• Role: Patent Assistant
  • Location: Manchester
  • University: Cambridge
  • Degree: Natural Sciences (Experimental and Theoretical Physics)
  • Organisation: Mewburn Ellis LLP

Alex Burns

During my fourth year studying Natural Sciences (specialising in physics) at Cambridge, I realised that neither a PhD nor a job in research suited me. By chance, a friend studying law forwarded me an email from the University Careers Service about a talk on careers in IP, so not knowing what I wanted to do after I graduated, I went along to the talk.

At the talk, I was interested to stumble upon a career which would allow me to use the things I had learned on my degree without becoming too bogged down in one very niche area of physics. So, over the Christmas holidays, I sent off applications to several firms, and after two interviews at Mewburn Ellis, I was offered a job as a trainee patent attorney. Unlike many other graduate jobs, the application and interviews were almost entirely technical, focusing on a broad array of topics ranging from my research project on photonic structures to the intricate workings of kitchen implements.

The job can initially feel a bit daunting but I soon realised that I was not expected to have any pre-existing knowledge of the law and I could make useful technical input into the tasks I was doing. To get to grips with the legal aspects of the job, Mewburn Ellis provide two main types of training.

The first is the ‘on-the-job’ training, learning the practical skills of the trade by working on real cases for real clients. This is under the supervision of a partner in the firm who checks my work before it gets sent out. This ‘on-the-job’ training began on day one, and as I have progressed over the last 18 months, the amount of supervision and guidance I have received has steadily decreased. This training period is split into several six-month stints with different principals so that we can experience a number of different approaches to the job and a variety of different types of client. I started work in our Cambridge office and now work in Manchester with a plan to end up in London when my training finishes.

The second type of training is in the form of a series of monthly in-house tutorials, run by several qualified attorneys and partners at the firm. These tutorials are a lot like university tutorials, and are intended to help us pass the dreaded UK qualifying exams, which I am sitting in six months’ time.

After a year on the job, we have the opportunity to attend the Certificate in Intellectual Property Law course at Queen Mary College in London, which is a four month course studying various aspects of English Intellectual Property Law in detail. As well as this, it is a rare opportunity to be a full-time student on a full salary!

A day in the life

09:00 – I arrive at work and check my email. I have been organising our next in-house tutorial so have received emails from both the tutors and trainees about when they are available. I send out a quick email proposing a date for the tutorial and deadline for sending our work to the tutors in advance.

09:30 – I am currently preparing a response to the European Patent Office for a large multinational client. In the response, we have to reply to a number of objections against our patent application, and convince the examiner that the invention is both new, and not obvious, compared to several ‘prior art’ documents. I studied the documents and started the reply to the examiner’s objections yesterday, so I finish this up, and write a letter to our client explaining what we have done.

10:30 – My principal has forwarded me an email from a client containing questions about the law relating to licensing and the rights of exclusive licensees. I learned about this on the course at Queen Mary, but need to refresh my memory a little before replying to the client so I spend a bit of time looking at various online legal resources before putting together my response.

11:30 – We have had an enquiry via the company website from an individual inventor, and it has been forwarded to me. I give the inventor a quick call and have a chat about the basics of applying for a patent. I send through a follow-up email with more information, inviting him to organise a meeting with us in the office if he would like to pursue his idea. Talking to individual inventors like this is an important (and sometimes nerve-wracking) part of the job for trainees, as it gives us some experience of dealing with clients one to one.

13:30 – I spend a while in the afternoon with my principal going over the response which I had finished this morning. There are a couple of places where he disagrees with my approach and suggests a few changes which I should make before we send a draft of the response to the client. As I have progressed, the amount of time spent going over pieces of work, and the amount of changes which are made by my principal has gone down, but there is still some way to go (and a few exams to pass) before my work will go out unchecked by someone more experienced. I make the changes suggested and then have another quick chat about the response before sending the draft off to the client.

16:00 – Another qualified attorney who works for the firm in a different office has asked me to prepare some written submissions for an oral hearing she has at the European Patent Office in a few weeks, as I have worked on the case with her before. This time round, we have received some instructions from the American attorney who is our client, so I don’t have to come up with all of the arguments myself. The submissions are likely to be very detailed and take a long time, so I spend an hour or so starting to review the case before heading home for the evening.

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