Training to Become a Patent Attorney – FAQ

Over the years I have chatted to many scientists and engineers about becoming a patent attorney. Most have similar questions about the job and the training. In this post I will distil this advice into a set of Frequently Asked Questions and their respective answers.

Caveat 1: A point to note at the outset is that training can be thought of as a kind of apprenticeship. This is good because it means that there is no ideal candidate and a wide variety of backgrounds can be considered. What matters most is potential and attitude.

Caveat 2: These are my own answers. They are relatively informal, some are answers to friends. They come from a variety of points in time. They do not constitute an official position from any of my employers (although some bits may align with the “right” answers). They do not constitute legal advice. Some details have been changed to protect anonymity (but the gist remains the same). As it is my blog, I am allowed to contradict myself.

What does your role entail?

Basically, my role entails advising clients on the best way to protect their inventions.

Clients may range from large multinationals to one-person inventors.

On a day to day level, patent work may involve writing a patent specification for a new idea, replying to an examination report from the European patent office or performing an IP audit of a company’s IP.

What aspects of the job do you enjoy?

I think the intellectual variety is what I enjoy the most.

One day I’ll be working on a transceiver for a next-generation smart phone; the next day it will be a lithographic printing device for semiconductors; the day after that selective membranes for carbon flues; and the day after that a new internet service.

I enjoy the high-level view of things. As a patent attorney you see a lot of different companies and technologies and work with lots of different clients and client contacts. This means you are always learning something new. It also means you are not victim to the boom and bust of many engineering projects and companies.

Also, even though the exams are hard, it is rare to find people with both legal and engineering skills. This gives you a unique perspective on both professions and makes you valuable from an employment perspective.

See also this post.

What aspects of the job don’t you like?

The stress of deadlines is a big one. There are always deadlines and some of them are career fatal.

Always having to justify your billing is another stress. Most pieces of work have a tight budget and you have to bill enough to cover your salary, the costs of running the firm and a little profit.

Although it depends on the firm, the profession in general is fairly white and (upper)-middle class. Partners tend to be male; but associates tend to be split fairly evenly between the sexes. This probably applies equally to any London-centric professional services job (e.g. engineering consultancy or finance).

It’s reasonably insular as a community which has advantages as well as disadvantages.

I used to say you have to be resigned to at least train in London, with all the usual advantages/disadvantages of that. However, “regional” offices have grown in prominence over the last few years (often as people are getting priced out of London), so there are now more training opportunities outside of the capital.

How closely related is your job to the engineering you left behind?

I use random bits of knowledge from all four years of my University course.

One day I’m working on mechanical devices, the next on data processing software or laser devices.

A general engineering course is very good at enabling you to know a lot about different areas at a relatively abstract level.

I probably use more of what I learnt than any of my friends who chose “traditional” engineering jobs.

I took a good mixture of engineering subject areas wit him my course and I think that helped. For example, I greatly enjoyed combining studies in synthetic biology, medical devices and telecommunications.

If you enjoy a mixture of engineering disciplines, IP law (in particular patents) is definitely a career worth considering.

I am interested to hear your thoughts on the variety of work that you deal with – do you specialise in one particular area or with a few particular clients or does it tend to be more broad?

I personally specialise in software, telecommunications and control inventions.

However, as I took a MEng in General Engineering I find I have enough background knowledge to work  across many engineering disciplines (I draw the line at chemicals).

Normally, you take on more cases in your chosen specialism and as such over time concentrate more in this area.

As with anything, you need a natural enthusiasm in your work to keep going day-to-day and to converse with clients – as such I would strongly recommend in seeking out work in areas that truly interest you.

At any one time I work for maybe a dozen clients. However, this changes over time – some go out of business, some get bought and some buy others, some start-up.

My client base typically comprises a mix of large multinationals, medium-sized UK businesses, foreign attorneys and small start-ups.

I like working for a variety of company types – it gives you a birds eye view of the advantages and disadvantages of each. This enables you to understand the commercial landscape. However, this is one thing that can vary between patent firms, so it is a good thing to question at interview.

Is physics a good background?

In the patent profession, most firms are split by subject matter or field of engineering. Typically, this split is:

• Computing / Software and Electronics;
• Chemistry;
• Life Sciences / Bio-engineering / Pharmaceuticals; and
• Mechanical Engineering and stuff that doesn’t fit into the brackets above.

Many patent attorneys in the first group have a physics background.

You deal with such a wide variety of cases in different technology areas that a broad level of technical understanding is vital.

The technology areas you work in may depend on the main clients of your employer.

I find that I’m using knowledge I’ve forgotten from my University course everyday, topped up with that signifier of the “common general knowledge”: Wikipedia.

Is [insert obscure engineering or science Masters degree] a good background?

I know many patent attorneys who have a unique academic background, it tends to be the rule rather than the exception. Also nearly half have probably spent some time in industry positions.

I typically advise looking at patent firms that have a practice group or department that matches your unique skill set.

For example, if you know of a few companies that operate in your area do a quick search on the Espacenet website. Pick some UK or European patent publications (look for GB or EP in the patent publication number) and see what patent firms represent these companies (you can see this on the front page of the PDF publication or my finding the patent register entry).

How do I find a suitable patent firm?

Look for patent firms with subject matter groups suited to your skill set.

I’d advise concentrating on firms that have a large number of people under a subject matter group that matches your preferred subject matter areas. You can normally check this out online – look at the people or group profiles of patent firms and look for practice groups that have, say, more than 5 people.

From doing this you can draw up a shortlist of firms. Location is also a big factor; the typical home of patent attorneys is Chancery Lane in London – if you are looking at the regions this limits you to 5 or 6 main firms.

What are some keys skills for the job?

• A high standard of written communication;
• good social skills;
• being a quick thinker; and
• having a broad technical understanding.

How did you fall into the profession?

When I finished my engineering course, I didn’t really get any strong feeling towards engineering as a career. Also the Internet was still in its earlier days and there were no smartphones.

I also wasn’t particularly keen on any of the standard engineering alternatives: banking, management consultancy or accountancy (a Faustian pact with your hours).

One of my friends from University who was studying law raised it as an option. I stumbled along to the university careers centre and found the Inside Careers guide.

Where do I start?

The Inside Careers Guide discussed above is a great place.

What do you feel are the advantages and disadvantages of the job?

Briefly the advantages are:

• good, highish pay (higher than engineers but less than bankers);
• good hours (especially when compared to law / banking / engineering);
• good broad range of inventions to read about;
• interesting client relationships (dealing with large multi-nationals as well as single inventors);
• the chance for regular trips to the Hague and Munich;
• good employment prospects and stability;
• once you are European-qualified you can work anywhere in Europe; and
• limited exposure to the disappointments of engineering (dropped projects, compulsory move into management, need to explain yourself to marketing).

The disadvantages:

• you need to be good at communicating, both in person and in writing (most of my time is spent writing emails or letters and so you need to enjoy (and be good at) that);
• the profession is mainly London-based;
• the profession is mainly office-based (with occasional trips to client offices);
• you don’t get to build anything (as an engineer this sometimes gets on my nerves); and
• the prospect, at the beginning, of more exams.

What are the important considerations when drafting a letter of application and preparing for interview?

When applying for a patent position you will typically be working with a partner of the firm and a set of associates. These people will typically be the ones that interview you and perform some CV selection. Many firms also now have a first level of filtering that bypasses fee earners – a good degree and an unusual story will typically get you through this.

Once you have a list of potential patent firms (e.g. matched to your subject matter background as set out above), look up the people you may be working with on the website and on LinkedIn.

A good strategy is to contact associates at firms you are interested in via LinkedIn and ask a few short valid questions about the job. You can do these in a humble-brag style, e.g. “Having a background as an engineer with a recent background in web design, do you think a trainee patent attorney position would work?” This gives you a nice initial connection and provides an icebreaker for interview.

Another nice trick is to look for common points of interest. These can be course, university, hobby or location related. LinkedIn or website profiles are a good source of information. Stick these in your letter.

Avoid anything that sounds like a bland UCAS statement – we see so many of these our eyes glaze over. Also avoid feigning enthusiasm, we can also see through this easily. Real passion is hard to fake.

How should I pitch my CV? Should it be more technical or business orientated? Do I need to list programming languages I can use or societies I am a member of?

Your CV needs to be between the business and technical levels.

At the end of my engineering course, I had one CV for patent roles and one CV for engineering roles. Generally, go broad and concise for technical experience on a patent CV (e.g. knowledge of computer programming rather than a listing of each language) and emphasise the variety of your engineering course (patent attorneys often work across many diverse fields).

You also need to emphasise “soft” skills such as conversing at different levels of technicality, orally presenting a case, planning and time management. Most applicants are competent technically but not many have a broad experience base or the client facing skills.

Teamwork per se is not vital as most work is performed independently or in small teams of 2 or 3; however, you must be able to work with other attorneys in a patent firm and deal with clients in writing, on the phone and in person.

Also, it is good to throw in a few references to life outside work so that they can see you are a normal human being. This also provides good talking topics in an interview, e.g. I recommend concisely adding any unusual or obscure hobbies which can capture a reader’s attention.

What kind of questions are asked at interview?

It depends on the firm and the partner / associate interviewing.

Often you may be presented with two patents and asked to compare and contrast.

A good tip is to go onto the EPO patent register and search for a well-know applicant (Microsoft, Apple, Nokia etc). Pick a granted case (normally one more than 10 years old) and look at the the prosecution history (see the “All Documents” link on the LHS). Download a search report, an examination report and the prior art citations (links to the latter can be found on the front page for the case – citations are marked with Xs or Ys) so you can be familiar with the kind of arguments involved in the job (novelty, inventive step etc).

Should I just learn how to describe office stationary?

Some firms do like office stationary, others pick technology areas (“describe how text messages work”).

The key is not to swot up on any particular area but to practise clearly and confidently explaining how any piece of technology works, concentrating on the features of the technology that solve problems encountered in the past. They are looking for you to highlight which features are essential to solve these problems and which are optional or non-essential variants. Search on Espacenet for simple patents (e.g. scissors, bottle openers etc) and read some descriptions and claims to learn the lingo (the claims are the important part).

What are firms looking for in written exercises (e.g. before or at interview)?

Patent firms will be looking for descriptive skills that can be honed for claim drafting.

What they are expecting in the written work is likely something that looks like a proto-claim set and a brief detailed description style page. Hence, I would start by reviewing the patent claims of any publications you find (especially the independent claims) and comparing with your existing descriptions.

How did you find the training? Is it intense?

Training is not too bad.

You tend to be thrown into doing things without really knowing why and are left to ask lots of questions of your colleagues to learn on the job.

Most firms send new trainees on some form of IP Certificate course. These exempt you from certain UK foundation exams. The main ones I am aware of are the Queen Mary and Bournemouth certificate courses. I took the Queen Mary course, which lasts for about 3 months with lectures in the mornings and some afternoons in work. The exams for that course are after Christmas and are pretty long but passable.

A good question in interview is asking the firm’s policy on IP certificate courses. After three years you come to EQE (European) and British exams which are harder. The pass rate on some of these exams is as low as 20%. Most people take a couple of attempts to pass all the exams. Once you pass however you basically have a job for life with good minimum salary (£50-60k).

I trained in London before moving to Bath at around the time of qualification. Most firms have a reasonably similar approach to training – you do a year or so with the firm, then an IP course like QMW or Bournemouth, then European Pre-Exam, then one of UK or European exams, then repeat UK or European exams until you pass.

In reality this means you do exams roughly every year for the first four to six years. I was lucky with training, both my employers offered good training programs and provided good support.

A mentor is a key factor in exam success – normally they will be a qualified or part-qualified associate – it is worth asking who will be supporting you at interview (sometimes you do not meet these key people until after you join). I know certain firms pool trainees for the first few years and others keep them away from real client work for quite a bit. I’m not a fan of this.

Are the exams passable?

Exams are hard but passable (eventually).

I would recommend passing them before you have small children!

The legal way of thinking gets a bit of getting used to – but if you have a logical mind it is understandable. European exams have a better support program – UKs were a bit more variable in my experience. I preferred the European.

Does it take on average 3 years to qualify?

About 4 and a half if you pass everything first time, which may be unlikely.

I started in the profession in September 2005 and I got my results from the European Exams in August 2009. The sitting was in March. I was fairly lucky, I passed all four European exams first time.

The pass rate for the UK for each European exam is about 50%, Europe wide it can be as low as 20%. There were about 120 people taking the European exams with me in the UK room and so around half of these did not pass. To put the difficulty into context, each person sitting the exams will have at least a science or engineering undergraduate degree (many have postgraduate qualifications), typically at a 2.1 level or above and a lot are ex-Oxbridge or at least attended Russell Group universities. However, this should not put people off, I know of many without such a background that have performed better than those with this background; much is due to hard work and practice.

Just so I don’t sound too smug I did fail two British exams on my first sitting. I paid for the resits out of my own pocket and passed second time round. The British exams are taken in October/November and results come out around March.

Does your firm have vacancies? How/where should I apply for a training role?

In many firms, vacancies may appear somewhat randomly.

For example, they may arise as people join and leave firms, work load expands, new clients are gained, etc.

This means you can never really tell in advance which firms have openings in the right technology area.

Many of the larger firms will look at recruiting 2-4 trainees on average per year, with September being a typical post-graduation start date. For these I would recommend applying early in the year (or even the preceding September).

If you’re looking at London, I would recommend sending your CV with a tailored cover letter to each of the 15 or so firms listed in the Chartered Institute guide. If possible, tailor the cover letter to reference particular features of each firm (firm websites are good for this). Beware, some of the info in the guide may be years out of date so take it with a pinch of salt!

Do patent firms provide work experience?

In general, yes.

Many firms will accommodate at least one or two days of shadowing or unpaid work experience. I have also known of one or two-week placements.

Writing to the patent firm in question may work; however, the best way is to find a contact to email directly (e.g. via a family friend, a neighbour’s niece, someone on Twitter, etc.).

You may struggle with paid work experience – setting up the contracts and pay roll can be a hassle, and budgets are often tight. This is unless you can provide value to the firm; for example, generating a spreadsheet of potential business prospects or building a clever Word plug-in.

Do patent firms hold open days?

Not really – they aren’t really big enough.

However, some firms may be happy for you to come and have a look around by appointment.

Do you think the current recession/boom/fad-area would make it difficult/easy to get a training place?

The patent profession is actually fairly stable across business cycles.

In a downturn, people get laid off, but businesses look to make better use of their existing assets or prioritise innovation. Those laid off also sometime take the opportunity to start their own businesses with their own ideas.

In a boom, there is more money floating around to fund research and development and start riskier projects.

 Also patent applications can take 2-10 years to grant (4/5 years being median). This smooths the ups and downs rather nicely. When I started I was still prosecuting cases from the dotcom boom!

Would you make the same choices again?

If I was presented with a career choice again I think I would either choose patent law or working in a technology start-up.

My own personal preference is to shy away from larger companies, as in my experience the migration direction is generally away from these kind of jobs (e.g. after 4-5 years).

Working with a variety of clients, a good size of patent firm or company is between 10-60 people.

Patent law has generally been more helpful in settling down and having a family but I imagine working in a start-up would be more exciting. The caveat being that I would agree with the statistic that 9 out of 10 start-ups fail.

Can you recommend any activities or groups that one can join that allows them to gain hands on experience into the profession?

Looking back, I would recommend getting involved with any entrepreneurial or enterprise society.

This provides a background into the world of business and often there will be some fascinating lectures that go into the commercial realities that are no covered in academic courses.

Getting involved in a start-up or product development competition will get you thinking about IP, funding, and other commercial matters; these are skills a patent attorney uses everyday. It will also help improve soft skills such as sales and marketing.

A good spell of time in these activities would look good on a CV when entering the profession.

How does being a patent attorney differ from an R&D position?

As a patent attorney, you are constantly working and learning about cutting edge technologies, businesses and cultures.

In comparison, friends in industry tell me they often work on a project for 6 months or so and then change to a project that uses similar skills.

Also in industry a route to a pay-raise and promotion is often through management – this can take you away from the interesting parts of the technology.

As a patent attorney you also have the fun of learning how to run a business, having a possible opportunity one day to own part of that business.

Do you work alongside a single partner or more as part of a team?

It depends on the firm (this is a good question to ask an interview).

In some firms, a trainee will work under a particular partner. Sometimes this continues for the whole of their early career, with the aim being to move up into partnership themselves. Occasionally, the trainee may do the odd bit of work for a neighbouring partner.

Other firms have more of a flexible pairing of experienced attorneys and trainees. In these firms you may work with a different partner for each job. These kind of pairing can help to broaden your experience and be exposed to a mixture of styles; the downside sometimes being a lack of continuity and intimacy.

I did some work experience in a small office, which was very quiet with minimal interaction between coworkers. Is this typical of a patent firm office? Were there significant differences between your employers?

I would say this is one of the key things to get right as it does vary quite a lot between firms.

Some patent firms are small, young and start-up-like.

Some older, more traditional firms can be somewhat stuffy and stale (or at least got away with this a decade ago when I was going for interviews).

It depends a lot on your co-workers: patent attorneys by their nature tend to be quiet and introspective so firms tend to drift that way (plus most day-to-day work is reading and writing).

However, an office with several young trainees over several years can be friendlier. Typically, you are more likely to find this in London, as this is where firms are concentrated. Again this is important to check at interview – ask to walk around and see the office, look at the demographic of the employees and partners and speak to people in the offices.

I’m looking at becoming either a patent attorney or an IP solicitor. What are the similarities between the two roles?

• Both will have you working with a large variety of technologies. If you have a post graduate qualification, you will likely not work all the time in your chosen area of specialisation.
• A typical patent or law firm will have a variety of clients of different sizes. This is probably more extreme with patent firms. IP solicitors will mostly deal with large corporate clients.
• Both will require you to learn business skills such as practice management, marketing, basic accounts etc. This is more pronounced the smaller the firm you work for.
• Both will expect you to network and get in new clients.
• Both will require 5 or 6 years of training and exams, which can be stressful at times. This becomes harder to do the more commitments you have (e.g. trying to do it with a young family is a challenge).
• Both jobs will be about 30% Outlook, 30% Word per day.
• Both are routes to an in-house role. Most companies generally look for qualified patent attorneys / solicitors but I know counsel that have come from both routes. In-house is generally more management, strategy and fire-fighting – you would outsource the skills you needed.
• Both are well remunerated, more so than an equivalent position in engineering. After 5-6 years you may be on 50k-90k (the higher figure for Magic Circle law firms – but see below).

What are the differences between a patent attorney and an IP solicitor?

• Patent work typically involving drafting and prosecuting patents. You may have around 5 or 6 main clients and every day you’ll work closely with a different technology. You will have to review patents and draft/amend patent claims in a linguistic game of spot the difference.
• Law firm work as I understand it (esp. for larger firms) is more based around large projects. For example, you may be drafting licences or contracts, doing due diligence on an IP portfolio for a merger or working on litigation.
• Patent work tends to be lots of small jobs (e.g. £1k – £10k in value), whereas law firm work will typically be on million pound projects.
• As an IP solicitor you tend to be more distanced from the technology, you are a lawyer first and an engineer/scientist second (e.g. arguing about interpretation of clauses); as a patent attorney the balance is more even, it is closer to the technology but in an academic way (e.g. arguing about ideas and technical benefits).
• Hours are often much longer at IP law firms. It is not unusual at London law firms to work to 11pm-1am. I had several friends who regularly worked into the small hours. In my patent work I tend to leave at 5.30pm most days. This makes patent work better for raising a family, but it could be argued there is less excitement and less financial reward later (an IP partner at a top law firm could be on between £500k to £2.5m per year). If you go out to the provinces (I’m in Bath) the IP solicitor hours are better, but the pay is less and there is less work in general.
• Patent work probably carries less risk. Legal markets are facing a bit of a shake-up (those long hours, the high pay and the million pound projects can’t continue for ever as many companies face tightening margins). Patent work is only going to grow. IP work is probably one of the less risky legal fields (it is growing as well) but there is still more risk.
• There is also more risk in solicitor training. After an initial two years there is no guarantee you will get a training contract (in effect you have another round of competition with your colleagues for this). Again this is one of the reasons for long hours in London.
• On the other hand, in patents, once you have a patent position things are pretty secure (bar the risk of losing a major client, missing a deadline etc.). Many of my colleagues come from other firms and after qualifying as one of a UK or European attorney it is fairly easy to give your name to recruiters and get another job either in-house or in another firm.
• As a trainee solicitor you would have to pass exams and do well in all areas of law. IP is a renowned “sexy” law area – areas such as commercial, tax, employment etc. might not be as exciting for an engineer/scientist.

Is it possible to switch from an IP solicitor role to that of a patent attorney? (Or vice versa?)

I think it would be easier to go from an IP law training position into the patent profession than vice versa.

This may be seen as a step down by some (training contract salaries can be £50k vs. patent starting at £30k).

I would definitely be more interested in a patent trainee that had 1 or 2 years of legal training (but may ask questions as to why they switched). I work with a patent attorney / solicitor that trained as a solicitor first, then qualified as a patent attorney.

All you need to sit the patent exams is a science/engineering degree (which you have) and a given number of years experience.

I would warn that I think there is only so much training you can do before you burn out – I would not want to do a legal training course now (especially with kids) and I don’t know whether my brain could take it!

There can be a slight snobbishness from IP solicitors that would impede any transition the other way. Also patent firms would generally not let you disappear for 2 years just as you were reaching billing profitability after qualification.

I have a 3rd class BA degree in Electrical and Electronic Engineering. Do you think my class of degree will affect me significantly in trying to become a patent attorney?

Possibly.

Most patent firms do a first stage of filtering based on CVs alone – a shortlist is then drawn up for first stage interview. Most firms are looking for a 1st or upper 2.1. It may be that a 3rd would be filtered out before reaching the interview stage. This would typically be the case for most of the top tier firms.

Most applications are individually reviewed though. If there were mitigating circumstances and these were explained in the covering letter then you might be called for interview. However, I would imagine you would have to impress to a greater extent in the interview.

I am having difficulty entering the profession. Is there anything I can do to help?

One option if you find you do not get called to interview would be to take an IP certificate course or other postgraduate qualification (Queen Mary in London and Bournemouth run these). If you got a merit or distinction in this then this could put you in a better position for recruitment.

Another option is to join a company in a field in which you like to work and try to get involved in IP matters from the inside. Time in a company is a valued asset in recruitment and many larger companies may offer the possibility to train as a patent attorney in house.

How do I apply for a position at [insert your patent firm]?

You start by looking at the patent firm website.

(This seems obvious but I bump into quite a few who fail this first test.)

Most, if not all, have a “Careers” style section. Here you will be given the email address for careers enquires. Send your covering letter and CV to this address.

(I’m a bit early adopter but I think even this is a bit out of date – give me a populated Twitter and LinkedIn account and I can tell you whether we should interview this person.)

Even if there aren’t positions at the time of applying, it is always worth writing in; applications are often kept on file if there is no immediate space and these are often the first point of call when a space arises.