The Intellectual Property Profession
– An
International Comparison
An update of previous FICPI reviews by Peter Kirby (1987) and
Malcolm Royal (1994 and 2001) concerning registration
requirements, responsibilities and benefits afforded to
intellectual property practitioners
Greg Chambers
– 2013
1
Contents
Representation of a Registered Trade Mark Owner in legal proceedings ........................ 26
Representation of a Registered Design Owner in legal proceedings ............................... 37
3
Executive Summary
Professional intellectual property advisers are, in general, highly qualified and, in
most countries, enjoy the right to practice under a protected title
– usually Patent
Attorney or Patent Agent. In some countries there are separate Trade Mark Attorney
and Design Attorney designations for those IP practitioners that specialise in these
fields. In order to practice as a patent attorney or patent agent, many countries
require practitioners to hold a tertiary technical qualification, to complete a set of
special examinations and to serve out a period of apprenticeship.
Despite continuing efforts to harmonise intellectual property laws there has been little
progress in harmonising intellectual property practitioner registration requirements in
the last 25 years. The objectives expressed in the FICPI Kirby Report of 1987 remain
as pertinent today as they were at that time. In particular there are still several
important industrialised countries which do not have a regulated profession and there
are a number of different routes to registration in those countries that do regulate the
profession. Continuing professional development is mandatory in some countries but
it is far from the norm. Whilst communications between clients and professional IP
advisers are protected against forcible disclosure in most countries when the IP
adviser is locally based, such protection is still unavailable in many countries when
the communication is with a foreign adviser.
It remains the case that in those countries that have the highest patenting activity the
requirements to practice are the most stringent.
4
1
Patent Law and Practice, Vol 2, Frost, 1906
Introduction
The private (or free) profession of intellectual property practitioners has been
regulated in most industrialised countries for more than a century. The qualifications
required for a person to be registered as a patent attorney or patent agent differ from
country to country and have, in general, become more stringent over time.
In 1888, the parliament in the UK enacted laws prohibiting unqualified persons from
holding themselves out as patent a
gents with a view to “avoid the abuse of ill-
qualified persons” providing intellectual property services to members of the public
1
.
Whilst this sentiment has been broadly supported in most countries of the world there
continues to be significant variation in national requirements to practice as an
intellectual property practitioner
– some countries require no qualifications nor
registration whilst others impose strict regimes of technical and legal qualifications for
registration.
FICPI has for several years supported international harmonisation of the
qualifications and regulations pertaining to intellectual property practitioners
(recommendation I of the Kirby Report 1987) and has urged that these qualifications
include technical, legal and practice based skills (recommendations III, IV and V of
the Kirby Report). As succinctly stated by Thomas Blanco White in his authoritative
work on English patent law in 1950
– “the drafting of specifications is no job for an
amateur”.
FICPI investigated the intellectual property profession in twenty-eight countries in
1987 under the group led by Peter Kirby. This work was supplemented and updated
on two separate occasions by Malcolm Royal, first in 1994 (extending the initial work
to several South East Asian countries) and again in 2001, when 42 countries were
surveyed.
For this report, a survey was sent to representatives of each country or region having
a FICPI member (89). Responses were received from 61 countries and regions.
The data from this report is intended to assist in the formulation of FICPI policy. In
particular it is intended to be used as part of a broader analysis of the importance
and role of the private profession, being conducted by a group led by John Orange
(Project Orange).
5
Countries Surveyed
The survey found in Appendix A was sent to FICPI representatives in 89 countries
and regions.
58 representatives responded in time for the following countries and regions to be
included in this report:
Territory
Response
Received
Territory
Response
Received
Algeria
Luxembourg
Argentina
Macau
Australia
Macedonia
Austria
Malaysia
Bangladesh
Mexico
Belarus, Republic of
Monaco
Belgium
Morocco
Brazil
Myanmar
Bulgaria
Netherlands
Cameroon
New Zealand
Canada
Nigeria
Czech Republic
Norway
Chile
Oman
China
Pakistan
Chinese Taipei
Panama
Columbia
Paraguay
Cyprus
Peru
Denmark
Philippines
Dominican Republic
Poland
Ecuador
Portugal
Egypt
Quatar
Estonia
Romania
EPO
Russian Federation
Finland
Saudi Arabia
France
Serbia
Germany
Singapore
Great Britain
Slovakia
Greece
South Africa
Haiti
South Korea
Hong Kong
Spain
Hungary
Sri Lanka
Iceland
Sweden
India
Switzerland
Indonesia
Syria
Iran
Taiwan
Ireland
Thailand
Israel
Tunisia
Italy
Turkey
Japan
Ukraine
Jersey
United Arab Emirates
Jordan
United States of America
Kenya
Uruguay
Latvia
Venezuela
Lebanon
Vietnam
Lithuania
For those countries where no response was received, prior information from the reports of Peter Kirby
and Malcolm Royal was used where available and applicable.
