Patent Attorney or Patent Lawyer?

Yael Saidian

Yael Saidian

Registered Israeli patent attorney

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Patent Attorney/Patent Agent/IP Attorney/Patent Lawyer

Introduction

The profession of a person who is certified to draft patent applications, handle prosecution of patent applications, and represent foreign applicants before the local Patent Office is titled “Patent Attorney”. But the bar for attaining this title is different in each country.

 

Many people do not know the difference between a lawyer and a patent attorney in Israel. Some mistakenly think that in Israel a patent attorney must be a lawyer. The confusion is understandable, especially in light of the fact that every country in the world sets different standards and requirements for granting a patent attorney license.

 

I hope that after reading this post, it will be clearer to you who is eligible to be registered as a patent attorney and, more importantly, who you would prefer to represent your clients in patent cases in Israel.

The differences between the titles people use in Israel to describe their skills

Patent Attorney/ Patent Agent/ IP Attorney/ Patent Lawyer/ Attorney at Law specializing in patents and intellectual property

What is the meaning of each title in Israel?

Which qualifications are required of an Israeli practitioner in order to represent clients before the Israeli Patent Office (ILPO)?

Israeli Patent Attorney – Definition

A person is entitled to be listed in the Israeli Register of Patent Attorneys and receive a patent attorney’s license, if s/he satisfies several minimal conditions as outlined below:

  • appropriate technological education;
  • a minimum of 2 years of internship; and
  • successfully passing oral and written exams administered by the Israeli Patent Office.

A registered patent attorney in Israel is licensed to practice and represent clients before the ILPO in connection with the registration of patents, designs and trademarks and in proceedings before the ILPO, such as opposition or cancellation of registration. Patent attorneys may also provide opinions regarding patentability, infringement and validity of patents.

 

In Israel, a registered patent attorney is not required to be a lawyer

In fact, most of the registered patent attorneys in Israel are not lawyers. Thus, the definition of a licensed patent attorney in Israel differs from “Patent Attorney” or “Patent Agent”, titles used in the United States. 

Israeli Patent Agent – Definition

Patent Agent is a term no longer applicable in Israel in 2020, since almost all practitioners with such a title are no longer alive. This title was created in 1967 by the legislature to allow practitioners already acting as representatives of patentees to carry on working. The new Patent Law, which went into effect in 1968, allowed these practitioners to work as patent attorneys without being required to fulfill the mandatory requirements for a license.

Israeli Attorney at Law – Definition

An Attorney at Law is a member of the Israeli Bar Association who is licensed to practice law in Israel.

An IP (intellectual property) Attorney or Patent Lawyer are additional titles used to describe a solicitor with knowledge and experience in intellectual property law.

However, these titles are somewhat confusing since many foreign attorneys are not familiar with the distinctions between the US and Israeli terms.

An attorney at law who is not registered as a patent attorney is one who did not pass the patent bar exam and thus lacks the requisite practical experience and knowledge of the Israeli Patent Office policies and procedures. 

The Current IP Scene in Israel

Nowadays, many small IP firms have popped up like mushrooms after the rain. In addition, law firms handle patent filing and prosecution despite not having a full-time, bona fide employee with patent attorney certification. Therefore, to an outsider it may seem that there are a lot of professional options available. However, the sad truth is that there are too many inexperienced people trusted with the handling of patent prosecution.

Representation before the Commissioner of Patents by a lawyer can cause irreparable damage to patent applications due to an inadequate understanding of technology and a lack of relevant experience. 

It is a pity that there is no clear limitation in the Patent Law that prevents unqualified representatives from appearing before the ILPO. Fortunately, this aspect is covered by the law profession’s Ethical Code, which states that lawyers may not handle a case for which they are not qualified.  Regrettably, not everyone adheres to the ethical code. 

Often, I come across cases where a non-registered patent attorney or an ordinary lawyer who is unfamiliar with the local practice complicates the examination proceedings or initiates cumbersome, unnecessary proceedings.

For example, a lawyer, who was unfamiliar with the examination guidelines and wanted to immediately initiate the examination of a newly filed patent application, chose an option that was possible years ago but has since been canceled. Due to his lack of proficiency, he compelled his client to pay for the preparation of an affidavit and documents that were not required and, additionally, to pay a costly official fee. Obviously, as expected, his request for an expedited examination was denied due to non-compliance with the regulations. Only after six months of back-and-forth communications were the proper proceedings initiated. Due to incompetent representation, the unfortunate applicant had lost precious time during which anyone could continue to sell the imitations of the product without interruption or penalty.

In a previous article I described the unfortunate case of IL patent application 224299, which was handled by one of the country’s top IP firms. The firm hired an attorney who misunderstood the Hebrew word used by the examiner for informing him that certain claims are indeed patentable. The poor applicant so trusted his attorney, who told him that nothing could be done to register his patent, that he did not read the official notice himself. 

Additional reading that may be of interest to you: How to Select a GOOD Patent Attorney in Israel.

Takeaways

If you are currently represented by a law firm with attorney at law certification, you are strongly advised to check if they employ a certified patent attorney and verify that their technical background matches your needs.

Are they adequately skilled and knowledgeable of the technology of the invention?

Check if your current representative is a certified patent attorney: A link to the webpage of ILPO Register of Israeli Patent Attorneys

Open the MS Excel file, the list includes Hebrew and English names of all registered Israeli Patent Attorneys.

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