Patent attorney : Job description

A patent attorney (also known as a patent agent) assesses whether inventions are new and innovative and therefore eligible to be patented. They lead individual inventors or companies through the required process to obtain a patent and then act to enforce inventors’ rights if patents are infringed.

Patents are granted by the government and give inventors the right to prevent other parties from using or copying their invention for up to 20 years. Most patent attorneys work either in private firms or in large manufacturing organisations across many branches of industry.

Patent attorneys are also trained broadly across the range of intellectual property rights and so are usually able to advise on a number of related issues.

Typical work activities

The nature of the work depends on whether the attorney is advising private clients or is employed by a large organisation to protect their products but, broadly speaking, activities include:

• discussing inventions and processes with inventors or manufacturers and ascertaining whether they are likely to succeed in being granted patents;
• studying and analysing scientific or technical documents, including previously granted patents, to assess whether an invention is new and innovative;
• writing detailed descriptions of inventions in precise legal terms (patent drafts);
• suggesting modifications or extensions to the definition of the invention;
• applying for patents from the Intellectual Property Office (IPO)  and the European Patent Office (EPO) , often presenting complicated technical arguments;
• preparing responses to reports from patent examiners;
• ensuring application and renewal deadlines are met;
• working with solicitors and barristers to defend or enforce UK patents;
• conducting litigation in proceedings at the EPO or in the Patents County Court;
• advising overseas agents on applications for foreign patent applications;
• advising on whether business activities will infringe someone else's patent rights;
• dealing with assignments of patent when a patent is sold or transferred;
• keeping up to date with legal developments in the intellectual property field;
• advising on other intellectual property rights, e.g. designs or trade marks;
• tutoring and mentoring trainee patent agents.