Glossary of key intellectual property terms
Tuesday, 24th October 2023Written by, Parminder Lally, Appleyard Lees
Have you ever wondered what all the letters mean in the email signature of your IP attorney, on their website bio, or in the footer of their emails? It feels a bit like alphabet soup, right?!
Do you know what the difference is between a patent attorney and an IP consultant, and does the difference really matter?!
In this article, we lead you through some of the key acronyms and terminology you may see on IP firms’ websites and on their emails, why these terms matter, and what they mean for you as a user of IP services.
One big reason why, if you’re a start-up or spin-out, or even a more established organisation, you should ensure that you seek advice about IP from regulated UK patent or trade mark attorneys because they have in-depth, accurate legal knowledge backed-up by qualifications and continual professional development. Another big reason is that if something goes wrong as a result of the work performed by a regulated patent or trade mark attorney, you can complain to various bodies and potentially obtain financial compensation for any damage caused to your business.
So, let’s dive into the IP alphabet soup to find out more!
Qualifications
Firstly, let’s go through some terms that relate to the qualifications of regulated patent and trade mark attorneys.
CPA = Chartered Patent Attorney. This is someone who has sat and passed the UK patent attorney qualifications and has, as a result, become a Fellow of the Chartered Institute of Patent Attorneys.
Chartered Patent Attorneys have attained the highest standards of professional practice in intellectual property law. They will help you secure the correct protection and will provide you with the most informed and reliable business advice. CPAs have a global reputation for exceptional quality which is maintained via continuing professional development. CPAs typically work on patent matters, but are also able to provide advice on trade marks, designs and copyright. At Appleyard Lees, we ensure you are working with the attorney(s) with the right IP skillset to suit your IP needs.
CPAs have scientific degrees – they have to have these in order to understand the technical and scientific details of your inventions. When picking someone to help you patent your inventions, you should choose a CPA who has the right skills and knowledge to understand your inventions. For multidisciplinary inventions, at Appleyard Lees we will often pair-up so that you benefit from the knowledge of attorneys with different scientific backgrounds.
EPA = European Patent Attorney. This is someone who has sat and passed the European patent attorney qualifications and is therefore, able to act for their clients or employer before the European Patent Office (EPO).
UK-based EPAs are still able to represent their clients/employer before the EPO, because the EPO is not an EU body and therefore, rights were not impacted as a result of Brexit.
It currently takes people a minimum of three years of training under another EPA to gain the skills and knowledge required to sit the professional qualifications which, if passed, lead to them being an EPA.
Most UK-based EPAs are also CPAs, and may refer to themselves as “dual-qualified”.
RPA = Registered Patent Attorney. This acronym is not very common, because most RPAs will be CPAs and prefer to indicate their chartered status. An RPA is someone who has passed the UK patent attorney qualifying exams and is listed on the list of registered patent and trade mark attorneys in the UK, which is managed by IPReg.
You should note that the term “Patent Attorney” is used more generally in the UK to mean a lawyer specifically qualified to advise on intellectual property law, who is subject to regulation by IPReg. Firms or individuals who use titles such as “patent consultant” or “patent advisor”, or “IP advisor” are unlikely to have any form of professional qualification. You can check the online register to see who is regulated by IPReg.
It is also a criminal offence in the UK for anyone to use the term “Patent Attorney” or “Patent Agent” unless they are on the IPReg register.
MCITMA = member of the Chartered Institute of Trade Mark Attorneys.
This is someone who has sat and passed the UK trade mark attorney qualifications and has, as a result, become an Ordinary member or Fellow member of the Chartered Institute of Trade Mark Attorneys.
Chartered Trade Mark Attorneys advise on trade marks and designs matters. Typically, they also handle issues around the infringement of trade mark and design rights, and domain name disputes. By using a Chartered Trade Mark Attorney, you know that you’ll be advised by someone who has the right skills and knowledge to understand your companies’ commercial needs. MCITMAs have high professional standards, maintained by a strong code of conduct and continuing professional development requirements.
LLB = Bachelor of Laws. The LLB is an undergraduate degree in the UK that is equivalent to a BA or BSc. This qualification is the first step towards becoming a solicitor or barrister.
A number of Appleyard Lees’ registered trade mark attorneys are also qualified solicitors in England and Wales, and specialise in IP matters, such as contracts, assignments, and licenses.
RTMA = Registered Trade Mark Attorney. This acronym is not very common, because most RTMAs will be MCITMAs and prefer to indicate their chartered status. An RTMA is someone who has passed the UK trade mark attorney qualifying exams and is listed on the list of registered patent and trade mark attorneys in the UK, which is managed by IPReg.
You should note that firms or individuals who use titles such as “trade mark consultant” or “IP advisor” are unlikely to have any form of professional qualification. You can check the online register to see who is regulated by IPReg.
