Are you now interested in what working for a corporate (or ‘in-house’) patent department involves? Ben Charig, a European Patent Attorney at Ocado, has shared his experiences of moving to an in-house team to help you decide whether this type of work might be the right fit for your skills and interests.
I trained in private practice and moved to an in-house department nine months ago. Life in house is, so far, both similar to and different from life in private practice.
What’s similar about in-house?
For my particular in-house role, the main objectives are to draft and file patent applications and to prosecute them to grant.
I am responsible for educating my clients (who are now my colleagues rather than people from other companies) about the patent system. In particular, Ocado is relatively new to the patenting process, and the inventors I work with are interested in how their inventions can benefit the company. I answer my clients’ IP questions and attend to the deadlines associated with their cases. I advise my clients about freedom to operate and infringement risk in view of competitors’ patents. In due course, I will provide opinions about whether other companies infringe the patents that I have drafted and prosecuted.
What’s different about in-house?
As an in-house attorney I interact more closely with my colleagues than I did in private practice. This is true of my dealings with my attorney colleagues, with whom I work collaboratively on lots of matters, and of my dealings with my inventor colleagues. I tend to get involved at an earlier stage in the inventing process than I did in private practice. This can be more rewarding and ultimately fruitful than being given an invention disclosure and left to draft a patent application in isolation – I get a deeper understanding of the motivations behind and advantages of the invention, which can help create a more robust and persuasive patent application. It can, however, extend the drafting process.
Although some in-house departments have a narrow range of technologies to focus on, we benefit from the fact that Ocado operates in many technology areas, including mechanics, electronics and software, meaning that our patent portfolio is broad and varied. I enjoy discussing different technologies with the many interesting people who work at Ocado.
Because our department is relatively small, I also get involved in other activities, like helping look after the trade mark and design portfolios, administering some of the formal infrastructure that supports our work (such as deposit accounts at the different IP offices we file at, databases that record our cases, etc), and considering IP aspects of commercial agreements. I like a greater breadth of work, so am pleased about this opportunity. It has helped me understand better what IP actually means for a company.
Not every in-house patent department or role is the same, of course, just as not every private practice firm or role is the same. In some in-house departments, the in-house attorneys manage rather than create IP portfolios: they decide which inventions to pursue patent protection for and in which territories. They then negotiate licences for the technologies protected by their families of patents, and make other commercial decisions, while the drafting and prosecution work is outsourced to private practice attorneys who make proposals for the managing in-house attorneys to accept or reject.