GLOBAL INSTITUTE OF INTELLECTUAL PROPERTY

CAREER OPPORTUNITIES

FOR

IP / PATENT

PROFESSIONALS

CAREER OPPORTUNITIES

FOR

IP / PATENT

PROFESSIONALS

The Opportunity India signed WTO agreement in January 2005. Indian companies will have to compete globally, hence the need to innovate, protect and build commercial and business strategy tools

Indian companies, especially SMEs are finding it difficult to manage enormous amounts of IP that they or their employees are generating

Growing number of multi-national (MNCs) and Indian companies investing in R&D activities

Growing outsourcing / off shoring opportunities in the fields of patents and IP from US, Europe and Japan. (due to abundant talent and state-of-the-art infrastructure. Operational excellence that has delivered cost and quality leadership in offshore services centres)

India ranks 2nd among 53 nations in terms of the availability of competent scientists and engineers; it ranks 51st in commercializing research and knowledge-based inventions

India signed WTO agreement in January 2005. Indian companies will have to compete globally, hence the need to innovate, protect and build commercial and business strategy tools

Indian companies, especially SMEs are finding it difficult to manage enormous amounts of IP that they or their employees are generating

Growing number of multi-national (MNCs) and Indian companies investing in R&D activities

Growing outsourcing / off shoring opportunities in the fields of patents and IP from US, Europe and Japan. (due to abundant talent and state-of-the-art infrastructure. Operational excellence that has delivered cost and quality leadership in offshore services centres)

India ranks 2nd among 53 nations in terms of the availability of competent scientists and engineers; it ranks 51st in commercializing research and knowledge-based inventions

National Knowledge Commission’s Recommendations on IPRs

Dear Mr. Prime Minister, October 15, 2007

Educational efforts on IPR must go beyond the IP offices and reach out to scientists and engineers working in national research institutes, universities, industry, the Bar, as well as to researchers and students, not just in the metropolitan areas but also in the smaller towns and rural areas of the country.

Law schools throughout the country must also design specialized up-to-date courses and programs on IPR and the process of creating faculty chairs on the subject must also be intensified through better incentives for academia. Business schools also need to incorporate IPR dimensions in their curricula.

Sam PitrodaChairman,

The National Knowledge Commission

TYPE OF INDUSTRIES

Biotechnology, Bioinformatics Pharmaceuticals Information Technology Chemical, Mechanical Textile Automobile Heavy Engineering R&D & Government Institutions (CSIR)

Modern, Developing, Innovation driven

Where is This Opportunity?

Where is This Opportunity?

POTENTIAL EMPLOYERS

Indian Corporates, SMEs MNCs Law Firms Academia Government (PTOs) Research Institutions KPOs & LPOs Your Own Consultancy

What is The Opportunity?a) Technical Graduates with pure / life science, engineering, pharma, biotech,

software and degrees –

Patent Engineers, Agents Patent Examiners and work with PTO Patent & IP Expert / Advisor / Consultant Patent Prosecutors Licensing and Valuation Experts

b) Legal Graduates (LLB, LLM) with no technical background -

IP Attorney & do IP related litigation services Patent Prosecutors Paralegals and work with law firms in area of documentation and support

c) Legal Graduates (LLB, LLM) with technical background -All of a) & b)

These jobs have a global demand

IP Careers in a Nutshell

Technical Degree Requirements Chart

Prosecution(Acquisition of Rights)

Litigation (Defense of Rights)

PATENTS YES, and… NO, but...

TRADEMARKS NO NO

COPYRIGHTS NO NO

TRADE SECRETS NO NO

YES, and…requires passing the patent bar in order to file papers by yourself with the PTO on behalf of the client; can work without passing the patent bar, but cannot sign anything

NO, but…requires extensive experience in litigation before being able to work on a patent litigation

Registering As Patent Agents

INDIA• India has approx. 1100

Registered Patent Agents

• A basic bachelor’s degree in science/technology/ engineering

• Passed a Patent Bar Exam held Indian Patent Office (under Ministry of Industry and Commerce).

