18 May 2022
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“I've got brothers, so I'm used to interacting with men,” says Emma Graham. And that’s just as well for a woman who completed a PhD in laser physics, specialising in Attosecond physics (which involves light-matter interaction on minute timescales) and then was drawn to the role of patent attorney. In both environments she will have been a bit of a rarity, with study of STEM subjects and patent law largely skewing towards male participation, even today.

Just as scarce, perhaps, are physicists who enjoy the creative aspect of writing – as Emma says she did. And it was the opportunity to use scientific and creative skills at the same time that led her quickly from academia to a career in IP. “When I started to do interviews, I really enjoyed the process and it was clear to me that this is what I really wanted to do. I started at Mewburn Ellis the day after I handed in my PhD thesis – I was pretty keen,” she recalls.

More than a decade later, being confident in her skills in challenging surroundings is a help at EPO opposition hearings, which she says can be a high-pressure environment. “These cases feel incredibly important to me, but they are orders of magnitude more important to my client. They've spent a huge amount of money on the patent, they're spending a lot of money on the day, and they want success.”

It's a process, Emma says, that has “a lot of moving parts”. “You've got your opponent and its team on the other side of the table, you may have a client next to you giving you notes, and then in front of you are the opposition division members that are making the decision.” You've also got all your documents in front of you and all the facts and arguments you've prepared, she explains. “You have to juggle many bits of information in real time.”

What makes an attorney great in this situation, she says, “is being able to hold in your head all of the work you've done in figuring out the facts of the case and understanding the science, but at the same time to see the bigger picture.” And her strategy for doing this sounds simple: “You just need to stay calm, continue to get your points across and remember where it is you want to lead the opposition division to.”

The really challenging bit, she says, can be ensuring that her plan for achieving that success is understood and supported by her clients. That may mean taking a different route than one they map out initially. “Our clients are intelligent people and they come up with lots of great suggestions. But sometimes on the day you have to go against those because you know that the best way to win is take a certain route or make a certain argument. There have definitely been instances where it's been a difficult decision to say in that moment, ‘I think it's better if we don't go with what you want’.”

Luckily, she says, “I've always been right, we've won the case in the end, and it's been the right decision”. Yet making these calls without making the client unhappy is tough, and Emma says it comes down to developing an atmosphere of teamwork and trust. “The clients I've been working with for years see me as one of the team – and I feel that way too. I'm genuinely interested in and enthusiastic about what they're doing, I really care about their technologies and their commercial goals, and work with them as a partner.”

She relies on a big dollop of truth, too. “Before an opposition hearing, I'm quite honest and open with my clients about what all the potential pitfalls could be – I don't hold back from telling them the whole picture. But I'm also honest about the way that I think we should overcome all of those. I like to be aware of every possible way in which our case could fail, to have thought about it and come up with a plan.”

“Great attorneys have a Plan B, and even better attorneys also have a plan C, D and E, just in case,” she laughs.


Emma is co-author of our Special Report, EPO Opposition Trends in Engineering, Electronics and Software. Register to receive your copy here.

Emma works across all stages of the IP lifecycle from drafting and prosecuting patents to managing offensive and defensive opposition proceedings at the EPO. She is particularly experienced in the fields of photonics and Computer Implemented Inventions (CIIs). Emma’s opposition experience includes the management of large opposition portfolios and she regularly advises on wider IP strategies within contentious technology areas, both in terms of advising on patents that cause potential issues for her clients and also in helping her clients to build up patent portfolios that are robust against attacks from others.

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