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Spotlight on Patent Attorneys: A glimpse into working life

Published
2 min read
Spotlight on Patent Attorneys: A glimpse into working life
J

I am a legal counsel and IP specialist with technology expertise in software, machine learning and Web3 technologies. I also have extensive experience with medical devices and mechanical devices.

Fancy using your engineering or science degree without being an engineer or scientist? A career as a patent attorney could be just right for you.

Careers in Intellectual Property (IP)

IP covers patents, trade marks, copyright, and designs. You could become a patent attorney or a trade mark attorney. Trade mark attorneys focus on registering trade marks to protect brands and logos, while patent attorneys specialise in protecting technology. You could also be an IP solicitor or barrister, which involves more IP enforcement, whereas patent attorneys focus on securing IP.

What is a Patent Attorney?

A patent attorney is someone with specialised qualifications to help obtain patents and manage matters related to patent law. Most Australian patent attorneys can practice in New Zealand also. Most UK patent attorneys are dual qualified as UK and European patent attorneys.

Patent Attorney Work Areas

Patent attorneys can work for a private practice firm or as an in-house attorney for an organisation. Large chemical, pharmaceutical, and engineering companies often have their own patent departments. Most patent attorney firms have three different teams: life sciences, chemical, and engineering and IT. Your specialisation depends on your degree subject.

Clients of a Patent Attorney

A patent attorney works with a variety of clients, such as:

  • University technology transfer departments

  • Spin-out companies from universities

  • Small- and medium-sized enterprises

  • Large domestic and foreign clients

  • Foreign attorney firms

Typical Tasks of a Patent Attorney

A patent attorney's day might involve:

  • Assessing technology for patentability

  • Drafting and filing a patent application

  • Navigating the application process

  • Advising on patent usage

  • Advising on freedom to operate in a technology area

Patent attorneys also deal with contentious matters, acting before patent offices like the USPTO and European Patent Office (EPO).

Drafting a Patent Application

Drafting a patent application is a crucial part of the job. The claims section defines the subject matter for which you're seeking patent protection. The description should clearly and completely explain the invention for someone skilled in the relevant field.

Working Life of a Patent Attorney

As a trainee, you work in a team supervised by a qualified patent attorney. Once qualified, you may work more independently, but large cases require teamwork. The job is client-facing and deadline-driven. Working evenings or weekends is not common, but may be necessary during busy periods or when preparing for hearings.

Travel for Patent Attorneys

Patent attorneys may need to travel to attend hearings at the patent office. Senior patent attorneys also have opportunities to travel for business development reasons.

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