Patent attorney

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.

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.

Related Topics:
Europe - European Patent Office - European Union

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

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. Once certified, a registered patent agent is given powers under the Canadian Patent Act to represent applicants applying to the Patent Office to obtain patent protection.

Related Topics:
Canada - Canadian Patent Act

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

European Patent Organisation

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 http://www.european-patent-office.org/legal/epc/e/ar133.html). Effectively, a representative is required if all the applicants for a patent do not have a place of business in an EPC contracting state.

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

Germany

In Germany, nobody is entitled to represent clients before the German Patent and Trade Mark Office (DPMA) except registered Attorneys-at-Law and, of course, registered Patent Attorneys having passed a certain training and an examination in accordance with applicable German Law. However, employees can represent their employer before the German Patent and Trade Mark Office.

Related Topics:
Germany - German Patent and Trade Mark Office

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

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.

Related Topics:
Japan - Benrishi

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

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.

Related Topics:
United Kingdom - Chartered Institute of Patent Agents - Patent - Isle of Man

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

United States

In the United States, practitioners may either be a patent attorney or patent agent. The term patent attorney is only used for those patent agents who are also admitted to the practice of law in at least one state or territory (e.g., American Samoa) in the United States, while a patent agent is not so qualified. However, both types of practitioners may practice before the United States Patent and Trademark Office. Legal ethics rules prohibit lawyers from using the title "patent attorney" unless they are admitted to practice before the USPTO.

Related Topics:
United States - American Samoa - United States Patent and Trademark Office - Lawyer

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

In order to be registered as a patent agent, one must pass the USPTO registration examination, a 100-question, multiple-choice test. The required score to pass is 70%, but only (on average) 40% of examinees attain this score. In the legal community, the examination is frequently and inaccurately referred to as the patent bar. It is not necessary to have a law degree to sit for the exam; indeed, it is not necessary to have even taken a course in law. However, the USPTO requires that all candidates for registration have a background in one of the "hard sciences". This requirement is typically met with a bachelor's degree in a field such as chemistry, physics, biology, or engineering. However, it can also be satisfied by passing the Fundamentals of Engineering exam (FE exam), or by demonstrating sufficient science coursework or applicable life experience.

Related Topics:
Law degree - Bachelor's degree - Chemistry - Physics - Biology - Engineering - Fundamentals of Engineering exam

~ ~ ~ ~ ~ ~ ~ ~ ~ ~

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, 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 US patent application or international application.

Related Topics:
2004 - Manual of Patent Examining Procedure - MPEP - US - Patent application - 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.

~ ~ ~ ~ ~ ~ ~ ~ ~ ~