What are your main duties/roles?
In the role, you’ll get experience working on many aspects of a patents’ lifecycle. This includes working with clients to understand their invention and its commercial relevance during drafting. We will then proceed to prosecute the application before the patent office. During prosecution, we receive reports from an Examiner who may raise objections on an application’s patentability. It is our job to respond to the objections raised by presenting arguments and, sometimes, amendments in order to advance the application. A third aspect of the job is to prepare for oral proceedings in front of the patent office.This may be in response to an exam report during prosecution if an agreement cannot be reached between the applicant and Examiner, or as a result of an opponent filing an opposition to get a newly-granted patent revoked. The attorney’s job is to understand the relevant arguments made and prepare and present our arguments in response.
The exact diet of work is very dependent on your technical field as well as the work of your manager. As such, independent of the work’s nature, a key role of a trainee is to help support your manager in the work relevant at that time.
Do you have any advice for anyone wanting to enter the profession?
I hugely benefited from doing a vacation scheme as it gave me an insight into what the role really involved. I also found open days very useful to show interest in firms and the career as a whole. Vacation schemes are typically quite competitive, so it’s best to monitor when applications are open and apply early. This advice translates to applying for trainee roles. I found having a spreadsheet for firm’s application dates and application progress which I periodically updated very useful.