What does a Patent Attorney do?

This article also answers the following questions:

  • What is the role of a Patent Attorney?
  • What is a Patents Litigator?
  • What is the role of a Patent Examiner?
  • Are there any differences between Patent Attorneys and Patent Agents?
  • How do you become a Patent Attorney?
  • How do I find a Patent Attorney?

What is the role of a Patent Attorney?

A Patent Attorney is a person who is qualified in intellectual property (IP) law and has been professionally trained in securing, enforcing or advising about patents.  Patent Attorneys may advise their clients on the different IP policies, and may also be involved in licensing and litigation matters.  In the UK, the majority of Patent Attorneys are also chartered (through professional qualifications provided by the Chartered Institute of Patent Attorneys (CIPA)) and hold European Patent Office qualifications.

What is a Patents Litigator?

Whilst Patent Attorneys can litigate on cases, a litigator certificate allows attorneys to litigate in the High Court (including Patents Court) or the High Court, and so remove the need for a solicitor to give instructions to the barrister.

What is the role of a Patent Examiner?

A Patent Examiner is employed by an Intellectual Property office to scrutinise technical and legal aspects of a patent application, comparing to prior art, and ultimately deciding whether a patent should be granted.

Are there any differences between Patent Attorneys and Patent Agents?

Sometimes, a Patent Agent is used to describe a Patent Attorney’s work.  However, the term “Patent Agent” can also be used by solicitors who deal with IP issues but to a lesser extent than those with the official professional IP qualifications.

How do you become a Patent Attorney?

First, you need to have obtained a degree in a Science, Engineering, Technology or Mathematics subject, with many firms requiring at least a 2:1 in the subject.  A PhD can be beneficial, especially if working in-house in a specialist area, but is generally not a specific requirement for most firms.

Training generally takes place “on-the-job”, once established in a trainee position.  A fully qualified Patent Attorney usually acts as a trainee mentor.  The route to qualification also contains a set of examinations through CIPA.  Foundation core level exams must be passed first, although exemptions from some or all of these can be had through successful completion of full-time courses in IP, particularly certificate and Masters courses run by Queen Mary University of London, Manchester University, Brunel University and Bournemouth University.  Advanced exams are also taken.  Exams are held annually so, in theory, the minimum length of time to become a registered patent attorney is two years.  In reality however, this may take longer, especially if examinations need to be resat.  European qualifying exams can be taken once you have worked for three years under the supervision of a Chartered European patent attorney.

How do I find a Patent Attorney?

To find UK patent attorneys, the most comprehensive listings are on the CIPA website – click here for details.

A searchable database of EPO qualified professionals is found here.

To find US patent attorneys registered to practise for the US PTO, click here.

A good website which provides links for most countries to search their patent attorneys is Piperpat.