Career in patent law

Written by Helen Yu-Chan Chiang

Patent Law is a branch of law that grants the inventor an exclusive right to use and profit from his/her invention, thereby granting the inventor a monopoly over the invention with the exchange for a full disclosure of his/her invention to the public. This exchange acts as an incentive for researchers and companies to constantly improve existing biotechnological products (such as drugs and medical devices) and processes (such as harvesting energy or cleaning oil spills) through innovative means.

Previously I have posted an article on career as a patent examiner as a type of a government job available to science graduates. As a reminder, patent examiners work under the Canadian Intellectual Property Office (CIPO) and they review patent applications filed by inventors or their representatives (i.e. patent agents or patent lawyers) to determine whether an invention warrants the monopolistic protection of a patent.

Patent agents and lawyers, on the other hand, can be thought to work on the other side of the coin, where their ultimate goal is to obtain patent permission from the patent examiner. This process of obtaining a patent, called prosecution, involves a lengthy period of time (sometimes up to a few years if we look at the severely backlogged United States Patent and Trademark Office, for example) and back-and-forth correspondence between the patent examiner and the inventor or his/her representative.

Working as a patent agent or lawyer, like any other area of law, requires an eye for detail. The meticulous wording of every sentence in a specification or claim part of the patent application is essential to building a strong claim that would withstand future legal attacks. An example of how different interpretations of a wording in a patent specification can alter the outcome of a court ruling is the case of Gillette Co. v. Energizer Holdings, Inc.No. 04-1220 (Fed. Cir. April 29, 2005). In this case two companies, Gillette and Energizer, battle over an existing patent that Gillette holds on a 3-blade razor and the possible infringement of Energizer’s 4-blade razor on Gillette’s patent. Gillette’s patent claims a safety razor blade “comprising a guard, a cap, and a group of first, second, and third blades

[…]”. Initial ruling determined that based on its interpretation of this claim, Gillette only had rights to a 3-blade razor and not a 4-blade razor, therefore Energizer does not infringe upon Gillette’s patent. However, on appeal, a different interpretation was reached by the Federal Circuit in which the claim terms “comprising” and “group of” were construed as open-ended and could allow for the inclusion of additional features, such as a fourth blade, that were not explicitly laid out in the claim itself. This led to the decision to reverse the initial ruling and remand for the development of a more complete record on claim construction.

The advantage of having a science background in this area of work is your understanding of the scientific invention for which you draft the patent application. Often times, the technical jargon of science makes it difficult for the inventor (the scientist) to accurately relay the various technical attributes of his/her invention to a patent agent who does not possess a science background. With experience in reading research articles and communicating with other scientists, graduate students in the life sciences have developed skills that allow us to understand new inventions and discoveries through written and verbal communication.

The road to becoming a patent agent or lawyer can be relatively challenging. The differences between a patent agent and a patent lawyer in Canada are as follows:

  • The patent lawyer has a law degree, whereas the patent agent does not necessarily have a law degree.
  • One must have passed the Patent Agent Exam in order to become a registered patent agent. Therefore, patent lawyers who have not passed this exam are not considered registered patent agents. Only registered patent agents are permitted to represent clients before the Patent Office in obtaining a patent application.
  • Patent agents do not appear in court and do not litigate on behalf of their clients, and they solely deal with prosecution of patents with the Patent Office. On the other hand, for cases involving litigation or drafting an agreement between two parties related to a patent, a lawyer is required.
  • For more information, this video offers a good explanation on the differences between a patent agent and a patent lawyer.

The Patent Agent Exam consists of four papers which cover the areas of patent drafting, validity of a Canadian patent, response to an office action, and infringement of a Canadian patent. As reported by CIPO, the global pass rate of the 2011 round was less than 10%, and the average successful candidate required 3 to 4 years to pass the examination. In order to write the exam, the candidate usually has at least one year of experience working as a trainee in the field.

Working in the field of Patent Law can be a very rewarding experience, since one is constantly faced with cutting edge technology and with a wide exposure to all the different areas of science. Interested in more information? Here is an excellent blog posted under Nature blogs discussing the experience of a few individuals on their paths to becoming a patent agent/lawyer.

By |2018-09-06T21:06:23+00:00March 25th, 2013|Helen Chiang, Potential Careers|0 Comments

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