Drafting effective patents requires a unique combination of science, law and language. Working as a patent attorney requires a scientific background to understand new technologies and the ability to explain them to others. Intellectual Property specialists Mewburn Ellis explain more about this interesting and rewarding profession.
A patent attorney is a member of a specialised legal profession who is qualified to advise clients about patents (and usually other intellectual property rights) and who assists them in obtaining patents granted by patent offices around the world. They may be employed ‘in-house’ by companies or work in private firms (just like solicitors).
If you work in a private firm, you will work for lots of different clients who might be individuals, universities, start-up companies, large corporations or overseas attorneys. A good patent attorney needs to be able to adapt to the different needs of a diverse client base and remain aware of new and emerging technologies.
You do not need a law degree – a degree in a science, engineering, technology or mathematics based subject is strongly preferred. A science/engineering background is required to enable you to understand a client’s invention. You will learn the necessary law on the job. This mix between science/engineering and law is one of the aspects that makes the role of the patent attorney such an interesting career. Training usually takes 4-5 years and you will be required to pass various professional exams to qualify as a Chartered Patent Attorney and a European Patent Attorney.
What does a patent attorney do?
A patent attorney assists their client, or their employer, in obtaining a patent. This includes drafting the description of the invention and the claims, as well as communicating with the patent office to make the case for why a patent should be granted.
Drafting the description and the claims requires a technical background in order to properly understand the invention and clearly explain it to others. Convincing the patent office that a patent should be granted requires good communication skills and the ability to analyse technical documents to spot what differentiates the new invention from what has already been done. Both require careful, precise writing to ensure that your words convey the exact intended meaning.
There is more to the job than just drafting patents and arguing with examiners. Patents are just one aspect of intellectual property; attorneys also need a good awareness of designs, trade marks and copyright. Knowledge of these other forms of intellectual property is necessary for qualification and attorneys are expected to be able to advise on technical and commercial problems across the whole intellectual property field.
Patents are commercial tools for clients so it is important to develop a knowledge of how they are applied in a business environment. This may include licensing the patent to allow other companies to use the invention, or advising on other contracts, for example developing new technology.
Patent attorneys also need to advise clients on their freedom to operate in a given field. This is done by researching and analysing any intellectual property owned by other companies and, if necessary, assessing the risk of infringing existing patents. If infringement occurs, or is alleged, patent attorneys may be involved with litigation and can represent clients before the Intellectual Property Enterprise Court.
What about other countries?
Patents are territorial – they only protect the invention in the country concerned. Many clients want their invention to be protected in many countries, and patent attorneys in the UK help with this.
The vast majority of UK Chartered Patent Attorneys are also qualified (by a set of rigorous examinations) to represent clients before the European Patent Office (EPO), which has the power to grant patents in all EU countries and some others. In the future it may also be possible to obtain a single ‘unitary’ patent covering the whole of the EU.
Outside of Europe, UK patent attorneys secure IP rights by instructing foreign attorneys. In return, the UK attorney will assist the foreign attorney in obtaining patent protection for their clients at either the UKIPO or the EPO.
Why become a patent attorney?
Patent attorneys work in a unique space where law, commerce and technology all overlap. One of the really engaging aspects of the job is that you actively utilise both your scientific knowledge and your analytical reasoning every day. A lot of the job involves solving puzzles of one sort or another, which can require creative thinking and makes the job intellectually very stimulating. The variety of work, both in terms of clients and technology, makes being a patent attorney a particularly rewarding career.