This article first appeared on the UT Project.

Most of the UT Companies are depending on a good strategy to secure their IP. The companies also need to be sure that they get the best expertise to work with them on IP related issues. As most of them are working globally, it is vital to have an IP partner that has international presence and experience.

Therefore, many technology-based businesses use Patent Attorneys to help them secure protection for their inventions but what does the job entail and how does one become one?

Dr Jasmine Percival of Marks & Clerk, UT’s go to intellectual property firm, provides some insights:

I have always had an interest in science, and the revolutionary technologies that emerge from research. This led me to pursue biology at both undergraduate and post-graduate level. Whilst completing my PhD I realised that I wanted a career that would keep me up to date with cutting edge science, across a broad spectrum of technologies, while also getting involved in its commercial applications. This led me to embark on a career as a trainee patent attorney. This career offers an intellectually challenging and rewarding journey, bringing together skills in science, law and business. As somebody that enjoys strategizing, developing complex arguments, and applying scientific knowledge I felt that becoming a patent attorney would play to my strengths as an individual, whilst fulfilling my main interests.

What Makes a Good Patent Attorney?

Patent attorneys work with a range of technically challenging scientific concepts and inventions which requires a number of key skills, these include:

  • Communication Skills. A patent attorney must frequently communicate complex ideas and arguments to scientists, patent examiners and business people.
  • Lateral Thinking. A core component of being a patent attorney is being able to analyse large amounts of information and solve problems creatively to provide the best possible scope of protection for an invention.
  • Time Management. We frequently have several pieces of work to manage at the same time, for different clients with multiple deadlines. Therefore, it is critical to prioritise tasks and work under pressure.

How Do You Qualify as a Patent Attorney?

A prerequisite to becoming a patent attorney is that you must have a degree in a STEM subject. To become a dual qualified patent attorney that can prosecute patent applications in the UK and Europe a series of exams must be taken. Some firms, like mine, provide a comprehensive in-house training programme. To qualify you must:

  • Pass the UK foundation exams (alternatively you can take a university course that is recognised as being an equivalent for this).
  • Pass the UK final exams (usually the following year).
  • Pass the European pre-examination, this can be taken once you have worked as a trainee patent attorney for 2 years.
  • Pass the European qualifying examinations.

Typically, it takes four – six years to qualify as a patent attorney.

Day to Day Duties

Working as a patent attorney is incredibly varied. Typical tasks include responding to patent examiners and overcoming objections that they have raised. This involves reading background literature relevant to the invention and developing arguments and strategies to protect clients’ inventions. Drafting patent applications is also a big part of the job; to do this we must communicate with inventors, analyse complex data and consider alternative solutions to technical problems in order to write a robust application.

What Does Drafting a Patent Application Involve?

The most important part of a patent application is the claims. The claims define precisely what you’re seeking patent protection for, and what others will be unable to do if your patent is granted. A patent attorneys job is to draft claims that are as broad as possible to provide our clients with the largest scope of protection, whilst also differentiating from technologies that are already known.

Once the claims are finalised we must ensure that they are adequately supported by the description. In doing so, we must provide detailed methods of how to reach the invention so that somebody in the relevant technical field could reproduce it. If the description does not contain enough detail this will lead to objections and possibly one only being able to achieve a very narrow scope of protection.

To wrap up, working as a trainee patent attorney has numerous responsibilities, requiring a diverse set of skills. Perhaps most excitingly this career allows me to be at the forefront of innovation, learning about new areas of technology daily, and to work with interesting clients like the UT member companies!