• Role: Patent Trainee
  • Career Sectors: Patents
  • University: Cambridge
  • Degree: PhD Physics
  • Organisation: Boult Wade Tennant

Lucy Cunningham

Why did you want to become a patent attorney?

I wanted a career that would incorporate the aspects of my years in academia which I most enjoyed – to creatively solve problems, to use my technical knowledge and to continue to learn about science. I had been interested in the practical applications of physics during my PhD, so the idea of helping to translate the latest technological developments into protected intellectual property seemed appealing. I also wanted my day to day work to be varied and to be a challenge – I wanted to make sure I wouldn’t get bored! There is also the bonus of a good work-life balance (at least unless you’re studying for exams) and job security.

What do you do?

I’m in my first year as a Patent Trainee, so the emphasis is very much on learning on the job. I was given real cases to work on right from day one, which was fascinating if a little daunting! The firm is split up into practice groups depending on your background, and I work closely with two supervising Partners within my group. I discuss every case with them and they help me whenever I need it. The firm is very sociable though, so there is plenty of opportunity to get to know people from other offices and practice groups.

Day to day I deal with any stage of getting a patent granted, right through from the initial conversation with an inventor to overcoming objections raised by patent offices. It’s a great job, with plenty of variety and challenges!

I have had the chance to work on draft patent applications from scratch for a variety of technologies, learning how to spot the essence of the invention. I also spend a lot of my time looking at the prosecution stage of a patent application, when the patent office provides a search report of relevant patents or publications and might raise objections to the application. In that case it is my job to overcome the objections, either by finding ways to amend the application or by arguing against the objection – that’s where the problem solving aspect of the job comes in. It’s great experience, as you get to see a lot of different technologies and many different aspects of the process. I might also need to prepare instructions for overseas attorneys or draft letters to clients, so no two days are the same. Everything I do gets discussed with a Partner, so you get really valuable on the job training – whether they need to explain an aspect of patent law you haven’t come across yet, or act as a sounding board when you’re trying to construct an argument. All the senior fee earners remember the steep learning curve, so they give great support!

What skills are useful?

Besides a good grasp of your scientific field, written and oral communication skills are important. Every aspect of the job requires clear communication, whether you are interacting with a client, drafting a new patent or constructing a clear and convincing argument against an objection from a patent office. You’ll need to understand new ideas quickly and then be able to communicate them clearly and concisely.

Although everything you do as a trainee is supported by Partners and senior fee-earners, the work itself is largely independent. You’ll need to manage your own caseload and deadlines, and be able to work on a task independently. Every task has a deadline and you will have several cases on the go at any one time, so organisation is also key.

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