INTERVIEW

How did you learn about the Patent Attorney profession and what inspired you to become a (European) Patent Attorney?

I had my first contact with (European) Patents during a short-term period as Patent Examiner Assistant in the EPO in The Hague. That experience was a smooth introduction to patents in general, where I acquired a broad overview on how patents significantly contribute to the development of technology in their respective fields.

That made me seek a job opportunity as a patent engineer in the industry, where I would have the opportunity to interact with the inventor from the conceptual stage, up to the filing of a patent application and hopefully up to grant.

Working with other European Patent Attorneys made me admire their mindset, since they could translate technical ideas to valuable IP rights, while complying with complex Patent Law regulations.

Most people know that Patent Attorneys help clients obtain a patent. However, what other tasks are you responsible for? 

As European Patent Attorneys in the industry, a main task is to evaluate any product that is intended to be commercialized in specific geographies, in view of granted patents that are in force in said territories.

This is the so-called Freedom to Operate analysis where we must ensure, with reasonable certainty, that our products are legally compliant with any 3rd party IP rights that are currently in force.

Other tasks, apart from prosecution, may include the delivery of IP landscapes in various technological fields to our R&D team, that will assist the researchers to acquire an overview of the field, while inspiring them to come up with improvements that may result in new patent applications that will further develop our patent portfolio.

Further tasks may also include IP due diligence for a potential M&A transaction, as well as monitoring of the competitor’s patent activity, to provide the business with a substantiated estimation of what kind of technology may be applied by the competitors to their products in the upcoming years.

If you had to split your role into science, law, and business, what is the proportion of each?

I would say that my role consists of 10% science, 60 % law, 30 % business.

What does the team structure at your workplace look like?

We split our responsibilities according to the technical expertise of each European Patent attorney, meaning Mechanics/Electronics and Chemistry. We also have patent engineers covering a wide spectrum of engineering disciplines, that significantly contribute to effective collaboration and to successfully meet the goals of the Intellectual Department.

What does your average workday look like?

The profession includes a lot of deadlines management. And we all know that the deadlines that are set by the law cannot be missed since you might end up even with loss of rights!

The workday may include duties that are related to prosecution in various geographies, review of potential oppositions, IP related work to the business (Freedom to Operate studies, Validity studies, IP landscapes etc.)

An average workday may also comprise performing a patentability study of a concept to evaluate if it is worth allocating more time and resources on a concept that it is very likely to be known in the prior art.

To conclude, a workday highly depends on the needs of our internal clients!

What would a dream workday as a (European) Patent Attorney look like for you?

A lot of grants with a broad scope of protection and no infringement actions!

What is the most exciting aspect of being a (European) Patent Attorney for you?

I find it quite fascinating to be in a profession where you can apply the combination of knowledge that comes from your scientific background and from the legal expertise you acquire during EQE and as a European Patent attorney afterwards.

In addition, I also enjoy the fact that you are a key part of technological innovation in your business!

What are your least favourite tasks?

Searching in databases for patentability purposes. It can become boring…!

Does your job allow you to have time for your hobbies? Do you have any side projects related to patents?

Although I believe that this question is mainly related with the philosophy of each employer and not specially to our profession per se, I can admit that my job provides me with a fair work-life balance that allows me to spend precious time both for my family and myself.

If you could start your career over, would you change anything?

In general no, since I believe that the European Patent Attorney profession fits my personality and character. I would probably learn an additional foreign language, for example French or German, so as I would expand my potential markets for career development.

If the Patent Attorney profession suddenly disappeared tomorrow, what else would you do?

I would probably turn to my mechanical engineering background, and I would try to apply my structural reasoning that is obtained through the attorney profession to the development of new concepts. However, I do not want it at all! I strongly prefer to be a European Patent Attorney!

What advice would you give someone that wants to become a European Patent Attorney?

Firstly, I would congratulate him/her on his/her decision!

I would mention that a critical attitude that he should have, or obtain, is patience. The process for passing the European Qualifying Examination is quite lengthy and challenging and requires strict devotion.

The candidate should know that a significant amount of personal time should be allocated for studying complex legal content, which at the same time should be combined with his everyday duties at work, to acquire a concrete understanding of the patent system. I would conclude that this is a process that is worth the effort. The knowledge you acquire throughout the EQE preparation truly contributes to becoming a confident professional in the patent field.

What do you think about the future outlook of our profession?

I am quite confident that no software tool can replace the combination of legal and scientific knowledge of a European Patent Attorney. Our profession includes the element of subjectivity, which requires proper argumentation, something that I believe cannot be replicated by any software program.

However, we all live in an era where the application of AI is continuously developing, even in fields that we could never imagine. This should not, at least in my opinion, be treated as a threat but, on the contrary, as an opportunity for us to improve some skills where AI can assist, for example in prior art searching.

To conclude, our profession should adjust to the new technology standards and use them as tools for its continuous improvement.