A Career as a Patent Attorney

For me, the biggest draw towards the patent attorney profession was the promise of being able to work on something new every day. After a PhD and a short post-doc, I wanted more variety and a faster pace. Now in my fourth year at J A Kemp, I might work on five different cases in a typical week, each with its own unique challenges.

Another appealing aspect of this job is the ability to learn something completely new - law. The day-to-day work of a patent attorney requires us to combine legal and technical thinking. After years of narrowing your field of study throughout school and university, suddenly opening it up to something entirely different is quite exciting.

There are many aspects of our work that are intellectually satisfying. For me, I view a lot of prosecution as problem-solving. The prior art, the features of the invention, and the requirements of the law are the constraints. Your job as a patent attorney is to maximise the scope of protection for the client within those (and often other) constraints. Can you spot a restriction of the patent claim scope, which will enable the client to get worthwhile protection for their invention, whilst distinguishing the invention from what has come before? Or can you identify a flaw in the patent examiner’s reasoning and put forward a convincing argument? If you consider yourself a problem solver, you might enjoy this type of work too.

Last but not least, a great part of working at J A Kemp is the people I work with. There are many supporting staff and systems in place to support your work and keep everything running smoothly. Exams can be daunting but everyone around you wants you to succeed. Plus, you get to work with lots of clever and interesting people. If you are coming from working with academics, you will find that patent attorneys aren’t too different (and hopefully, like me, you consider that a good thing!)

"After several years involved in academic research, first completing a doctorate and then working as a post-doctoral researcher, I knew that I would pursue a career in science. I considered many different options, but none of the careers I investigated offered me the balance I was looking for – the opportunity to be exposed to cutting-edge science whilst retaining a broad focus on a wide range of specialisms. However, when I looked into the work of a patent attorney, the job seemed a natural fit: being immersed in the latest scientific developments, but working with a legal and commercial mind-set.

I joined the Chemistry and Pharmaceuticals Group at J A Kemp in 2013 with a MChem and DPhil from the University of Oxford, plenty of enthusiasm and a desire to learn more. From day one I have been immersed in the work of the group, handling various aspects of drafting and prosecuting patent applications in the UK, Europe and around the world. I have worked with clients ranging from university departments and spinout companies to global pharmaceutical firms, and in technology areas ranging from cosmetics to cancer imaging agents. Each new case has its own complexities, and there is always something new to learn.

At J A Kemp, all new trainees are assigned a partner in the firm as a mentor. This is the main person responsible for overseeing your professional progress and ensuring that you are exposed to a wide variety of work at an appropriate level. Being exposed to real client work from the start gives trainees at J A Kemp an excellent grounding in patent law. This is backed up by an extensive series of in-house tutorials to support trainees in passing the necessary professional exams.

Of course, there is more to life than work. J A Kemp encourages all employees to enjoy a healthy work-life balance. Work as a patent attorney is not all-consuming. You are not required to work the long hours, including weekends, that are the norm in many other professions. As you progress in your career you will be expected to travel overseas on business though, for patent office hearings and to visit clients and prospects in the USA, Japan and other major markets.

As a trainee attorney, much of the day is spent working in the office. However, a regular cycle of social events- from summer and Christmas parties to quiz nights and pub trips - ensures that there are plenty of opportunities to socialise.

There is no short cut to qualifying as a patent attorney. The process takes time, hard work and dedication. However, the rewards of a highly stimulating job with real-world impacts make it well worth the effort."

"The patent attorney profession combines law with a technical understanding of the basic science underlying new inventions. I work with a range of clients, from small startups to universities and large corporations, to secure patent protection in various jurisdictions worldwide for the inventions that they have created.

My job allows me to work in a business-orientated office environment whilst still having a strong connection to basic science.

I particularly love the variety of work that the profession offers – no two days are the same! One day, I might be drafting a new patent application for a startup biotech client, another I may have to formulate arguments to overcome objections raised by a patent examiner against an application relating to polymer chemistry

On a few occasions I have had the opportunity to assist a partner at an opposition hearing before the European Patent Office. These hearings take place in either Munich or The Hague when one of our clients is involved in a dispute with a third party over the validity of a recently-granted European patent.

Another huge positive for me is that I have been able to take on responsibility for certain aspects of very interesting projects, often working alongside senior partners, from early on in my career."

"Like a lot of people, I greatly enjoyed my PhD research but knew halfway through that I did not want to make a career out of it. I didn’t find the day-to-day lab work very engaging and, on a more practical note, the lack of job security also turned me off.

I met some patent attorneys at a STEM careers fair, and the more I heard about working in patent law, the more it appealed to me. In particular, I was more interested in reading and writing about research than doing it myself. I also wanted an intellectually challenging job in which I could use my scientific knowledge in a commercial context.

The support provided for our training and professional development includes in-house tutorials, weekly team meetings, a monthly ‘junior journal club’ where trainees review case law, regular webinar viewings and plenty of ad-hoc teaching from the partners as we work on cases with them.

