Patent attorney

Source: Wikipedia, the free encyclopedia.

A patent attorney is an

patent law
and practice, such as filing patent applications and oppositions to granted patents.

Terminology

The term "patent attorney" 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 used only if the person is qualified as a lawyer.

Role

A study analyzing patent examination decisions at major patent offices shows that patent attorney firms play a crucial role in the prosecution process, especially in less codified and rapidly changing technology areas such as ICT.[1]

Qualification regimes

In

Eurasian Patent Office
(EAPO). On the national level, the requirements are not harmonized.

Australia

Registration as a patent attorney in Australia and New Zealand is administered by the Trans-Tasman IP Attorneys Board (the Board).[2]

To apply to become a Trans-Tasman 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 or New Zealand
  4. have been employed in a position or positions, for at least 2 continuous years or a total of 2 years within 5 continuous years, that provide the applicant experience in the following skills:
    1. searching patent records;
    2. preparation filing and prosecution of patent applications in Australia and with other countries;
    3. drafting of patent specifications;
    4. and provision of advice on interpretation, infringement and validity.
  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.[3]

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.[4]

Canada

To become a registered patent agent in Canada one must complete a series of four qualifying exams over four days. As of May 1, 2014, a patent agent trainee can sit the exams if the trainee is a resident in Canada and has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications, for a period of at least 24 months. Up to 12 months of practical experience will also be recognized for those entitled to practice before the patent office of another country. One may also qualify to sit for the exams if the individual is a resident of Canada and has been employed for at least 24 months on the examining staff at the Canadian patent office.[5][6]

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 drafting 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 with a variety of essay-type and short answer questions and is offered at least once a year, typically in April. Results are typically known within 5 months.

With a first-time passing rate near 1% and an overall passing rate of 7% in 2012 and trending downwards,[7] the exam is notoriously challenging and most applicants attempt the exam over several years. 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 marks for a paper (if 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 Intellectual Property Office to obtain patent protection.

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).[8] The EPO exists by virtue of the European Patent Convention (EPC), and is not legally bound to the European Union.

To legally 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).[9] The EQE consists of four papers[9] sat over three days, each day lasting between 5 hours and six and a half hours. Those who enroll for the examination must have an engineering or scientific degree (though long experience in a scientific domain can be sufficient under certain limited conditions), and the candidate must also have practised under supervision for at least two years[citation needed] 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.[10] Typically, a representative is required if the patent applicant (or all of them if more than one) does not have a place of business in an EPC contracting state.

Germany

In

German Supreme Court.[11]

Hong Kong

In

People's Republic of China, European Patent Office (designated UK), or United Kingdom. These patents can be re-registered in Hong Kong without examination within a prescribed period.[12] On October 4, 2011, the Hong Kong SAR Government published a Consultation Paper on Review of the Patent System in Hong Kong.[13]

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". Therefore, there are different roles for patent attorney and patent agent in India.

Indian Patent Office conducts a qualifying examination for patent agent registration yearly (earlier, it was 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 2000 registered patent agents in India as of April 1, 2010.[14]

However, a decision on March 15, 2013 by the Madras High Court (Single Judge), stated that advocates, by possessing a law degree from a recognized university, have a right to file, appear and undertake all responsibilities of a patent agent. The single judge rejected the contention that to appear before the Patent Office, advocates required additional specific science/technical qualification such as B.Tech in Information Technology etc. According to this judgement, Advocates having degree in Engineering and Science are "Registered Patent Attorney" in India.[15]

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 below), exemptions from the Drafting and Amendment papers can be obtained if the equivalent papers in the European Qualifying Examination have been passed.

Japan

Patent specialists in

bengoshi) are also qualified to work as patent attorneys in Article 3 of Practicing Attorney Law in Japan.[16]
A patent attorney shall automatically be admitted to the Japan Patent Attorneys Association (Patent Attorney Act Art. 60).[17]

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:[18]

Registration as a Patent Attorney may then lead to election as a Fellow in the New Zealand Institute of Patent Attorneys.[19]

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.[20] Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys.[21][22]

Russia

To become registered as a patent attorney in Russia, one must:[23]

  1. be a Russian citizen,
  2. be a permanent resident in Russia,
  3. be aged 18 years of age or over,
  4. to have a higher education degree,
  5. to have not less than 4 years of an experience in the particular sphere (see below),
  6. to pass a qualification exam.

