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  • Name: tom_sharman Sharman
  • Job Title: Trainee Patent and Trade Mark Attorney
  • Location: London
  • University: Birmingham
  • Degree: MEng Mechanical Engineering

I accepted a graduate position with Reddie & Grose – a mid-size London based firm of patent and trade mark attorneys – during the final year of my Mechanical Engineering degree at The University of Birmingham. I was relieved to have secured a graduate job at a relatively early stage in the year and the mid-September start date left me free to go all out for the final exams and spend the dregs of my student loan travelling around South America.

The application and training process

The selection process included a speculative application letter and CV, followed by a detailed technical description of a simple mechanical object and two interviews with a selection of the firm’s Partners.

Apart from a brief introduction to patents during the first week of my engineering degree and a general interest in brands and advertising, much of my understanding about the role of a patent and trade mark attorney came from previous issues of the Inside Careers guides, which gave me an accurate and detailed insight into the nature of the work and prepared me well for the interviews at Reddie & Grose.

For the first year, I was exposed to a wide range of patent prosecution issues and had time to familiarise myself with office procedures and to build an understanding of the various complex legal texts with which Patent and Trade Mark Attorneys must eventually be completely familiar as they are the framework for our day-to-day work.

The following year, Reddie & Grose sponsored me through a 12-week intensive Certificate in Intellectual Property Law at Queen Mary, University of London. By passing end of course exams in patents, trade marks, copyright and designs, competition law and basic principles of UK law, I earned an exemption from the alternative Chartered Institute of Patent Attorneys (CIPA) foundation exams. The course was a hardworking, yet enjoyable, break from the normal nine to six grind and was a good opportunity to build friendships with trainees from other firms. Reverting to life as a student also came remarkably naturally!

After a further two years in the office gaining experience, developing the core skills of a patent and trade mark attorney and learning fast from my inevitable mistakes, I sat the four UK qualifying patent exams and four European qualifying exams in November 2008 and March 2009.

Typical day in the office

I arrive most days around 09.00 to clear emails received from clients and attorneys from various corners of the world and to restore some order to my office.

At particularly busy times, I am welcomed by a high priority email with details of the cases on which action is required that day to meet a particular deadline established under UK, European or foreign patent or trade mark law. Once I have dealt with this, I typically work on a number of different cases for the remainder of the day and usually finish at around 18.00.

I typically spend a portion of the day reviewing one or more official communications issued by the UK or European Patent Office and explaining the issues to our client in plain English in a letter or email in which I set out the options for dealing with the issues and ask the client to get back to me with their preferred option.

When I receive their instructions to proceed, I prepare a formal response to the official communication which usually involves re-reading the relevant legal provisions and practice guidelines and addressing each of the objections in turn, often drawing on experience gained from similar cases. I then discuss the issues and my draft response letter with the Partner responsible for the case, who will demonstrate his or her approval or disapproval with the red pen.

Other important, but more menial, daily tasks involve searching databases of existing patents, trade marks and designs, reviewing a client’s portfolio of patent and trade mark applications and providing them with projected costs and status updates, ensuring patent, design and trade mark applications comply with the numerous formal requirements, and issuing bills.

I also try to get involved wherever possible in writing new patent applications describing in precise detail the arrangement and operation of new and innovative products and in offering opinions on the likelihood of infringement and the associated validity of existing patents.

Types of work

I work on a range of patent, trade mark and registered design cases under the supervision of a number of different Partners. This exposes me to a wide range of clients and prosecution issues and keeps things varied and interesting.

The most enjoyable aspect of my job is the fast-moving pace. I often come up against a range of different intellectual property issues in a single day and rarely do individual tasks drag on longer than my attention span. However, keeping on top of all these tasks and their relentless deadlines can also be the biggest source of stress.

I spend around 70% of my time working with UK, European and overseas patent applications, primarily for mechanical inventions. My clients are typically small companies and private individuals who work to budgets and have extensive technical expertise and can recognise milestones in the patent process, but have no detailed specialist knowledge of the legal requirements. They therefore need helpful, understandable advice and an idea of the likely costs involved at each stage.

The most valuable lesson I have learnt since graduation is that consciously imagining myself at the receiving end of my letters and emails is the best way to provide clients with helpful, understandable and commercially focused advice.

A further 10% of my time is spent working with UK and European Community trade marks. I find this gives me a greater appreciation for intellectual property disputes and real-world, real-time negotiations between businesses. The downsides are that I will have to sit additional qualifying exams and have to get to grips with additional legal texts and keep on top of additional case law and legal developments.

I spend around a further 10% of my time working with registered designs. As they can be used to supplement patent protection for a product and in some cases be a faster, cheaper and simpler alternative to patent protection, experience with registered designs allows me to help smaller clients to expand protection for their products and adds some variation to my working day. Again, the downside is the need to become familiar with additional legal texts and case law.

Professional development

My training has recently been heavily focused on preparing for the patent qualifying exams. I have attended intensive preparatory courses at Centre d’Etudes Internationales de la Propriété Intellectuelle in Strasbourg and JDD Consultants in Milton Keynes, as well as in-house and external tutorials, and lectures organised by the Chartered Institute.

Now that I have sat the exams, I need to keep on top of legal and practice developments, which accounts for the remaining 10% of my daily workload. I receive daily updates by email, attend in-house subject matter lunches to discuss developments and occasionally, Chartered Institute lectures and seminars.

Building relationships

An increasingly important aspect of my working life is to build closer relationships with existing and potential clients and with overseas Attorneys. I do this through day-to-day interaction with clients, and attending presentations by overseas Attorneys and occasional evening social events with firms of solicitors. Softball matches against trainees from other patent firms on Wednesday evenings are a good way to keep in touch with friends too.

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