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An Insight into the Career of a Patent Attorney

Updated on November 26, 2013
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As you can understand from the term ‘attorney’, patent attorneys are legal professionals who specialise in intellectual property or IP law. The IP law is dedicated to protecting the creations of companies and individual inventors. In every country, the government grants patents for the inventions so that other parties cannot copy them. The patent granting process is complex and there are experts who help inventors navigate through the complicated legal procedure. These experts are patent attorneys. A patent attorney not only helps a creator in getting patents from the government. Such professionals also offer legal help to their clients when there is any infringement of patent rights.

The first and foremost task of a patent attorney is to understand the invention very well and evaluate whether it is original or not. In order to pull out the latter task efficiently, extensive patent searches are required to carry out. After that, the patent application is to be drafted. Next is to prosecute the patent application navigating through the research and evaluation procedure at patent offices to obtain the most appropriate and effective IP rights for the client. The patent attorneys at this stage are required to attend tribunals at the patent offices. They give advice regarding intellectual property strategies and patent litigation. In short, a patent attorney endeavours to secure a specific form of intellectual property and handles the patent application process on behalf of the clients.

Let’s discuss about the duties and responsibilities of a patent attorney in the following:

  • Discussing with inventors or manufacturers to collect details about their inventions
  • Assessing the existing patents to establish whether the invention is unique
  • Suggesting on the probability of being granted a patent
  • Preparing a comprehensive legal description of an invention (also known as a patent draft in legal terminology)
  • Applying for patents from the UK Intellectual Property Office or European Patent Office
  • Answering the queries of patent examiners
  • Offering legal advice to the clients whose patent rights have been violated
  • Offering legal representation to the clients when necessary
  • Advising on other intellectual property issues like copyright, trade marks and design
  • Ensuring that the deadlines for application and renewal have been met
  • Coordinating with solicitors and barristers to secure or apply UK patents
  • Conducting legal action in proceedings at the EPO or in the Patents County Court
  • Giving advice to the foreign agents on applications for overseas patent applications
  • Suggesting on whether business activities will go against other’s patent rights
  • Managing patent assignments when a patent is transferred or sold
  • Training and supervising the work of fresher patent agents
  • Staying acquainted with the developments and amendments in the area of intellectual property law

These are some of the tasks fulfilled by a patent attorney.

What skills and qualifications you need to apply for patent attorney jobs? Let’s find out in our next discussion:

Skills

  • Verbal and written communication skills
  • Ability to interpret complicated technical information fluently
  • Analytical skills
  • Capacity to work under pressure and fulfil deadlines
  • Accuracy
  • Reliability and integrity
  • Fluency in French and German
  • An in-depth understanding of intellectual property law

Academic qualifications

In the United Kingdom, most aspiring patent attorneys earn two qualifications to start their practice. At first, they prepare for the CIPA administered examinations at the foundation and advanced levels in order to become a chartered patent attorney. This qualification gives them the allowance to become a member of CIPA. After that, they prepare to earn qualification as a European Patent Attorney. Four examinations are needed to pass to become an EPA qualified attorney.

Others follow the path of becoming an ITMA member to qualify as a trademark attorney.

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