Every trainee is assigned a partner as their mentor, who provides a lot of their work for the first few months as well as a friendly face they can go to with any questions or problems. That said, we quickly start working with several different partners, which provides a great wealth of experience to learn from. As J A Kemp is a fairly large IP firm, we get to work on an interesting and diverse range of inventions - I regularly work in the fields of pharmaceuticals, biologics, polymers, process chemistry, electrochemical devices and more.

A ‘typical day’ for me might involve, for example, responding to client queries, preparing written arguments, researching case law, discussing a case with a partner, analysing ‘prior art’ scientific documents and/or calling up the UK or European patent office.  The job is very deadline-oriented and you do need to be organised, but the firm has a range of systems in place to facilitate this and our secretaries are always willing to help.

An IP firm like J A Kemp is also a very friendly, sociable place to work, with plenty of firm-organised events and parties, more casual trainee-organised quiz nights and sports, as well as just simply heading to the pub after work."

"I wanted to pursue a career in science after completing my PhD, but was ready to move away from the bench. I was interested in a role where I could continue to evaluate implications of results from scientific research, but apply them in a more commercial environment.

I learnt about the patent profession from a university friend who had qualified as a patent attorney. I was attracted by the mixture of scientific, legal and linguistic skills involved in the job. I was also attracted by the main entry requirement to the profession being a scientific qualification, such that I did not need to completely re-train as a lawyer. Instead, the specific legal knowledge needed to practise as a patent attorney would be learnt gradually while in the job, with a series of examinations to obtain the necessary qualifications being taken at various stages.

We work for a variety of technology-based organisations, from universities

to startups to large life sciences companies. Each type of organisation has different needs for patent protection – from securing investment/assisting commercialisation for universities and startups, to providing a valuable monopoly right around commercially important technologies for established life sciences companies. The work we do ranges from drafting/filing of a first ever patent application for a new start-up to defending a key patent protecting a commercial product against challenges by third parties.

I enjoy the satisfaction of seeing work I have carried out for a client achieve tangible results for their business. The quality of drafting of a patent can impact on whether a key investment needed to grow a business is made or not. Succeeding in defending a key patent can prevent competitors from developing similar products and help a client maintain a leading market position. One of the most important projects I have worked on related to defending patents being enforced against competitors in national courts – if we had not been successful in defending the patents, the client would not have been able to prevent competitors from using their technology.

Defending or opposing a patent involves oral hearings in which you act as an advocate putting forward arguments for your client, and responding to counter-arguments from attorneys on the other side, to try to persuade the tribunal of your position. The proceedings can be very complex, challenging and unpredictable and require quick thinking on the day!

Another interesting aspect of the job is the international reach of the patent system – we work for overseas clients and also with attorneys in other countries, to obtain patents in a range of countries all around the world. More recently, I have also had the opportunity to work in our new European office in Paris and to help develop our business further in France and continental Europe, using both English and French in my work.

My role is mainly desk-based but most days I will also have conference calls or meetings. It is often important to discuss cases with clients after providing initial recommendations in writing to agree a final decision as to how to proceed. It is also important to meet inventors in person to get to grips with a new technology.

On a given day, I will deal with a large number of different projects, each at different stages in the patenting process – I may review a description of a new technology from a client and assess potential for patent protection, or review objections from a patent examiner for an ongoing patent application and evaluate how best to overcome these. I enjoy the variety this provides each day, and the challenge of managing a large number of ongoing projects at different stages. There can also often be unpredictable new actions such as a client asking for a new application to be drafted at short notice, or a client needing advice in a new dispute with a third party."

“Many patent attorneys enter the profession after spending a period doing research in the laboratory and deciding there is such a thing as too much science. I did the opposite! After graduating, I worked in finance for several years, but missed using the technical knowledge that I learnt during my degree. I decided that training to be a patent attorney would allow me to have the best of both worlds – using my scientific knowledge in a commercial setting.

At J A Kemp trainee patent attorneys are given a wide variety of work (on real cases) from day one. There are in-house tutorials throughout your training. The programme kicks off with a thorough grounding in the basics in your first couple of months at the firm, moving on to more advanced topics as your knowledge grows. In the run up to the professional exams, which are taken over the first few years to qualify as a patent attorney, the focus is on exam preparation.

You will be given a mentor at the outset of your training. Your mentor will have overall responsibility for your training, but you will work with several of the firm’s partners on a mix of cases. This is a great opportunity to experience different styles and approaches to patent work as you develop in confidence and learn the job. It also means that your caseload is varied – I work for all types of clients, ranging from tiny startups to huge multinationals, active in the UK, Europe, and all over the world, and handle patent applications for everything from jet engines, to bone implants, to coffee machines!

