Given my background in physics, people are often surprised to hear that I work in the legal profession. Scientific understanding is in fact essential to my job; since starting at Mewburn Ellis, I have had the privilege of engaging with numerous technical fields ranging from photonics and medical devices, to artificial intelligence and quantum technology.
Why did you choose a job in this profession?
Patent attorneys require an unusual combination of expertise in both science and law, it was the unique intellectual challenge that this poses which first attracted me to the profession.
After attending a STEM careers fair, I learnt that I’d be able to apply the familiar scientific and analytical skills used throughout my academic study but within a commercial setting and with exposure to a variety of technology. Utilising my understanding of physics was important to me, but I didn’t want to be restricted to just one focus area – patents seemed to offer the perfect balance.
The interview process at Mewburn Ellis provided a great insight into what training as a patent attorney might involve; the process was challenging, involving a wide-range of unusual problems to solve and proved to be an incredibly rewarding experience. It was clear that the interviewers genuinely wanted me to learn from the process and I left with a strong gut feeling that this was the right career for me. The rotational nature of training at Mewburn Ellis also appealed to me; by moving between partners, not only would I get plenty of exposure to a variety of clients, but also to differing styles of work.
What are your main duties and roles?
Most of my work as a trainee revolves around the patent prosecution process, unlike elsewhere in the legal world, ‘prosecution’ refers to the lengthy process of pursuing a patent application. My workload consists of multiple active cases each at different stages of prosecution, and often also following different ‘routes’ to protection (e.g. via national, regional or international applications).
For almost every case, I first draw on my background in physics to develop an understanding of the technology. I realise now that this requires more than just an appreciation of how it works, but also the far more nuanced task of identifying the core ‘inventive concept’; it is this inventive concept that we ultimately seek to protect, rather than a mere embodiment of it. Armed with this understanding, I move on to identify what steps need to be taken next; for example, formulating arguments or drafting amendments to overcome tricky objections raised by a patent examiner, as well as presenting our response strategy to the client.
When dealing with global patent portfolios, we often liaise with foreign attorneys due to the slightly different approach required in each jurisdiction.
Mewburn Ellis also engages in plenty of contentious work, for example, representing clients in opposition proceedings before the European Patent Office; these disputes are often complex, so early exposure to the process is particularly helpful. Other tasks I have been involved with include conducting technology reviews for clients seeking to identify IP trends in emerging fields, such as quantum communications.
As part of my training programme, I am involved in monthly technical lunches – where attorneys, at all levels of seniority, participate in a rolling discussion across offices updating on IP law and best practice – sharing and learning along the way. Mewburn Ellis also runs in-house tutorials aimed at enhancing key skills, such as original patent drafting. This is combined with a tailored schedule of exam-specific workshops we have throughout the year.
What skills are useful in this profession?
Analytical and problem solving skills, as well as the ability to deconstruct complex ideas, are crucial to the work of a patent attorney; whether reviewing technical documents or navigating through a series of objections, these skills will always be important. However, given the entry requirement of a STEM degree, it’s likely you’ve developed these skills to some extent already.
Effective communication is also a fundamental skill within the profession; you’ll be communicating with patent offices in formal language, but will also need to explain the legal technicalities to clients in a manner they understand. It can take a while to get a feel for the suitable level of detail and language needed for different clients. You will also need to efficiently manage your workload to keep up with the constant stream of deadlines and, although discussion with colleagues is frequent, the majority of time will be spent working independently.
Mewburn Ellis emphasise that training and development doesn’t end with qualification, but extends all the way through to partnership level. For example, later on in your career, business development and managerial skills will become increasingly relevant.
Do you have any advice for anyone wanting to get into the industry?
I would definitely recommend attending open days and careers fairs so that you can speak with attorneys from different firms. Trainee applications are extremely competitive, so be prepared to send out quite a few applications. Having said this, it may be more effective to tailor them to firms that particularly draw your interest, rather than sending out a larger number of generic applications.
If attending interviews, ensure you can speak confidently on your scientific background, as well as any of your university research projects; this is a good initial test of your ability to breakdown and explain complex ideas.
Another good preparatory exercise is to pick an everyday mechanical device (e.g. a can opener) and practise explaining the mechanisms that enable it to work; try writing both a very detailed description, as well as a single defining sentence that ‘captures’ it all.
It’s also important to keep in mind that it takes, on average, 4-6 years to qualify as both a UK and European patent attorney; this is certainly a commitment, but without doubt a rewarding one.