Patent attorney as a career

What is a patent attorney?

In the UK, a chartered patent attorney belongs to a profession of around 2000 members who have a particular expertise in the field of intellectual property. Intellectual property encompasses patents, industrial designs, design rights and related copyright areas, from computer programs to the shape of teapots, and trade marks. Patent attorneys work either in patent departments of large industrial organisations, in private firms of patent attorneys, or in government departments, and their work deals with obtaining and enforcing intellectual property rights.

What is a patent?

A patent is a right granted by the government to inventors (or more usually nowadays companies) in return for disclosure of an invention. In return for the public disclosure of a new and unobvious invention, the state gives the patent owner the right to stop other people using that invention for a certain period of time (maximum 20 years). Inventions vary from simple gadgets to complex mechanical, chemical, electronic or microbiological processes and apparatus. In order to secure a patent, a full description of the invention, including definitions of the invention sought to be protected, needs to be filed with the Government Patent Office. Securing a patent and enforcing its rights can be a long and complex process.

What is an industrial design?

An industrial design is a design which provides a distinctive visual appearance to articles manufactured in large quantities, for example patterns on china, or the shape of a telephone or motor car. By registering a new and original design with the Government Designs Registry, the designer can secure up to 25 years monopoly of use of that design. This protection can be additional to design right or copyright protection that some designs enjoy.

What is a trade mark?

A trade mark is a mark applied to goods to identify them as coming from a particular manufacturing or trading source. Brands such as Kelloggs (for cornflakes) or Anchor (for butter) are trade marks. Origin of services can be indicated by using a mark in connection with the service (e.g. Initial for towel hire). Registering trade marks with governments allows the owner to take action rapidly and simply against copyists or pirates who attempt to sell goods or services not connected with the proprietor but marked with the trade mark or one confusingly similar to it.

What has all this to do with patent attorneys?

Not every invention is patentable, nor every design, trade mark or service mark registrable. The rights given by registration are not granted by governments unless justified. If those rights need to be used, the person against whom the rights are to be used may well object, and effort then needs to be directed to maintaining those rights. Patent attorneys have developed special skills in securing, maintaining and enforcing those rights for other people.

So what qualifications does one need to have?

To start with, all patent attorneys need a scientific or technical background. Nowadays, this usually means a science or engineering degree from a university or similar institution that confers eligibility for both UK and European qualifying examinations. A scientific training, however, is not enough. The would-be patent attorney must have the ability to acquire, and enjoy exercising, legal skills of drafting, analysis and logical thought, and, particularly the skill to use the English language aptly and accurately, in written work. In addition, because patents are increasingly international, a knowledge of at least French and German, although not essential, is highly desirable. Patent attorneys act at an exciting interface between disciplines of law, language and science.

So you have to be a scientist, a lawyer and a linguist?

Briefly, yes, though the degree of skill needed in each of these is not as great as that required in Fellows of the Royal Society, general lawyers or interpreters. You need to have a sound scientific background in order to be able to understand technical developments and reduce them to writing which is clear and unambiguous. You need to have a detailed knowledge of intellectual property law but not, for example, of family or maritime law, and you need to have a tolerable reading knowledge of French and German rather than fluency in speaking either.

Are there examinations?

Yes; although it is possible to represent clients without being registered, the Government has continued to recognise that it is essential to protect the public by having an identifiable professional qualification in this area. A copy of the statutory examination regulations is available on this site or may be obtained from the Chartered Institute of Patent Attorneys, which together with the Institute of Trade Mark Attorneys has responsibility for running the examinations leading to entry on both the Register of Patent Agents and the Register of Trade Mark Agents.

But how does one acquire all this?

Giving a scientist the legal skills to be a patent agent is usually by means of in-house training in a patent agent's office or in a company patent department, supplemented by other studies. Admission to either Register requires the passing of examinations and completion of a training period. It is usual for a person entering the profession to take four or five years to qualify. Academic training is also available, particularly Certificate and Master's courses in intellectual property run by Queen Mary, University of London, Bournemouth University and Brunel University. These qualifications give exemption from some of the examinations.

But why those languages?

Languages are important not merely because it is convenient to be able to read foreign language documents without having to call for translations, but also because patent agency is not a national profession any longer. In 1978, the European Patent Office started operating, and that office has as its working languages English, French and German. Most patent agents also become European patent attorneys, not least because career opportunities are restricted if they do not. The European patent profession (around 5500 people) is also a profession qualified by examination, with entry requirements similar to the British profession but more stringent with respect to the initial scientific qualifications required. Furthermore, if you wish to act before the European Patent Office in securing patents for others, you must be on the list of qualified practitioners, and that means that you must pass the European qualifying examination. This does not usually prove too difficult a hurdle for British patent attorneys who have already passed the British qualifying examinations. The European qualifying examination is restricted to patents while the British qualifying examination covers the full intellectual property spectrum.

