‘Where next?’ may sound an odd question from someone who is settled in an established position in a large partnership in our profession, but it has characterised my career throughout the 23 years I have spent in the intellectual property business.
Before my partners become worried (or enthusiastic) that I might be about to leave them, however, I should explain.
The main reason for my remark is that we are fortunate to be practising in times of great change. This means that, in reality, there is no such thing as an established position in an organisation, be it partnership or in-house department. ‘Where next?’ therefore is a question I have asked myself numerous times over the years. A look at my own career should illustrate why.
After graduating from Southampton University with a degree in Mechanical Engineering I spent five years learning the ropes in a large, highly reputable, firm of patent agents in London. I followed the traditional career path at the time of vocation-based training working under two mentors.
Having studied under the tutelage of people who were sufficiently patient to put up with my errors and gently point me in the right direction when I went wrong, I obtained a good grounding in the principles of patent drafting and prosecution. These remain very important aspects of my practice, notwithstanding the large-scale changes that have been going on in the meantime.
In those days one worked essentially as an apprentice to an experienced practitioner, whereas in the modern era the availability of university courses and professionally organised training seminars has added an extra dimension to the training of a patent attorney.
Nonetheless the notion of an apprenticeship remains a strong one in our profession. Thus most graduate entrants to the profession follow a somewhat iterative path of ‘learning through doing’ or, more exactly, ‘learning through doing it wrongly and then being shown how to do it correctly’.
After about five years in my first firm, I decided to test how green the grass was elsewhere. This led me to another London firm, again with a very strong reputation for the quality of its work.
I qualified as a Chartered Patent Attorney, European Patent Attorney and Registered Trade Mark Agent shortly thereafter. As a consequence I found myself assuming gradually more and more responsibility for the affairs of clients. At that stage in my career almost all the clients worked in traditional mechanical engineering areas.
Among other things during this period I started to travel, both to Munich (for hearings at the European Patent Office (EPO)) and to visit clients overseas for the purposes mainly of preparing EPO oppositions and drafting new patent applications.
Eventually, however, I realised that it might be possible to obtain a more varied and challenging career in another organisation. I therefore started to consider employment elsewhere.
The wretched provinces
I had not actively contemplated a move outside London, but I was prompted by a recruitment consultant to consider this possibility. I interviewed with Potter Clarkson (PC) in Nottingham where I was told that there was no position available for me! By this the firm meant that there was not, at the time of my application, sufficient work to occupy a further mechanical engineering patent attorney full-time.
I nonetheless agreed to join the firm and try to develop work during my initial months there. Around the same time, I would acquire some of the portfolio of a partner who was scheduled to retire.
Selling creates work
This period was enormously challenging, since it was necessary to devise strategies aimed at opening up business opportunities and exploiting them to the benefit of the clients and the firm together. Therefore I travelled to Asia, the USA and around Europe where I presented several papers and seminars on aspects of intellectual property work before the EPO.
Fortunately this strategy was successful. I became quite busy, a factor that assisted my progression into the partnership at PC.
Room at the top
In partnership new challenges evolved, in the form of various organisational questions and the retirements of senior practitioners. Dealing with the workloads of such people, so as to maintain the confidence of clients, has been an intriguing and constant aspect of my work in the last few years. I suspect that ‘succession planning’ will remain an important factor in many organisations in our industry in the foreseeable future.
After some time as a PC partner I became conscious that the training of a patent attorney in filing, prosecution and opposition work might not see one through the various legal changes that at the time were gaining pace.
In particular, patent attorneys acquired the ability to conduct litigation in intellectual property matters in the High Court. This opportunity coincided with a general need to become more consultative than perhaps had been the case in the past.
In 2003 I signed up for the Nottingham Law School LLM in Intellectual Property Litigation (plus the associated Postgraduate Certificate in Intellectual Property Litigation). Acquisition of these two qualifications would, with evidence of appropriate experience, lead to the Patent Attorney Litigator qualification.
After many hours work on the academic qualifications, I was awarded both the certificate and the degree in 2005. In January 2006 I received a PAL certificate, based in part on practical experience of major litigation matters it had been my privilege to handle in our firm.
These new qualifications have changed my practice as a patent attorney forever. There are many reasons for this. The main one is that, now, I am able to counsel clients on aspects of intellectual property rights going beyond the mere awarding of a certificate of grant. My advice therefore is more ‘strategic’, and deals with factors that previously were not ones on which I could advise confidently.
Furthermore, the degree provided significant information about aspects of the law on a pan-European scale; and the commercial law generally. As a result my knowledge as a practitioner has enlarged very significantly. I like to imagine that the clients also are happier with the advice, since it is based on a more practical appreciation of what may happen once their rights are granted.
It is worthwhile noting the shifts in the technologies that one has dealt with, over the 20-year period.
In the early days the work was largely in the mechanical engineering sector. Latterly, however, there has been a change since electronics and control technologies encroach ever more firmly into the mechanical engineering sector. Therefore, subjects such as vehicle controls and the interfacing of electronic devices have become just as important as the basic, metal-based engineering work of my earlier years.
Fortunately I have been able to keep myself up to date in the technological sphere through various means. Without these, one could have faced a lifetime of dealing with simple, mechanical widgets interest in which perhaps may have waned over two decades!
To speculate about the work one may do in the future, I believe firmly that the job of the patent attorney, in counselling on and administering litigation subjects, will only grow in importance. Therefore, it is incumbent on our profession to achieve as much expertise as possible in this area.
Furthermore, there is a significant need for patent attorneys generally to be experienced in business matters such that their advice is commercial, practical and delivered at a reasonable price.
The demographics of our profession continue to alter. There are nearly 9,000 patent attorneys in Europe. Many of these have been the subject of ‘grandfather’ qualifications in countries that have joined the European Patent Convention in recent years. There is a strong onus therefore on the practitioners in the three ‘main’ countries (France, Germany and the UK) to operate to the highest possible standards.
At the time of writing we are experiencing the worst recession for many years, and the second to have arisen during my time in the patents profession. Without wishing to tempt fate, however, I should say that so far the work has remained at a healthy level.
This probably is because clients nowadays recognise the importance of a sound intellectual property strategy to their success not only during periods of growth but also when the economy turns down. Historical analyses suggest that patent filings increase during recessions.
Overall my time in the patent attorneys’ profession has been stimulating and great fun. I am delighted to have found a career in which I am paid to do something that I enjoy. The endless fascination, the intriguing nature of the client work and the engaging nature of one’s professional colleagues all combine to provide great gratification. I do not expect, myself, to be taking early retirement from this interesting line of work. The pay is not bad either.