As a Patent Attorney it’s useful to be able to think like an examiner and doing so is easier if you’ve been one. I started my career at the UKIPO in Newport as a Patent Examiner, a role that required looking at both the technical and legal aspects of a patent application and comparing the invention against those found in patent databases to decide whether to grant a patent. After two years I decide to cross to the “other side of the fence” in search of a new adventure. Jumping to the “other side” dispelled many myths revolving around the profession and helped me to understand that Attorneys and Examiners work toward the same goal: Getting good quality patents granted.
How has being a Patent Examiner helped me in my training?
All new UKIPO patent examiners now go through an intensive training period during the first months of starting which includes lectures and workshops, and this thorough training gave me a robust foundation to the job of the Examiner; Patent law, searching and examining skills, use of searching software as well as internal proprietary tools are some of the topics covered. Following this training, junior examiners are then placed in their target teams based on their background expertise.
My degree in computer science and experience in software meant that I was placed with the computing team where we worked on patent applications related to all types of computer related inventions and frequently excluded matter. This experience helped me to understand what it’s like to put on “an Examiner’s hat” and what a “patentable” application means to an Examiner.
As an attorney I now try to picture what I would have said about an application from an Examiner’s point of view. This helps me to avoid many issues or objections at the very outset. As Examiners and Attorneys are often in contact via telephone or e-mail, it is also easier for me to discuss certain matters with an Examiner as I have a solid understanding of the Office’s internal working processes.
Also, an added benefit to having worked at the UKIPO is getting up to a year reduction of the professional conduct period required to start the EPO exams!
What did I like the most about being a patent examiner?
The UKIPO and examining department are focused on delivering excellent service to their customers. The culture of work and organisation resembles that of well-functioning corporation, there are key performance indicators in place and processes are carefully fine-tuned and closely looked at to make sure that high efficiency and quality is maintained.
However, there is no direct contact with clients and other aspects of the attorney role – like commercial and business advice. That said, the UKIPO is a big organisation and there are many opportunities to be involved apart from just examining, such as policy or informatics.
What do I like the most about being a Patent Attorney?
The involvement with the clients on many levels which means not just direct client contact and typical patent advice, but also exposure to commercial aspects as to how IP can help clients with their business. There is also an international aspect which includes managing, sometimes considerable, patent portfolios spanning across many countries. The variety of work keeps things interesting, one day you may be concentrating at your own desk on a how to best describe an invention in a new patent specification, and the next day you may be on a plane to Munich for a hearing at the European Patent Office to defend your client’s case.
Having been an Examiner and now an Attorney, I use the combined skills and experience in a Patent Analytics service, specialising in advising IP strategy based on patent data including: portfolio analysis, competitor intelligence, freedom to operate searches, invalidity actions and patent landscapes.
Lastly, but by no means least, there is a great network of trainees in the form of the Informals, which provide support, a voice in the profession and importantly fun throughout your training.
Patent Analytics Team Leader
Does owning IP rights improve economic performance?
A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.
Let it go!
Keeping an IP budget afloat despite sunk costs.
The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.
Managing your business-critical IP during the COVID-19 crisis
UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right? Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?
Videoconferencing: the future of oral proceedings at the EPO?
The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?
EPO-CNIPA pilot for International Search
On 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
Changes to trade mark and patent law in Gibraltar
In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.