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Who are the patent attorneys, who needs them, and why are they needed?

Dec. 15, 2018

A patent attorney carries out business with the Federal Executive Authority on
Intellectual Property on behalf of applicants, right holders and other interested citizens and legal
entities permanently residing (for citizens) or having a location (for legal entities) in the Russian
Federation and abroad, unless otherwise is stipulated by the international treaty of the Russian
Federation or the legislation of the Russian Federation.
An adult Russian citizen with a higher education, permanently residing on the territory of
Russia and who has a four-year experience in the relevant field can become a patent attorney.
The citizens declared legally incompetent and partially legally competent, the state and
municipal employees, and the citizens, who have been excluded from the Register of Patent
Attorneys of the Russian Federation by the decision of the court can not be patent attorneys.
To carry out the patent activities it is necessary to be certified by way of passing a
qualification exam to obtain a relevant certificate confirming the status of a patent attorney.
Under the current legislation, the foreigners can file their applications with Rospatent
only via a particular specialist. This is a patent attorney, and his participation in the process of
filing an application by the foreigners is mandatory. If we are talking about a person who has a
Russian citizenship (or an equivalent to it), then making a decision on his participation in the
process shall rest with an applicant. On the one hand, you can save some money by composing
an application by yourself. On the other hand, one can obtain the quality of the work performed,
when it is done by the professionals in their field. Paying for the services of a patent attorney,
will help you to pay back the costs in future.
The guarantee of a successful consideration of a particular application is very relevant for
both the individuals and the legal entities. In a certain way, Rospatent or the Patent Office of
another state? which is carrying out the registration, will study the application with respect to a
refusal to register. It is also necessary to take into account the fact that a positive decision made
with respect to the grant of a patent influences the correctness of the formalization of the
application. This is true not only with respect to the correctness of filling in and filing the
appropriate forms. The main thing you need to pay attention to is the correctness of the
representation of the essence of the application. The saddest thing is that it is very difficult for a
non-specialist to understand the decoding of a preliminary search of Rospatent. In the vast
majority of cases, the applicant is not completely sure whether it will be possible to obtain a
patent as a result.
The cooperation with a patent attorney has a lot of positive aspects. To begin at least
with, his task includes the control over the consideration of the registration of the applications by
the relevant authority, tracking the incoming correspondence and the timely response to it.

Moreover, in some moments ordinary citizens are not able to influence the process of the
consideration. This is especially true, when it comes about the speed of the consideration of the
registration application. According to the results of the decision made, such specialist will not
only outline clearly the possible prospects, but he will also give a number of recommendations.
In addition to the fact that these specialists pass difficult qualification exams, they also have a
certain work experience. And the knowledge of the peculiarities of the cooperation with the
Patent Office is often a key to a successful outcome of the case.
With respect to the advantages of carrying out business via the patent
attorneys, it can be said that the patent attorney is an official, who is acting within
the law ad who is responsible before Rospatent for his activities, the latter
exercising control over these activities and has the right to impose punishment on
the patent attorney up to the exclusion from the Register. With this respect, the
applicant can count on the greater responsibility of the patent attorney as his
representative, in comparison with any other person, even if the latter is connected
by an agreement with the applicant. Therefore, the patent attorney who is
professionally engaged only in his activities should not lose his face, committing the
violations in a professional sphere, what threatens him with a loss of authority and
work. Such loss does not threaten to ordinary representatives. This does not mean,
of course, that the qualification of other representatives is always lower than the
qualification of a patent attorney, but the thing is just about the responsibility.
With respect to other advantages (a qualification, experience, skills, etc.), it
can be said that most of the patent attorneys have come from the Rospatent
system, what gives certain advantages due to the knowledge of the technology of
the applications passing, the nuances of the correspondence, the ability to possess
more information, including about the practice of examination at the current
moment. The patent attorney shall be certified for certain types of activities
(possibly also without limitations) by passing the relevant qualification exams.
Therefore, as a patent attorney he can act a representative “within the
specialization indicated in the Register of Patent Attorneys” (Article 4 of Law of the
Russian Federation on Patent Attorneys No. 316-FZ of 30.12.09). At the same time,
he signs all documents precisely as a patent attorney indicating his number in the

Register. With respect to the specialization over which the patent attorney has not
been certified, he may act as a representative on a par with any other person,
without indicating himself as a patent attorney. It should be noted that the
examination of Rospatent checks the powers of attorney and other documents with
respect to the specialization of the patent attorney upon the receipt and/or
consideration of the materials of the applications for the industrial property subject
matters. Moreover, the examination has the right to request for these documents if
necessary (for example, if the doubts about the authenticity of the documents
appear), if they have not been received with the materials of the applications,
because the patent attorney is not obliged to submit the powers of attorney along
with the applications, but he only has the right to indicate his details in them (his
full name, the Register number, the address of the correspondence).
Thus, by resorting to the services of a patent attorney, the applicant is safe
from a number of serious errors, which in some cases may lead to a negative
decision.

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Author of article

Ludmila Lisovskaya

Ludmila Lisovskaya

Patent Specialist / Chemical Specialist