As technology is quickly evolving, companies require patent attorneys equipped with up-to-date scientific understanding of ongoing developments. In this way, such attorneys are well placed to advise on IP strategy relating to emerging technologies.

What is a physics patent attorney?

A patent attorney is a legal professional who is qualified to advise clients about patents (and often other intellectual property rights) and who assists them in securing patents from patent offices globally.

A physics patent attorney is, as the name suggests, a patent attorney who has a background in physics. However, the technology that such an attorney works with is varied and may include software, electrical engineering, electronics and AI, to name a few.

What’s involved in the role?

A patent attorneys’ primary role is to assist clients in attaining patent protection for their ideas. The bread and butter of the patent attorney role is drafting and prosecution. Drafting requires a patent attorney to write a patent application which describes the client’s invention in detail, and choose appropriate language to protect the core of their idea. For a physics patent attorney, this will typically require applying their broad scientific understanding to become a temporary expert in the technology at hand.

Patent prosecution refers to a back and forth between the relevant patent office and a patent attorney. Usually, an examiner finds prior documents relevant to the patent application under scrutiny and will outline why, in their opinion, a patent should or should not be granted. In response to a negative opinion, a patent attorney will typically argue or amend the application to overcome objections raised by the examiner. Arguments can often be nuanced and a physics patent attorney must use their scientific knowledge to tease out and argue the distinguishing features of the patent application.

As well as assisting clients in attaining patent protection, patent attorneys also advise more generally on IP strategy. This requires an attorney to have a working understanding of other forms of intellectual property including designs, trademarks and copyright. Additionally, patent attorneys conduct freedom to operate searches, which includes providing an assessment of intellectual property in a given field and assessing the likelihood of infringement.

Candidate requirements

Candidates typically require at least a 2:1 in physics, or a related subject. Soft skills include strong written communication and a high level of attention to detail.

Entry routes and training

To enter the profession, candidates apply to open positions for trainee patent attorneys in private practice or in-house. Successful candidates then start work as a trainee.

During their time as a trainee, patent attorneys will be exposed to typical patent work, including prosecution and drafting. They will work with a supervisor to produce work product, which is reviewed and amended with feedback given on how to improve. Training is an iterative process, with a lot of trial and error. Trainee patent attorneys learn the law surrounding patents on the job, and can expect to make a lot of mistakes before they are qualified.

There are a number of patent exams that attorneys are expected to undertake during training, passing these exams ultimately leads to qualification. Patent attorneys are expected to, by the end of their training, be both UK and European qualified. For UK qualification, this involves passing both the foundation exams (or equivalent accredited course) and the final exams. For European qualification candidates must pass the European qualifying examinations. These exams are tough, requiring trainees to balance workload and revision. Many attorneys do not pass first time.

Advice and recommendations

Before applying for the job, one of the strongest recommendations I can make is to look at a patent! Many prospective candidates have never seen a patent application or granted patent. Having an understanding of the structure and language used in a patent application can be very helpful at interview, where questions often revolve around describing simple objects using patent language.