What is a Patent Attorney

What is a patent attorney?

A Patent Attorney is a legal professional who is qualified to draft patent applications and represent clients before Patent Offices to get patents granted. Unusually amongst lawyers, patent attorneys have a technical background, as well as legal expertise, and will normally have obtained at least degree-level, and often postgraduate-level, knowledge of a technical field before training and qualifying as a patent attorney. By way of contrast, the people employed by official Patent Offices to examine and grant patents are known as patent examiners.

In the UK, there is a register of patent attorneys, maintained by the Intellectual Property Regulator (IPREG). The term "patent attorney" and the related term "patent agent" are protected by law - in order to describe oneself as a patent attorney (or patent agent) in the UK, it is necessary to be on the register of patent attorneys, or to be a solicitor. Similar rules apply to companies that wish to refer to themselves as patent agents or patent attorneys. This law is set out in section 276 of the Copyright, Designs and Patents Act.

There is a separate register of representatives before the European Patent Office and persons on that register may describe themselves as "European patent attorneys" or "European patent agents" in the UK. Most UK patent attorneys are also European patent attorneys as well as Fellows of the Chartered Institute of Patent Attorneys, known as "Chartered patent attorneys" or "Chartered patent agents". Some are also qualified as representatives before the EU Unified Patent Court. Other territories have their own legal requirements and registers for their patent attorneys.

Registered UK patent attorneys and European patent attorneys have passed demanding professional examinations and met required standards of practical experience. For those who are interested, we have a separate article which discusses how to become a UK and European patent attorney.

What do patent attorneys do?

The primary role of patent attorneys is drafting and filing patent applications, and arguing with Patent Offices to obtain grants of patents for their clients. A good patent attorney is able to rapidly and comprehensively understand new technical ideas, to analyse those ideas and their technical and commercial relevance, and to document them quickly, accurately and with a certain creativity as to how best to present them to obtain the broadest possible protection for their clients. Good patent applications read as if they were written with the inventor's technical knowledge and the patent attorney's legal knowledge, and the best results are obtained when the inventors and attorneys work well together.

Patent attorneys develop and present arguments in favour of their client's inventions and are frequently involved in challenging third parties' rights before Patent Offices, for example through oppositions or invalidation actions. Another important role of patent attorneys is providing searches and legal opinions, for example opinions on patent validity and freedom to operate.

Patent attorneys are often involved in legal disputes relating to patents and other intellectual property matters. In the UK, communications between UK patent attorneys and their clients can receive legal professional privilege, i.e. communications between a UK patent attorney and their client in respect of certain topics are privileged from disclosure in UK legal proceedings. Some patent attorneys represent clients before Courts other than Patent Offices and have additional qualifications for this purpose.

Hindles are UK and European patent attorneys, and we provide a full range of patent drafting and prosecution services, resolving disputes and providing opinions. We work with patent attorneys in other countries to obtain rights around the world. If we can be of assistance or if you have any questions about IP, please do not hesitate to contact us.