Section 274: Persons permitted to carry on business of a patent agent

Section (274.01 - 274.07) last updated: October 2021.

274.01

Part V of the CDP Act comprises sections 274 to 286 and deals with patent attorneys and trade mark attorneys. It came into force on 13 August 1990 and completely replaced sections 84, 85, 104, 114, 115, 123(2)(k) and 130(1) (definition of “patent agent” only) of the Patents Act 1977. Qualified patent attorneys had for many years enjoyed what was effectively an exclusive right to represent patent applicants before the Office. (Solicitors have also been entitled to do so, but have in fact done so only rarely.) To practice, patent attorneys had to be entered on a register which was maintained under the Patents Act 1977 (and continues under s.275 of the CDP Act). Getting on to the register involves the passing of examinations and serving a period of supervised practice, and it has been a criminal offence for an unqualified person to charge money for acting as a patent attorney, or even use the title.

274.02

This part of the CDP Act allows increased competition among those offering patent agency services by lifting restrictions on who may represent patent applicants. It also improves the position of clients seeking advice from qualified patent attorneys and trade mark attorneys by providing that communications with these attorneys are privileged from disclosure in legal proceedings just as communications with lawyers are. The Legal Services Act 2007 amended various sections of this part of the CDP Act on 1 January 2010.

274.03

Section 274 to 281 relate to patent attorneys, sections 282 to 284 being concerned with trade mark attorneys and sections 285 and 286 being supplementary and applying to both classes of attorney. Section 274 abolishes the so-called “patent agents’ monopoly” of rights of representation of patent applicants in proceedings before the Office which existed under the 1977 Act, see 274.01.

Section 274(1)

Any individual, partnership or body corporate may, subject to the following provisions of this Part and to the Legal Services Act 2007, carry on the business of acting as agent for others for the purpose of ­ (a) applying for or obtaining patents, in the United Kingdom or elsewhere, or (b) conducting proceedings before the comptroller relating to applications for, or otherwise in connection with, patents.

274.04

Any person (or partnership or company) may, subject to provisions elsewhere in this Part, carry on the business of acting for others in (a) applying for patents or (b) conducting proceedings before the comptroller in connection with patents. The main effect is to replace the requirement, in section 114(1) of the Patents Act 1977, that only registered patent attorneys may practise as patent attorneys, that is represent patent applicants for gain (contravention of this provision was a criminal offence). Unregistered persons wishing to offer patent agency services are now able to do so. The only constraints are that they are unable to use the title “patent attorney” or similar expressions (section 276) and the comptroller may refuse to deal with them on certain limited grounds (chiefly misconduct) (section 281).

[ Staff should be alert to the possibility that representatives who are not registered patent attorneys may be less familiar with the patent system than a registered patent attorney. Any agent should be given assistance if needed and in this respect unregistered agents should be treated in the same way as registered attorneys; however their cases should not generally be given “private applicant” treatment unless the unregistered agent requests this. ]

274.05

r.101 is also relevant

Unless the comptroller otherwise directs in any particular case, all attendances upon the comptroller may be made by or through an agent. Further, every notice, application or other document filed under the 1977 Act may be signed by an agent. Where after a person has become a party to proceedings before the comptroller they appoint an agent for the first time or appoint one agent in substitution for another, the newly appointed agent should make a declaration of authorisation. This should be made on Patents Form 51 which should be filed (no fee) on or before the first occasion when they act as agent. A copy of the Form 51 should be sent by the comptroller to the former agent.

274.06

In accordance with s.102 of the Patents Act 1977, as amended by the CDP Act and Legal Services Act 2007, a party to patent proceedings before the comptroller may appear in person or be represented by any person of their choice (subject to rules empowering the comptroller to refuse to recognise certain agents). Thus a person acting as agent under s.274 may also appear before the comptroller. However, under the Legal Services Act 2007, only registered patent attorneys (see s.275) and legal practitioners can appear on behalf of a party to an appeal from a decision of the comptroller to the Patents Court.

Section 274(2)

This does not affect any restriction under the European Patent Convention as to who may act on behalf of another for any purpose relating to European patents.

274.07

Section 274 does not affect the restrictions imposed by Article 134 of the European Patent Convention (EPC) and rules made thereunder. These restrictions provide that professional representation before the European Patent Office can only be undertaken by those who names appear on a list maintained for the purpose.