It is a criminal offence for anyone to use the term “Registered Trade Mark Attorney” or “Registered Trade Mark Agent” unless they are on the trade mark attorney register. But the less specific terms “trade mark attorney” and “trade mark agent” are not protected by law and anyone may use them.
Key IP Offices
Depending on what aspect(s) of your business need protecting, and where, we will file applications to register your IP rights at various IP offices. Here are some of the common ones.
UK IPO = UK Intellectual Property Office
This is the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright. If you wish to obtain registered rights for your inventions, designs or brand in the UK, this is where a CPA or MCITMA will take action for you. The UK IPO will then examine the applications to check that they meet the legal requirements. If all legal requirements are satisfied, you will obtain the registered right (e.g. a granted patent, registered design or registered trade mark). The UK IPO also plays a role in some contentious matters. The UK IPO encourages applicants to speak to, and use the services of, registered patent and trade mark attorneys.
The UK IPO awards IP Audit and IP Access grants, which is money that can be used by eligible business to support certain IP activities. If you’re a UK-based start-up and are interested in obtaining these grants, let us know as we can provide more information on how to obtain and use them.
EPO = European Patent Office
The EPO examines European patent applications, enabling inventors, researchers and companies from around the world to obtain protection for their inventions in up to 44 countries through a centralised and uniform procedure that requires just one application. If you wish to obtain registered rights for your inventions in Europe, this is where an EPA will file the necessary paperwork (again, mostly done electronically). Unlike the UK IPO, the EPO only handles patent applications and patents.
WIPO = World Intellectual Property Office
This is a global forum for intellectual property (IP) services, policy, information and cooperation. WIPO is a self-funding agency of the United Nations, with 193 member states. If you wish to obtain registered rights for your inventions, trade marks or designs in a variety of countries, your attorney will likely advise making use of the WIPO systems. For example, we may advise you to file a “PCT” application for your invention, to use the “Madrid system” for trade marks, or to use the “Hague system” for designs.
EUIPO = European Union Intellectual Property Office
This is European Union (EU) agency responsible for registering trade marks and designs that have effect across all member states of the EU.
Appleyard Lees has well-established relationships with reputable EU-based organisations, who we work with to obtain EU trade marks and EU designs for our clients.
Other Important Professional Bodies
Finally, here are some key professional bodies which may be referred to by attorneys.
IPReg = Intellectual Property Regulation Board
As mentioned above, this the regulatory body of Patent Attorneys and Trade Mark Attorneys.
When you see “regulated by IPReg” on a website or in an email or letter it means those attorneys and organisations are regulated by IPReg. For example, the Appleyard Lees email footer includes the following text: “The members of Appleyard Lees IP LLP are UK registered patent attorneys or UK registered trade mark attorneys regulated by IPREG”.
Being regulated means that attorneys have had to complete a rigorous examination and training programme and have to maintain their competence each year by undergoing continuing training and other development activities. The attorney and organisations must meet the ethical behaviours and standards of professionalism set out in IPReg’s Overarching Principles and Code of Conduct. Crucially, it also means any work performed by a regulated attorney will be protected by professional indemnity insurance, and that you can complain to IPReg about the service or advice you have received from a regulated attorney. These are really important things to note because they help you – potentially via financial compensation – should something go wrong. All regulated attorneys must be insured.
epi = European Patent Institute
Also known as the Institute of Professional Representatives before the European Patent Office, this is the professional body representing all European Patent Attorneys. One core area of the epi is to promote compliance by its members with the Rules of Professional Conduct through fair procedures.
The epi also recommends that every European Patent Attorney working in private practice has a professional liability insurance to cover situations where a client claims for damages due to an alleged professional mistake. Since the epi does not require EPAs to have insurance, not all EPAs are insured, which means that if something goes wrong, you may not be able to obtain any financial compensation. If you are using an EPA, you should check that they have professional liability insurance.
For example, the Appleyard Lees email footer includes the following text: “The members of Appleyard Lees are… European patent attorneys regulated by EPI”. All of our EPAs are covered by our professional liability insurance.
SRA = Solicitors Regulation Authority.
This is the regulatory body for solicitors in England and Wales. Being regulated by the SRA means that the solicitors have to meet the ethical code of conduct and standards of professionalism set by the SRA. It also means that any worked performed by a regulated solicitor will be protected by professional indemnity insurance, and that you can complain to the SRA about the service or advice you have received from a regulated solicitor. These are really important things to note because they help you should something go wrong.
All Appleyard Lees’ solicitors are regulated by the SRA.
We hope this has helped you to understand some of the jargon used in the IP world. We also hope this explains why it is important to use registered and regulated patent and trade mark attorneys!
Original source: https://www.appleyardlees.com/glossary-of-key-intellectual-property-terms/