6
CHAPTER 1: THE PATENT PROFESSION
Regulation of the Patent Profession
In 49 of the countries surveyed the intellectual property profession is regulated by the
government or a professional association.
Does the government or a professional association regulate the intellectual
property profession in your country to determine who can use the title of "patent
attorney" (or other relevant title in your jurisdiction)?
Response
Response
Count
Yes
49
No
17
Countries with government or professional association regulation:
Argentina,
Australia, Austria, Republic of Belarus, Belgium, Brazil, Bulgaria, Canada, China,
Czech Republic, Cyprus, Estonia, EPO, Finland, France, Germany, Great Britain,
Hungary, India, Indonesia*, Ireland*, Israel, Italy, Japan, Lithuania, Luxembourg,
Macedonia, Malaysia, the Netherlands*, New Zealand, Pakistan*, Poland, Portugal,
Romania, Serbia, Singapore*, Slovakia, South Africa, South Korea*, Spain, Sweden,
Switzerland, Taiwan, Thailand*, Turkey, Ukraine, United States of America,
Venezuela and Vietnam.
* Data not confirmed by current survey
– acquired from previous surveys.
A notable addition to this list is Switzerland which introduced a protected title for
Patent Attorneys under a regulated system on 1 July 2011. Prior to that time the
profession in Switzerland had been unregulated.
Countries without government or professional association regulation:
Chile,
Columbia, Denmark, Dominican Republic, Greece, Hong Kong, Iceland, Iran, Jordan,
Macau, Mexico, Monaco, Norway, Paraguay, Peru, Philippines and Syria.
7
Qualifications Required
Of the 52 countries and regions surveyed that have a regulated intellectual property
profession 49 of these require some form of skill demonstration (either through a
tertiary qualification, the completion of an examination process or the completion of a
period of supervised work) before being permitted to use a protected title such as
patent attorney. Of these 52 countries or regions, 23 require skills demonstration in
each of the three categories.
Response
Response
Count
Tertiary qualification
34
Examination process
43
Supervised work
32
Summary of qualifications required in countries where the patent profession is
regulated:
Answer Options
A tertiary
qualification
The successful
completion of an
examination
process
A period of
supervised work
Argentina
Australia
Austria
Belarus, Republic of
Belgium
Brazil
Bulgaria
8
Canada
China
Cyprus
Czech Republic
Estonia
EPO
Finland
France
Germany
Great Britain
Hungary
India
Indonesia*
Ireland*
Israel
Italy
Japan
Lithuania
Luxembourg
Macedonia
Malaysia
Netherlands*
New Zealand
Pakistan*
Poland
Portugal
Romania
Serbia
Singapore*
Slovakia
South Africa
South Korea*
Spain
Sweden
Switzerland
Taiwan
Thailand*
Turkey
Ukraine
United States of
America
Venezuela
Vietnam*
* Data not confirmed by current survey
– acquired from previous surveys.
Type of tertiary qualification required by country:
Any tertiary degree:
Czech Republic, Estonia.
9
Technical degree only:
Australia, Austria, Republic of Belarus, Belgium, China, EPO,
Finland, Germany, Great Britain, Hungary, India, Italy, Israel, Netherlands,
Switzerland, Sweden, United States of America (patent agent).
Technical or legal degree:
Lithuania, Malaysia.
Law degree only:
Cyprus, Indonesia, Philippines.
Intellectual property degree:
Ukraine.
Technical and law degree:
France, South Africa, United States of America (patent
attorney).
Law or economics degree:
Venezuela.
Engineering, law or economics degree:
Portugal.
10
Legal Practitioners practising as Patent Attorneys / Patent Agents
Of the countries surveyed 32 permit qualified legal practitioners to practice as patent
practitioners without obtaining further qualifications.
