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Slides from a presentation given to Bradford University undergraduates, about becoming a patent or trade mark attorney.
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Becoming a Patent/Trade Mark Attorney
By John-Paul Rooney CPA EPA
BRADFORD LAW CAREERS WEEK 2008BRADFORD LAW CAREERS WEEK 2008
Session OverviewSession Overview
• Motivation
• Substance• IP – what is it/why is it important?• The Patent Attorney’s Role• Necessary Skills
• Where to apply/resources
• 40 minutes + questions
MotivationMotivation
• Probably the best job in the world
• Stimulating• Technically
• Challenging• Legally/Commercially
• Rewarding• Job satisfaction• Financially
SubstanceSubstance
• A closer look at IP• What is it?• Why is it important?
• The role of a Patent/TM Attorney• What does she do?• What skills are required?
What is IP?What is IP?
• Intellectual – a product of the mind
• Property – something tangible which can be:
• owned• sold• rented
Main Types of IPMain Types of IP
• Patents • how things work
• TMs • what things are called
• Designs• how things look
• Copyright• “artistic” works
A closer look at IPA closer look at IP
• The right to stop• Copying• Making• Selling• Etc.
• A commercial tool• Profit-making• Deal-making
The Role of a Patent/TM AttorneyThe Role of a Patent/TM Attorney
To advise and add value• Identify Rights• Protect Rights• Defend Rights • Attack Rights
• Where• With clients• At the Patent Offices/In Court?• Internationally
Case StudyCase Study
• The “Screwpull” Corkscrew
• Mr Allen
Case StudyCase Study
• Patent Claim:
• A corkscrew having a helix coated with a friction reducing material
• Self-pulling type• Plus “fall-back” positions including an
arrangement for control and centring of the helix
Case Study Case Study
• Brabantia (UK) Limited• Exhibition
• letter before action
• Later Sale of Product• injunction & full trial
• Findings• Main claim infringed but claim invalid – because
PTFE on corkscrews was obvious• Back-up claim to guide and control mechanism
infringed and valid• Competitor kept out of market for 20 years
SkillsSkills
• Technical• Patent Attorneys Only• Engineering or Science
• Legal• Basic knowledge of English Law• Detailed knowledge of Patent/TM/Designs/Copyright
Law – UK, Europe and International Agreements
• Analysis• Technical - what are the technical issues?• Commercial – what are the commercial issues?• Legal – where does the solution lie?
• Communication• Writing – letters to clients and patent offices• Oral – client meetings and oral proceedings
PositionsPositions
• Private Practice • e.g. Appleyard Lees
• In-house/corporate• Electronics - BT, IBM• Chemicals – ICI• Biotech - AstraZeneca
Private Practice - Advantages Private Practice - Advantages
• Variety
• Autonomy
• Long-term financial
In-house - Advantages In-house - Advantages
• Teamwork
• Depth of work
• Commercial view
AlternativesAlternatives
• IP Solicitor• Deal-making• Litigation (e.g. creating case on paper, evidence
collection)
• Barrister• Opinion Work• Advocacy
• Patent/TM Examiner• UK Office• European Offices
Review Review
• One of you will probably make a great Patent/TM Attorney
• You are fortunate
• It’s one of the best jobs in the world, because:
• Challenging• Stimulating• Rewarding
How to ApplyHow to Apply
• Write a focussed CV• Technical Skills• Writing Skills (demonstrate with a well-written
CV)• Emphasis on the reader
• Write a focussed Letter• Show awareness• Mention your motivation (my talk?)• Demonstrate writing skill
• Prepare for interviews• Think about IP• Think about how things work
• Inside Careers guide• www.insidecareers.co.uk
• Official Websites• www.cipa.org.uk• www.itma.org.uk• www.ipo.gov.uk
Further informationFurther information
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