Patent Attorney Description. Patent Attorney Definition.
by Marin Cionca
Technical Background of a Patent Attorney
In order to become a patent attorney or patent lawyer, (also called a registered patent attorney/lawyer), a person has to have the technical background required by the USPTO (i.e., United States Patent and Trademark Office). There are several ways by which a person who wishes to become a patent attorney can meet the USPTO technical background requirement. One is to obtain an undergraduate degree (e.g., Bachelors of Science) in a technical subject such as mechanical engineering, Physics, Biology, electrical engineering, or computer science. Another way is to have a certain number of college units in technical courses such as Physics, Engineering, Biology, Chemistry or Computer Science. Yet another way to meet the technical requirement is to have passed the Fundamental of Engineering (FE) Examination, also called the Engineer-in-Training Examination (EIT). In California the EIT/FE examination is an 8 hour (two sessions of four hours) exam including mainly Mathematics and Physics questions/problems, and it is administered by the Board of Professional Engineers and Land Surveyors.
Patent Attorney Dual Admission to Practice
Unlike a patent agent, a patent attorney has to hold a dual admission to practice. The first, which is common with the patent agent, is the admission of the patent attorney to practice before the USPTO. To be admitted to practice before the USPTO, a patent attorney has to be registered with the USPTO. Such a registration may be obtained only IF the technical background requirement (described above) is met, AND the 6-hour bar exam (two 3-hour sessions) is passed. The bar exam is a rigorous exam which tests the patent attorney's knowledge of the US patent system and of the USPTO patent prosecution and examination procedure. The second admission held by a patent attorney is to practice law (i.e., law licence) in at least one state of the United States (e.g., California), in other words to be an attorney. Obviously, in order to become an attorney, one needs to attend and graduate from law school first and then pass the bar exam in at least one state. Thus, a patent attorney may advise clients in (1) matters related to the prosecution of a patent application before the USPTO (e.g., response to Office Actions) AS WELL AS in (2) matters related to the practice of law, such as advising clients whether or not to license an invention, whether or not a patent is infringed, whether or not to appeal a USPTO decision to a court (e.g., Federal Circuit), etc.
Often, a patent attorney will also be admitted to practice before a federal court, such as the Central District of California or the Federal Circuit. Such admission may be necessary if, for example, the patent attorney wishes to file and prosecute a patent infringement lawsuit on behalf of a client, in federal court.
Patent Attorney Professional Associations
A patent attorney is typically member of several professional associations for patent attorneys, for the purpose of staying appraised of the recent developments in the patent law. Examples of such associations are: American Intellectual Property Law Association (AIPLA), California Bar Association - Intellectual Property Law Section, Orange County CA Bar Association (OCBA) - Intellectual Property and Technology Law Section and Orange County Patent Law Association (OCPLA).
Patent Attorney Education, Degrees and Certifications
Thus, a typical patent attorney will have to spend approximately four years in college to obtain a bachelors degree in a technical major, and then, approximately three year in law school to receive a Juris Doctor degree. Then, as described above, he/she will have to take and pass the state bar exam and the patent bar exam. Going forward, throughout his/her career, the patent attorney is required to continue his legal education (i.e., CLEs requirement) in order to maintain his status as patent attorney. To comply with this requirement, the patent attorney typically attends presentations, seminars and conferences on topics related to patent law and regulations.
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