A patent agent acts principally for his clients in the prosecution of patents, rendering his advice on the patentability of their inventions, drafting the patent specifications, and the prosecution of the patent applications before the patent office.
In addition, patent agents are familiar with the requirements of the patent laws in the jurisdictions that they practise in, and possess general knowledge of the patent laws in other jurisdictions. They advise clients on the strategies to be employed in overseas filing and the course to proceed at various stages of the patent application.
A patent agent is thus specially trained and qualified, often with a technical background, in order to provide such services. Please refer to the next section for some preliminary information on the patent agent regime in Singapore.
Technology transfer managers generally work on the transfer of rights and in commercialising new discoveries and innovations resulting from research to another party. The work of the technology transfer manager can include working with the inventor on the disclosure of innovations, ensuring the protection of the innovation through patents or other means, balancing the need for publication of scientific research with the need for protection of these rights, and exploring opportunities to maximise the potential of an organisation's Intellectual Property (IP) assets.
An IP manager is in a managerial position to oversee the management and administration of a company's IP assets. Such in-house processes can include the disclosure and assessment of innovations, establishing and monitoring internal IP databases and systems, ensuring protection if needed through patenting or registration of other rights, and licensing the rights to the industry for commercial development.
Lawyers specialising in the area of IP are constantly provided with opportunities to be exposed to the cutting edge of R&D in many scientific and technical areas, as well as new business opportunities of their clients. Their work can include assisting clients identify the extent of their IP assets, applying for registration of these assets, enforcing and defending their clients' IP rights, maintaining watch for IP breaches and advising on litigation action. IP lawyers can also work with their clients in advising on procedures in the organisation to administer and manage IP processes and assets. Last but not least, they can also advise on commercialisation aspects involving these assets, including licensing and collaboration negotiations.
In any office that deals with IP work or has an IP portfolio, IP administrators and para-legals are some of the most indispensable people. Generally IP administrators/para-legals have a myriad of roles to fulfill in the office. These roles will differ according to the size and needs of the company or legal firm. Equally, the exact nature of the legal work undertaken on a daily basis will also vary.
The actual role of an IP administrator/para-legal can cover a broad spectrum of administrative work apart from IP specific work. IP specific work can include preparing patent or trade mark forms for filing, coordinating the assistance of foreign counsel for international applications, undertaking searches, as well as tracking deadlines for the prosecution of patents and trade marks.