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

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

External links

Notable blogs

source: www.wikipedia.com