A Career as a Patent Attorney

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A Career as a Patent Attorney Caroline Carter, Chartered Patent Attorney, European Patent Attorney 1 December 2011

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Presentation by Caroline Carter from Abel & Imray, at the University of Sussex, December 2011

Transcript of A Career as a Patent Attorney

Page 1: A Career as a Patent Attorney

A Career as a Patent Attorney

Caroline Carter, Chartered Patent Attorney, European Patent Attorney

1 December 2011

Page 2: A Career as a Patent Attorney

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

Page 3: A Career as a Patent Attorney

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.

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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

Page 5: A Career as a Patent Attorney

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

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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

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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

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What a patent looks like

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

Abstract• Drawings• Description• CLAIMS

define monopoly

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The Patenting Process

Drafting/Filing

Prosecution

GrantInvention

Opposition

Litigation

Page 10: A Career as a Patent Attorney

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

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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)

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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

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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

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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

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Other related careers

Trade mark attorney

IP Solicitor

IP Barrister

Technology Transfer

Patent Examiner

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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

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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.

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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: [email protected]

CARDIFF OFFICE23 Windsor PlaceCardiffCF10 3BYUK

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

E-mail: [email protected]

BATH OFFICEWestpoint BuildingJames St WestBathBA1 2DAUK

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

E-mail: [email protected]

Caroline Carter, 1 December 2011

A Career as a Patent Attorney - Any Questions?