Patent Lawyer

What do Patent Lawyers do?

A patent attorney, or patent lawyer, well, you can probably guess what they do, which is that they are attorneys at law with specialized qualifications regarding clients wishing to obtain or protect patents. Patent attorneys act in all matters and all procedures pertaining or directly relating to patent law and practice. These include advising on applying for a patent, filing an opposition, and so on.

In every country and jurisdiction with patent attorneys or patent agents, the term may be used slightly differently, and as such, many places have different requirements for legal qualifications in comparison to the requirements for general legal practitioners.

For example, patent attorneys and patent agents, in some jurisdictions, are one and the same, and the two terms are used interchangeably. In other jurisdictions, the term patent lawyer or patent attorney may only be applied to patent agents who are also qualified as lawyers.

To go through the qualifications and abilities of patent lawyers by country…

In the US

Within the United States, a practitioner of patent law may be either a patent attorney or a patent agent. Both attorneys and agents will have the same license, allowing either to represent clients before the Patent Office (the patent office being a part of the United States Patent and Trademark Office, or USPTO).

In a few areas of the United States, patent attorneys are also admitted practice law. Since the USPTO issued the first patent back in 1790, the total number of US citizens who have passed the patent bar to hold a license to prosecute patent applications has reached sixty two thousand. Of these sixty two thousand, only about twenty seven thousand are licensed to practice law. It’s interesting to note that California has more patent attorneys and agents than any other state, followed closely by New York, and then Texas, though Delaware actually has more patent attorneys and agents per capita.

It’s interesting to note that a US patent agent must possess “good moral character and reputation”.

In Europe

In the UK, the main organ of the European Patent Organization would be the European Patent Office, or the EPO. This office is charged with the task of granting patents within Europe. For a patent attorney to represent a client before the EPO, they must first be registered to act as a professional representative. This process involves first qualifying as a European Patent Attorney by passing the EQE, or European Qualification Exam.

In Canada

Registered Patent Agents in Canada must qualify by completing a four part qualifying exam process, after having already worked in the field of patent law for at least one year. The four exams are referred to as Paper A, Paper B, Paper C, and Paper D, and each exam is around four hours in length.

The first paper pertains to the preparation of an application for a patent, the second pertains to the validity of an individual patent, the third deals with the preparation of response to an Official Action, and the fourth pertains to patent infringement. A major difference between the US and Canada regarding qualification is that, in Canada, the test is offered only once a year, in April, with the results being made known in the autumn of that year.

In Australia

The registration process for aspiring patent attorneys in Australia is a little more complex than in some countries. The registration process is administered by the Professional Standards Board for Patents and Trade Marks Attorneys, also known as the PSB.

To apply for registration as a patent attorney, an Australian citizen must…

• First pass the nine topics as dictated by Schedule 5 to the Patent Regulations 1991.

• Hold a certificate, degree, diploma, or other tertiary educational qualification in a field of technology directly pertaining to patent law (ie, inventions which need to be patented, etcetera)

• Be a Citizen of Australia

• Have at least one year’s experience working as either…

1. a trainee in a patent attorney's office or practice;
2. An employee practising patent matters on behalf of their employer
3. Or… an examiner of patents at the Australian Patent Office
• The candidate must also be of “good fame, integrity, and character”. That sounds subjective, but it basically amounts to this: If you have any convictions on your record regarding patent or copyright infringement in the past five years, you need not apply.