Patent attorney
Encyclopedia
A patent attorney is an attorney
who has the specialized qualifications necessary for representing clients in obtaining patent
s 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
.
, 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.
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.
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 4% and an overall passing rate of 12% in 2009 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 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).
(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
). 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 opponent
s) 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). The EQE consists of four papers 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. 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.
, 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.
, 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. 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.
, 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. On October 4, 2011, the Hong Kong SAR Government published a Consultation Paper on Review of the Patent System in Hong Kong. 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")
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")
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. The proposal was being discussed in the Legislative Council of Hong Kong SAR. 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.
The training and examination programme of HKIPA consists of ten papers:
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.
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.
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.
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).
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.
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 Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys.
Once registered, a Patent Agent may then be elected as an ordinary member of the Association of Patent Agents of Singapore.
are qualified attorneys (see Legal education in South Africa) who have additionally specialised through the South African Institute of Intellectual Property Law. This requires:
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.
Qualification is achieved by passing the JEB 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.
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.)
, 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 Patent Office, part of the United States Patent and Trademark Office
(USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent application
s. Patent agents and patent attorneys may also provide patentability
opinions, as noted by the U.S. Supreme Court in Sperry v. Florida. 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.
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. (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. Of the states, California has the most patent attorneys (and agents), followed by New York and Texas. 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). 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 claim
s 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. 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. 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). None of the world's countries, except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.
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
, chemistry
, biochemistry
, microbiology
, physics
, and biomedical
, chemical
, civil
, electrical
or mechanical 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 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.
Lawyer
A lawyer, according to Black's Law Dictionary, is "a person learned in the law; as an attorney, counsel or solicitor; a person who is practicing law." Law is the system of rules of conduct established by the sovereign government of a society to correct wrongs, maintain the stability of political...
who has the specialized qualifications necessary for representing clients in obtaining patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
s and acting in all matters and procedures relating to patent law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
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
Lawyer
A lawyer, according to Black's Law Dictionary, is "a person learned in the law; as an attorney, counsel or solicitor; a person who is practicing law." Law is the system of rules of conduct established by the sovereign government of a society to correct wrongs, maintain the stability of political...
.
Qualification regimes
In EuropeEurope
Europe is, by convention, one of the world's seven continents. Comprising the westernmost peninsula of Eurasia, Europe is generally 'divided' from Asia to its east by the watershed divides of the Ural and Caucasus Mountains, the Ural River, the Caspian and Black Seas, and the waterways connecting...
, requirements for practising as patent attorney before national patent offices should be distinguished from those needed for practising before the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO). On the national level, the requirements are not harmonized across the European Union
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, except that the EU makes sure that respective professional qualifications are mutually recognised to some degree.
Australia
Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys (the "PSB").To apply to become an Australian patent attorney, one must:
- pass the nine topics set out in Schedule 5 to the Patent Regulations 1991.
- hold a suitable tertiary educational qualification in a field of technology that contains potentially patentable subject matter.
- be a resident in Australia
- 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:
- searching patent records;
- preparation filing and prosecution of patent applications in Australia and with other countries;
- drafting of patent specifications;
- and provision of advice on interpretation, infringement and validity.
- 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 CanadaCanada
Canada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
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 4% and an overall passing rate of 12% in 2009 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 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
Patent Act (Canada)
The Canadian Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the...
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
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO).
European Patent Organisation
The task of the European Patent OfficeEuropean Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(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
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
). The EPO is not legally bound to the European Union
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, instead being an international body set up under an entirely different international treaty, the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC).
To legally represent clients (generally patent applicants, proprietors and opponent
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
s) 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
Representation before the European Patent Office
The European Patent Convention , the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office .- General rule and...
and, to that end, must pass a written examination, the European Qualifying Examination (EQE). The EQE consists of four papers 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. 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.
France
In FranceFrance
The French Republic , The French Republic , The French Republic , (commonly known as France , is a unitary semi-presidential republic in Western Europe with several overseas territories and islands located on other continents and in the Indian, Pacific, and Atlantic oceans. Metropolitan France...