What about court work?

Recent legislation has granted patent attorneys the same rights as solicitors and barristers to conduct litigation (i.e. to control the conduct of the cases) and to act as advocates in the Patents County Court. This Court was set up to hear patent and other intellectual property cases without the complexity and cost of High Court proceedings. Many patent agents become heavily involved in litigation generally in the Courts of the UK and in other countries. Also, some patent attorneys acquire an additional qualification entitling them to conduct litigation in the High Court.

Is it worth it?

Yes. Although it is a small profession, activity within it is diverse and rewarding. Purely financial rewards are believed to be as good as those available in any other qualified profession. In terms of job satisfaction, one is always dealing with something new and innovative, whether it be a new invention or design or the launching and marketing of a new product range. Career development is good and does not always end simply by being a partner in a firm of patent agents or the head of a patents department. Some patent agents move to executive or management positions, while others move abroad, particularly to English speaking countries or to multinational companies who work in English. Some choose to take UK solicitors' qualifications as well, or become US attorneys. While some concentrate on patent work, many work across the whole intellectual property field; while some concentrate on securing intellectual property rights for their clients or employers, others are very active in enforcing such rights or in other related areas such as licensing and contract arrangements based on such rights.

Where do I get more information?

Basic information on the role of patent attorneys and the three major types of intellectual property is contained in three further brochures, one on patents, one on trade marks and one on copyright and industrial designs, which can be found by following the links at the top of this page.

The Institute co-operates with the publishers of the Inside Careers Guide to Chartered Patent Attorneys, an annual in-depth careers book. The text of the book is available on the website of the publishers, but it can be obtained from university careers offices, or from the Chartered Institute.

 



Qualifications for Registration

The latest Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys are issued by IPReg.

A guide to the exam and practice requirements for university students

Introduction

This guide is a brief explanation of the regulations for recent graduates from a UK university. For those seeking entry to the Register of Patent Attorneys, it applies only to science graduates.

For confirmation, or further details if you are not such a graduate, you should refer to the Examination Regulations themselves, which can be obtained from the address below, or downloaded from this site.

Although it is no longer a requirement that candidates for the exams have received professional training, it is clearly very difficult to pass the exams without such training. Consequently, in practice it is necessary to obtain a post as a technical assistant to a patent attorney, either in a firm of attorneys, or in an industrial patent department. Lists of both firms of patent attorneys and industrial patent departments are available from the address below or can be downloaded from this site.

It is also possible to qualify as a solicitor employed in a firm of solicitors that has an intellectual property department. Some of these firms may also train recruits to qualify as registered patent attorneys. A list of firms of solicitors where there is at least one member of the Institute is also on this website.

The exams

All the examinations are set once a year in November. If you are seeking entry only on the Register of Patent Agents, or on the Register of Trade Mark Agents, but not both, you need only take the papers in the relevant module. The papers are divided into two groups: the "Foundation Papers", which are the basic "bookwork" question, and the "Advanced Papers", which are at a higher level. The papers are modular, so that any paper may be taken without having passed any of the others, except that entry to the Advanced Papers in either the Patents module or the Trade Marks module is not possible until Paper P1 or Paper T2, as appropriate, has been passed.

The Foundation Papers are usually taken after about one year in the profession, and candidates are not generally ready to take the Advanced Papers until they have been training in the profession for about three years.

Exemptions

There is a three-month full-time courses at Queen Mary, University of London to which many firms of patent attorneys and industrial patent departments send their trainees. These lead to the award of the Certificate in IP Law, which gives exemption from all the Foundation Papers. Other courses giving full exemption include Bournemouth University's MA/LLM in intellectual property and Brunel University's PG certificate in intellectual property law. Other possible exemptions are given in the Examination Regulations. Not giving an exemption, but providing valuable skills training are several difference courses available from organisations such as: JDD Consultants.

Entry onto the relevant register

In addition to passing the relevant examination papers, it is necessary to have completed at least two years practice under professional supervision before you become eligible for entry on the relevant Register. In practice, this service period is completed during training for the exams.

Qualification to practise before the European Patent Office

For entry onto the list of European Patent Attorneys (permitting you to practise before the European Patent Office), it is necessary to pass the European Qualifying Examination. This exam is similar to the Advanced Patent Papers, although unlike the British exam you do not become eligible to sit this exam until you have completed three years training under a European Patent Attorney. Since almost all British Patent Attorneys are also European Patent Attorneys, this training is part of the general training in the profession.

Further Information

For further information please contact: The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London WC2A 1DT

tel: 020 7405 9450
fax: 020 7430 0471
email: mail@cipa.org.uk
See also: Directory of Patent Attorneys; Inside Careers