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Patent attorneys: a combination of science and law

Spotlight on patent attorneys: what working life is like

If you want to use your engineering or science degree but you don’t want to be an engineer, or scientist, a career as a patent attorney could be for you. Peter Silcock, a partner at J A Kemp, reveals what life is like as a patent attorney.

A job as a patent attorney allows you to combine the technical knowledge you developed on your degree with the legal side of things. We spoke to Peter to find out more about what a patent attorney does and what working life is like for him.

What careers are available in intellectual property?

Intellectual property (IP) encompasses patents, trade marks, copyright and designs.

You could become a patent attorney or a trade mark attorney. Trade mark attorneys specialise in getting registered trade marks to protect brands and logos whereas patent attorneys specialise in protecting technology.

You could also be an IP solicitor or an IP barrister, specialising in patents, trade marks, copyright or designs. These jobs are more focused on IP enforcement whereas patent attorneys focus on getting the IP in place. To become an IP solicitor or barrister after completing a STEM degree you would need to complete a law conversion course.

What is a patent attorney?

A patent attorney is somebody who has a specialised qualification to assist in obtaining patents and acting in all matters relating to patent law. The profession is a protected title and only people who have passed all of the exams can call themselves patent attorneys. Most patent attorneys in the UK are dual qualified as UK patent attorneys and European patent attorneys.

Patent attorneys tend to work mainly on patents – legal rights granted to the owner of an invention. To obtain a patent, an invention must be new and non-obvious. However, we may also advise on registered designs, which protect the appearance of the product such as the design of a car headlight. We might, from time to time, advise on copyright. A few patent attorneys are also dual qualified as trade mark attorneys so they will work on trade marks as well.

What areas can a patent attorney work in?

I work for a private practice firm but you could also work as an in-house patent attorney for an organisation. Large chemical, pharmaceutical and engineering companies tend to have their own patent departments.

Most patent attorney firms have three different teams: life sciences, chemical, and engineering and IT. You will specialise in the subject you took your degree in. I studied chemistry so I work in our chemical and pharmaceuticals team and most of the work I do is on patents related to chemical technology.

You do branch out though: I often work on patents for medical devices and pharmaceuticals, and I also go into biotech as well.

Who are a patent attorney’s clients?

A patent attorney can work with a range of clients. I typically work with scientists from:

  • university technology transfer departments, who commercialise the research coming out of the university
  • spin-out companies founded by academics from universities
  • small- and medium-sized enterprises
  • large domestic and European clients

We also work for foreign attorney firms. A patent is restricted to the territory you apply for so if you want global coverage you have to apply for patents all over the world. Patent attorney firms in the US, China and Japan, for example, often ask us to get European and UK patents for their clients.

What are a patent attorney’s typical tasks?

A day in the office for me might involve:

  • assessing technology and advising on whether it is patentable
  • drafting and filing a patent application
  • going through the application process, eg responding to a patent examiner’s report and arguing why the invention should be granted a patent
  • advising a client on what they can do with a patent once they’ve got it
  • advising a client on their freedom to operate in a particular area of technology

We do get involved in contentious matters too, where there is a dispute at the heart of the matter. Whereas solicitors and barristers act before the courts, patent attorneys act before the patent offices, such as the European Patent Office (EPO). Once the EPO has granted you a patent, anybody can oppose this patent. I might find myself challenging somebody else’s patent on behalf of my client or I might need to represent my client to defend their patent against a challenge. A client may also ask for advice on whether their patent has been infringed and how they can enforce their patent.

My day will usually involve at least one meeting, either with clients or internally. An internal meeting might be about business development, for example, or it could be to discuss a recent change in patent law with my colleagues. It’s important for me to keep informed on the latest developments.

I might also fit in some networking, such as a business breakfast or an evening seminar, to meet new clients and catch up with existing clients. Networking isn’t limited to partners though; trainees are also encouraged to get involved with business development and attend networking events as they progress in the firm.

What does drafting a patent application involve?

Drafting a patent application is a big part of the job. The most important part of the patent application is the section that contains the claims. The claims define the subject matter for which you’re seeking patent protection. A patent attorney needs to claim the invention as broadly as possible to give the client the widest scope of protection. Further claims that have narrower focuses should also be included in case the broad claim accidentally covers something already out there that you didn’t know about at the time of drafting.

Once the claims section is finished, you’ll need to draft the description. This needs to describe the invention clearly and completely enough for somebody skilled in the relevant field to be able to carry it out. This is part of the bargain between the patent-holder and the public: a limited monopoly is granted in exchange for telling the public how to practise the invention.

What is working life like for a patent attorney?

As a trainee, you’ll be working in a team and your work will be supervised by a qualified patent attorney, but once you’re qualified you will need less supervision and there will be quite a bit of independent work.

However, there are big cases when working in a team is more appropriate. For example, we recently defended a pharmaceutical company’s patent for a blockbuster drug that was being opposed by several rival companies. It was a two-year process that culminated in a two-day hearing at the European Patent Office. The team included four partners, and different individuals were responsible for different parts of the defence.

My job is client facing; everything we do is about our clients and we need to keep them informed every step of the way. This isn’t just through emails and letters; I’m always on the phone with clients or in client meetings.

It’s also deadline driven because patent offices will set deadlines and it’s important to meet them. The patent examiner might have some objections to a patent application and will set a deadline for me to address those objections, for example by filing arguments or amending the claims.

It’s not common to work in the evenings or at weekends but if I’ve got a few deadlines all at once or I’m getting close to a deadline, I might need to have the odd late night. Or if I have a hearing at the EPO on a Monday, I will need to travel on the Sunday and prepare for the hearing the night before.

Will a patent attorney need to travel?

The EPO has headquarters in Munich and The Hague so most European patent attorneys will need to travel to attend hearings. For me, attending these hearings and successfully obtaining a patent or defending or opposing a patent is one of the best parts of the job.

When you get a bit more senior, there are also opportunities to travel abroad for business development reasons.

Thanks to Peter Silcock for his help with this article. Peter is a partner in the chemistry and pharmaceuticals group at J A Kemp. He started his career as a patent attorney in 2002 and joined J A Kemp in 2005.

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