Response
Response
Count
Yes
32
No
23
Countries where a lawyer can practice as a patent attorney without obtaining
further qualifications:
Austria, Belgium, Bulgaria, Czech Republic, Chile, Columbia,
Cyprus, Denmark, France, Germany, Great Britain, Hong Kong, India, Iran, Israel,
Italy, Jordan, Luxembourg, Macau, Mexico, Monaco, Norway, Peru, Portugal, Serbia,
Slovakia, Spain, Sweden, Switzerland, Syria, Taiwan, Venezuela.
Countries where a lawyer cannot practice as a patent attorney without obtaining
further qualifications:
Argentina, Australia, Republic of Belarus, Brazil, Canada,
China, Dominican Republic, EPO, Estonia, Finland, Greece, Hungary, Japan,
Macedonia, Malaysia, New Zealand, Paraguay, Poland, Romania, South Africa,
Turkey, Ukraine, United States of America.
11
Who can draft and amend patent specifications?
Of the countries surveyed 18 place restrictions on who (apart from the applicant) can
draft or amend a patent specification.
Response
Response
Count
Yes
18
No
40
Those countries which place restrictions on who may draft or amend a patent
specification:
Australia, Austria, Belgium, Brazil, Canada, Cyprus, EPO, France,
Germany, Great Britain, India, Israel, Lithuania, Luxembourg, New Zealand, South
Africa, Ukraine, United States of America.
12
Who can represent patent applicants?
Leaving aside applicant self representation, of those countries surveyed there were
18 that limited patent applicant representation to patent attorneys or patent agents.
There were 4 countries that required legal representation and 15 countries that
required either legal or patent attorney/agent representation
Representation of Patent Applicants
Response
Response
Count
A lawyer
29
A patent attorney
40
Any person
15
Other
14
Patent Attorneys / Patent Agents Only:
Australia, Belgium, Brazil, Canada, China,
Finland, Japan, Lithuania, Macedonia, Malaysia, New Zealand, Paraguay, Poland,
Romania, South Africa, Spain, Turkey, Ukraine
Patent Attorneys or Lawyers:
Bulgaria, Czech Republic, France, Germany, Great
Britain, Hungary, India, Israel, Italy, Jordan, Luxembourg, Portugal, Serbia, Slovakia,
Taiwan
Any person:
Argentina, Republic of Belarus, Chile, Cyprus, Denmark, Dominican
Republic, Estonia, Hong Kong, Iceland, Iran, Macau, Mexico, Monaco, Norway,
Sweden, Switzerland
Lawyers only:
Columbia, Greece, Philippines, Syria
Lawyers or Economists:
Venezuela
Patent Attorneys / Agents, Lawyers or Notaries:
Austria
Patent Attorneys or Patent Agents only:
United States of America (where patent
attorneys are also lawyers whereas patent agents are not).
13
Requirements for Domestic Representation
Of the countries surveyed 51 require a non-national patent applicant to have a
domestic representative for the filing and prosecution of a patent application. 27
require a non-national patent applicant to have a domestic representative for the
payment of renewals.
Domestic Representation
Question
Yes
No
The filing and prosecution of a patent application
51
4
The payment of renewals
26
27
Domestic representation requirements by country:
Filing and Prosecuting
Payment of Renewals
Yes
No
Yes
No
Argentina
Australia
Austria
Belarus, Republic of
Belgium
Brazil
Bulgaria
Canada
Chile
14
China
Czech Republic
Columbia
Cyprus
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Great Britain
Greece
Hong Kong
Hungary
Iceland
India
Iran
Israel
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Philippines
Poland
Romania
Serbia
Slovakia
South Africa
Spain
Sweden
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of America
Venezuela
15
Representation of a patentee in legal proceedings
Of the countries surveyed 21 permit patent attorneys (who are not also lawyers) to
appear on behalf of a patentee in legal proceedings related to a patent. Those
countries are Austria, Belarus, Czech Republic, China, Estonia, Germany, Great
Britain, Hong Kong, Hungary, Israel, Japan, Luxembourg, Macedonia, Paraguay,
Poland, Romania, Serbia, Slovakia, South Africa, Taiwan and the Ukraine. In the
United States of America a patent attorney can appear on behalf of a patentee in
legal proceedings relating to a patent. Patent Attorneys in the United States of
America are also lawyers. Further details concerning legal proceedings
representation is set out below:
Response
Response
Count
A lawyer
48
A patent attorney
22
Any person
4
16
Continuing Professional Development Requirements
Of the countries surveyed, 6 require continuing professional development for
maintaining registration as a patent attorney or patent agent.
