Sometimes referred to as patent agents, patent attorneys are a bridge between science/engineering and law providing a unique combination of these two professional disciplines. To qualify as a patent attorney in most jurisdictions, it is a pre-requisite to have a tertiary level qualification in science/engineering and to then obtain a professional qualification in intellectual property law. The old adage still rings true: a patent attorney is a lawyer’s engineer and an engineer’s lawyer.

In contrast, lawyers are not required to have a tertiary level qualification in science or engineering. Lawyers in HK who represent themselves as “agents for patents and trademarks” are not patent attorneys or patent agents, but are agents only in a very general sense. Patent attorneys are qualified to advise not only on patenting an invention, but also on the increasingly important issue of infringement and validity of patents. This is one of the distinct technical/legal skills of a patent attorney.

The patent attorney can search to identify what is already known in the technological field of the invention. The patent attorney also evaluates the patentability of the invention and can propose a suitable strategy for applying for a patent in one or more countries taking into account the complex laws and costs of seeking patent protection in such countries.

The patent attorney is uniquely skilled in drafting a patent specification identifying the broadest scope of the invention. Subsequently, the patent attorney negotiates with the national patent offices to secure grant of patents.

No. Obtaining an issued patent is not the end of a process, but the end of the beginning. Once issued, a patent can be used to stop an infringer, it can be licensed to obtain royalties, or it can be assigned for value. A patent attorney assists with all of these post grant activities providing legal support and a commercial perspective often absent from legal deliberations.

Both, in fact.

Patent attorneys are consulted on the patentability of new products and frequently advise and educate R&D personnel on the concepts of patentability. This allows R&D personnel to recognize when their work involves patentable subject matter and can help them better focus their R&D efforts.

Patent attorneys also help manufacturers and designers who are worried that they may have infringed another’s patent by advising on the potential risk. Also, many astute companies engage patent attorneys to conduct patent searches to make sure that their new products are clear of existing patents. This may include having the patent attorney evaluate a patent and offer guidance on how to design around the patent.

Countries which have a professional qualification for patent attorneys include the UK, Europe, China, Japan, Singapore, Australia, New Zealand, Canada, Malaysia etc.

Hong Kong does not have a regulatory system for patent attorneys. Thus, Hong Kong clients owe it to themselves to be discerning about the professional qualifications of their service providers.

Fortunately, there are professionally qualified patent attorneys in Hong Kong.

Patent attorneys are also qualified to advise on protection of copyright, design and trade mark rights, although we have colleagues who are qualified as trademark attorneys. Each of these types of protection covers different aspects of a product or development and receiving commercially focused advise on the combination of these rights in a newly developed product or service can greatly strengthen the rights’ owner’s position with respect to its competitors.