From PhD to Patents- how to be a Patent Attorney. Andrea Williams Marks & Clerk, Cambridge 20 September 2012

Transcription

1 From PhD to Patents- how to be a Patent Attorney Andrea Williams Marks & Clerk, Cambridge 20 September 2012

2 About myself 2003: BSc in Biological Sciences, University of Warwick : MSc in Intellectual Property Law, Queen Mary, University of London : PhD at Department of Medical Genetics, University of Cambridge 2007: Joined Marks and Clerk LLP 2011: Qualified as a European Patent Attorney

3 What is a patent? A patent is a pact between an individual and the state. Exclusive right: negative monopoly - To prevent others making, using, selling or importing invention - But does not give owner right to use invention National right Lasts up to 20 years

4 A patentable invention must be Novel. Inventive. Industrially applicable. Not relate to excluded subject matter: special regulations regarding plants- Biotech exciting field to work in because technical developments have moral and ethical implications that are considered by the regulator. Patent Office examines applications (e.g. UKPO, USPTO, EPO).

5 Example of an application

6 Claims at the beginning..

7 Role of Patent Attorney Interface between inventor and Patent Office: - Inventor understands technology, but not law. Drafts patent applications: - Needs to extract details from inventor and needs to understand technology and apply law to this. Prosecutes: - Explains objections raised by Examiner to client and make decisions on how to tackle objections. - Argues with Patent Examiner. - Manages clients expectations.

8 Attorney will also Provide commercial/strategic advice. Advise on validity, infringement & enforcement: Due diligence. Liaise with attorneys overseas (mainly US, CN, JP). Attack third party rights. Prepare licences and assignments. Litigation.

9 Who are the clients? Individual inventors. Academic institutions. Start-up businesses. Small & medium businesses. Multinational corporations. Overseas attorneys.

10 Why become a patent attorney? Interested in science/technology, but not working at the bench. Enjoy a variety of biotech areas. Interest in legal and commercial aspects. Enjoy reading and interpreting documents and arguing in writing.

11 Skills from PhD Technical ability: - common to have doctorate - need to understand different technologies and pick these up quickly - often requires reading a lot of research papers/other patent applications - often required to critically analyse prior art Organised: - Life revolves around deadlines. Communication skills.

12 Other Skills needed Pedantic? Accurate! Motivation to start from scratch in a new field and do more exams. Aptitude for legal aspects: - Not necessary to know any law beforehand! High stress threshold and a thick skin. Capable of working in an office (far less flexible working hours than in the lab!). Coping with pressure from clients and the firm. Commercial awareness

13 Where to work Private Practice Industry Patent Office Technology Transfer Office

14 Training Will depend on your employer: - Varies between practices, and often on whims of each supervisor. - Size and reputation of practice will make a difference. Tough - start from the bottom again! Usually on-the-job. Must be highly self-motivated. Can take a long time before you are responsible for your own work, normally until you are qualified (4-7 years).

15 Qualification Qualification as an attorney involves many exams: EP and UK qualifications needed. Very difficult! - Pass rate for some papers has been as low as 16% Usually takes 4 7 years to qualify. Most of the preparation is in your own time (that means many weekends spent studying!).

16 Show me the money No exams passed Part-qualified (EPA or CPA) EPA and/or CPA qualified k k k 3-8 years post-qualification k Industrial head of IP Partner k k

17 How to apply/interview Research patent firms and send CV with covering letter to the ones of interest. Interview may involve tests (before or during the interview) be prepared. Apply to as many firms as possible. Very competitive (we received 80 CVs for a recent position in Biotech).

18 Further information Chartered Institute of Patent Agents - UK Intellectual Property Office EPO - WIPO -

19 Questions? Andrea Williams Associate for Marks & Clerk LLP Patent and Trade Mark Attorneys Hills Road Cambridge, CB2 1LA, UK Tel: +44 (0) Fax: +44 (0)