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Meet Tomas - Partner at Marks & Clerk

Book open Reading time: 3 mins
Tomas Karger

My career path to date

When considering what to do after high school, I had not contemplated a career in intellectual property (IP). I think this is true for many in the profession as it is generally not well-known to the public, but having worked in IP for almost 15 years now, I have found it to be a challenging and fulfilling career choice.

My father was an engineer, who then moved into management having obtained an MBA during his employment. As I excelled in math and science in high school, I gravitated towards a similar career trajectory. I obtained an undergraduate degree in Applied Mathematics and Engineering at Queens University in Kingston, Canada. It was there that I was first exposed to IP and patents.

In my final year, the university invited graduates of the program to speak to the class to educate us on possible careers. Foreshadowing what would come, I ended up speaking at length with a Canadian patent agent (attorney) who was training to become a patent lawyer. However, I did not want to stay at university following completion of my engineering degree, and thought I should work as an engineer having just studied to become one.

Following university, I started working at SNC Lavalin - an international engineering consulting company - in their nuclear division on the restart of units of the Bruce Power nuclear power plant, initially as a design and then as field engineer. I enjoyed the people I met and the amount I learned initially, but I became bored with the paperwork and bureaucracy of working in a slow-paced risk-adverse industry. I also started to realise I really enjoyed learning and therefore decided to return to higher education.

So, after 3 year as an engineer, my new wife and I left Canada for Germany where I studied to obtain an LLM in IP law at the Munich Intellectual Property Law Centre (MIPLC). While I was somewhat unsure that moving into IP was the right fit for me before starting the degree, I had no such doubts soon afterwards. Being forced to learn something new every time you picked up a case or patent was challenging, but incredibly satisfying.

After I finished my LLM, I returned to Canada and took a position as a patent agent trainee at an IP boutique law firm in Toronto. The challenge of working at a law firm was very different to higher education. While I still enjoyed the technical subject-matter that I was able to delve into every day, the environment was not academic, but instead results driven. Critically analysing your own work, and accepting the critique of senior colleagues was a difficult adjustment. Even more difficult was initially failing some of the Canadian patent exams (a first for many in the profession) – on my way to becoming qualified. For those that persevere, the reward is incredibly fulfilling. Feeling truly confident in your ability in this profession, and being able to guide innovators into maximising the value of their inventions is incredibly rewarding.

After almost a decade in Canada, my firm merged with Marks & Clerk LLP which offered me the opportunity to participate in a 2 year secondment in another Marks & Clerk office in Aberdeen. I also became a trainee again, now sitting exams in UK and European patent law. After extending the secondment into a 3rd year and qualifying in the UK and Europe, my family and I decided to make the move permanent.

Since making the move permanent, I was also accepted in the UK partnership at the firm. While a career in IP can be challenging, it is a challenge that I relish. Starting every day having to understand, question and analyse technology across a broad range of industries is enriching and fascinating. Picking up a description of an invention and not understanding a word of it upon an initial read through may be difficult, but being able to convert that to be a commercially valuable part of a company’s business as a patent, is satisfying.

As I continue on in my career I still enjoy that connection with inventors and technology and I am excited to, in some small way, bring new technology into the world that hopefully improves people’s lives and makes the world a better place.