Job Profile - Prospects.ac.uk
The primary function of job is to examine applications for patents for alleged inventions are within the requirements of the Patents Act and don't infringe the rights of inventors. It involves:
- Searching through prior patents and technical literature (potentially world-wide) to find the closest previous references to what applicant is doing;
- Technical/legal examination of the application in the light of the search to decide whether the alleged invention is sufficiently new and inventive to be worth grant of a patent - to check whether the monopoly claimed is fair given what has been invented; whether it has been sufficiently described so that someone else can do it from the instructions etc;
- Negotiation with the applicant (usually his/her legal advisors) to get application into acceptable form given the above.
- Production of a report for the applicant.
EMPLOYERS: UK Intellectual Property Office (Newport, Gwent); European Patent Office (Germany & the Netherlands
RELATED JOBS: Patent Agents - These are akin to solicitors specialising in patent work. Write the application for the inventors & negotiate with Patent Offices, information scientist, trade mark agent, technical author, solicitor, regulatory affairs officer (works for pharmaceutical companies to get approval for new medicines)
SATISFACTIONS: 'Unique combination of technical & legal work; Keeping in touch with advances in technology; Responsibility to ensure monopolies granted to inventors are fair', independence, good job security, good salary
NEGATIVES: 'Contact with science is 'paper-based' only; certain amount of pressure to meet targets, time-limits'. Work can be rather solitary.
SKILLS: written communication, analysing & investigating, negotiating, logical thinking. European languages useful - essential for European Patent Office where you will need fluent English and German or French with a working knowledge of the third language
ADVANCEMENT: New graduate examiners are 'trainees' for the first couple of years, then become increasingly independent 'Examiners'. Virtually automatic promotion when fully proficient to 'Senior Examiners'. Next promotion is very competitive - to Principal Examiner (these lead teams of Examiners). Limited opportunities for further promotion. Can move into work as a patent agent
DEGREE: Good Honours science or engineering degree required. Postgraduate degree can be helpful
TIPS: There are not many vacancies so must apply speculatively to the two employers. Send CV to both employers they will send details of vacancies as they arise. Show ability to understand technical documents and communicate on their content (both orally and in writing). Interest in legal issues (as well as science) an advantage. Can move into work as a patent agent.
Job Profile - Prospects.ac.uk
Acts as agent for obtaining patents world-wide. These are akin to solicitors specialising in patent work. Write the application for the inventors and negotiate with Patent Offices. Obtains patents for clients. Reads descriptions of inventions & writes detailed specifications. Files applications with Patent Office. Gives legal advice to clients.
EMPLOYERS: There are about 1600 registered patent attorneys in the UK. Private practices employ the majority; large industrial companies have their own patent departments. Government departments - mainly the Ministry of Defence which employs a lot. It is possible to work as a self-employed sole practitioner once qualified.
RELATED JOBS: Patent Examiner, Regulatory Affairs Officer, Trademark Attorney - there are about 700 of these in the UK, Information Scientist, Technical Author, Research Scientist. There are also some specialist patent barristers in London.
SATISFACTIONS: Intellectual challenge, good salary.
NEGATIVES: Most jobs in London. Heavy workload.
- investigating: a thirst for finding out how things work
- written communication
- attention to detail
- interest in law and ability to understand legal subtleties and complex phrases
- ability to work to deadlines.
- Additional languages can be beneficial
- You may become involved in the commercial interests of client companies including protecting the company's market niche.
ADVANCEMENT: Can qualify as a European Patent Attorney. May eventually become a partner in an agency.
DEGREE: Physical Sciences , Life Sciences, Engineering , IT .
You normally need an Upper Second Class or higher. An MSc or PhD may aid entry.
TRAINING: Extensive study required when working for the Chartered Patent Attorney qualification. This covers English law, design and copyright law, and patent and trademark law. Trainees typically take four years to qualify. Can also qualify as a European Patent Attorney: this requires four further examinations.
Queen Mary and Westfield College (London University) runs Certificate and Diploma courses in Patent Law which give exemptions from the foundation level. .
VACANCY SOURCES: New Scientist, UK Directory of Patent Agencies for speculative applications.
TIPS: Talk to a patent agent about their work. You must make speculative applications to agencies: see our CV examples for an example science CV and a speculative letter. You undertake extensive study when working for Chartered Patent Attorney qualification. May eventually become a partner in an agency.
Trade Mark Attorney
Job Profile Prospects.ac.uk
Advise clients on the registration, use and exploitation of new and existing trade marks and on their trade marks rights. “Trade Marks” may include words (brand names and slogans), logos, packages (such as the Coca-Cola bottle), sounds (such as the Intel chord sequence) and even colours (Heinz has trademarked the colour of its baked bean cans). This is a relatively small and specialised profession with far fewer vacancies for graduate trainees than patent work – the Institute of Trade Mark Attorneys (ITMA) has about 1600 members, including trainees.
EMPLOYERS: Firms of trade mark attorneys. Large companies. Law firms.
RELATED JOBS: Patent Attorney, Lawyer, Marketing
SATISFACTIONS: Contact with a variety of clients, intellectual challenge, seeing the results of your work used in advertising and branding, good salary.
NEGATIVES: Heavy workload; clients can be demanding.
SKILLS REQUIRED: Excellent written and verbal communication skills, including negotiation skills. Commercial awareness, with an interest in advertising, marketing and branding. Time management and the ability to work under pressure. Good analytical and problem solving skills – “candidates with a penchant for crosswords and Scrabble are not discouraged!” (Mewburn Ellis)
DEGREE: Law or Modern Languages often specified. You normally need a 2.1 minimum
TRAINING: Training is organised by the ITMA and involves a law course and a practice course as well as practical work experience. Successful completion entitles you to be entered on the Register of Trade Mark Agents.
ADVANCEMENT: Opportunities to move into senior management roles and become a partner in a firm. Movement between private practice firms and industry, or vice versa, is possible.
VACANCY SOURCES: Inside Careers, ITMA website for speculative applications.
TIPS: Competition is keen. Try to get work experience by making speculative applications to agencies, or at least talk to a trade mark attorney about their work.
Intellectual Property Lawyer
Another option might be to become a solicitor or barrister specialising in intellectual property (IP) law. As well as patent and trade mark work, IP law also includes copyright. Work in all these areas often involves litigation where IP rights are being infringed.
Graduates in any subject can train as solicitors or barristers via the GDL “conversion course” and science and engineering graduates are much sought-after for IP work.