The Role of Patent Attorneys by the Example of Germany: Education, Experience and Contribution to IP Protection, Litigation and Utilization Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Characteristics of the profession of German Patent Attorneys Free and independent profession „Translators“ between law, technic and science Advisors and representatives of inventors and businesses in all intellectual property matters Advisors and/or representatives on national, european and international basis Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Fields of Representation Patents Utility Models Design Models Trademarks Topography German Law relating to Inventions of Employees Litigation European and International Patent Applications (for European Patent Attorneys) Representation before the OHIM (for European Trademark Attorneys) Further activities of Intellectual property Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Right of Representation of German Patent Attorneys • German Patent and Trademark Office • Federal Patent Court • Federal Supreme Court (in nullity proceedings) • Litigation proceedings (in cooperation with an Attorney at Law): District Court, Higher Regional Court and Federal Supreme Court • With additional admission: EPO, OHIM Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Important Stages for IP Protection Stage 1: Creation of an Invention PA: e.g. prior art searches, discussion of the intended scope of protection, advice with regard to required examples and comparisons Stage 2: Establishing IP protection PA: e.g. advice on the where and what kind of IP protection to file, drafting and filing patent or utility model applications, national-regional-international prosecution Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Important Stages for IP Protection Stage 3: Determining Legal Validity of IP rights PA: e.g. prior art searches, legal opinions on validity, filing oppositions or nullity suits, defending client‘s patents against attacks Stage 4: Commercialisation of Inventions Production, licensing, litigation PA: e.g. due diligence, legal opinions, advising in view of contracts/licensing, infringement, participating in law suits Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. How to become a German Patent Attorney Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Educational Background Requirements Technical education: scientific or technical study at a University with a corresponding degree eg. In chemistry, physics, mechanical engineering, electrical engineering, biology etc.) One year practice in the technical field of the University education e.g. experimental PhD thesis, industrial work experience before, during or after university studies Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Training for Patent Attorney Candidates Time course: • 26 months at a patent attorney‘s office or with a patent agent in industry (training on the job) • 8 months at the German Patent and Trademark Office and Patent Court • Examination at the German Patent and Trademark Office • Admission as patent attorney Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Accompanying legal training Accompanying obligatory study of general law at the FernUniversity Hagen (distant university ) Topics: inter alia civil law, commercial law, labour legislation, corporate law, administrative law, public law, anti-trust law, competition law, procedural law, laws of the EC …… Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Training at the German Patent and Trademark Office and Federal Patent Court German Patent and Trademark Office (2 months): • everyday work experience with a patent and a trademark examiner • seminars in patent and trademark law Federal Patent Court (6 months): • 2 months at a trademark board • 4 months with different boards: technical board, utility model board, nullity board and legal board • Accompanying seminars on law and examination writing skills Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Examination Examination: - in writing: 2 days, legal opinion - oral examination: 3-4 hours Degree: Patent Agent Admission as patent attorney upon request to the President of the German Patent and Trademark Office Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Example for continued Education: „European Intellectual Property Law“ by the Chamber of Patent Attorneys in cooperation with the Distant University Hagen/Germany: • • • • Law of the EU Litigation and Nullity in the UK, France and Germany EPO procedural law Community trademark and design law Examination and Degree: Master of Laws (LL.M) Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. European Patent Attorneys Qualification: Passing the European Qualifying Examination at the European Patent Office Represent clients in all procedures before the European Patent Office Mandatory membership with the Institute of Professional Representatives before the European Patent Office: „epi“ The majority of German Patent Attorneys are also qualified European Patent Attorneys All German Patent Attorneys can be included in the list of Representatives at the Office of the Harmonization of the Internal Market (European Trademarks and Designs) Weickmann & Weickmann Dr. Brigitte Böhm, LL.M. Thank you very much for your attention! Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.