From EPO examiner to patent partner

As HLK celebrates its 175^th anniversary, we take a moment to reflect on the remarkable journeys of some of the women at HLK.

With a career that spans decades, Frances Wilding has become a distinguished figure in the world of Intellectual Property (IP) and the field of Artificial Intelligence (AI). From starting as a European Patent Office (EPO) examiner to becoming a patent attorney, Frances’s experiences and insights offer a unique perspective on the evolution of IP, the challenges faced by applicants and examiners, and the strides made by women in a traditionally male-dominated field.

In this interview, Frances shares her journey, memorable cases, and valuable advice for the next generation of patent attorneys, providing a glimpse into the dynamic and ever-changing world of IP.

What was your journey into the world of IP?

“My first experience of IP was during my university degree, which was a high-tech mix between mechanical and electrical engineering. We did an enhanced course and so we had some additional modules, and one of those was patents. They had the oldest, most dusty lecturer you can possibly imagine teaching us.

However, I overcame that false start! Unbeknownst to me, the EPO had been in contact with the language department at my university to find out if anyone who was studying a technical subject could also speak French and German fluently, and I was the only one. An EPO representative then approached me at a careers fair and I interviewed with them almost immediately.”

You have worked on both sides of the fence, starting your career as an EPO examiner. How do you think things have changed for applicants over that time? And which did you find was more fun as an intellectual challenge?

“For applicants I don’t think there’ve been real changes to the basic of the patenting system. However, there are many more patents in the software and AI area. Even traditional chemical companies, for example, are likely to have some. AI is now used everywhere and so this makes life more difficult for applicants because AI per se is not patentable at least in Europe, and so you have to find ways around that if you want to protect your innovations.

As an examiner, you have to apply the law fairly and that is your primary job. As a patent attorney you’re helping your clients to get what they need and want. It might not even involve patents in my area, instead it might involve trade secrets or agreements. I’d therefore say being a patent attorney is much more interesting than being an examiner!”

As we reflect on HLK’s 175-year history, how has IP evolved during your career? Can you share any major milestones that have stood out to you?

“The first milestone I can think of was The London Agreement which entered into force in 2008. It was the agreement that allowed applicants to save a lot of money by not filing complete translations of the text into many languages at the end of the European procedure. Seems dull, but made a commercial difference.

The Unified Patent Court (UPC) was another huge milestone, it rumbled on for so many years before it actually came into force that I thought it would never happen before I retired!”

What is the most memorable case you’ve worked on during your career, and why?

“I’ve had so many interesting cases and they’re memorable for different reasons. Memorable because of the applicant I worked with or memorable because of the technology.

One that sticks out to me is a case where the inventor and the people around the inventor knew that it was ground-breaking and highly commercially valuable, but the decision makers were reluctant to move forward with it as they did not understand how useful it was. We had to work extremely hard, even writing letters to the management tier of the applicant to say, please can we file this patent application? When they eventually said yes, we crammed a huge amount of innovation into a single patent.

When the invention did turn out to be ground-breaking and implemented across the world, we filed many divisional applications to get a whole portfolio. I was delighted that we’d managed to get some great protection through despite unusual reluctance of the applicant!”

In what ways has your role changed over the years?

“Leaving the EPO was quite a change in my role, I went from being an expert to quasi starting from fresh on the other side. I had to work my way up again, and learn how to think and write as an attorney rather than as an examiner.

In my early career as an attorney, I worked more with larger clients who just wanted a pile of patents to license or deter competitors. With my current clients, I tend look at IP in a more holistic way. Increasingly, even larger organisations don’t necessarily just want patents for their inventions, they want you to look at the whole commercial picture and proactively advise them on what will suit them the best. I love this, because it’s super interesting to look at IP in a more nuanced, commercial way.

Gradually I gained experience and became a partner, since when I’ve had many management and training responsibilities. For example, I was on the management committee of the firm which looks after the everyday running of the business, and became the Vice Chair and then Chair. So I’ve taken on a variety of roles as I’ve moved through.”

How have things changed for women in your time in the profession, particularly working in a traditionally male dominated subject matter area?

“When I first joined the Leeds office many, many years ago at HLK, on a Friday all the men went down the pub for a drink and all the women stayed in the office to chat. And that was because all the men were fee earners and all the women were in supporting roles. And there was that division, which was kind of shocking! I had to define myself as a man to do what the other fee earners were doing! Now things are much more integrated across fee earners and supporting teams and between men and women.

I think life is still more difficult as a woman in the profession, because our society still expects certain behaviours from women, and those behaviours can make it more difficult to progress in your career. There can be the expectation of women being accepting of others’ viewpoints, or maybe having great ideas and not getting the credit, or even not giving themselves credit! Those traditional female characteristics are still there, and can make it more difficult to push yourself forward. I believe that the more obvious sexism has now disappeared from the profession. However there are still obstacles.

One thing that’s been a real delight for me is working in our AI patents team, which is exclusively women. It’s just been really great to have a whole team of all women in my subject area working together!”

Reflecting on your career, what do you consider to be your most significant accomplishment?

“The thing I most enjoy and am most proud of is training people who have become skilled attorneys. To see someone go from an unformed graduate to someone performing at the highest level, that’s a great joy.

So I’m really very proud of the people who’ve gone through the system and especially the ones still working for HLK. ”

What advice would you give to the next generation of patent attorneys?

“Make full use of the AI tools that are here or coming. I mean, I could also say focus closely on the client and what IP brings to the client rather than the law, because I think that’s an important thing that you have to learn as you’re progressing through your training. But especially for this generation, I think we’ve got to change for the AI that’s coming.”

What’s one thing you would like HLK’s clients, contacts and the broader IP community to know about the firm as it celebrates its 175th anniversary?

“Teamwork is crucial here; every role, from our administrators, support teams, new graduates to experienced attorneys contributes to the shared vision. The people are what makes HLK a special place to work, and why I’ve been chosen to stay here for numerous years!”