Why I entered the patent profession
When I graduated I wanted to be an industrial scientist working at the forefront of technology, making my own inventions. I was aware of the value of patents to businesses through my research work. I joined a research group at a multinational telecommunications company, tasked with designing around a competitor’s patent.
Although I enjoyed my time in industry, I discovered I would rather understand just enough about how a lot of different things work, rather than the intricate details of a single specialised device. I decided that a career as a patent attorney would satisfy my desire for varied technical insight, and provide a great opportunity to develop other skills.
Qualifications and training
Entry into the patent profession is extremely competitive. In order to secure an interview you will need to demonstrate more than just a solid academic record. In many instances, candidates will have completed post-graduate studies such as PhDs or, like myself, will have spent time working in industry.
What’s critical is that you have a well-rounded CV and demonstrate you have the right personality and characteristics to be a competent patent attorney. Clear, concise communication skills are essential; meticulous attention to detail and excellent time management skills are also required.
Once you have landed a position, there’s a steep learning curve. Although the exams are annual, the route to qualification is flexible so you can choose, in partnership with your employer, how many you sit each year. For my UK exams I did half of the foundation papers at the end of my first year, the other half at the end of my second; half of the advanced papers the following year and those remaining at the end of my fourth year. It’s also necessary to qualify as a European patent attorney and I opted to sit all of my European exams in one sitting in my fourth year; by that time, I just wanted to get them out of the way!
As well as support from your employer, you need to commit to home study in order to pass the exams. Despite glowing academic records, it is common for trainees to fail some exams and need to re-sit. The more advanced papers test not just what you know, but how you would apply that knowledge in practice; so working with a variety of people and having a varied exposure to different types of work in your role is important.
Marks and Clerk is one of the largest firms in the UK, so I had the advantage of working with colleagues with both breadth and depth of experience.
My current role
I have a strong UK practice which means that I get to meet with inventors on a regular basis in order to prepare, file and prosecute mechanical, electronic and software-related patent applications, in the UK and internationally.
I work with clients in a wide range of industries and have experience in many technical fields. It is common to work on several different cases each day, each at different stages of prosecution. I might start the day reviewing and advising a client on a search report from the UKIPO, followed by preparing a response to a European examination report, instruct a local agent to file an application in the US, then draft a patent application for a new invention.
No two days are the same, but what is consistent is the strong team ethos at Marks and Clerk, our shared commitment to providing excellent client service.
In addition to patent work, I handle several registered design applications. I advise clients on contentious and strategic matters relating to patents, registered and unregistered design rights and copyright.
Business development is crucial to maintaining and developing our client relationships; as a partner my duties involve providing intellectual property training to clients, speaking at conferences, preparing tenders and writing articles. I am the leader of the Marks and Clerk Design and Copyright Practice Group, which involves promoting these areas of intellectual property and developing related systems, training and marketing materials. I provide in-house new joiner and operational training and mentor trainees.
Goals for the future
As a relatively new partner at Marks & Clerk, I hope to become more involved in local business operations, driving forward our business strategy to strengthen our position in the marketplace, whilst continuing to develop my client practice and the team around me.
My next career goal will be to aim for partnership in the international business of Marks & Clerk, and to make a contribution on a global scale.
Advice for potential recruits
It’s important that you research the profession and are confident that you have the enthusiasm and aptitude to be successful. Unlike some professions, being a patent attorney is a long term commitment: if you are suited to the job it’s likely you will enjoy a long, challenging and rewarding career.