Who is who in the market of patent services
In the life cycle of each company, sooner or later the question arises, one way or another related to intellectual property (IP) - whether it is the invention of patenting, registration of a trademark, deposit of a program, a dispute related to the use of a domain name or violation of exclusive rights, patent research in connection with government contracts, independent patent valuation, etc. To solve this kind of issues, appropriate specialists are needed. My experience with clients shows that company management does not always have a clear idea of ​​what kind of specialists they need in such cases. Next is a brief overview of the “functionality” of IP specialists, which helps to make the right choice of a contractor for each specific task.
Patent specialist - an expert in the field of patenting inventions, utility models. A patent is a profession. Like, say, an art historian or merchandiser.
Patent Attorney - a citizen registered with Rospatent and engaged in activities related to the legal protection of intellectual property and means of individualization, protection of intellectual rights, the acquisition of exclusive rights to intellectual property and means of individualization, disposition of such rights (Law of the Russian Federation on Patent Attorneys). Patent Attorney is a status. The only difference between a patent attorney and any other citizen is the presence of registration at Rospatent, which gives a conditional monopoly right to represent the interests of foreign persons before Rospatent. The arbitrariness of this monopoly is related to the fact that the Civil Code of the Russian Federation and international treaties of the Russian Federation establish its non-obligation for WTO member countries (164 countries for July 2016), all European countries (under the Russia-Europe agreement), countries participating in the TRIPS agreement, as well as a number of neighboring countries. As a bonus, patent attorneys have a couple of procedural indulgences in Rospatent.
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A patent specialist, as a rule, works in the staff of a more or less large enterprise or patent firm, where there are enough tasks to permanently load a full-time unit or conduct private practice (acts as a freelancer). Functionally, patent specialists are divided into three groups - narrow specialists, "masters of all trades" and "shifters of paperwork."
Narrow patent specialists:
- “applicants” - historically (since Soviet times) the most respected part of the tribe of patents; they constitute patent applications for inventions and utility models;
- “experts” and “patent engineers” in a patent firm - specialize in correspondence on applications with the patent office; they either do not make up the applications themselves (when working with foreign applicants), or they rarely do so;
- “seekers” - specialize in information retrieval (on patent and non-patent sources of information) and preliminary analysis;
- forensic experts performing forensic patent examination;
- employees of Rospatent and its subordinate organizations (including state experts of FIPS) - this category refers to patent specialists conditionally, but has been added to the list, since its representatives also operate on the market of patent services.
“Handymen of all trades” are patent specialists who do not have enough downloads for one specialization and they have to deal with everything in a row. Sometimes even combine patent and non-patent work. Often found among full-time patent at industrial enterprises and in educational institutions, as well as in small universal patent firms.
“Patent writers” - clerks (office plankton), are needed to free more qualified patent specialists and patent attorneys from routine clerical work. In patent firms, they are usually referred to as “patent attorneys assistants”, in law firms - “paralegals”.
A patent attorney is registered with Rospatent in at least one of the following specializations:
- inventions and utility models;
- industrial designs;
- trademarks;
- appellations of origin of goods;
- computer programs, databases, IC topologies.
Strictly speaking, patent attorneys in the narrow sense adopted in the international legal field should refer only to those registered in inventions and utility models. For example, in the United States, a patent attorney (patent attorney) or patent agent (patent agent) is registered with the USPTO only for inventions, for which he must have a technical or natural science education. For work with trademarks, industrial samples, etc. the usual status of a lawyer is sufficient and registration with the USPTO is not required. The same situation with the European Patent Office. In 1992 when we adopted the first Patent Law, it was decided to call patent attorneys specialists in all specializations, although for patenting industrial samples and registering trademarks, no engineering knowledge is required, and registration of computer programs, databases and IC topologies is completely routine task, quite feasible for plankton (the main task is to fill out an application without errors).
Patent attorneys, as a rule, become patent specialists with preserving the nature of their previous activities: who wrote applications - he usually continues to write them, who served foreign applicants - continues to do the same, only for double salary, since he now signs the documents and shifted pieces of paper - just as successfully shifted them in the new status.
Corporate lawyers (employed) and attorneys (whose activities are public), specializing in IP, deal mainly with disputes in the field of copyright and related rights, patent disputes (in a broad sense - on patents, trademarks, domain names), entering into the customs register, unfair competition, etc.
