Flexible Working & Career Breaks: A Personal Perspective

In advance of IP Inclusive’s Women in IP Flexible Working & Career Breaks Event, this post sets out some of the things I learnt taking a career break (shared parent leave) and working part-time. I hope it may be useful for others considering “off piste” career options.

For context, I have stuck my route through this whole thing at the bottom. Although I come at it from the point of view of a patent attorney, many points apply to other roles within the intellectual property (IP) profession, including paralegals, searchers, examiners, “back-office” roles, and IP solicitors.

Another disclaimer: these are my own views and not necessarily those of my employers present or past. You may also disagree; I am open to (polite!) discussion in the comments below.

As everyone likes “listicles” (or so say the £300/hour marketing consultants), I have decomposed my experience into ten key points:

  1. There is no “official” path
  2. You are lucky
  3. Switch your view
  4. You have a choice, but you can’t have it all
  5. Time = Money = Career
  6. The Patriarchy is accidental
  7. Two is better than one
  8. There is life outside of London
  9. Remote working works
  10. Imperfect Balance

Intrigued? Let’s have a look.

There is no “official” path

gray pathway surrounded by green tress
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When I first entered the world of intellectual property there seemed to be a well-defined structure: start in a junior role, put in the hours, work your way up to a senior role and a larger salary, work for another 20 years, get a gold clock and hope you have a defined benefit pension scheme.

This world is changing. Maybe it didn’t really exist at all. Assumptions are being called into question. The opening up of the workplace to a wider variety of backgrounds, together with general societal trends, means that people are taking a different, more realistic, and in many ways healthier, approach to work and careers.

Work for long enough and you too may see the cracks in the traditional narrative. Staff leave and join. Things you assumed were part of a “life path”, like housing or good health may no longer be available. Over the water-cooler or a networking pint, you hear whispers of others “doing something different”. You see people get lucky and unlucky rolls of the dice. You begin to learn that there are other possibilities, and that the hardest part is often imagining them.

The Internet and social media is a great help with this. You can see people move around on LinkedIn, post about their experiences on blogs such as this, or comment on Twitter.

Start with honesty. If things don’t seem to be working, try to work out why and don’t assume that there is a set structure or path you need to follow. Reach out to others in your employment, or via social media, to see what other routes there may be. Don’t be afraid to chat things through informally with your employer, line manager or a member of human resources; in my experience any fear I had was misplaced and people genuinely want to find something that works for everyone.

You are lucky

green club flower
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If you are working in the world of IP, you are lucky. This applies regardless of your role.

Don’t believe me? If you work in private practice, you can look up the accounts of patent and law firms for free at Companies House. You will see that these businesses do not operate with food-production or milk-farmer level margins. Technology companies also tend to be better placed in the economy than other sectors, such as retail. Yes there are worse years and better years, but look at annual profits or average partner remuneration (spoiler: private practice averages are somewhere between £200k and £500k). The patent profession is “effectively a legal cartel” (quoting Sir Colin Birss).

This means that there is more monetary slack in the system than there may be in other industries. The skills of all roles are in high demand. This put employees in a good negotiating position. Firms and companies need to retain trained staff, and most firms and companies are always looking for more staff. Use this to your advantage. You have the margin to be brave in your choices.

Switch your view

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That being said, businesses need to be run, and they need to make a profit. I’ve been on both sides of the managerial chair. If you want to branch out beyond the normal 9-5 employment contracts, your options also need to make managerial and financial sense for those you are working for. In an ideal world, it would be nice to live an idle life on  law firm partner pay. But we can’t all be Jacob Rees-Mogg.

A good place to start is to work out your cost to your employer or to those using your services. Think about how your employer affords your salary or pay. In private practice, income comes from invoicing clients. In industry, a department may have an annual budget, revenue targets and key performance indicators. Remember that you often cost more than the money you receive in your paycheck. There is tax, national insurance, employee benefits, office costs, training costs, pension costs, etc. etc.

Then think about how your activities fit into the value chain. Docketing or paralegal cost may be charged as a “service fee” or have a budgeted amount per case. How much of your effort is required per work type? How much do you need to be paid to cover your personal expenses? How many hours do you have available per day? What seems like a endless series of choices can be whittled down to a practical proposal.

For employers, “flexible working” and “career breaks” have often been viewed with distrust. It was thought that employees could not be trusted, that flexible workers were too “difficult” to manage, or that the bottom line would fall. None of this has really come to pass. Indeed, the more astute employers are realising that in a field where there is a large demand for skills, offering flexibility can be a great selling point. Work/life balance was recently voted the most important concern for attorneys, above salary. Turns out wealth isn’t everything, who would have guessed? Beyond recruitment, a flexible workforce can also benefit the bottom line, helping get the day jobs done and freeing up in-house attorney time. The legal market is stretching vertically and approaches traditionally applied by counsel in industry to manage outside counsel are now being applied by law firms to manage virtual teams.

You have a choice, but you can’t have it all

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In my experience, running one or more households and caring for one or more human beings is a full-time job. Trying to wish otherwise is unrealistic. The choice comes in the form of the person (or persons) doing this job. It could be:

  • one person full-time without pay (e.g. the traditional “houseperson” or grandparent);
  • two people part-time without pay (e.g. two freelancers or a “second job” + grandparent or sibling);
  • one person full-time with pay (e.g. a childminder or full-time carer); or
  • one person doing this part-time without pay and one person doing this part-time with pay (e.g. the also semi-traditional “second job” + “help”).

The person could be a parent, a child, a family member, or a friend.

For some the choice may not be much of a choice. Each person has a different set of circumstances. Some options may be easier than others. Many options may only be options if something is given-up or bartered. Having your cake and eating it is like a free-lunch, you are paying somewhere, it just may not be obvious at first sight. These may not be as intuitive as you think they are.

What you can’t try to wish out of existence is the caring role itself. I like to view carer roles like physicists view dark matter – just because you don’t see them doesn’t mean they are not there. It is a cliché (but true) that for every person with external responsibilities working 12-hour days there are others that we do not see working hard, and we may never directly see this effort. It seems tragic that it is only recently we are being to talk about how these roles are divided, and realising that a majority of the population may have an opinion on the matter that differs from our expectations.

