Case Study: Patent Attorney - Grahame What do you do? Well, as a patent attorney, I provide a sort of bridge between the technical community and the legal community. I have both qualifications, so if somebody makes an invention, there's no point in their talking to a common or garden solicitor because they wouldn't understand the technical details of the invention. They can talk to somebody like me because I have both technical and legal qualifications. I can protect that invention for them, I can help them litigate in court, both offensive and defensive litigation, and in short, I can provide that bridge or translation between two completely different sections of the community - the scientists and the lawyers. What is your background? Well, I came into the profession straight from university. I had a chemistry degree, and at the time I knew that I wanted to use my chemistry. I knew that I wanted to be a scientist but I didn't particularly want to work in a laboratory for the rest of my life - I saw no future in that. I saw myself in a desk job and this job seemed to suit my plans perfectly. Since then, I've discovered that I'm not wedded to chemistry, it's all the sciences that interest me, and I've been able to expand my interests and my specialisations. Now I do very little chemistry and I'm mainly a general engineering patent attorney. What characteristics do you need to be successful in your job? Your first academic qualification would have to be a degree in a scientific discipline [ or an engineering or technical subject] and that must be a technical science degree rather than pure mathematics. Without that basic science degree, you won't be able to qualify - you won't be able to enter the examinations we have in the profession. In addition, I think you need a scientific, enquiring mind. You've got to think a lot about how things work, why processes are carried out in the way they are. Because whenever you interview an inventor, they will tell you about their invention but you must then put yourself in the mental position of somebody trying to rip them off. Also very important is good use of English. We bridge the gap between the lawyers who write legal documents (and we do this too) and the scientists who make the inventions. These days you won't get very far in the profession unless you have either French or German at a reasonably fluent level. GCSE level is the minimum - if you've got anything better then that's ideal. In the European scene, you do need to speak one other language besides English. What other jobs could you do using the skills from this job? If you were looking to come into this profession but didn't have the basic scientific degree [ includes engineering and other technical subjects] that I've mentioned, there's also the possibility of entering the profession as a trade mark attorney, who are not entitled to do patent work. It's a similar use of skills, you've got to be able to use language carefully and precisely. CASCAID 2018 1
You would see the scientific input going on around you, you wouldn't necessarily be qualified to take part in it but you would be talking to the same clients and it would be stimulating in that way. There are many firms who employ trade mark attorneys. There are other firms who employ a general practitioner like myself. I do both trademark work and patent work, and I'm qualified to do both. Alternatively, if you are coming out of school or university and you don't want to go into this profession, you might consider technical writing. If you think about any new bit of technological apparatus, it will need a guidebook or instruction manual. If you are able to describe complicated machinery clearly and concisely then there is an employment opportunity for you there. What changes will there be in the future? One of the great benefits and attractions of the job is that it is always changing. Laws are conceived and enacted, so we have to learn them and learn how to use them, and learn how to modify the advice that we give to clients. We also have to be aware of changes in the laws in major countries throughout the whole world, so it's a constant learning process. Also, there are constant technological advances that we have to face up to. The technological advances come in two different ways; first of all, every client who comes into the office has some new bit of technology to present to us. My daily routine is one of accepting new technologies, understanding them and putting them into clear, legal English for the benefit of clients. But not only do I have to understand the client's advances, I have to make use of new technology all the time in the office. Over the last ten years, I've learned how to program a computer and I've come to terms with living with a computer on my desk and using the keyboard just as I would have used a pen five or ten years ago. So, there are always changes and I'm sure the technological advances in the future will be just as varied and demanding as those I've seen in the last ten years. What are the biggest challenges in your job? I've always regarded the entire job as being a challenge. The first challenge is dealing with the new technologies that come my way. We get inventions sent to us from all over the world and they can be in any discipline, in any field. We do try to divert the different incoming work to the specialists within the office but I have taken on subject matter from aircraft landing systems to nuclear power stations. Every new invention that is presented to me is, by definition, new technology and we have to push our knowledge a little bit further. Life is a constant learning experience and that is a challenge - a great challenge. In addition it's always a challenge to do your very best for the client. When a client comes to us they have, to some extent, a problem. Either they've got some new technology that they do not want to get into the hands of their competitors or they've trodden on somebody else's toes, possibly deliberately, possibly inadvertently. And we have to do our very best to make life bearable for them and to get them off the hook if they've impaled themselves. Are there many opportunities to enter this career? It depends to a large extent on your scientific discipline. We get more applicants who are biotech graduates than people from any other discipline, so I would say it is most difficult, at the moment, to get into the profession if you're CASCAID 2018 2
