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  • Name: Matt Jefferies
  • Job Title: Patent Attorney (Associate)
  • Location: London
  • University: Durham
  • Degree: Masters in Physics
  • Areas of Specialism: Electronics

A career as a patent attorney allows naturally inquisitive scientists to combine their technical skills with commercial expertise.

When I graduated from Durham with a Masters in Physics, I considered a wide variety of professions. Having a physics degree opened a lot of doors, but I was overwhelmed by the sheer number of options.

I tested the waters in finance but found that, whilst I was good with numbers, I could not get excited about currency conversions or profit and loss accounts. I also worked briefly as a technology consultant, but was concerned that the lack of professional qualifications would lead to a lack of job security. Then I found the patent profession.

Working as a patent attorney puts you at the ‘bleeding edge’ of technology development, but also requires the application of business acumen. Your role is primarily to translate what is inside an inventor’s head into valuable legal protection for their hard work in developing their product.

You need to be able to get to grips quickly with new technology and determine the key aspects to be protected. You also need to be able to isolate the essential elements that make an idea ‘inventive’, whilst crafting protection that covers any obvious alternative applications to provide the broadest protection possible. For example, if the invention is a new tyre design with improved grip, you don’t want to limit it to car tyres if it would also work for motorcycles. Equally, you might consider whether the same grip design could also work on rubber gloves or on conveyor belts.

As a patent attorney, you will likely specialise according to your scientific background (electronics, biotech, software, chemistry, mechanical engineering). Having said this, no one can be an expert in everything, and you will need to be able to pick up new ideas quickly and interact with inventors to request further clarification, where necessary.

There is not only variety in the technology that you deal with, but also with the clients that you advise. You may be operating with independent inventors or early stage companies that are still developing their first product, or you could be working with established multinationals that know precisely what they want to protect. This variety keeps you on your toes, but means that you need to be aware of the client’s commercial needs.

In addition, it is important to be able to manage your time effectively. You will often be working on several cases at one time, and you will be expected to organise your day and ensure that all deadlines are met.

My role

I qualified as a Chartered UK and European patent attorney in 2015. As an Associate in the Electronics team at Marks & Clerk I operate largely independently on a day to day basis. Having said this, I can easily seek advice and share ideas with my colleagues, where necessary.

I spend the majority of my time drafting new patent applications and prosecuting applications before the UK and European Patent Offices. Drafting involves writing a full patent application based on input from the inventor. This usually requires meetings with the inventor to talk through the key features of the invention. These key features are then formed into a ‘claim’ – a relatively short statement that defines the scope of protection sought for the invention.

Prosecuting applications at the Patent Office primarily involves responding to examination reports. Once filed, the Patent Office will examine the application and issue an examination report detailing any objections that they may have against the invention. It is our job to respond to any objections that are raised in order to bring the application to grant with the best scope of protection possible. A response will usually either argue against the objections or file amendments to the application to alter the scope of protection conferred by the application.

In addition to this, I have been involved in:

  • Patent prosecution abroad (e.g. in the US)
  • Hearings at the European Patent Office (EPO) in Munich
  • Oppositions against patents at the EPO
  • Freedom to operate (advising whether a new product may infringe any existing patents)
  • Providing advice related to patent litigation (in conjunction with Marks & Clerk Solicitors)
  • Filing design registrations (protecting aesthetic products rather than technical inventions)
  • Providing advice on licensing and the purchase of patents
  • Managing clients’ patent portfolios.

Working at Marks & Clerk gives me the opportunity to tailor my career path and choose the areas that I would like to specialise in. As one of the largest firms of patent and trade mark attorneys in the UK, there is a wide and interesting variety of work available, both in terms of technology and clients. You are actively encouraged to find your own ‘niche’ and work is assigned based on individual skill sets.

In addition to fee earning work, I am involved in the Training Academy at Marks & Clerk to help trainees prepare for their professional exams. Juggling on-the-job training with after work revision can be challenging as a trainee; the Training Academy provides a support structure including a comprehensive programme of lectures as well as regular ‘Away Days’ which bring together trainees from our different UK offices for group study sessions and social events. It also provides a forum for trainees to share ideas and help support each other through the qualification process.

Having said this, it is not all work and no play! I am also part of the social committee in London, helping to organise monthly social events. Recent outings include go-karting, the theatre and a trip to a gin distillery.

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