With interest not just in science but also in its applications, Jing Fung Tan chose to study chemical engineering for a bachelor's degree at the University of Melbourne in Australia. After that, as a Ph.D. student at the same university, he introduced a commercial slant to his research designing star-shaped polymers for use in paint coatings and drug-delivery systems. The stringent conditions necessary to produce the star polymers made commercializing them difficult, so he developed an easier-to-scale-up approach for industry. The work led to a provisional patent application, which he helped draft. That experience helped him secure a patent attorney traineeship, at Griffith Hack in Melbourne, immediately after finishing his Ph.D. in 2009.
For Tan and other scientists who want to stay close to science but leave the lab behind, the patenting world offers a range of rewarding careers focused on writing, examining, and disputing patents.
Tan’s job as an Australian trainee patent attorney -- see this box for an explanation of the professional nomenclature in patent law -- is to help client inventors and companies protect their intellectual property rights by filing patent applications for their inventions. He meets clients to learn about their inventions and captures the essence of them in writing. The bulk of a patent application is a detailed description of the invention, laying down claims for what makes it "novel" and "inventive," as set out in the Australian Patents Act 1990. Other countries and regions have similar legal requirements.
Tan, and patent professionals in similar positions, aim to make their clients' intellectual property protection as broad and robust as possible. So, when preparing an application for a new water bottle, “We wouldn’t actually draft the patent … for a water bottle,” Tan explains. Instead, he would describe the invention as “a fluid-containing receptacle” so that the patent covers fruit juice containers and milk cartons, too.
Patent professionals may be employed in intellectual property firms like Griffith Hack, but they may also work at companies, which bring them closer to the discovery process. As a trainee patent attorney at SmithKline Beecham (now GlaxoSmithKline), Fiona Bor spent much of her time interacting with scientists and visiting their labs to spot inventions. She provided guidance to scientists on how to make patent applications stronger by repeating an experiment or adding a control. “If you work in private practice, then you work with many different clients with diverse technologies, and obviously the work may be a bit more varied, but you don’t always see the patent process from beginning to end and you are not involved in the commercial decisions behind filing the patent,” Bor says. (Article continues below...)
In the United States, there are two types of professionals who can file and prosecute patents before the U.S. Patent Office (USPTO). The first, a "patent agent," has obtained a license to practice before USPTO by passing the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office, also called the patent bar. The second -- called a "patent lawyer" or "patent attorney" -- has, in addition, earned a law degree and passed a state bar exam, which allows him or her to represent clients in U.S. courts.
Unfortunately, this nomenclature varies internationally, which leads to confusion. While in the United States "patent attorney" and "patent lawyer" are used interchangeably, in the United Kingdom, the term "patent attorney" is used interchangeably with "patent agent," roughly the equivalent of "patent agent" in the United States: registered to file and prosecute patent applications before the patent office (having passed the national qualifying examination) but not to represent clients in court. Australia uses "patent attorney" in about the same way as the United Kingdom, but the phrase "patent agent" is not used.
It gets more complicated still. In Australia, patent attorneys are allowed to give legal advice on patent issues, even though they don't have law degrees. In the United Kingdom, patent attorneys have the same rights as lawyers do to practice patent law in specialized U.K. courts, and they may take an extra qualification to become patent attorney litigators and also conduct litigation in the U.K. High Court. But in the United States, patent agents “could never go to court, they could never talk to a judge, and they could never talk to a client even about whether they are infringing a patent because that’s a legal question,” Gould says.
Once complete, patent applications are sent to a national or international patent office. It is then the job of patent examiners -- another patent-related job performed by trained scientists -- to decide whether the claimed invention is sufficiently novel and inventive to be granted a patent.
As a patent examiner at the European Patent Office (EPO), Cerstin Franz's first task is to search through the scientific literature, magazines, and patent databases for any prior disclosure of the invention, which would rule out patenting. “We search in a very comprehensive way the area of prior art that concerns the application [and then] write an evaluation of the patentability,” she says.
Based on Franz’s search, the EPO delivers a first report to the applicant, who then decides if the patenting process is to be stopped or continued. If the patent examiner has objections to granting a patent, the attorney can stand up for his client and address them. “If the examiner raises a novelty objection … we can introduce additional features into the claim to differentiate it from the prior art,” Griffith Hack’s Tan says. “And if the examiner raises an objection that the invention is not inventive enough, we can submit arguments demonstrating to the examiner that our invention is not obvious in the light of what has previously been done.” All along, Tan will be liaising with the inventor to assist him with his answers.
Enforcing and disputing patents
Patent professionals are often called upon to advise inventors and companies on patent rights when commercial interests compete, which can lead all the way to court. For example, an inventor may allege that another company has manufactured a product that falls within the scope of his patent. Or one party may challenge the validity of another company’s patent to clear the way for manufacturing a similar product. “In court, what usually happens is that one party would assert infringement of its patent and the other party would seek revocation of the patent,” Tan says.