Time = Money = Career

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Once you have set out the demands of your external responsibilities, your job responsibilities and your expenses, you can start to map the options available to all parties in a household.

Three levers you can vary are: time, money and career. These are interconnected. You can have more time, but this may come at a literal cost to your wallet and a figurative cost to your career (or at least a certain image of your career). You can have higher pay, but you may have less time.

You may have more control over these than you think. Most people think of money and career as a one-way street (for the patent attorneys: “a monotonically increasing function“). Looking at the hours many senior staff put in, as you rise in your role, your “free” time also diminishes. Many of us know senior partners in law firms or department managers that are checking their emails while on holiday or in the evenings. This email time is time that is not available for a role caring for other human beings, or doing household chores, or taking up a hobby, or volunteering in a local group. Time is a fixed quantity. Remember the cost is not always visible.

In negotiations for flexible working do not be afraid to trade salary for time. If you have fewer hours available per week, e.g. because you have to care for a child or relative, this will mean you can work fewer hours per week. However, make sure that you are not being paid less for the same work. Look at the value your work provides your employer – for a paralegal this may be charged out directly, for an IT support role this may be indirectly charged out as patent attorney or paralegal time (if the computers stopped working no one could charge anything). This may be harder for roles in industry than for private practice, but you may find a costing for IP in an annual review or a licensing income you can use to justify your value. You may feel a bit besmirched putting everything in monetary terms but remember this is not your value, it is just a representation of your value for dealing with an entity whose purpose is monetary (to make a profit). You can increase your chances of success by playing the game. You can also play around with the figures, and mock up different scenarios.

The Patriarchy is accidental

grayscale photo of four men sitting on bench along the street
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In private practice, most law firms have a heavily male partnership. Roles in industry are better, and it is good to see Women in IP highlighting senior female figures in IP, but there is still a male skew (evidence: attendees at CIPA Congress 2018). There is also a female skew to paralegal roles. Some believe this is driven by unintelligent design; I’m more of the opinion this is a historical accident that is open to change.

Now I’m not going to take on what is a huge issue, and walk briskly into a minefield. But I can just about see how a heavy-male skew in senior patent attorney roles can arise. First there is a bias towards men working in science and engineering (one I’m trying to reverse with my parental nudging to my daughters). Second to enter partnership in private practice you need to work hard and have excellent billing figures. The time many enter partnership also overlaps with the time that many start a family (30-40s), or if you have older parents, manage their ageing. Even at the most progressive patent firms, partnership and a 3-day week is generally not an option. To be fair, it is difficult (impossible?) to provide full 24-hour service to demanding clients and provide full 24-hour service to demanding children. Cultural bias, breastfeeding, self-affirming networks, the need to physically recover after birth, and the need to pay the bills all conspire to nudge the pinball of life towards traditional male-female caregiver roles. Now just because something is, doesn’t mean it should be. A first step is awareness; a second step is change. I receive many a confused look from men when I ask them whether they are willing to give up their own career development for a time to allow their partner to rise up through the ranks. Normally this is excused on monetary terms: we couldn’t afford it. Forgive my scepticism, but in the patent world this can come from people earning six-figure salaries. The average UK full-time salary is below £30,000 (gross).

Once you see the random trail of the pinball you can take more control over its direction. As a business owner or employer you can make the playground equal to allow both men and women to take time off. You can change how work is performed to make it easier to distribute work in a piece-meal fashion, facilitating flexible working. Men can realise that they may need to adjust their perceived route through life, that there are other paths. We can all switch off our phones at 5:30pm.

Two is better than one

photography of two clowns in the street
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In you live in a two-parent household, we found that having two people work part-time or flexible roles is better than the traditional breadwinner / houseperson split. In purely financial terms, in the UK, you can be 15-20% better off with this arrangement, based on tax rates and penalties regarding child benefit and childcare.

Having two people work part-time can also allow a career to be pursued to a lesser extent by both parties, rather than requiring the traditional sacrifice from one half of the household. This has benefits outside of pure employment. For example, the experiences of both parties are closer, which reduces resentment and facilitates understanding.

For the partner used to working long office hours, there are benefits to stepping off the pedal and taking on more of the unpaid household tasks. Dropping the kids off at school or childcare allows you to become involved in your local community, and move out of a workplace or professional bubble. It is very easy to get caught up in a world of work, but such a world is fairly brittle. If the unexpected or unwelcome hit, they often hit hard. Working flexibly or part-time allows you to build up social capital that can make you more resilient.

Bronnie Ware, an Australian palliative nurse, noted that one of the top regrets of dying male patients was “I wish I hadn’t worked as hard”.

There is life outside of London

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*A collective gasp is heard along Chancery Lane*

Live in or around London and London often seems like life. It is not. There are IP roles outside of London. Not all large businesses have their headquarters in London. There are private practice offices in most UK university towns.

Living outside of London could half your housing and living costs, with a smaller proportional drop in salary. You could move somewhere where you can walk or cycle to work. Work outside of London and you can avoid commutes that clock up as an hour each way with what seems like the entire population of Denmark. Yes, there is less culture, fewer venues, galleries and restaurants, but have three kids and you rather quickly end up going to bed at 9pm and a walk to the shops resembles a military exercise. You are also not confronted with raging inequality that takes mental effort to filter out and rationalise everyday.

Remote working works

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When I started in the profession we were only just beginning to receive instructions by email. This was seen as “something not quite right”. Post (or perhaps facsimile transmission) was “how things were done”. People shuffled between patent firms and the London post branch of the UK Patent Office with brown-wrapped parcels. Work literally piled up in front of you.

In over a decade much of this has changed. Working can often feel like the film Inception as I dive into virtual machines within virtual networks within virtual machines. You can file a patent application from anywhere in the world. You can receive all communications electronically. Online file and docketing systems manage files and due dates in the cloud. Everyone loves Microsoft Word (okay that one isn’t great).

One of the panel at the Women in IP event, and an ex-colleague, spent a year working as a patent attorney while circumventing the globe. I know of patent attorneys who work for UK firms that do not live in the UK.

As a slight caveat, I am relatively IT-savvy.  But I was surprised at the ease with which I could work outside of the office on a laptop or computer. All you need is good WiFi. Do not be afraid.

