This section is aimed at providing our target users with a small web module to enhance their IP knowledge. It targets researchers or persons who need basic IP knowledge at work.
Each module will tackle a specific subject using material and examples available from the Web.
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The role of the Patent Attorney
What do patent attorney do?
Applying for a patent can be quite a complicated and costly enterprise. In this process, the patent attorney plays an important role that is not always well perceived by researchers. This module aims to give basic information about the tasks of a patent attorney.
A link between the researcher and the patent office
The main role of a patent attorney is to represent research organisations, companies or individual inventors before the official authorities granting patent rights: patent offices. This role entails many different tasks: applying for a patent on your behalf, follow the patent grant procedure according to your best interests and maintaining your intellectual property rights.
He is also the person who can advise you on many other related issues like defending and licensing your IP rights.
A recognised and well-regulated profession
Patent attorneys, like lawyers or Doctors, belong to an officially regulated profession with their own rules and deontology. Lists of attorneys are maintained by patent offices or professional organisations. When you apply for patent rights abroad, they are often a compulsory intermediary: in most countries foreign individuals cannot apply for a patent unless they are locally represented.
Unique skills
To better illustrate the role of an attorney, here are some examples of their tasks which require specialized skills.
Drafting the patent
A patent provides exclusive rights and must therefore follow strict rules defined by law. The attorney, who has usually passed an exam followed by a few years of practical experience, is perfectly aware of these rules and will draft the patent according to your best interests and the rules on which the strength and validity of your patent will depend.
EPO guidelines relating to the content of a patent application:
www.european-patent-office.org
Example of a patent drafted by an individual that represents little value considering the way it has been written:
l2.espacenet.com
Drafting claims
Attorneys are also experts in writing patent claims - the part of a patent defining the invention and the scope of protection sought - in order to get the broadest protection possible. To give you a better idea, just consider the following examples:
Invention expressed by a layman:
An online ordering method, where the client only clicks once to place and confirm his order.
Invention expressed in the patent claim to acquire the broadest possible rights:
A method of placing an order for an item comprising:
under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model.
This concern of getting the broadest possible rights can also be detected in the words used in patent documents. An attorney will not use the specific word "ball", but "spherical device", he will not use "computer screen" but "visual display unit". This terminology also explains the difficulty experienced when trying to retrieve patent documents using common terminology.
Pursuing the procedure
The attorney also follows the patent procedure. He does that abroad using a network of correspondents - patent attorneys located in the countries where protection is being sought. These procedures are quite complex and cannot be left to novice users of the patent system.
The complexity of the procedure is reflected in possible patent grant steps in this schedule of fees of the European Patent Office:
www.european-patent-office.org
Choosing a patent attorney
Choosing a patent attorney is quite similar to choosing a lawyer to defend one of your cases. To make a choice, you can consult lists of attorneys on the Patent Offices websites. You can also check the attorneys used by similar organisations as yours to obtain references and recommendations.
List of the European Patent Attorneys who can represent you before the EPO:
www.european-patent-office.org
Using this database - The European Patent Register - you can get names and addresses of attorneys who have handled a specific European Patent Application. A name can also be searched for in the above database to get the accurate contact details. Please bear in mind that attorneys working inside a company do not usually offer services to external clients. National Patent Attorney organisations can provide you with the names of attorneys working for external clients.
register.epoline.org
List of professional attorney organisations:
www.european-patent-office.org
How much does it cost?
It is essential to clearly agree on fees when hiring an attorney. Some of them apply hourly fees and the final price depends on the time spent on the patent procedure, and that of course can vary a lot.
A basic and average indication of fees is depicted in the following table:
www.ipr-helpdesk.org
To sum up:
This brief overview has demonstrated that the assistance of a patent attorney must be sought at a very early stage of the invention process. His services are crucial if you want to get the best guarantee that your inventor's interests are properly represented in the patent grant procedure and the exploitation of the invention. It is not advisable to enter the patent field alone, as the money invested in R&D and the patent procedure may be easily lost without this professional assistance.
The role of a patent attorney, the UK situation:
www.cipa.org.uk
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