As a patent lawyer at law firm Duane Morris in Chicago, Illinois, Robert Gould's job is, in part, to stand up and talk in court cases. Patent professionals without law degrees (see side bar) often assist patent lawyers in preparing a case, but (with one exception, in the United Kingdom), only patent lawyers can represent a client in court. “Depending on which side we’re on, … the patent attorneys will analyze the documents together with the patent lawyers and we will try to define flaws, defects in the patent, to try and invalidate it. And, similarly, if we are seeking infringement, we will try and construe or interpret the claims to be able to capture the infringing product,” Tan says.
Skills and training
A degree in science is the typical minimum requirement for entering the patenting profession, though in the United States and Australia trained lawyers may litigate patents without a science background. It helps to have a Ph.D., to better understand an invention and search journal articles more effectively, says Gould, who obtained a Ph.D. in biochemistry studying enzymatic kinetics at the University of Iowa, then worked as a postdoc and industry researcher in microbiology, immunology, and protein chemistry. Gould says he has found his broad science background beneficial to his patent work with the pharmaceutical, food science, and biotechnology industries.
Still, scientists have a lot to learn beyond their science training. They must learn some patent law, even if they don't pursue a full law degree. In the United States, would-be patent agents often prepare for the patent bar exam through home study, workbooks, and formal courses.
Interested in a career in patent law? Then you should also read In Person: A Career in Biotech Patent Law, written by D.C. patent attorney William J. Simmons.
In Australia and the United Kingdom, scientists must have 2 years of patent work experience to be eligible for professional registration. In these countries, scientists enter the profession through a traineeship. Trainees are offered a mixture of mentorship and in-house or university courses by their employer to help them obtain the formal qualifications. Becoming a patent attorney in Australia, for example, requires passing postgraduate intellectual property courses, such as those currently on offer at the University of Melbourne; the University of Technology, Sydney; and Monash University. In the United Kingdom, trainee patent attorneys must prove their legal knowledge by taking two sets of exams, although a postgraduate certificate or M.Sc. degree in intellectual property law (available at Queen Mary, University of London, and Manchester, Bournemouth, and Brunel universities) may offer exemption from the first, foundation exams. After about 3 years of work experience, trainees must pass a second set of accreditation exams. Should they wish to practice across Europe, trainee patent attorneys/agents must also take the European qualifying examination after several years of experience.
Becoming a patent lawyer requires yet more training. In the United States, aspiring patent attorneys must supplement their scientific training with a law degree and a state bar exam, in addition to the patent bar exam. Gould went to law school at night while working during the day, first for a biotech company and later as a clerk in a law firm.
To get a job as a patent examiner at a patent office, the main requirement is a scientific background, as patent offices usually provide patent-related training through in-house courses and mentorship. Franz was hired by EPO immediately after earning a Ph.D. in biochemistry from the European Molecular Biology Laboratory (EMBL) in Heidelberg, Germany, and then received training on existing laws, guidelines, and procedures surrounding patents. To work at EPO, knowledge of the three official languages -- English, German, and French -- is also required.
Nowadays, many universities offer lectures and introductory courses on intellectual property law. Tan advises students interested in entering the profession to attend such courses so that they can “get a clearer idea of what is expected of them and whether this is the correct career choice.” Conferences can be a good way to get acquainted with the field and current practitioners. Bor recommends doing perhaps a couple of weeks’ work experience to test the waters.
A new way of thinking
Most scientists who become patent professionals are attracted by the prospect of staying close to cutting-edge science without being tied to the bench or to one particular project. Greater interactions with a range of people, regular working hours, generous compensation, and job stability are among the advantages academics find in the patenting world.
Tan misses “the thrill of experiments working,” he says, but to him the breadth of topics and opportunity to work at the interface of science, law, and business outweigh the excitement of research, he says. “We get to exercise our creativity when inventors come in with their inventions and we try to help them … to develop it if possible, if not, [to figure out] how best to protect it,” Tan says. This requires a new and challenging way of thinking for scientists. “In science, to me it was very black and white -- either the experiments work, or they don’t -- whereas when I started getting into the [patent] profession, I realized that they introduce a shade of grey. It’s not exactly wrong, but neither is it completely correct, so there is always room for argument in any situation.” It baffled him at first, Tan says, but that is “the toughest but most interesting aspect of the profession.”
The Professional Standards Board for Patent and Trade Marks Attorneys in Australia offers information about how to register as a patent attorney and further advice for professionals.
The Office of Enrollment and Discipline at the U.S. Patent and Trademark Office provides information about registration examinations and the requirements for admission to the exams in the United States.
The United Nations World Intellectual Property Organization (WIPO).
Elisabeth Pain is contributing editor for Europe.