Continuing Professional Development Requirements
Response
Response
Count
Yes
6
No
44
The 6 countries identified as imposing CPD requirements were: Australia, Austria,
China, Japan, Paraguay and Poland.
17
Protection of communications between a patent attorney / agent
and a client against forcible disclosure
Of the countries surveyed, there were 46 in which communications between a patent
attorney or patent agent of the country and a client are protected against forcible
disclosure in the patent attorney or patent agent
’s country.
Protection of Client Communications
Response
Response
Count
Yes, due to specific laws conferring privilege
20
Yes, due to obligations of confidence
26
No
10
Summary of Results by Country:
Answer Options
Yes, due to specific
laws conferring
privilege
Yes, due to
obligations
of
confidence
No
Argentina
Australia
Austria
Belarus, Republic of
Belgium
Brazil
Bulgaria
Canada
Chile
18
China
Colombia
Czech Republic
Cyprus
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Great Britain
Greece
Hong Kong
Hungary
Iceland
India
Iran
Israel
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Philippines
Poland
Portugal
Romania
Serbia
Slovakia
South Africa
Spain
Sweden
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of America
Venezuela
19
Protection of communications between a Foreign patent attorney /
agent and a client against forcible disclosure
Of the countries surveyed there were 29 in which communications between a patent
attorney of another country and a client were protected against forcible disclosure.
Protection of Client Communications
(Non-National Patent Attorney/Agent)
Response
Response Count
Yes
29
No
19
Countries in which communications between a client and a patent attorney (or
a patent agent) of a different country are not protected against forcible
disclosure:
Argentina, Australia (soon to change), Brazil, Chile, China, Denmark,
Finland, Iceland, India, Iran, Lithuania, Malaysia, Mexico, Norway, Paraguay, Poland,
Portugal, Slovakia, Switzerland, United States of America (variable).
20
CHAPTER 2: THE TRADE MARKS PROFESSION
Regulation of the Trade Marks Profession
Of the countries surveyed 17 countries recognise a separate profession for trade
mark practitioners. These countries are Australia, Belgium, Bulgaria, Canada, the
Czech Republic, Cyprus, Estonia, France, Italy, Macedonia, Malaysia, Paraguay,
Romania, Serbia, South Africa, Turkey and Venezuela.
Response
Response
Count
Tertiary qualification
12
Examination process
12
Supervised work
8
No Separate Profession
36
Summary of results by country:
Answer Options
A tertiary
qualification
The successful
completion of
an examination
process
A period of
supervised
work
There is no
separate
profession for
trade marks
Argentina
Australia
Austria
Belarus, Republic of
Belgium
Brazil
Bulgaria
Canada
Chile
China
21
Cyprus
Czech Republic
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Greece
Hong Kong
Hungary
Iceland
India
Iran
Israel
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Philippines
Poland
Portugal
Romania
Serbia
Slovakia
South Africa
Spain
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of
America
Venezuela
Type of tertiary qualification to register as a Trade Marks Attorney by country:
Any tertiary degree:
Italy (or equivalent diploma), Australia, Belgium, Bulgaria
Malaysia, Estonia, France, Paraguay, Serbia
Law degree only:
South Africa
Law or Economics:
Venezuela
22
Legal Practitioners practising as Trade Marks Attorneys
Of the countries surveyed 27 were identified in which a lawyer is entitled to practice
as a trade marks practitioner without obtaining additional qualifications.
Response
Response Count
Yes
27
No
7
Countries where a lawyer can practice as a trade marks attorney without
obtaining further qualifications:
Australia, Austria, Belgium, Bulgaria, Canada,
Czech Republic, China, Columbia, Cyprus, France, Germany, Great Britain, Hong
Kong, Hungary, Iran, Israel, Italy, Malaysia, Mexico, Norway, Philippines, Serbia,
South Africa, Sweden, Switzerland, Taiwan, Venezuela.
Countries where a lawyer cannot practice as a trade marks attorney without
obtaining further qualifications:
Estonia, Macedonia, Paraguay, Poland, Romania,
Turkey, Ukraine.
23
Who can represent Trade Mark Applicants?
