Patent attorney is a specialist in the field of intellectual property (IP) protection, whose work is regulated by Federal Law No. 316-FZ “On Patent Attorneys” and Federal Law No. 416-FZ of December 21, 2021 “On Amendments to the Federal Law “On Patent Attorneys””, which entered into force on December 22, 2022
The status of a patent attorney in the Russian Federation can only be obtained by specialists with higher education and at least 4 years of practical experience in the field of IP, as well as those permanently residing in Russia.
After receiving the status, the specialist receives his own individual number, which, along with other data, is entered into the register of patent attorneys of the Russian Federation. The register reflects his surname, first name, patronymic, number, date of registration and decision of the qualification commission, contact information and specialization. There may be more than one specialization, but in each of them (trademarks, service marks, inventions and utility models, industrial designs, appellations of origin of goods, programs for electronic computers, databases and topologies of integrated circuits), attorneys must have the necessary experience and pass certification.
A patent attorney must work exclusively in his specialization. Otherwise, they do not have the right to use the title “patent attorney” on the territory of the Russian Federation. A Russian patent attorney can also obtain the status of a Eurasian patent attorney, which means he can represent the interests of a client in the territory of all member countries of the Eurasian Patent Convention.
A patent attorney can work with legal entities and individuals independently as an entrepreneur or for hire, providing the necessary level of protection of their rights and legitimate interests in the field of IP.
In addition to providing advisory assistance, a patent attorney also:
1. Draws up and submits applications for registration of a trademark, obtaining patents for an invention, utility model or industrial designs, preliminary checking their protectability in accordance with the legislation of the Russian Federation and international treaties of the Russian Federation, conducts a patent search and evaluates the novelty, ingenuity, industrial applicability of IP objects, and also prepares objections in the event of refusal to issue protection documents;
2. Conducts a patent purity study to ensure that there are no violations of the rights of third parties;
3. Conducts research into the state of the art to identify existing developments in a certain field of technology and search for new ideas for creating an innovative product;
4. Conducts examinations, interacts on behalf of the client with the federal executive authority for intellectual property, including correspondence, prepares and sends objections to examination decisions, statements and other documents, takes part in expert and other meetings and meetings.
It must be understood that
The responsibilities of a patent attorney are significantly different from those of an intellectual property lawyer, even though they work in the same field of IP protection.
So, for example, if a patent attorney prepares and files applications for registration or obtaining patents for IP objects and has the right to work with registered and unregistered IP objects, then the lawyer understands the stages of registration and filing an application with Rospatent at a more general level and works only with registered and patented IP objects.
In case of litigation, a patent attorney can act in court as an independent expert, be involved in registering the transfer of rights in Rospatent (license, franchise, sales agreements), and a lawyer, as a rule, represents the client in court and participates in the settlement of disputes in pre-trial order, draws up contracts, supervises all transactions on the transfer of rights.
Often the author of an invention, industrial design or designation tries to obtain a patent or registration certificate on his own. However, when filing an application independently, the applicant often risks financial and time losses due to violation of deadlines for submitting documents and errors made in them. Therefore, in order to reduce all risks, including reputational ones, it is more profitable to contact a specialist, since he is the one who has all the necessary knowledge and skills.
Usually they contact a private specialist or a patent company. In the first case, it is important to take into account his work experience, specialization, and practical activities, but it must be taken into account that a private specialist has limited resources, he does not have access to special services, there is also a risk of additional payments and the lack of a comprehensive package of services if necessary.
When contacting a patent company, the applicant has much less reason to worry, since its staff has all the necessary highly qualified specialists, which means the risk of refusal to obtain a patent/registration certificate is significantly lower. In addition, the range of necessary services provided has a fixed cost.
When working with clients in both cases, the patent attorney is obliged to ensure the safety of documents received from the client and compiled in the course of performing his work, and he must also ensure the preservation of any information about the client’s activities and his rights. That is, the patent attorney is responsible for the confidentiality of information that he received after the client’s request. All information that constitutes the secret of a patent attorney cannot be requested from him, transferred or disclosed to third parties, but can be provided to him at the request of state bodies or local governments in accordance with the legislation of the Russian Federation.
In conclusion, I would like to add that a patent attorney has no right to deal with a client in relation to any dispute or subject of intellectual property rights in the event that the interests of the current client conflict with the interests of a previous client, if the patent attorney has previously handled his affairs in relation to the same dispute or subject of intellectual rights.
The absence of a conflict of interest must be confirmed in writing by the previous client. Otherwise, the patent attorney is obliged to refuse to carry out the assignment.
