I am enthusiastic about technology and innovation. I specialize and have experience in formulating and implementing business results-oriented strategies and work plans in all intellectual property areas. I especially enjoy working in teams in a multi-player, dynamic, diverse, and multicultural environment. I am an experienced IP manager and am now...
Patent Attorney Career
07 Nov, 2023
Explore the dynamic and multidisciplinary world of Patent Attorneys, a profession with diverse career opportunities in Intellectual Property
If you attend a career choosing workshop, one career choice you will not be offered there is becoming a Patent Attorney. Most won’t even know what that even means. I know, because the exact same thing happened to me. But then I met three happy patent attorneys and… the rest is history. I’m a happy patent attorney myself. For me, the career in Intellectual Property (IP) is interesting, brings forth a wide range of skills and abilities, and even after twenty years in the field, is still intriguing and exciting.
How do I run a career in IP? What are my IP career options? How do I know if it suits me? Where do I even begin? How do I proceed? How do I excel? To answer all these questions, I’ll present an analogy to the role of the architect, the hexagonal toolkit model, a link to a recommended PA training program, and keys to a successful career.
An analogy between the role of the PA and the role of the architect
The dwellers of a house wish to have a functional working home, one that is pleasant to reside in and that expresses their own tastes and preferences. The architect is a professional entrusted with designing the house – the external appearance, the structure and its internal division into spaces, all in accordance with the laws and regulations (e.g. building permits), professional standards (a design which can be carried out, functionality), and client requirements (e.g. budget, taste, timeline). The architect files requests to the authorities for receiving permits and supervises the process until receiving a building permit. The architect works with the contractor and other professionals to make sure the building and construction are carried out according to plan and with the proper materials. The architect is a multi-disciplinary professional who is required to deal with a range of constraints, as well as deep dive into the details without losing sight of the master plan and main goals of construction. The profession of architecture requires a license and specialization. It’s a profession holding great value for experience in the field, as well as for creativity and innovation. In addition, there are tasks requiring the utmost attention of the architect – for example, the task of planning which may require dozens of hours. This demanding profession also calls for great responsibility: the client has, de facto, no real way of criticizing the performance of the architect, the cost of a mistake is heavy and sometimes, mistakes cannot be mended post factum.
Similarly, the role of the patent attorney is to assist the client – entrepreneur, a company developing a new technology, a company manufacturing products – maximizing the value of their business activity. The patent attorney does this while using the intellectual property toolkit. Tee profession is multi-disciplinary – the IP professional is required to be knowledgeable of the law and practice standards, of the technology and of the business envelope of the project or company. Dealing with even a single patent requires investing dozens of hours to one task on all its various aspects. And, similarly to architecture, in IP, most clients are unable to criticize the level of performance in real time, the cost of a mistake is high and these sometimes cannot be mended post factum.
The hexagonal toolkit model – what’s in the IP toolbox?
The miraculous ability of intellectual property to enhance the value of business activity is reflected in the following aspects of the client’s world – entrepreneurs and companies:
Agreements – for example, NDAs, IP annexes to work agreements, mutual collaboration agreements, technology commercialization agreements, ideas and designs
Patents – the patents of the entrepreneur or the company, patents of others pertaining to the same problems, the possibility of generating value using patents in both collaborative and competitive scenarios.
Trademarks – brand names of products and software, branding and advertising.
Copyright and designs – in the world of a technological company, for example: protecting code, using open source code, software screens, design of components, spare parts and packaging of disposable materials.
Trade Secrets – the challenge of keeping the business advantages in a reality of inevitable exposure (e.g. B2B), technological collaboration, employee mobility and globalization.
You can describe the various roles of a patent attorney based on the focus on each of these various IP tools. The first division of those practicing IP is by their technological background: patent attorneys who have a technological background mostly deal with patents. There are technologies in which the patent plays the major, and almost exclusive role (e.g. pharmaceuticals, medicine and chemistry). There are technologies which cannot be fully protected solely by patents (e.g. software or inventions of a significant visual design) and an additional IP protection is required in the form of copyright and design patents.