Imperfect Balance

orange cube
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Life often seems to me like a Necker Cube. Look at it one way and you are a total failure,  miserably falling short of your true potential. Flip your frame of reference and you are a wild success, much better off than most of humanity, alive or dead. Both may be true. No one can know for sure.

You have to be realistic. I spend much more time with my kids that many dads. But this doesn’t mean we live in Von Trappian bliss. If anything I probably get cross at my kids more than the average bedtime or weekend dad. Much of my day can pass in domestic drudgery (washing, dishes, shopping, cooking, ferrying; then repeat). But I feel richer than a Partner in a London law firm.

Human beings have known for over two and a half millennia that truth and success lie in a middle way. But this is hard because our desires, inclinations and habits pull us to the poles. You need to exert effort to stay balanced. Like riding a bike. Knowing how to do this takes years and is a skill you acquire. It doesn’t arrive by magic.

Working flexibly, taking a career break or changing your career may need you to give up certain things. But you can gain other things that can provide a path of fulfilment that may not be visible in life’s melee.

My Route

Photo 20-09-2018, 17 03 15
Note: Mess and the CIPA Journal

I started off my career on the well-trodden patent attorney path. In my last year of university I sent off my letters to most of the patent firms in the Inside Careers guide, and ended up being lucky enough to be accepted for a training place at Gill Jennings & Every (GJE). Things went pretty smoothly for the first few years: I had success on the QMW Diploma course and the European Qualifying Examinations, and was progressing nicely within the firm. I got married and we were looking at buying somewhere to live in Wood Green. Then life, as it does, threw a few curve balls.

First, the “Great Recession” hit. Suddenly work started to dry up, and recruitment froze. It didn’t feel like a huge event at the time, but in hindsight it was clear that a general feeling of uncertainty and chaos hung around. Second, a close friend tragically died. She was a high-flying trainee lawyer. Although officially unrelated, I couldn’t help feel that the all-night working sessions and London lawyer lifestyle were somehow implicated. Third, my first daughter was born. There were complications with the birth, which shall we say “didn’t go well”, and she ended up in Intensive Care for a couple of weeks with possible brain damage. Luckily she appears fine now, 8 or 9 years later, but at the time we didn’t know whether there were going to be learning difficulties or other problems growing up.

This led us to look to leave London and to move closer to my (relatively large) family that lived in central Somerset. Bristol and Bath both had patent attorney firms and I sent the feelers out amongst the recruitment consultants. I ended up at EIP in Bath. We lived between family in Somerset and a family friend’s flat in Bath until we were lucky enough to find a small terraced house in Bath (any spelling mistakes are due to the lead paint and asbestos tiles I removed – we’re still there now).

Relatively quickly I was back on the career track, although now one slightly askew from the London mainline. My second daughter came along and I was eyeing up partnership in the distance along the classic lines. We tried to juggle parenting as best we could but ended up falling back onto rather typical binary roles (me at work until 6-7pm many nights, the other half being the default for the kids). Just after the birth of my second daughter, my father-in-law died suddenly, which shook us up a bit. My partner had a relatively small family, which was now even smaller, whereas I was used to large families down in Somerset. We thus decided to have one more.

At this time we began to look again at our parenting roles. Neither I nor my partner were particularly enjoying the long stressful hours (which were actually fairly tame by London standards), and the standard career route for me was for this all to become worse (for at least 10 years working up through the lower rungs of partnership). My partner enjoys her work and wanted to do more of it, but this meant days away once or twice a month that I often had to take as annual leave. It just so happened that it was at this time that the shared parental leave scheme came into force. It looked perfect.

In the end I applied to take 7 months shared parental leave while my partner took 2 months. I also put in a flexible working request for my return, to go down to 3 days a week. Both were granted (there wasn’t much choice on the first). Work was really good about things but as the scheme was in its infancy I ended up helping with human resources on the form of the policy. The downside was that the pay was just statutory. This meant going down to around £550/month for 7 months. All non-essential bills were cut, all food shops were Lidl (and still are), and any bills that could be frozen were. (In hindsight I should have asked for some pay during this period, at least matching the maternity schemes and possibly going beyond, trading this for an agreement to work for a particular length of time on my return.)

In any case the shared parental leave worked fairly well. There was a lot less pressure on my partner than the previous two. I could do the night shifts and the sleep training (think waking up every hour throughout the night for several months) without collapsing at work the next day. There was no need to drag a baby to the school and nursery drop offs. The drop in income was mitigated slightly by the fact you can’t really go out or do anything with three kids.

Flexible working also worked, to a certain extent. It felt a little split-brain – three days a week life was back to pre-parental leave days, being in the office and dealing with the day-to-day; then two days a week, I was plunged into the world of chores, kid juggling, and dirty nappies. The cognitive dissonance is sometimes hard. I wrote a bit about it here. Flexible working allowed my partner to work longer or non-standard hours on the other two days.

As the sleeping began to improve I looked at moving up to working four days a week to get back onto a partnership track. However, after a few months we found this wasn’t really working. The kids each needed to be in different locations at varying times between 8:30am and 9:30am, and to be picked up at times that span from 12:30pm to 4:30pm. Working four days a week meant that the workload crept back up to a 8:30am to 6:30pm working day – with commuting time this meant I was out for much of the time the kids were awake. Parenting is a zero-sum game and so someone else needed to be there when I was not there. A nanny or childminder was not an option when we looked at our after tax salaries. My parents have nearly a decade before they retire and my partner’s mother lives three hours away. I started chatting to and reading about others in similar situations – both in real-life and online. Becoming a consultant for a consultancy firm seemed an option. I had two very useful conversations with ex-colleagues, they were a great help explaining how things could work. Also what was the partnership everyone was aiming at, if not being your own boss? I decided to bite the bullet and start my own consultancy business in December 2017. I now work preparing patent drafts and office actions for various clients on a job-by-job basis.

