• Bio: In the patent profession, Richard Gibbs saw a career path that would satisfy both his natural curiosity about how things work and his emerging interest in business. He discusses his career development and current role in patent prosecution.
  • Role: Partner
  • Location: Glasgow
  • Organisation: Marks & Clerk LLP

Richard Gibbs

I started out wanting to be either an architect or an animator, but after nine years at university gaining two degrees and experience of lab work and lecturing, I realised that pursuing a career as a patent attorney was the path for me. I joined the profession in 2003 and have recently been appointed Partner at Marks & Clerk where I specialise in biotechnology inventions, advising my clients on all matters concerning intellectual property.

Why I pursued a career as a patent attorney

My long-standing interest in science and technology, and natural curiosity to find out how things work, makes a career as a patent attorney the obvious choice – although I did not know that 20 years ago.

Throughout school I had a particular interest in biology and I went on to study for a degree in medical microbiology at the University of Edinburgh. After completing my degree I was still undecided as to my career; I knew it would involve science and I considered a career in academia. After a period as a lab technician I decided to study for a PhD and it was during this period that I entered the Biotechnology and Biological Sciences Research Council (BBSRC) sponsored young entrepreneur business competition.

The organisers ran a weekend of seminars and workshops that taught aspects of business and finance to science graduates. For the first time, I was able to appreciate just how important intellectual property is to the biotechnology industry. I realised that a career as a patent attorney represented the perfect way to fuse my passion for science and technology with my new found interest in business.

Qualifications and training

Most firms require that you qualify both as a chartered (UK) patent attorney and a European patent attorney and to this end, it is necessary to pass the UK and European examinations. Training for these exams is conducted on the job and usually involves organised in-house lectures and tutorials to help you develop all of the skills, knowledge and experience necessary to pass the exams. There are also a number of externally-run revision courses. The exams are held each year and it is possible to tailor your progression to ensure you sit exams only when you are ready for them.

The exams test everything from your ability to know and understand intellectual property law to your ability to draft patent applications, assess complex infringement or validity issues and apply this knowledge in practice. It generally takes between four and five years to become fully qualified.

I opted to spread my UK foundation exams over two years and in my third year I sat the UK advanced papers, and my European examinations in years three and four. At present, the UK exams consist of a set of five foundation exams followed by four advanced papers. To achieve European qualification you must pass the preliminary exam and then the four finals papers. In total there are now 14 exams to pass to achieve UK and European qualification.

The exams are hard; it is not uncommon for trainees to fail exams and re-sit – but with hard work and the right support you can get there. Marks & Clerk is one of the few firms to run its own ‘training academy’, bringing together trainees from across the UK firm to actively support their learning and establish a useful peer network.

My current role

I have a varied practice and regularly meet with inventors from local academic institutions and businesses to discuss new innovations and prepare patent applications. This is one of the most enjoyable parts of the job and I am privileged to learn first-hand of some of the remarkable innovations taking place around us.

I am most regularly involved in what is known as patent prosecution: assisting my clients to obtain granted patents by guiding them through the various national patent systems and addressing objections raised by patent examiners.

I also work with a large number of foreign clients; this adds to the variety of work I tackle each day. For example, in addition to drafting patent applications and general patent prosecution work, I handle patent assignments, infringement and validity issues, and provide reports to help my clients assess the scope of patents in a particular field. On any given day you may find me drafting a patent application, preparing a response to an examination report and reviewing a draft scientific manuscript for new intellectual property.

As a new Partner at Marks & Clerk I am also responsible for a team of people, and I must work with the other Partners of the firm to ensure a constant flow of work into the business. As such, a crucial part of my job is business development and client care, and as part of this I will often attend and organise events for clients, as well as make trips to visit foreign associates.

In addition to my patent work, I am actively involved in training our new recruits so that they not only gain the knowledge necessary to pass the exams, but also the skills and experience for career progression through the firm.

Advice for prospective recruits

Competition for training positions is intense and it is important to make your application as attractive and interesting as possible. Most life science graduates approach the profession with a number of higher education qualifications, and a PhD is increasingly common. While a PhD is not essential, it is true to say that most trainee patent attorneys will have a strong academic background. Those successful in securing trainee positions will also exhibit a broad interest in science, have exceptional written and oral communication skills, a keen eye for detail and a diligent and conscientious nature.

Make sure you research the profession and speak to as many people as possible in order to understand what it is that we do and the services we offer. Becoming a qualified patent attorney requires a great deal of drive and commitment, and interviewers will be looking for those people they perceive best able to deliver this.

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