Leaving aside applicant self representation, of those countries surveyed there were 9
that limited representation to patent and trade mark attorneys. There were 6
countries that required legal representation and 15 that required either legal or patent
or trade mark attorney representation.
Response
Response
Count
A lawyer
32
A patent attorney
26
A trade mark attorney
27
Any person
22
Patent Attorneys / Agents or Trade Mark Attorneys only:
Brazil, Japan,
Macedonia, Malaysia, Paraguay, Poland, Romania, Turkey, Ukraine
Patent Attorneys / Agents or Trade Mark Attorneys or Lawyers only:
Bulgaria,
Canada, Czech Republic, Estonia, France, Germany, Hungary, Israel, Italy, Jordan,
Serbia, Slovakia, South Africa, Spain, Syria
Any Person:
Argentina, Australia, Republic of Belarus, Belgium, Chile, China,
Denmark, Dominican Republic, Finland, Hong Kong, Iceland, Iran, Luxembourg,
Macau, Mexico, Monaco, New Zealand, Norway, Portugal, Sweden, Switzerland,
Taiwan
Lawyers only:
Columbia, Greece, India, Cyprus, Philippines, United States of
America (where all patent attorneys are lawyers)
Lawyers or Economists (registered as IP agent):
Venezuela
Patent Attorneys / Agents, Lawyers or Notaries:
Austria
24
Requirements for Domestic Representation
Of those countries surveyed 50 require a non-national trade mark applicant to have a
domestic representative for the filing and prosecution of a trade mark application and
37 require a non-national trade mark applicant to have a domestic representative for
the payment of renewals.
Domestic Representation
Question
Yes
No
The filing and prosecution of a trade mark
application
50
6
The payment of renewals
37
18
Domestic representation requirements by country:
Filing and Prosecuting
Payment of Renewals
Yes
No
Yes
No
Argentina
Australia
Austria
Belarus, Republic of
Belgium
Brazil
Bulgaria
25
Canada
Chile
China
Czech Republic
Columbia
Cyprus
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Great Britain
Greece
Hong Kong
Hungary
Iceland
India
Iran
Israel
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Philippines
Poland
Portugal
Romania
Serbia
Slovakia
South Africa
Spain
Sweden
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of
America
Venezuela
26
Representation of a Registered Trade Mark Owner in legal
proceedings
Of the countries surveyed 20 countries allow either patent attorneys / agents or trade
mark attorneys who are not lawyers to represent trade mark owners in legal
proceedings related to a trade mark. These are Austria, the Republic of Belarus, the
Czech Republic, China, Estonia, Germany, Great Britain, Hungary, Iran, Japan,
Macedonia, Paraguay, Poland, Romania, Serbia, Slovakia, South Africa, Spain,
Taiwan and Ukraine.
Response
Response
Count
A lawyer
49
A patent attorney
16
A trade mark attorney
12
Any person
5
27
CPD Requirements for Trade Mark Attorneys
Of the countries surveyed, only 5 required practitioners to complete continuing
professional development for maintaining registration as a trade mark practitioner.
Response
Response
Count
Yes
5
No
12
Continuing education requirements for trade mark attorneys:
Australia, Bulgaria,
Italy, Malaysia, Paraguay.
28
Protection of communications between a Trade Mark Attorney /
Agent and a Client against forcible disclosure
Of the countries surveyed, there were 24 in which communications between a trade
mark attorney of the country and a client are protected against forcible disclosure in
the trade mark attorney’s country.
Response
Response
Count
Yes, due to specific laws conferring privilege
9
Yes, due to obligations of confidence
15
No
5
Summary of Results by Country:
Answer Options
Yes, due to
specific laws
conferring
privilege
Yes, due to
obligations of
confidence
No
Australia
Belgium
Bulgaria
Canada
China
Columbia
Czech Republic
Cyprus
Estonia
France
29
Hong Kong
Hungary
Iran
Israel
Italy
Macedonia
Malaysia
Norway
Paraguay
Philippines
Romania
Serbia
South Africa
Sweden
Switzerland
Taiwan
Turkey
Ukraine
Venezuela
30
Protection of communications between a foreign trade mark
attorney and a client against forcible disclosure
Of the countries surveyed there were 14 in which communications between a trade
mark attorney of another country and a client were protected against forcible
disclosure
Response
Response Count
Yes
14
No
9
Countries in which communications between a client and a trade mark attorney
of a different country are not protected against forcible disclosure:
Australia
(soon to change), China, Iran, Malaysia, Norway, Paraguay, Romania, Sweden,
Switzerland.