My current arrangement is the best I have. I have traded off income for time. I can now do school and nursery pick-ups and drop offs. My partner can spend days away without a PhD in logistics. The income-time trade-off isn’t as linear as it seems: e.g. being around more means I can spend an hour at 4pm cooking tea from simple ingredients so a meal for 5 costs £2.50 rather than £25, in effect saving £22.50 after-tax. This is found in many other areas. Another is that I now have no commute, so I don’t need to pay £7000 after tax per year just to work. I can also choose to work hard on billable jobs one week, then have less paid work the next week to “work” on enjoyable not directly billable tasks such as this blog post, or processing 292,000 G06 US patent specifications.

As a caveat. It is still early days. It could all go disastrously wrong. I hope it doesn’t.

Opening Up Legal Services

Finding a good patent attorney (or patent client) is a lot like dating.


Once upon a time, dates were centred around [the golf course / an elite educational establishment alumni group / the locker room / a City gentleman’s club]* (delete as appropriate).

Dates were also primarily a male affair. Typically among greying men in suits and ties.

However, we now live in the 21st century. We have at our disposal the data to make much better matches.

Finding Companies


There are several free public lists you can use to find companies. These include:

From these lists you can collate a large list of companies that may or may not require intellectual property services. I prefer a long CSV list with no fancy formatting.

Matching by Technology

Most companies specialise in particular areas of technology. Likewise, most patent attorneys have specific experience in certain technologies. A good technology match saves time and money.

One way to match by technology is to use the International Patent Classification.

If you have lots of time (or a work experience student or a Mechanical Turk) you can take each company from your list, one-by-one, and perform a search on EspaceNet. You can then look through the results and make a note of the classifications of the patent applications returned from the search.

If you have no time, but a geeky interest in Python, you can automate this using the excellent EPO Online Patent Services.


Through a few hacky functions (which can be found on GitHub), you can:

  • Iterate through a large list of companies / applicants;
  • Clean the company / applicant name to ensure relevant search results;
  • Process the search results to extract the classifications;
  • Process the search results to determine the patent agent of record;
  • Process the classifications to build up a technology profile for each company / applicant; and
  • Process the classifications to rank companies / applicants within a particular technology area.

For example, say you are a patent attorney with 20 years worth of experience in organic macromolecular compounds or centrifugal apparatus. Who would you look at helping? How about:


Or say you wanted to know what technology areas Company X worked in? How about:


(* Quiz: any idea who this may be? Guesses in the comments…)

Or say you work for Company X and you wonder which patent attorneys work for your competitors or in a particular technology area. How about:


From here?

By improving matching, e.g. between companies and patent attorneys, we can open up legal services. As the potential of technology grows, legal service provision need not be limited to a small pool of ad-hoc connections. Companies can get a better price by looking outside of expensive traditional patent centres. Work product can be improved as those with the experience and passion for a particular area of technology can be matched with companies that feel the same.

How To Be a Smart Buyer of Patent Services – A Guide for SMEs

As you work as a patent attorney you meet many small to medium enterprises (SMEs – businesses with under 250 employees – also known as “small entities” in the US). Everyone has a different level of knowledge, and some companies are unaware of how they can get a better deal. To remedy this, here is my guide to commissioning patent work.

Light on an important subject
The advice is roughly split into the following areas:

  • Use competition to your advantage;
  • Prepare to better use your time;
  • Meet the people doing the work;
  • Look for a commercial and technical fit;
  • Agree on costs and timings in advance; and
  • Agree on workflow in advance.

Use competition to your advantage 

Patent firms (at least in the UK) will offer a free 30-minute consultation to potential new clients. Patent firms do this to get new business. It is often recommended to meet at least three firms to compare costs, people and approach. This means you can get up to 1.5 hours of free legal advice.

You can create a shortlist by looking for local patent firms. For SMEs, local firms (i.e. outside of London) are often a better fit on price and people, and organising company visits is easier. Many university cities have patent law firms, so a good play to start is to pick your nearest and search the Internet for “patent firm [nearest city]”. Have a look at the firms’ websites. You can normally get a feel for the size of a firm and their area(s) of expertise from their website.

If you are in a main patent hub (e.g. London or Munich), look for firms involved in activities that over lap with yours, e.g. firms that have talked at a nearby incubator or known industry group.

Firms are often split into four or so subject areas: pharma & biotech; chemistry; mechanical / heavy engineering; and IT & electronics. Many firms are better in one of these areas and weaker in others. Look for numbers of attorneys, their backgrounds and mentions of key clients to work out strengths and weaknesses. Try to shortlist firms with a strong practice group in your area of business.

Arrange meetings with your shortlist of firms by email or phone.

Prepare to better use your time

Ahead of your initial meetings, there is some preliminary work you can do to maximise your free legal advice and test your prospective firms. This often needs to be an hour or so of preparation: one page of A4 is about right.

First, attempt to write down why you need patent services. Do this in plain English. For example:

  • I need to stop my competitors doing X.
  • I have a new product that in launching in two months. We have spent Y on R&D.
  • We need investment. We have seed/series A/series B funding. We are looking at acquisition in as an exit in two to three years.
  • We have a few patents. We wish to monetise our portfolio.

Information that is useful to a patent attorney includes:

  • Your key markets (current and future);
  • Where you manufacture;
  • Your competitors (and their key markets / places of manufacture);
  • Your launch schedule; and
  • Your general business direction over the next 5-10 years (at a brief, high level).

If you have this information in pre-existing material (e.g. an investor or shareholder pack), you can provide this ahead of your meeting. It is worth keeping this high level and keeping as much as possible to publicly known details.

If you have a new product or idea, it may also be worth doing an hour or so of Internet searching and selecting the three most relevant finds. These may be supplied ahead of your meeting (e.g. send three URLs with brief notes – “This blog post describes something similar to the first step”).

If you can send this information, in confidence, ahead of your meeting then it is likely your prospective patent firms will do at least an additional 30 minutes of preparation before your meeting, and you will get better advice to compare. It also frees up time in the meeting to discuss strategy rather than go over these points. If you prefer not to send confidential details ahead of time, take your page of A4 as a meeting prompt.

Meet the people doing the work

A traditional way of law firms acquiring new clients is as follows:

  1. Prospective client meets charismatic partner at an event / on the golf course;
  2. A meeting is arranged with law firm via charismatic partner, who attends;
  3. The work starts and charismatic partner vaporises – a series of unknown associates impersonally deal with the work.

