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An ordinary patent attorney is a bona fide whiz with words


September 11, 2019

Ari Parta, European Patent Attorney and director of Kolster Helsinki Patents unit, thinks that he is “completely ordinary”. However, verbally describing new inventions in patent applications requires an exceptional amount of technological expertise and patience. 

I studied electrical engineering in Tampere and specialised in power electronics. The first time I heard about Kolster was when I was working on my master’s thesis at ABB, which was already a customer of Kolster. I applied for a vacant patent attorney position without knowing anything about the IP industry.  

I need technological expertise in my job constantly as I verbally describe the operation and structure of new technical devices in patent applications. In order to be able to describe the invention with sufficient accuracy and clarity in the application, you must thoroughly understand the characteristics and operating principle of the invention.

My strongest area of expertise relates to electric motor drives. It is a matter of controlling electric motors with frequency converters, which are much researched and developed in Finland. Even though most of my day-to-day work is managing patent issues, as a supervisor I also take care of the distribution and progress of the work of the patent attorneys in our unit.

“Oral proceedings require the ability to respond”

The patenting process is mainly carried out in writing from start to finish. When we seek the revocation of a competitor’s patent or, alternatively, a competitor tries to revoke the patent of our customer, an opposition is filed. The processing of the opposition may lead to oral proceedings. In that case, the opposition proceedings are settled on the spot in front of the examiners of the European Patent Office. Oral proceedings are the most memorable as individual tasks because they differ from the usual slow pace of patenting.

In these proceedings, you must try to orally convince the examiners as to why the counterparty’s patent should be revoked or why the patent of our customer should remain valid. You must have your case clearly in mind in order to be able to present the matter without documents. You also need to be prepared to respond to a constantly changing and progressing situation.

“People want to learn new things”

Verbally describing new technologies is sometimes challenging, even though I have twenty years of patenting experience. Inventions related to doctoral dissertations, for example, are often so technologically advanced that it is difficult to produce an accurate and clear written description of the invention’s operation. I notice my own development from the fact that experience has trained the eye and, as I write a patent application, I find details in the material that I might not have noticed before. 

Kolster has been taking good care of me since 1997. My work is interesting and there are always new things to learn. I think that a person is mentally dead if he or she no longer wants to learn new things. For example, nowadays, motor drives involve a lot of new data transfer and software technology that goes beyond my own technological expertise and that I would like to learn more about. Patent protection of software also involves special characteristics that require continuous learning.

“Concrete results take months”

Supervisory duties involve a lot of miscellaneous, routine personnel matters. However, the most challenging part is recruitment. IP is not the most common dream field for Finns, and industry, for example, attracts so many graduates that our smaller and less known industry is not exactly overcrowded. But many who end up in the IP industry even by chance also stay on this path, as did I.

Most of my working hours are spent on patent-related customer work, such as drafting patent applications or responding to official actions. Communication is particularly close with new customers. Often customers roughly know how a patent can be used to protect the results of product development. My task is to explain how the invention to be protected must be described in the patent application and how the actual patenting process will proceed.

In concrete terms, the application and patenting process starts with securing sufficient materials. I review every possible piece of written material I have received from the customer and check what the customer still needs to do in order to have an efficient start to patenting. Sometimes the information provided by the customer may not be sufficient to write a comprehensive patent application or the core of the invention remains unclear. In that case, we meet and I collect the necessary additional information.  

The work of both a supervisor and an attorney requires calmness and a special focus as we rarely achieve quick results. Writing a patent application is in itself valuable to the customer, but it takes years to obtain the actual patent. A special characteristic of my job is hard work towards a goal whose concrete results will not be visible until months or even years later.

“You have to be versatile and international”

Nowadays, our customers are clearly hoping for more and more versatile IP services for protection.  Help is increasingly needed for the commercialisation and licensing of patents, for example. Part of our professional expertise is identifying customers’ IP needs and the skill to provide them with tailored options and solutions from our extensive offering.

Another clear IP trend is internationalism. In principle, most of our attorneys are European patent attorneys, meaning that we are positioned as European operators also with respect to the title.

At home, I am completely ordinary and use what little free time I have doing different everyday activities, often laying on the couch. I grew up in Jämsä in central Finland, and now I live in Porvoo. Nature has always been important to me, and I like leisurely outdoor activities. I think that I am a boring person, but I am okay with my boring self. So there is nothing wrong with it then?

Interested in an IP career?

We are looking for senior or future patent talents also in our Helsinki Patents unit, please contact:

Ari Parta
+358 50 552 6594