A Career as a Patent Attorney

Caroline Carter, Chartered Patent Attorney, European Patent Attorney

1 December 2011

Overview

introduction to patents and other IP the role of a patent attorney the skills needed to be a successful

in the profession tips on applying for trainee positions

What is a Patent?

• A patent is a monopoly of limited duration over an invention granted to an applicant by a government.

• Must be applied for - is not granted automatically

• Even a successful application (“granted patent”) can be cancelled or declared unenforceable at any time if found to have been wrongly granted.

Patents are one form of IPR….

…Intellectual Property Rights. Others include:

- Trade Marks- Designs- Copyright- Confidential information (Know-

how, trade secrets)

IPR are intangible assets, but can be traded like tangible assets, e.g. houses, cars etc

Patents stimulate invention and hence economic growth

The public interest “deal” on patents…

The state grants a monopoly over commercial use of the invention for a limited period of time….

...in return for a full disclosure of the invention to the public

Provisions vary from country to country

NEW!

PatentabilityAn invention is patentable if it

is:

non-obvious

and not

specifically

excluded from

patentability by

statute

useful in industry

What goes in to a Patent Specification?

• Claims – set the boundaries of the monopoly sought

• Description and Drawings – provides disclosure of the invention which supports the claims, and which allows the skilled person to perform the invention

• Abstract – primarily for searching purposes

• Title

What a patent looks like

Country, number, title, inventor, owner, dates, biblio data..

Abstract• Drawings• Description• CLAIMS

define monopoly

The Patenting Process

Drafting/Filing

Prosecution

GrantInvention

Opposition

Litigation

Patent Attorney – day-to-day job

Drafting – discussing invention with inventors, IP manager, understanding technology, clear written description

Prosecution – expressing arguments clearly in writing, analysing prior art documents, communicating with foreign attorneys, IP manager

Opinion/Opposition/Licensing work – communicating with business people, solicitors, EPO Boards

Patent Attorney Trainee

The skills/experience you will need:

Scientific skills – at least a 2:1 degree, possibly a Masters/DPhil – physics, chemistry, biochemistry/biotech, engineering, computer science …

Communication skills – written, oral (presentations etc, adaptable to circumstances), languages (French, German, other)

Analytical skills

Time management

Legal skills (acquired during training)

Patent Attorney Trainee

How do I acquire the legal skills?

CIPA Informals lecture series (Monday/Tuesday evenings)

Queen Mary course or UK Foundation exams or other course (Brunel, Manchester, Bournemouth)

UK Advanced Examinations European Qualifying Examination

(after three years' training) Internal/CIPA/epi tutorials,

revision courses

Applying for a trainee positionTypes of employer:

Private practice firms – 20-30 firms, various sizes, mainly in London, but also in other regions, mainly cities including Bristol, Bath, Southampton, Brighton, Cardiff, Oxford, Cambridge, Manchester etc

Industrial patent departments

Government agencies – e.g. MOD

Applying for a trainee positionHints and tips:

Send speculative applications (CV and covering letter – use application form if on website)

Send applications before the end of the year – many firms look at CVs in January

Don't worry about a few rejections (only a couple of jobs per firm)

Research the company/people interviewing you

Other related careers

Trade mark attorney

IP Solicitor

IP Barrister

Technology Transfer

Patent Examiner

Further Information

Careers ServiceInside Careers Guide –

www.insidecareers.co.ukCIPA (Charterered Institute of Patent

Attorneys) – www.cipa.org.ukUKIPO (UK Intellectual Property

Office) – www.patent.gov.ukEPO (European Patent Office) –

www.epo.orgAbel & Imray website –

www.patentable.co.uk

From our website:

Trainee Patent Attorney

Current job vacancy - Trainee Patent Attorney – Electronics/Electrical Engineering Graduate

Our Cardiff office is seeking to recruit a Trainee Patent Attorney with a degree in electronics/electrical engineering or in engineering with specialisation in electronics/electrical subject matter, or who has subsequent experience in those fields. The day-to-day work will cover a wide variety of engineering subject matter areas, but an ability to work on electronics/electrical subject matter is essential.

LONDON OFFICE20 Red Lion StreetLondonWC1R 4PQUK

Tel: +44 (0) 20 7242 9984 or +44 (0) 20 7405 0203Fax: +44 (0) 20 7242 9989

E-mail: ai@patentable.co.uk

CARDIFF OFFICE23 Windsor PlaceCardiffCF10 3BYUK

Tel: +44 (0) 29 2034 7030Fax: +44 (0) 29 2066 6637

E-mail: ai@patentable.co.uk

BATH OFFICEWestpoint BuildingJames St WestBathBA1 2DAUK

Tel: +44 (0) 1225 469 914Fax: +44 (0) 1225 338 098

E-mail: ai@patentable.co.uk

Caroline Carter, 1 December 2011

A Career as a Patent Attorney - Any Questions?