What is a Patent Attorney
A Patent Attorney, or Patent Agent, is a member of a profession of around 1,500 individuals who have a particular expertise in the field of intellectual property. Intellectual property encompasses patents, trade marks, designs and copyright.
Patent Attorneys work either in private firms of patent attorneys such as Dehns (these firms are organised much like firms of solicitors, for example), or in patent departments of large industrial organisations. One thing is common, however - Patent Attorneys are not employed by or connected with the Patent Office (the IPO), which is the Government agency responsible for granting patents, registered designs and registered trade marks.
The role of the Patent Attorney is to assist their client in obtaining effective intellectual property rights for their innovations and developments, and to advise on the intellectual property rights of others. One of our main areas of work therefore is to represent the client before a number of patent offices and to assist in the filing and prosecution of applications (patent, design or trade mark) with the aim of securing the broadest valid rights for the client. However, another important area which we advise on is the enforcement of intellectual property rights, and this will involve consideration of issues such as whether the rights are infringed and whether they are valid. We also handle associated matters such as searching for the existence of rights, challenging the validity of third parties' rights and dealing with the transfer of rights by assignment or licence. We handle these intellectual property matters in most countries of the world, through our overseas associates where necessary.
Why use a Patent Attorney?
There is no legal requirement for anyone to employ a Patent Attorney to represent them, although where the protection of valuable intellectual property is concerned it is obviously sensible that the legal work should be carried out by suitably qualified and experienced people.
Background and training
Patent Attorneys are graduate scientists, rather than lawyers, and may have degrees in Engineering, Physics, Mathematics, Chemistry or Biochemistry, for example. All our legal training is carried out whilst working under the supervision of one or more qualified Patent Attorneys. After about three or four years' training, trainees begin sitting their final examinations to qualify as Patent Attorneys. We sit two sets of exams, one to qualify as a UK Patent Attorney, and one to qualify as a European Patent Attorney. The latter qualification allows us to represent clients before the European Patent Office, which has its headquarters in Munich. There is also the possibility of qualifying as a Registered Trade Mark Agent, again by examination. Most Patent Attorneys are members of the Chartered Institute of Patent Agents, which is the professional and examining body for Patent Attorneys in the United Kingdom.
Patent Attorneys in private practice charge for their services in much the same way as solicitors. Some work may be charged at a fixed price for the particular job, but more often work such as drafting an application or giving advice on a complex infringement issue for example, is charged on an hourly rate basis. We do not take any royalty or "cut" from sales of a product which is protected by a patent we have helped to obtain.
In summary, Patent Attorneys are a unique interdisciplinary mixture of scientist and lawyer. We need the ability to understand the often complex technical features of an invention as well as the legal issues. By its nature, the work we are involved in usually has a commercial angle and we are therefore well placed to advise on a wide range of issues such as intellectual property portfolio management, overseas filing strategies, design-around options, licensing, and settlement negotiations.
If you would like any further advice please contact us at Dehns.