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. In some jurisdictions the terms are interchangeable, in others the latter is generally used only if the person qualified as a lawyer.
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 (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.
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.
To become a registered patent agent in Canada 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. In order 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 Patent Office to obtain patent protection. Canadian registered patent agents 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).
In France, 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.
In Germany, 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.
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”. 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 1626 registered patent agents in India as of April 1, 2010.
INDONESIA PATENTS SYSTEM
Major international treaties signed
* Patent Co-operation Treaty
* Paris Convention
* GATT (including Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS))
For costs of obtaining a patent, Please click the link for contact Patent Attorney Indonesia
Average time to obtain a patent (from Indonesian filing)
* 12 – 30 months from PCT national phase entry
* 30 – 48 months for Paris Convention entry
* 18 – 24 months for patent
Official language for patent prosecution “Bahasa Indonesia“
Non-patentable subject matter
* Any process or product that contravenes the prevailing rules and regulations, religious morality, public order or ethics
* Methods of medical treatment and diagnostic methods
* Discoveries or scientific theories
* Mathematical formulae
* Living creatures, (except micro-organism),
* Biological processes for reproduction of plants and animals
Grace period for prior disclosure or sale
6 months before the Indonesian filing date (for experiments, R&D or disclosure to learned community)
Major prosecution events
Paris Convention entry : 12 months from priority
National phase entry : 31 months from priority
Request for Examination : 36 months from filing
Payment of grant fees : 1 year after grant
Renewals of patents : every year
Extension of deadlines
* 3 months for formality events
* 13 months for PCT national phase entry
Pharmaceutical Data Exclusivity Laws Not available
Parallel Imports Allowable
Term of patent 20 years
Patent term extension Not available
Restoration of lapsed patent Not available
Search and Examination The Patent Office conducts its own Search and Examination but favours Search and Examination reports issued in prescribed countries such as US, UK, Australia, Japan and South Korea and mostly from European Patent Office
Other forms of patents (e.g. petty/innovation patents) Petty Patent: Petty Patent does not require inventiveness and maximum of one invention is allowable.
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ENFORCEMENT OF PATENTS
Infringement offence Civil and Criminal
Any specialized courts for IP Commercial Court for civil case
Outline of the enforcement steps
(i) Cease and Desist Letter
(ii) Infringement lawsuit
Relief against groundless threats Not available
Declaration of non-infringement Not available
Preliminary injunctions Available
Time frame for various legal actions
* Revocation – 6 – 8 months for first instance and 6 – 8 months for Cassation
* Infringement proceeding – 6 – 8 months for first instance and 6 – 8 months for Cassation
Alternative dispute resolution
Availability of damages and other relief for infringement
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 (or ordinary level B grade) and a D grade in at least three other subjects
- First-year university (or equivalent) 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 (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)
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.
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 a year and the oral test is given about two weeks later. The ILPO has an open data base of past written tests in its web site, but not of oral tests which are considered harder due to the need to show knowledge in areas other than patents such as Designs, Trade marks and 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).
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 (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.
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.
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.
Patent attorneys in South Africa 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 technikon, 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 is one of the technology-intensive industrialized developed countries which receives more than 80,000 patent applications each 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 needs to 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 thereafter join 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.
Any person can act at the UK Patent Office, but the titles “Patent Attorney” (which is synonymous with “Patent Agent”) and “Registered Patent Attorney” (which is synonymous with “Registered Patent Agent”) are reserved for those duly qualified.
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 become a fellow, a person must have passed the UK Advanced Level exams, have accrued sufficient professional experience and be nominated by two existing fellows.
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 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 applications. 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 65,000 citizens have passed the USPTO registration examination, allowing them to be registered 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 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 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 to U.S. citizens the right which 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. One 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 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.
Posted on Maret 3, 2011, in Intellectual Property Rights, Patent and tagged European Patent Convention, European Patent Office, European Union, Indonesia Patent Office, Intellectual property, International IP Firm, IP Firm in Indonesia, Leading IP Firm Indonesia, Patent, Patent attorney, Patent Attorney Australia, Patent Attorney Japan, Patent Attorney US, Patent Japan, Patent Lawyer Indonesia, Patent PCT Indonesia, Patent Search, PCT Patent International, United States Patent and Trademark Office, WIPO Search Patent. Bookmark the permalink. 7 Komentar.