Patent Attorney – an Overview
I am Rolf Claessen, Partner with Michalski Hüttermann & Partner, and in this article, I explain what a patent attorney is. I explain
- How to become a patent attorney, and
- What a patent attorney does.
At least in Germany, a patent attorney is specialized in the fields of patents, trademark, and designs. In fact, patent attorneys are not even allowed to practice in other fields of law here. This may be different in other countries though. As an example: patent attorneys in the US have a full law degree and can – in theory – even practice family law or personal injury law.
How to Become a Patent Attorney in Germany
Attorneys at law completes a full law degree. In contrast, patent attorneys first have to complete at least a Masters degree in engineering or physical sciences such as physics, biology or chemistry. This is to ensure that the patent attorney can really understand the inventions on a very deep level. The better the patent attorney understands the invention, the better he can draft a solid patent application. I am a chemist and a materials scientist by training. So I can understand inventions involving hair shampoos or ceramic materials. However, if you have invented a new motor type, you better go to my partner Thomas Buchenau, who has a degree in mechanical engineering.
With a full degree in engineering or physical sciences, you can complete a formal training with a licensed patent attorney for about 2 – 3 years. During that training period, the patent attorney who is your training supervisor will show you all the things you have to know in your daily practice. This will include prosecution and litigation of patents trademarks and designs, license agreements or employees inventions, which is a special type of legal field in Germany.
In parallel to the training, trainee patent attorneys need to take courses in law school for 2 years. These courses are tailored to the needs of patent attorneys with fields like contract law or unfair competition law. I did not learn much about criminal law or constitutional law.
After the university courses and the formal training, trainee patent attorneys are expected to work at the German Patent and Trademark Office and the Federal Patent Court for 10 months. They assist examiners and judges. This period is perfect to learn more about the decision making on the other side of the bench. During this time, trainee patent attorneys also write mock exams. They alsvisit additional courses and lectures given by judges and employees of the German Patent and Trademark Office.
After the exams, patent attorneys have to fulfill some formal requirements such as professional liability insurance and can then register as a patent attorneys.
In addition to becoming a nationally registered patent attorney, in Europe, it is very important to become a European Patent Attorney as well. The yearly exam has a pass rate of about only 30% and candidates may repeat this exam as often as they want on a yearly basis. However, just from a statistical point of view, chances are decreasing with each time you take the exam.
What does a Patent Attorney do?
Patent attorneys are mostly drafting, filing and prosecuting patents, trademarks, and designs. Patent attorneys are also assisting patent litigators in patent infringement proceedings. Some other typical fields of work include patent validation, licensing agreements, the German Employees Invention Remuneration Act, search for patents, trademarks and designs, customs seizures, and general intellectual property strategy consulting.
If you are looking for a patent attorney, make sure that the patent attorney has a technical background in the field of your invention. Because of their specialization in a particular technical field, patent litigation in Germany typically has a team of one attorney at law and one patent attorney on each side. The patent attorney will be able to complement the patent litigator with his technical understanding of the invention.
If you have any more specific needs, feel free to contact us for a consultation.
All the best!
Rolf Claessen
