A patent
attorney is an attorney who has the
specialized qualifications necessary for
representing clients in obtaining patents
and acting in all matters and procedures
relating to patent law and practice, such as
filing an opposition. The term is used
differently in different countries, and thus
may or may not require the same legal
qualifications as a general legal
practitioner.
In the
United States, a practitioner may either
be a patent attorney or patent
agent. Both patent attorneys and patent
agents have the same license to practice and
represent clients before the Patent Office,
part of the United States Patent and Trademark Office United States Patent and Trademark Office
(USPTO). Both patent agents and patent
attorneys may prepare, file, and prosecute
patent applications. Patent agents and
patent attorneys may also provide
patentability opinions, as noted by the
U.S. Supreme Court in Sperry v. Florida.
However, the USPTO Rules of Ethics and
Professionalism, effective as of September
15, 2008, specifically clarifies that patent
agents may not provide an "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.
Patent attorneys must also be admitted to the practice of law in at
least one state or territory of the U.S. In the time since
the USPTO issued the first patent in 1790,
approximately 65,000 citizens have passed
the USPTO registration examination, allowing
them to register to prosecute patent
applications. (This total does not include
current patent examiners, who are not
allowed to serve as patent attorneys or
agents and thus do not appear on the list of
enrolled practitioners.) Today, roughly
40,000 people are on the list of registered
patent attorneys and agents, with about
30,000 of them also licensed to practice
law. Of the states, California has the most
patent attorneys (and agents), followed by
New York and Texas. Per capita, Delaware has
more patent attorneys (and agents) than any
state (not including DC). 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 USPTO registration examination
(officially titled Examination for
Registration to Practice in Patent Cases
Before the United States Patent and
Trademark Office). Since patent attorneys
are admitted to practice law in a state or
territory, they can additionally provide
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.
Patent agents cannot provide legal services
of this nature, nor can they represent
clients before the Trademark Office part of
the USPTO.
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To
register as a patent agent or
patent attorney, one must pass
the USPTO registration
examination. This exam, commonly
referred to as the "patent bar,"
tests a candidate's knowledge of
patent law and USPTO policies
and procedures as set forth in
the
Manual of Patent Examining
Procedure (MPEP). Upon
successful completion of the
examination, one will be labeled
as a "patent attorney" if he/she
has already been admitted to a
state or territorial bar.
However, engineers, scientists
and any other science based
majors, as well as law students
and law graduates who are not
admitted to a bar, will be
labeled as "patent agents" since
they cannot give legal advice
nor represent clients in court.
The latest exam result
statistics are from June 9, 2005
through October 17, 2006: during
that time, 58.2% of the 4,165
candidates passed the exam,
which was based upon MPEP, 8th
Edition, Revision 2. The current
exam is based on MPEP, 8th
Edition, Revision 4, as of
October 19, 2006. (No tests were
given based upon MPEP, 8th
Edition, Revision 3.) Applicants
who are not United States
citizens and do not reside in
the U.S. are not eligible for
registration except as permitted
by 37 CFR ยง 11.6(c). None of the
world's countries, except Canada
reciprocates, giving U.S.
citizens the right that the U.S.
grants to their citizens.
