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Concept
Patent attorney
Summary
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and oppositions to granted patents.
The term "patent attorney" is used differently in different countries and thus may or may not require the same legal qualifications as a general legal practitioner.
The titles patent agent and patent lawyer are also used in some jurisdictions. In some jurisdictions, the terms are interchangeable; in others, the latter is used only if the person is qualified as a lawyer.
A study analyzing patent examination decisions at major patent offices shows that patent attorney firms play a crucial role in the prosecution process, especially in less codified and rapidly changing technology areas such as ICT.
In Europe, requirements for practising as patent attorney before national patent offices should be distinguished from those needed for practising before the European Patent Office (EPO) or the Eurasian Patent Office (EAPO). On the national level, the requirements are not harmonized.
Registration as a patent attorney in Australia and New Zealand is administered by the Trans-Tasman IP Attorneys Board (the Board).
To apply to become a Trans-Tasman patent attorney, one must:
pass the nine topics set out in Schedule 5 to the Patent Regulations 1991.
hold a suitable tertiary educational qualification in a field of technology that contains potentially patentable subject matter.
be a resident in Australia or New Zealand
have been employed in a position or positions, for at least 2 continuous years or a total of 2 years within 5 continuous years, that provide the applicant experience in the following skills:
searching patent records;
preparation filing and prosecution of patent applications in Australia and with other countries;
drafting of patent specifications;
and provision of advice on interpretation, infringement and validity.
Official source
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