• Role: Technical Assistant
  • Location: Cardiff, Bath and London
  • University: Bath
  • Degree: BSc Physics & Philosophy and MSc Science, Culture and Communication
  • Organisation: Abel & Imray

Michelle Claydon

I have always been very interested in science, but it was clear to me even before leaving school that a career in research didn’t appeal. Instead, when I graduated from Bristol University with a BSc in Physics and Philosophy, I decided to go into science journalism.

I did a one year Masters in science communication and then landed a job with the publishing arm of the Institute of Physics, where I spent three years and worked on several publications.

I eventually decided that publishing was not for me, but the experience and skills I picked up as a journalist have proved very useful in my current role as a trainee patent attorney.

The patent attorney profession attracted me because the work provides the opportunity to be involved with the latest developments in science and engineering without being restricted to a single area of research. It also provides the chance to use my writing skills, albeit in a very different way to what I was used to as a journalist.

I joined as a trainee patent attorney (known in the profession as a technical assistant) in 2008. We are a medium-sized firm and have offices in Bath and Cardiff as well as London. I am mostly based in the Cardiff office, which is the smallest and newest of the three.

One of the best things about being a patent attorney in private practice is the fact that the work is very varied. There is, therefore, no such thing as a typical week, but the following diary describes examples of some of the types of work I do.

Monday

I arrive at work at 09.00 and my first task is to look through my new emails in case anything needs urgent attention. Nothing urgent has come in, so I get to work looking at a search report from the UK Intellectual Property Office that needs to be reported to a client.

When we file a patent application, normally we request the Patent Office to perform a search – that is to trawl their databases for patent documents published before the filing date of our application which appear to describe an invention having some or all of the same features as the invention for which we are seeking patent protection.

A few months later the Patent Office will send us a report consisting of a list of ‘prior art’ documents, categorised according to their relevance to our client’s invention. How much prior art has been found, and how relevant it is, can be a good indication of how easy it will be to get patent protection for the invention, so clients often ask us to look at each of the cited documents in detail and produce a report explaining how relevant to the patentability of their invention each appears to be.

Tuesday

In the morning, I sit in on a meeting with a prospective new client. One of my colleagues explains how the patent application process works and what costs are involved, as well as what other types of intellectual property protection (such as registered designs) might be appropriate. We also discuss with the inventor exactly what their invention involves. Many people opt to file a UK patent application without having done any searching to see what prior art is out there.

However, this inventor has asked us to conduct a brief search of a free online patent database before deciding how to proceed. This task falls to me, and I spend half an hour on it, while the details of the invention are still fresh in my mind.

Wednesday

On Wednesday I usually work in the firm’s Bath office. When in Bath it is usual for me to spend a chunk of the day discussing work I have done with the responsible partner, and getting new work.

Today I am handed a first examination report that has been received on a US case. For a patent application to be granted, it must first pass examination by the relevant Patent Office. An examiner, in this case at the US Patent and Trademark Office (USPTO), will search for prior art documents that describe the key features of our invention.

They will then produce a report explaining why the documents they have found mean that the claims of our patent application are not novel – i.e. there is an earlier document that discloses all of the features of that claim –and/or are not inventive – i.e. there is an obvious combination of documents that discloses all of the features of that claim. Positive reports do occasionally come in, but that could suggest that we should have tried to seek broader protection!

My task is to decide whether the examiner is correct in their criticisms of our claims, which means carefully reading the prior art documents that have been cited. Once I have formed an initial opinion, I then need to draft a letter to the client summarising the examiner’s objections and suggesting how we can overcome them.

Thursday

Today I am back in Cardiff. An email has come in from a client with a pending patent application who is concerned about a press release they have just seen. The press release describes a new product made by a competitor that sounds quite similar to the technology for which our client is seeking to get patent protection. They have therefore asked us to check whether this could affect the patentability of their technology, or, on the other hand, fall within the claims of their pending patent application.

The first step is to ascertain whether the new product could be prior art for our application, so I need to search the internet for publicly available documents relating to it, dating from before the filing date of our patent application. I don’t find anything, and I feel pretty confident that details of the new product have only just been released.

I then need to look at the claims of our pending application and assess whether they might cover the new product. In this case it seems like they could; however it is also quite likely that we will have to narrow the scope of our claims in order to get our patent granted. I call the responsible partner to explain what I have found, and he then drafts a reply to the client.

Friday

Nothing new comes my way this morning, so I finish off drafting my comments about the search report that I started considering on Monday. In the afternoon we get an email from the prospective new client we met on Tuesday. He has decided not to pursue patent protection for his invention, but is interested in filing a registered design. I am asked to draft a reply to him explaining how the registered design application process works and the costs that are involved.

Once I’ve done this, and cleared my desk of a few admin jobs, such as preparing a bill for a client and making sure my timesheet for the week is up to date, it is 17.00. Since today no one has any urgent work to keep them in the office, the Cardiff attorneys head to the pub to end the week with a well deserved pint.

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