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 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.
The World Intellectual Property Organization and the International Federation of Intellectual Property Attorneys propose since 2022 a Patent Drafting Training Program to enhance the knowledge and skills of professionals, such as patent agents, who wish to strengthen their patent drafting skills.

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.

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 or the Eurasian Patent Office. 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.
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:
  5. # searching patent records;
  6. # preparation filing and prosecution of patent applications in Australia and with other countries;
  7. # drafting of patent specifications;
  8. # and provision of advice on interpretation, infringement and validity.
  9. 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.
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.

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.
Each of the four exams 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, 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 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. 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, which is the main organ of the European Patent Organisation, is to grant European patents. The EPO exists by virtue of the European Patent Convention, and is not legally bound to the European Union.
To legally represent clients 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. The EQE consists of four papers sat over four days, each day lasting between 3 hours and six and a half hours. Those who enroll for the examination must have an engineering or scientific degree, and the candidate must also have practised under supervision for at least 36 months 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. Typically, a representative is required if the patent applicant does not have a place of business in an EPC contracting state.

Germany

In Germany, only Patentanwälte/patent attorneys are entitled to represent clients from abroad before the German Patent and Trade Mark Office. 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 26 month 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 in patent cases before the German Supreme Court.

Hong Kong

In Hong Kong, there is no regulation on the profession of patent attorneys or agents. The main reason is that Hong Kong does not have a standard patent original grant system. Hong Kong recognizes standard patents or patents for invention registered and granted in the People's Republic of China, European Patent Office, or United Kingdom. These patents can be re-registered in Hong Kong without examination within a prescribed period. On October 4, 2011, the Hong Kong SAR Government published a Consultation Paper on Review of the Patent System in Hong Kong.

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. Indian Patent Law mandates a science or technical degree for person 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.
However, a decision on March 15, 2013, by the Madras High Court, 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.

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 and a D grade in at least three other subjects
  • First-year university 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
  • *Drafting of patent specifications
  • *Amendment of patent specifications
  • *Infringement and validity
As in the UK, 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 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 and are given the power to represent clients in litigation and arbitration within the area specified by Patent Attorney Law in Japan. Barristers are also qualified to work as patent attorneys in Article 3 of Practicing Attorney Law in Japan.
A patent attorney shall automatically be admitted to the Japan Patent Attorneys Association.