Home> Specialty Certifications> Florida Board of Legal Specialization & Education >Intellectual Property Law
Florida Board of Legal Specialization & Education
Logo of the Florida Board of Legal Specialization & Education
Contribute to the information on this page: Suggest Edits
Back to profile

Intellectual Property Law by the Board of Legal Specialization and Education

Rule 6-26 explains the standards for board certification in intellectual property law.

A lawyer who is a member in good standing of The Florida Bar and meets the standards prescribed below may be issued an appropriate certificate identifying the lawyer as “Board Certified in Intellectual Property Law.”

The purpose of the standards is to identify those lawyers who practice intellectual property law and have the special knowledge, skills, and proficiency, as well as the character, ethics, and reputation for professionalism, to be properly identified to the public as board certified in intellectual property law.

Search for a Board Certified Specialist Lawyer

About Board Certification for Intellectual Property Law in Florida

Definitions for Intellectual Property Specialization

The definitions for the specialty practice area of intellectual property can be found in Rule 6-26.2. 

Definition of Patent Application Prosecution

Under Rule 6-26.2(a), the term “patent application prosecution” is defined as the practice of law dealing with patent rights, representing clients in proceedings before the USPTO,and covers all aspects of:

  • the U. S. Patent Statutes, 35 U.S.C. §§ 1- 376, as amended;
  • the Rules of Practice in Patent Cases, 37 C.F.R. §§ 1.1 – 1.997, as amended;
  • the American Inventors Protection Act of 1999; 
  • United States Patent and Trademark Office (USPTO) rules of practice;
  • the Manual of Patent Examining Procedure (MPEP);
  • the Patent Cooperation Treaty (as modified by any later court decisions or Official Gazette notices);
  • the Assignment, Recording and Rights of Assignee, 37 C.F.R. §§ 3.1 – 3.85, as amended;
  • the Secrecy of Certain Inventions and Licenses to Export and File Application in Foreign Countries, 37 C.F.R. §§ 5.1 – 5.33, as amended;
  • the Register of Government Interests in Patents, 37 C.F.R. § 3.58, as amended; and
  • Representations of Others before the USPTO, 37 C.F.R. §§ 10.1 – 10.170, as amended.

Definition of Patent

Under Rule 6-26.2(a)(1), the term “patent” is defined as "a governmental grant derived from the United States Constitution to encourage innovation and a form of protected personal property under federal statute set forth in title 35 of the United States Code that guarantees the holder of a U.S. patent a right to exclude others from making, using, offering to sell, selling, or importing an invention for a statutory period of years."

Definition of Patent Matters

Under Rule 6-26.2(a)(2), the term “patent matters” are defined as the areas of knowledge required of lawyers registered to practice before the USPTO, including:

  • rules, practice, and procedure;
  • understanding how to draft claims and the ability to properly draft claims;
  • knowledge about preparation and prosecution of patent applications based on education in and practical experience in engineering or science;
  • understanding the application of patent laws to that endeavor;
  • preparation of patentability opinions;
  • filing and prosecuting patent applications, interferences, and re-issuances;
  • preparing opinions concerning the validity or infringement of patents;
  • prosecuting patent applications at the USPTO and in foreign jurisdictions; and
  • the re-examination of patents.

Definition of Patent Infringement Litigation

Under Rule 6-26.2(b), the term “patent infringement litigation” is defined as the practice of law (including substantive law, evidence, and procedure) dealing with the litigation of patents in federal district courts and appeals to the federal circuit of the United States of America, and includes:

  • Service of Process, 37 C.F.R. §§ 15.1 – 15.3; and
  • Testimony of Employees and the Production of Documents in Legal Proceedings, 37 C.F.R. §§ 15.11 – 15.18.

Definition of Infringement of a Patent

Infringement of a patent is a tort giving rise to a federal cause of action for a form of trespass.

The grant of a patent by the USPTO carries with it the presumption of validity, including compliance with federal statutes.

Definition of Invalidity as a Defense to a Claim for Patent Infringement

Invalidity is a defense to a claim for patent infringement and may be based on a number of factors, including:

  • anticipation;
  • obviousness;
  • derivation;
  • failure to disclose “best mode”;
  • estoppel and laches;
  • ineligible subject matter;
  • lack of utility or operability;
  • lack of enabling disclosure;
  • claim indefiniteness;
  • double patenting;
  • inequitable conduct;
  • violation of antitrust law; and
  • non-infringement.

