While patent attorney is a highly specialised profession, the career paths before becoming a patent attorney and the practical experiences gained on those career paths may differ drastically. First, there is the direct route to become a patent attorney right after finishing a STEM degree at a University by joining a patent law firm as a patent attorney trainee. Second, there is a route that starts in the R&D department of a technology company. Some engineers or researchers are entrusted with the in-house patent matters and the interactions with attorneys at law firms. And some of them acquire patent related qualifications themselves, such as patent engineer or also patent attorney. While many patent attorneys will stay during their whole career either in-house or in private practice, some also gain professional experience in both environments. In the following we want to explore the advantages of having industry experience as a patent attorney in a law firm.

Understanding of the industrial research process

Although all patent attorneys need to have a solid background in STEM, often they acquired a PhD degree, practical experience of the industrial research environmental is beneficial. While in University research the focus is on gaining knowledge, companies are doing research to develop technologies for products, which have to create economic returns. Therefore, the research processes need to be structured in a different way and cater to the needs of the market and consumers. Additionally, the amount of research, which can be done, is limited by the company’s budget. This requires the balancing between striving for a superior technological solution and avoiding high expenses for small technological improvements. A patent attorney, who has working experience is such an environment, can better consult inventors and guide them through the patenting pitfalls during the R&D process, so that they obtain a patent protection, which protects the technological aspects the company needs, while staying in the tight budget.

Understanding of company functions and decision making processes

While in Universities and law firms many experts with similar qualifications are working together in a single organisation, technology companies have various departments with different functions within the organization. This structure arises from the large number of specialists with complementary qualifications, who have to work together in a technology company to reach the goals of the organization. Therefore, a solid knowledge of the decision making processes within such a departmental organization are critical for a patent attorney. Only this way, they will understand the motivations and goals of both the business decision makers and the inventors in the R&D function. Without this understanding the development of patent portfolios that support business goals will be challenging.

Understanding of business language

Finally, every professional environment uses their distinct language and this is no difference for the business world. While researchers and patent attorneys share a technical background and language, this is in general not true for business people and patent attorneys. Here, practical working experience within a company and frequent interactions with managers help to foster an understanding of the business language. Patent attorneys with an industry background are typically better suited to talk with business decision makers and other company representative and discuss with them in their language how patents can help their business. This does not only support the company to generate patents, which are fitting better to their business goals, but also the law firm, which can deepen the relationship to their clients and thus generate more business.