What is the role of a Formalities Officer?

It takes a whole range of disciplines to run a successful Patent and Trademark firm. The role of Formalities Officer is a key position for many reasons and we’re fortunate to have an incredibly skilled Formalities team within our own office here at Mathisen & Macara.

But what are a Formalities Officer’s main responsibilities? What does a typical working week look like and what does it take to qualify for the role? We answer your questions about one of the most valued positions within our business.

What does a Formalities Officer do?

The Formalities Officer is the person responsible for much of the documentation associated with each patent or trademark application that goes through the firm, from the initial filing with the patent office, through each and every filing deadline during the course of the application.

Applications for Patents and Trademarks are often lengthy, detailed, and require precision at every step. It’s also an international field of law, so if your client is from another country, the Formalities Officer also needs to be aware of who has the right to be ‘Applicant’, as well as legislative nuances from each applicant’s country. For an application to be successful, all the above details need to be present, on time, and 100% correct – so accuracy is key.

To keep on top of the various actions and deadlines for every application, details are input into a database, which is guided by strict rules and regulations. The Formalities Officer is responsible for these deadlines and the database upkeep, as well as internal systems, ensuring that the Patent Attorneys complete application actions in line with the timescales.

The Formalities Officer is also the responsible person for collective legal and fee requirements from the clients.

The role of Formalities Officer is a diverse and rewarding one. As the same with all professionals operating within Intellectual Property, over time Formalities Officer may specialise in particular disciplines and industries, becoming experts in their field, in their own right.  

What does a typical week look like?

Each day for a Formalities Officer is likely to include emails and post as well as checking and updating the database for all current applications.

Formalities Officers work very closely with our Patent Attorneys, so week to week duties are likely to see close working with the wider team, perhaps even meetings with Patent Attorneys to discuss various client applications. At Mathisen & Macara, we pride ourselves on outstanding client service, so each Formalities Officer is likely to have weekly client communications to carry out too.

The international nature of Patents and Trademarks also means that each week there are phonecalls and emails required to representatives in other parts of the world.

We’re a close-knit and friendly team at Mathisen & Macara, so working on the Formalities team here is most likely to be rewarding and enjoyable – due to the supportive and encouraging working environment.

How do you become a Formalities Officer?

To become a qualified Formalities Officer, you need to complete the Patents Administrator course with the Chartered Institute of Patent Attorneys (CIPA). CIPA are the professional representative body for all practitioners within forms of Intellectual Property, and there are a variety of courses and accreditations that can be completed – so there is a ladder to climb there, for those who are ambitious.

The Patents Administrator Course is thorough, lasts around six months, and ends with a comprehensive exam. If taking the course, you’ll cover topics like electronic filing, introduction to the necessary systems, and handling communications from national and international offices.

If you’re wondering what professional qualities might be useful in becoming a Formalities Officer, a detailed and organised approach to work is helpful – since there can be lots to keep on top of with various deadlines across various applications. Confident communication skills are also useful – as there’s a lot of liaison and communications with offices and representatives across the globe.

Here at Mathisen & Macara, we all have different roles and expertise within the Formalities team, but we’ve all completed the Administrators course so it’s a supportive environment where we all muck in when required. The business itself is people focused, so you can be sure of feeling valued and encouraged in your day-to-day role.