Dear Doc:
I know that in addition to knowing everything about copyrights, you’re also a “registered patent attorney”. What, exactly, does that mean, and how does that compare to being an “intellectual property attorney”?
Signed,
Legally Confused
Dear LC:
In American law, there are only two recognized specialties that an attorney-at-law may advertise. These are “proctor in admiralty” and “registered patent attorney”. While the admiralty has its own interesting history that the Doc needs not explain here, the registered patent attorney is a license conferred by the United States Patent and Trademark Office (USPTO) that permits a lawyer who is a member of the bar of the highest court of a state or territory to also represent clients in proceedings before the USPTO such as in filing of patent applications and appeals before the Patent Trial and Appeal Board. There are now 38,200 registered patent attorneys in the United States (out of 1.37 million total lawyers!).
In order to become registered, an attorney must possess several qualifications. The first is that the applicant must meet certain technical and scientific knowledge requirements. Per the General Requirements Bulletin under 37 C.F.R. § 11.7, she must meet the standards under one of the following:
Category A: Bachelor’s, master’s, or PhD in an approved science/engineering field (e.g., various engineering disciplines, chemistry, biology, physics, computer science under certain conditions).
Category B: Sufficient semester hours of specified science/engineering coursework, even if the degree title is different (e.g., 24+ hours physics, or a combination of chemistry/physics plus biology-related credits meeting detailed rules).
Category C: Passing the Fundamentals of Engineering (FE) exam plus a bachelor’s degree, demonstrating practical engineering or scientific experience.
The attorney must be a U.S. citizen (or have the requisite immigration status), and be a member in good standing of the bar of a state or territory. That usually, but not always, means that she graduated from an approved law school with a juris doctor, took and passed the bar exam, and meets the criteria for good character required by the state.
Then the attorney must apply to the USPTO Office of Enrollment and Discipline (sounds kinky, but is not, the Doc assures you, dear readers). If approved, the attorney then must take an examination that is colloquially called the “Agent’s Exam” or “Patent Bar Exam.” Finally, after passing the exam, and paying the necessary fees, the attorney must take an oath prescribed under 37 C.F.R. § 11.8.
You probably noticed that all of this says nothing about trying cases in federal court. That’s because you do not need to be a registered patent attorney to do that. In fact, relatively few lawyers who try cases are also registered patent attorneys. The Doc believes, however, that it is preferable when an attorney both drafts, files, and prosecutes applications before the USPTO, and tries infringement cases in federal court. That is what the Doc does, and he tells clients that it is useful to know both how the patent examiner will view a patent claim, as well as how judges and juries are likely to rule on them. That is because there are different legal standards that apply in the USPTO and in courts.
Finally, many attorneys who are not registered patent attorneys call themselves “intellectual property attorneys.” These lawyers deal with trademarks, copyrights, agreements concerning patents (licenses) and often, patent litigation, but they may not represent clients in the Patent Office itself.
So now you know. Most, but not all of the attorneys at LW&H are registered patent attorneys. (And even the one who is not knows a great deal about patents!) Give them a call with your questions.
Until next month,
The “Doc”
— Lawrence A. Husick, Esq.