Trade Mark Attorneys
&
Patent Attorneys
What are Patent and Trade Mark Attorneys?
Patent and trade mark attorneys are specialists in intellectual property rights, protecting the ideas, inventions, designs and logos of individuals and companies as well as some of the worlds largest organisations.
What is a patent attorney?
A patent attorney is a lawyer who specialises in working with clients to protect their inventions and design rights. An inventor or company wishing to secure exclusive rights to their design to prevent others from making, using or selling the invention would go to a patent attorney who would work with them to identify and articulate exactly what needs to be protected - ‘patented’. A patent attorney would prepare a detailed description of the invention, and then apply to register this using the national and international protection systems.
In addition to a legal qualification in intellectual property, a patent attorney needs a background in science/technology/engineering in order to be able to understand the unique properties and science behind new concepts and designs. Language skills are also increasingly important for patent attorneys working in a global market, with large multi-national companies.
What is a trade mark attorney?
A trade mark attorney specialises in protecting brand names, domain names, logos as well as design and copyright issues. Like patent attorneys they would work with their clients to identify what needs to be protected and then register these so that any names, designs etc become exclusive to that client, and others are prevented from using them. A trade mark attorney can have a degree in any subject as well as a legal qualification, before going on to specialise in intellectual property rights as a trade mark advisor.
How do I qualify?
It usually takes four to five years to qualify as either a patent or trade mark attorney and those wishing to do so usually start off with a trainee position in a firm who would then pay the costs of the courses that lead to qualification.
The Chartered Institute of Patent Attorneys (CITMA) website suggests looking out for opportunities at careers fairs, graduate job websites, the CITMA jobs board or directly via firms with an active IP practice.
Qualifying as a Trade Mark Attorney
What do I need to get started?
Eligibility requirements
To qualify as a trade mark attorney, you do not have to be a solicitor or barrister; neither do you need to have a law degree.
You must have a minimum 2:2 degree (in any subject) or a number of years’ work experience within the legal profession, for example as a paralegal.
What are the education requirements?
Qualifying courses
You need to complete two courses:
1. A foundation certificate trademark course which is accredited by the IP Regulation Board (IPReg). These courses are only offered by three universities, as listed below:
Bournemouth University - Postgraduate Intellectual Property Certificate
Brunel University London - Postgraduate Intellectual Property Certificate
Queen Mary University of London - Postgraduate Trade Mark Law and Practice Certificate
Queen Mary University of London - Postgraduate Intellectual Property Certificate
2. The IPReg-accredited Professional Certificate in Trade Mark Practice which is only offered by Nottingham Trent University.
If you already have a law degree, the Legal Practice Course, or have passed the Bar Final Examination, you may be eligible for exemptions from part of the examination process. Eligibility for exemptions is determined by the universities providing the accredited courses.
What are the work experience requirements?
Qualifying work experience
In addition to completing the education requirements above, you will need to acquire sufficient work experience. This can take the form of:
(a) two years’ of supervised practice, working full-time in intellectual property gaining substantial experience of trade mark attorney work, which is defined as
“work done in the course of carrying on the business of acting as agent for others for the purpose of applying for or obtaining trade marks in the United Kingdom or elsewhere or of conducting proceedings before the Comptroller relating to applications for or otherwise in connection with trade marks” (Patent Attorney and Trade Mark Attorney Qualification and Registration Regulations 2009)
Your work experience would need to be gained in the UK, or elsewhere, and be supervised by a UK Registered Trade Mark Attorney or a solicitor or barrister who is engaged in or has substantial experience of trade mark work in the UK.
or
(b) four years’ of unsupervised practice – again working full-time in intellectual property gaining substantial experience of trade mark attorney work, as defined above. If you are seeking to qualify with four years of unsupervised practice, you may be asked to provide evidence of the type of work you have carried out, the assessment of which would be based on the Competency Framework for Trade Mark Attorneys
Further information about qualifying can be found in the Frequently Asked Questions section on the IPReg website.
What else do I need?
Apply to join register of Trade Mark Attorneys
When you have successfully completed both the courses and your work experience, you can then apply to be registered as a Trade Mark Attorney. Further information, together with an online application form, can be found on the IPReg website in Admission to the Register.
Qualifying as a Patent Attorney
What do I need to get started?
Eligibility requirements
To qualify as a patent attorney, you do not have to be a solicitor or barrister, nor have a law degree. But you must have a minimum 2:2 degree in Science, Technology, Engineering or Mathematics (STEM).
It would be up to the course providers and Patent Examination Board (PEB) to determine any exemptions from the degree requirement.
What are the education requirements?
Qualifying courses
There are two stages to the education element of your training:
1. Foundation stage
You need to complete one of the IP Regulation Board (IPReg) accredited foundation certificate trademark courses:
Bournemouth University - Postgraduate Intellectual Property Certificate
Brunel University London - Postgraduate Intellectual Property Certificate
Queen Mary University of London - Postgraduate Trade Mark Law and Practice Certificate
Queen Mary University of London - Postgraduate Intellectual Property Certificate
or you could complete the IPReg-accredited Foundation Certificate examinations provided by the Patent Examination Board (PEB)
or have previously completed the University of Manchester Diploma/LLM in Intellectual Property passed in or before July 2013.
If you already have a law degree, the Legal Practice Course, or have passed the Bar Final Examination, you may be eligible for exemptions from part of the examination process. Eligibility for exemptions is determined by the university’s providing the accredited courses.
2. Final stage:
For the final stage, you need to complete the Final Diploma examinations provided by the Patent Examination Board (PEB). This entails four examinations. Essentially the exams are designed to test your fitness for practise, including your ability to assess a patent’s validity, how well you prepare your patent applications on behalf of clients and, importantly, your knowledge of intellectual property law.
Training for the exams is provided by employers, The Chartered Institute of Patent Attorneys and commercial providers.
Before you take your final diploma examinations, you will also need to have completed the required work experience.
What are the work experience requirements?
Qualifying work experience
To complete the requirements for qualification, you will need either:
(a) two years’ of supervised practice, working full-time in intellectual property gaining substantial experience of trade mark attorney work, which is defined as
“work done in the course of carrying on the business of acting as agent for others for the purpose of applying for or obtaining patents in the United Kingdom or elsewhere or of conducting proceedings before the Comptroller relating to applications for or otherwise in connection with patents.” (Patent Attorney and Trade Mark Attorney Qualification and Registration Regulations 2009)
Your work experience would need to be gained in the UK, or elsewhere, and be supervised by a registered patent attorney, or a barrister, solicitor or advocate who is engaged in or has substantial experience of patent attorney work in the United Kingdom.
Or
(b) four years’ of unsupervised practice – again, working full-time in intellectual property gaining substantial experience of patent attorney work, as defined above. If you are seeking to qualify with four years of unsupervised practice, you may be asked to provide evidence of the type of work you have carried out based on the Competency Framework for Patent Attorneys.
What else do I need?
Apply to join register of Patent Attorneys
When you have completed these qualification requirements, you can then apply to be registered as a Patent Attorney. Further information about how to apply can be found on the Admission to the IPREG Register section of the IPReg website, as well as the Competency Framework for Patent Attorneys which provides more details on what you would need to evidence on admission to the register.