Working in physics: Protecting the future
Patent attorneys work at the interface of science and law, helping inventors to safeguard their intellectual property. Elliott Davies describes a career that combines technical knowledge and commercial savvy.
As a profession, patent attorneys have been around for more than a century, but their job often goes unnoticed by the general public. In the last few decades, however, the number of patent applications being filed has risen sharply. International patent applications, for example, have increased by about 5% per year – thanks, in part, to a jump in the number of applications being filed in China and Japan, and to pressures on energy resources, which have boosted the number of energy-technology-related patents. And, of course, all these applications require people with the expertise, both legal and technical, to understand them.
It is a common misconception that a patent enables the applicant to make and sell the protected invention. However, patents actually provide a negative right, namely the right to prevent third parties from unauthorized use, manufacture or sale of the protected invention. Accordingly, inventors often race to get the relevant patent applications filed before their invention is disclosed.
The job of a patent attorney can vary widely, but the core elements involve preparing and filing patent applications for inventions, and subsequently prosecuting the applications through various government offices, like the UK or US patent offices. Patents are only granted for new and inventive technological developments: to be "new", the invention must not have been published or otherwise disclosed before the relevant patent application is filed; to be "inventive", the invention must not be an obvious development of an existing technology. To convince a Patent Office examiner that a invention is both new and inventive, attorneys must be able to assess documents that disclose similar technology and that have been published before the filing date of the application in question. Accordingly, patent attorneys generally specialize in particular technical fields, such as electronics, chemistry and biotechnology.
Finding a niche
I joined the patent profession in 2003 after completing both a Masters degree and a PhD in physics at Bath University. When I graduated with my first degree, several of my close friends decided to pursue careers in accounting, engineering and marketing (to name but a few), but I decided to stay on to do a PhD, comfortable in my surroundings and with what I knew. My PhD had both an experimental and a theoretical theme; I first studied the theory of how acoustic waves propagate in periodic systems, then performed experiments to investigate the interaction of acoustic and optical modes in photonic-crystal fibres. During this time, I was unable to distil any preference for a career, but I knew that my grounding in physics would help create a variety of options.
In 2002, as my academic life was drawing to an end, I naturally became more proactive in searching for a job. Around that time, a close friend from my undergraduate years mentioned that he had recently changed jobs and was now training to become a patent attorney. At that time I did not know much about the profession, but I did know that it required a combination of technical knowledge – which I had acquired during my studies at university – and legal knowhow, of which I had none. Still, at least I had the technical part, and it seemed like a waste not to use it. So with this in mind, I decided to apply to become a patent attorney.
Looking back, it is clear that I did not fully appreciate how challenging this would be. In all, I applied for about 10 or 11 trainee positions at different firms of attorneys around the UK. I had several interviews that tested both my command of the English language and my technical ability, and all of these seemed to go well. However, patent-attorney firms are very selective in who they employ, with most trainees having previously completed a science degree at Oxford or Cambridge universities. But after dogged persistence – including sending my CV seven or eight times to the same firm – I was finally granted an interview and offered a position with a London-based firm.
Training, exams and qualifications
I started work in September 2003 and spent the bulk of my first year reviewing patent documents under the guidance of a senior attorney, and sitting in on meetings with clients. During this time, I gradually became better able to understand the sometimes convoluted phrases used in patent documents and the subtleties that can distinguish one invention from another.
Qualifying as a chartered UK patent attorney, however, requires more than just an ability to get one's head around legal subtleties. All trainees must have first completed a scientific degree, but beyond that, candidates also have to pass a series of challenging exams that comprise a series of foundation papers and a series of finals papers. The foundation papers cover, among other things, basic English law, design and copyright law, patent and some trademark law. The four finals papers, in contrast, test your ability to practise as a patent attorney, such as your skill at preparing a patent specification and your ability to assess whether a patent is valid and/or infringed.
These exams were nothing like I had taken before, so despite having done a PhD and winning an award from British Aerospace for outstanding work during my first degree, I found them surprisingly challenging. Fortunately, I knew I was not alone, since statistics show that, on average, trainees take four years to qualify.
For those who want to practise before the European Patent Office, it is also necessary to take four further examinations to qualify as a European patent attorney. Before sitting these examinations, trainees must have completed three years in the profession under the guidance of a qualified European patent attorney. I completed these examinations in 2009, and I am now fully qualified to prosecute European patent applications through the European Patent Office.
In addition to preparing the actual patent documents, patent attorneys are often heavily involved in the commercial direction of their clients, which may be large companies or small and medium enterprises (SMEs) employing just a few staff. This is because the attorney will advise on protecting the innovation and enforcing the rights in patents to protect the company's niche in the market. In my position, I also work closely with government agencies and investors to secure financial assistance for entrepreneurs and SMEs as they develop their businesses and establish a commercial foothold.
Another service that patent attorneys can provide is help with licensing a patent – granting a third party the right to exploit the invention in return for a royalty, for example – and with reviewing a company's or entrepreneur's patent portfolio in estimating the value of their intellectual property. In this way, patents, just like other forms of property, can act as useful sources of income in their own right.
I am currently practising as a patent attorney with Chapman Molony, a firm of UK and European patent attorneys and European trademark attorneys that specializes in intellectual property in hi-tech industries. The firm's core strength lies in hi-tech patent work, particularly in the electronic, optical technologies, telecommunications, defence and energy sectors. Since I joined in 2007, I have found it a good fit for me personally, since my background in electronics and photonics is particularly suited to handling the range of technical subject matter involved in our clients' inventions.
One thing I particularly enjoy is meeting private inventors and SMEs to understand the invention in question. Inventors are often extremely enthusiastic about their product and small businesses typically start out with only a single marketable product. The success of the business, therefore, will often depend on the market niche created by the patent. I gain a real sense of satisfaction whenever an invention I have helped to protect reaches the marketplace.
About the author
Elliott Davies is a European patent attorney at Chapman Molony, a patent-attorney firm with four offices across England and Wales.
This article originally appeared in the March 2010 issue of Physics World
last edited: September 07, 2016