31
CHAPTER 3: THE DESIGNS PROFESSION
Regulation of the Designs Profession
Of the countries surveyed only 10 recognise a separate designs profession. These
are Bulgaria, China, Estonia, France, Macedonia, Malaysia, Paraguay, Romania,
Serbia and Venezuela.
Response
Response
Count
Tertiary qualification
7
Examination process
7
Supervised work
5
No separate profession for designs
45
Summary of answers by country
Answer Options
A tertiary
qualification
The
successful
completion
of an
examination
process
A period of
supervised
work
There is no
separate
profession
for designs
Argentina
Australia
Austria
Belarus, Republic of
Belgium
32
Brazil
Bulgaria
Canada
Chile
China
Czech Republic
Columbia
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Great Britain
Greece
Hong Kong
Hungary
Iceland
India
Israel
Iran
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Philippines
Poland
Portugal
Romania
Serbia
Slovakia
South Africa
Spain
Sweden
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of
America
Venezuela
33
Legal Practitioners practicing as Designs Attorneys/Agents
Of the countries surveyed 19 allow a lawyer to practice as a designs attorney without
obtaining additional qualifications.
Response
Response
Count
Yes
19
No
6
Countries where a lawyer can practice as a designs attorney without obtaining
additional qualifications:
Australia, Bulgaria, Canada, Columbia, Cyprus, Denmark,
France, Germany, Great Britain, Hungary, Iran, Israel, Malaysia, Mexico, Monaco,
Norway, Serbia, Taiwan, Venezuela.
34
Who can represent Design Applicants?
Of the countries surveyed only 8 countries restricted designs work to Patent or
Designs Attorneys. Commonly, lawyers are also permitted to do this work. In 21 of
the countries surveyed there was no restriction on who could represent a design
applicant.
Response
Response Count
A Lawyer
32
A Patent Attorney
30
Any Person
21
Other
12
Patent or Designs Attorneys Only:
China, Estonia, Japan, Macedonia, Malaysia,
Poland, Romania, Turkey
Patent or Designs Attorneys or Lawyers Only:
Bulgaria, Czech Republic, France,
Germany, Hungary, Italy, Jordan, Philippines, Serbia, Slovakia, Spain, Syria, Taiwan,
Ukraine, United States of America
Lawyers Only:
Columbia, India, Lithuania, Cyprus, Venezuela
Any Person:
Argentina, Australia, Republic of Belarus, Canada, Chile, Denmark,
Dominican Republic, Finland, Great Britain, Hong Kong, Iceland, Iran, Luxembourg,
Macau, Mexico, Monaco, New Zealand, Norway, Portugal, Sweden, Switzerland
35
Requirements for Domestic Representation
Of those countries surveyed 51 require a non-national trade mark applicant to have a
domestic representative for the filing and prosecution of a trade mark application and
33 require a non-national trade mark applicant to have a domestic representative for
the payment of renewals.
Domestic Representation
Question
Yes
No
The filing and prosecution of a trade mark
application
51
3
The payment of renewals
33
20
Domestic representation requirements by country:
Filing and Prosecuting
Payment of Renewals
Yes
No
Yes
No
Argentina
Australia
Austria
Belarus, Republic of
Brazil
Bulgaria
Canada
Chile
36
China
Czech Republic
Columbia
Denmark
Dominican Republic
Estonia
Finland
France
Germany
Great Britain
Greece
Hong Kong
Hungary
Iceland
India
Israel
Iran
Italy
Japan
Jordan
Lithuania
Luxembourg
Macau
Macedonia
Malaysia
Mexico
Monaco
New Zealand
Norway
Paraguay
Peru
Philippines
Poland
Romania
Serbia
Slovakia
South Africa
Spain
Sweden
Switzerland
Syria
Taiwan
Turkey
Ukraine
United States of America
Venezuela
37
Representation of a Registered Design Owner in legal proceedings
Of the countries surveyed 21 countries allow either patent attorneys / agents that are
not lawyers to represent design owners in legal proceedings related to a design
registration. These are Austria, the Republic of Belarus, the Czech Republic, China,
Estonia, Germany, Great Britain, Hungary, Iran, Israel, Japan, Macedonia, Poland,
Romania, Serbia, Slovakia, South Africa, Spain, Taiwan, Ukraine and United States
of America.