There are some specializations of patent attorneys:

  1. inventions and utility models,
  2. industrial designs,
  3. trademarks and service marks,
  4. names of places of origin of goods,
  5. topologies
    .

The qualification exam shall be held on each of above-mentioned specializations separately.

After successful passing the qualification exam a person is included in the register of patent attorneys which is maintained by the

Federal Service for Intellectual Property
issues a certificate of patent attorney to a person who passed the exam; certificate indicates the specialization of patent attorney.

A patent attorney carry out their professional activity throughout Russia individually or as employee of patent bureau. A patent attorney can not be government official, municipal official, notary, judge, elected official. A patent attorney may combine his status with the status of an advocate.

As of the beginning of the 2019, there were 2001 patent attorneys in Russia. Most of them are located in Moscow (1194) and Saint Petersburg (298). Patent attorneys are entirely absent from 23 regions of Russia.[24]

Singapore

To become registered as a Patent Agent in Singapore, one must:[25]

  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.;[26]
  4. have passed the 4 patent examinations;[27] 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 Attorneys of Singapore.[28]

South Africa

Patent attorneys in South Africa[29] are qualified attorneys – see Attorneys in South Africa – who have additionally specialised through the South African Institute of Intellectual Property Law.[30] This requires:

  1. a technical or scientific diploma or degree from a university or technikon, involving at least a three-year course of study;
  2. six months' practical training in the office of a registered practicing patent attorney;[31]
  3. sitting the Patent Board Examination.[32]

Taiwan

Taiwan is a technology-intensive industrialized developed country, and receives more than 80,000 patent applications a year (2006~2008). However, for political reasons, Taiwan is not a member state of the World Intellectual Property Organization (WIPO). To become a registered patent attorney in Taiwan, one must pass the Patent Attorney's Examination administered by the Examination Yuan, complete the required pre-practice training course (60 hours) with Taiwan Intellectual Property Office, and join the Taiwan Patent Attorney's Association.[33]

  1. The Examination. Nationals of the Republic of China(Taiwan), who are graduates in science, engineering, medicine, agriculture, life sciences, intellectual property rights, design, law or information management of public or accredited private colleges or higher institutions, or of an overseas institution of equivalent grade that complies with Ministry of Education criteria, and who hold certificates to this effect, are eligible to apply to take the examination for patent attorneys.[34] Foreign nationals, who possess the same qualifications are eligible to apply to take this examination.[34] The following subjects are given in the Examination (each subject is worth 100 points and an average of 60 points is required to attain a passing grade):
    1. the Patent Act;
    2. the Administrative Procedure Act and Administrative Enforcement Act;
    3. Standards for Patent Review and Patent Applications and Practice;
    4. Calculus, General Physics and General Chemistry;
    5. Professional English or Professional Japanese (to be chosen at the discretion of the candidate);
    6. One of: Engineering Dynamics, Biotechnology, Electronics, Physical Chemistry, Basic Design or Computer Architecture (to be chosen at the discretion of the candidate).
  2. Pre-Practice Training. The training is held annually or biannually. It consists of 57 hours of course work and 3 hours of examination.
  3. Taiwan Patent Attorney's Association.[35] Established on December 11, 2009, and registered with the Ministry of Internal Affairs on December 30, 2009.

Ukraine

To become a patent attorney in Ukraine, one must:

  1. be a citizen of Ukraine;
  2. to have a higher degree, and a higher degree in the IP protection sphere;[citation needed]
  3. to have not less than 5 years of an experience in the IP protection sphere;[clarification needed]
  4. to pass a qualification examinations, attestation and to receive a certificate on a right to act as a patent attorney;[citation needed]

Currently in Ukraine there are above 300 registered patent attorneys (data on September 10, 2012).

Cabinet of Ministers of Ukraine Enactment "On affirmation of the Provision about the representatives in the sphere of intellectual property (patent attorneys)" № 545 on September 10, 1994. Examination and registration of patent attorneys are conducted by the State Intellectual Property Service of Ukraine
.

United Kingdom

Any person can act at the

Patent Agent", "Patent Attorney" and "Registered Patent Attorney" (which is synonymous with "Registered Patent Agent") are reserved for those duly qualified.[37] The title "Patent Attorney" may also be used by solicitors provided that they have specialist expertise in patents, whereas the term "Patent Agent" relates to persons who have passed the relevant specialized examinations.[38]

Qualification is achieved by passing the PEB[39] 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 PEB patent advanced level papers.[40]

The PEB patent foundation papers are FC1 (formerly P1) - UK Patent Law and Procedures, FC2 (formerly "Law") - Basic English Law, FC3 (formerly P5) - International Patent Law, FC4 (formerly "D&C") - Designs & Copyright, FC5 (formerly P7) - Trade Mark Law.

