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Meet Mark – Trainee Patent Attorney at Marks & Clerk

Book open Reading time: 3 mins

Mark, Trainee Patent Attorney at Marks & Clerk, shares their experience since joining the firm.

Why did you choose a job in this profession?

It’s always hard to know exactly what a job will be like before you start it. But, after spending time talking to people in the profession (and reading this guide!), I had a feeling that a careers as a Patent Attorney would be something I’d enjoy. 

Having worked in a different field for a year after graduating, I was missing chemistry (if not necessarily the chemistry lab!). I was keen to get back to something which made use of my science background. I also knew that being a Patent Attorney involved a lot of writing in one way or another, e.g. making written arguments or drafting applications, which is something I have always enjoyed.

During my interviews at Marks & Clerk, I had several opportunities to talk to different people in the firm and everyone was very friendly. It was this that persuaded me to move into the profession, and I’m pleased that I did!

What are your main duties/role

At M&C, trainees have an opportunity to get stuck-in to plenty of interesting and substantive work, pretty soon after joining. No one expects you to get everything right first time and I’ve had a lot of support and guidance from my supervisor. It’s satisfying to feel that you are getting better at things as time goes on! 

When I first started, I worked mainly on the prosecution stage of the patent process, trying to overcome objections from patent offices. As I have progressed, I have started to get involved in drafting patent applications - translating experimental data from the client into patentable claims that reflect a broader inventive concept. Both aspects have a good balance of analytical problem-solving and more creative writing. 

Aside from the core attorney work, there are other things to get involved with too. Recently, as part of our office’s business development work, I have been involved in contributing to online articles about inventions and innovations from the local Cambridge area. 

What skills are useful in this sector/profession?

A curiosity to understand how things work and to problem solve is useful within the role of a Patent Attorney, as you need to understand the client’s invention, to help best protect it. You won’t necessarily have come across the technology being discussed, before, so you often need to do some research and get to grips with it quite quickly.  

A more specific skill that’s useful, is the ability to put yourself into someone else’s shoes. For example, when responding to Examination Reports, it’s good to take time to understand where the Examiner’s objections are coming from. By understanding their point of view, it’s easier to work out how you might overcome their objections and get the patent granted. 

What would you like to achieve in the future?

I’m now into my second year in the job, so I am looking ahead to taking the remaining UK qualifying exams and then onto the EQE’s. I was pleased to pass the UK Foundation Exams this year and to receive the Chris Gibson and Keith Farwell CIPA prizes for my results in FC2 and FC5, and the Moss prize for my combined FC1 & FC3 exam scores. 

At M&C, we’re lucky to have the support of our in-house Training Academy, which provides resources and advice to help trainees through the qualifying exams, as well as support with settling into the profession. One of the best things is being part of a nation-wide cohort, meaning everyone can support each other from the first day.

Interested in learning more about Marks & Clerk's opportunities? Check out their profile here.