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 Agents). Care of the Register of Patent Agents has been entrusted to a Registrar appointed by 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 Agents 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 Registered Trade Mark Agents. 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 has Rules of Professional Conduct to which its members must adhere, and 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'. Trade mark agents deal with all aspects of trade mark law. The term 'Trade Mark Agent' is not protected by law. However, for the protection of the public, no one in the United Kingdom may use the titles 'Registered Trade Mark Agent' and 'Trade Mark Attorney' unless he or she is on the official list of qualified practitioners (the Register of Trade Mark Agents). Care of the Register of Trade Mark Agents has been entrusted to a Registrar appointed by The Institute of Trade Mark Attorneys (ITMA). Entry onto the Register of Trade Mark Agents is by examination. 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 Agent 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. Click here to view the list of CIPA members who have been granted Litigator Certificates and the list of firms in which there is a Patent Agent 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 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 Patent Office has issued guidance to using Invention Promotors which can be viewed by clicking here.
Both Patent Attorneys and Registered Trade Mark Agents qualify by taking appropriate examinations set by the Joint Examination Board, a body set up and controlled by CIPA and ITMA. The structure of the examinations is approved by the Controller General of Patents. CIPA has rules of professional conduct which are updated from time to time in the light of experience. Copies of these Rules are available for downloading from here. There is also a leaflet on how to complain about the service provided by a patent agent. Following the Institute being granted the right to award Litigators Certificates to suitably qualified members, entitling them to conduct litigation (i.e. to run cases) in the High Court, the Legal Services Ombudsman now has oversight of CIPA's disciplinary procedures. Details of the Ombudsman's role are on her website. A calendar of CPD events can be found here on the Institute's website.
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