Dr Rachel Moodie

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Intellectual Property:
Release its potential
www.hgf.com
A Career as a Patent Attorney
Dr Rachel Moodie
rmoodie@hgf.com
What is a patent attorney?
A lawyer with a scientific background (not a solicitor) who specialises
in the field of intellectual property
A patent attorney advises clients or his/her employer on:
• How to effectively legally protect their innovations.
• Analysing other parties’ patents to advise clients on risk of
infringing
What is a patent?
• A patent is a grant by the state of a limited-term right to control the
exploitation of an invention
• Patents can be granted for a wide range of technologies
Examples from my own experience:
• I mostly work on: chemistry and biotech inventions such as:
pharmaceuticals, peptides, antibodies, stem cells, viral vectors.
• But I have also come into contact with: retractable-heel shoes, heated golf
club bag, light up toilet seat!
Seldom specific to area of study
Exciting to come in contact with so many different technologies
Typical work
Interviewing inventors to understand how their new ideas work
Drafting patent applications to define in writing what the invention is
Acting on client’s behalf at Patent Offices around the world to secure
grant of patent.
- Mostly done in writing
- Dialogue with foreign attorneys
Defending patents that are being opposed by competitors
Licensing, assigning, freedom to operate...
Types of clients
Examples:
•
•
•
•
•
Blue chip companies
Lone inventors
Start-ups and spin-outs
Universities
Foreign associates
Pros of the job:
•
Pros:
•
The opportunity to gain new skills, such as legal skills, whilst
retaining contact with science
•
Every day is different. There is a large variety of work
•
Working at the cutting edge of technology
•
Lots of travel opportunities, particularly when qualified
•
Financially rewarding:
-Trainees start on around: £25,000 to £35,000
- Newly qualified attorney: around £50,000 to £60,000
- Up to 3 years post-qualified: £75,000 to £80,000
- Head of IP department (in house): £100K to £250K
- Partner (in private practice): £80K to £400K
Salary information taken from www.insidecareers.co.uk
Cons of the job
• Cons:
• Lots of exams! (13 exams to qualify in the UK and Europe)
• It takes at least 3-4 years to qualify (plus retakes?!)
• Deadlines, pressure, responsible for patents worth up to hundreds
of millions of pounds.
• Billing targets
Entry requirements
• No training in intellectual property is required
• Legal training is given on the job
• To train as a patent attorney you need knowledge of a
• technical/scientific area
• At least a 2.1 BSc in a technical or scientific discipline
Entry requirements continued
The patent profession is one of the smallest professions in the UK.
• Very competitive as not many vacancies
In 2008 there were 140 entrants to the profession in the UK.
In 2009 there were 102 entrants to the profession in the UK.
In 2010 there were 130 entrants to the profession in the UK.
2008 number of successful applicants from universities:
• 1st Oxford (16 recruits)
• 2nd Cambridge (12 recruits)
• 3rd London Imperial (11 recruits)
• 4th Manchester (10) recruits
• 5th Birmingham (7 recruits)
• 6th Durham (5 recruits)
- two thirds of chemistry/life science recruits have a PhD and a lot also
have post doc experience and/or experience in industry
How to apply
Speculative applications (I wrote to 50 firms!)
- make sure each covering letter is individualised to each firm
- perfect your covering letter and CV
Positions advertised on the inside careers website:
http://www.insidecareers.co.uk/
Resources
Inside Careers – Chartered Patent Attorneys
www.insidecareers.co.uk
Chartered Institute of Patent Attorneys
www.cipa.org.uk/pages/home
UK Intellectual Property Office
www.ipo.gov.uk/home.htm
Harrison Goddard Foote
www.hgf.com
Any Questions?
Dr Rachel Moodie
Harrison Goddard Foote Patent and Trade Mark Attorneys
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