James, Patent Attorney at Marks & Clerk, shares their experience since joining the firm.
I have a broad background, having completed an undergraduate degree in physics with a year in computer science, a PhD in particle physics and worked for a short-period as a post-doctoral researcher. I wanted a career that would make use of this broad background but wasn’t interested in typical jobs involving computer coding.
I have always been interested in science and how things work. It was this curiosity that led me to do my PhD. However, I realised that due to the poor work-life balance and short-term contracts common in academia, academia wasn’t something I wanted to continue in. I knew a few people with similar backgrounds who had trained, or were training, as patent attorneys and spoke to them to find out their experience. These discussions encouraged me and I applied for a trainee role at multiple firms.
This may sound perverse but one of the main things that attracted me to the career was the training and exams. To me, these ensured that being a patent attorney was going to be a career that was challenging and involved learning and wasn’t going to end up monotonous. Nearly 18 months on, I can safely say this is not the case.
As a trainee patent attorney, I am typically involved in the drafting and prosecution (i.e. the formal application process) of patent applications. For example, I meet inventors to discuss their inventions and work out the best protection a patent could offer them. While I am in the software and electronics team, I still come across a wide range of inventions in fields such as finance, media streaming, lithography and medical devices.
I am also responsible for drafting responses to Examination Reports, for example, when an Examiner has raised an objected to an application on the grounds of novelty. In my head, this is always like a weird game of spot the difference. The Examiner cites a document and claims it describes the invention to which the application relates. Hopefully I manage to work out differences between the two.
I started at Marks & Clerk LLP in January 2021. Last year, I took (and passed) the first three foundation exams. This year I am sitting the last two foundation exams and either one or two final exams.
I didn’t realise when I first applied that the Training Academy provided by Marks & Clerk really stands out from the training typically offer by firms. The Training Academy provides trainees with lecture recordings, Q & A seminars, Away Days and exam technique sessions. While few applicants (for trainee patent attorney roles) get multiple offers to choose from, I would encourage any potential applicant to consider what kind of training is offered by a firm as it is such an important part of being a trainee.
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