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Maya Preshel-Zlatsin
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A Trainee’s Guide to Embarking on the Path of a Patent Attorney

22 Dec, 2023

Embarking on a career as a patent attorney entails navigating a distinctive landscape where scientific expertise converges with the intricacies of intellectual property. To qualify as a patent attorney in Israel, individuals must possess a degree in a technological field (engineering, chemistry, physics, biology, pharmacy, computer science) from an accredited higher education institution, undergo a trainee position in a recognized training office, and successfully pass the qualifying examinations (per Section 142 of the Law). Each day in the life of a trainee patent attorney brings a dynamic and ever-evolving work environment within the realm of IP law.

In the subsequent exploration, we will delve into crucial aspects of the journey, from becoming a trainee to optimizing training and preparing for exams. It’s imperative to recognize the need for seamless integration between legal and technical understanding, as patent attorneys must comprehend both the legal framework and the scientific principles of inventions.

(1) Job hunting and tips for aspiring patent attorney trainees

The Israeli patent attorney community is not large, and job opportunities in specific technological fields may be limited. Aspiring individuals can undergo training while employed at either the Israel Patent Office (IPO), an established patent attorney office, or within the legal department of an industrial facility. During the job hunt, considerations should include the workplace’s experience in preparing trainees for exams, the trainer’s professional background and instructional approach, and other factors such as salary and remote work options.

TIP #1: If you find a place or a trainer you would like to work with but there are no available positions, don’t hesitate to reach out as opportunities might arise later.

TIP #2: As a trainee, make it a priority to engage in tasks that align with those performed by an experienced patent attorney, such as patent drafting and patent prosecution. The hands-on experience and exposure to real-world patent cases during the training period are crucial for bridging the gap between theoretical knowledge and practical application.

2) Optimizing your training experience

Ideally, a trainer should delegate tasks reflecting those of a skilled patent attorney. Initially, these tasks may be approached at a slower pace, demanding meticulous attention to legal documents and adopting a ‘legalese’ writing style. Resilience is key for junior trainees navigating the learning curve. Embrace a proactive approach by consistently seeking clarification through inquiries. Regular meetings with your trainer are invaluable, offering constructive feedback that ultimately enhances your performance.

TIP #3: From the first day, create a comprehensive spreadsheet to track the time spent on each task. Maintaining these statistics will provide a clear picture of your progress and improvements in terms of efficiency.

TIP #4: While many patent attorneys primarily draft and prosecute patents, the realm of intellectual property encompasses a broad spectrum of areas. If possible, ask your trainer to engage in cases involving litigation, trademarks, and designs.

TIP #5: As you deepen your knowledge of intellectual property in your specific technological field, consider seeking insights from attorneys in diverse technical domains. Acquaint yourself with distinctive challenges that may arise during the patent prosecution process in their respective fields.

(3) Preparation for qualifying examinations

Presently, trainees must successfully pass two exams to obtain a patent attorney license: a written exam and an oral exam. The written exam extends over 5 hours, during which candidates draft a patent based on a disclosed invention within their specific technological domain. The oral exam encompasses Israeli IP law and key legal principles in other jurisdictions (per Regulation 128).

In recent years, the IPAA had organized a specialized course tailored to prepare trainees for these exams and the challenges they may encounter in their future work. Esteemed Israeli IP professionals serve as speakers in the course, covering fundamental IP concepts relevant to both the written and oral exams.

TIP #6 – Oral exam:

Utilize the course’s platform to assemble a study group comprising 3-5 trainees who also aim to take the exam in the same term as you. Collaborating with trainees from diverse backgrounds – spanning different technological fields and different type of employers – can provide a broader perspective on the world of intellectual property.

For those balancing full-time work commitments, allocate at least two months for dedicated study. Organize a schedule involving 1-2 group meetings per week, with predetermined topics for each session. This ensures that all participants can review relevant excerpts from the Law, Regulations, Examination Guidelines, Registrar’s Circulars (Hozer Rasham), and court decisions. If concurrently enrolled in the IPAA trainee course, synchronize the topics covered each week to enhance your preparation. Plan to undertake your oral exam shortly after completing the IPAA trainee course. Thoroughly prepare before each course session and actively engage with the speakers to address questions arising from your studies.

TIP #7 – Written exam: If you lack sufficient experience in patent drafting, it is strongly advisable to independently prepare for the written exam by utilizing past years’ exams which are available online on the IPO website. Simulate the drafting process by drafting a patent based on a disclosure from these previous exams. Exchange your draft with another trainee in your field, and in return, review their work. This reciprocal review process provides valuable insights. If you don’t have a partner, you might want to seek feedback from your trainer on your drafted patent.

Bear in mind that claim drafting, a crucial skill in patent drafting, often requires years of experience to develop and refine. Even after passing the written exam, you may have a long way to go in terms of polishing your claim-writing skills.

(4) Congratulations on passing the exams! Keep the momentum going!

Embracing the dynamic nature of this profession, continuous learning remains a perpetual aspect. Even licensed and adept patent attorneys should stay updated on local and international practices, as IP law evolves alongside the emergence of new technologies and court decisions across various jurisdictions.

TIP #8: Participate in professional seminars organized by the IPAA for ongoing learning.

Undoubtedly, pursuing the path to becoming a patent attorney presents a challenging yet captivating and gratifying journey for individuals driven by a passion for both innovation and law. Navigating the intricacies of intellectual property, this profession offers the opportunity to bridge the realms of creativity and legal expertise. If you are eager to delve further into this enriching journey or seek more details, feel free to reach out for personalized guidance and insights.

The content provided by:
Maya Preshel Zlatsin
Patent Attorney, Ehrlich Group