Becoming a Patent/Trade Mark Attorney By John-Paul Rooney CPA EPA BRADFORD LAW CAREERS WEEK 2008

Session 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

Motivation

Substance

IP – what is it/why is it important?

The Patent Attorney’s Role

Necessary Skills

Where to apply/resources

40 minutes + questions

Motivation Probably the best job in the world Stimulating Technically Challenging Legally/Commercially Rewarding Job satisfaction Financially

Probably the best job in the world

Stimulating

Technically

Challenging

Legally/Commercially

Rewarding

Job satisfaction

Financially

Substance 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?

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? Intellectual – a product of the mind Property – something tangible which can be: owned sold rented

Intellectual – a product of the mind

Property – something tangible which can be:

owned

sold

rented

Main Types of IP Patents how things work TMs what things are called Designs how things look Copyright “ artistic” works

Patents

how things work

TMs

what things are called

Designs

how things look

Copyright

“ artistic” works

A closer look at IP The right to stop Copying Making Selling Etc. A commercial tool Profit-making Deal-making

The right to stop

Copying

Making

Selling

Etc.

A commercial tool

Profit-making

Deal-making

The 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

To advise and add value

Identify Rights

Protect Rights

Defend Rights

Attack Rights

Where

With clients

At the Patent Offices/In Court?

Internationally

Case Study The “Screwpull” Corkscrew Mr Allen

The “Screwpull” Corkscrew

Mr Allen

Case 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

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 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

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

Skills 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

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

Positions Private Practice e.g. Appleyard Lees In-house/corporate Electronics - BT, IBM Chemicals – ICI Biotech - AstraZeneca

Private Practice

e.g. Appleyard Lees

In-house/corporate

Electronics - BT, IBM

Chemicals – ICI

Biotech - AstraZeneca

Private Practice - Advantages Variety Autonomy Long-term financial

Variety

Autonomy

Long-term financial

In-house - Advantages Teamwork Depth of work Commercial view

Teamwork

Depth of work

Commercial view

Alternatives IP Solicitor Deal-making Litigation (e.g. creating case on paper, evidence collection) Barrister Opinion Work Advocacy Patent/TM Examiner UK Office European Offices

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 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

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 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

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 information

Inside Careers guide

www.insidecareers.co.uk

Official Websites

www.cipa.org.uk

www.itma.org.uk

www.ipo.gov.uk