In a typical day, I will work on several different cases. I might be writing a new patent application for a client, preparing arguments to submit to the patent office, or, on a good day, writing to a client to tell them their patent has been granted! There are other types of work too, such as writing infringement opinions or carrying out due diligence work for companies that are looking at acquiring patents.

Although I came into this career by a roundabout route, I have no hesitation in recommending it to anyone who is looking for an intellectually challenging job in which they can use their scientific background to help businesses.”

"After completing an undergraduate degree in Natural Sciences at the University of Cambridge, I stayed on to do a PhD in Pharmacology. At the time I knew that I wanted to remain in science, but I soon discovered that academic research was not for me. I began researching options and stumbled across a job advert for “Trainee Patent Attorney”, not knowing at the time what exactly the job involved. However, since my experience seemed to match the job requirements, I decided to look into it. To my delight, the job seemed like a perfect match! I was (and still am!) particularly fascinated by the job’s unique combination of science, law and business, and the opportunity to work on a broad range of technology areas. I sent out a few applications and was extremely fortunate to be offered a place at J A Kemp.

I joined J A Kemp’s Biotechnology and Life Sciences Group in October 2014. I remember working on real cases on my first day, which was daunting initially. However, it is amazing how much you can learn by just doing the job. As I have progressed through my career, I have also had increasing responsibility. I have been involved in prosecuting patent applications not only in the UK and Europe, but also worldwide. I have handled work for different clients, ranging from start-ups, SMEs and universities to multinational biotechnology and pharmaceutical companies. The cases that I have worked on span a wide variety of different technology areas, such as antibodies and biologics, vaccines, plant sciences and medical devices, to name a few. There is always something new sitting on my desk that presents a different challenge, so I am pretty much guaranteed to never get bored! I also find it very exciting to follow the progress of a case that I have contributed to, knowing that everything I have done is making a real-world impact. 

Other than your professional development, there are also plenty of opportunities to get involved in other aspects of the business.  For instance, I have had the opportunity to be involved in business development in China, which involved meeting Chinese visitors, attending business development events, and even going on business trips abroad.

In the first few years as a trainee patent attorney, you will take a series of professional exams to become qualified as both a European and UK (chartered) patent attorney. I can tell you from first hand experience that it is definitely a challenge to balance work and study. Luckily, at J A Kemp, trainees receive a lot of support from the firm. A comprehensive in-house training programme is provided to help the trainees pass these notorious exams.  We also get a generous amount of study leave. Your mentor will also make sure that your workload is decent and that you are generally feeling happy about everything (other than the fact that you need to take the exams!).

One thing that I particularly like about J A Kemp is the exceptionally positive and supportive working environment. I am encouraged to ask for help whenever I get stuck and everyone is always willing to give a helping hand and offer their advice. In addition, you will have the opportunity to work with different partners, which I understand is not always the case at other firms. Being exposed to different working styles has certainly helped me develop my “creativity skills”. Undeniably, these skills have proved to be useful, especially when formulating arguments in response to the patent examiner’s objections!

Looking back at the past few years, I feel very privileged to have entered this profession, and in particular, that I started my career with J A Kemp. If what you have learned and heard about the profession appeals to you, I urge you to start sending out applications. Good luck!"

"When I was exploring career options in my final year at university, I went to J A Kemp for an interview and was immediately 'sold' on the profession because of its unique mix of science, law and business skills. The interviewing partners tested my technical reasoning powers with some tough questions, but it was clear from the outset that they also wanted people with the drive and personal qualities to go on to win and retain clients for the firm.

What do I like most about the job? It’s difficult to know where to start!

The technical interest that I had in my degree subject when I first entered the profession is still there, but it has changed and developed over the years. I am now strongly focused on the commercial applications of science.

Overlaid onto the science is the massive and diverse field of patent law – worldwide! Being a large firm, we keep abreast of all significant developments in every country. Some of my most interesting work involves the contentious side of patent law, defending or opposing major pharmaceutical patent applications, often before the European Patent Office but sometimes elsewhere.

As a partner, I also have significant responsibility for developing the business of the firm. I really enjoy this aspect of the job. It starts with managing and building relationships with existing clients, but I also enjoy geographically focused business development. I visit India every year and also travel frequently to Germany, Spain and other European countries, as well as trying to fit in at least one trip to the USA each year.

In a firm such as J A Kemp, all partners have responsibility for mentoring attorneys. One of the most satisfying aspects of the role is to see a junior attorney progress and develop the intellectual and personal skills required to succeed. Sometimes it is when the ‘penny drops’ about an aspect of patent law or prosecution. On other occasions it is about client handling skills, learning to maintain a professional demeanour whilst showing a human side. Some of these skills can be taught, but it is often about bringing out an attorney’s personal qualities and building their confidence.

In summary, it is the variety of activities and skills that I enjoy in this job. The technology and the patent law are each intellectually challenging enough in themselves, but the job brings them together in a uniquely satisfying combination."