Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

The Role of Patent Attorneys

by the Example of Germany:

Education, Experience and Contribution to

IP Protection, Litigation and Utilization

Free and independent profession„Translators“ between law, technic and scienceAdvisors and representatives of inventors and businesses in all intellectual property mattersAdvisors and/or representatives on national, european and international basis

Characteristics of the profession of German Patent Attorneys

Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

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

Important Stages for IP Protection

Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

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

Important Stages for IP Protection

Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

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

How to become a German Patent Attorney

Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

Weickmann & Weickmann Dr. Brigitte Böhm, LL.M.

Educational Background Requirements

Technical education: scientific or technical study at a University with a corresponding degreeeg. In chemistry, physics, mechanical engineering, electrical engineering, biology etc.)

One year practice in the technical field of the University educatione.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!