, patent attorneys must hold a degree in engineering or natural sciences, and take part in a legal training course at the CEIPI (French
French language
French is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
: 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.
Germany
In GermanyGermany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
, 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
Deutsches Patent- und Markenamt
The Deutsches Patent- und Markenamt or German Patent and Trade Mark Office is the German national patent office, with headquarters in Munich, and offices in Berlin and Jena...
(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. 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.
Hong Kong
In Hong KongHong Kong
Hong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
, 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
People's Republic of China
China , officially the People's Republic of China , is the most populous country in the world, with over 1.3 billion citizens. Located in East Asia, the country covers approximately 9.6 million square kilometres...
, European Patent Office
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(designated UK), or United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
. 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. 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")
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
Hong Kong Institute of Patent Attorneys
The Hong Kong Institute of Patent Attorneys was formed immediately after the Chief Executive of Hong Kong SAR has announced the six advantageous industries in his Policy Address 2009-2010, namely Innovation and Technology, Testing and Certification, Creative and Cultural Industries, Environmental...
("HKIPA")
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
People's Republic of China
China , officially the People's Republic of China , is the most populous country in the world, with over 1.3 billion citizens. Located in East Asia, the country covers approximately 9.6 million square kilometres...
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
University of Warwick
The University of Warwick is a public research university located in Coventry, United Kingdom...
, 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. The proposal was being discussed in the Legislative Council of Hong Kong SAR. 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.
The training and examination programme of HKIPA consists of ten papers:
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
Passing off
Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill....
.
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.
India
In India, a person registered to practice before Indian Patent OfficeIndian Patent Office
The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs & Trade Marks . This is a subordinate office of the Indian government and administers the Indian law of Patents, Designs and Trade Marks....
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.
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 CertificateLeaving CertificateThe Leaving Certificate Examinations , commonly referred to as the Leaving Cert is the final examination in the Irish secondary school system. It takes a minimum of two years preparation, but an optional Transition Year means that for those students it takes place three years after the Junior...
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 engineeringEngineeringEngineering is the discipline, art, skill and profession of acquiring and applying scientific, mathematical, economic, social, and practical knowledge, in order to design and build structures, machines, devices, systems, materials and processes that safely realize improvements to the lives of...
, chemistryChemistryChemistry is the science of matter, especially its chemical reactions, but also its composition, structure and properties. Chemistry is concerned with atoms and their interactions with other atoms, and particularly with the properties of chemical bonds....
, or physicsPhysicsPhysics is a natural science that involves the study of matter and its motion through spacetime, along with related concepts such as energy and force. More broadly, it is the general analysis of nature, conducted in order to understand how the universe behaves.Physics is one of the oldest academic... - 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)
- Leaving Certificate
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.
Israel
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:- holds an academic degree in the field of science or engineering
- has undergone a 2 year internship in a patent editing firm that has at least 3 years of experience, in the ILPO or in a patent department of a company
- has passed an oral and written test given by the ILPO
- is an Israeli citizen
- has paid a fee to the ILPO for the grant of the license
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).
Japan
Patent specialists in JapanJapan
Japan is an island nation in East Asia. Located in the Pacific Ocean, it lies to the east of the Sea of Japan, China, North Korea, South Korea and Russia, stretching from the Sea of Okhotsk in the north to the East China Sea and Taiwan in the south...
are known as benrishi
Benrishi
Benrishi is a Japanese legal profession specifically licensed to practice intellectual property law. Most benrishi specialize in patent law, but are also allowed to practice in copyright, trademark, unfair competition and trade secret law....
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.
New Zealand
To become registered as a Patent Attorney in New Zealand, one must:- be a New Zealand citizen, Commonwealth citizen (British subject) or a citizen of the Republic of Ireland.
- be aged 21 (twenty one) years of age or over.
- have passed the New Zealand Patent Attorney Examinations.
- be of good character.
- have been employed for a period(s) of at least three years by a Patent Attorney in New Zealand, The Patent Office, or in a form of employment that offers substantially similar practical experience - see section 100 of the Patents Act 1953:
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 Consequently, a large number of Australian Patent Attorneys are also New Zealand Patent Attorneys.
