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Meet Tim - Trainee Patent Attorney at Marks & Clerk

Tim Diao

Why did you choose a job in this profession?

During my penultimate year placement as a hardware engineer, I often found it challenging to match the enthusiasm my colleagues felt for our projects. While I appreciated the technical work, it didn't provide the sense of fulfilment I was seeking. This prompted me to explore career opportunities beyond traditional engineering.

I wanted a role where I could apply my technical knowledge, face new challenges (which I surely did), and stay engaged with the latest advancements in technology. That’s when I discovered the profession of a patent attorney.

As a trainee patent attorney, I have the opportunity to work with a diverse range of clients, from startups to multinational corporations. Unlike the narrow focus of engineering, this role allows me to stay abreast of emerging technologies across various sectors.

Additionally, the profession operates at the fascinating intersection of law, commerce, and technology. This unique blend makes the job akin to solving complex puzzles, enabling me to leverage both my technical knowledge and analytical reasoning every day.

What are your main duties/roles?

As a trainee patent attorney at Marks & Clerk, I have been actively involved in casework from the very beginning. The job description truly reflects the hands-on experience offered here, and while no one expects perfection right away, the support from colleagues has been exceptional. It is incredibly satisfying to learn something new every day and to see continuous improvement in my skills.

Having completed my first six months at Marks & Clerk, my main focus has been on the prosecution stage of the patent process. This involves addressing various objections raised by examiners. Additionally, I have participated in several Freedom to Operate (FTO) search projects, where I analyse existing patents to ensure that our clients' new products or services do not infringe on any existing patents.

Beyond the core responsibilities of a patent attorney, I am also quite active in business development. I try to attend different local events to network with potential clients and help establish Marks & Clerk as a leading brand in the industry.

Do you have any advice for anyone wanting to enter the profession?

Gain Relevant Information and Experience

Before applying for a trainee role, try to gather as much information and experience as possible. Attend open days, apply for summer internships, and connect with current trainees on LinkedIn. This profession is markedly different from most applicants' previous experiences, so gaining comprehensive knowledge beforehand will be immensely beneficial.

Attention to Detail in Applications

When applying for the role, meticulous attention to detail is crucial. Proofread your CV and cover letter thoroughly. During the interview process, you may be asked to demonstrate both your technical skills and your proficiency in English, so maintaining a high level of detail and accuracy is essential.

Prepare for a Steep Learning Curve

Receiving an offer is just the beginning. Be prepared for a steep learning curve and be committed to the job. Beyond daily learning and work, a considerable amount of effort has to be put in to pass all exams and become dual qualified.