posted 24/2/2014 by Nicole
Most people have heard of patents for protecting inventions and trademarks for protecting brands. My job is to help inventors and innovative companies get that protection, and to enforce it once they have it. I focus mainly on protecting inventions in the ICT and engineering sectors and I get to work with a blend of large and small clients, and local and international clients.
The job requires a blend of technical and legal skill. In order to prepare a patent application I have to first understand, at a technical level, exactly what it is that an inventor has invented. Thankfully I don’t do this alone, and get to combine my background technical knowledge with the inventor’s deeper knowledge of the specific technical area. I then have a creative role in writing the application and crafting the legal claim to protect their invention. Once an application is prepared it is submitted to the patent office for examination, since a patent can only be granted if the invention is new. My role is then to negotiate with the Examiner to identify what aspect or aspects are new and patentable. I also get involved in other intellectual property (IP) aspects such as enforcing patents when they are infringed, and assisting clients in protecting designs and trade marks (brands).
I became a patent attorney after following an unusually diverse scientific career. I studied physics and applied mathematics at the University of Adelaide and obtained a Bachelor of Science with honours in experimental physics. As an undergraduate I also picked up vacation scholarships with the CSIRO in their radio astronomy division, and in the lens design group with a lens manufacturer. I then did a PhD in in experimental astrophysics helping to build and calibrate an accurate timing system for a cosmic ray detector located in the Utah desert. This involved a combination of hardware, software and data analysis skills. After my PhD, I took a job with DSTO working as a researcher in explosive blast effects (think real-life MythBusters). After a few years I then switched fields to work as a bioinformatician to assist biologists to understand the genetic basis for diseases and cell development. This role involved designing experiments using high throughput gene analysis platforms that can study tens of thousands of genes at once, and analysing the results to try and make sense of the complex biological systems being studied.
After working as a researcher for 8 years, I left the coal face of scientific research to become a patent attorney. There were various aspects that attracted me to becoming a patent attorney. It is a job that allows me to maintain a strong connection with science and engineering, with the legal side of it providing intellectual challenges and requiring creativity in order to maximise protection for new inventions. I also get to work in a dynamic medium size firm, with good job security and financial reward for effort, with the potential for high rewards in the long run.
I have certainly enjoyed having a diverse career but it has not been without stress or compromise. Scientific research is exciting, but the funding is tough to get so job security is low, and the financial reward for effort is often low. My advice to people considering a career in scientific research is to keep a realistic eye on the funding situation, and have a backup plan if things don’t work out as planned. A science career can lead you anywhere, but sometimes that is out of necessity rather than design or choice. That being said I enjoy my career as a patent attorney and don’t regret the change. I am valued by clients for my ability to talk to them technically and provide them with the IP advice and assistance they need. One of the reasons I originally chose a scientific career was to find out new knowledge and to help people, and ultimately that is what I’m still doing.