Careers in patents

Careers in Patents

Patent Agent

In Canada, patent agents are members of a professional body; they are registered before the Canadian Intellectual Property Office (CIPO) and specialize in this very unique area of intellectual property protection. Rigorous conditions, including a professional examination, need to be met to become a registered Canadian patent agent.

Patent agents prepare the applications that describe and claim inventions and submit them to the Patent Office.They argue the merits of the claimed invention when the application is examined. Patent agents are the only professionals empowered to represent applicants before the Canadian Patent Office. A patent agent can provide invaluable counsel regarding the protection of an invention in an effort to maximize the value of the patent and create the broadest protection for an invention.

A patent agent can work in IP firms or law firms of all sizes, may be a sole practitioner or work in-house for corporations, government agencies or universities.

For information on how to become a patent agent, click here.

Lawyer

A lawyer who practices in patent law may do some or all of the following: 

  • Prepare legal documents and legal opinions
  • Negotiate settlements of patent disputes
  • Perform administrative and management functions related to the practice of patent law
  • Advise clients on intellectual property issues
  • Advise on the registrability of patents, patent licensing requirements, transfer of intellectual property and protection of existing patent rights
  • Plead clients' cases before courts of law
  • Consult with foreign associates and attorneys on international patent matters
  • Perform the work of a patent agent if registered (see above)
A patent lawyer in private practice works in law firms of all sizes or may be a sole practitioner. An in-house lawyer may work for corporations, government or universities.

Patent Paralegal

A patent paralegal usually works in IP firms or law firms of all sizes or in corporations.

  • Assist lawyers or patent agents by preparing prosecution and other documents relating to intellectual property
  • Enter deadlines and update patent databases
  • Monitor and pay maintenance fees
  • Compile, verify, record and process prosecution documents, licenses, assignments and other documents using docketing and information systems
  • Draft correspondence and perform general office and clerical duties

Patent Docket Clerk

A patent docket clerk usually works in IP firms or law firms of all sizes or in corporations.

  • Compile, verify, record and process prosecution documents, licenses, assignments and opposition documents using docketing and information systems
  • Enter deadlines and update patent databases
  • Organizes and co-ordinates flow of work

Patent Assistant

A patent assistant usually works in IP firms or law firms of all sizes or in corporations.

  • Assist lawyer or patent agent in preparation of correspondence and legal documents relating to intellectual property
  • Schedule appointments, meetings and conferences for employer
  • Set up and maintain filing systems to manage patent portfolio
  • Determine and establish office procedures and routines
  • Prepare letters reporting application milestones to clients
  • Other general office work

Patent Examiner – Canadian Intellectual Property Office (CIPO)

  • Patent examiners read and analyze patent applications
  • Determine if the patent applications comply with the Patent Act and Patent Rules.
  • Communicate with the applicant or the applicant's patent agent if their application does not comply with the Patent Act and Patent Rules.
  • Consider responses from the applicant or the applicant's patent agent.
  • Recommend the grant or refusal of a patent.

Technology Transfer Officers

 Technology transfer officers normally work in educational (e.g. universities or colleges) or research institutions.

  • Can work with commercial partners to obtain research funding or to help negotiate terms of research collaboration
  • Monitor the research of faculty and researchers, and accept and review invention disclosures
  • Evaluate the strengths and opportunities of innovations 
  • File for IP protection where there is deemed to be commercial potential
  • Market resulting IP to industry for potential licensing or sale
  • Can also work with students