What it takes be a Patent Attorney — I

In my previous blogs, I have covered various aspects of intellectual property (IP), including its importance and the different forms of IP protection such as patents, trademarks, and copyrights. Now, let’s shift our focus to the professionals working in the field of IP and IP as a career, specifically what it takes to become a patent attorney (or agent). Since the subject is so detailed (or because I love to talk about it), I will elaborate on this topic in this blog and at least one more.

I believe that the profession of patent attorney or agent is like a hidden gem. Patent attorneys are relatively rare worldwide, not because the profession is uninteresting or unrewarding, but largely due to a lack of awareness. While everyone understands the importance of intellectual property, few grasp what IP truly entails and what patent attorneys do on a daily basis. Many are also unaware that a career in IP is a viable option. This article, along with the next, is intended for those who are considering whether becoming a patent attorney is the right career path or for those simply curious about what a patent attorney does. I will outline various aspects of a patent attorney’s daily work and help you determine if this career might be a good fit for you.

First, it’s important to understand that a patent is a legal document that discloses a scientific or technical invention by inventors. This hints that the patent attorney profession is a unique blend of working with cutting-edge technology (scientific or technical inventions), solving legal challenges (legal documents), and interacting with new people (such as inventors). But is the job purely legal? How much of it involves technology, legal work, and communication? What percentage of each aspect makes up the total work? These are the most pertinent questions I had in my mind when I joined the IP world. Before I elaborate on this topic, my first piece of advice is to familiarize yourself with the two concepts ‘depends’ and ‘exceptions’. In the legal world, ‘it all depends’ (i.e., outcomes often hinge on specific circumstances, and exceptions are always possible. What I will explain is a general overview, but please remember that it ‘depends’ on various factors and may include exceptions.

The division between roles largely depends on whether you are working in ‘private practice’ or as an ‘in-house attorney’. Private practice usually involves attorneys working in law firms who handle external clients such as companies, start-ups, and universities. In contrast, an in-house attorney works within the IP department of an entity (such as a company or university) and manages a portion of that entity’s patent portfolio. An in-house attorney typically manages the entire patent process, from idea conception and invention assessment to grant procedures and post-grant activities. Conversely, attorneys in private practice often focus on specific aspects of the patent process, such as drafting applications, while other tasks, like responding to communications from the patent office, may be handled by different professionals. Thus, private practice generally involves working on individual segments of the patent cycle rather than managing a complete portfolio from inception to grant (and sometimes beyond).

Returning to the composition of the workload, an in-house attorney typically focuses more on the technological aspects. They generally manage a technology patent portfolio, actively seek out intriguing and relevant technologies to protect, collaborate with researchers to refine and develop ideas around these technologies, advising on how to leverage and advance these innovations effectively, and later evaluate conceived invention from a patentability perspective, and then draft, file, and manage communications with the patent office throughout the grant process. I will cover these individual steps in more detail in the next blog. A key aspect across all these tasks is a thorough understanding of the technology. While each step must adhere to legal requirements, the primary focus is on the technology itself. Post-grant activities, such as opposition and invalidation, also heavily involve technological expertise.

In private practice within a law firm, the nature of work varies. While technology remains important, the focus is more on the legal aspects. This includes advising clients on various legal matters related to IP (patent) law, such as filing issues, priority and other important dates, reviving rights etc. A patent attorney in private practice typically handles a wide range of tasks.

In summary, the profession of patent attorney combines technology, legal expertise, and communication skills exceptionally well. Depending on the specific focus of their practice, individuals can achieve a balanced integration of these elements, of course with some exceptions. In the next writeup(s), I will focus on the prerequisites for entering the patent attorney field, daily responsibilities, and offer some practical advice(s).