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  • Name: [email protected] Olivier
  • Job Title: Trainee Patent Attorney
  • Location: London
  • University: Southampton
  • Degree: Physics

I studied Physics at university because I found it interesting, rather than because I had a particular career in mind. I first became interested in becoming a patent attorney while I was working on a summer placement at a global engineering company. During the placement, I worked on a product development project that involved interaction with the in-house patent department and, through this experience, I gained an appreciation of the importance of protecting innovation in business and how intellectual property can underpin the growth and success of a business. 

I was keen to learn more about careers in intellectual property, so I did some research to find out what a career as a patent attorney would offer. The more I learned, the more the profession appealed to me. I realised that a career as a patent attorney offered the opportunity to be exposed to a variety of technology and promised to be both challenging and intellectual stimulating. After applying to a number of firms, I joined the Electromechanical group of Elkington and Fife in September 2013.

Typical duties

At Elkington and Fife, training starts from the first day. I began working on cases for clients immediately (although I was closely supervised, of course). During my time at Elkington and Fife, I have been involved with a variety of different types of work, including assignments, drafting patent applications, prosecuting patent applications, oppositions and appeals. I have also had the opportunity to attend an opposition hearing at the European Patent Office in The Hague. The area I work in the most is prosecution, which involves reviewing prior art documents cited by an examiner in an examination report issued on a patent application and responding to any objections the examiner raises. It is our job to convince the examiner that the client’s application is patentable, so it is important to be able to communicate effectively and construct persuasive arguments.

At Elkington and Fife, I work for a variety of clients, in a variety of technical fields. This means that I need to be able to get to grips with new technology fairly quickly. The work is very deadline driven so I also need to be well organised. Most importantly, I would say that in order to be successful you should want to be challenged, you should be willing to learn and you should be prepared to take constructive criticism on board.

Elkington and Fife have a mixed client base, including large multinational clients as well as smaller businesses, university spin outs and individual inventors. This means that Elkington and Fife are in a position to provide trainees with a well-rounded training, as the firm can offer their trainees exposure to many different aspects of the job. The firm believes that a good patent attorney understands the commercial needs of their clients and trainees have the opportunity to develop such an understanding by having contact with clients from the outset. As well as corresponding with clients to provide advice on legal issues, I take part in meetings with clients to discuss strategy and meet with inventors to discuss their invention before drafting a patent application.

Training

On-the-job training is supplemented with tutorials for developing professional skills such as patent drafting. I have found that my colleagues are supportive and are always on hand to give advice, guidance and encouragement.

Elkington and Fife also pay for trainees to attend external courses as a part of their training. I recently passed the Queen Mary Certificate in Intellectual Property Law course, which provides an exemption from the UK foundation exams. The course runs over a period of three months and while I would say it is intensive, the course provides you with a good grounding in patent law as well as other areas of Intellectual Property law, including trade mark law and copyright. It is also a great opportunity to meet other trainees in the profession, so there is a social side to the course as well. The next step for me is to take the UK finals examinations, and I feel confident that the firm will support me in this endeavor.

Social life

I have found Elkington and Fife to be a sociable and welcoming firm. The firm organises an annual summer event and a Christmas party, and there are plenty of opportunities to mix with your colleagues at informal lunches or after work drinks.

Advice for others

If you are considering a career as a patent attorney, I recommend that you find out as much as you can about the profession – there is a lot of information available and it is also worth talking to trainees and patent attorneys about their experiences.

I have found the last eighteen months to be interesting, challenging and rewarding. If you believe a career as a patent attorney is right for you, I would certainly recommend it.

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