Patent attorneys are qualified professionals who specialise in acquiring legal protection for their clients’ ideas and inventions. However, there can often be some confusion between the role of a patent attorney and an intellectual property (IP) solicitor, or solicitors in general. In this piece, we aim to set out the differences between these various professions, which should help you in determining who best can help you.
Firstly, to become a solicitor, it is important to obtain either an undergraduate law degree, or upon obtaining a degree in another subject, achieve an appropriate post-graduate degree in law or a law conversion. It is then compulsory, to become a solicitor, to complete the Legal Practice Certificate (LPC), which can be done over 1 year (full time) or two years (part-time).
During or upon completion of the LPC, a trainee solicitor will hopefully have been awarded a training contract with a law firm, which is the final part of training to become a qualified solicitor. During this two-year period, they will usually spend four six-month blocks in different departments, learning about various and more specialist aspects of the law. The training contract is effectively an apprenticeship and at the end of it, they will be a fully qualified solicitor with an eye on specialising in a particular area of law. This can be criminal, commercial, family or any other aspect which has become of interest during their studies and early practical experience.
IP lawyers / IP-specific solicitors
These solicitors will have gone through the process as described above, however, many patent solicitors have a first degree in one of the sciences, and sometimes will also have a PhD. They will generally deal with contentious and non-contentious areas of IP, for example, contentious work includes litigation of patents and trademarks, that is to say, they deal with the process of asserting a proprietor’s rights or defending a client against a claim of infringement. Non-contentious work involves dealing with transfers of ownership, licensing and other issues relating to the management of IP rights. The science degree will generally be helpful when it comes to understanding the technical details of the invention/patent.
Broadly speaking, an IP solicitor/patent lawyer will deal with the enforcement and management of IP portfolios.
Patent attorneys are distinct from IP solicitors and solicitors in general in that they are not required to have a law degree. Instead, they are required to have a technical background which usually means a science, engineering or maths degree. Most often graduates begin their career as a trainee patent attorney with a job in private patent practice or with larger companies who have an in-house patent department and learn intellectual property law from specialist courses and experienced fully qualified attorneys. To become a fully qualified patent attorney and be entitled to call themselves Chartered Patent Attorneys, trainee patent attorneys have their own rigorous professional exams to take and pass in order to fully qualify. There are two sets of exams, UK and European, and it generally takes about 4-5 years to pass them all and fully qualify.
The role of a patent attorney mostly involves obtaining intellectual property rights for their clients. This involves liaising with the client, understanding the client’s invention and what their commercial goals are, drafting and filing patent applications or registered design applications and prosecuting them through to grant. Patent attorneys can also, on behalf of their client, oppose the grant of European patents belonging to competitors of their clients or other third parties. There is some overlap with solicitors in that patent attorneys also deal with non-contentious issues such as licensing IP rights, dealing with assignments and records etc.
Patent attorneys are also usually the first point of call for a client who believes their rights may be being infringed by a third party and can take the first steps in asserting or defending their clients’ rights. If such proceedings advance further, then the patent attorney may liaise with a specialist IP solicitor who may take on the matter and coordinate the litigation. In some circumstances, a patent attorney may also be a certified Patent Attorney Litigator and so be qualified to take the case from start to finish, if they have obtained further qualifications in litigation.
In short, a patent attorney obtains the IP rights for a client helps in asserting or defending those rights; and an IP solicitor deals with in-depth litigation of IP rights.
If you have an idea or invention which needs protecting, you need to speak with a patent attorney rather than an IP lawyer/solicitor. Bailey Walsh & Co. LLP are Chartered UK and European Patent and Trademark Attorneys and can assist in acquiring the relevant rights for your ideas. Please do not hesitate to contact one of our advisers, either by email at email@example.com, or by telephone on 0113 2433824.