US• Has 30000 Registered Patent

Agents

• A basic bachelor’s degree in science/technology/ engineering/software

• Passed a Patent Bar Exam held by United States Patent Office (USPTO).

Nature of Work

Patent Engineer / Agent (technical graduates)

• Review invention disclosures from inventors• Conduct patentability searches• Analyze, Draft and file patent applications• Conduct correspondence with the local Patent and Trademark

Office (PTO)• Counsel clients on Local and foreign patent strategy

Nature of Work

Patent Examiners (technical graduates)

• Works at PTO• Assess applications for patents by ascertaining that the invention is

new, not merely an adjustment to something which already exists, carrying out searches and making sure application meets all requirements of Patent Office

• Making a final decision as to the novelty of the invention, which is written in a final report

• The Patents are granted, re-examined, reissued by Patent Examiners• Occasionally, becoming involved in specialised work, such as

intellectual property policy, information retrieval and publicity

Patent & IP Expert / Advisor / Consultant (technical graduates)

• Domain Experts • Assist attorney and agents• Coordinate patent application filings in local and foreign countries• Engaged in high end jobs, such as Patent Valuation, Patent Licensing

Nature of Work

Patent Prosecutor (technical and legal graduates)

Entry level• Preparing Information Disclosure Statements, Oath and Declarations, other basic filing papers

(Legal support/paralegal functions)• Freedom to operate/product clearance (document review)• Patentability study (document review)• Legal and technical research• Response to restriction requirements and first Office Actions

Intermediate level• Patentability search and review and preparation of new patent applications (U.S. and PCT

filings) Freedom to operate/product clearance (search and participate in opinion writing)• Validity and invalidity opinions (document review/basic support)• Conduct personal or telephone interviews with PTO Examiners• Response to final rejections• Coordinating prosecution with foreign associates

Nature of Work

Patent Prosecutor (technical and legal graduates) (contd…)

Expert level• Write Appeal Briefs; conduct Oral Hearing at Board of Patent Appeals and Interferences (BPAI)• Validity and invalidity opinions (participate in writing)• Assist as backup counsel in an interference• File ex parte or inter partes re-examination• File re-issue application• Participate in litigation (U.S. and foreign)• Extensive direct contact with clients; begin developing own clients

Nature of Work

Legal Professional (with or without technical background) (works with end customer)

• Patent drafting and prosecution• Patent infringement and validity opinions• Licensing agreements• Employment contracts• Advise on trade secrets, patent strategy, business plans• Interact with foreign patent counsel, litigation counsel, venture

capitalists, auditors

Nature of Work

Legal Professional (with or without technical background) (works with law firm or as independent IP Attorney)

• Discovery• Memoranda• Requests• Motions• Depositions• Trial and appellate briefs• Settlement negotiations• Mediation• Arbitration

Nature of Work

Job Titles

• Patent Attorney • Patent Agent • Legal Assistant / Paralegal / Patent Specialist• Patent Searchers / Technical Consultant• Domain/Science Advisor• Patent Examiner at the Patent Office• Patent Licensing Expert• Patent Valuation Expert• Portfolio Manager• Intellectual Property Head/Manager/Coordinator

Salary Ranges

India

• Patent Agents & other Patent Professionals – Rs. 4-6 Lakhs for graduates– Rs. 6-10 lakhs for PGs and PhDs

• Patent Lawyers– Rs. 2-4 lakhs for freshers– 6-12 lakhs for 3+ years experience

professional

• Patent Examiners – Regular Govt. Scales

Varies with experience and qualificationAttractive income and benefit potentials

US• Patent Agents/Prosecutors -

Average pay is $74,900 a year.

• Patent Attorneys - Starting salaries of >$140,000

• Patent Examiners $ 60,000-95,000