Singapore
To become registered as a Patent Agent in Singapore, one must:- be a resident in Singapore;
- hold a university degree or equivalent qualification approved by the Registrar;
- have passed the Graduate Certificate in IP Law Course jointly offered by the IP Academy, Singapore and the Faculty of Law, National University of Singapore.;
- have passed the 4 patent examinations; and
- has completed internship in patent agency work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule, for a continuous period of at least 12 months; or a total period of at least 12 months within a continuous period of 24 months.
Once registered, a Patent Agent may then be elected as an ordinary member of the Association of Patent Agents of Singapore.
South Africa
Patent attorneys in South AfricaSouth Africa
The Republic of South Africa is a country in southern Africa. Located at the southern tip of Africa, it is divided into nine provinces, with of coastline on the Atlantic and Indian oceans...
are qualified attorneys (see Legal education in South Africa) who have additionally specialised through the South African Institute of Intellectual Property Law. This requires:
- a technical or scientific diploma or degree from a university or technikonTechnikonTechnikon is a term used in South Africa to refer to a University of Technology. A synonym is "Technical University".Technikons focus mainly on providing high quality education and giving a hands-on approach to education and training...
, involving at least a three-year course of study; - six month's practical training in the office of a registered practicing patent attorney;
- sitting the Patent Board Examination.
Taiwan
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.- The Examination. Nationals of the Republic of China(Taiwan), who are graduates in science, engineering, medicine, agriculture, life sciences, intellectual property rights, design, law or information management of public or accredited private colleges or higher institutions, or of an overseas institution of equivalent grade that complies with Ministry of Education criteria, and who hold certificates to this effect, are eligible to apply to take the examination for patent attorneys. Foreign nationals, who possess the same qualifications are eligible to apply to take this examination. The following subjects are given in the Examination (each subject is worth 100 points and an average of 60 points is required to attain a passing grade):
- the Patent Act;
- the Administrative Procedure Act and Administrative Enforcement Act;
- Standards for Patent Review and Patent Applications and Practice;
- Calculus, General Physics and General Chemistry;
- Professional English or Professional Japanese (to be chosen at the discretion of the candidate);
- One of: Engineering Dynamics, Biotechnology, Electronics, Physical Chemistry, Basic Design or Computer Architecture (to be chosen at the discretion of the candidate).
- Pre-Practice Training. The training is held annually or biannually. It consists of 57 hours of course work and 3 hours of examination.
- Taiwan Patent Attorney's Association. Established on December 11, 2009, and registered with the Ministry of Internal Affairs on December 30, 2009.
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.
United Kingdom
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. Patent attorneys may use the title "Patent Agent" although this title may also be used by solicitors provided that patents are within their competence.Qualification is achieved by passing the JEB 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.
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
Chartered Institute of Patent Attorneys
The Chartered Institute of Patent Attorneys is the British professional body of patent attorneys. It was founded in 1882 as the Chartered Institute of Patent Agents and incorporated by Royal Charter in 1891...
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.)
United States
In the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, 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 Patent Office, part of the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s. Patent agents and patent attorneys may also provide patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
opinions, as noted by the U.S. Supreme Court in Sperry v. Florida. 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.
Patent attorneys must also be admitted to the practice of law
Admission to the bar in the United States
In the United States, admission to the bar is the granting of permission by a particular court system to a lawyer to practice law in that system. Each U.S. state and similar jurisdiction has its own court system and sets its own rules for bar admission , which can lead to different admission...
in at least one state or territory
Incorporated territory
Territories of the United States are one of the four types of political division of the United States, overseen directly by the federal government of the United States and not any part of a U.S. state. These territories were created to govern newly acquired land while the borders of the United...
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. (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. Of the states, California has the most patent attorneys (and agents), followed by New York and Texas. 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
USPTO registration examination
In order to be registered as a patent agent or patent attorney in the United States, one must pass the United States Patent and Trademark Office registration examination, officially called the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark...
