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What are Patent and Trade Mark Attorneys? University Careers Presentation Autumn 2008.

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Presentation on theme: "What are Patent and Trade Mark Attorneys? University Careers Presentation Autumn 2008."— Presentation transcript:

1 What are Patent and Trade Mark Attorneys? University Careers Presentation Autumn 2008

2 Outline Background – the world we work in What do patent and trade mark attorneys actually do? What qualities do you need? Training and exams Why be a patent or trade mark attorney?

3 An idea! It’s worth money … how do you protect it?

4 Some other examples

5 Kinds of IP … Some IP is created automatically Confidential information Copyright Unregistered design right Unregistered trade mark rights © TM

6 Kinds of IP … For others, action is needed to bring them into existence Patents Registered designs Registered trade marks ® PATENTED

7 Types of intellectual property Patents protect how something works Designs protect how something looks Copyright protects expression of ideas, literary works, computer programs Trade marks protect “badge of origin”, reputation – ‘brand’

8 One product … multiple IP rights iPod ®

9 Why have a patent? Patentee gets Right to exclude others from commercial exploitations In return for Making the invention Disclosing the invention

10 Patentability requirements An invention must be: An invention (in the strict sense) Novel Inventive Industrially Applicable

11 Why have a trade mark? Brand protection Confers monopoly right to use name/logo in relation to specific goods/services Secure ability to use a brand name/logo Cheaper than relying on unregistered trade mark protection

12 TM registrability requirements Nobody else shall have got there first Not descriptive, misleading or offensive

13 Where do we fit in? Specialist IP attorneys patents, designs, trademarks, copyright Detailed knowledge of how to obtain registered rights Advise on enforcement of rights Private practice or industry Contacts worldwide

14 The story of a patent application The beginning……… Inventor describes invention to attorney Attorney drafts an application Inventor & Attorney & Client agree that application is good Attorney files the application

15 The story of a patent application The middle……… Search Report issues – ‘Knock out’ prior art? Examination report issues – Any objections? Attempt to overcome objections by argument – ‘The Examiner is wrong because…….. by amendment – ‘The Examiner was right, but its OK now’.. Examiner allows case Patent grants

16 The story of a patent application The end……… (European) Patent is opposed Opposition and Appeal – Written & Oral Patent survives ‘Someone is infringing my patent..’

17 What does the patent attorney do? Understanding an invention Describing the invention Explaining the invention to other people Justifying your description of the invention to other people

18 Story of a trade mark application Client comes up with new brand name/logo File application in UK, EU, abroad Trade mark office examines application to see if the name/logo can function as a TM – i.e. is not descriptive etc. Some examine to see if there is conflict with 3 rd party rights Once accepted, TM is advertised to give 3 rd parties opportunity to oppose, in case of conflict Once objections or oppositions resolved, proceed to registration

19 What does the TM attorney do? Applies for trade marks Advises on availability of new trade marks Deals with objections from trade mark office and 3 rd parties Handles worldwide TM portfolio Assists in resolving disputes

20 What do we do day to day? READ A LOT THINK A LOT WRITE A LOT

21 Here is an example How would you describe a pencil?

22 A pencil An implement for drawing or writing having a solid body of marking material and a cover, the marking material being abradable on frictional contact with a surface so as to leave a deposit on the surface and the cover being of non-marking material, wherein the body of marking material is at least partially enclosed by said cover and progressive portions of previously enclosed marking material may be exposed so as to protrude from the cover.

23 Qualities you need … Patents: good all-round technical and scientific awareness Analytical approach combined with a certain feeling for and a grasp of words The ability to work under pressure TM attorneys tend to have a law or languages background

24 Training Mainly on the job Supplemented by College courses Tutorials Lectures Qualification by exams

25 The route to qualification Patents: At least 4 years to full qualification Start work October 2009 College course October 2010 – part qualified March 2011 UK Final exams November 2011 – UK qualified April/May 2012 European exams March 2013 – European qualified September 2013 TMs: Generally 3-5 years to full qualification European and UK qualifying exams are set together in November. External course to assist passing exams

26 The Good Bits Intellectually stimulating on a daily basis Front-line involvement in new technology Excellent financial rewards Partnership prospects

27 The Bad Bits Length of training Exams Pressure of working to deadlines

28 Want to know more? Inside Careers guide Ask now!

29 QUESTIONS? Mewburn Ellis LLP York House, 23 Kingsway, London WC2B 6HP, UK Tel:


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