INTERVIEW

How did you learn about the Patent Attorney profession and what inspired you to become a (European) Patent Attorney?

The company I worked for as an engineer had a small inhouse patent department. Because they were involved in a patent lawsuit, they were looking internally for people to work for them. I was trying to figure out how I could grow within the company, and the patent department gave a path that was equivalent to becoming a manager or project leader, so I talked to them. Only then did I find out more about what Patent Attorneys do, and I was convinced that I wanted to change career. The transfer within a company was easy to arrange, and I realised quite quickly that I really wanted to continue. I was attracted to working with the newest ideas, and thinking about how strategically they could be used in the future. I left after 5 years for a private practice, because I wanted to write more applications and do more patent work (that is how you learn). I also learned more about the business aspects of patents, which I really like.

Most people know that Patent Attorneys help clients obtain a patent. However, what other tasks are you responsible for? 

Trademarks, designs, reviewing some basic agreements such as NDAs and joint-development agreements, business strategy, some infringement litigation, a little copyright, trade secrets, training for Patent Attorneys and formalities, legal blogging, legal books, formalities work.

If you had to split your role into science, law, and business, what is the proportion of each?

Science: 50%, law: 30% and business: 20%.

What does the team structure at your workplace look like?

I work for myself. For some clients, I work together with a small firm in Switzerland. For smaller clients, I do the formalities myself. For bigger clients, the formalities are done by a bigger firm. I don’t try and do everything – I am happy to work with any other patent firms as a freelancer, or just for specific parts of a case. I also look where I can automate tasks, like using the Inovia platform for national PCT entries.

What does your average workday look like?

I am mainly writing patent applications, analysing search reports and answering office actions. Some of the cases also require foreign office actions to be answered. There are also regular discussions with potential new clients, existing clients with short questions and discussions with Patent Attorneys that I work with from other firms. I also need to regularly deal with my own business administration.

What would a dream workday as a (European) Patent Attorney look like for you?

I like opposition and infringement cases, but that does not happen that much. But they are a lot of work, so it is good not to just do that. I also like the interaction with clients.

What is the most exciting aspect of being a (European) Patent Attorney for you?

Helping businesses and startups to move forward or fix an issue, and seeing them integrate IP into their business strategies. I also like the international aspect. You are continuously learning and you cannot know everything with certainty. But still you need to give opinions on invalidity and infringement as the expert in the room – very often, businesses will rely on this. And if you are reasonable and open with your clients with regard to billing, what you know, what the risks are and always deliver the best quality possible in the time available, then you can build up a lot of trust with clients. Getting patents granted and winning cases is very rewarding. And if you lose, you can still learn a lot for the future. I also like it that each case and each client can be very different.

What are your least favourite tasks?

Business administration. Writing the description part of patent applications.

Does your job allow you to have time for your hobbies?

No – very little. Any time left over, I use for my PCT book or work-related blogging.

If you could start your career over, would you change anything?

I realised that it is very hard to change careers to become a Patent Attorney. I worked as an engineer for more than 10 years before switching almost overnight. It was within a company, so it was possible, but it is a change from knowing a lot to knowing nothing. And when you learn something new, you look for something in your past to compare it, but that is hard for a very specialised field like patents. It would have been better to first learn about patents for a couple of years (maybe as a searcher or patent engineer) next to my engineering job to adjust.

If the Patent Attorney profession suddenly disappeared tomorrow, what else would you do?

For a Patent Attorney, I am very social and open to change, so I would probably move to marketing, or advising businesses in some way. Possibly an expert for legal automation tools.

What advice would you give someone that wants to become a European Patent Attorney?

Talk to a couple of attorneys first before to get a good idea of what the job requires, and what kind of people are attracted to the career. These people will be your colleagues.

You will need to be comfortable with technology, so that you can discuss inventions with inventors, but most of the explanations you will need are found in basic physics, mathematics, chemistry and electronics. It is a continuous learning process - you will encounter new things regularly, and you need to be able to teach yourself about them (a good way to learn is to find a well-written patent application in that field).

Learning and becoming qualified is a lot of work, especially next to your daily work and your private life. But once you are finished, there are many directions you can go in. It is true that you are a specialist, but you can do much more than just writing patent applications – you can move more to interface functions, such as more business-related, marketing, software service, or managing. You can learn more about foreign patent systems, do more industrial designs, more litigation, more infringement etc. Remote working is opening up a lot of possibilities.

What do you think about the future outlook of our profession?

It is very good - there will always be a need to protect ideas in some way, even if the tools available are not called “patents”. But you need become all-rounded by getting experience on all aspects – drafting, granting, invalidity, infringement and licencing. You also need to have an international view – most businesses only use a national filing as a starting point. Find partners to get the clients what they need, and do not limit it to what you (or your firm) can do (eg. for some cases, I only arrange filing in US as this is the best value patent in the world, or only CN utility models). Work at getting patents granted, and do not just fight for the very broadest protection. Also learn how to deal with national/EU industrial designs and trade secrets. Learn how to create evidence using i-Depots.

With more and more available software, do you think the work of European Patent Attorneys will change in the next 10 years?

You should always be afraid that parts of your job will not exist in a few years. Anything that is repetitive, and you (and colleagues) can do very easily will be automated for 80%. The 20% left over will be the more unusual cases which will still need some input from people. You see that now with NDA’s – NDA Lynn scans NDA’s to look for unusual of unexpected clauses, which you can concentrate on.

Drafting software will be used mainly in fields where they tend to file a lot of applications and use the patent office search to select the applications to pursue. Or to assist in attorneys doing the 20% of cases that can’t be automated. Some smaller clients might use them because the costs will be reduced, and they are often willing to take more risks about getting a grant than Patent Attorneys expect - startups need to deal with thousands of risks – IP is just one of them. Also having a patent is not a golden ticket to success, and it is not always necessary.

Blockchain technology makes it possible to have low-cost, automated patent pools and micro-licensing of IP (e.g. IPwe’s Smart Pools). So, if you have IP, it will be easier to earn and small companies can choose to simply “rent” some IP or “rent” protection against being sued. Again, this will be used for 80% of the licence agreements, but I think this is likely to be a growing market (most patents are not generating any income).

The searching tools used by patent offices and specialist search firms are improving, but the amount of prior art increases exponentially (not just patents, but also technical articles, online discussion groups, videos etc). A lot of prior art is now in Chinese, making it time-consuming (i.e. expensive) to search. Searching was always just to reduce the risk of finding something relevant later on – I think the only thing that will change is that they will be used less often, or in a more limited fashion because the certainty that they provide will become less. For example, it is not worth spending EUR 3000 on a novelty search if you can get a (national) patent application drafted, filed and officially searched for EUR 3500. In such a case, it may be better to limit the search to EUR 500.

Remote working has been tested during the pandemic for a lot of professions, including Patent Attorneys. You will certainly make your life easier, and increase your workload, if you can work with international clients. You can also do most of your work from anywhere you choose with a good internet connection.