Becoming a Patent/Trade Mark Attorney

By John-Paul Rooney CPA EPA

BRADFORD LAW CAREERS WEEK 2008BRADFORD LAW CAREERS WEEK 2008

Session OverviewSession Overview

• Motivation

• Substance• IP – what is it/why is it important?• The Patent Attorney’s Role• Necessary Skills

• Where to apply/resources

• 40 minutes + questions

MotivationMotivation

• Probably the best job in the world

• Stimulating• Technically

• Challenging• Legally/Commercially

• Rewarding• Job satisfaction• Financially

SubstanceSubstance

• A closer look at IP• What is it?• Why is it important?

• The role of a Patent/TM Attorney• What does she do?• What skills are required?

What is IP?What is IP?

• Intellectual – a product of the mind

• Property – something tangible which can be:

• owned• sold• rented

Main Types of IPMain Types of IP

• Patents • how things work

• TMs • what things are called

• Designs• how things look

• Copyright• “artistic” works

A closer look at IPA closer look at IP

• The right to stop• Copying• Making• Selling• Etc.

• A commercial tool• Profit-making• Deal-making

The Role of a Patent/TM AttorneyThe Role of a Patent/TM Attorney

To advise and add value• Identify Rights• Protect Rights• Defend Rights • Attack Rights

• Where• With clients• At the Patent Offices/In Court?• Internationally

Case StudyCase Study

• The “Screwpull” Corkscrew

• Mr Allen

Case StudyCase Study

• Patent Claim:

• A corkscrew having a helix coated with a friction reducing material

• Self-pulling type• Plus “fall-back” positions including an

arrangement for control and centring of the helix

Case Study Case Study

• Brabantia (UK) Limited• Exhibition

• letter before action

• Later Sale of Product• injunction & full trial

• Findings• Main claim infringed but claim invalid – because

PTFE on corkscrews was obvious• Back-up claim to guide and control mechanism

infringed and valid• Competitor kept out of market for 20 years

SkillsSkills

• Technical• Patent Attorneys Only• Engineering or Science

• Legal• Basic knowledge of English Law• Detailed knowledge of Patent/TM/Designs/Copyright

Law – UK, Europe and International Agreements

• Analysis• Technical - what are the technical issues?• Commercial – what are the commercial issues?• Legal – where does the solution lie?

• Communication• Writing – letters to clients and patent offices• Oral – client meetings and oral proceedings

PositionsPositions

• Private Practice • e.g. Appleyard Lees

• In-house/corporate• Electronics - BT, IBM• Chemicals – ICI• Biotech - AstraZeneca

Private Practice - Advantages Private Practice - Advantages

• Variety

• Autonomy

• Long-term financial

In-house - Advantages In-house - Advantages

• Teamwork

• Depth of work

• Commercial view

AlternativesAlternatives

• IP Solicitor• Deal-making• Litigation (e.g. creating case on paper, evidence

collection)

• Barrister• Opinion Work• Advocacy

• Patent/TM Examiner• UK Office• European Offices

Review Review

• One of you will probably make a great Patent/TM Attorney

• You are fortunate

• It’s one of the best jobs in the world, because:

• Challenging• Stimulating• Rewarding

How to ApplyHow to Apply

• Write a focussed CV• Technical Skills• Writing Skills (demonstrate with a well-written

CV)• Emphasis on the reader

• Write a focussed Letter• Show awareness• Mention your motivation (my talk?)• Demonstrate writing skill

• Prepare for interviews• Think about IP• Think about how things work

• Inside Careers guide• www.insidecareers.co.uk

• Official Websites• www.cipa.org.uk• www.itma.org.uk• www.ipo.gov.uk

Further informationFurther information