The Florida Bar certifies attorneys as specialists in Intellectual Property Law to those who qualify. Rule 6-26 explains the standards for board certification in intellectual property law.The purpose of specialization starndards in Intellectual Property Law 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.
Lawyer Legion maintains a directory of board certified Intellectual Property Law specialists in Florida along with a broader directory of certified and non-certified attorneys in Florida and across the U.S. 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 those who are board certified specialists in Intellectual Property Law in Florida. Start by choosing your county from the list below.
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:
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:
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:
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:
The term “adjudicated decision” is defined as a decision resulting from a proceeding in which:
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:
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:
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.
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.
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.
