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patent attorney

Page history last edited by PBworks 11 years, 11 months ago




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.


United States


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 represent clients before the Patent Office, part of the United States Patent and Trademark Office (USPTO). Both patent agents and patent attorneys may prepare, file and prosecute patent applications for their clients before the Patent Office. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida.5


Patent attorneys 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 examination6. 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 most recently reported statistic for candidates passing the exam was 56.4%, for the period between July 26, 2004 and June 9, 2005. This was the period immediately after the primary examination method changed from pencil-and-paper to computer-based, but before changing to the MPEP 8th edition revision 2.7


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. This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B or Category C. Category B provides four distinct qualification options where each option requires a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. One can qualify under Category C through a showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the various ways in which 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).




European Patent Organisation


Main article: Representation before the European Patent Office


The task of the European Patent Office (EPO), which is the main organ of the European Patent Organisation, is to grant European patents.1 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 Examinations (EQEs). The EQEs consist of four papers sat over three days, each day lasting between 6 hours and seven and a half hours. 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 EQEs consist of Paper A - Preparing a patent application, Paper B - amending a patent or patent application, Paper C - Opposition and Paper D - 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. 2 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.


See also


* European Patent Institute (epi)

* International Federation of Intellectual Property Attorneys] (FICPI)

* List of professions

* Patent clerk

* Power of attorney

* Trademark attorney


External links


* Europe

o Institute of Professional Representatives before the European Patent Office or "European Patent Institute (epi)"

o The Chartered Institute of Patent Attorneys (CIPA) - United Kingdom

+ 1 Professional Trainee - A Resource for Trainee UK Patent Attorneys

o Deutsche Patentanwaltskammer - German Chamber of Patent Attorneys, in German

* North America

o USPTO database of patent attorneys and agents

o USPTO Office of Enrollment and Discipline

o Manual of Patent Examining Procedure

o Directory of United States Patent Attorneys by State

* New Zealand

o New Zealand patent office

+ New Zealand patents

+ New Zealand patent attorneys

* Singapore

o Intellectual Property Office of Singapore

o Singapore Register of Patents

* India

o List of Registered Patent Agents in India as of July 2006


Notable blogs


* Canada, Now, Why Didn't I Think of That?, ed. Sander Gelsing.

* China, IP Dragon, patent, copyright and trademark.

* China, China Law Blog Frequent commentary on China IP law.

* Europe, BLOG@IP::JUR, ed. Axel H. Horns.

* UK, The IPKat Weblog, ed. Prof. Jeremy Phillips and Ilanah Simon

* US, Anything Under the Sun Made By Man, ed. Russ Krajec.

* US, Just a Patent Examiner, Dialog between patent examiner and patent attorneys/agents.

* US, Patent Baristas pharma and biotechnology patents.

* US, Patently-O: Patent Law Blog, ed. Dennis Crouch.

* US, Patent Pros, ed. Benjamin Tramm and Andrew DeMaster.

* US, Promote the Progress®, Patent law and policy. Founded and maintained by J. Matthew Buchanan.

* US, Rethink(IP), rethinking the practice of intellectual property law.

* US, PHOSITA®, An Intellectual Property Blog by the patent law firm of Dunlap Codding & Rogers, P.C.

* US, The Invent Blog, ed. Stephen M. Nipper.

* US, Rantings of an Urban Terrorist Blog on patent reform issues.

* US, Inventor's Rock, Patents+TMS, P.C.

* India, Patent Circle,ed. Varun Chhonkar



source: www.wikipedia.com

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