biotech. The most sought after discipline is pure electronics. If you're coming into the profession now with electronics, you've got it made because there are so many firms looking for new graduates to train. Once you get into the profession, you will be given a training contract. That will last for four or five years; it's a long training process I'm afraid. But you will be given a sort of apprenticeship - a very well paid apprenticeship, when you will learn how to do the job, working under the supervision of a patent attorney. During the training period, you will be taught how to do the job and you'll have to take examinations. There are seemingly numerous examinations that you'll have to take and at the end of it all, you'll become a fully qualified patent agent. You will have the title of British Patent Attorney, European Patent Attorney, European Trademark Attorney and British Trademark Agent. All of those are different examinations that you will take; at the end of it all, the world is at your feet. What do you like about your job? I like the constant intellectual challenge - the barrage of new technology that I've got to master. I enjoy that, I find that the job is a constant learning experience. That has enriched my whole career so far. I enjoy the foreign travel. It is a job that enables you to travel the world to a great extent. I've travelled to America every year for ten years during the early part of my career. I now travel to Japan every year. There are other patent agents who will travel regularly to Australia and the Far East, depending on where their clients are. And finally, speaking as a patent agent in private practice, rather than one employed by an industrial firm, I enjoy the fact that I'm my own boss. I've come up through the profession and now I'm senior partner in my own firm and that means I am self-employed. I can make my own rules and decide my own future - I enjoy that. What do you dislike about your job? I think that's very personal to me. I dislike losing for a client. There are times when you try to persuade a patent office examiner to accept a patent application, and you provide every conceivable argument, and at the end of the day - you fail. That mortifies me. There are other times when you're representing a client in court, and, of course, with any litigation one party wins and the other loses, so you've got to be reasonable and expect to have your share of failures in litigation but it really rips me apart because I identify too much with the client. If I see them losing then a little bit of me goes right down the pan with them as well. I can't isolate myself from a client's success or failure in a way that perhaps a barrister can - but that's my failing! What are your ambitions? I'm currently senior partner of my own firm so you might think that I've reached the top of the tree but I'm not satisfied yet. I intend to go back to university this year for a two-year part-time course to obtain the litigator's certificate. I am already qualified to represent clients in court but the new litigator's certificates that are being issued are university based and I've not got that university training, I've learned by experience. I want to be able to say to my clients that I'm as good as any other person with a litigator's certificate out there and for that I think I need the extra training that the university course will offer. What advice would you give to someone interested in your career? CASCAID 2018 3
First of all you've got to find out who might be recruiting in your field. The Chartered Institute of Patent Agents will be very very helpful in that. They publish a directory of all practising firms in the UK. If you ring them, they will also give you advice as to who they think will be recruiting at a particular time. They may be able to give you advice as to who is active in your particular field of technology. When you write your job application letters, try to convey two things. First, try to show that you have an easy, natural command of the English language. I don't know why it is but some job applications we receive we put immediately to one side and say, 'boring'. There are others where we seize the bit of paper and we want to read on to the end. The only real difference is that some people have a more commanding use of English and those are the people we want - those are the people that will do well in this profession. Try to convey the fact that you have an enquiring, scientific mind. Show that you're willing to grasp the different technologies that you'll be presented with - and that you really do want to remain in a learning position for the rest of your life. Don't give the impression that you're someone that has got through university, is looking around and doesn't know what else to do. The job is a challenge and you've got to give the impression that you're looking for, and can rise to, that challenge. A day in the life 7:45 am Drive to the office. 8:45 am - 9:15 am All the patent agents and technical assistants gather in the general office to see what is in the post. In a small office like ours, it's possible for everyone to see and comment on each incoming letter - if a client phones, almost anyone can take the call in the absence of the responsible partner and make some sense of the inquiry. Each of us picks up a letter and comments on what it is about - this may be a single phrase such as 'renewal reminder' or 'official receipt'. Sometimes, however, this may start off a discussion, for example, if the inquiry is difficult or the responsible partner wants to give the others the background on an interesting issue. 9:15 am - 1:00 pm I sort the post into priority order and start to dictate letters. By mid-morning, I start to tackle some difficult issues, such as drafting a patent specification or preparing an argument with an examiner who has been reluctant to accept that an invention justifies a patent. There will be several telephone inquiries during the morning. The most demanding inquiries usually come through the fax however - for example, from a client in Japan who needs to have a patent application filed by the end of the week. 1:00 pm - 2:00 pm Officially it's my lunch break - but I rarely take a break. I may grab a sandwich and work on through. There are always law reports, letters, professional journals and science magazines to read. 2:00 pm - 3:00 pm A client visits the office. He needs advice on a trade mark problem. I give this on the spot but later I will confirm the advice in writing. CASCAID 2018 4
3:00 pm - 4:30 pm I go on-line to search for potentially similar trade marks to the one the client has just given me. I must search for identical trademarks, those that look similar, and those that could sound similar. I must search very carefully - the client may spend thousands of pounds setting up a marketing strategy based on the advice I give, so it must be accurate and complete. The policy in our firm is that we don't give any results from trademark searches to the client until two qualified or near-qualified patent agents have discussed them. 4:30 pm - 5:00 pm Dictate a letter to the client, reporting the results of the search. 5:00 pm - 6:00 pm Officially the end of the day but as the office quietens down, this is often the best time to work on all the interrupted and half-finished jobs from earlier in the day. 6:00 pm Drive home. I usually take home some reading or even a half-finished letter if I'm deeply into it and don't want to delay finishing it until tomorrow. CASCAID 2018 5