The Big Picture
Joel graduated from the University of Leeds with a BSc and MPhys (International) in Physics before going on to become an IP Consultant/Patent Attorney. He has been in the profession for over 4 years before recently becoming self-employed. He is one of the key trainees that represents all the trainees in the country on the Chartered Institute of Patent Attorneys (CIPA) Council.
“Trademarks and copyright are the types of IP that people tend to hear about day to day. However, there are also design rights, database rights, plant variety rights, and trade secrets, as well as patents – there’s loads of IP (Intellectual Property) that you’ll interact with on a daily basis – the best of all, being patents, protect how things work. Typically, the patent profession is split up into life sciences, engineering, chemistry, and then electronics. Physicists tend to be either in engineering or you’ll go, like myself, into electronics, because electronics typically has software in it as well, which has been a personal interest that I have built into my career. I still do a lot of engineering based patents too, and all the patent attorney exams are in engineering, anyway.”
Intellectual property and particularly patents were something Joel had never been exposed to during his time at university, and that is the case for almost anyone pursuing the profession.
“You join the job not having a clue. So, you’ve never done IP before. You’ve never been a lawyer before. But now you are all of a sudden, a scientist in law. Normally, you become a trainee patent attorney working under a fully qualified patent attorney. Then, as you start passing exams, you might become a part-qualified patent attorney, that doesn’t really mean anything legally, but it’s a job title that you will see. You might also see “technical assistant”, which basically means you’re a few exams away from being fully qualified, though not every firm uses that term. Your job role is kind of irrelevant until you pass, and you become a pattern attorney. That’s when you can call yourself a patent attorney or patent agent, which are protected terms under law.”
Day to Day
Joel does most facets of his role on a daily basis. He regularly checks his emails, has meetings with clients or inventors, and reviews office actions from the patent office of one of the UK Intellectual Property Office (UKIPO), the European Patent Office (EPO), or the US Patent and Trademark Office (USPTO), which are rejections of patent applications that require arguing or amending the patent application to overcome the objections, ultimately seeking to get the application granted, which typically takes around 3-4 years.
“There’s so many other things as a patent attorney that I’ve not really discussed yet, there’s also a contentious side which is litigating, attacking other people’s patents, suing other people who infringe your patents, getting licences for your clients. All of that stuff I haven’t really touched on because I don’t do it day-to-day. That’s like a once in a couple months activity, and it’s very, very intense when you do it. We have our own version of “court” at the UKIPO and at the EPO, and when we’re at these judicial hearings they can take up to two or three days at a time. There can be 4-5 heads looking at one patent document for 3 days straight, trying to figure out whatever it is we’re trying to figure out and either get it granted, oppose the other one that has already been granted, or the like. I don’t do this on a daily basis, but when I get a chance to get involved in any form of litigation, I jump at it.”
The Application Process
Joel was originally enrolled onto a PhD training program, SOFI CDT, where he greatly enjoyed the first six months of getting to work with various companies to produce some case studies. One of these companies introduced him to the idea of patents from the perspective of someone applying for a patent for an invention, assuming that it would benefit him in the future as a research scientist when he would interact with Patent Attorneys. Instead, this experience exposed Joel to the possibility of becoming a Patent Attorney himself, and after further research and an opportunity to drop out of the PhD training program, he did just that.
“None of the big employers will entertain your application unless you have a STEM degree, as it’s a requirement for the exams that we take to have a STEM degree. As you can imagine, you’re then competing against a very bright bunch of people who have a science degree, just like you. So, to stand out from the crowd, it’s really tough. That’s where the PhD can come in handy, however, in my opinion a PhD is so niche, on one very specific thing, the likelihood of you ever getting to use that in your day-to-day life as a patent attorney, is unlikely. So I wasn’t too concerned about leaving the PhD to pursue my career. The process itself is just an application, a CV, and a covering letter, and you’ll get invited to an interview, and so it’s really based on how you perform in your interview if you get through to that stage. The first issue is standing out. The second issue is knowing what you’re talking about at the interview.”
