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:
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•
•
•
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.