Functionally, they are divided into two main groups:
- litigators - are involved in disputes in courts of all types and instances, as well as in the FAS;
- mediators - engaged in extrajudicial disputes (including - in order to find ways to reconcile the disputing parties).
Sometimes lawyers and attorneys also become patent attorneys, although this combination of statuses is relatively rare.
These are professional IP managers. They are found in large Russian companies (oil and gas complex, nuclear industry, production of armaments and military equipment, food industry, pharmaceutics) and in the Russian branches of transnational corporations - they have general knowledge of IP that is sufficient to fulfill their functions: management of work on obtaining and maintaining security documents, monitoring violations of rights, obtaining and granting licenses, coordinating the actions of external STS attracted to solve specific problems, etc. Some IP managers for solidity are registered as patent attorneys, but they almost never do patent work (this is not royal business).
As can be seen from the review above, the choice of a performer for a specific task related to IP should be made on the basis of the nature of the task, its complexity, the intended amount of work and formal restrictions by law.
For example, conducting a patent research according to GOST R 15.011 and preparing a report it is advisable to entrust the patent specialist (patent attorney) with a decent experience in solving such problems in the same or related field. Since compliance with GOST R 15.011 is required, as a rule, when fulfilling state contracts (including military contracts), the contractor must be sufficiently experienced in dealing with the departmental bureaucracy at the stage of submitting a report to the customer’s representative who will find fault with the formalities (commas, fonts, paragraphs, etc.). I had a case when, at the request of the receiving party (customer of the customer), I had to include in the report according to GOST R 15.011 about half a dozen empty tables with explanations why they were empty. For it says "lumines" means lumines.
The choice of a performer for the preparation of patent applications for inventions requires special attention and caution. The cost of such services in the market has a large spread - from 30 tr. to half a million. It makes sense to choose a supplier with a price closer to the lower limit, if necessary, to file a “nominal” application (“for show”) - for a report on a government contract or for a grant, to fulfill the plan, to “inflate” the company's valuation for investments, for a PhD thesis and etc. If the application is supposed to receive patents in several countries (especially in Europe and the USA), then it should be prepared in an adult way so as not to put at risk investments in foreign patenting (5–10 k $ for each country for each application). The cost of the work package for creating such an application will be closer to the upper limit of the specified price range. Sometimes a potential executive hints at “business connections” with the expertise of Rospatent. I do not presume to say that such connections do not exist. But a patent obtained with the use of corruption mechanisms or an administrative resource, most likely, will not have sufficient resistance to cancellation and, even if it stands in the PPP (Chamber of Patent Disputes of Rospatent), then everything will fall in the CIP (Intellectual Property Court) .
In the case of an already arisen or potential patent dispute, patent expert examination should be conducted by an experienced patent examiner. It makes no sense to entrust it to an omnivorous expert organization (whether government or commercial). Unlike autoexamination, consumer expertise, handwriting expertise, etc., patent expertise is a relatively rare phenomenon, therefore there are no full-time patent experts in such organizations and they (organizations) only deal with the resale of conclusions made by random physical contractors for a minimal fee. The quality of such conclusions raises great doubts.
To handle patent disputes in court, it is best to assemble a team, which should include an experienced litigator (lawyer), who has eaten teeth on procedural matters, has NLP skills and legal connections, and at least one experienced patent specialist or patent attorney, whose task is to provide the litigator with technically competent and legally verified arguments on the merits of the dispute.
Independent evaluation of patents and trademarks conducted by certified appraisers. Appraisal may be required in case of alienation of patents and trademarks (sale, transfer to balance), acquisition in succession, pledge, investments, joint ventures, increase in the book value of IA for approval of a loan by the bank, IPO, etc. The appraiser must be familiar with the area of ​​activity to which the patent or trademark belongs. It must be a SRO, its activities must be insured in the manner prescribed by law. If the cost of the appraisal work is determined as a percentage of the assessed value, measures should be taken against its unjustified overestimation.
When choosing a contractor, one should not trust only the “external” signs of qualification - the presence of the status of a patent attorney or attorney, the length of service of a patent expert or expert, fame of the previous employer, etc. It is best to make sure that the required competences are available by asking for objective evidence - published patent applications and patent descriptions, court decisions, FAS decisions, descriptions and reports of real cases (when it is possible from the point of view of confidentiality), recommendations of previous clients and employers. It would not be superfluous to look in the face during a personal meeting and, in a relaxed conversation, assess the experience of the candidate by asking for a comment on a particular situation. At the same time, it should be borne in mind that test questions for candidates in the patent field are not accepted.