The term “adjudicated decision” is defined as a decision resulting from a proceeding in which:

  • a tribunal rendered a decision on a motion for preliminary injunction following an evidentiary hearing involving live testimony;
  • a tribunal rendered a decision on a motion for summary judgment;
  • a tribunal rendered a decision on significant issues of patent law following briefing (e.g., a Markman hearing, a Daubert hearing, etc.); or
  • a tribunal or jury rendered a decision following a trial, or the federal circuit court of appeals rendered a decision following an appeal.

A single proceeding may generate multiple adjudicated decisions and an applicant receives credit for 2 of these qualifying adjudicated decision as a separate contested matters.

Definition of Trademark Law

Under Rule 6-26.2(c), the term “trademark law” is defined as the practice of law dealing with all aspects of the Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C. §§ 1051-1127, Trademark Counterfeiting Act of 1984, as amended, 18 U.S.C. § 2320, Tariff Act of 1930, as amended, 19 U.S.C. §§ 1337 and 1526, Chapter 495 of the Florida Statutes, as amended (the “Florida Trademark Law”), and common law principles.

Those common law principles related to trademark law include:

  • advising clients as to ownership, registration, transfer, validity, dilution, enforceability, and infringement of trademarks in the state of Florida, the United States and internationally;
  • representing clients in proceedings before the USPTO and the Florida Department of State; and
  • representing clients in proceedings in federal or state courts, or in arbitration, relating to the ownership, registration, licensing, transfer, validity, dilution, enforcement, and infringement of trademarks.

Definition of Trademark

The term “trademark” is defined to include trademarks, service marks, certification marks, and collective marks. Each of these forms of marks has the meaning given in the Florida Trademark Law, Fla. Stat. § 495.011(1)-(4).

The term “trademark” is further defined to include trade dress as that term is used in the Restatement Third, Unfair Competition, Section 16, and domain names as that term is used in the Lanham Act, 15 U.S.C. § 1125(d).

Definition of Substantive Refusal 

The term “substantive refusal” is defined as a refusals of trademark applications during ex parte USPTO prosecution under Section 2 of the Lanham Act, 15 U.S.C. § 1052.

Definition of Copyright Law

Under Rule 6-26.2(d), the term “copyright law” is defined as the practice of law dealing with the protection of the works of the human intellect (literature, music, art, computer programs, etc.) under the copyright laws of the United States, including:

  • subject matter;
  • ownership;
  • duration;
  • registration;
  • formalities;
  • exclusive rights;
  • transfers and licensing, including the rights and obligations of parties, appropriate terms and conditions in licensing contracts, antitrust and misuse constraints, international licensing considerations;
  • contested matters relating to claims of infringement of copyrights and to disputes regarding the authorship, ownership, licensing, and transfer of copyrighted works, including infringement actions and defenses, remedies, jurisdiction and venue, jury considerations, federal preemption of state law;
  • the Copyright Acts of 1909 and 1976, as amended;
  • recent amendments to copyright law such as the Digital Millennium Copyright Act; and
  • international aspects of copyright, including the Berne convention and other treaties on copyright and related subjects.

The primary federal copyright law is contained in Title 17 of the United States Code.

Generally, the practices that the copyright law is concerned with involve, but are not limited to, registration, licensing, transfer, and protection of copyrighted works.

A single proceeding may generate multiple adjudicated decisions and an applicant receives credit for 2 of these qualifying adjudicated decisions as separate contested matters.

Definition of Intellectual Property Law Certification Committee

The term "Intellectual Property Law Certification Committee" is defined as a committee consists of 9 members, including a minimum of 3 registered patent lawyers with experience in patent application prosecution, 2 members with experience in patent infringement litigation, 2 members with experience in trademark law, and 2 members with experience in copyright law.


Minimum Standards for Board Certified Attorneys in Intellectual Property Law

Under Rule 6-26.3(a), the attorneyy must have been engaged in the practice of law for at least 5 years immediately preceding the application date.

Practicing “patent application prosecution,” as defined in section 6-26.2(a), before the USPTO as a registered patent attorney or registered patent agent shall be deemed to constitute the practice of law for purposes of the 5-year practice requirement.