The PEB patent advanced papers are FD1 (formerly P2) - Patent Practice, FD2 (formerly P3) - Drafting a Patent Application, FD3 (formerly P4) - Amending a Patent Application and FD4 (formerly P6) - Infringement and Validity of a Patent. Exemptions from FD2 and FD3 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 be elected as a Fellow, a person must have passed the UK Advanced Level exams, have accrued sufficient professional experience and be nominated by two existing Fellows.)[41]

United States

Poster Advertising a Patent Attorney, Office for Emergency Management. War Production Board

In the

USPTO issued the first patent in 1790, approximately 73,000 citizens have passed the USPTO registration examination, allowing them to register to prosecute patent applications.[44][failed verification] (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, roughly 45,000 people are on the list of registered patent attorneys and agents, with slightly less than 34,000 of them also licensed to practice law.[45] Of the states, California has the most patent attorneys (and agents), followed by New York and Texas.[46] 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 USPTO registration examination (officially titled Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, and commonly referred to as the Patent Bar).[47]

Patent attorneys must also be

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.

To register as a patent agent or patent attorney, one must pass the USPTO registration examination.

America Invents Act, implemented in March 2013, were first included in the exam.[50][51] For example, from June 9, 2005 through October 17, 2006, 58.2% of the 4,165 candidates passed the exam, which was based upon MPEP, 8th Edition, Revision 2.[52] The current exam is based mostly on MPEP, 9th Edition, Revision 08.2017, as of August 16, 2018.[53] 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).[54] None of the world's countries except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.[55] However, the Canadian Intellectual Property Office does not grant U.S. patent agents or attorneys the same privileges the USPTO grants Canadian patent agents.[56]

A patent attorney needs an adequate understanding of technology to understand a client's invention and it is generally helpful for applicants to have a scientific or technical background.[57] Although a technical or scientific degree is not required to take the patent bar, patent lawyers must be capable of understanding the technical and scientific aspects of patents and patent applications.[57]

There are three categories of qualification, through which an applicant for the patent bar may demonstrate the scientific and technical training necessary to provide valuable service to patent applicants:[58]

  • Category A: bachelor's degree in a required technical subject. The applicant submits proof of completion of an accredited bachelor's degree program in such academic fields as engineering, physics, pharmacology, biology, biochemistry, or computer science. It may be possible to qualify based upon a degree from an unaccredited institution, or a graduate degree in a technical field, and consideration may be given for other training and experience.
  • Category B: bachelor's degree in another subject. If an applicant does not possess a degree that qualifies the applicant to take the examination under Category A, an applicant with a bachelor's degree must prove to the satisfaction of the OED Director that the applicant possesses scientific and technical training equivalent to that received at an accredited U.S. college or university for a bachelor's degree in one of the subjects that is acceptable under Category A. Other training and education may be relevant to the determination of qualification for the exam.
  • Category C: practical engineering or scientific experience. An applicant who relies upon practical engineering or scientific experience but does not qualify under Category A or B may establish the required technical training by submitting proof of passage of the
    Fundamentals of Engineering Examination
    (FE test), a test of engineering fundamentals.

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.

Notable patent attorneys and agents

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

See also

Notes

  1. ^ The score is "unofficial" in the sense that only ninety of the 100 questions are scored. "Accordingly, to pass the examination a candidate must correctly answer seventy percent (sixty-three) of the ninety scored questions."[48]