Patenters and patent attorneys
Patent specialist - an expert in the field of patenting inventions, utility models. A patent is a profession. Like, say, an art historian or merchandiser.
Patent Attorney - a citizen registered with Rospatent and engaged in activities related to the legal protection of intellectual property and means of individualization, protection of intellectual rights, the acquisition of exclusive rights to intellectual property and means of individualization, disposition of such rights (Law of the Russian Federation on Patent Attorneys). Patent Attorney is a status. The only difference between a patent attorney and any other citizen is the presence of registration at Rospatent, which gives a conditional monopoly right to represent the interests of foreign persons before Rospatent. The arbitrariness of this monopoly is related to the fact that the Civil Code of the Russian Federation and international treaties of the Russian Federation establish its non-obligation for WTO member countries (164 countries for July 2016), all European countries (under the Russia-Europe agreement), countries participating in the TRIPS agreement, as well as a number of neighboring countries. As a bonus, patent attorneys have a couple of procedural indulgences in Rospatent.
')
A patent specialist, as a rule, works in the staff of a more or less large enterprise or patent firm, where there are enough tasks to permanently load a full-time unit or conduct private practice (acts as a freelancer). Functionally, patent specialists are divided into three groups - narrow specialists, "masters of all trades" and "shifters of paperwork."
Narrow patent specialists:
- “applicants” - historically (since Soviet times) the most respected part of the tribe of patents; they constitute patent applications for inventions and utility models;
- “experts” and “patent engineers” in a patent firm - specialize in correspondence on applications with the patent office; they either do not make up the applications themselves (when working with foreign applicants), or they rarely do so;
- “seekers” - specialize in information retrieval (on patent and non-patent sources of information) and preliminary analysis;
- forensic experts performing forensic patent examination;
- employees of Rospatent and its subordinate organizations (including state experts of FIPS) - this category refers to patent specialists conditionally, but has been added to the list, since its representatives also operate on the market of patent services.
“Handymen of all trades” are patent specialists who do not have enough downloads for one specialization and they have to deal with everything in a row. Sometimes even combine patent and non-patent work. Often found among full-time patent at industrial enterprises and in educational institutions, as well as in small universal patent firms.
“Patent writers” - clerks (office plankton), are needed to free more qualified patent specialists and patent attorneys from routine clerical work. In patent firms, they are usually referred to as “patent attorneys assistants”, in law firms - “paralegals”.
A patent attorney is registered with Rospatent in at least one of the following specializations:
- inventions and utility models;
- industrial designs;
- trademarks;
- appellations of origin of goods;
- computer programs, databases, IC topologies.
Strictly speaking, patent attorneys in the narrow sense adopted in the international legal field should refer only to those registered in inventions and utility models. For example, in the United States, a patent attorney (patent attorney) or patent agent (patent agent) is registered with the USPTO only for inventions, for which he must have a technical or natural science education. For work with trademarks, industrial samples, etc. the usual status of a lawyer is sufficient and registration with the USPTO is not required. The same situation with the European Patent Office. In 1992 when we adopted the first Patent Law, it was decided to call patent attorneys specialists in all specializations, although for patenting industrial samples and registering trademarks, no engineering knowledge is required, and registration of computer programs, databases and IC topologies is completely routine task, quite feasible for plankton (the main task is to fill out an application without errors).
Patent attorneys, as a rule, become patent specialists with preserving the nature of their previous activities: who wrote applications - he usually continues to write them, who served foreign applicants - continues to do the same, only for double salary, since he now signs the documents and shifted pieces of paper - just as successfully shifted them in the new status.
Lawyers and attorneys
Corporate lawyers (employed) and attorneys (whose activities are public), specializing in IP, deal mainly with disputes in the field of copyright and related rights, patent disputes (in a broad sense - on patents, trademarks, domain names), entering into the customs register, unfair competition, etc.
Functionally, they are divided into two main groups:
- litigators - are involved in disputes in courts of all types and instances, as well as in the FAS;
- mediators - engaged in extrajudicial disputes (including - in order to find ways to reconcile the disputing parties).
Sometimes lawyers and attorneys also become patent attorneys, although this combination of statuses is relatively rare.
