A Patent Trainee after 6 months


Frances Salisbury

I have been at Mewburn Ellis LLP a little over 6 months now, having joined in 2007.  I applied for the job after finishing my PhD in Molecular Plant Genetics at the University of Edinburgh, and spending a short time working as a postdoctoral research assistant.  I discovered fairly early on in my research career that academia was not for me.  I was still fascinated by science, but I didn’t enjoy the day to day reality of working in a lab, so I began to look for alternatives.  I knew that I wanted to stay in science, but I wanted to work on a broad range of topics, as I had done in my undergraduate degree.  I also liked the idea of a job with a defined career structure but which offered the potential of a good work life balance.  I also knew I wanted a challenging job.  As I read up on becoming a patent agent I felt more and more certain that it would be the right move for me.

I applied to Mewburn Ellis LLP after finding out more about the firm on an open day at their Manchester office, and was invited to interview.  Alongside the sorts of questions you expect in an interview, this one also involved looking at some well known objects and trying to explain exactly how they worked.  Of course, every interview is a pretty nerve racking experience, but I felt that the interviewers were very supportive and friendly as I talked through the objects I was presented with, and, strangely enough, I found that I had actually quite enjoyed the interview!

After a second interview, I was offered the job, and started work in September, along with four other first year trainees.  In our first week, we learnt about the history and day to day running of the firm, and began looking at the law and the procedures for getting a patent, as well as getting to know each other.  After the end of the first week, we all went off to our new offices to begin work properly. 

One of the things that attracted me to work for Mewburn Ellis LLP was the emphasis they place on training.  I have not been disappointed.  About once a month all the trainees in my year meet at one of the offices for in house tutorials.  These are great, not only because they teach us more about the job we’re doing, but also because we get to meet up with our fellow trainees and learn from each other. 

Trainees at Mewburn Ellis share an office with a qualified attorney, who is usually a partner.  This is pretty daunting, but it’s really good for your training – it’s surprising how much you learn from listening to your principal talking on the phone to clients or patent examiners, or from discussing the tasks in this week’s diary with their secretary.

So far, I’m really enjoying it here.  As I had hoped, I’m involved with prosecution of a broad range of patent applications, and I’m often required to get to grips with a scientific topic that I know very little about.  I also have a lot of law to learn and of course, exams to pass, so it’s definitely challenging.  All in all, I’m finding the job stimulating and enjoyable, and I’m very pleased I applied. 

A Patent Trainee After 3-4 Years


Nadja Muncke

I joined Mewburn Ellis LLP in 2004 after finishing my PhD in Human Genetics at the University of Heidelberg, Germany, and a short post-doctoral period at Cancer Research UK, London.

For the first two or three years after joining, trainees sit (usually in six month placements) with different partners in the various offices to gain experience of different types of work and ways of doing things. It is also an excellent way to get to know everybody within the firm. After placements in the London, Cambridge and Bristol offices, I am now permanently based in the London office.

So what does a typical day of a trainee patent attorney look like?  Well, you probably heard it before… there is no typical day. Work varies tremendously, which is what makes it interesting.

From day one you work on "real" cases, sharing your principal's work.  As Mewburn Ellis LLP has one of the largest "Bio" groups in private practice in the UK with clients all over the world, working in this field is particularly fascinating.  Over the years, you gain more experience and gradually take on more responsibility.  3.5 years into the job and having passed some of the exams, I now feel more confident about my work, talking to clients and giving advice – but I also appreciate that there is still a lot to learn.

A lot of my time is dedicated to working with pending patent applications: reading patent specifications, drafting letters to clients and examiners at the UK or European Patent Office, phoning a client or examiner, considering claim amendments to overcome objections raised by the examiner, reminding clients of deadlines, contacting foreign attorneys etc.

I am also involved in filing new patent applications. This is a very creative process and normally involves one or more meetings with the inventors, reading some background literature on the particular technology and drafting the specification. Normally the client provides further comments or additional data after the first draft, which need to be considered and incorporated if possible.  Throughout the drafting process - and this applies to all areas of our work - a continuous dialogue with the client/inventor is paramount, as they know their invention best and can tell you for which parts of the invention protection is particularly important.

On a more practical side, you might visit a client, attend a scientific conference or accompany your principal to "oral proceedings" at the European Patent Office (EPO) in Munich.

