and a career as a Patent Attorney Kate Appleby Trainee Patent Attorney 18 July 2018
Personal Biography Kate Appleby MChem (Durham University) - 2011 PGCE in secondary education (University of York) 2012 PhD in Chemistry (University of York) 2016 Research Associate (University of York) 2016-2017 Joined Marks & Clerk LLP in September 2017 (Edinburgh Office)
Marks & Clerk LLP Largest Patent and Trade Mark firm in the UK, consistently a top EU firm Founded in Birmingham in 1887 by Dugald Clerk and George Marks Scottish Inventor of 2 stroke engine and Lithuanian railway engineer By numbers: 625 people plus Marks & Clerk solicitors 17 offices worldwide
Where are Marks & Clerk? 17 Offices worldwide 1. Aberdeen, UK 2. Birmingham, UK 3. Cambridge, UK 4. Edinburgh, UK 5. Glasgow, UK 6. London, UK 7. Manchester, UK 8. Oxford, UK 9. Ottawa, Canada 10. Toronto, Canada 11. Beijing, China 12. Paris, France 13. Sophia Antipolis, France 14. Luxembourg 15. Hong Kong 16. Kuala Lumpur, Malaysia 17. Singapore
IP: Intellectual Property IP refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images and designs used in commerce World Intellectual Property Organization any product of the human intellect that the law protects from unauthorized use by others Cornell University legal dictionary Patents Trade marks Trade secrets Utility Models Database rights Registered designs Know-How Copyright Unregistered Designs
Intellectual Property What can be protected? Other Inside knowledge Reputation Know-how Copyright Trade secrets Music Typefaces Photographs Documentation Films Trade names Slogans Logos Software New technologies Get-up Product shapes Concept designs Technical innovations Trade marks Packaging Manufacturing processes Designs Patents
What is a patent? A legal document Monopoly right granted by the state for an idea which is: New Inventive Industrially applicable Not excluded Biotechnology: Exclusions Duration of 20 years (maximum) Available for both incremental developments and revolutionary technologies
What is excluded? Any Scientific theories / discoveries and mathematical methods Aesthetic creations including literary, dramatic, musical or artistic works Methods of performing mental acts including methods of playing games / business methods and computer programs Presentation of information as such Any method of surgery, diagnosis or therapy Excludes the amelioration of diseases or disorders vaccinations are excluded Does not exclude cosmetic treatments (so long as they do not fall under surgery ) Does not exclude analysis/treatment of matter outside the body (eg method of testing blood samples may be patentable as long as the blood is not returned to the body afterwards) To fall under a method of diagnosis, a method must include every step of diagnosis
Is it patentable? A method of piercing ears? Yes cosmetic treatments are not excluded so long as they do not fall under surgery Surgery substantial physical interventions on the body which require professional medical expertise to be carried out and which entail a substantial health risk Invasive techniques of a routine character which are performed on uncritical body parts and are generally carried out in a nonmedical, commercial environment are not excluded US4146032
Biotechnology exclusions The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention must be industrially applicable Processes for cloning human beings Processes for modifying the germ line genetic identity of human beings Uses of human embryos for industrial or commercial purposes
Biotechnology exclusions Processes for modifying the genetic identity of animals which are likely to cause then suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes Any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological or other technical process or the product of such a process may be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety Essentially biological processes for the production of plants and animals which are not micro-biological For example introducing a gene so that the introduction of a specific trait is not the result of mixing of genes chosen for sexual crossing
Is it patentable? A method of culturing yeast? Yes - Any variety of animal or plant or any essentially biological process for the production of animals or plants is excluded, not being a micro-biological or other technical process or the product of such a process Also (for interest) plant cells as such, which with modern technology can be cultured much like bacteria and yeasts, could not be considered to fall under the definition of a plant or of a plant variety. Plant cells should be treated like microorganisms.
Why have a patent? Incentive to invent: Some inventions (e.g. new pharmaceuticals) take years to develop, often at very high expense Patents are crucial to protecting market position Primary asset of early stage companies Promotes dissemination of information: Patent applications are published Sufficiency of disclosure The patent system secured to the inventor for a limited time exclusive use of his inventions, and thereby added the fuel of interest to the fire of genius in the discovery and production of new and useful things Abraham Lincoln
What does a patent comprise?
What does a patent comprise?
Patenting process Inventor Patent attorney Identify invention Draft patent application File application at patent office Patent attorney Grant No Objections raised? Search / Examination by patent office Patent Examiner Annual renewal fees Yes Argue/amend claims Inventor Patent attorney / Inventor
What is the role of a patent attorney? Meet with inventors Draft / prepare patent applications Respond to communications from the Patent Office (UK IPO/EPO/overseas offices) Present the applicant s case in writing Hearings and litigation Present the applicant s case in person, or instruct counsel Instruct overseas attorneys, or receive instruction from them Advise on commercial and strategic issues Search for competitor s patents (freedom to operate) Business development / management roles
A typical day in the life 8:50 Arrive into office, make a cup of tea 9:00 Check emails and list of tasks and their deadlines 9:20 Work on first task (typically preparing a response to an Examination Report) 12:00 Attend webinar with training academy 13:00 Lunch 14:00 Meet with supervisor to discuss feedback 15:00 Work on second task 17:00 Leave office Tasks may be: Client meetings Client phone calls Clarification of law with relevant legal body Attending conferences Attending training days Attending company meetings Attending opposition hearings
Typical attributes Interest in science preferably in all areas! Analytical mind finds answers to problems, adept at arguing cases Good written skills can outline clear arguments in very specialised scientific areas The ability to work alone once qualified, most of your work will be independent Good organisation and time management you will have to juggle your workload Interviews: Often several rounds of interview Written tests grammar/spelling, technical writing skills, science knowledge Presentations Might be several panel interviews You should consider Private practice or in-house? Attorney / Examiner / Paralegal / Technology Transfer? Patents or other IP?
The Balance The Good... Interesting Intellectually challenging Variety of work Forefront of technology Professional qualification Earning potential Long term career development future prospects However... Examinations UK and European qualifications, minimum 3 yrs training (typically 5 yrs) Deadline driven
Useful Websites www.marks-clerk.com http://www.insidecareers.co.uk Information, profiles, vacancies http://worldwide.espacenet.com/?locale=en_ep UKIPO https://www.gov.uk/government/organisations/intellectual-property-office The Chartered Institute of Patent Attorneys (CIPA) http://www.cipa.org.uk
Any Questions?
Contacts Kate Appleby kappleby@marks-clerk.com Marks & Clerk LLP 40 Torphichen Street Edinburgh EH3 8JB UK