About the European Patent Attorney profession

INTERVIEW

Marija Tomic

Country: Serbia

Company size: 50-100

Experience: 20+ years

Type of work: Private practice and EQE tutoring

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

Soon after I started working at the Faculty of Biology, University of Belgrade, which was my first job, I also started working as a freelance translator for patent translations. At first, I did not know what that was all about, but very soon I became passionate about receiving new instructions and getting to know about the subject of the protection of the next PCT patent application. Later, I found the job at private practice and I started working there as in-house translator. Besides translating patents, I also translated some other documents related to patents and I started helping attorneys at law with some technical patent questions. They also introduced me to novelty and inventive step concepts. Very soon, I was reading patent law and solving different requirements received from the clients from all over the world.

It is especially important for me to underline that the EPO’s candidate support program (CSP) helped me a lot to become a European Patent Attorney.

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

I also translate patents, I am a coach for the EQE students, recently I was engaged to hold a lecture at the Faculty of Biology, University of Belgrade for students on doctoral studies. I would say that my role is almost fully related to law and only partly to science. The business part is present only occasionally when in contact with Serbian inventors.

What does the team structure at your workplace look like?

We have several different teams divided firstly in two groups – people who work on trademarks and those who work with patents. We have a team consisted of attorneys at law. Secondly, administrative staff is divided in several teams having their own team leaders. There is also a team comprising Patent Attorneys and patent translators. Regarding the latter, we have our own pool of external associates who work at the University and in Industry.

What does your average workday look like?

My average workday mostly comprises organization of the work related to patent prosecution, patent translations, doing patent translations myself. Also, answering to my colleague’s emails if there are some legal questions. I also work on infringement cases, do different analysis of the scope of protection and invalidity, help other colleagues to file replies to office actions, tutor colleagues in patent matters.

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

I really enjoy tutoring others for the EQE or national patent attorney exam. Also, I like solving legal questions and doing infringement analysis. Translations are not part of the European Patent Attorney job, however, I have been doing that for so long that I am very experienced and feel confident in that.

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

The most exciting aspect of being a European Patent Attorney for me is solving legal questions. It is the most interesting when there is, on a first sight, unsolvable patent situation and I still manage to make a patent application survive. For this reason, EQE Paper D exam was my favourite.

What are your least favourite tasks?

The most difficulties in this profession arise in meeting needs of clients not familiar with basic principles related to patents. For example, client already prepared the description and claims, but he omitted essential feature, because he is afraid that someone will steal his invention. Of course, I explained what a patent is and I talked about sufficiency of disclosure, clarity, scope of protection etc.

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

My side project is being an EQE tutor. Besides working in the private practice company and being an EQE coach I do not have any time left for additional patent projects. As an EQE tutor, I enjoy meeting new people and talk with them each week during the 6-month preparation period.

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

The only thing that I would change is to pass EQE exam earlier. However, I did not have an opportunity to do that earlier. The job itself is much easier after passing the exam, because only after passing the exam you have all the knowledge needed to find solution to different patent situations.

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

I would translate scientific articles or science books maybe. I could work on a protection of trademarks as I have some experience with trademark prosecution and searches. My national patent attorney exam also comprised a part related to trademarks.

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

I would suggest working hard on a preparation of EQE exam, especially intensive learning for D exam. Also, I would recommend passing this exam as soon as possible. After passing the exam, everything falls into place.

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

I don’t think that the profession will change a lot in the future. Technology will help and accelerate the job in some aspects, but I think it may also slow it down in others.

For example, although CAT tools are extremely useful for translations in general, in my opinion patent translations are faster and more accurate without CAT tools.

Due to constant increase of patent information, we are witnessing fast development of different useful software tools for making databases and searching and analysing the data.