Tuesday 2 April 2019

Whom you gonna call? IP Professionals and what they do

Author: Biswarup Ganguly
Licence: Creative Commons Attribution-Share Alike 3..o Unported
Source Wikipedia Telephone

Jane Lambert

In many respects, intellectual property ("IP") is quite unlike other areas of law.  For instance, the remedies for infringement can be quite draconian and IP rights owners can be sued for threatening patent. trade mark, registered design or unregistered design right infringement proceedings if they can't make good their threats.  It is therefore imperative to obtain good, specialist, legal advice.  Such advice is available from patent and trade mark attorneys and barristers and solicitors specializing in IP.

What is the Difference between a "Patent Agent" and a "Patent Attorney"?
In the United Kingdom "attorney" is another word for "agent."  For instance, we talk about "a power of attorney" which is simply an authorization for one person to act on behalf of another.  The person holding a power of attorney is called an "attorney".  Often he or she may be a solicitor because of the nature of the transactions to be entered but that is not always the case.

In other countries (particularly the USA) "attorney" means "lawyer".  There used to be lawyers who called themselves "attorneys" in England and Wales until the late 19th century.  Nowadays, all such lawyers are "solicitors".    In the USA there is a clear distinction between "patent attorneys" who are lawyers specializing in patents and "patent agents" who prosecute patent applications.  In the UK the terms "patent agent" and "patent attorney" are used interchangeably.  The same is true of "trade mark agents" and "trade mark attorneys".

What is a Patent Attorney?
Patent attorneys draft and file applications for patents and other intellectual property rights. Many offer other services such as advice on the subsistence of copyright and related rights, licensing and enforcement.  Some are entitled to conduct litigation or appear as advocates in the civil courts.  There is, therefore, a measure of overlap between their services and those of other IP professionals.  Their expertise lies in drafting patent specifications in a way that meets all the requirements of the Patents Act 1977 while claiming the maximum protection for the invention.  No other IP professionals are trained to do that though barristers specializing in IP ("patent counsel") are often asked to advise on and sometimes draft or redraft individual claims. Patent attorneys can practise as sole practitioners, in partnership or limited companies or as in-house advisors.  Their professional body is the Chartered Institute of Patent Attorneys (until recently "the Chartered Institute of Patent Agents") ("CIPA") and they are regulated by the Intellectual Property Regulation Board ("IPReg).  A searchable database of patent attorneys can be accessed through the "Find a Patent Attorney" page on the CIPA website.   According to that database, there are a number of patent agencies around Cardiff and other parts of South Wales but none in the rest of the country, The nearest firms to Bangor are in Chester and Liverpool and the nearest to Aberystwyth are in Wolverhampton and Birmingham.

What is a Trade Mark Attorney?
Trade mark attorneys draft and file applications for trade marks and registered designs. They also advise on the subsistence of copyright and related rights and on the enforcement and licensing of other IP rights. As is the case with patent attorneys, many have rights to conduct litigation and rights of audience. Many trade mark attorneys are also qualified as patent attorneys.  Some are also qualified as solicitors. Their expertise lies in drawing up trade mark applications that are most likely to survive an examiner's scrutiny.  Trade mark attorneys may practise as individuals, in partnerships or limited companies or as in-house advisors. Many practise as partners or employees of patent attorneys. Some as employees of law firms.  Their professional body is the Chartered Institute of Trade Mark Attorneys ("CITMA") (formerly the Institute of Trade Mark Agents). They are also regulated by IPReg,  A searchable database of trade mark attorneys is accessed through the "Find a Trade Mark Attorney" page of the CITMA website. According to that database, there are three trade mark attorneys in Cardiff and one in Chepstow.

IP Solicitors 
IP solicitors are solicitors who specialize in IP law. They advise on joint ventures, franchises, licences and other transactions relating to IP. They draw up and review agreements and other legal instruments. They also bring and defend infringement, revocation, invalidity, threats and other proceedings in the Senior Courts.  Most but by no means all of the leading law firms specializing in IP, belong to the Intellectual Property Lawyers Association ("IPLA")  None of those firms is headquartered in Wales. Solicitors are regulated by the Solicitors Regulation Authority ("SRA").

Patent Counsel
Traditionally, barristers specializing in intellectual property have advised solicitors and patent and trade mark attorneys on difficult points of law, drafted complex legal instruments and appeared for them in the Patents Court, Intellectual Property Enterprise Court ("IPEC"), the Intellectual Property List of the Chancery Division, hearing officers in the IPO, arbitrators and other tribunals. Since 2004 it has been possible for businesses and individuals to consult or instruct barristers directly. The unique advantage of the Bar is that most of the judges of the Senior Courts are recruited from its numbers. Since it is the judges who interpret and develop the law nobody is in a better position to anticipate how a particular issue will be decided than those who have appeared before those judges and possibly against or with them when they were barristers.  Most of the barristers who specialize in IP belong to the Intellectual Property Bar Association ("IPBA").  All barristers are regulated by the Bar Standards Board.  There is more information on this topic in IP Services form Barristers 6 April 2013, updated 16 May 2017 NIPC News.

Pro Bono Services
The four professional organizations (that is to say, the IPBA, IPLA, CIPA and CITMA) have collaborated to provide free advice and representation for those involved in infringement and other IP disputes who cannot afford to pay for their members' services through an initiative known as IP Pro Bono.  Members of Advocate (the Bar's pro bono service) appear in court upon instructions from members of IP Pro Bono.

IP Clinics
Advice on non-contentious issues is available through a network of IP Clinics where inventors and other members of the public can book a free consultation with a patent attorney.  There is as yet only one  IP Clinic in Wales.  That is located in the Intellectual Property Office at Newport. There are, however, others in Liverpool and Birmingham which may assist those living in North and Mid Wales.

Business and IP Libraries
A network of public libraries has teamed up with the British Library's Business and IP Service to provide free access to databases, market research, journals, directories, articles and reports for entrepreneurs and small business owners.  There is a programme of free and low-cost events and workshops on a range of topics including business planning, marketing and intellectual property at each of the libraries. The nearest Business and IP Centre for North Wales is at Liverpool.  There is also a Business and IP Centre in Birmingham.

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