- Name: Lily Berman
- Job Title: Trainee Patent Attorney
- Company: Marks & Clerk LLP
- Career Sectors: Patents
- Areas of Specialism: Electronics, Physics
- University: Edinburgh
- Degree: MPhys Physics, PhD Physics
I completed an integrated master’s degree in physics at the University of Edinburgh, and then went on to doctoral studies in plasma wakefield acceleration at the University of Strathclyde. During my PhD, I decided that I didn’t want to stay in academia, but that I still wanted my career to keep me in touch with science in some way. I have also always enjoyed reading and writing. As I researched science-adjacent careers, the patent profession stood out me as a good way to combine these interests. It also involves lots of problem solving, as does science, and I soon learnt that there would be a lot of variety from working on different types of inventions, as well as the excitement of learning about new cutting-edge technologies.
I applied online with my CV and a cover letter explaining why I was interested in becoming a patent attorney and why I thought I was suited to the role. I showed that I had done my research and was aware that I would have to take many exams over a long time period. I then had a first video interview split into two parts. The first half was a technical interview with a Partner from the firm. I was asked about things I hadn’t necessarily studied or encountered before. The purpose of this was to allow me to show how I approached solving unfamiliar problems. The second half was with a member of HR and focused more on my personal skills and motivation.
I was then invited to an in-person interview at the Cambridge office. First, I completed a short, written exercise about the differences between similar technologies, which is highly relevant to the work of a patent attorney. I then had an interview with two Partners from the Cambridge office, within the electronics team – one of whom would be my supervisor if I was successful. We discussed my written exercise and technical background, and then I was asked some questions about a technology I wasn’t familiar with. Again, the emphasis was on my ability to work through it by asking the right questions. I then had the opportunity to chat more informally with two trainees from the office.
As a first year trainee, my job mainly involves reading reports (Office Actions) from the examiners at different patent offices, reading the prior art (existing inventions) and then constructing arguments about why my client’s invention is novel and inventive. Patent prosecution is a bit like solving a puzzle where you’re trying to work out how to overcome the objections by searching for a new angle and applying the logical framework of patent law. These responses can range from straightforward to very complicated. I have also started doing some drafting alongside more senior colleagues. This involves talking to inventors to understand their invention, constructing ‘claims’ which define what aspects of the invention are protected, and writing a full patent specification. These tasks form the backbone of the work.
Trainees are also encouraged to get involved in business development early on. This usually takes the form of going to networking events to meet people developing technology, to build relationships and hopefully work with them in the future.
On some days, I also have calls for the Marks & Clerk Training Academy. This is a dedicated programme run at M&C to prepare us for our patent exams. We have access to pre-recorded lectures from different Partners and associates around the firm, as well as live sessions where we discuss these lectures, do past papers or go through assignments that we’ve been given.
The ability to learn quickly and selectively is important. In the Electronics team, we handle a wide variety of technologies such as semiconductors, networks, quantum computers, robots, pumps, kitchen appliances etc. It is not expected that we are an expert in all of these things, but patent attorneys need to be able to work out what bits are important to understand and get to grips with them quickly.
Attention to detail is also important. Precision of language is paramount in patent prosecution and litigation. The exact language of the claims and patent specification matters.
It’s also important to be prepared for the exams. After the first year, there are exams every 6 months for 3-5 years that are needed to qualify as a UK and European patent attorney. They are notoriously difficult and can take several attempts to pass.
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