Under Rule 6-26.3(b), substantial involvement means at least 30 percent of the applicant’s practice during the 3 years immediately preceding application has been devoted to matters involving intellectual property law.

During the 5 years immediately preceding application, the applicant must satisfy 1 of the following categories.

(1) Patent Application Prosecution.

The applicant must have handled a minimum of 40 patent matters that involved representation of a client with senior-level responsibility.

The quality of the applicant’s work and the nature of the issues involved are factors in determining eligibility for certification.

Demonstration of compliance with this requirement shall be made initially through a form of questionnaire approved by the intellectual property law certification committee, but written or oral supplementation (including copies of work product) may be required.

Verified substantial involvement in patent matters at a government agency may be considered for satisfaction of part of the 40 patent matters that involved representation of a client for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(2) Patent Infringement Litigation.

The applicant must have handled with senior-level responsibility a minimum of 5 contested matters in litigation or on appeal in which there was an adjudicated decision.

Additionally, the applicants must have devoted a minimum of 800 hours per year to litigation matters generally, at least 300 hours per year of which must have been devoted to patent infringement litigation.

The applicant must have, tried a patent infringement litigation matter to the close of testimony, verdict, or judgment within the last 10 years.

The applicant must submit work product samples and a transcript (if available) for each contested matter.

Verified substantial involvement in patent infringement litigation at a government agency may be considered for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(3) Trademark Law.

The applicant must have handled with senior-level responsibility either a minimum of 6 contested matters, 25 responses to substantive refusals, or a combination of the 2. Substantive refusals on which the applicant relies must not have involved merely technical corrections, insignificant matters, or abandonment.

The applicant must submit work product samples and a transcript (if available) for each contested matter. In addition, the applicant must have engaged in at least 300 hours each year in the practice of law in which the applicant has had substantial senior-level participation in legal matters involving trademark law.

Three contested matters involving in the aggregate no less than 50 hours of in-session hearing or trial satisfies the requirement of 6 contested matters.

Verified substantial involvement in a combination of contested matters and responses to substantive refusals is considered for satisfaction in whole or in part of the requirement of 6 contested matters or 25 responses to substantive refusals for good cause shown.

Verified substantial involvement in trademark matters at a government agency may be considered in lieu of representation of clients for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(4) Copyright Law.

The applicant must have handled a minimum of 40 substantive matters that involved representation of a client with senior-level responsibility, with a minimum of 300 hours per year devoted to such matters.

The ministerial preparation of a copyright registration is not considered a substantive matter for purposes of certification.

The applicant must submit work product samples and, if the applicant also relies on participation in contested matters, the applicant must submit all available transcripts in each contested matter. Verified substantial involvement in copyright matters at a government agency may be considered in lieu of representation of clients for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(c) Peer Review.

The applicant must submit the names and addresses of at least 6 lawyers or judges to complete peer review forms who neither are relatives nor current associates, partners, or who otherwise practice law in an of-counsel relationship with the applicant, to serve as references. Individuals submitted as references shall be substantially involved in intellectual property law and shall be familiar with the applicant’s practice.

(d) Education.

The applicant must complete 45 credit hours of approved continuing legal education during the 3-year period immediately preceding the filing of an application for intellectual property law certification.

(e) Examination.

The examination is comprehensive in scope and each applicant will be required to demonstrate at least some knowledge in each specific subject tested. Applicants have the opportunity to emphasize special knowledge in 1 or more specific subject areas.

(f) Exemption.

The applicant is not required to take the section(s) of the examination on patent application prosecution as defined elsewhere if currently a registered patent attorney in good standing with the USPTO. The applicant is not required to take the section(s) of the examination on the litigation process if currently certified by The Florida Bar in civil trial or business litigation. 


Recertification as a Board Certified Specialist in Intellectual Property Law

Under Rule 6-26.4(a), the attorney must demonstrate continuous and substantial involvement in matters involving intellectual property law throughout the period since the last date of certification or recertification by demonstrating that intellectual property law comprises at least 30 percent of the applicant’s practice.

During the 5 years immediately preceding application, the applicant must comply with the requirements in at least 1 of the following categories.

(1) Patent Application Prosecution.

The applicant must have handled a minimum of 30 patent matters that involved representation of a client with senior-level responsibility.

