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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, while in others the latter is used only if the person qualified as a lawyer.

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) or the Eurasian Patent Office (EAPO). On the national level, the requirements are not harmonized, although across the 28 Member States of the European Union respective professional qualifications are mutually recognised to some degree.

Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys (the "PSB").[2]

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

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]

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.

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 practiced 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.[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.

In France, patent attorneys must hold a degree in engineering or natural sciences, and take part in a legal training course at the CEIPI (French: Centre d'Études Internationales de la Propriété Intellectuelle). They also have to take an exam, generally referred to as "EQF" by the students, organized by the French Patent Office (INPI).

The exam involves a written and an oral part. The written exam is itself made of two parts, namely a so-called paper "A" consisting in drafting a French patent application on the basis of client instructions (those having passed the European qualifying examination are exempted from this paper) and a so-called paper "D" consisting in advising a client on a freedom-to-operate analysis. The oral exam involves a case study and answering questions of a jury.

In Germany, only Patentanwälte/patent attorneys (or Rechtsanwälte/attorneys-at-Law, who are per se 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 an additional three years' education, i. e. completing legal training of two years with an established German patent 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.[11] However, independent from their nationality, any natural person or any legal person who does not domiciled 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.

In Hong Kong, there is no regulation on the profession of patent attorneys or agents. The main reason is because Hong Kong does not have a standard patent (20 years) original grant system. Currently Hong Kong recognizes standard patents or patents for invention registered and granted in the 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]

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"[14]. 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 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.[15]

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.[16]

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.

Under section 142 of the Israel Patent law, a person is eligible for a patent attorney license granted by the Israel Patent Office (ILPO) if he meets the following criteria:

  • holds an academic degree in the field of science or engineering
  • has undergone a 2-year internship under the supervision of a patent attorney who has at least 3 years of experience, in the ILPO, or in a patent department of a company
  • has passed an oral and a written exam given by the ILPO
  • is a citizen of Israel
  • has paid a fee to the ILPO for the grant of the license

The written examination is given every half-year and the oral examination about two weeks later. The ILPO website has an open data base of past written examinations, but not of oral examinations, which are considered to be substantially more difficult due to the need to show knowledge in areas other than patents—such as designs, trade marks, copyright— and also due to inconsistency between one oral examination and another regarding the material being tested.

An Israel Patent Attorney does not have to be a lawyer (attorney-at-law / advocate) or have any legal education or experience. While an Israel Patent Attorney's work is similar to that of, for example, a US Patent Agent, section 155 of the Israel Patent law authorizes a patent attorney to represent a client in contested and uncontested proceedings before the ILPO and in the courts (provided in the latter case that the representation does not concern legal aspects of the dispute and that the client is also represented by an attorney-at-law who is present in court).

There are about 340 patent attorneys in Israel as of 2010.

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.[17] A patent attorney shall automatically be admitted to the Japan Patent Attorneys Association (Patent Attorney Act Art. 60).[18]

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

Registration as a Patent Attorney may then lead to election as a Fellow in the New Zealand Institute of Patent Attorneys.[20]

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[21] Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys.[22][23]

To become registered as a Patent Agent in Singapore, one must:[24]

Once registered, a Patent Agent may then be elected as an ordinary member of the Association of Patent Attorneys of Singapore.[27]

Patent attorneys in South Africa[28] are qualified attorneys – see Attorneys in South Africa – who have additionally specialised through the South African Institute of Intellectual Property Law.[29] This requires:

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.[32]

Currently, attorneys-at-law in Taiwan who have only passed the lawyer bar examination are allowed to represent applicants before Taiwan Intellectual Property Office for patent matters. However, these attorneys-at-law normally do not have a scientific or technical degree.

To become a patent attorney in Ukraine, one must:

Currently in Ukraine there are above 300 registered patent attorneys (data on September 10, 2012).[36] Their legal status is regulated by the 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.

Any person can act at the UK Patent Office, but the titles "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 patents are within their competence, 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]

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 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.[42][43] In the time since 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] (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).[47]

Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. or in the District of Columbia. 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.

To register as a patent agent or patent attorney, one must pass the USPTO registration examination.[48] 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 exam consists of 100 questions in multiple choice format, and is open-book with examinees permitted to use a PDF version of the MPEP. An unofficial score[1] of 70% indicates a passing grade on the exam.[48] 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 for the 2014 fiscal year, when 2,799 exams were administered with 42.8% resulting in passing scores.[49] The pass rate has dropped noticeably since the provisions of the 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 on 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

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