Another division is by the various qualifications and certifications under the law: in Israel, there’s a similarity between the authorizations of patent attorneys and advocates. Advocates are authorized to represent any party in front of any authority. Similarly, the PA has a unique right to practice patents, designs & trademarks in Israel and represent clients in front of the Registrar of patents and trademarks and the Patent Office. The PA is authorized to argue in court on behalf of their client – in collaboration with the client’s lawyer. There are patent attorneys who are also lawyers (having passed both bars) – and are allowed to represent their clients before the court as well. Lawyers in IP – whether PAs or not, deal with agreements, contentious proceedings involving patents, trademarks, copyright, designs and the breaching of IP agreements. Lawyers in IP also deal with procurement of trademark rights, copyright and designs.
Another division focuses on the types of services – firms and companies. Patent Attorneys in firms and in companies use various IP tools to different extents. Patent attorneys in firms dealing with patent rights procurement will focus mostly on patents. Patent attorneys in positions of IP managers in companies will often-times be required, based on the company’s field of expertise, to also deal with trademarks, designs, copyright, trade secrets and assisting with agreements.
The patent attorney’s work begins and ends with the client: the client is the initiator, the decision maker and the person paying the bill. The patent attorney’s job is providing a service. This holds true both for patent attorneys in firms – in which case, the client is the entrepreneur or an employee of the company, and for patent attorneys in companies who have ‘internal’ clients – the inventor, the IP manager, the VP R&D, the CEO or the BOD.
Entering a career in IP
Studying the profession of being a patent attorney is complex and requires various ways of learning as well as various learning skills. For example, formal learning of laws and regulations, practical experience through writing and analysis, working with mentors and colleagues, and teamwork with patent attorneys in different fields.
In 2021, the IPAA, in collaboration with the ILPTO, advertised a Patent Attorney Training Program, aggregating all the fields of knowledge and expertise required from a patent attorney under Israeli law, and the collective experience of patent attorneys. The document of the program was intended, among other things, to assist those who wish to enter a career in intellectual property.
In order to obtain a patent attorney license, two main requirements must be met: a two year internship, and passing two exams: an IP bar exam and a written exam. Most of those entering this profession do their internship in IP firms. However, under certain conditions, an internship can also be done in companies.
A career in IP
I believe there are three keys to a successful and satisfying career as a patent attorney
First Key – Professionalism
The learning and professional development do not end with receiving your PA license. Quite the opposite. Some, myself included, believe that the learning of core skills spans over at least five years. After this period it is recommended to keep learning – expanding your knowledge of the law and various technologies and making the most of your practical experience from each case you handle, from each client, and from each professional activity. It is recommended to implement various ways of learning: learning from experience, drawing lessons from previously written or prosecuted patent applications, self learning, learning from colleagues, courses and continued education programs.
Second Key – navigating your career between the two main worlds: firms and companies
The old Hebrew idiom “Things you see from there, you don’t see from here” describes well the two main perspectives on the profession. According to your heart’s desire and other considerations, you may choose either one of these paths or a combination of the two. Many patent attorneys enter the profession through a firm and stay in the firm world for the remainder of their career. Others begin in firms and shift to companies – some stay in companies and some return to firms. Some patent attorneys enter the profession through a firm – and do their internship in a firm or in the company itself. The experience of both worlds of this profession is valuable.
Third Key – Personal Development
The IP profession demands continued learning for years in order to stay up to date with the relevant rules and case law, new technologies, new tools which can be used for work. In addition, being a patent attorney brings forth general skills and abilities such as managing people, budgeting and dealing with tasks; performance capabilities, time management and efficiency; excellence and leadership, communication skills, listening and teamwork. Although it may sometimes be easier to get sucked into the day to day work routine, a good and professional patent attorney makes sure to develop in all aspects relevant to their role and not be left behind.
The Patent Attorney profession is complex and multi-disciplinary – but as the magnitude of its complexity and the richness of its aspects – so are the possibilities of satisfaction and success.
Want to hear more about a career in IP? You’re welcome to reach out via email email@example.com.
The content provided by: Adv. and Patent Attorney Einav Zilber VP IP Magnus Metal Former Chair of IPAA