A Career as a Patent Attorney
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A Career as a Patent Attorney



Presentation by Caroline Carter from Abel & Imray, at the University of Sussex, December 2011

Presentation by Caroline Carter from Abel & Imray, at the University of Sussex, December 2011



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A Career as a Patent Attorney A Career as a Patent Attorney Presentation Transcript

  • 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 Patentability An invention is patentable if it is: NEW! 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 Grant Invention 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 position
    • Types 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 position
    • Hints 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 Service
    • Inside Careers Guide – www.insidecareers.co.uk
    • CIPA (Charterered Institute of Patent Attorneys) – www.cipa.org.uk
    • UKIPO (UK Intellectual Property Office) – www.patent.gov.uk
    • EPO (European Patent Office) – www.epo.org
    • Abel & 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.
  • Caroline Carter, 1 December 2011 A Career as a Patent Attorney - Any Questions?