• Name: Roy Kimachia
  • Job Title: Patent Scientist – Associate
  • Location: London
  • University: Oxford
  • Degree: Physics
  • Career Sectors: Patents
  • Areas Of Specialism: Physics
EIP

I usually start off the week by having a catch-up with my line manager. This is a good opportunity to discuss my current workload but is also great chance for me to ask for advice or practice points regarding any cases I have recently been working on. It is always valuable to engage in conversations with the attorneys at EIP about the various legal issues that they have encountered in their work. Having recently completed the Certificate in Intellectual Property Law at Queen Mary University of London, my appreciation of the complex IP issues underpinning the work we do has really grown.

I also begin the week meeting with one of EIP’s paralegals to plan out the tasks for the week and the various reporting emails that need to be prepared. In such deadline-driven job, keeping on top of your workload is crucial for a patent attorney because, at any one time, you will be responsible for numerous active cases for different clients, each with various deadlines that cannot be missed. But EIP’s paralegals provide the support to help meet these various deadlines.

The remainder of the week largely consists of work on a variety of cases. This can include drafting new patent applications, having met with the inventors to discuss their invention. Drafting patent applications requires attention to detail to firstly understand the technology described by the inventors, and then to set out the invention precisely, accurately, and broadly in the patent application.

The case work can also include prosecuting patent applications, where an examiner at a patent office objects to the client’s patent application and may cite some documents against the application after conducting a search. Here, I review the cited documents and look to either argue that examiner’s objections are misplaced, or amend the application to overcome the examiner’s objections, or sometimes a mixture of both. This involves the challenging, yet rewarding task of considering ways of addressing an examiner’s objections whilst still making sure that a resulting granted patent is still commercially valuable to the client.

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