From Examiner to Patent Attorney

From Examiner to Patent Attorney

As a Patent Attorney it’s useful to be able to think like an examiner and doing so is easier if you’ve been one. I started my career at the UKIPO in Newport as a Patent Examiner, a role that required looking at both the technical and legal aspects of a patent application and comparing the invention against those found in patent databases to decide whether to grant a patent. After two years I decide to cross to the “other side of the fence” in search of a new adventure. Jumping to the “other side” dispelled many myths revolving around the profession and helped me to understand that Attorneys and Examiners work toward the same goal: Getting good quality patents granted.

How has being a Patent Examiner helped me in my training?

All new UKIPO patent examiners now go through an intensive training period during the first months of starting which includes lectures and workshops, and this thorough training gave me a robust foundation to the job of the Examiner; Patent law, searching and examining skills, use of searching software as well as internal proprietary tools are some of the topics covered. Following this training, junior examiners are then placed in their target teams based on their background expertise.

My degree in computer science and experience in software meant that I was placed with the computing team where we worked on patent applications related to all types of computer related inventions and frequently excluded matter. This experience helped me to understand what it’s like to put on “an Examiner’s hat” and what a “patentable” application means to an Examiner.

As an attorney I now try to picture what I would have said about an application from an Examiner’s point of view. This helps me to avoid many issues or objections at the very outset. As Examiners and Attorneys are often in contact via telephone or e-mail, it is also easier for me to discuss certain matters with an Examiner as I have a solid understanding of the Office’s internal working processes.

Also, an added benefit to having worked at the UKIPO is getting up to a year reduction of the professional conduct period required to start the EPO exams!

What did I like the most about being a patent examiner?

The UKIPO and examining department are focused on delivering excellent service to their customers.  The culture of work and organisation resembles that of well-functioning corporation, there are key performance indicators in place and processes are carefully fine-tuned and closely looked at to make sure that high efficiency and quality is maintained.

However, there is no direct contact with clients and other aspects of the attorney role – like commercial and business advice. That said, the UKIPO is a big organisation and there are many opportunities to be involved apart from just examining, such as policy or informatics.

What do I like the most about being a Patent Attorney?

The involvement with the clients on many levels which means not just direct client contact and typical patent advice, but also exposure to commercial aspects as to how IP can help clients with their business. There is also an international aspect which includes managing, sometimes considerable, patent portfolios spanning across many countries. The variety of work keeps things interesting, one day you may be concentrating at your own desk on a how to best describe an invention in a new patent specification, and the next day you may be on a plane to Munich for a hearing at the European Patent Office to defend your client’s case.

Having been an Examiner and now an Attorney, I use the combined skills and experience in a Patent Analytics service, specialising in advising IP strategy based on patent data including: portfolio analysis, competitor intelligence, freedom to operate searches, invalidity actions and patent landscapes.

Lastly, but by no means least, there is a great network of trainees in the form of the Informals, which provide support, a voice in the profession and importantly fun throughout your training.

Matthew Veale
Patent Analytics Team Leader

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