There is nothing necessarily malicious in this, some partners are better at sales, associates often do a bulk of the work due to the “leverage” model of law firms. It can, however, leave a bad taste if unexpected.

One way to avoid this is to ask to meet all those who will be potentially working with the company. Most patent firms should be happy to oblige. Be a little wary of those that refuse.

Look for a commercial and technical fit

A perfect technical match may be difficult to find. If there is a perfect match, there is often a conflict, e.g. the firm may work for one of your competitors. If you need to discuss sensitive commercial details in your initial meeting, you may wish to ask the patent firms you are meeting to perform a conflict check and confirm there is no conflict *before* you meet (or before you send them non-public information).

Sometimes you may get lucky and a technical fit may exist due to a recent client change (e.g. a past client was acquired and the work was moved to the patent firm of the parent company). This is probably the exception rather than the rule.

For a general technical fit look for:

  • Patent attorneys with a technical degree in your area of technology;
  • Current or recent experience in a neighbouring non-competing field;
  • Familiarity with at least general core concepts of your technology (if not your particular niche); and
  • Rapid understanding.

For a commercial fit look for:

  • Experience of similar size companies (e.g. revenue-wise) ;
  • Experience with your business model (e.g. software licensing vs. chemical manufacturing); and
  • General knowledge of your industry and market (e.g. at a Bloomberg, Economist or FT level).

Look for those that listen.

Agree on costs and timings in advance 

When you are obtaining cost estimates ask for prospective costs over the next year. Also ask to identify one or two key billing points over the year for costs to be charged.

An often heard criticism from companies is the stream of small bills from patent firms after a particular piece of work has been done. This is often due to the nature of the hourly billing module – small bits of work are often needed after an event of when miscellaneous communications arrive. Firms also wish to avoid having unpaid work sitting on their systems. One way to avoid this is to either include small future predictable costs in initial charges (firms often avoid doing this as it raises their estimates in comparison with other firms) or to have agreed billing points. For example, filing an application and filing a response are two normal billing points – you can ask that all others charges are also billed at these points with the substantive work.

Companies should also ask for caps or fixed prices for the work. Most patent firms should oblige if these are reasonable. This makes costs more predictable for the company, avoids surprise charges and often gets them a better deal.

Agree on workflow in advance

Patent attorneys charge for their time. Companies thus have a trade-off when commissioning patent work: they can save their time (e.g. engineer or C-level time) at the expense of higher patent attorney charges; or they can agree to do more on their end to save patent attorney costs.

For example, one substantial part of responding to examination reports is reviewing the cited prior art (typically 2-4 20-50 page patent publications). If a company wish to save on patenting costs, they can perform this work in-house (e.g. make it part of an engineer role). If a company provides guidance on differences and advantages (even if these are not put in legal terms), they can negotiate lower charges for responding to an examination report. If, on the other hand, engineer time is at a premium, they may ask that the patent attorney provides options or a proposal for their review (this should be provided at an executive summary level).

Similarly, to avoid drift, loss of momentum or extra charges, a timescale for work on both ends should be agreed at a high level. For example, it may be agreed that a draft will take 4 weeks to prepare and that engineers will review within 1 or 2 weeks of receipt. Similarly, it may be agreed that all official communications and filings are to be reported with 5 working days, or that engineers need 4 weeks to review cited prior art.

It is also a good idea to agree who is going to be the main point of communication on both sides, and whether any additional stakeholders need to be cc-ed by default (e.g. engineering managers, directors, secretaries, etc.).

This should not take too long to work out (e.g. a 30 min phonecall or a quick email exchange) but it pays dividends later on in the relationship (and avoids “surprise” charges cropping up).

Measuring Patent Success – The Devil in the Detail

In a previous post, we looked at some measures of patent attorney (or firm) success:

  • Low cost;
  • Minimal mistakes;
  • Timely actions; and
  • High legal success rate.

In this post, we will look at how we can measure these.

Legal Success 

Let’s start with legal success. For legal success rate we identified the following:

  • Case grants (with the caveat that the claims need to be of a good breadth);
  • Cases upheld on opposition (if defending);
  • Cases revoked on opposition (if opposing);
  • Oral hearings won; and
  • Court cases won.

When looking to measure these we come across the following problems:

  • It may be easy to obtain the grant of a severely limited patent claim (e.g. a long claim with many limiting features) but difficult to obtain the grant of a more valuable broader claim (e.g. a short claim with few limiting features).
  • Different technical fields may have different grant rates, e.g. a well-defined niche mechanical field may have higher grant rates than digital data processing fields (some “business method” areas have grant rates < 5 %).
  • Cases are often transferred between firms or in-house counsel. More difficult cases are normally assigned to outside counsel. A drafting attorney may not necessarily be a prosecuting attorney.
  • During opposition or an oral hearing, a claim set may be amended before the patent is maintained (e.g. based on newly cited art). Is this a “win”? Or a “loss”? If an opponent avoids infringement by forcing a limitation to a dependent claim, that may be a win. What if there are multiple opponents?
  • In court, certain claims may be held invalid, certain claims held infringed. How do you reconcile this with “wins” and “losses”?

One way to address some of the above problems is to use a heuristic that assigns a score based on a set of outcomes or outcome ranges. For example, we can categorise an outcome and assign each category of outcome a “success” score. To start this we can brainstorm possible outcomes of each legal event.

To deal with the problem of determining claim scope, we can start with crude proxies such as claim length. If claim length is measured as string length, (1 / claim_length) may be used as a scoring factor. As automated claim analysis develops this may be replaced or supplemented by claim feature or limiting phrase count.

Both these approaches could also be used together, e.g. outcomes may be categorised, assigned a score, then weighted by a measure of claim scope.

For example, in prosecution, we could have the following outcomes:

  • Application granted;
  • Application abandoned; and
  • Application refused.

Application refused is assigned the lowest or a negative score (e.g. -5). Abandoning an application is often a way to limit costs on cases that would be refused. However, applications may also be abandoned for strategic reasons. This category may be assigned the next lowest or a neutral score (e.g. 0). Getting an application granted is a “success” and so needs a positive score. It maybe weighted by claim breadth (e.g. constant / claim_length for shortest independent claim).

