United States Patent Attorneys & Lawyers
Patent attorneys are attorneys with a variety of unique qualifications and legal talents. Typically, a patent attorney is an attorney that possesses both the legal and technical expertise necessary to represent clients before a patent office in order to procure patents on the client’s behalf. The scope of duties for a patent attorney can be broad and include representing clients in all matters and procedures relating to patent law and practice, such as preparing, drafting and filing patent applications, prosecuting patent applications representing clients in other patent-related matters. Patent attorneys have different skill sets and duties in different countries, however, and thus may or may not have the same legal qualifications typically attributed to a lawyer in the United States. The below descriptions are provided by Maier & Maier as an introductory guide to helping understand both domestic and international patent practice and patent practitioners.
As a preliminary note, please be aware that different countries or regions use different terms for patent practitioners. The most standard terms are patent attorney, patent lawyer and patent agent. Depending on the locality or jurisdiction, however, each of these terms may have the same meaning or may imply a different range of qualifications or duties. Many jurisdictions have a distinction between a patent practitioner who can practice solely before that jurisdiction’s patent office and a patent practitioner who can perform a broader scope of legal duties.
Qualifications and Capabilities
Intellectual Property Practice in the United States
The United States enjoys two primary types of patent practitioners, the patent attorney (or patent lawyer) and the patent agent. Patent attorneys and patent agents are both federally registered to practice before the United States Patent and Trademark Office as a result of having achieved one or more technical qualifications and passing the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (also known as the “Patent Bar Exam”). Thus, both patent attorneys and patent agents are licensed to represent clients in preparing, filing and prosecuting patent applications before the USPTO. Additionally, patent attorneys and patent agents in the United States may also render Patentability Opinions, as decided by the United States Supreme Court in Sperry v. Florida (373 U.S. (1963)[1].
An important distinction between a patent attorney and a patent agent arises from the rendering of legal opinions related to patents, however. As recently stated by the USPTO in its Rules of Ethics and Professionalism[2] (effective September 15, 2008), patent agents may not provide a legal “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. Therefore, it is extremely important for clients to closely examine and forecast the purpose of any opinions they seek to obtain. Finally, a patent attorney can represent their clients in all forms of litigation and before any court where they are licensed to practice, whereas patent agents are relegated to matters before the USPTO. As a course of practice, Maier & Maier recommends and deems it typically advantageous to have a patent attorney prepare validity opinions, as well as other types of opinions (such as invalidity opinions, infringement and non-infringement opinions and clearance opinions) as they may be used for purposes outside the scope of patent prosecution and may need to be relied upon in legal actions outside the reach of the USPTO.
A far less subtle difference between patent attorneys and patent agents is that patent attorneys in the U.S. must be admitted to practice law in at least one state or territory. After the USPTO’s founding and issuance of the first U.S. patent in 1790, approximately 63,000 people have passed the patent bar/registration examination and were issued licenses to practice patent law before the USPTO. [3] However, of the 63,000 people licensed to practice before the USPTO, only approximately 27,000 are also licensed to practice law and are given the title of “patent attorney.”[4] While the USPTO is located in Alexandria, Virginia, just outside of Washington, D.C., California has the largest number of patent attorneys and agents, followed by New York and Texas.[5] Additionally, and excluding Washington, DC, Delaware has the largest number of attorneys and agents per capita. The challenge faced by patent attorneys and agents across the country, however, is that they lack proximity to the USPTO, making it extremely difficult and expensive for them to arrange examiner interviews, or face-to-face meetings with the patent examiners working at the USPTO. With their location next door to the USPTO, Maier & Maier has the advantage of being able to quickly and efficiently contact and meet with patent examiners to promote the prosecution of their patent applications, saving clients significant travel costs and time.
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 Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office.[6] Since patent attorneys are admitted to practice law in a state or territory, they can additionally provide any standard 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; as well as any other legal advice the attorney is qualified to render. Patent agents, however, cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the USPTO. Consequently, the professional staff of Maier & Maier includes both attorneys and agents, capable of representing clients in all aspects of intellectual property, such as patent preparation and prosecution, including post-patent-issuance procedures, such as reexaminations, patent litigation and patent licensing.
As mentioned above, both patent attorneys and patent agents are required to have a sufficient level of technical expertise in order to qualify to sit for the patent bar. The technical qualifications are judged by the USPTO’s Office of Enrollment and Discipline (OED), which oversees both the employees of the USPTO and acts as a governing body for all patent attorneys and patent agents who interact with the USPTO on behalf of their clients. The technical qualifications required by the OED are typically satisfied through a showing of at least bachelor’s degree (or equivalent) in one of a variety of fields of engineering or sciences (e.g. physics, chemistry, biology, computer science[7] etc.). These qualifications, known as “Category A” qualifications, are specifically enumerated by the USPTO/OED. [8] Also, please note that individuals can become qualified to sit for the patent bar if they meet one of a variety of training science or technical training requirements. This manner, known as “Category B”, provides four possible qualification options, such as fulfilling a requisite number of semester hours or courses in physics, biology, chemistry, computer science or engineering. [9] Finally, under “Category C”, one can show that he or she is qualified to take the patent bar upon a showing that they have taken and passed the Fundamentals of Engineering Examination.
As a further note, the patent bar, contrary to some beliefs, does not test candidates on technical issues. Rather, the patent bar tests candidates on every aspect of patent law, as elucidated in the Manual of Patent Examining Procedure (MPEP). The MPEP, as its title suggests, provides the guidelines for the examination of patents before the USPTO. Patent examiners employed by the USPTO use the MPEP as the basis for examining patent applications and rely on it and updates made thereto to maintain the current state of law with regards to patents at the USPTO. With regards to the patent bar, the latest examination statistics show that approximately 58% of the 4165 candidates who took the patent bar between June 2005 and October 2006 successfully passed the exam.[10] Also, as a final note of the patent bar, a citizen of any country may take the patent bar, provided they have the appropriate technical qualifications.
As a final requirement to become a patent attorney or patent agent, the individual must have a “good moral character and reputation,” as required under 37 CFR 11.7. Further, if the attorney or agent is practicing U.S. patent law in a locale outside of the United States and its territories, that person must be a U.S. citizen.[11]
The professionals at Maier & Maier have all met the requirements to become patent attorneys or patent agents and are well versed in United States Patent Law as well as a broad spectrum of technical areas. Further, in addition to representing our clients in the United States, Maier & Maier works with a variety of associates around the world to help its clients obtain strong patent coverage in any desired region or nation. Thus, to help our clients gain a further understanding of the international patent process and to provide some insight on the qualifications of our international associates, the qualifications for practicing patent law in several representative regions and nations are illustrated briefly below.
References
- ^ 373 U.S. 379 (1963).
- ^ PTO Revises Rules of Ethics and Professionalism, PatentlyO blog, August 15, 2008
- ^ Patent Attorneys and Agents: Listings by Geographic Region
- ^ Patent Attorney/Agent Search
- ^ http://www.averyindex.com/2007_patent_states.php Top Patent States
- ^ http://www.uspto.gov/web/offices/dcom/olia/oed/grb.pdf General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, January 2008
- ^ Computer Science Eligibility
- ^ Patent Bar Undergraduate Degrees
- ^ Patent Bar Qualifications: Category B
- ^ RESULTS OF THE REGISTRATION EXAMINATION BASED ON MPEP 8 th EDITION, REVISION 2
- ^ a b The provision on Aliens, 37 C.F.R. 11.6(c)