A patent attorney represents foreign and national clients with
procedures for patent, utility model, design and trademark applications before
the patent offices.
It is a job that requires particular qualifications for representing
clients. In certain legal systems, it may also require the same legal
qualifications as a general legal practicioner. Patent attorneys are expected
to be available to answer a wide range of questions from their clients.
In Europe, the requirements for practising this profession are not
harmonised at the national level. Some of the specific fields in which patent
attorneys are competent to provide assistance to their clients vary in
different countries. However, respective professional qualifications are
mutually recognised to some degree.
There are also differences in the use of the titles patent agent,
patent attorney, patent lawyer (the last one is generally used when the
qualified person is a lawyer). In some systems (i.e. the United Kingdom) there
are also trademark agents and trademark attorneys.
Patent attorneys deal with the filing and prosecution of
applications for industrial property rights, particularly patents, utility
models, trademarks and designs. They also give advice on matters having to do
with intellectual property rights and related legal matters (including unfair
competition, licensing, know-how and the transfer of technology). In some
countries, they represent clients before courts in all fields of industrial
property.
It should be underlined that, in general, there is no obligation to
seek assistance from a patent attorney. Nevertheless, taking into account the
complexity of procedure and the fact that the value of the industrial property
right, specifically the patent, often depends as much on how it is drafted as
on the invention itself, it is highly advisable to seek assistance from a
patent attorney when drafting an application (particularly for patent claims).
Legal systems and requirements differ in different countries but what is
universal is the fact that the patent attorney is in a position to stand
alongside the applicant and fully assist him or her in the security and
protection of his or her rights. Assistance includes the following: research;
preparation of the application; drafting specifications, drawings, claims;
prosecuting the application; assisting in the conduct of litigation or transfer
of technology (e.g. by licensing).
A European Patent Attorney is authorised to represent applicants
filing European patent applications before the European Patent Office (EPO). A
European Patent Attorney's work requires him to have the ability to understand
the invention (technical aspect) and the ability to define the scope of
protection conferred by the patent in accordance with the relevant law (legal
aspect). Thus, a scientific or technical background is an essential requirement
for candidates. Only representatives whose names appear on a
list
maintained by the EPO are authorised to act in that capacity in
proceedings established by the European Patent Convention (EPC). One of the
requirements is passing
the European qualifying examination. All European Patent Attorneys
are members of the Institute of Professional Representatives before the
European Patent Office (
EPI ).
A European Patent Attorney advises inventors and companies on how
to protect their inventions, assesses the subject-matter in the light of the
prior art, and drafts the patent application. He then guides the application
through the examination procedure at the European Patent Office, consulting
with EPO examiners to determine the legally acceptable content and scope of the
application and advising the applicant on any amendments that may be necessary.
He also deals with oppositions and appeals.
If the applicant's residence or principal place of business is in
a European Patent Convention (EPC) contracting state, an applicant may conduct
proceedings before the EPO by himself. If that is not the case, the assistance
of a legal representative is obligatory.
OHIM clients can be represented by a practitioner established in
the Community who is entitled to act as a representative before the central
trademark office of the country where the applicant is established or by a
professional representative whose name appears on
the list
kept by the OHIM. Legal persons can be also represented by an
employee of the subsidiary company (the company must state that it has economic
connections with the company that employs the person who intends to file the
Community trade mark application and carry out any further procedures on behalf
of the parent company).
The
Community Trade
Mark Regulation obliges natural and legal persons not having their
domicile or their principal place of business or a real and effective
industrial or commercial establishment in the Community to be represented, in
all proceedings before the Office other than the filing of a CTM application,
by a professional representative, either a legal practitioner or a person whose
name is on the list of professional representatives maintained by the Office.
Natural and legal persons having their domicile or their principal place of
business or a real and effective industrial or commercial establishment in the
Community are not required to appoint such a professional representative.
According to the
Patent
Cooperation Treaty (PCT) the applicant is not obliged to use a
patent attorney for the international phase. Nevertheless, since the procedure
is divided into two phases (international and national), the legislation of a
designated country needs to be taken into account. Most designated patent
offices require non-resident applicants to be represented by an agent for the
national phase; others require non-resident applicants to have an address for
service in the designated country.
Regarding the
Madrid system for the
international registration of marks, which is also governed by the
WIPO, representation for the international phase is not obligatory.
Nevertheless, for the national phase, the need for a representative before the
office of origin or the office of a designated party is governed by the law and
practice of the specific contracting party. However, the assistance of a legal
representative is often obligatory when legal action is needed in the event of
the refusal of protection.