IP Managers
These are professional IP managers. They are found in large Russian companies (oil and gas complex, nuclear industry, production of armaments and military equipment, food industry, pharmaceutics) and in the Russian branches of transnational corporations - they have general knowledge of IP that is sufficient to fulfill their functions: management of work on obtaining and maintaining security documents, monitoring violations of rights, obtaining and granting licenses, coordinating the actions of external STS attracted to solve specific problems, etc. Some IP managers for solidity are registered as patent attorneys, but they almost never do patent work (this is not royal business).
Who and how to engage
As can be seen from the review above, the choice of a performer for a specific task related to IP should be made on the basis of the nature of the task, its complexity, the intended amount of work and formal restrictions by law.
For example, conducting a patent research according to GOST R 15.011 and preparing a report it is advisable to entrust the patent specialist (patent attorney) with a decent experience in solving such problems in the same or related field. Since compliance with GOST R 15.011 is required, as a rule, when fulfilling state contracts (including military contracts), the contractor must be sufficiently experienced in dealing with the departmental bureaucracy at the stage of submitting a report to the customer’s representative who will find fault with the formalities (commas, fonts, paragraphs, etc.). I had a case when, at the request of the receiving party (customer of the customer), I had to include in the report according to GOST R 15.011 about half a dozen empty tables with explanations why they were empty. For it says "lumines" means lumines.
The choice of a performer for the preparation of patent applications for inventions requires special attention and caution. The cost of such services in the market has a large spread - from 30 tr. to half a million. It makes sense to choose a supplier with a price closer to the lower limit, if necessary, to file a “nominal” application (“for show”) - for a report on a government contract or for a grant, to fulfill the plan, to “inflate” the company's valuation for investments, for a PhD thesis and etc. If the application is supposed to receive patents in several countries (especially in Europe and the USA), then it should be prepared in an adult way so as not to put at risk investments in foreign patenting (5–10 k $ for each country for each application). The cost of the work package for creating such an application will be closer to the upper limit of the specified price range. Sometimes a potential executive hints at “business connections” with the expertise of Rospatent. I do not presume to say that such connections do not exist. But a patent obtained with the use of corruption mechanisms or an administrative resource, most likely, will not have sufficient resistance to cancellation and, even if it stands in the PPP (Chamber of Patent Disputes of Rospatent), then everything will fall in the CIP (Intellectual Property Court) .
In the case of an already arisen or potential patent dispute, patent expert examination should be conducted by an experienced patent examiner. It makes no sense to entrust it to an omnivorous expert organization (whether government or commercial). Unlike autoexamination, consumer expertise, handwriting expertise, etc., patent expertise is a relatively rare phenomenon, therefore there are no full-time patent experts in such organizations and they (organizations) only deal with the resale of conclusions made by random physical contractors for a minimal fee. The quality of such conclusions raises great doubts.
To handle patent disputes in court, it is best to assemble a team, which should include an experienced litigator (lawyer), who has eaten teeth on procedural matters, has NLP skills and legal connections, and at least one experienced patent specialist or patent attorney, whose task is to provide the litigator with technically competent and legally verified arguments on the merits of the dispute.
Independent evaluation of patents and trademarks conducted by certified appraisers. Appraisal may be required in case of alienation of patents and trademarks (sale, transfer to balance), acquisition in succession, pledge, investments, joint ventures, increase in the book value of IA for approval of a loan by the bank, IPO, etc. The appraiser must be familiar with the area of ​​activity to which the patent or trademark belongs. It must be a SRO, its activities must be insured in the manner prescribed by law. If the cost of the appraisal work is determined as a percentage of the assessed value, measures should be taken against its unjustified overestimation.
Instead of conclusion
When choosing a contractor, one should not trust only the “external” signs of qualification - the presence of the status of a patent attorney or attorney, the length of service of a patent expert or expert, fame of the previous employer, etc. It is best to make sure that the required competences are available by asking for objective evidence - published patent applications and patent descriptions, court decisions, FAS decisions, descriptions and reports of real cases (when it is possible from the point of view of confidentiality), recommendations of previous clients and employers. It would not be superfluous to look in the face during a personal meeting and, in a relaxed conversation, assess the experience of the candidate by asking for a comment on a particular situation. At the same time, it should be borne in mind that test questions for candidates in the patent field are not accepted.
Source: https://habr.com/ru/post/322666/
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