Career Spotlight: insights about working as a patent attorney

We were joined by Dr Marianne Shepherd and Stuart Lumsden from Marks & Clerk, and Dr Robert Andrew from Mewburn Ellis.  You might like to find out about last year’s speakers here.

Both main speakers (Marianne and Robert) struck me as really interested in their science, quietly determined to make the most of their knowledge and delighted by the technical intricacies of attorney work.  Sound like you?  Read on!

Marianne has recently joined the firm, from a molecular biology PhD at Oxford, and says that she chose patent attorney work because it would be intellectually stimulating, broaden her knowledge, and enable her to use her technical knowledge.

She described the work as a way for inventors to gain protection of their work from the state, and for them to control exploitation of the work.  Patent applications work both ways: you get the patent rights, but you also have the disclose the information about the invention too.

Her day includes

  • providing information to inventors about whether or not their work is patentable
  • describing the invention to make an application – you have to widen out the description to cover future commercial applications
  • preparing the patent application for the Patent Office
  • preparing response to any Patent Office objections, which involves reading documents and understanding the invention very clearly.

The application process for her was much the same as many standard graduate schemes.  She attended Open Days at various firms’ offices, and also sent some speculative letters.  Interviews are reasonably tricky, but so long as you are well-prepared about what patent attorneys do and are clear about the technical knowledge that you bring them, they are not particularly different from other interviews.  You will, though, probably be given a drafting exercise, where you may have to describe something (eg a pair of scissors or a pencil) so that they can check your grammar, proof-reading, and the clarity of your thought processes.

Training should be very comprehensive and one of the distinguishing features between firms is how much training support they offer.  You train for four years, with a partner of the firm over seeing your work.  You qualify both as a UK and EU patent attorney (there is no language requirement) and have lots of exams.  This may well be the first time you have ever failed an exam but it is known that people will fail!!!  Once you have passed these exams, you could work as an independent patent attorney, or stay working for a firm.

She says that patent attorney work is not really a job for those that need social interaction face to face: much of the time you are working on your own or over the phone and email.

Robert is a more senior patent attorney who completed a PhD in 2006.  His areas of work now extend across industrial enzymes, stem cells and dental implants, for example.

He said that what clients are paying for is attorneys’ detailed knowledge of the complex system, and the global connections firms have.  His work, in addition to that that Marianne undertakes, includes defending patent decisions in the EU courts (eg Brussels) where you are doing oral objections, a bit like a barrister.  You are ‘thinking fast about science’!

As you become more senior, then you might take more of a business development role, such as, for example, going to work with a client company in Korea to understand their business better.

Skills required:

  • to be able to read, think and write a lot
  • good all-round technical and science awareness
  • analytical approach
  • a feeling for an grasp of words
  • communication
  • working to deadlines and under pressure

It is a relatively secure and well-paid profession, 80% of the work in the UK is in London, there are good opportunities to become partner, and it’s a very independent role.  The hours are good and you could go and work in-house just for one client company.  Languages are useful when working with clients, but not to do the job.  You bill by 6 minute slots of your time!

See CareersTagged for more information about this role.