theorist.
- David L. Wang
[edit] Fictional characters who are patent attorneys
- Calvin's father (in comics series Calvin and Hobbes - the father of Bill Watterson, the creator of this cartoon series, is a patent attorney)
- Oliver Farnsworth (from the novel The Man Who Fell to Earth; also played by Buck Henry in the film adaptation, The Man Who Fell to Earth)
- Wally Mason (in the book Notes of a Patent Attorney: The Wally Mason Stories by Brian C. Coad)
- George Stobbart (from the Broken Sword adventure games)
- Harry Wykoff (in the television event series Wild Palms)
[edit] References
<references/>
[edit] See also
- European Patent Institute (epi)
- International Federation of Intellectual Property Attorneys (FICPI)
- List of professions
- Patent clerk
- Power of attorney
- Trademark attorney
[edit] External links
- Europe
- Institute of Professional Representatives before the European Patent Office or "European Patent Institute (epi)"
- The Chartered Institute of Patent Attorneys (CIPA) - United Kingdom
- [1] Professional Trainee - A Resource for Trainee UK Patent Attorneys
- Deutsche Patentanwaltskammer - German Chamber of Patent Attorneys, in German
- North America
[edit] Notable blogs
- Canada, Now, Why Didn't I Think of That?, ed. Sander Gelsing.
- China, IP Dragon, patent, copyright and trademark.
- China, China Law Blog Frequent commentary on China IP law.
- Europe, BLOG@IP::JUR, ed. Axel H. Horns.
- UK, The IPKat Weblog, ed. Prof. Jeremy Phillips and Ilanah Simon
- US, Anything Under the Sun Made By Man, ed. Russ Krajec.
- US, Just a Patent Examiner, Dialog between patent examiner and patent attorneys/agents.
- US, Patent Baristas pharma and biotechnology patents.
- US, Patently-O: Patent Law Blog, ed. Dennis Crouch.
- US, Patent Pros, ed. Benjamin Tramm and Andrew DeMaster.
- US, Promote the Progress®, Patent law and policy. Founded and maintained by J. Matthew Buchanan.
- US, Rethink(IP), rethinking the practice of intellectual property law.
- US, PHOSITA®, An Intellectual Property Blog by the patent law firm of Dunlap Codding & Rogers, P.C.
- US, The Invent Blog, ed. Stephen M. Nipper.
- US, Rantings of an Urban Terrorist Blog on patent reform issues.
- US, Inventor's Rock, Patents+TMS, P.C.
- India, Patent Circle,ed. Varun Chhonkar and Seema Singh.de:Patentanwalt
