Patent attorneys (also known as patent agents) advise on patents, trade marks, designs and other intellectual property rights. They draft, file and prosecute applications for patents, trade marks, registered designs and other registrable rights and challenge applications by third parties for such rights. They draft licences, assignments and other agreements relating to intellectual property. Patent attorneys have to be enrolled on the Register of Patent Attorneys kept by the Intellectual Property Regulation Board (“IPReg”). Most are members of The Chartered Institute of Patent Attorneys.
Trade mark attorneys (also known as trade mark agents) advise on trade marks, designs and intellectual property rights other than patents. They draft, file and prosecute applications for trade marks and registered designs, oppose applications by third parties for trade marks and apply for the invalidation or revocation of such grants. They draft licences, assignments and other agreements relating to trade marks and designs. Trade mark attorneys are also regulated by IPReg which keeps a Register of Trade Mark Attorneys. Most trade mark attorneys are members of the Institute of Trade Mark Attorneys.
Some patent and trade mark attorneys are authorized to conduct litigation before the civil courts of England and Wales.
We assist patent attorneys by advising them on difficult points of law such as the patentability of a software implemented invention or the validity of a patent in the light of the prior art. Sometimes they ask us to draft claims that are wide enough to cover the invention but not too broad or too vague to be invalidated. We also assist them in proceedings before the Comptroller by drafting statements of case, witness statements and written submissions and by appearing before the hearing officer.
We assist both patent and trade mark attorneys in trade mark and design cases by drafting statements of case, witness statements and submissions and appearing in oppositions, invalidity and revocation proceedings. We also advise on, draft and review licences, assignments and other instruments.
We also advise, draft documents for and represent patent and trade mark attorney litigators at mediations and arbitrations and before the Patents Court, Patents County Court, Chancery Division and Chancery County Courts.
We run an IP Staff College for patent and trade mark attorneys and specialist counsel and solicitors. Activities include publishing regular updates on IP, technology, media and competition law and by providing advanced training on IP law and practice. We also run courses specially for attorneys on drafting, evidence and advocacy. If you would like to be on our mailing list please complete this form.
We also refer public access work to attorneys we know can trust to do a good job and who share the NIPC commitment to providing high quality but affordable intellectual property services. We list those attorneys on the panels kept by our regional and sector networks.