Some of your time as a trainee is exclusively dedicated to training and exam preparation, either in-house or external. Mewburn Ellis LLP provides a well structured plan of in-house tutorials, where you practise to draft claims and whole specifications, work through old exam papers and discuss your results with one of the partners. Most of the partners and qualified attorneys are involved in some aspect of the training so the trainees get the benefit of everyone's expertise. And even beyond the actual tutorials, people are always very willing to help if you are struggling. We also attend CIPA tutorials and lectures in preparations for the exams... and as you are probably already aware, you need all preparation you can get to pass the exams. They are difficult and a lot of people do not pass the first time they sit the exams. Despite all the help given it still comes down to a lot of self-discipline to revise and study at home. However, passing exams the first time is not everything (although it is of course excellent if you do). Doing a good job on the cases you are given is equally or maybe even more important.

And then there is of course the "odd job" in between: looking up a particular question of law, talking to an inventor on the phone, addressing administrative issues, attending internal meetings, attending in-house language classes, reading case law or reviewing literature in a particular field of science.  In summary, it never gets boring. For me it was definitely the right career choice. I enjoy the work, and I have not missed the lab bench once.

A Patent Trainee after 4-5 Years

Graeme Moore

I joined Mewburn Ellis LLP four to five years ago after spending a long time in academia, studying physics up to PhD level and then working as a post-doctoral researcher both abroad and in the UK. 

Although a cliché that is often used in relation to this profession, it is true to say that no two days are the same in this job – but naturally common threads can be found to wind through them. So, I thought it might be useful if I described a day’s work to give a flavour of what they might be.

Often, my working day begins around 9am or so when I arrive at the office, grab a coffee and turn on my computer. Today is no exception and I have two emails waiting for me – both from Japanese clients. The team paralegal has already spotted these emails and retrieved the relevant files so that I can assess how urgent the work is. One is urgent and so goes into today’s work pile, the other is not so urgent, so I acknowledge receipt of the email and put the file to one side to deal with later.

On checking my diary to see what other work needs to be done today I see there are three other matters which must be dealt with. Firstly, I have a response to a UK Patent Office examination report that is due tomorrow – this is my most pressing work. I also have a search report on an EPO case that I feel should be reported to the client today and a patentability enquiry that should be dealt with swiftly.

I spend most of the morning dictating a response to the UKIPO examination report. In this case, the Japanese client has provided some claims from an equivalent USA case that has just granted. He wants to try to have the same claims granted in the UK. Therefore, my job is to persuade the UKIPO examiner that the claims are allowable – not always an easy task, but in this case I think we have good chance. 

Whilst the response is being typed up, I turn my attention to the urgent email from this morning.  It concerns an EPO patent application. The examiner had telephoned us a few days earlier to propose some claim amendments that would render the application allowable in his eyes. As it happens, the applicant is willing to accept the examiner’s proposal. So I amend the application accordingly and draft an appropriate fax to the EPO examiner.  Although I have passed all the UK qualifying exams and am a registered patent attorney here in the UK, I am still waiting for the results of some of the European qualifying exams.  So, as I am not yet a qualified European attorney I cannot sign letters to the EPO.  Consequently, I have to draft the fax in the name of my supervising principal, who is one of the firm’s partners. 

As noon approaches I see that one or two more emails have come in from UK clients. They are simple enquiries, and so I reply quickly before lunch beckons.

After lunch, I turn to the EPO search report. It is technology that I am not immediately familiar with. So, I spend some time working out what the kernel of the invention is, and analysing the “prior art” cited by the examiner, which he asserts shows that the invention is not new. After some head-scratching I conclude he is wrong and dictate a letter to the client explaining how we might go about persuading the EPO to withdraw the objection. 

With that done, I turn to the patentability enquiry to begin assessing whether there is a reasonable chance of success of obtaining patent protection for a client’s concept in view of some prior art he has found. 

On the basis of the known prior art, I conclude that one or two features seem patentable and I begin to think of ways in which those features could form the basis of a claim for a patent application.  I decide to draft some rough claims to help clarify what the “inventive concept” is. I then draft a brief email to send to the client, explaining why I think the device includes features that may be patentable in view of the prior art he has sent me.  I suspect he will probably come back and ask me to draft a complete patent application for him, and so I offer to have a meeting with him to discuss in detail how we can move forward.

