About the role
IP careers describe the the work of a patent attorney as 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.
Intellectual property (IP) law is a growing practice area that protects creations of the human mind. These creations might include inventions that qualify for patent protection or literary and artistic works such as books, plays, music, and artwork. They can also include product names, slogans, logos, and packaging; symbols, names, images, and designs used in commerce; and trade secrets.
What IP lawyers do:
- Search domestic, European and international registers of patents, trademarks and registered designs to establish ownership of existing rights or the potential to register new rights.
- Take all steps to protect clients’ interests by securing patents, trademarks and registered designs; appeal unfavourable decisions; attack decisions that benefit others but harm the lawyer’s own client.
- Write letters to require that third parties desist from carrying out infringing activities or risk litigation for damages and an injunction.
- Issue court proceedings and prepare cases for trial by taking witness statements, examining scientific or technical reports and commissioning experiments and tests. Junior lawyers may find themselves conducting consumer surveys and going on covert shopping expeditions.
- Instruct and consult with barristers. Solicitor advocates can appear in the Intellectual Property Enterprise Court; the advantages of having a specialist IP barrister for higher court hearings are obvious.
- Draft commercial agreements between owners of IP rights and those who want to use the protected invention, design or artistic work. The most common documents will either transfer ownership or grant a licence for use.
- Work as part of a multidisciplinary team on corporate transactions, verifying ownership of IP rights and drafting documents enabling their transfer.
Skills required for each role
(Source: Clearview IP)
|An understanding of scientific and technological principles and processes
|The ability to apply scientific and technical knowledge to the concepts of patent law
|The ability to work alone, analysing and writing reports.
|Excellent written and oral communication skills
|Excellent analytical and critical skills, and an eye of detail
|Comfortable with and curious about technical information across a range of technologies
|Ability to express complex technical ideas clearly and concisely
|Ability to communicate convincing arguments, or justifying the granting or otherwise of a patent, in writing or orally
|Be clear thinking and rigorous in your analysis
|An eye for detail and an analytical mind
|Be organised and able to prioritise your caseload
|Ability to structure a precise, coherent argument
|Flexibility of thought and ability to grasp unfamiliar concepts
|Discretion is a key skill
|Ability to work with a wide variety of people
|Competence in IT, in order to search databases and check originality of inventions
|Self confidence to convey unwelcome advice to clients
Qualifications: To become a patent attorney you’ll need a degree (at least a 2.1) in a science, engineering, technical or maths-based subject. Degree requirements for a patent examiner will vary according to recruitment needs e.g. at the time of writing, the Intellectual Property Office was looking for a biotechnology graduate.
A postgraduate qualification is not required, although many patent attorneys have a PhD.
Spotlight On: Patent Attorney
Peter Mumford studied a PhD in Organic Chemistry and now works in a private practice specialising in pharmaceuticals. Peter talks about the routes into becoming a patent attorney and how your role develops into becoming a business adviser.
Also watch the video at the top of the page as Tom Harding is also a patent attorney.
Careers in Ideas - lots of resources on IP careers
Chartered Institute of Patent Attorneys – register of patent attorneys and jobs
Source Advisors - How to become an IP analyst
IP Inclusive - Making IP professions more diverse and accessible to everyone
IP Inclusive - Recording of a masterclass about applying to train as a patent or trademark attorney
Intellectual Property Office
Yellow Sheet blog - for student members of CIPA
Chartered Institute of Patent Attorneys
Dawn Ellmore Employment - recruitment agency for patent, trade mark and legal roles
European Patent Office
Intellectual Property Office – recruitment pages
IP Careers - for advice and job vacancies
New Scientist – jobs
Sacco Mann - recruitment agency for legal and IP recruitment
World Intellectual Property Organization – careers pages