• Bio: Specialising in patent matters relating to computer software, computer hardware and business methods, Karen entered the profession in 2004. She studied a Bachelor of Engineering in Computer Science at the University of Madras, and is a qualified UK, European and Indian patent attorney.
  • Role: Senior Associate
  • Location: London
  • Organisation: Kilburn & Strode LLP

Karen Fraser

Introduction

I specialise in patent matters relating to computer software, computer hardware, and business methods. Much of my work is at the cutting edge of computer implemented inventions, where inventions lie close to the border of patentability in Europe and the UK. I works closely with clients to identify aspects of their inventions that are eligible for patent protection.

I have a Bachelor of Engineering degree (B.E.) in Computer Science from the University of Madras (Chennai, India), which has helped me to integrate and interact seamlessly with my hi-tech clients. I am experienced in drafting and prosecuting applications across a broad range of technologies in the IT and electronics sectors and I advise clients on infringement and validity matters. Particular subject matter I work with includes data processing and retrieval, telecommunications, protection of sensitive data in compliance with Data Security Standards, user interfaces and data storage devices, among many others.

I manage the global patent portfolio for several of my clients, prosecuting applications in multiple jurisdictions including Europe, the US, India and Australia. In addition to being a European and UK Patent Attorney, I am also a registered Indian Patent Agent. My global outlook and experience allows me to provide strategic, commercially focused advice to clients, to enable them to align their IP strategy with their business objectives at all stages of the patenting process.

Why did you choose a career in the industry?

After 4 years of studying computer engineering, I decided that I did not really see myself as a software developer or coding expert, which is what many of my college mates were pursuing. I wanted a career in which I could make more of a direct impact in the commercial world. This made me investigate other career options where I could use my technical background as well as learn something more interesting and better commercially focused. In Chennai, India, in 2004 (when I graduated), the awareness and importance of Intellectual Property (IP) and patents for us ‘then students’ was not much; but a conversation with a family member who worked in an administrative role in this sector made me look into IP more. It sounded like exactly the thing I was looking for, and a fantastic opportunity to be able to work with inventors and companies to help them achieve their commercial goals, whilst learning IP law – which was completely new to me. It was this fascination that made me approach an IP firm in Chennai to learn about patents and what it means to be a patent attorney. I loved it so much, that now 14 years on I have never even once imagined the possibility of doing any other type of work!

What is a ‘typical’ day like for you? – be honest, too!

A working day for a patent attorney will vary depending on the stage you are at. Typical everyday jobs include working with my clients to understand the technical aspects of their inventions to draft and file patent applications and responding to the official objections by the UKIPO or EPO raised against their patent applications.

As I have developed more in my career many of my days now involve planning and participating in business development and client care meetings, trips and events; preparing strategic IP plans and workshops for my clients based on their present commercial focus and needs; planning and participating in internal programs and activities. I also help on the development of my team – such as managing training and mentoring for trainee patent attorneys and helping to recruit new talent.

What do you enjoy most about your job?

The client facing aspect of my role. I love this job because I think this is one of the few “tech” professions where there is a lot of interaction with clients. I love being part of discussions where I get to offer advice relating to my expertise in IP that commercially impacts clients’ business plans, and establish how best to work with them to achieve their aims. When I hear from my clients about positive outcomes and that my advice and input has helped bring to their business – it is a great feeling for me!

Do you have any advice for anyone wanting to get into the industry?

Yes – it is worth noting that while most of the work is indeed related to technical matters, and maybe even closely related to one’s degree or project: the patent laws and rules in place dictate how we are to use the information we have, to obtain a successful grant. Therefore, the job involves a lot of training under a qualified attorney (3 years at least), numerous rather difficult examinations and a skill for writing a lot of letters – both to your client and the patent office to explain your position as clearly as possible to obtain the result you want. Many new joiners are generally surprised by the number of letters and emails that are an integral part of the job – so please bear in mind that it is not just all about dealing with cutting edge technology all the time!

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