Act sets out new regime for patent attorneys

The Legislative Yuan passed the Patent Attorney Act on June 14 2007; it will become effective on January 11 2008. The bill was first sent to the Legislative Yuan for debate in November 1988 and has taken nearly 19 years to be enacted. Once the act comes into force, all patent prosecution in Taiwan will be undertaken by patent attorneys who have passed a special examination. It is hoped that this will improve patent prosecution services in Taiwan.

Patent prosecution is a highly specialised field that requires professionals with knowledge of and skills in patent law, procedure management, technology and marketing, among others. Potential patent applicants have to rely on professional agents who have been well educated and trained in patent prosecution. Most developed countries, such as Germany, Japan, South Korea, the United Kingdom and the United States, already have in place a system under which patent attorneys (or agents) are trained and screened to ensure that their professional qualifications are adequate to handle patent prosecution. In general, countries with well-designed patent attorney regimes have a better environment for patent prosecution. This not only protects patent applicants, but also strengthens the country’s economic power. It is hoped that Taiwan’s Patent Attorney Act will help make a positive contributory change to the country’s patent prosecution environment.

Under the current regime there is no specific examination or training programme for patent attorneys. The only people allowed to apply for a licence to practise as a patent attorney are

• judges, 
• prosecutors,
• lawyers; 
• accountants; 
• government certified engineers; and
• officers who have served as patent examiners at the Taiwan Intellectual Property Office (TIPO) for more than three years.

Currently, the majority of patent attorneys are lawyers, certified engineers and ex-patent examiners.

In practice, most patent attorneys rely on the expertise of patent engineers, who specialise in various scientific fields (eg, mechanical engineering, electrical engineering, biotechnology or chemistry) and who are trained to understand the technical aspects of patents and to draft patent claims. However, under the current regime experienced patent engineer sare unable to represent independently a client in patent prosecution matters or own a patent firm, without obtaining a professional licence. This system discourages technically trained professionals from entering the patent prosecution business, thus impeding the overall development of Taiwan’s patent prosecution system.

In addition, while patent engineers can grasp easily the salient technical features of a patent claim, they may not always be sensitive to the legal effects due to lack of familiarity with the law. Similarly, lawyers often have a better understanding of the legal meaning of patent claims, but can find it difficult to appreciate the technical value of a patent due to lack of scientific knowledge. In order to solve this problem, the new Patent Attorney Act will establish a national examination system, under which patent attorney candidates are required to pass examinations designed to test their knowledge of both the legal and technical aspects of patent work.

Once the act comes into force, patent attorneys will be qualified for practice only if they have passed this examination and completed pre-employment training. In this way it is hoped that the act will improve the quality of patent prosecution and secure the profession of patent attorneys through the establishment of a mandatory patent attorney union. Currently, the TIPO and other related non-official organisations, including the Taiwan Bar Association, the Taipei Bar Association and the Asian Patent Attorneys Association Taiwan Group, are discussing the details of examination and training regulations. It is hoped that the new examination will be available from August 2008. As for existing patent attorneys, the act states that their rights will not be affected and that they may continue to represent clients and handle patent prosecution matters.

Currently, the majority of patent attorneys are lawyers, certified engineers and ex-patent examiners.