• Name: Isabelle Egerton
  • Job Title: Trainee Patent Attorney
  • Location: London
  • University: St. Andrews
  • Degree: MChem in Chemistry with Medicinal Chemistry
  • Areas of Specialism: Chemistry

Why I decided to join the profession?

Before joining the profession, I spent three years as a Process Research & Development Scientist at Johnson Matthey. I loved my time in industry: the complex real-world problems, exciting science and intellectually stimulating colleagues, but I realised that industry was not quite for me. I did not enjoy the bench chemistry and missed the chance to develop my interests in law and writing.

The patent profession – a blend of technology and law – is the perfect solution for me.

From day one I have been involved in a variety of technologies, all at the cutting-edge of science and finding solutions for patent specific legal issues, that can be put to the client/Patent Office in writing. The science is exciting, and the writing requires a balance of strategic thinking, persuasive writing, and technical precision, which makes work very dynamic.

Current role

Work variety is one of the biggest selling points. On a typical day, I check my emails and personal planner, before writing a to-do list for the day. I would usually have a meeting with one of my supervising partners to touch base and get guidance on cases, which form the foundations of ‘on-the-job’ training.

A lot of my work is spent prosecuting patent applications which is necessary to obtain a granted patent. As each case is a different technology and has a different legal issue, a lot of my time is spent getting to grips with the invention and the issue, and coming up with the best strategies to propose to the client. With a steer from the client, and an understanding of their ultimate commercial interests, it is my job to formulate a clear and persuasive argument as to why the patent should be granted.

Occasionally, I attend meetings with clients or inventors and sit in on Oral Proceedings (patent oppositions and other challenges). With time, I expect my role will evolve to take on an increasingly leading role in those meetings and business development tasks.

What skills are useful for a patent attorney?

1. Effective and concise writing is crucial.

As a scientist, the ability to analyse a given problem situation, and come to a solution are inherent skills of the job. As a patent attorney, there is a new layer of complexity in that the analysis and the solution must be presented clearly, orally and in writing. This might involve explaining a complex legal situation to inventors, engineers and business people. Or this could involve drafting a clear, concise, and technically accurate patent application to your inventor’s invention or legal documents that present persuasive arguments to a patent Examiner or attorney.

2. The details matter.

Accuracy and an eye for detail are crucial. When working in a crowded technological area, or on inventions that are incremental improvements, a focus on a seemingly very minor difference might form the core of your argument, that patentability is hinged on.

3. Prioritising tasks and planning your time are important.

Every attorney will have responsibility for multiple ongoing cases, and each case will have unique needs and different deadlines that have been set to complete tasks. It is essential to prioritise your own tasks and regularly reassess their importance to ensure timely completion. This is particularly key given that most work is entirely independent; and you will have sole responsibility for your cases, later in your career.

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