“Understanding the Role and Process of a Patent Attorney in the Chemistry and Pharmaceuticals Industry”

Patent Law Training: A Journey into Intellectual Property Protection

David, a trainee at Potter Clarkson LLP, a renowned UK and European patent and trademark law firm, is currently undergoing a rigorous five-year training program in patent law. Specializing in the chemistry and pharmaceuticals department, David is learning the intricacies of patent protection, a critical process that safeguards the intellectual property of clients from potential competitors.

Understanding the Patent Process

David’s training is a blend of practical experience and theoretical knowledge. His daily tasks involve dealing with real patents, with each piece of his work meticulously reviewed by a qualified patent attorney. His training covers all aspects of the patent process, from drafting and filing patent applications to defending a patent in countries where his client seeks protection.

When a client approaches the firm with a product to be patented, David’s role is to create a comprehensive patent application. For instance, if a client presents a family of 30 related anticancer compounds, David drafts a single patent application that covers all these compounds and any future ones suggested by the client. This process involves identifying the common core chemical structure of the compounds and detailing all possible functional groups attached to this core.

Patent Drafting: A Complex Task

David spends countless hours drafting a patent, ensuring the wording is precise and unambiguous. He incorporates test data provided by the client, such as nmr data and biological test data, to confirm the compounds’ anticancer properties. Once the patent application is complete, it is filed with the World Intellectual Property Organisation (WIPO) for a preliminary examination of its patentability.

The patent application is then sent to patent offices in each of the client’s nominated countries for independent examination and granting. This process can be time-consuming and challenging, often requiring David to spend more than five hours researching and composing a carefully worded letter to defend an issue with a patent application.

The Intersection of Patent Law and Innovative Science

David’s work in patent law keeps him at the forefront of scientific innovation. He enjoys the challenge of working on patents for a wide array of chemical products. After qualifying, David will play a crucial role in protecting the futures of chemical companies, with millions at stake every time.

David’s Pathway to Success

David’s journey into patent law began in 2008 when he joined Potter Clarkson LLP as a trainee patent attorney. Prior to this, he served as a regulatory affairs officer at a contract research organisation in Derby from 2006 to 2008. David holds a PhD in bioinorganic chemistry and an MSci in chemistry from Nottingham University.

This article, a collaboration between PhD student Rachel Bolton-King and Education in Chemistry, aims to shed light on the complex and fascinating world of patent law. It was originally published in InfoChem.