Patently Obvious?--Working In-House


You're at a party when someone asks, "So what do you do?" You may have been tempted to answer that you're a brain surgeon or a body-double for a film star. But if like me your reply is "I'm a patent attorney", don't expect your inquisitor to know what you're on about.

So what does a patent attorney do? Primarily, the patent attorney is responsible for protecting ideas or inventions. Ideas are like pieces of property, and you don't want someone using your property without your say so. Therefore, it is the role of the patent attorney to turn your idea into a legal document that will protect your "intellectual property".

What you can (and cannot) patent is governed by patent laws in most of the countries around the world. In general, if the invention is new (i.e., it has not been disclosed to the public), is not obvious, and is capable of industrial application, then (with the exception of a few excluded categories) it should be possible to obtain a patent for an invention.

So, back to the beginning--where do patent attorneys come from? Well, I studied chemistry with biochemistry at Queen Mary College in London (now QMW). Having graduated with a BSc, I wanted to go on to use my degree in a less smelly environment than the laboratory. I decided that it was time to hang up my lab coat. My first job was in the patent department of a major pharmaceutical company where I undertook my patent training. From my point of view, it's a brilliant job. My science background is essential since the patent attorney is required to speak the same language as the inventors (in my case, chemists, biochemists, molecular biologists, etc.). The very nature of patents requires that the attorney is informed as soon as an invention is made and therefore you have the benefit of being at the cutting edge of science, without having to get your hands dirty! The patent attorney's involvement may commence with the discovery of a new class of potential drug candidates, and then continue right through the product's development. Apart from drafting and filing patent applications to protect your client's (or company's) inventions, you may also be required to advise on patenting and licensing strategies, or on your client's freedom to operate in view of other people's patents. After some years experience--and this is where it gets really interesting--you may get involved in litigation, for example, enforcing your company's or client's patent rights against an infringer, or defending them against an allegation of infringement.

To become a European Patent Attorney and also, in the UK, a Registered Patent Attorney, you will require a good science degree (and optionally a PhD). Training takes place on the job--in other words, you start with the technical background and then learn the law (statute and case law) as you go along. To obtain both the European and UK qualifications will generally take a minimum of 4 years working under the guidance of a fully qualified attorney, during which time there will be several levels of rigorous exams to sit. I'd be had up for misrepresentation if I said that it was easy (in fact the UK pass rate is dreadfully low), but given that you will be responsible for converting someone else's ideas into a legal document that may need to withstand the scrutiny of the courts (possibly all around the world) it's understandable that one must demonstrate a very high degree of competency.

Patent attorneys usually fall into one of three categories--chemical, electrical, or mechanical specialists. There is then the choice of working in private practice or as an "in-house" attorney in industry. Private practice is a good training ground where you should get a wide variety of experience, get used to filling in time sheets, and no doubt feel overworked and underpaid. For the lucky few, there is the jackpot of becoming a partner in the firm to keep you going. Alternatively, from my perspective as an in-house attorney, I'm closely involved in a number of research projects and consequently, I believe, feel more commitment to the job. What I do has a direct effect on the company, and the performance of the company has a direct effect on me. The job carries with it considerable responsibility, but this is reflected in the level of pay. And if you decide that private practice is not for you, then it is easy to make the leap to industry and vice versa.

In my experience, a patent attorney is always learning, and as such you must be quick on the uptake in order to understand new scientific methods and technologies. An eye for detail (some might say a pedantic nature) is also paramount as it may be crucial to the protection of your client's interests. As one gains more experience, then the opportunity will arise to test one's advocacy skills before the European Patent Office. And if you get into litigation, then instructing some of the best patent counsel in the world will ensure that your scientific and legal skills are put to the most stringent test.

On reflection, when I started out at university I never expected to be a patent attorney. All I knew was that I didn't want to let the 3 years of studying for my BSc go to waste. Fourteen years on, I must say that it was the best career move I ever made.

Editor's Note: Merck Sharp and Dohme sponsors the UK Next Wave site.

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