Response
Response
Count
A lawyer
50
A patent attorney
21
Any person
3
38
Continuing Professional Development Requirements
Of the countries having a separate designs profession only 3 have continuing
professional requirements for maintaining registration. These are China, Malaysia and
Paraguay.
Response
Response
Count
Yes
3
No
7
39
Protection of communications between a Designs Attorney / Agent
and a Client against forcible disclosure
Of the countries surveyed communications between a designs attorney of the country
and a client were protected against forcible disclosure in 18 countries.
Protection of Client Communications
Response
Response
Count
Yes, due to specific laws conferring privilege
7
Yes, due to obligations of confidence
11
No
5
Summary of Results by Country:
Answer Options
Yes, due to
specific laws
conferring
privilege
Yes, due to
obligations of
confidence
No
Australia
Bulgaria
Canada
China
Columbia
Cyprus
40
Denmark
Estonia
France
Great Britain
Hungary
Iran
Israel
Macedonia
Malaysia
Monaco
Norway
Paraguay
Romania
Serbia
Taiwan
Ukraine
Venezuela
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Protection of communications between a Foreign Designs Attorney
/ Agent and a client against forcible disclosure
Of the countries surveyed communications between a designs attorney in another
country and a client were protected against forcible disclosure in 10 countries.
Protection of Client Communications with Foreign Design Attorney
Response
Response Count
Yes
10
No
8
Countries in which communications between a client and Foreign Designs
Attorney are protected against forcible disclosure:
Bulgaria, Columbia, Estonia,
Great Britain, Hungary, Macedonia, Monaco, Serbia, Taiwan, Venezuela.
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CHAPTER 4: THE ROLE OF IP OFFICES
Services Provided
All members surveyed were asked whether their local IP Office offers any services
traditionally provided by patent attorneys, trade mark attorneys, design attorneys and/or IP
lawyers. It appears that several IP offices are now providing a broader offering than
examination and grant.
Those IP Offices which provide legal opinions:
Austria, Belgium, Czech Republic, China,
Estonia, France, Hong Kong, Hungary, Israel, Japan, Malaysia, Norway, Switzerland
Other services specified included:
Country/Region
Comment
Australia
Non disclosure agreement template; trade mark search preliminary to filing.
EPO
EPO does searches if you ask them and pay.
Estonia
IP Office provides an assistance to the applicants if they require.
Finland
To some extent opinions and legal document templates.
Hong Kong
Trademark registrability.
Hungary
Opinions: only patentability.
India
The Office of the Controller General of Patents, Designs & Trademarks does
not provide any of the above services. However, the government has setup
the Rajiv Gandhi National Institute of Intellectual Property Management,
whose Office of Patent Information Services provides searching services for a
fixed fee.
Malaysia
The MYIPO offers searching services (whether there are marks on record
which resemble the subject mark) and also Preliminary advice on whether the
subject mark is registrable (inherently adapted or capable of distinguishing).
New Zealand
Searching and advice re trade marks only.
Norway
Freedom to operate.
Switzerland
"Opinions" primarily focus on searching for patents that may be infringed.
Office does not provide a detailed opinion.
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Consultation with the Profession
All members surveyed were asked whether their local IP Office engaged with the patent
attorney and trade mark attorney profession when considering changes in law or practice.
Pleasingly, the vast majority of local IP Offices do consult with the profession when
considering changes in law or practice.
Response
Response Count
Yes
47
No
8
Countries which do not consult with the local profession when considering changes
in law and practice:
Belgium, Cyprus, Greece, India, Mexico, Monaco, Paraguay and
Venezuela.
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Assistance to Unrepresented Applicants
Several IP Offices provide assistance to unrepresented applicants.
Response
Response Count
Yes
35
No
20
Countries which do not provide assistance to unrepresented applicants:
.Brazil,
Bulgaria, Czech Republic, Cyprus, Germany, India, Israel, Jordan, Lithuania, Macau,
Macedonia, Paraguay, Portugal, Romania, Serbia, South Africa, Spain, Sweden, Taiwan and
Ukraine.
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Suggestions for IP Office Assistance to the Profession
All of those surveyed were asked to indicate whether there was anything that IP
Offices, law makers or other government bodies could do to foster the patent attorney
and/or trade mark attorney professions. Comments were received from 35 countries.
