What is a patent attorney?

A patent attorney, or patent agent, should be a scientist by background who has then trained in intellectual property law.  In the UK anyone is allowed to act as a patent agent, so if you're looking for someone qualified and experienced seek out a Chartered Patent Attorney – he or she will have passed exams, done a minimum amount of supervised training and be regulated by the Chartered Institute of Patent Attorneys (CIPA).

What about trade mark attorneys?

Trade mark attorneys/agents need not be scientists, but they have expertise in the laws relating to trade marks and often in the protection of designs as well.  Look for a qualified attorney who is a member of, and regulated by, the Institute of Trade Mark Attorneys (ITMA).

What do patent and trade mark attorneys do?

Patent attorneys advise whether inventions are patentable, prepare and file patent applications (including the extremely important invention descriptions and patent "claims"), guide the applications through the various official procedures needed to get them granted and help you look after the patents after grant.  They can arrange searches to see if an invention is patentable and whether it infringes any existing patents.  They can help you to enforce granted patents against infringers.  And they should be able to help you to manage and exploit your patents effectively as part of your overall business.

Trade mark attorneys advise whether trade marks are registrable and how best to protect them.  They prepare and file trade mark applications and guide them through to registration, and they help you to maintain and enforce the resulting registrations.  They can arrange trade mark searches and they can help you to manage a portfolio of trade mark rights.

Design protection is usually dealt with by both patent and trade mark attorneys.

What don't they do?

• predict whether your ideas will be commercially successful.
• help you to market your ideas, to obtain funding, to find manufacturers or distributors or to negotiate deals with such people.
• advise on general legal matters, corporate transactions, tax and finance, employment law, liability or standards.
• help develop your invention – remember your attorney probably isn't an expert in your technical field.
• read your mind! The advice your attorney gives depends on the quality of the information you provide.

How do I choose a good attorney?

• expertise – will they understand your business and if necessary your technology? If you produce dyes, for example, look for a patent attorney with a chemistry degree.
• cost – are their charges within your budget? It's not unreasonable to ask for estimates in advance of any work, or to insist that your attorneys stick to an agreed budget. Note that higher charges don't necessarily imply better work; they may be due to higher overheads or the prestige of a larger firm.
• location – can you get to meet with them easily? A lot can be done by phone, fax and email but if you prefer meetings then take accessibility into account.
• recommendation – it helps if an attorney's been recommended to you by someone you trust. This is the best way to be sure that they will actually deliver what you want. Ask who else the attorney has acted for.

• communication - you need a patent or trade mark attorney you feel comfortable talking to, someone who will understand not only your technology but also your commercial needs. Will they give clear, practical, jargon-free advice that's appropriate in the context of your business? Will they respond promptly to your requests, be approachable when you need them and keep you informed about the work they're doing for you? Will they be up-front about costs and procedures? Will they take a genuine interest in your business?

Garbage in; garbage out

Remember that the advice from your patent or trade mark attorney can only be as good as the information you give them.  Keep your attorney informed about your business so that he or she can always give you up to date and appropriate assistance.

Finding a local attorney

The Chartered Institute of Patent Attorneys (CIPA) have a directory of qualified patent attorneys by geographical area.

For information on qualified trade mark attorneys, visit the ITMA (Institute of Trade Mark Attorneys) web site.

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• the people who work here and their areas of expertise; and
• the issues we regard as important when working for our clients.

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If you'd like to discuss how we can help you, please phone us on 01934 745 880 or email us.