Based on our investigation into the recent court and IP Australia decisions on patentability of four Aristocrat software innovation patents, we present three actionable steps in this article for patent attorneys and innovators to reduce subject matter objection risk for software patents from the outset. This article also gives an example of a certified software innovation patent without the subject matter objection raised during certification.
How to become a patent attorney
A patent is a government granted monopoly that provides a patent owner the exclusive right to prevent others from making, using or selling an invention that is the subject of the patent in any country in which the patent has been granted. The typical term for the monopoly granted by a patent is 20 years from the original filing date of a patent application.
Patent attorneys are intellectual property attorneys who are responsible for writing and filing patent applications. It is also their duty to protect the rights of their clients, the inventors and their patents, before organisations such as Patent and Trademark Offices (PTO). The work of these intellectual property attorneys is meticulous in nature and involves preparing and then arguing the validity of patent documents, where the meaning of each word can count towards determining individualised monopolies of protection.
Requirements for becoming a patent attorney
To become a patent attorney in most countries, including Australia, you must first obtain a technical undergraduate degree in a field of engineering or science. Then, you need to obtain relevant qualifications and experience in intellectual property law.
Can you become a patent attorney solely with a law degree?
No, a law degree alone will not qualify you for this IP career. Patent attorneys require in-depth technical understanding of a patentable field as well as specific training and experience in intellectual property law.
How to become a patent attorney without a legal degree
In some countries, including Australia, Canada and the United States, you can work as a patent agent without ever being required to become an attorney-at-law. In Australia, a ‘patent agent’ is also known as a ‘patent attorney’, hence the confusion in comparing job titles across jurisdictions. Nonetheless, a patent agent still needs to have an engineering or scientific bachelor qualification and have studied the relevant intellectual property law course required in their jurisdiction. Depending on jurisdiction, some practical experience working under a registered patent attorney may also be required. In Australia, you will require two years of practical experience working under the supervision of a qualified Australian patent attorney with at least 5 years post qualification experience.
How to become a patent attorney
The best way to become a patent attorney is to complete an undergraduate degree in a hard science or engineering subject, followed by a postgraduate qualification in law (or specifically intellectual property law). In addition to having an interest in the technical fields you studied in, you should also have a passion for legal argument, be persuasive, and possess an eye for detail. As a patent attorney, you should also have strong commercial awareness so that you can understand and support the business objectives of your clients.
Why you should become a patent attorney
As a patent attorney, you can ensure that inventors receive fair compensation for their efforts by helping them to secure and protect exclusive rights to profit from their invention for a period of time.
Patent attorneys are tasked with assessing whether inventions are innovative and new, as well as determining which inventions are eligible for patenting. Patent attorneys are specially trained to draft patent applications and have to be equipped with knowledge of intellectual property law so that they can lead companies and inventors through the required process of obtaining their patents and commercialising their inventions. They also act to protect inventors when their rights are infringed.
Responsibilities of a patent attorney
The responsibilities of a patent attorney are to:
- Write detailed technical / engineering / scientific descriptions of inventions using very exact language in the proper formats.
- Write patent claims to define the legal scope and variations of the monopoly conferred by the patent when it is granted.
- Ensure that the filing, examination and renewal related deadlines of IP rights are met.
- Stay up to date with legal developments in the intellectual property field in your jurisdiction and other major jurisdictions.
- Discuss a client’s inventions and the patent processes with inventors and licensees.
- Enforce and defend patents. In some countries, including Australia, this is done by working closely with barristers and solicitors.
- Mentor and tutor trainee patent attorneys.
The day-to-day working life of a patent attorney
It is advisable for a patent attorney to be part of a team with whom they can share views and perspectives and from who they can learn. The work can involve a lot of pressure at times, as a result either of working on many different patent applications within a short space of time or of needing to meet inflexible deadlines that arise during the patent process. Despite having a traditionally quite narrow scope of work, being a patent attorney has excellent career prospects.
As in every profession, it is always challenging for a new trainee to gain a foothold in the profession. In some parts of the world, such as the UK, US and France, competition is fierce, and new trainees are encouraged to apply for regional positions. The majority of a patent attorney’s work is office-based, but it is not uncommon for them to travel to meet with clients, particularly if they are sole practitioners.
Skills needed to become a patent attorney
Patent attorneys need to have the following skill sets:
- A high level of diligence and attention to detail, as accurate monitoring of legal deadlines is crucial.
- Excellent written and communication skills with both team members and external parties such as patent offices, as the communication of complex concepts is often required.
- An understanding of technological and scientific principles in the relevant fields of technology you are practising in.
- The ability to express technical ideas that are complex in a concise and exact manner.
- Workload management skills, as patent attorneys are normally managing a portfolio of several hundred cases at any given point in time.
Employers of patent attorneys
The main types of employers for patent attorneys are large industrial companies and private practice firms. Industrial companies that employ patent attorneys vary across a wide range of innovative fields, including software and fintech, industrial processing equipment, food, medical devices, pharmaceuticals and biotechnology. Private practice firms often have IP career pages on their websites that patent attorneys seeking employment can view to find out about positions being advertised, or about the size of the firm and the technology areas they cover. If you are a trainee patent attorney, you would generally do best to apply to patent attorney firms that practice in the technology area you are trained in, as they are more likely to be interested in you.
