5 November 2019
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As part of our 'meet the team' series, we talk to Katherine Green about her journey to becoming a patent attorney and approach to oppositions.

“Arguing with people about molecules is my dream job,” says Katherine Green. It was a stroke of luck, then, that she discovered the role of patent attorney. She had dismissed the possibility a number of times while completing her Ph.D (looking at reactive oxygen species  production and metabolic efficiency in pancreatic beta cells), when several of her tutors or colleagues at Cambridge University suggested it.

“I didn’t take much notice,” she recalls. “I was more into presenting and writing, and I knew these were my strengths. I liked teaching undergraduates. I even really enjoyed writing up my Ph.D thesis, which most people hate!”

However, the more she learned about what is involved in the patent attorney role, she says, the more she thought she would be good at it. “I’ve always explained things to other people and enjoy breaking things down to make them understandable. And then I learned that you also have to present ideas to a room of people – I do get to use a lot of the skills that I felt were always my strong points.”

Having joined Mewburn Ellis, she found she really liked the role – particularly the opportunities the profession provided for having a good argument: “I was introduced to opposition cases at a very early stage of my training and I haven’t looked back since.”

What’s best about oppositions work? “I really get a kick out of winning difficult arguments,” Katherine explains. “I also like going into detail; lots and lots of detail. Basically, I can burrow deeper and deeper into one argument for chapters and chapters.”

This particular skillset served her well on the very first opposition case on which she was the lead attorney, which was defending a patent against 10 opponents. In the appeal brief she wrote more than 70 pages of arguments on just one important argument – and won.

There were lots of other things she loved about that case, she says. But the victory on that particular argument led to the case being cited in the Guidelines for Examination at the EPO, which is a rare accomplishment.

“I’m very proud of that,” says Katherine, understandably, adding that she keeps a large print out of the page of the guidelines that has the case on it – T99/13 – on the wall of her office. She’s pleased that the client involved can also take pride in this achievement on its behalf.

She’s keen to stress, however, that for all the talk of arguing, at its heart an opposition hearing boils down to one thing: communicating effectively. And that’s what she tries to focus on.

“I really enjoy taking something that is complex, like a new invention, and finding a way to use as few words as possible to make it easy to understand – that is the real challenge. It’s a job I relish.”

Katherine also applies a huge amount of thought to how to present her arguments so that they will have the greatest impact. “I will practice arguments on colleagues or anyone that will listen and see what they think. Then do whatever is needed to make it as effective as it can be on the day. I never present an opening argument out loud for the first time at the hearing.”

Her aim is to lead the examiners through a clearly signposted journey, letting them see just what is most important along the way. “You want people to have a sense that they are in a safe pair of hands and that you are taking them to the destination they are expecting to go to.”

Even if she is passionate about winning the case you won’t see it expressed in the way she presents it, whether verbally or physically. Being calm, seeming reasonable, and providing that clear path is much more helpful for getting the result you want, she says.

These days, Katherine says she’s “totally in awe” of her friends that still work in academia, and she keeps up with many who are involved in research, picking their brains about what they are doing in the lab – but feels she’s in the right place in terms of her chosen career.

Yet there is still something of the lab-rat lingering. She loves to bake bread and has been making cider from her back-garden apple trees for the past decade: “I have realised that most of the things I do involve fermenting things with yeast. That might be an expression of my frustrated lab-based side – some home-based microbiology!”

That’s not to say she doesn’t feed her science interest at Mewburn Ellis, where she feels fortunate to have worked on technologies like CRISPR/Cas9, which she describes as the most amazing invention in decades. “CRISPR/Cas9 is as exciting as it gets for a person like me,” she says. “This gene editing tool is genuinely revolutionary and came totally unexpectedly from the field of bacterial immune defences – when I was an undergraduate that field didn’t even exist.  I feel very lucky that I get to learn about it in depth as part of my job even though I’ve left the lab.”

What continues to inspire her is this way that new discoveries can come seemingly from nowhere and fuel an inventive revolution.

“That is what I love about science – you can never see the next thing coming! That’s also one of the things I love about my job.”

Katherine is a Partner and Patent Attorney at Mewburn Ellis. She specialises in EPO oppositions and appeals, particularly defending patents in complex opposition cases involving very large numbers of opponents. Katherine advises on European prosecution strategies for many important patent families, particularly divisional strategies for opposed patents. Her prosecution work includes advising on securing grant for the high-profile family of cases protecting CRISPR/Cas platform technology invented by Jennifer Doudna and Emmanuelle Charpentier.
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