The IP Factor

Recently I interviewed someone who describes himself as being a “registered patent attorney”, both in his advertising literature and in his resume. The person is actually not registered as a patent attorney or patent agent in Israel or anywhere else.  He has no scientific or engineering degree and so does not have the basic academic requirement to qualify as a patent attorney. He also does not hold a law degree and so cannot qualify as an Attorney-at-Law.

Clearly the person concerned is not licensed and not registered. In addition to contravening Sections 29 and 30 of the Israel Bar Law and the relevant sections of the Israel Patent Law, the person concerned is committing an act of fraud and presumably will, if he continues, eventually be sued. Not being eligible for malpractice insurance, he will presumably be bankrupted.  On querying it turned out that he is registered in the mailing list of the Israel-Canadian Board of Trade.  Worrying isn’t it?  

There are a number of self-styled IP Consultants. These are careful not to refer to themselves as attorneys or patent attorneys. Nevertheless, they are possibly committing an offence under both the Patent Law and the Israel Bar Law.

There is a new phenomenon that I’ve come across recently. Bonafide licensed attorneys-at-law sometimes refer to themselves as being patent attorneys.

This phenomenon is possibly unique to Israel with 45000 licensed attorneys-at-law and perhaps 200 patent attorneys. Are these lawyers guilty of fraud? Of misrepresentation? Of an ethical shortcoming?

Attorneys-at-law can legally do everything that patent-attorneys can, so there is no problem per se. with an attorney writing and prosecuting patents.

However, representing oneself as being a patent attorney may be misleading, in that the client may expect the practitioner to have accurate written English, a level of competence in drafting patents and a college education in science or engineering.

I have recently seen documents filed by attorneys who refer to themselves as being patent attorneys, who clearly do not have accurate written English, a scientific background or knowledge of patent drafting.  I am redrafting a number of such applications that were filed in the Israel Patent Office or as UP provisional applications.  The clients are paying twice. This is unacceptable.

Clearly the level of English, the quality of the scientific background varies from one patent attorney to another, as does the level of experience and inherent ability. Some attorneys choose to proecute rather than draft new applications, and some specialize in some areas, whereas others are general practitioners, nevertheless, the basic qualification does guarantee at least a minimum standard. We hope the professional organizations such as the AIPA will address this issue.

I advise inventors to check the qualifications of the person providing a patent service. Ask for references. Ask to see examples of the work.