(officially titled Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office). 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
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
; whether someone is infringing upon the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s 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. 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
Manual of Patent Examining Procedure
The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...
(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. 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). None of the world's countries, except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.
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
Bachelor's degree
A bachelor's degree is usually an academic degree awarded for an undergraduate course or major that generally lasts for three or four years, but can range anywhere from two to six years depending on the region of the world...
in a specifically enumerated major, such as biology
Biology
Biology is a natural science concerned with the study of life and living organisms, including their structure, function, growth, origin, evolution, distribution, and taxonomy. Biology is a vast subject containing many subdivisions, topics, and disciplines...
, computer science
Computer science
Computer science or computing science is the study of the theoretical foundations of information and computation and of practical techniques for their implementation and application in computer systems...
, chemistry
Chemistry
Chemistry is the science of matter, especially its chemical reactions, but also its composition, structure and properties. Chemistry is concerned with atoms and their interactions with other atoms, and particularly with the properties of chemical bonds....
, biochemistry
Biochemistry
Biochemistry, sometimes called biological chemistry, is the study of chemical processes in living organisms, including, but not limited to, living matter. Biochemistry governs all living organisms and living processes...
, microbiology
Microbiology
Microbiology is the study of microorganisms, which are defined as any microscopic organism that comprises either a single cell , cell clusters or no cell at all . This includes eukaryotes, such as fungi and protists, and prokaryotes...
, physics
Physics
Physics is a natural science that involves the study of matter and its motion through spacetime, along with related concepts such as energy and force. More broadly, it is the general analysis of nature, conducted in order to understand how the universe behaves.Physics is one of the oldest academic...
, and biomedical
Biomedical engineering
Biomedical Engineering is the application of engineering principles and design concepts to medicine and biology. This field seeks to close the gap between engineering and medicine: It combines the design and problem solving skills of engineering with medical and biological sciences to improve...
, chemical
Chemical engineering
Chemical engineering is the branch of engineering that deals with physical science , and life sciences with mathematics and economics, to the process of converting raw materials or chemicals into more useful or valuable forms...
, civil
Civil engineering
Civil engineering is a professional engineering discipline that deals with the design, construction, and maintenance of the physical and naturally built environment, including works like roads, bridges, canals, dams, and buildings...
, electrical
Electrical engineering
Electrical engineering is a field of engineering that generally deals with the study and application of electricity, electronics and electromagnetism. The field first became an identifiable occupation in the late nineteenth century after commercialization of the electric telegraph and electrical...
or mechanical engineering
Mechanical engineering
Mechanical engineering is a discipline of engineering that applies the principles of physics and materials science for analysis, design, manufacturing, and maintenance of mechanical systems. It is the branch of engineering that involves the production and usage of heat and mechanical power for the...
. 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 sets a requisite number of semester hours in physics
Physics
Physics is a natural science that involves the study of matter and its motion through spacetime, along with related concepts such as energy and force. More broadly, it is the general analysis of nature, conducted in order to understand how the universe behaves.Physics is one of the oldest academic...
, biology
Biology
Biology is a natural science concerned with the study of life and living organisms, including their structure, function, growth, origin, evolution, distribution, and taxonomy. Biology is a vast subject containing many subdivisions, topics, and disciplines...
, chemistry
Chemistry
Chemistry is the science of matter, especially its chemical reactions, but also its composition, structure and properties. Chemistry is concerned with atoms and their interactions with other atoms, and particularly with the properties of chemical bonds....
, computer science
Computer science
Computer science or computing science is the study of the theoretical foundations of information and computation and of practical techniques for their implementation and application in computer systems...
, and/or engineering
Engineering
Engineering is the discipline, art, skill and profession of acquiring and applying scientific, mathematical, economic, social, and practical knowledge, in order to design and build structures, machines, devices, systems, materials and processes that safely realize improvements to the lives of...
. An applicant can qualify under Category C by showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination
Fundamentals of Engineering exam
The Fundamentals of Engineering exam, also referred to as the Engineer in Training exam, and formerly in some states as the Engineering Intern exam, is the first of two examinations that engineers must pass in order to be licensed as a Professional Engineer in the United States...
