Why did you choose to go into IP?
As I came to the end of my PhD in particle physics, I knew that I didn’t want to stay in academia. I learned about the patent profession and I liked the idea of a job with a scientific focus, being at the cutting edge of new technology but also applying legal skills and “real world” commercial knowhow. Plus I’ve always loved a good argument!
What was the application and training process like?
I started as a trainee at a firm in London. The interview process was demanding but fair, and if you are technically able and a good fit for a firm then that will come through. I found that I really enjoyed working with clients and learning about their technology, as well as the intellectual process of drafting a patent application and arguing in its favour.
Alongside my casework, I prepared for the professional exams. These are difficult, but I was part of a great community of trainees from different firms who were all doing the exams together, and I made lifelong friends. I managed to pass my exams on my first attempt, and suddenly I was in the nerve-wracking position of being able to sign off work in my own name.
How did you get your job at Marks & Clerk?
After working in London for several years, I decided to move back to the Midlands and applied for a position at Marks & Clerk’s Birmingham office. The attorneys I met were very friendly, and I was attracted to working for a big firm with a large range of interesting clients in different technical areas. They offered me a job, and I came on board as a senior associate.
What are your main duties at Marks & Clerk?
My main day-to-day work is drafting and prosecuting patent applications at the UK Intellectual Property Office and European Patent Office, as well as international IP offices such as the US Patent and Trademark Office. Drafting involves discussing a new invention with an inventor, and preparing a patent application to try to cover the key features in the broadest possible way. Prosecution involves responding to objections raised by a patent examiner, which can include arguing against the objections and also amending the patent application to alter its scope of protection. Both of these require me to understand the technical detail of the invention, as well as the legal basis for objections raised by the examiner.
I also work on other things, including pitching for work from potential new clients and attending advice clinics to talk with start-ups about IP issues. I have recently started working with the Marks & Clerk Training Academy, which provides a structured training process to help our trainees prepare for their professional exams.
Do you have any advice for anyone wanting to enter the profession?
I think this is a fantastic career path for someone with a science/engineering background who wants to work at the cutting edge of technology whilst also learning to apply legal and commercial skills. The exams are difficult but passable with good preparation, and you’ll be learning on the job doing “real work” from the very beginning of your training.
I would advise anyone interested to do your research on the field in general as well as the specific firms you are applying to. No one expects you to be an expert – I had never picked up a patent application before I started looking into the career – but trainee positions are competitive and a realistic understanding of what the job involves will help you stand out.
