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  • Name: frances_salisbury Salisbury
  • Job Title: Trainee Patent Attorney
  • Location: Manchester
  • University: Bristol
  • Degree: BSc Biological Sciences PhD Plant Molecular Genetics

I did a BSc in Biological Sciences at the University of Bristol. I really enjoyed learning about and understanding complex scientific concepts, so it seemed a natural progression to go on to do a PhD. However, I soon found that day to day life in research was not for me. I found bench work to be a chore and didn’t like specialising into such a small area of knowledge.

I also realised that I wanted a job with a defined career structure. I began to look for alternatives through the university careers service, which is when I found out about patent law. The more I read up about the job, the more it seemed right for me.

I applied to several firms after finishing my PhD, and accepted a job with Mewburn Ellis LLP. I’ve been working here for about 18 months now, and really enjoy it.

Since my first day in the job I have worked on real-life cases, so my work really does count. A lot of my work involves preparing responses to examination reports and other communications from the European Patent Office and UKIPO. As I had hoped, I work in a broad range of subject areas, so I am constantly using my scientific training.

Aside from learning about the science of each particular case, I also have lots of law to learn, particularly now that I am preparing for my exams.

The amount of law to be learnt can seem overwhelming at times, but my colleagues are friendly, and as all attorneys have been through the training and exams at some point themselves there is lots of help and advice on offer. Our firm also has quite a lot of trainees at different stages – there is always someone on had to ask all the questions I feel are too silly to ask my principal!

The work is intellectually stimulating, both because each case requires getting to grips with a new scientific topic and because there is a lot of law to be learnt. It is certainly a challenge, but this is what makes the job rewarding. It can be very satisfying when you come up with an argument which persuades the examiner to withdraw his objection and grant your client’s patent application.

Frances’ Graduate Journal

I start my day by grabbing a coffee and checking my emails. I’ve had an email in overnight from an American client relating to a case I’m working on. I sent him a draft of a letter to the patent office last night and he has replied to confirm that it’s OK. I acknowledge receipt of his instructions and send the response to my principal’s secretary to get the letter ready to be signed and sent.

I share an office with my principal, so when he arrives we have a quick chat about the tasks on my desk and how everything is going. I always have more than one case on the go, so it is useful for him to know how things are coming along. During the morning his secretary takes him through today’s post and this week’s diary. I listen in to get an idea of what everyone is working on at the moment, and the important deadlines that are coming up.

One of the files I’m working on is an examination report, which we have just received from the European Patent Office.

My task here is to review the objections raised by the Examiner and see if I agree. I then need to write a letter to our client explaining the objections, and suggesting what we might do to overcome them and get the application further towards grant. In this case I have decided that the Examiner’s objection is probably correct, so I go back through the application seeing how we can amend the claims in a way that overcomes the objection, but also means that the client still gets useful protection for their invention.

I receive a phone call from someone who has developed a new type of safety screen suitable for use on building sites. Now that I have a little more experience, one of my jobs is to answer cold-calls from people wondering if they should patent their invention, and how to go about doing this. Taking these can be interesting and your advice can really make a difference. Who knows; you could be talking to the inventor of the next big thing!

In this case, it turns out that the caller has already been through the process of getting a patent once before, so he does know a little bit about the process. I advise him of the costs involved and as he’s keen to proceed with filing an application I arrange a meeting with him for next week, so that he can talk me through the invention and we can begin drafting an application.

During the afternoon my principal and I go through some of the work I’ve been doing recently.

The work includes a set of claims I have written for a new application, and a letter relating to a case which is being opposed at the EPO. My principal goes through these, makes some minor amendments, and suggests an approach that I haven’t thought about, so one of the letters goes to our secretary to send out, and the other goes back to my desk to work on some more.

I’m in my second year, so I am now preparing for my UK final exams in November. I have an in-house tutorial coming up, so I spend the final hour of my day preparing for that. I have to prepare answers to a couple of past questions, along with a practice drafting exercise. The exams are fairly tough to pass, but lots of help is available, through in-house tutorials as well as seminars and tutorials run by the Chartered Institute of Patent Attorneys, which we are encouraged to attend.

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