Patent attorneys and other advisorsThe 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 advisor. 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). A patent attorney is a member of a small profession qualified by examination in the intellectual property law of the United Kingdom and abroad. Patent attorneys are specially trained and experienced in the art of drafting patents and in knowledge of intellectual property law. Indeed, for the protection of the public, it is a criminal offence in the United Kingdom for anyone to use the title 'patent attorney' unless he or she is on the official list of qualified practitioners (the Register of Patent Attorneys). Care of the Register of Patent Attorneys has been entrusted to the Intellectual Property Regulation Board, (generally known as IPReg), which is an independent part of The Chartered Institute of Patent Attorneys ('CIPA'). Patent attorneys may also use the title 'patent agent' although this title may also be used by solicitors, even if they have passed no examinations relating to intellectual property. All the people on the Register of Patent Attorneys have spent several years training and passed two sets of rigorous examinations to ensure that they are competent to handle patent applications for other people and have a knowledge of design and trade mark law. The majority of patent attorneys are also Chartered Patent Attorneys, European Patent Attorneys, and many of them are also Registered Trade Mark Attorneys (see below). All those who are entered on the Register of Patent Attorneys must adhere to the Code of Conduct imposed by IPReg. CIPA was granted a Royal Charter in 1891 to 'frame and establish Rules for the observance of Patent Attorneys in all matters appertaining to their professional practice' and ‘... to promote the education status and training of Patent Attorneys and to maintain a high standard of rectitude and professional conduct and knowledge...’. CIPA takes these tasks seriously. The Charter in its present form grants Fellows of CIPA the right to use the title 'Chartered Patent Attorney' or 'Chartered Patent Agent' (these terms are equivalent and both are collective marks of CIPA, as are the recognised intials 'CPA'). CIPA provides professional education for its members both before qualification and afterwards. European Patent Attorneys are persons who are entered on a list of professional representatives at the European Patent Office (EPO) as being qualified to prosecute patent applications. Entry on to the list is by examination (although when a new country joins existing agents 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'. 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 IP Regulation Board. 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. The Office for Harmonisation in the Internal Market (OHIM) is the EU institution which grants Community Trade Marks. 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 Trade Mark Attorneys. All patent attorneys have the right both to conduct litigation (i.e. to run cases) and the right of audience in the Patents County Court and on appeal from the Patent Office in the Patents Court, which is part of the High Court. In 1999 the Institute was given authorised body status to grant Litigator Certificates to suitably qualified and experienced members. These give the right to conduct litigation in the High Court, including the Patents Court, and in the Court of Appeal on appeal from the Patents County Court or the High Court in any matter relating to patents, designs, trade marks or technical information. This right means that a Patent Attorney Litigator can conduct the litigation and instruct a barrister to appear before the Court, without the need to use a solicitor for this 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 Certificates is governed by the CIPA Higher Court Qualification Regulations. A list of CIPA members who have been granted Litigator Certificates and the list of firms in which there is a Patent Attorney Litigator can be viewed here. 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 Law Society. 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 agents, with the latter two professions being able in certain circumstances to act as advocates in Court. 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.
Both patent attorneys and registered trade mark 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 Joint Examination Board, a body set up and controlled by CIPA and ITMA. 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 came into force. This Act changes the way patent attorneys are regulated. As required by the Act, the Institute has set up an independent Board (the Intellectual Property Regulation 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 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. A calendar of CPD events can be found here on the Institute's website.
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