Download - 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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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
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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
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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
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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?