Comments by country are listed below.
Country
Comment
Argentina
In Argentine the most convenient thing the PTO could do for the
patent agents would be to consult the local association before issuing
rules and regulations.
Australia
Consider the impact of changes in legislation on the domestic
profession. View quality examination as their core activity.
Discontinue offerings that compete with the profession.
Austria
Co-operation.
Belarus, Republic of
To introduce laws and practices to make it easier to take part in
international IP studies, courses, conferences and other IP events.
Belgium
Official recognition and respect of the profession of Patent and
Trademark Attorneys.
Bulgaria
I would like to see IP Offices, law makers or other government bodies
to work correct and honestly.
Canada
Maintain exam requirement, add CLE requirements, better educate
public as to role of patent and trade mark attorneys and IP in general.
Chile
To have a special degree enabling patent attorneys to represent
applicants.
China
Communication effectively with attorney profession.
Columbia
Not letting individuals or companies to act directly without
representation. Require qualifications to act before it.
Dominican Republic
Restrict certain subject matter to the exclusive handling of IP
attorneys.
Estonia
It depends of the economy of the concrete country and from the
number on people.
Finland
Engage the patent and trade mark attorney professions in the
legislation procedures in an earlier stage and let professions
contribute to the IP field based on their expertise and the client
knowledge.
France
1st: maintain a regulated title and no obstruct to initiatives to promote
continuous education for professionals 2nd: encourage involvement
of patent and trademark attorneys in representation for legal
proceedings (such as co-pleading or co-representation with
attorneys-at-law).
Greece
More co-operation and participation in bringing about changes in the
law and the profession.
Hong Kong
First HK needs a substantive examination; primarily to help inventors
who wish to file in their home country first; so a corollary would be the
development of a proper patent profession to help inventors.
Hungary
Attempts and means to promote and support innovations.
Iceland
Assist in maintaining the profession, support education, training and
building qualification programs. (The Icelandic Office does indeed do
this to certain extent.)
India
In view of the Indian scenario, the following may be considered: 1.
Engage and invite feedback from professional organizations such as
FICPI, AIPPI and/or APAA, that represent intellectual property
lawyers/practitioners before amending laws and implementing
policies. 2. Give special emphasis to the public offices of the
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Controller General of Patents, Designs & Trademarks and the
Chairman of the Intellectual Property Appellate Board keeping in
mind the specialized nature of the duties assigned to them.
Israel
Support legislation providing for attorneys confidentiality and privilege
protection with clients, as the case with regular lawyers.
Jordan
More coordination and publishing their data online.
Macau
To restrict the practice of acts before the IP Offices to licensed patent
and trademark attorneys.
Malaysia
Greater funding and incentives to industry to invest in IP protection
and acquisition.
New Zealand
Seek more guidance from attorneys as to what changes are needed
to improve the process of filing and prosecuting applications to
achieve better patents.
Norway
Provide privilege for patent attorneys.
Monaco
That Monaco Law limit the exercise of activities in IP matters to firms
established in Monaco, and not accept interventions from IP agents
from other countries.
Peru
These bodies should be in contact with the IP professionals and
consult them.
Philippines
Support the creation or institutionalizing the patent attorney
profession.
Romania
The Patent Office should promote the revision of the Patent Attorney
law, in the sense to exclude other professional background than
technical and scientific, to attend the qualification examination for
patent attorney.
Slovakia
Creating of a patent court.
South Africa
Convert to an examining office.
Spain
To enforce the use of the IP professionals as the only ones who can
represent clients at the IP Offices.
Switzerland
Client-attorney privilege Regulations defining the right to carry the
title cooperating of Offices with patent and trade mark attorney
associations to improve the system and to ease the daily job of the
patent and trade mark attorney.
Turkey
Passing a legislation regulating the profession.
Venezuela
Exams for qualifying for Patent Agent/Attorney Exams for qualifying
for Trade Mark Agent/Attorney Effective sanctions against
misrepresentation.
Acknowledgement
The assistance of Magda Bramante of Phillips Ormonde Fitzpatrick, Melbourne in
undertaking the survey, analysing the results and assisting in preparing this report is
gratefully acknowledged.
Greg Chambers
January, 2013
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Appendix A
– Questionnaire Sample
48
Appendix B
– Kirby Report 1987, Royal Report 1994, Royal Report
2001