References

  1. ^ de Rassenfosse, Gaétan; Jensen, Paul H.; Julius, T'Mir; Palangkaraya, Alfons; Webster, Elizabeth (2021). "Is the patent system a level playing field? The effect of patent attorney firms". SSRN.
  2. ^ "Trans-Tasman IP Attorneys Board - About". ttipattorney.gov.au. 2020-01-02. Retrieved 2020-01-02.
  3. ^ "psb.gov.au". psb.gov.au. 2009-06-30. Archived from the original on 2012-01-08. Retrieved 2012-01-15.
  4. ^ "Institute of Patent and Trade Mark Attorneys of Australia". Ipta.com.au. Retrieved 2012-01-15.
  5. ^ "Section 12.(1) of the Patent Rules". justice.gc.ca. Retrieved 2013-07-26.
  6. ^ "Amendments to the Patent Rules are coming into force on May 1, 2014". cipo.ic.gc.ca. Archived from the original on May 4, 2014. Retrieved 2014-05-02.
  7. ^ "Patent Agent Qualifying Examination - 2012 Report - Canadian Intellectual Property Office". Cipo.ic.gc.ca. 2013-02-28. Retrieved 2014-12-18.
  8. ^ See Article 4(3) EPC and also EPC Part V from Article 99 EPC to Article 105 inclusive.
  9. ^ a b European Patent Office web site, European qualifying examination, consulted on December 10, 2011.
  10. ^ Article 133 EPC
  11. ^ § 111 IV PatG
  12. ^ "Intellectual Property Department - Patents". ipd.gov.hk. Retrieved January 15, 2012.
  13. ^ "香港特別行政區政府知識產權署 Intellectual Property Department". ipd.gov.hk. Retrieved 2012-01-15.
  14. ^ "Search Patent Agent List in India". ipindiaservices.gov.in.
  15. ^ Agrawal, Anuj. "Madras High Court strikes down amendment to S.126 Patent Act; Says lawyers permitted to appear as Patent Agents as a matter of right". barandbench.com. Retrieved May 26, 2013.
  16. ^ "Japanese Attorney Act".
  17. ^ "Japanese Patent Attorney Act".
  18. ^ "legislation.govt.nz". legislation.govt.nz. 2011-01-01. Retrieved 2012-01-15.
  19. ^ "The New Zealand Institute of Patent Attorneys, Inc". nzipa.org.nz.
  20. ^ Employment. "Patent attorney information". Ministry of Business, Innovation and Intellectual Property Office of New Zealand. Retrieved 2020-01-24.
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  22. ^ "iponz.govt.nz". iponz.govt.nz. Retrieved 2012-01-15.
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  24. Federal Service for Intellectual Property
    . Retrieved 13 May 2020.
  25. ^ Requirements For Becoming a Registered Patent Agent from the Intellectual Property Office of Singapore Archived 2008-12-26 at the Wayback Machine
  26. ^ Graduate Certificate in IP Law Course information from the IP Academy
  27. ^ Patent Agents Qualifying Examination from the Intellectual Property Office of Singapore Archived 2008-12-26 at the Wayback Machine
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  33. ^ "law.moj.gov.tw". law.moj.gov.tw. Retrieved 2012-01-15.
  34. ^ a b [1] Archived March 14, 2009, at the Wayback Machine
  35. ^ "twpaa.org.tw". twpaa.org.tw. Retrieved 2012-01-15.
  36. ^ "Official web-portal of State Intellectual Property Service of Ukraine / Information resources". sips.gov.ua. Archived from the original on 2012-05-09. Retrieved 2012-09-27.
  37. ^ Copyright, Designs and Patents Act 1988, section 276
  38. ^ Chartered Institute of Patent Attorneys, http://www.cipa.org.uk/
  39. ^ "Patent Examination Board". Patent Examination Board. 2015-04-19. Archived from the original on 2015-02-25. Retrieved 2015-04-19.
  40. ^ 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.
  41. ^ "CIPA Membership Application Form including extract from Bye Laws" (PDF). Cipa.org.uk. Archived from the original (PDF) on 2010-02-15. Retrieved 2012-01-15.
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  47. ^ "Top Patent States (Per Capita)". Averyindex.com. 2007-05-02. Archived from the original on 2009-02-03. Retrieved 2012-01-15.
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  49. ^ "Exam Results by Fiscal Year". Office of Enrollment and Discipline, United States Patent and Trademark Office. Retrieved January 21, 2017.
  50. ^ Savoie, Amy J. (March 11, 2015). "Reflections on Taking the Patent Bar Exam". IPWatchdog.com. Retrieved January 21, 2017.
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  52. ^ "Results of the Registration Examination Based on MPEP 8th Edition, Revision 2". uspto.gov. Archived from the original on 2014-02-23.
  53. ^ "Registration Examination Source Material" (PDF). Office of Enrollment and Discipline, United States Patent and Trademark Office. Retrieved 2019-02-01.
  54. ^ 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
  55. ^ The provision on Aliens, 37 C.F.R. 11.6(c)
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External links