Jen, Trainee Patent Attorney at Marks & Clerk, shares their experience since joining the firm.
From 2018 to 2022 I completed an integrated Master’s degree in Theoretical Physics at the University of York. Once I finished my degree, I joined Marks & Clerk in their London office, as a Trainee Patent Attorney in the Software and Electronics department.
Why Did I Choose a Job in this Profession?
One of my own great enjoyments is learning new things, and so my plan had always been to stay in academia and pursue a PhD. However, during the completion of my Master’s project I realized that I wasn’t engaging with research as much as I had hoped I would. I made the decision to start applying for graduate jobs, but found myself overwhelmed with the sheer volume of roles available, and how little I felt like I understood what most of them would be doing on a day to day basis.
When I first saw an advertisement for a career as a patent attorney, it immediately stood out to me. The opportunity to take my technical background and apply it in a legal context felt hugely exciting, and the prospect of working with the cutting edge of modern inventions felt like a perfect compromise between my enjoyment of learning, and my lack of enjoyment of academia. I began to focus my CV and applications on patent attorney openings, and found myself interviewing for Marks & Clerk.
What was the Application Process like?
I found the application process for becoming a patent attorney refreshingly simple compared to the other roles I’d been pursuing. After submitting my CV and cover letter, I was invited to a first round interview held via Zoom. Half of the interview was focused on the technical side of the job, but I found that they weren’t necessarily interested with what I already knew, but how I approached what I didn’t know, and the deductions I was able to make in the process. As almost everyone entering the patent profession is new to the legal side of things, no knowledge of patents or patent law was expected, but I found entering the interview with an understanding of the basics of patent law helped to set me apart from the rest of the candidates.
The second round interview was in person, and involved meeting a few of the members of the team I’d be joining, and having a more in depth discussion about my own technical background, as well as an example task involving a brief invention description and a few similar inventions, where I was asked to articulate the key differences between them. The important task here was to demonstrate my ability to accurately and concisely get to grips with different technologies and use my understanding to differentiate between the inventions, which is a day to day skill for a patent attorney.
What are your main duties?
As a trainee in the Electronics department, I work for a wide range of clients, ranging from individual inventors and small enterprises, all the way to multinational companies. The bulk of my current work involves preparing responses to objections raised by Examiners during the prosecution of a patent application. For an application to be granted, an Examiner has to view it as novel and inventive over the current state of the art. Examiners will perform a search to determine similar inventions, and raise objections based on any perceived similarities between our invention and the results of the search. When preparing a response, my key role is to determine the best way to address those objections. If I think there is a key difference that the Examiner isn’t observing, I can choose to argue against those objections. Alternatively, I can choose to make amendments to the application, to further differentiate the application from the similar inventions. The result is a balancing act between ensuring a patent application is sufficiently distinguished from any similar inventions, and maintaining a scope of protection that the client is satisfied with.
Alongside this are a plethora of other tasks, including: drafting patent applications, recording assignments and other changes in particulars on the relevant registers, preparing cost estimates, and meeting with new and existing clients to maintain relationships and build new ones. The variety of tasks, not to mention the variety of technologies in question, means that a patent attorney needs to be able to think on their feet and adapt to new information quickly, but it also ensures that it doesn’t get boring.
What would you like to achieve in the future?
The UK patent exams are held in October, which means that my focus until then is on revision of the relevant law and information to pass the foundation exams. Once I have been in the role for two years, I will be eligible to sit the European patent exams, and so I hope to attain dual qualification in the UK and Europe. In the longer term, I would like to be a part of the in-house Training Academy that Marks & Clerk uses to prepare trainees for their foundation exams.
Interested in learning more about Marks & Clerk's opportunities? Check out their profile here.