A Career as a Patent Attorney

Dr Rachel Moodie

rmoodie@hgf.com

Intellectual Property:Release its potential

www.hgf.com

What is a patent attorney?

A lawyer with a scientific background (not a solicitor) who specialises in the field of intellectual property

A patent attorney advises clients or his/her employer on:

• How to effectively legally protect their innovations.

• Analysing other parties’ patents to advise clients on risk of infringing

What is a patent?

• A patent is a grant by the state of a limited-term right to control the

exploitation of an invention

• Patents can be granted for a wide range of technologies

Examples from my own experience:

• I mostly work on: chemistry and biotech inventions such as:

pharmaceuticals, peptides, antibodies, stem cells, viral vectors.• But I have also come into contact with: retractable-heel shoes, heated golf

club bag, light up toilet seat!

Seldom specific to area of study

Exciting to come in contact with so many different technologies

Typical work

Interviewing inventors to understand how their new ideas work

Drafting patent applications to define in writing what the invention is

Acting on client’s behalf at Patent Offices around the world to secure grant of patent.

- Mostly done in writing - Dialogue with foreign attorneys

Defending patents that are being opposed by competitors

Licensing, assigning, freedom to operate...

Types of clients

Examples:

• Blue chip companies• Lone inventors• Start-ups and spin-outs• Universities• Foreign associates

Pros of the job: • Pros:

• The opportunity to gain new skills, such as legal skills, whilst retaining contact with science

• Every day is different. There is a large variety of work

• Working at the cutting edge of technology

• Lots of travel opportunities, particularly when qualified

• Financially rewarding:-Trainees start on around: £25,000 to £35,000- Newly qualified attorney: around £50,000 to £60,000- Up to 3 years post-qualified: £75,000 to £80,000- Head of IP department (in house): £100K to £250K- Partner (in private practice): £80K to £400K

Salary information taken from www.insidecareers.co.uk

Cons of the job

• Cons:

• Lots of exams! (13 exams to qualify in the UK and Europe)

• It takes at least 3-4 years to qualify (plus retakes?!)

• Deadlines, pressure, responsible for patents worth up to hundreds of millions of pounds.

• Billing targets

Entry requirements

• No training in intellectual property is required

• Legal training is given on the job

• To train as a patent attorney you need knowledge of a • technical/scientific area

• At least a 2.1 BSc in a technical or scientific discipline

Entry requirements continued

The patent profession is one of the smallest professions in the UK. • Very competitive as not many vacancies

In 2008 there were 140 entrants to the profession in the UK.

In 2009 there were 102 entrants to the profession in the UK.

In 2010 there were 130 entrants to the profession in the UK.

2008 number of successful applicants from universities:• 1st Oxford (16 recruits)• 2nd Cambridge (12 recruits)• 3rd London Imperial (11 recruits)• 4th Manchester (10) recruits• 5th Birmingham (7 recruits)• 6th Durham (5 recruits)

- two thirds of chemistry/life science recruits have a PhD and a lot also

have post doc experience and/or experience in industry

How to apply

Speculative applications (I wrote to 50 firms!)

- make sure each covering letter is individualised to each firm

- perfect your covering letter and CV

Positions advertised on the inside careers website:http://www.insidecareers.co.uk/

Resources

Inside Careers – Chartered Patent Attorneyswww.insidecareers.co.uk

Chartered Institute of Patent Attorneyswww.cipa.org.uk/pages/home

UK Intellectual Property Officewww.ipo.gov.uk/home.htm

Harrison Goddard Footewww.hgf.com

Any Questions?

Dr Rachel MoodieHarrison Goddard Foote Patent and Trade Mark Attorneys