. 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
Social sciences
Social science is the field of study concerned with society. "Social science" is commonly used as an umbrella term to refer to a plurality of fields outside of the natural sciences usually exclusive of the administrative or managerial sciences...
, mathematics
Mathematics
Mathematics is the study of quantity, space, structure, and change. Mathematicians seek out patterns and formulate new conjectures. Mathematicians resolve the truth or falsity of conjectures by mathematical proofs, which are arguments sufficient to convince other mathematicians of their validity...
, or philosophy
Philosophy
Philosophy is the study of general and fundamental problems, such as those connected with existence, knowledge, values, reason, mind, and language. Philosophy is distinguished from other ways of addressing such problems by its critical, generally systematic approach and its reliance on rational...
by themselves do not meet this requirement.
A candidate must also possess "good moral character
Good moral character
Good moral character is a defined legal concept in United States law that details requirements for consideration for certain benefits or positions. The term is chiefly used by the federal government in immigration law, but it can also be a requirement for a particular position of employment or...
and reputation" (37 CFR
Code of Federal Regulations
The Code of Federal Regulations is the codification of the general and permanent rules and regulations published in the Federal Register by the executive departments and agencies of the Federal Government of the United States.The CFR is published by the Office of the Federal Register, an agency...
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
- European Patent Institute (epi)
- International Federation of Intellectual Property AttorneysInternational Federation of Intellectual Property AttorneysThe International Federation of Industrial Property Attorneys or International Federation of Intellectual Property Attorneys, abbreviated FICPI , is a non-political, international, professional body of intellectual property professionals, i.e...
(FICPI) - Patent engineerPatent engineerA patent engineer or patent scientist is a patent professional that is typically involved in preparing and prosecuting patent applications. The terms are usually applied to patent professionals with scientific or engineering backgrounds that do not require either attorney or patent agent...
- Patent examiner
- Power of attorneyPower of attorneyA power of attorney or letter of attorney is a written authorization to represent or act on another's behalf in private affairs, business, or some other legal matter...
- Trademark attorneyTrademark attorneyA trademark attorney is a person who is qualified to act in matters involving trademark law and practice and provide legal advice on trade mark and design matters....
External links
- Australia
- Patent & Trade Mark Attorneys on IP AustraliaIP AustraliaThe Australian Patent Office is a division of IP Australia which is an agency of the Australian Department of Innovation, Industry, Science and Research. APO issues patents for inventions. APO was established in 1904 by the Commonwealth of Australia and since 1998 has been located in one building,...
, the Australian Patent Office - Australian Patent Attorney Directory, developed and maintained by the IDC (Industry Development Centre (Hunter) Ltd), a not-for-profit organisation established by the Australian Government
- Australian Patent Attorney Directory, free directory of patent attorney firms in Australia by capital city
- Patent & Trade Mark Attorneys on IP Australia
- Europe
- Institute of Professional Representatives before the European Patent Office or "European Patent Institute (epi)"
- The Chartered Institute of Patent Attorneys (CIPAChartered Institute of Patent AttorneysThe Chartered Institute of Patent Attorneys is the British professional body of patent attorneys. It was founded in 1882 as the Chartered Institute of Patent Agents and incorporated by Royal Charter in 1891...
) - United Kingdom - Deutsche Patentanwaltskammer - German Chamber of Patent Attorneys, in GermanGerman languageGerman is a West Germanic language, related to and classified alongside English and Dutch. With an estimated 90 – 98 million native speakers, German is one of the world's major languages and is the most widely-spoken first language in the European Union....
- APTMA - Irish Association of Patent & Trade Mark Attorneys
- Institut national de la propriété industrielle in FrenchFrench languageFrench is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
- Compagnie nationale des Conseils en Propriété Industrielle in FrenchFrench languageFrench is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
- Centre d'Etudes Internationales de la Propriété Industrielle in FrenchFrench languageFrench is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
- North America