In opposition or contentious proceeding we need to know whether the attorney is working for, or against, the patent owner. One option maybe to set the sign of the score based on this information (e.g. a positive score for the patentee is a negative score for the opponent / challenger). Possible outcomes for opposition are:

  • Patent maintained (generally positive for patentee, and negative for opponent);
  • Patent refused (negative for patentee, positive for opponent).

A patent can be maintained with the claims as granted (a “good” result) or with amended claims (possibly good, possibly bad). As with prosecution we can capture this by weighting a score by the scope of the broadest maintained independent claim (e.g. claim_length_as_granted / claim_length_as_maintained).

Oral hearings (e.g. at the UK Intellectual Property Office or the European Patent Office) may be considered a “bonus” to a score or a separate metric, as any outcome would be taken into account by the above legal result.

For UK court cases, we again need to consider whether the attorney is working for or against the patentee. We could have the following outcomes:

  • Patent is valid (all claims or some claims);
  • Patent is invalid (all claims or some claims);
  • Patent is infringed (all claims or some claims);
  • Patent is not infringed (all claims or some claims);
  • Case is settled out of court.

Having a case that is settled out of court provides little information, it typically reflects a position that both sides have some ground. It is likely better for the patentee than having the patent found invalid but not as good as having a patent found to be valid and infringed. Similarly, it may be better for a claimant than a patent being found valid but not infringed, but worse than the patent being found invalid and not infringed.

One option to score to partial validity or infringement (e.g. some claims valid/invalid, some claims infringed/not infringed) is to determine a score for each claim individually. For example, dependent claims may be treated using the shallowest dependency – effectively considering a new independent claim comprising the features of the independent claim and the dependents. A final score may be computed by summing the individual scores.

So this could work as a framework to score legal success based on legal outcomes. Theses legal outcomes may be parsed based on patent register data, claim data and/or court reports. There is thus scope for automation.

We still haven’t dealt with the issues of case transfers or different technical fields. One way to do this is to normalise or further weigh scores developed based on the above framework.

For technical fields, scores could be normalised based on average legal outcomes or scores for given classification groupings. There is a question of whether this data exists (I think it does for US art units, it may be buried in an EP report somewhere, I don’t think it exists for the UK). A proxy normalisation could be used where data is not available (e.g. based on internal average firm or company grant rates) or based on other public data, such as public hearing results.

Transferred cases could be taken into account by weighting by: time case held / time since case filing.

Timely Actions

These may be measured by looking at the dates of event actions. These are often stored in patent firm record systems, or are available in patent register data.

It is worth noting that there are many factors outside the control of an individual attorney. For example, instructions may always be received near a deadline for a particular client, or a company may prefer to keep a patent pending by using all available extensions. The hope is that, as a first crude measure, these should average out over a range of applicants or cases.

For official responses, a score could be assigned based on the difference between the official due date  and the date the action was completed. This could be summed over all cases and normalised. This can be calculated from at least EP patent register data (and could possibly be scraped from UKIPO website data).

For internal timeliness, benchmarks could be set, and a negative score assigned based on deviations from these. Example benchmarks could be:

  • Acknowledgements / initial short responses sent with 1 working day of receipt;
  • Office actions reported with 5 working days of receipt;
  • Small tasks or non-substantive work (e.g. updating a document based on comments, replying to questions etc.) performed within 5 working days of receipt / instruction; and
  • Substantive office-action and drafting work (e.g. reviews / draft responses) performed within 4 weeks of instruction.

Minimal Mistakes

This could be measured, across a set of cases, as a function of:

  • a number of official communications issued to correct deviations;
  • a number of requests to correct deficiencies (for cases where no official communication was issued); and/or
  • a number of newly-raised objections (e.g. following the filing of amended claims or other documents).

This information could be obtained by parsing document management system names (to determine communication type / requests), from patent record systems, online registers and/or by parsing examination communications.

Low cost

One issue with cost is that it is often relative: a complex technology may take more time to analyse or a case with 50 claims will cost more to process than a case with 5. Also different companies may have different charging structures. Also costs of individual acts need to be taken in context – an patent office response may seem expensive in isolation, but if it allows grant of a broad claim, may be better than a series of responses charged at a lower amount.

One proxy for cost is time, especially in a billable hours system. An attorney that obtains the same result in a shorter time would be deemed a better attorney. They would either cost less (if charged by the hour) or be able to do more (if working on a fixed fee basis).

In my post on pricing patent work, we discussed methods for estimating the time needed to perform a task. This involved considering a function of claim number and length, as well as citation number and length. One option for evaluating cost is to calculate the ratio: actual_time_spent / predicted_time_spent and then sum this over all cases.

Another approach is to look at the average number of office actions issued in prosecution – a higher number would indicate a higher lifetime cost. This number could be normalised per classification grouping (e.g. to counter the fact that certain technologies tend to get more objections).

The time taken would need to be normalised by the legal success measures discussed above. Spending no time on any cases would typically lead to very high refusal rates, and so even though a time metric would be low, this would not be indicative of a good attorney. Similarly, doing twice the amount of work may lead to a (small?) increase in legal success but may not be practically affordable. It may be that metrics for legal success are divided by a time spent factor.

Patent billing or record systems often keep track of attorney time. This would be the first place to look for data extraction.

Final Thoughts

An interesting result of this delve into detail is we see that legal success and cost need to be evaluated together, but that these can be measured independently of timeliness and error, which in turn . may be measured independently of each other. Indeed, timeliness and error avoidance may be seen as baseline competences, where deviations are to be minimised.

It would also seem possible, in theory at least, to determine these measures of success automatically, some from public data sources and others from existing internal data. Those that can be determined from public data sources raise the tantalising (and scary for some?) possibility of comparing patent firm performance, measures may be grouped by firm or attorney. It is hard to think how a legal ranking based on actual legal performance (as opposed to an ability to wine and dine legal publishers) would be bad for those paying for legal services.

It is also worth raising the old caveat that measurements are not the underlying thing (in a Kantian mode). There are many reasonable arguments about the dangers of metrics, e.g. from the UK health, railways or school systems. These include:

  • the burden of measurement (e.g. added bureaucracy);
  • modifying behaviour to enhance the metrics (e.g. at the cost of that which is not measured or difficult to measure);
  • complex behaviour is difficult to measure, any measurement is a necessarily simplified snapshot of one aspect; and
  • misuse by those in power (e.g. to discriminate or as an excuse or to provide backing for a particular point of view).

