#sheffvista 107 Dr Greg Ward, Senior Associate, Patent Attorney

Each Friday we post a new v i s t a profile, a career beyond the academy story (use the tags at the bottom of the post to find the entire list). These posts accompany our curated events to support post-PhD career transitions, v i s t a mentoring, and also #sheffvista on Twitter.

Job title and company: Senior Associate, Patent Attorney at Haseltine Lake LLP

Approximate salary range for your type of role: Trainees ≈ £28-35k, Qualified Attorneys ≈ £65-85k, Partners (or Heads of Department in large companies) £100k+

DSC_0007.JPGI decided not to stay in academia primarily because I was concerned about the lack of opportunities to obtain a permanent position (due in part to the cuts in research funding).  I was also concerned about becoming overly specialised, and spending the remainder of my career focussed on a very narrow area of research/technology.  I took aptitude tests at the university careers service, the two top matches for my profile were actuary and patent attorney, of which patent attorney sounded to me the more interesting option!

My main job is writing patent applications describing the inventions of my clients (usually multinational companies but also smaller companies or lone inventors), and then prosecuting the applications before either the UK patent office (UKIPO) or European patent office (EPO) in order to obtain a granted patent which can be used to protect an invention against competitors.  I also have business development responsibilities such as organising and attending meetings with prospective clients, and internal company responsibilities such as overseeing the training of new attorneys.

The career path for patent attorneys is typically quite regimented; this is a consequence of the professional qualifications that are required.  In the UK, graduates (with STEM degrees/PhDs) are hired as trainee patent attorneys, either by private practice firms like mine or by the legal departments of large companies. The trainee attorneys then work under the supervision of qualified attorneys until they have passed the necessary professional exams to practice before the UKIPO (as a Chartered Patent Attorney, CPA) and the EPO (as a European Patent Attorney, EPA), at which point they are described as “dual qualified”.  There are foundation and final exams for both qualifications, so 4 batches of exams in total. Dual qualification takes a minimum of 4 years, and it is common for trainee attorneys to fail one or more exams and thus take longer than 4 years to qualify.

The most obvious difference when comparing my role to academia is that I do not undertake any scientific research myself, instead I write about the results of research.  Also, although there are occasional trips to visit clients or to attend court, the job is largely desk based.  On the plus side, I work with a broad range of cutting edge technologies, and there is a large amount of variety in the subject matter dealt with on a day to day basis.

Patent attorneys will specialise in a subject area; this is necessary due to the level of technical knowledge required.  As an example of this, I have a physics background and now work with electronic/mechanical subject matter rather than, for example, biological or chemical subject matter.  Private practice firms typically have separate teams of attorneys working in different subject matter areas. In my subject matter area PhDs are advantageous but not essential, for some subject areas (e.g. biological subject matter) they are typically required.

If you are interested in applying for a job as a trainee patent attorney, there are a couple of things that you could usefully do to prepare to apply.  The essential skill for patent work is the ability to write clearly and accurately, so focussing on that skill would be worthwhile. Writing a PhD thesis is good evidence that you are able to prepare a detailed and accurate technical document. It is also worthwhile reviewing your undergrad notes, as a broad range of knowledge is required; you can expect to be asked questions about a range of topics in your subject area if you are asked to attend an interview.  Finally, although foreign language ability is no longer as essential as it was in the past, this is always helpful and worth mentioning in your CV/covering letter if you have it.

Where can researchers look for jobs like yours? The Inside Careers guide at ipcareers.co.uk is a good place to start, or the Chartered Institute of Patent Attorneys (CIPA) website.

What professional/accrediting bodies, or qualifications are relevant to where you work? The necessary professional qualifications are as an EPA and CPA, as discussed above.

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