What are the different types of IP adviser?
1. Patent attorneys
Patent attorneys are regulated professionals that support clients in securing patent protection for an invention or innovation, such as a new electronic device or drug formulation. They can help with all aspects of patents, including drafting applications, obtaining patents in the United Kingdom and throughout the world, handling renewals, recording changes of ownership, and managing patent portfolios as the business grows. Patent attorneys will often have an academic and professional background in a particular technological or scientific field, such as engineering, pharmaceuticals, chemistry, software, or electronics. As such, choosing a patent attorney with a background that is relevant to your business will ensure that they can draft comprehensive, technically accurate patent applications that achieve the best protection for your innovation.
What to look for: ‘Patent attorney’ is a protected term, which means that it is illegal for a professional to call themselves a patent attorney without being registered as such with the Intellectual Property Regulation Board (IPReg). Patent attorneys may also be accredited by the Chartered Institute of Patent Attorneys (CIPA) and are usually also qualified to act before the European Patent Office. Look for acronyms such as CPA (‘Chartered Patent Attorney’) and EPA (‘European Patent Attorney’) at the end of their job title.
2. Trade mark attorneys
Trade mark attorneys support businesses in securing registrations for their trade marks, such as names, logos and other important elements of branding, in the United Kingdom and throughout the world. In addition to checking that a trade mark is available to use in a business’s chosen jurisdiction(s), trade mark attorneys can ensure that a registered trade mark is not copied or used without permission by providing watching services, filing oppositions, revocations, and cancellations, sending cease and desist letters, and handling e-commerce takedowns. Trade mark attorneys occasionally also practise as IP solicitors.
What to look for: Whilst the term ‘Registered Trade Mark Attorney’ is protected, the term ‘Trade Mark Attorney’ is not. This means that anyone can claim to be a trade mark attorney, without necessarily having any relevant qualifications. As such, it is important to make sure that a trade mark attorney is registered by searching their name on the IPReg website. Many trade mark attorneys will also be accredited by the Chartered Institute of Trade Mark Attorneys (CITMA), in which case they may have the acronym CTMA (‘Chartered Trade Mark Attorney’) at the end of their job title.
3. IP solicitors
IP solicitors are lawyers who have specialised in IP law. In addition to assessing and identifying their clients’ IP, they will support various IP-related transactions, such as licensing deals, disputes, and social media takedowns. They will also help with court proceedings and litigation involving IP, such as IP infringement or breaches of contract. Some IP solicitors may also be Chartered Trade Mark Attorneys.
What to look for: IP solicitors are regulated by the Solicitors Regulation Authority (SRA) under the Legal Services Act 2007. A legal professional in England & Wales cannot call themselves a ‘solicitor’ without approval from the SRA.