The following commentary reflects the situation in the UK only. The laws of other countries differ significantly.
In any field the value and trustworthiness of advice depends on the ability of the adviser. The following describes in brief the types of advisor encountered in the field of intellectual property law (which includes patents, trade marks, designs and copyright).
- Patent Attorneys
- Chartered Patent Attorneys
- European Patent Attorneys
- Registered Trade Mark Attorneys
- European Design and Trade Mark Attorneys
- IP Patent Litigators
- Invention Promoters or Invention Brokers
- Qualification of Patent Attorneys by Examination
- Rules of Conduct and Complaints about Patent Attorneys
- The Legal Ombudsman
A patent attorney is an expert in the intellectual property law of the United Kingdom and abroad. Patent attorneys are specially trained, examined and experienced in the drafting patents and in knowledge of intellectual property law. The title ‘patent attorney’ is protected by the Copyright, Designs and Patents Act 1988 (CDPA) and can only be used in the United Kingdom by a fully qualified patent attorney who is entered onto the Register of Patent Attorneys and who is regulated by the Intellectual Property Regulation Board (IPReg) or by a fully qualified solicitor with specialist expertise in intellectual property law who is regulated by the Solicitors Regulation Authority (SRA). All those who are entered on the Register of Patent Attorneys must comply with the Code of Conduct set out by the IPReg.
Chartered Patent Attorneys
Chartered Patent Attorneys (CPA) are Fellows of CIPA who have attained the highest standards of professional practice in intellectual property law. CIPA exists to provide its members with support in the early stages of professional training and to offer a comprehensive programme of post-qualification continuing professional development (CPD) which guarantees that Chartered Patent Attorneys have the skills, knowledge and expertise to provide an excellent level of service. The majority of Chartered Patent Attorneys are also European Patent Attorneys (EPA), qualified to represent clients before the European Patent Office. Many are also Registered Trade Mark Attorneys.
European Patent Attorneys
European Patent Attorneys are listed by the European Patent Office (EPO) as professional representatives qualified to prosecute patent applications. Entry on to the list is by examination (although when a new country joins existing attorneys in that country are entitled to be entered on the list). Under United Kingdom law, no one other than a person entered on the list of professional representatives may use the term 'European Patent Attorney'.
Registered Trade Mark Attorneys and Trade Mark Attorneys
Unlike the position for Patent Attorneys, the terms "Trade Mark Attorney" and "Trade Mark Agent" are not protected by law and anyone may use them whether or not they have a qualification in trade marks. However, for the protection of the public, no one in the United Kingdom may use the title 'Registered Trade Mark Attorney' (often abbreviated to RTMA) unless he or she is on the official list of qualified practitioners (the Register of Trade Mark Attorneys). Entry onto the Register of Trade Mark Attorneys is by examination and the Register is under the control of the IPReg. All patent attorneys are examined in trade marks as part of the qualification to become a patent attorney and many of them practise as trade mark attorneys, although they may not have passed all the examinations for entry on the Register of Trade Mark Attorneys, or may have decided not to be on that Register. The Code of Conduct for patent attorneys requires them not to practise outside their competence and experience. Thus, when looking for advice on trade marks, it is advisable to check whether the advisor is a registered trade mark attorney or a patent attorney.
European Design and Trade Mark Attorneys
The European Union Intellectual Property Office (EUIPO) is the EU institution which grants European Trade Marks and Community Designs. It maintains a list of professional representatives entitled to practise before it. There is no examination for entry on the List, but the local Patent Office must certify that the applicant has regularly practised in trade marks nationally. People on the list are called European Design Attorneys or European Trade Mark Attorneys.
IP Patent Litigators
Most patent attorneys have the right both to conduct litigation (i.e. to run cases) and the right of audience in the Intellectual Property Enterprise Court and on appeal from the UK Intellectual Property Office (UKIPO) in the Patents Court, both of which are part of the High Court. The High Court is the third highest court in the UK, dealing with civil cases and appeals of decisions made in lower courts.
Registered Patent Attorneys may also acquire further rights (via the Higher Courts Litigation Certificate) to conduct litigation in the High Court in any matter relating to patents, designs, trade marks or technical information, or even to act as an advocate in the High Court and Appeal Courts (via the Higher Courts Advocacy Certificate). These rights mean that a Patent Attorney can conduct the litigation and instruct a barrister to appear before the Court. However, such an IP Patent Litigator does not need to use a solicitor a barrister to do the work. The purpose of the government in granting this right was to give clients greater freedom of choice in selecting their advisers and to reduce the cost of litigation. The award of the litigation certificates (The Rights to Conduct Litigation and Rights of Audience and Other Reserved Legal Activities Certification Rules 2012) is governed by IPReg.
To find a certified IP Patent Litigator go the IPReg website, search by postcode/location or firm name, and filter for IP Patent Litigator.
Solicitors are entitled to file and prosecute patent, design and trade mark applications provided that this is within their competence. There are no requirements for a solicitor to take specialist examinations before acting in the field of intellectual property. Solicitors are subject to regulation by the Solicitors Regulation Authority.
Barristers are specialist lawyers who advise clients about litigation issues and act as the advocate for the client if the case gets to court. There is a specialist Patent Bar which deals with intellectual property cases, these barristers generally having a scientific as well as a legal background. In recent years, there has been some blurring of the boundaries of the work of barristers, solicitors and patent attorneys, with the latter two professions being able in certain circumstances to act as advocates in Court. Barristers are regulated by the Bar Standards Board.
Invention Promoters or Invention Brokers
There are some organisations which offer to find manufacturers to exploit an invention for clients. Such organisations tend to advertise widely on TV or in the press. They are not qualified as patent or trade mark attorneys, and there can be dangers in using such services. The IPO has issued guidance to using invention promotors which can be viewed by clicking here.
Qualification of Patent Attorneys by Examination
Patent attorneys qualify by taking appropriate examinations in accordance with the Regulations of IPReg. The examinations for entry on the Regsiter of Patent Attorneys are set by the Patent Examination Board.
Rules of Conduct and Complaints about Patent Attorneys
All members of the Institute have agreed to abide by the Institute's Rules of Professional Conduct. These were written to ensure that clients consulting a firm of patent attorneys would receive accurate and impartial advice which puts their interests foremost.
On 1 January 2010, the Legal Services Act 2007 changed the way patent attorneys are regulated. As required by the Act, the Institute has set up an independent Board (IPReg), which sets standards for patent attorneys and polices them. Registered UK patent attorneys, and their employees, are now subject to this Board. For details of the Code of Conduct now applicable to registered patent attorneys and their employees, contact IPReg.
For the rare occasion that an error may occur, and a client may feel that he/she has received poor service from a patent attorney, firms are required to have in place an internal complaints procedure to resolve the issue with the client. If this fails, the Institute may be able to assist by conciliating between the client and the patent attorney. If you are an individual or small business you may be able to take your complaint to the Legal Ombudsman. If a complaint cannot be settled in this way, an aggrieved client may wish to take matters further. Details of how to do this may be found on the IPReg website.