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.

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.

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.

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 Attorneys of Australia

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).

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.Article 4(3) EPC 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 (EPA) and, to that end, must pass a pencil-and-paper examination, the European Qualifying Examination (EQE). 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. Article 133 EPC 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 (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.

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.

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.

Singapore

To become registered as a Patent Agent in Singapore, one must:Requirements For Becoming a Registered Patent Agent from the Intellectual Property Office of Singapore

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 examinationsPatent Agents Qualifying Examination from the Intellectual Property Office of Singapore; 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.

United Kingdom

Any person can act at the UK Patent Office, but the titles Registered Patent Attorney or 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) the foundation level papers, and the advanced level papers.

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).

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 USPTO.

In order to be registered as a patent agent or patent attorney, one must pass the USPTO registration examinationhttp://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. This exam is commonly referred to as the "patent bar". The exam tests a candidate's knowledge of patent law and USPTO policies and proceedures.

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. 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).

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.

Fictional characters who are patent attorneys

Calvin's father (in comics series Calvin and Hobbes)
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)