Joel accredits his success at finding employment as a Patent Attorney to having done multiple interviews and learning what to expect and what answers the employers were looking for. At interviews, Joel would be asked to describe an object and its purpose and said that he needed to think about it as simply and literally as possible, and he would then often be asked to compare this object to something very similar, e.g., comparing scissors to wire cutters, where his attention to detail would then matter very much.
“You must really find the differences between these two things basically. They’ll push you until you can get to that objective realisation of the key differences. That’s what they want to see. It is really that simple. If they show you something and you don’t know what it is, just say you don’t know what it is. Our job is to talk to inventors who’ve spent their entire life developing a product. They’re normally world experts in their field. They make so many assumptions when they talk to you, because they know you’re a scientist, but that’s all they know, or they might even think you’re just a lawyer, so sometimes they can over-explain. So if you aren’t brave enough to say to that person ‘I don’t know’ and ‘can you explain that to me’ that’s not a quality an employer will be looking for. It’s important because after such a meeting with a client, ,you’ll be writing a 30-40 page document, around 20,000 words, and not have a clue what it is you’re writing about.”
The Learning Curve
After becoming accustomed to writing formal reports for his academic career, Joel had to return to the basics when learning how to draft his first patents.
“Disseminating very complex information into easy, understandable chunks and being inquiring enough as a person, and asking the right questions, is essential. You need to have good command of the English language as well, and that was the thing I really struggled on the most. I started to really go back to basics and learn English grammar properly, which I don’t think I’d ever really needed to do before, because, frankly, I had never needed to. I’ve always been the maths/science kid, which got me by absolutely fine, but when you enter this profession, I quickly had to learn how to write a letter properly – not an easy feat. After that, learning patent law from scratch is tough – but I just remember thinking to myself that the great attorneys around me, who I looked up to, knew absolutely nothing when they started too.”
The Physics Connection
Joel uses his physics degree every single day in his role. He is constantly researching and learning new things as new inventions come his way so that he can mentally dismantle them to write a clear, concise report of what they are and why they’re different to anything else that already exists. As an example:
“I didn’t know anything about catalytic converters and now I am one of the experts from a patents point of view, and to learn that I had to go back to first principles, do some heat equation stuff, figure out how they work, how does it burn off nitrous oxide, sulphur oxides, how and why do they do that? I had an inventor on a call who invented a new way of regenerating a catalytic converter filter,and I had to ask myself ‘What do they mean, regenerate?’ and what did people do before? What problem did this inventor solve? It’s often a case of back to the drawing board, figure out why/what/who/where/when, etc, You’re constantly being challenged, scientifically as well as legally, every single day.”
Joel’s general advice for physics students entering the workplace is…
“I wish I realised sooner in my career that “we” are the asset for the firm. If you don’t like the way things are, have a conversation with the right people sooner rather than later. Don’t make excuses for them, tackle issues head on and if you can’t reach a resolution, walk away because someone else will help you find what you need. I suppose that is a general life point, but, in this profession in particular, we’re always after good quality people, always.”
Joel’s advice for someone considering becoming a patent attorney is…
“You really need to do your homework. How do you become a trainee? How do you become a patent attorney? Did you know we have fourteen exams spread over four years? Did you know you can get exemptions for some of them? What does the firm you’re interviewing ask of you to qualify? Get on LinkedIn type in “trainee patent attorney” find a friend of a friend or a friendly face and talk to them, if you are interviewing for a firm, find a trainee at that firm and ask them about the interview process – I’ve found people to be very helpful in this profession, myself included. Internships and the like will help, but aren’t widely available, so your attitude is the most important thing. ”
The Next Step
“This is a career for me, not a job. It’s like becoming a lawyer or an accountant, you’re going to be that thing for the rest of your life, whether or not you do that job for the rest of your life is different. I’m going to be in the IP profession for the rest of my life. I know that already. I love it. I probably might not always be a patent attorney, as in like sitting down drafting and prosecuting patents, but I will either be an IP Consultant, or transition to become an IP solicitor or IP barrister, or something like that. At the moment, I like the idea of broadening my horizons and getting a law conversion under my belt – that way I can consider the solicitor or barrister route – but I should probably pass my remaining 3 patent exams first…”