INTERVIEW

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

After my PhD in Physics, I started working as a postdoctoral researcher at Politecnico of Milano, where I had the opportunity to deal with the management of some patents of the physics department. At that time, my current firm Botti&Ferrari was looking for a new patent trainee, and then I applied for an interview. It was a period in my life when I was fed up of pure research, and I was very curious about the patent world, as well as I was excited to try helping companies to protect their inventions in the most advanced fields of technology.

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

In addition to patent drafting and prosecution, part of my work is devoted to patent litigation, as technical expert for clients (for example by drafting legal/technical opinions to be filed in court during litigation). Further, a significant part of my work is also dedicated to the preparation of legal/technical opinion for clients, relating both to validity/invalidity of patents and to possible infringement scenarios.

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

I believe that more than 75% of my role is now related to law and business. Of course science is fundamental: by resorting to our scientific notions we can deeply understand inventions and devise all possible interesting scenarios when drafting patent applications as well as when advising clients in a wide variety of situations. At the beginning of my career, science had a more prominent role, but now it’s role is reduced in favor of business.

What does the team structure at your workplace look like?

My firm has various local offices. The headquarters are located in Milano and I started working there: in Milano I was part of a large and structured team, with exchange of skills and experiences among many colleagues and paralegals. Currently I’m located in the office of Brescia, which is a smaller office: now I have a minor exchange with colleagues, but on the other hand it is a good professional challenge because I am much more independent in my work and in the management of clients.

What does your average workday look like?

I go to office around 9 am, then I have lunch around 13.00 (usually I came back home for lunch). Then I come back to office around 14 and, generally, I stay in office till 18.30/19.00. However, I’m lucky since I have flexibility in my workday and I have the possibility to manage my working time. We also offer the possibility to work from home three days a week.

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

I think I’m really satisfied with my workday.

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

I have the opportunity to meet many different companies in many fields, ranging from electronics to material science and to many other technology fields. With my work, I’m privileged to meet the healthiest productive companies of my country and to have a direct contact with many interesting clients.

I also like the international dimension of my work, which involves continuous contacts with colleagues and clients from all Europe and from all over the world.

Another very exciting aspect of my job is working side by side with lawyers during patent litigations.

What are your least favourite tasks?

If I really have to find something I like least (which is very difficult), perhaps it is conducting patent searches (e.g., prior art searches for the preparation of invalidity actions or for the preparation of Freedom-to-Operate opinions).

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

Actually, I would not change anything of my career in the patent field.

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

I think I would try a career in the field of  management consulting. Another possibility would be to try to become a lawyer so as to continue to work in the patent field.

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

My advice is to be prepared to study a lot for many years. It really takes a lot of time to become an experienced patent attorney. Also after obtaining all the qualifications, a patent attorney should be prepared to keep studying and updating his/her skills, since our profession has many different and complex aspects.

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

I think that the skills of a patent attorney, who must be able to talk with clients, to ask clients the correct questions, to translate the client’s needs into patent language and to devise all the possible ways to protect inventions, are still indispensable for the moment, as well as our role as expert during litigations/oppositions will be indispensable.

However, I think that routine tasks will be easily completely replaced by emerging technologies, and I do not exclude that in the next future also patent drafting will be heavily aided by AI software’s.

I believe that the new available technologies will cause a great competition in our field in the next years, and It will be fundamental to become familiar with them as soon as possible to have competitive advantages.