Finally, as there is some time left, I start to prepare some lecture notes on EPC2000.  I have been asked to give a presentation later in the year but the deadline for sending out the lecture notes to the attendees is fast approaching.  I shan’t finish them today, but at least I can make some inroads before finishing for the day…

So, have things changed over the past four to five years? Certainly – I am at the point now where I am taking more responsibility for my own work, and not having to pass every piece of work by my principal before sending it out. This is satisfying, but naturally at first this was slightly daunting too. 

The things that haven’t changed, and I don’t expect to change, include the need to be able to distil a concept down to its very essence (be it technical or legal) and then to be able to convey this in a clear and concise manner e.g. to a patent examiner or a client.  So, in my view, this profession requires a blend of technical knowledge and good communication skills (and the ability to work to deadlines!). 

On top of everything else, it is a very dynamic profession – the law is often changing and, particularly at the moment, it seems to be changing rapidly, and it is of course important to keep in touch with it.  This can involve a fair bit of work.

Ultimately, I can say that the variety of work and the various intellectual challenges that present themselves daily makes this a challenging but very satisfying job.  I’d recommend it!  

A Recently Qualified Patent Attorney


Sam Bailey

I joined Mewburn Ellis LLP in October 2002 immediately after finishing my DPhil in Inorganic Chemistry at Oxford.

I have now been in the job about 5 ½ years and am pleased to say that it continues to offer me new challenges and opportunities.

In March 2007, I managed to pass the final exam that I needed to become a qualified attorney.  This is what I had been aiming to do since starting the job so it felt like quite a momentous occasion when it finally happened.  The biggest change for me on qualifying was that I was no longer formally supervised in my work.  In reality, this shift from having all of your work reviewed by one of the partners in the firm to being able to send work out without another person commenting on it occurs quite naturally.  As you become a more experienced trainee your work tends to need fewer and fewer changes by the reviewing partner and by the time you are qualified, the idea is that you are able to work more or less independently.  Having said that, I still work with one of the partners in the firm and we still discuss awkward cases or specific legal points on a fairly regular basis. 

As a qualified attorney, I am now expected to start to take on responsibility for my own cases and clients rather than simply working on one of the partner’s cases.  However, in effect, most of my work still comes via more experienced attorneys because I have not yet built up the relationships with clients and foreign attorneys that are required for them to send their work directly to me. 

My working day has not changed dramatically from when I was a trainee.  I still have to tackle the same sort of tasks; I am just expected to do them more independently and without needing constant supervision.

Overall, I am still faced with challenges in my day-to-day work, both on the technical and legal side of the job and the career development side.  I am still learning new things almost daily and I still feel that my career has clearly defined goals in the future that I can work towards. 

A Partner

Richard Johnson

I joined Mewburn Ellis in 2001, immediately after finishing my MPhys degree in Physics from Oxford.  Even before doing my final exams I knew that I did not want to do research; the thought of concentrating on a small area of science in great detail for a number of years did not inspire me in the way that it does others.  Nevertheless, I enjoyed my subject, and really wanted to have a job that involved the use of technical or scientific knowledge, was intellectually stimulating and offered me a variety of work.  The job specification of a patent attorney seemed to fit the bill. 

As a qualified patent attorney you learn to take responsibility for the tasks you undertake.  One benefit of this responsibility is that you have greater control over the direction of the patent applications that you work on.  I have found that I am increasingly involved in discussing patenting strategy with clients.  This takes you out of the somewhat sheltered world of pure patent law and argument and makes you apply your knowledge to try to help your client achieve their aims.  This can be very challenging and equally rewarding.

In addition to the intellectual challenges of doing the day-to-day work comes further opportunities to develop a client base and promote the firm.  As a partner, these additional challenges expand further to include involvement in the running and management of the firm, including training of prospective attorneys.

Mewburn Ellis is keen to foster and improve links with attorneys overseas.  Soon after I qualified I spent three months with a large US intellectual property law firm.  The visit came about through an existing contact with that firm.  I spent two months with the known contact in Seattle and then a further month at the firm’s main office in New York.  The trip provided not only sustained exposure to how US patent prosecution works in practice but also an exciting and valuable opportunity to meet and establish relationships with many young upcoming associates.  Needless to say, living abroad for three months is also a mind-broadening experience from a personal perspective and to be heartily recommended.

The job continues to be a kaleidoscope of intriguing challenges and new experiences.  It is intellectually stimulating because I see new ideas every day which require scientific comprehension.  For someone like me, who craves variety in work and likes their brain to be constantly active, it is a very fulfilling job indeed.