Remuneration for a patent attorney
Just like in any IP career, the salaries and benefits of being a patent attorney vary with the position you hold, your experience level and your location. According to the 2016 annual survey by IP recruitment firm the Patent Attorney Job Board, salaries for trainee patent attorneys range from AUD 50,500 – AUD 80,000 p.a., with remuneration increasing as experience grows, as shown below. Salaried partners in patent attorney firms can earn as much as AUD 200,000, with equity partners achieving up to AUD 300,000 or higher. The higher salary ranges are typically seen in NSW and Victoria, while patent attorneys in SA and WA tend to receive lower levels of remuneration.
|No. of years’ experience||Remuneration range (AUD)|
|< 2||$65,000 – $100,000|
|2 – 5||$90,000 – $130,000|
|5 – 10||$100,000 – $180,000+|
|10+||$125,000 – $200,000+|
Professional development for a patent attorney
To maintain registration as a qualified patent attorney, attorneys must, in most countries, undertake continuing professional development each year. To do this, you can attend webinars and seminars on intellectual property law or on patent work. Such seminars may be organised by either a national Institute of Patent Attorneys or other relevant organisations.
Working abroad as a patent attorney
In countries such as Germany, the Netherlands, France and the UK, there has been an increase in the number of candidates that are passing the European Qualifying Examination (EQEs) in order for them to become European patent attorneys. Private and public patent law firms are accepting and employing patent attorneys from different jurisdictions, such as the Commonwealth and Europe, in order to keep up with the demand for their services.
How to become a patent attorney in Australia and New Zealand
Since February 2017 there has been a single regulatory regime for patent attorneys in Australia and New Zealand. Registered trans-Tasman patent attorneys can practice in both countries. To become a registered patent attorney in Australia or New Zealand, you must meet the following requirements of the Trans-Tasman IP Board:
- Have a Level 5 (or higher) qualification under the Australian Qualifications Framework (AQF) or the New Zealand Qualifications Framework (NZQF), or an equivalent qualification from an overseas institution, in in a field of technology that contains potentially patentable subject matter.
- Complete accredited courses covering nine prescribed topics:
- Legal process and overview of intellectual property
- Professional conduct
- Trade marks law
- Trade marks practice
- Patent law
- Patent systems
- Drafting patent specifications
- Interpretation and validity of patent specifications
- Designs law
- Be of good character.
- Have been employed for ‘two continuous years or a total of two years within five continuous years’ in positions that provide experience in:
- searching patent records
- preparing, filing and prosecuting patent applications
- drafting patent specifications
- providing advice on the interpretation, validity and infringement of patents
How to become a patent agent in Canada
To become a registered patent agent in Canada you will need to:
- Complete a series of four qualifying exams in a span of four days.
- Before you can register for the examination you must have at least 24 months’ practical experience in the area of patent law and practice, with at least 12 of those months worked in Canada. To obtain a position as a patent agent trainee you will be required to have a degree in science or engineering.
How to become a patent attorney in the UK
To qualify as a patent attorney in the UK, you must meet the following requirements:
- Pass examinations set by the UK Patent Examination Board. There are two levels of examination – you must pass the foundation level exams before progressing to the final exams the following year.
- To be eligible to sit the foundation exams you must have a degree awarded by a UK institution (or overseas equivalent) in a science, technology, engineering or mathematics subject.
- Most candidates receive on-the job training working with a qualified patent attorney prior to attempting the exams.
How to become a European patent attorney
To become a European patent attorney, you must sit the European qualifying examination (EQE). However, before you will be eligible to take this exam you must:
- Have a suitable qualification, such as a university degree in science or technology/engineering.
- Have three years’ experience working in the European patent profession, under the supervision of an appropriately qualified individual.
- Pass a pre-examination paper.
How to become a patent attorney in the US
To become a registered patent attorney in the US, you must meet the following requirements:
- Be admitted to practice law in at least one state in the US territories.
- Have an adequate technical and scientific background so that you are able to fully understand your clients’ inventions.
- Pass the patent bar exams that are used to test a candidate’s understanding of the procedures for issuing patents.
- Be of good moral character and reputation.
If you are not an attorney but meet the other requirements – i.e. you hold a qualification in a scientific or engineering subject and have successfully passed the patent bar exams – you can become a patent agent. As a patent agent you can prepare, file and prosecute patent applications with the USPTO, but you cannot provide any legal advice or represent clients in any legal proceedings involving a state or Federal court.
Note: If you are seeking information on how to become a patent attorney in California, the requirements are the same as above.
How to become a patent attorney in South Africa
To practice as a patent attorney in South Africa you must:
- Complete a technical or scientific degree or diploma or equivalent alternative qualification.
- Obtain a law degree (LLB) from a prescribed South African University.
- Pass the statutory examinations set by the South African Patent Examination Board. Prior to sitting the exams it is strongly recommended that you gain three to six months’ experience with a patent law firm or the Companies and Intellectual Property Commission.