Patent attorney explains his profession
An often overlooked job option in law is qualifying and practising as a patent attorney. This is partly because the patent firms are generally small companies and don’t descend on universities in the same milk-round manner as the law firms, and also because recruits come from predominantly science degrees rather than law degrees. It is a small profession of about 1,800 qualified attorneys, with its own qualifications and governing body (which is separate from The Law Society). We spoke to a patent attorney at a major pharmaceutical company, about what’s involved in working both in private practice and in-house.
mtl: Hi PA. Tell us what a patent attorney does all day?
PA: It depends to some extent on where you work. To give you a little background, the role of a patent attorney is basically as the interface between the inventor (who is essentially your client) and the Patent Office (e.g. the UK Intellectual Property Office or the European Patent Office), which is a government or inter-government run office which has the authority to grant patents for that country. Patents are a right to prevent others from doing something, and as a monopoly right they are tightly controlled. In exchange for granting your client a patent for 20 years, the patent document has to explain exactly what the invention is and how it can be worked – so others can incorporate this knowledge into their own research.
The process of obtaining a patent begins by liaising with inventors to obtain a full understanding of what they think the invention is. You also have to look at what kind of knowledge exists already in the field (the “prior art”) so that you fully understand the technical area and can identify the invention (which is often not quite what the inventor thinks it is!). You then draft a patent application, which is a technical document describing the background to the invention, what the invention is and how it works. It also sets out the scope of the monopoly that your patent application seeks to obtain.
Once an application is filed with the Patent Office, it is examined to ensure that it meets the requirements of patentability – the main criteria being that the “invention” must never have been done before, and it must be inventive or non-obvious. Objections are often raised by the Patent Office if, say, they find prior art which suggests that the invention has been done before. The Patent Attorney must then review those objections, argue against them, and/or liaise further with the inventors. They may need to then amend the application to change the scope of the monopoly it claims, until it is valid and can be granted by the Patent Office.
Trainee and Patent Attorney, private practice
Patent Counsel, pharmaceutical company
In private practice, the majority of work is “prosecution” work, which means drafting patent applications, filing them at the Patent Office, and arguing before the Patent Office for your clients' patent applications to be allowed. You might also get involved in opposing and trying to revoke third parties’ patents, and you might also conduct some due diligence from time-to-time.
Working in-house involves doing the same type of work as above, but solely in relation to your employer’s inventions. You have much closer involvement with the inventors, as you sit and work with them from day 1 in product development meetings, through the entire process up to and beyond the grant of the patent. You also have to be more aware of third party competitors and their rights so that you can help protect your employer’s business. You have to know what your researchers can and should be looking at and you are generally more involved in more litigious work than you would be in private practice. You also gain a better idea of the commercial value that you add to your client and are better integrated with the business side of things. A third option for a patent attorney is to work in a law firm, though only a very small number of people do this.
Private practice involves a lot of head-down work in your own office. In-house jobs are somewhat more dynamic, involving working as a team more, and more contact with inventors and the outside world. There are also visits to research and development sites and the corporate perks that go with working for a big company. This contrasts with most private practice patent firms, which are pretty small and generally only have between 10-20 partners.
mtl: What are the ups and downs of being a patent attorney and how do you think it compares to being a solicitor for example?
PA: The work is really interesting, the roles are generally quite well-paid and they don’t take over your entire life, like I know law in the City can. Due to the vastly different subject matters, the work is always varied, particularly in private practice. Anyone who finds getting to the bottom of technical or legal issues will find it interesting. There is also a lot of job satisfaction as we are adding value to a business in a very tangible way. Involvement in the creation of products is rewarding and the litigation element is interesting and exciting, though time-consuming. The only downside to being a patent attorney is that it isn’t the most glamorous of jobs. As long as you don’t mind your friends calling you a geek occasionally, then this is not the end of the world!
Private practice salaries start at about £20-25k and rise to about £50-60k before or at qualification. As you would expect, they rise progressively from that point, particularly at partner level in private practice. There is a different structure in private practice to law firms as most people will make partnership if they have their heads switched on. Some people are happy to spend their careers as associates, never becoming partners, and others work freelance or in small, one-man style practices. In-house, progression will depend on the nature of the company – salaries are generally lower than in private practice, at least after qualification – but there are other benefits.
The hours are much better than in a law firm: 9am – 6pm is generally the norm. It is a deadline-run career and normally you are able to prioritise your work to avoid too many late nights. I think – I hope – that it is a secure profession, barring any significant changes in national/international patent law. In industry, patent attorneys are an important part of the business, and in private practice the majority of firms have been around for a long time.
mtl: What does the training involve?
PA: Virtually all trainees would start with a science background as we have to understand the technology that we will be working with. The basic sectors can be split into chemistry, biotechnology, mechanical engineering and electrical engineering. Training is in-house with one or more mentors. Most trainees take an initial 4 month (part-time) course in IP when they first start, and then sit the advanced level exams with 3 or more years of experience. You study and take exams on the side of the working day so it is quite daunting at times, and you have to be prepared to put in quite a lot of effort to pass the legal papers, in particular. Most patent attorneys in the UK will become Chartered Patent Attorneys (i.e. the UK qualification) and European Patent Attorneys (which enables them to represent clients before the European Patent Office) – and this generally takes 4 to 6 years.
mtl: Who would it suit and could a solicitor make the switch?
PA: The majority of new starters are graduates (and some PhDs) who have decided that “real” science (i.e. laboratory work) is not for them! You would need to have a real interest in science and be able to understand it. You need an analytical mind and need to be happy to spend lots of time reading documents and working out complicated technologies. It is not unknown for a solicitor to cross over and some people are dual-qualified as solicitors and patent attorneys. However, the skills wouldn’t be completely transferable, in that you can’t escape the patent training simply by having been a solicitor first. If you are an IP solicitor with a science background, you would still have to do all the exams, though you would have a head start.
The two options to get into this world would be to write directly to firms, which is what I did, or to contact one of the recruitment agencies mentioned below for their opinion. It is not usual to do law first, but if you have a science degree and would like to use it, then it would be worth considering as an option. It is very over-subscribed at the early stages of practise however, though once you are partly-trained and therefore more useful, there are many more job options.
mtl: Many thanks PA.
If you know any other lawyers who have gone and done something interesting or unusual with their lives or who have a great work/life balance then please get in touch.
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