What are they and what do they do?
Patent Attorneys and Trademark Attorneys specialise in obtaining and enforcing intellectual property rights. They have the right to represent you in proceedings before the relevant patent and trademark offices to help enforce your intellectual property rights and some may also have the right to appear in higher courts.
What are Patent Attorneys?
For Patent Attorneys, the starting point for entry into the profession will be a science or engineering degree. From this, to become a qualified Patent Attorney, it takes several years of study, followed by a series of rigorous qualifying examinations. It takes on average around five years to become fully qualified and some Patent Attorneys are also qualified as Trademark Attorneys.
The patent procedure in various official patent offices usually involves a technical examination of the patent application to determine whether the matter claimed is novel and inventive. The Patent Attorney’s job is to negotiate with the patent office examiner to obtain the widest possible scope of protection.
Once a patent is granted, it can still be challenged if new evidence comes to light that the subject matter was not new, or was the obvious thing to do, when the patent was applied for. Patent Attorneys are involved in attacking competitors’ patents on behalf of clients, or defending a client from a possible infringement action.
What are Trademark Attorneys?
A Trademark Attorney provides legal and strategic advice on the selection, registration and enforcement of trademarks. They also advise on designs and copyright issues. The day-to-day caseload of a Trademark Attorney involves conducting searches to establish if your trademark is free to use, provides advise upon whether a mark meets the legal criteria to be registered, helps by filing new applications and addressing any objections during examination (either in writing or by attending Hearings). Trademark Attorneys are also there for you when you require defending, or help prosecuting opposition proceedings, against new applications.
A Trademark Attorney can advise upon the management of your portfolio including the expansion of protection into international markets and can negotiate and draft licence agreements and transfers of ownership (assignments). Where passing-off and infringement matters are concerned, Trademark Attorneys provide constructive advice to resolve conflicts amicably wherever possible and aim to instruct litigation as a last resort. They negotiate settlements and draw up appropriate co-existence agreements containing commercial undertakings as to future activities.
Like any asset, trademarks can be very valuable, so obtaining professional advice before launching a new brand is highly recommended.