Victoria Summers - Portsmouth High School - Class of 1989

Patent Attorney  

I have been working as a patent attorney for 6 years and LOVE my job!!

Patent attorneys are a highly specialised branch of the legal profession who work to obtain and enforce the legal protection for “intellectual property”.  It is a small profession with only approximately 1,500 attorneys (or patent agent – the terms tend to be used interchangeably) in UK.  We most usually work either in specialist departments within a large commercial organisation where we advise a single corporate client or within a private firm where we may have several smaller clients.

Intellectual property is the product of thinking (or intellectual effort) and it is protected to prevent it being copied by a competitor.  The type of intellectual property that a patent attorney most commonly deals with is inventions.  These could be a new product (eg the Dyson vacuum cleaner) or a new method or process (eg a new treatment for a disease, or a new manufacturing process).  However, intellectual property is not limited to inventions – it could also be a new design (eg a new fashion item), a trade mark which is used for branding (eg “ipod”) or copyright which protects written words or artistic works.   A new product is usually protected by a combination of several different types of intellectual property rights.

Inventions are protected by obtaining a patent in the country in which the inventor (or his employer) wishes to have protection.  Today patent attorneys are being challenged to obtain protection for varied technology including high tech electronics, computer programmes and even gene sequences.  I am responsible for understanding the new invention, writing the initial patent application which is the legal document that protects the technology in future and also responding to any queries that arise as the application is granted.  However, I may also be required to advise if other types of intellectual property protection are appropriate.

Sometimes, despite legal protection being in place, competitors will breach intellectual property rights which then need to be enforced.  I am responsible for assessing whether or not a competitor’s product actually breaches my clients intellectual property, negotiating to achieve a settlement or bringing a court action if negotiations fail.  Such actions can be of high commercial importance, for example if a competitor is breaching the patent of a multi-billion dollar drug.

Patent attorneys are also required to advise their clients on whether or not their proposed products will breach someone else’s intellectual property rights.  I am responsible for making this assessment, suggesting technical alternatives, or working with the owner of the intellectual property to obtain a licence to allow its proper use.

Since patent attorneys are working with newly developed science and technology it is necessary to have a science degree to train for this role.  In fact it is not unusual for patent attorneys to also have post-graduate science degree as well.  To become fully qualified as a patent attorney it is then necessary to complete some foundation stage and final exams.  These exams are mainly sat whilst working as a trainee and comprise a mixture of factual exams and skills based exams.  Trainees in UK most commonly sit a combination of exams which allow them to become qualified as a European Patent Attorney and a UK Patent Attorney.

In addition to having a technical background and a “desire” to pass all of the qualification exams there are some personal skills which are useful to a prospective patent attorney.  I think that those attorneys who enjoy the job most have a real desire to learn about and understand cutting edge technology.  We also have to be excellent communicators.  I often think of myself as a “translator”, understanding and translating the technology into a legal patent application and translating the legal position for the technical teams.  Most of our work is conducted in writing so we have to have a good command of written English.  However, due to the increasingly global nature of the commerce, it is also useful to have a reading knowledge of either French or German.  Finally since the technology underlying some patents will become a valuable asset we are commonly called upon by senior business leaders to provide direct advice on their position which we must be able to do clearly and concisely.  Other useful attributes are to have an eye for detail and to enjoy reading, reviewing and analysing often long written documents.

Although patent attorneys are legal practitioners, they are not solicitors or barristers and the training is quite separate from that for the main stream legal profession.  However, some solicitors and barristers do become experts in intellectual property law, and, in due course, become the judges who decide intellectual property cases in court.  Patent attorneys most commonly interact with these experts during court actions where specialist legal support is required.

During my career I have always worked within specialist in house departments firstly for the consumer goods company Procter & Gamble, then for the technical division of the UK Ministry of Defence and currently for the pharmaceutical company Pfizer.  I entered this profession after completing a degree in Chemistry, followed by a PhD in Medicinal Chemistry and then 3 years in research and development within Procter & Gamble.  I enjoy describing a new technology to obtain a patent application and the intellectual challenge of amending patent applications to get them granted.  I find that the mixture of obtaining patents and enforcing patents means that the job is very varied.  I also get a real sense of personal satisfaction from my work because I can see how its importance, and the decisions I make day to day, directly affect the success of the company.  Currently I am working part time because I have two small children and this is a relatively easy job to do flexibly.  The only thing that I would do differently in hind sight is to have discovered this little heard of profession earlier.

The following web sites would make a good starting point if you are interested in learning more about intellectual property and related careers:

Chartered Institute of Patent Agents: www.cipa.co.uk

Institute of Trade Mark Attorneys: www.itma.co.uk

UK Patent and Trade Mark Office: www.patent.gov.uk

European Patent Office: www.european-patent-office.org

In addition you should keep your eyes open when reading the national press – you would be surprised how many of the commercial disputes you hear about rest on the enforcement and validity of intellectual property rights.

If you are interested in this career and would like any further information please contact me and I would be happy to provide any further information.