These, and more, need to be borne in mind when designing the measures. However, I believe the value of relatively objective measurement in an industry that is far too subjective is worth the risk.

What makes a good patent attorney?

This is a question that has been on my mind for a while. The answer I normally get is: “well, you just kind of know don’t you?” This isn’t very useful for anyone. The alternative is: “it depends”. Again, not very useful. Can we think of any way to at least try to answer the question? (Even if the answer is not perfect.)

The question begets another: “how do we measure success?”

For a company this may be:

  • the broadest, strongest patent (or patent portfolio) obtained at the lowest cost;
  • a patent or patent portfolio that covers their current and future products, and that reduces their UK tax bill; and/or
  • a patent or patent portfolio that gets the company what it asks for in negotiations with third parties.

For an in-house attorney or patent department this may be:

  • meeting annual metrics, including coming in on budget;
  • a good reputation with the board of directors or the C-suite; and/or
  • no surprises.

For an inventor this may be:

  • minimum distruption to daily work;
  • respect from peers in the technology field; and/or
  • recognition (monetary or otherwise) for their hard work.

For a patent firm this may be:

  • a large profit;
  • high rankings in established legal publications; and/or
  • a good reputation with other patent firms and prospective or current clients.

For a partner of a patent firm this may be:

  • a large share of the profit divided by time spent in the office; and/or
  • a low blood pressure reading.

As we can see, metrics of success may vary between stakeholders. However, there do appear to be semi-universal themes:

  1. Low cost (good for a company, possibly bad for patent attorneys);
  2. Minimal mistakes (good for everyone);
  3. Timely actions (good for everyone but sometimes hard for everyone); and
  4. High legal success rate (good for everyone).

High legal success rate (4) may include high numbers of:

  • Case grants (with the caveat that the claims need to be of a good breadth);
  • Cases upheld on opposition (if defending);
  • Cases revoked on opposition (if opposing);
  • Oral hearings won; and
  • Court cases won.

I will investigate further how these can be measured in practice in a future post. I add the caveat that this is not an exhaustive list, however, rather than do nothing out of the fear of missing something, I feel it is better to do something, in full knowledge I have missed things but that these can be added on iteration.

Cost is interesting, because we see patent firms directly opposed to their clients. Their clients (i.e. companies) typically wish to minimise costs and patent firms wish to maximise profits, but patent firm profits are derived from client costs. For patent firms (as with normal companies), a client with a high profit margin is both an asset and a risk; the risk being that a patent firm of a similar caliber (e.g. with approximately equal metrics for 2-4 above) could pitch for work with a reduced (but still reasonable) profit margin. In real life there are barriers to switching firms, including the collective knowledge of the company, its products and portfolio, and social relationships and knowledge. However, everything has a price; if costs are too high and competing firms price this sunk knowledge into their charging, it is hard to reason against switching.

There is a flip side for patent firms. If they can maximise 2-4, they can rationalise higher charges; companies have a choice if they want to pay more for a firm that performs better.

On cost there is also a third option. If patent firms have comparative values for 2-4, and they wish to maintain a given profit margin, they can reduce costs through efficiencies. For most patent firms, costs are proportional to patent attorney time, reduce the time it takes to do a job and costs reduce. The question is then: how to reduce time spent on a matter while maintaining high quality, timeliness and success? This is where intelligence, automation and strategy can reap rewards.

In-house, the low cost aim still applies, wherein for a department cost may be measured in the number of patent attorneys that are needed or outside-counsel spend, as compared to a defined budget.

In private practice, and especially in the US, we often see an inverse of this measurement: a “good” patent attorney (from a patent firm perspective) is someone who maximises hourly billings, minimises write-downs, while anecdotally maintaining an adequate level for 2-4. One problem is maximising hourly billings often leads to compromise on at least 2 and 3; large volumes of work, long hours, and high stress are often not conducive to quality work. This is why I have an issue with hourly billing. A base line is that a profit per se is required, otherwise the business would not be successful. Further, a base line of profit can be set, e.g. allowing for a partner salary of X-times the most junior rate, an investment level of Y%, a bonus pool for extra work performed etc.. However, beyond that, the level of profit is a factor to maximise, subject to constraints, i.e. 1-4 above, where the constraints take priority. The best solution is to align profit with the constraints, such that maximising 1-4 maximises profit. That way everyone benefits. How we can do this will be the subject of a future post.

So, let’s return to our original question: what makes a good patent attorney?

From the above, we see it is a patent attorney that at least makes minimal mistakes, operates in a timely manner, has a high legal success rate and provides this at a low cost. In private practice, it is also a patent attorney that aligns profit with these measures.

Pricing Patent Work

One source of frustration with a time-based charging structure (“billable hours”) is that it is difficult to accurately estimate how long a piece of work will take. This post looks at ways we can address this. (Or at least puts down my thoughts on virtual paper .)

Many professional services are priced based on an hourly (or day) rate. This is true of private practice patent attorneys. Although there are critics, the persistence of the billable hour suggests it may be one of the least worst systems available.

Most day-to-day patent work in private practice consists of relatively small items of work. Here “small” means around £1k to £10k, as compared to the £1m cases or transactions of large law firms. These small items of work typically stretch over a few weeks or months.

When performing patent work an unforeseen issue or a overly long publication can easily derail a cost estimate. For example, it is relatively easy to find that a few more hours are needed after looking into an examiner objection or piece of prior art in more detail. This often presents a lose-lose situation for both attorney and client – the work needs to be done, so either the attorney has to cap their charges in line with an estimate or the client needs to pay above an estimate to complete the job. This is not just an issue for patent attorneys – try comparing any quote from a builder or plumber with the actual cost of the work.

This got me thinking about taxis. They have been around for a while, and recent services like Uber offer you a price on your phone that you then accept. This is a nice system for both customer and driver – the customer gets a set price and likewise the driver gets a fare proportional to her time. Could something like that work for patent work?

For taxi services, the underlying variable is miles (or kilometres depending on your Brexit stance). A cost is calculated by adding a mile-based rate to a basic charge, with minimum and cancellation charges.

For patent work, one underlying variable is words. Take an examination report (or “office action”). The amount of time it takes to respond to novelty and inventive step objections is typically proportional to the length of the patent specification in question, the number of claims and the number of prior art citations.

Now, we can use EPO OPS to retrieve the full text of a patent application, including  description and claims. We can also retrieve details of citations and their relevance to the patent application (e.g. category ‘X’, ‘Y’ or ‘A’). I am working on parsing PDF documents such as examination reports to extract the text therein. In any case, this information can be quickly entered from a 5 minute parse of an examination report.

Wikipedia also tells me that an average reading rate for learning or comprehension is around 150-200 words per minute.

This suggests that we can automate a time estimate based on:

  • Words in the description of a published patent application – WPA (based on a need to read the patent application);
  • Number of claims – NCPA (applications with 100s of claims take a lot longer to work on);
  • Words in the claims – WCPA (claims with more words are likely to take more time to understand);
  • For each relevant citations (category ‘X’ or ‘Y’ – this could be a long sparse vector) :
    • Words in the description of the citation – WCITx (as you need to read these to deal with novelty or inventive step objections); and
  • A base time estimate multiplied by the number of objections raised – BTo (possibly weighted by type):
    • E.g. x amount of time per clarity objection, y amount of time per novelty objection.

Even better we need not work out the relationship ourselves. We can create a numeric feature vector with the above information and let a machine learning system figure it out. This would work based on a database of stored invoicing data (where an actual time spent or time billed amount may be extracted to associate with the feature vector).

The result would be an automated system for pricing an examination report response based on publically available data. We could host this on Heroku. By doing this we have just created a marketplace for patent responses – a single weight could be used by patent firms to set their pricing.

Similar pricing models could also be applied to patent drafting. The cost of a draft may be estimated based on a set length, number of drawings, number of claims, number of independent claims, length of invention disclosure and length of known prior art. The variables for a response are similar for a European opposition or an appeal, just with different weights and expanded feature vectors to cover multiple parties.

This would yield a compromise between billable hours and fixed fees. For example, a variable yet fair fixed fee estimate may be generated automatically before the work is performed. The client gets predictability and consistency in pricing. The attorney gets paid in proportion to her efforts.




Social Media Management for Law Firms

So. You are part of a law firm. You need a little organisation for your “social media” presence. Here is a little guide setting out one way to do this based on my experience with my personal accounts.


There are probably better guides out there. Also this probably applies to non-law firms as much as law firms. However, the perspective of someone who has played around with it may be useful.

In the past I used TweetDeck. However, this is now largely decommissioned, having been assimilated into Twitter. The only real alternative I have found that is reasonably-priced and meets all the basic requirements is Hootsuite. It costs around £90/year for the “Pro” package.

What Do You Mean By “Social Media”?

“Social Media” is the trendy buzzword for a handful of “social” websites and web services. Here “social” generally means “communication between people”; it is a combination of publication and comment.

In my case “social media” refers to at least the following:

  • Twitter;
  • LinkedIn; and
  • Google+.

The unmentioned one is Facebook. This may be a bit too “social” for a law firm (although has possibilities from a recruitment perspective).

How Should I Setup Hootsuite?

After you have signed-up and paid for Hootsuite, log-in. The first step is then to setup your law firm as an “organization”. To do this follow the guide here: https://help.hootsuite.com/entries/21678723-creating-an-organization. For “organization name” I add the name of the law firm. As I am “on brand” I also add a firm logo. Leave the “add social networks” for now: we will do that later.

Once you have added the “organization” you should be able to see it when you click on the top menu button on the left-hand side menu bar. To add other people as managers and social networks click on the “Manage” button within the “organization” pane.

Adding Social Networks

On the right-hand-side of the lower pane there should be an “Add a Social Network” button. Use this to add accounts from the social networks discussed above. This typically requires you authorising yourself with each network so make sure you have your usernames and passwords handy.

After adding each social network select the next icon down in the left-hand side menu bar (“Streams”). Click on the little “+” icon at the top to add a new set of columns/streams (a “tab”).

At the moment I have one tab per social network/network feed. After adding the tab select the required social network from the dropdown box in the first “Add a stream” column that appears.

For Twitter my recommended streams are:

  • Home,
  • Mentions,
  • Retweets,
  • DMs, and
  • Sent Tweets.

If you want you can add all streams but five streams fit well across my monitor (you can use the little slider bar in the top right to reduce the number of columns/streams per tab).

For LinkedIn you are limited to “Company Updates” and “Scheduled Status Updates”.  For Google+, “Home”, “Sent Messages” and “Scheduled Messages” are options.

Now you can see all of your social media feeds in one handy place. You can also now post to any one of the added networks including the use of the “auto-scheduling” feature.

RSS to Update

A clever little feature of Hootsuite is that you can pipe an RSS/Atom feed through to a social network. Hence, if you have a blog you can automatically tweet new entries or post these to LinkedIn.

To set this up go to the cog (“Settings”) within the left-hand side menu. Choose the “RSS/Atom” option. Click on the “+” to add a new feed. Type in the URL of your blog (e.g. of your firm). Select a social media network to post to and set various frequency settings. Save and leave. Hey presto.

Further Lessons

Following these basics, the next stage is build a team and use search and assignment functions to get active. But that is the subject of another day’s post.

Any other tips please feel free to add to the comments.

Four short links

Nominees for European Inventor Award 2010 : http://www.epo.org/topics/news/2010/20100308.html [No UK nominees with Germany having a presence in all categories apart from “Non European countries” – does this simply reflect a skew in the entries received or a real difference in innovation? Discuss.]

Sam Glover of Lawyerist reviews the Fujitsu Scansnap S1300: http://lawyerist.com/fujitsu-scansnap-s1300-portable-document-scanner/ [compare with his recommended S1500 – http://lawyerist.com/review-scansnap-s1500-document-scanner/].

Amazon One Click Shopping Patent survives re-examination – http://www.patentlyo.com/patent/2010/03/amazon-one-click-patent-slides-through-reexamination.html .

“Top” 25 US Patent Firms 2010 according to Intellectual Property Today: http://iptoday.com/issues/2010/03/top-patent-firms.asp .