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  • Writer's pictureAshley Tambe

Life as a Trainee Patent Attorney - how & why I moved from a background in STEM to IP Law

Ashley Tambe, a 1st Class MEng (Hons) in Civil & Structural Engineering graduate from the University of Manchester and Trainee Patent Attorney in the Mechanical team at Murgitroyd, Glasgow shares his experience of his background in STEM, how & why he moved from STEM to IP, what a Patent Attorney is, and the training involved and life at Murgitroyd.


Introduction

My name’s Ashley. I graduated with a 1st Class MEng (Hons) in Civil & Structural Engineering from the University of Manchester in 2021. I joined Murgitroyd in September 2021 as a Trainee Patent Attorney in the Mechanical team.

Prior to joining Murgitroyd, I was involved in a research scholarship programme at Oxford University. Here, I investigated the relationship between the choice of evaporative law and the formation of the ‘coffee ring effect’. My experience in the Engineering industry stems from a 3-month undergraduate placement spent assisting the infrastructure development of Northstowe. The works included the implementation of sustainable drainage systems, bridge reinforcement, service installation and highway construction.

What is a Patent Attorney?

Patent attorneys are people specially trained in the drafting and prosecution of patents. They lead clients through the process of obtaining patents, then represent the inventor in enforcing their rights if patents are infringed by a third party.

One key distinction between Patent Attorney’s and Solicitors is that Patent Attorney’s do not require a law degree. The Chartered Institute of Patent Attorneys (CIPA) and European Patent Office (EPO) require a ‘technical degree’ as a pre-requisite before sitting qualifying examinations. These tend to be subjects such as Biology, Chemistry, Engineering and Computer Science, where at least 80% of the modules undertaken are technical in nature. The majority of graduates begin their careers as a Trainee Patent Attorney in private practice, although in house legal teams for large Engineering, Software, or Biotech companies occasionally accept graduate submissions. In either case, a trainee will work under close supervision of a fully qualified attorney.

If working in the UK, you will usually be required to complete both UK and European exams before you are considered fully qualified. This process can take up to 4-5 years to complete.

Responsibilities include:

  • Liaising with clients to ascertain whether their invention is likely to meet patentability requirements

  • Analysing prior art and technical documents

  • Advising oversees patent agents on foreign patent applications

  • Drafting patents. This includes a detailed technical description, and a ‘claims’ section ultimately defines the legal scope of what the patent protects

  • Preparing responses to Search Opinions and Exam Reports issued by an Examining Division in order to overcome application objections

Why I moved from STEM to IP Law

By the time I was in final year of University, I had made up my mind that I did not want to pursue a career as an Engineer. While I enjoyed the course overall, I noted that my favourite modules where learning theory and scientific principles behind Civil Engineering, rather than the direct application to construction works. Luckily, I was already aware of the patent industry from one of my parents consulting them for an invention when I was younger. I took an optional Law module in 4th year which had a focus on Intellectual Property. While studying a module, I was realised that a career in the IP profession was the perfect way to utilize both my technical knowledge, analytical skills, and newfound affinity towards law.


To be sure I was making the right decision leaving Engineering behind, I contacted current Trainee Patent Attorneys on LinkedIn to discuss what they loved about the profession and why they made the transition to Law. Not only did their genuine enthusiasm further motivate me to make a switch, but they provided me useful application advice!

Life at Murgitroyd


Murgitroyd is a global firm of European patent and trade mark attorneys, with offices across Europe, Asia and the Americas. From day one, I was assigned a line manager and given the opportunity to work on real cases. I would describe Murgitroyd as a wonderful place to work. All staff are extremely approachable and I’ve always felt supported during my time here. One perk of being with a big private firm is that there’s a large support network. I have a mentor (a more experienced trainee) who is my first point of contact, but there are also a plethora of other trainees and directors I can request help from if I need to look at a task from a different perspective.

Similar to other firms, Murgitroyd splits its fee-earning technical staff into different teams. Coming from a Civil Engineering background, I work under the mechanical team, though there is often crossover between mechanical and electrical inventions. So far, I’ve worked on cases medical devices, rail innovations, compressed gas systems, construction tools, and automotive parts. As you can see, my workload is quite varied! Your line managers will not expect you to have any substantial legal knowledge before entering into the profession. Instead, you are gradually eased into tasks.



In my first few days as a Trainee Patent Attorney, I was getting familiar with case-management systems and reading prior art (it can take a lot of getting used to). I was also given the opportunity to observe oral proceedings at a case that had reached the EPO board of appeal! Weeks later, I found myself gradually being given more autonomy and responsibility. For example, rather than simply reviewing prior art and noting differences I found between cited documents and our client invention, I now draft response letters to the EPO or UKIPO. All my work is checked by my supervisor and I am issued feedback.

From a social perspective, our firm regularly funds trips for staff to meet for dinners or conferences. Moreover, I am a Regional Secretary for the CIPA Informals, CIPA’s student body. This means I am given the responsibility of organising Trainee Patent Attorney socials for IP firms across Scotland. Most recently, we all went to an escape room!

Training

The majority of the training as a patent attorney comes from doing work for your line-manager and receiving direct feedback. At the start, it can be a daunting prospect to hand in work and having almost the entirety of it crossed out and corrected. But that’s all part of the learning experience. Firms recruit trainees for their technical ability, written communication and potential. You are not expected to be great at forming arguments to Examining Divisions, or describing technical features in precise language from the get-go. All these skills are developed with time.

That being said, Murgitroyd is able to use the abundance of experience it has amongst its senior staff to supplement training through numerous avenues. We also have a Director of Training who oversees all trainee development and decides on external courses we can attend to assist with the extensive examination process. Training includes drafting tutorials; UK Patent Law introductory sessions; EQE/UK Final focus sessions; and even external courses at JDD Consultants.

Interview Advice

  • Selling your non-academic skills is just as important as emphasising your technical ability. Everyone applying will have good grades and a nice sounding thesis. You will want to talk about something personal that will set you apart. For example, a good chunk of my interview was spent discussing Korfball!

  • Be sure to message trainees currently working at the term for valuable tips! Not only will it help you know what to expect from the Partner interviewing you, but it will give you additional things to bring up with the Partner.

Future

What I love most about this profession is that every day I will learn something new. Whether it’s law, or if I’m learning how a new device works! I will soon be taking an IP PGCert at Brunel University. These will allow me to bypass the foundation exams in the UK qualification route. Shortly after I will begin preparations for the European foundation exams. Upon completion, I will be considered a Part Qualified Patent Attorney!


By Ashley Tambe

Trainee Patent Attorney at Murgitroyd, Glasgow

Ashley can be contacted via Linkedin and also recently took part in a podcast where he discussed his decision to join the IP profession for Murgitroyd's UK & Europe Graduate IP Recruitment Day.



Views expressed in guest posts are those of the authors and do not necessarily reflect those of The Scottish Lawyer.

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