Download - A Career as a Patent Attorney
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: [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?