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.
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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). 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.
Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys (the "PSB").[1]
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.[3]
To become a registered patent agent in Canada one must complete a series of four qualifying exams after having worked in the field for 12 months.
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 once yearly in April. Results are mailed in the summer of the same year.
With a first-time passing rate of 2% and an overall passing rate of 13% in 2010 and trending downwards,[4] 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. Canadian registered patent agents with a suitable education background may apply for U.S. patent agent status in order to act on behalf of Canadian resident applicants before the United States Patent and Trademark Office (USPTO).
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).[5] 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).
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).[6] The EQE consists of four papers[6] sat over three days, each day lasting between 6 hours and seven 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.[7] 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.
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 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 an additional three years' education, i. e. completing 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. 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.[8] 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[9]. On October 4, 2011, the Hong Kong SAR Government published a Consultation Paper on Review of the Patent System in Hong Kong[10]. Under Chapter 3 of the Consultation Paper, the question on the regulation of Patent Agency Services in Hong Kong was raised. Currently, there are two self-regulated professional bodies representing the patent attorneys in Hong Kong:
(1) Asian Patent Attorneys Association Hong Kong ("APAAHK")[11]
APAAHK was formed as a regional group of the Asian Patent Attorneys Association ("APAA") based in Japan. Members of APAAHK mainly consists of intellectual property lawyers and recognized foreign patent attorneys. Every year they participate in an Annual Council Meeting hosted by one of the regional groups of the APAA. The event is a very good social networking opportunity for the patent attorneys in the region. However APAAHK does not carry out the functions of training and certifying its members.
(2) Hong Kong Institute of Patent Attorneys ("HKIPA")[12]
HKIPA was formed immediately after the Chief Executive of Hong Kong SAR announced the six advantageous industries in his Policy Address 2009-2010, namely Innovation and Technology, Testing and Certification, Creative and Cultural Industries, Environmental Industries, Medical Services and Education Services. These six industries were also being written down in the 12th Five Years Plan of the People's Republic of China as part of the National Strategy for Hong Kong. Similar to APAAHK, members of HKIPA mainly consists of intellectual property lawyers and foreign patent attorneys. In fact there are many common members between the two bodies. The only difference is that HKIPA carries out the functions of training and certifying its members. Qualified members are being designated as "Registered Patent Attorneys (HK)" for lawyers, "Registerd Patent Agents (HK)" for non-lawyers and "Registered Patent Engineers" for engineers. The training and examination programme is being conducted in co-operation with the Faculty of Science, University of Warwick, UK. Since 2009, the HKIPA has been lobbying the Hong Kong SAR Government to reform the current patent system and the regulation of patent practitioners[13]. The proposal was being discussed in the Legislative Council of Hong Kong SAR[14]. On 4 October 2011, the Government of Hong Kong SAR published a "Public Consultation on the Review of the Patent System in Hong Kong". On 10 November 2011, the HKIPA has entered into a MOU with the Netherlands Institute of Patent Attorneys[15].
The training and examination programme of HKIPA consists of ten papers[16]:
Level 1: Certificate in IP Law and Practice (“CIPL”):
Module 1: International Patent Law and Trade Secrets;
Module 2: Patent, Design and Copyright Law;
Module 3: International Trade Mark Law; and
Module 4: Trade Mark Law and Passing Off.
Level 2: Postgraduate Award in International Technology Management (“PGA”):
Module 5: International Patent Fundamentals;
Module 6: Fundamentals of Patent Drafting; and
Module 7: Product Design and Development Management.
Level 3: Advanced Diploma in International Technology Management ("ADITM") or Postgraduate Certificate in International Technology Management (“PGC”):
Modules 5, 6 and 7 of PGA plus
Module 8: Patent Practice;
Module 9: Patent Amendment and Official Actions; and
Module 10: Patent Infringement, Validity and Opposition.
Master of Science from University of Warwick:
- PGA + 6 modules + project; or
- PGC + 3 modules + project.
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". 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.[17]
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:
As in the UK (see above), 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 Israeli Patent law, a person is eligible for a patent editing license granted by the Israeli Patent Office (ILPO) if he meets the following criteria:
The written test is given every half-year and the oral test about two weeks later. The ILPO website has an open data base of past written tests, but not of oral tests, which are harder due to the need to show knowledge in areas other than patents—such as designs, trade marks, copyright, and their inconsistency regarding the material being tested.
An Israeli Patent lawyer does not have to be a lawyer or have any legal education or experience and his work is similar to that of a patent agent. There are about 340 patent lawyers in Israel as of 2010.
Section 155 of the Israeli Patent law authorizes a patent lawyer to represent before the head of the ILPO and in courts (as long as the representation does not concern legal aspects and there is a present lawyer representing the same side).
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.
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.
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[19] Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys.[20][21]
To become registered as a Patent Agent in Singapore, one must:[22]
Once registered, a Patent Agent may then be elected as an ordinary member of the Association of Patent Agents of Singapore.
Patent attorneys in South Africa[25] are qualified attorneys - see Attorneys in South Africa - who have additionally specialised through the South African Institute of Intellectual Property Law.[26] 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.[29]
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.
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.[32] Patent attorneys may use the title "Patent Agent" although this title may also be used by solicitors provided that patents are within their competence.[33]
Qualification is achieved by passing the JEB[34] 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 JEB patent advanced level papers.[35]
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. Exemptions from P3 and P4 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.[36])
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.[37] However, the USPTO Rules of Ethics and Professionalism, effective as of September 15, 2008, specifically clarifies that patent agents may not provide an "opinion of validity of another party's patent when the client is contemplating litigation and not seeking reexamination" because such activity "could not be reasonably necessary and incident to the preparation and prosecution" of a client's patent.[38]
Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. In the time since the USPTO issued the first patent in 1790, approximately 68,000 citizens have passed the USPTO registration examination, allowing them to register to prosecute patent applications.[39] (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 40,000 people are on the list of registered patent attorneys and agents, with about 30,000 of them also licensed to practice law.[40] Of the states, California has the most patent attorneys (and agents), followed by New York and Texas.[41] 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).[42] 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.[43] 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). 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 from June 9, 2005 through October 17, 2006: during that time, 58.2% of the 4,165 candidates passed the exam, which was based upon MPEP, 8th Edition, Revision 2.[44] The current exam is based on MPEP, 8th Edition, Revision 4, as of October 19, 2006. (No tests were given based upon MPEP, 8th Edition, Revision 3.) 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).[45] None of the world's countries, except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.[46]
A candidate must also have an adequate scientific and technical background or education to understand a client's invention. The educational requirement can be met by a bachelor's degree in a specifically enumerated major, such as biology, computer science,[47] chemistry, biochemistry, microbiology, physics, and biomedical, chemical, civil, electrical or mechanical engineering.[48] This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B[49] or Category C. Category B provides four distinct qualification options, where each option sets a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. An applicant can qualify under Category C by showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the ways 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). If practicing outside the United States, a patent agent or patent attorney must be a U.S. citizen.
See List of patent attorneys and agents, including fictional characters who are patent attorneys.