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The mission and the place of a patent attorney in the intellectual property protection

Dec. 15, 2018

According to Paragraph 3 of Article 1247 of the Civil Code of the Russian Federation and Paragraph 1 of
Article 2 of Federal Law of the Russian Federation of 30.12.2008 No. 316-FZ, a patent attorney is a
citizen of the Russian Federation, who, in accordance with the established procedure, has received a
relevant status and who carries out his activities related to the legal protection and the defence of the
intellectual rights, including the acquisition and disposal of these rights. 1
According to the Rospatent information, more than 1,900 people have been registered in the Register of
Patent Attorneys of Russian Federation by the beginning of 2018. However, as it is indicated in the
information report about 1,500 people work actually. 2 According to the statistical reports, the number of
certified specialists increases annually, but if you compare the number of such specialists, for example,
with Germany, where about 3,800 patent attorneys are registered, the figures are very modest. 3 At the
same time, the importance and demand for patent attorneys is obvious.
The powers of a patent attorney for the protection of the intellectual rights
Describing the patent attorney’s powers, it is not by chance that the legislator has highlighted the
possibility of participating in the protection and defence of the rights of the holder of the intellectual
property subject matters. Thus, the term “protection” means the use and application of the measures
stipulated by law for the suppression of offenses, the recognition and restoration of the rights, as well as
the application of the appropriate sanctions.
In accordance with Paragraph 1 of Article 4 of the Law “On Patent Attorneys” the patent attorney shall
have the right to provide the following services for the protection of the rights to the client.
· To advise on the protection of the intellectual rights.
· To interact with the Federal Executive Authority on Intellectual Property and the Chamber for Patent
Disputes, including to correspond, to prepare and submit objections to the examination decisions and
other documents, to participate in various meetings and sessions.
· To participate as an examiner or a representative in the court in cases involving the rights to the
intellectual property subject matters.
· To implement other patent attorney activities not prohibited by the legislation of the Russian Federation
in the interests of the client.
Advising on the protection of the intellectual rights
One of the requirements to the person claiming the status of a patent attorney is the requirement to have
experience in the relevant specialization during at least four years. Thus, addressing to a certified patent
attorney for an advice, the right holder can be sure that he will receive a qualified advice and the useful
information regarding the ways and opportunities for the protection of the rights and the legitimate
interests.
The interaction with Rospatent and the Chamber for Patent Disputes
There are often the situations, when the applicant does not agree with the decision of Rospatent with
respect to the application filed, or the owner of the registered subject matter of intellectual property

1 The Federal Law of December 30, 2008 No. 316-FZ “On Patent Attorneys”
2 The Rospatent report on the number of the patent attorneys in the regions of the Russian Federation for 2017 – URL:
https://rupto.ru/ru/activities/pat_pov/sved-pat-pov
3 Horoshkeev V. A. Who about what, but the patent attorneys about their law // Patent Attorney – 2018 – No. 3 – URL:
http://www.patentinfo.ru/issue/3p_18.html

considers granting legal protection to another subject matter to be illegal. In such cases, the use of a
patent attorney as a representative in the Chamber for Patent Disputes will be the most correct decision.
The patent attorney, being the person who constantly interacts with the Federal Executive Authority and
ensures the correct and timely filing the documents required for the registration, will be able to compose
correctly an objection, as well as to assess correctly the expediency of addressing to the Chamber for
Patent Disputes.
The participation in the court proceedings
The patent attorney can act as an examiner or he can be a representative in the court in the cases involving
the intellectual rights.
The examination shall be appointed by the court in the cases, where it is necessary to establish the facts
requiring the special knowledge. The patent attorney, depending on his qualification, has the right to hold
a patent and technical examination, to study the issue of similarity of the designations in the event of a
dispute with respect to the trademarks or to analyze the products with respect to which the means of
individualization have been registered as to their homogeneity. The examiner’s conclusion shall be
recognized as evidence, along with and on an equal basis with other evidence. But because of the specific
knowledge of the person, who has conducted the examination, the court, when making a decision, pays an
increased attention to such conclusions.
The right of the patent attorney to participate as a representative on the client's behalf during the court
proceedings shall be certified by the power of attorney that does not require notarization. The advantages
of such representation consist in understanding the essence and the specifics of the dispute arising from
the peculiarities of the field of the intellectual property. At the same time, it should be noted that the
status of a patent attorney does not exclude the possibility of a person to have simultaneously a lawyer
status. 4 For this reason, some subjects are patent attorneys and simultaneously they have a lawyer status.
Other activities on the protection of the rights of the holder of the intellectual property subject
matter
Under the norms of the Federal Law “On Patent Attorneys” the range of actions of the patent attorney in
this case shall be limited to the actions that do not contradict to the legislation. Such activities include, for
example, writing and sending the letters of claim to the person who is offending the rights of the person,
who is represented by the patent attorneys.
The mission and the place of a patent attorney in the intellectual property protection
The clear arguments can be given to justify the use of the services of a patent attorney for the protection
of the intellectual property rights. The patent attorney is a professional intermediary between the right
holder of the intellectual property subject matter and the state authorities (the Federal Executive
Authority, the judicial instances, etc.). The status of a patent attorney confirms the existence of the
relevant exprience and the qualification knowledge. The legislation reflects the obligation of the patent
attorney to represent the interests of the customer in a proper manner and in accordance with the
professional ethics. In the event of damage, the sanctions can be applied to the patent attorney.
Describing the role and the mission of the patent attorneys in protecting the legitimate interests of the
right holders of the intellectual property and the means of individualization, it can be said with confidence
that their essence is in a professional representation and qualified assistance to the client in ensuring and
restoring the rights owned by him.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney