A Day in the Life of a Trainee Patent Attorney

By Nick Davies, Trainee Patent Attorney

Like many trainee patent attorneys, I was attracted to a career specialising in intellectual property law due to the prospect of being at the forefront of science and technology while being able to put my university education in science to good use. Innovation is occurring all of the time, whether it be at start-ups, universities and their spin-out companies, or multinational corporations, which is reflected in the varied work that we do for our clients. As a result, the role of a trainee patent attorney is both an exciting and challenging one, which involves learning about new areas of technology on a daily basis.

Following my morning cup of tea and chat with colleagues in the kitchen, a significant part of my day involves case work. This can include speaking to an inventor to understand a piece of technology that they’ve been involved in developing, describing the technology in a patent application, or writing a letter to a patent office examiner containing arguments as to why I believe the technology to be novel and inventive.

While liaising with inventors generally only forms a small part of my role, it is certainly one of the most enjoyable. It is immediately clear that the inventors are passionate about their work and it’s always interesting to learn about the latest advances in research and development from the experts.

Understanding the nuances of intellectual property law and how to apply it effectively in order to protect a client’s idea is an integral part of the job, and can be just as interesting as getting to grips with the underlying technology. An important example of the overlap between law and technology is when writing a patent application for an invention. An essential component of a patent application is the claims, which define an invention in precise terms and will ultimately determine the scope of legal protection afforded to a client. Claim drafting is a key skill of a patent attorney and one that takes several years of experience to develop. I’ve found the challenge of drafting claims for an invention in accurate, precise and broad terms to be a rewarding part of the job.

Once I’ve finished writing a patent application and applied my training principle’s feedback, we file the application at a patent office whereupon a patent office examiner will examine the application and perform a search to determine whether the claimed invention is novel and inventive. A large part of my role thus involves examining documents of a technical nature in order to identify any differences between an invention as defined in a client’s patent application and the inventions described in any document(s) cited by the examiner in their search report. Once I’ve identified such a difference, I’ll then need to write a convincing letter to the examiner explaining why the difference involves an inventive step. This involves providing reasons why a skilled person (i.e. a person working in the field of the invention) would not consider making a modification to the cited document(s) to arrive at the applied-for invention. This means reading and absorbing lots of information efficiently, putting myself in the shoes of the skilled person, and thinking of reasons why the skilled person would not make such a modification. This is certainly an enjoyable element of the job, which requires a keen eye for detail and a degree of creativity.

An article on the life of a trainee patent attorney wouldn’t be complete without a few words regarding qualification. A big part of training to become a patent attorney is preparing for and sitting examinations. Most UK-based patent attorneys are both chartered UK and European patent attorneys, which allows them to apply for patent applications competently on behalf of their clients at both the UK Intellectual Property Office and the European Patent Office. Preparing for the examinations forms a large part of a trainee patent attorney’s time, which is largely done outside of working hours. The examinations are notoriously difficult to pass and although some candidates pass on their first attempt, many capable candidates fail one or more examinations during the course of their training. Typically, it takes around 4 to 6 years to become a fully qualified patent attorney. I should add that there is lots of support available, including on the job training, in-house tutorials, and external courses, as well as a brilliant group of fellow trainees and qualified colleagues who are always willing to give advice, making the road to qualification somewhat smoother.

The responsibilities of a trainee patent attorney are numerous and I have highlighted only a few above, albeit the ones that take up the majority of my time. Other responsibilities can include providing a response to an email query, analysing a court decision relevant to intellectual property and presenting a summary to one’s team, providing advice with regard to filings strategies, providing freedom to operate opinions, and many more.

At the risk of sounding cliché, no two days are the same. For any budding patent attorneys out there, please do get in touch if this article has resonated with you and motivated you to consider a career in intellectual property.