The applicant may provide verified substantial involvement in patent matters at a government agency in lieu of representation of clients to satisfy part of the 30 patent matters for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(2) Patent Infringement Litigation.

The applicant must have handled a minimum of 5 contested matters in litigation or on appeal with senior-level responsibility in which there was an adjudicated decision.

The applicant may substitute completion of an approved, multi-day, intensive advocacy-training course where the applicant performed and was satisfactorily critiqued by recognized experts for 2 of the 5 contested matters.

The applicant may serve as a judge or an arbitrator in a contested matter involving an adjudicated decision concerning a patent, or may serve as an advocacy instructor in an intellectual property law continuing legal education program in lieu of senior-level responsibility as an advocate for a party to satisfy the 5 contested matters in part for good cause shown.

The board of legal specialization and education or intellectual property law certification committee may consider substantial involvement in other areas of intellectual property law to demonstrate overall proficiency.

(3) Trademark Law.

The applicant must have handled either a minimum of 4 contested matters or 15 responses to substantive refusals of the application. In addition, an applicant must have engaged in at least 300 hours each year in the practice of law in which the applicant had substantial and direct senior-level participation in legal matters involving trademark law.

Two contested matters involving in the aggregate no less than 2 days of insession hearing or trial satisfy the requirement of 4 contested matters.

The board of specialization and education or intellectual property law certification committee may consider verified substantial involvement in a combination of contested matters and responses to substantive refusals resulting in allowance in satisfaction of the minimum number of matters in whole or part for good cause shown.

The applicant may serve as a judge or an arbitrator in a contested matter involving an adjudicated decision concerning a trademark or may serve as an advocacy instructor in an intellectual property continuing legal education program, in lieu of senior-level responsibility as an advocate for a party.

The board of specialization and education or intellectual property law certification committee may consider verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(4) Copyright Law.

The applicant must have handled a minimum of 30 matters with senior-level responsibility that involved representation of a client.

The applicant may serve as a judge or an arbitrator in a contested matter involving an adjudicated decision concerning a copyright or may serve as an advocacy instructor in an intellectual property law continuing legal education program in lieu of senior-level responsibility as an advocatefor a party to satisfy the requirement in whole or part good cause shown.

The board of specialization and education or intellectual property law certification committee may consider verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.

(b) Peer Review.

The applicant must submit the names and addresses of at least 3 lawyers or judges to complete peer review forms, who neither are relatives nor current associates, partners, or who otherwise practice law in an of-counsel relationship with the applicant. Individuals submitted as references shall be substantially involved in intellectual property law and shall be familiar with the applicant’s practice.

(c) Education.

The applicant must complete 50 hours of approved continuing legal education in intellectual property law since the filing of the last application for certification.


Details

People

Board Certified Intellectual Property Law Attorneys Active on Lawyer Legion

Lawyer Legion maintains a directory of board certified Intellectual Property Law specialists in Florida. This directory provides the public with a valuable resource allowing them to narrow their search to local attorneys who have earned board certification in Intellectual Property Law by The Florida Bar Board of Legal Specialization.

Lawyer Legion is the only commercial lawyer directory to properly acknowledge all ABA-accredited specialization programs and provide a dynamic directory of virtually every lawyer who has earned each certification, including board certification in Intellectual Property Law offered by The Florida Bar.

Use this directory to connect with lawyers who are board certified specialists in Intellectual Property Law. Start by choosing your county from the list below.

Suzanne E Vazquez
Vazquez & Poudat, PLLC
Orlando, FL
View Profile
Luis Guerra
Guerra Sáenz, PL
Boca Raton, FL
View Profile
Francisco Fraerly Symphorien-Saavedra
Martinez Manglardi, P.A.
Orlando, FL
View Profile
Roger A Bernstein
Bernstein Osberg-Braun, LLC
North Miami, FL
View Profile
Jeffrey Adam Devore
Devore Law Group, P.A.
Palm Beach Gardens, FL
View Profile
John Gihon
Shorstein, Lasnetski & Gihon
Altamonte Springs, FL
View Profile

Directory of Board Certified Attorneys in Intellectual Property Law in Florida


{FullName}

Suggest an Edit

Thanks, your suggestion has been sent to our support team
loading...
Saving...