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Patient to Retrain in Patent Law

"Describe a game of hockey to a Martian." That was the task that neuroscientist-turned-patent-agent Sarah Thompson (pictured left) was asked to do when she was interviewing for a job as a patent agent trainee a few years ago. Thompson must have provided a decent impromptu description since she got the job; 4 years later, she is almost fully qualified as a patent agent.

So were those interviewers being facetious? Not really. One of the fundamental skills required to work as a patent agent, says Thompson, "is putting difficult concepts into what a layperson--your clients--would understand." True, those clients are not extra-terrestrials, but there is a wide gulf between the worlds of law and science, and Thompson's new job is to span it.

Seeking Her Niche

After finishing her undergraduate degree in pharmacology at Bristol University, Thompson wanted to continue her studies and felt that "doing a Ph.D. was a natural progression." She was keen to do a neuroscience research project, so in 1997 she started her Ph.D. at the University of Manchester in neuroimmunology. Thompson investigated the role of anti-inflammatory mediators in context of stroke and the resulting cell death. She soon decided that research was "very frustrating"--and unappealing for the long haul.

While still doing her doctoral work, Thompson found her interests growing broader. She became the editor of a newsletter in her university focused on public awareness of science. She also participated in the Biotechnology YES (Young Entrepreneurs Scheme) competition, an activity that presaged her professional future. In Biotechnology YES, teams of undergraduate or postgraduate science students form a business plan for a virtual company and present the plan to a panel of judges, competing against other teams. The competitors live on-site and the competition runs over 3 days. During this time, the teams are visited by expert advisors who help them mold their business plans.

One of the competition advisors was a patent agent, and Thompson had the opportunity to talk to him about his job. He agreed to let her shadow him at his office—a private practice in Glasgow--for a day. Through her personal networks, she later gained another week's experience at another private practice in London.

After those brief work stints, Thompson decided to pursue a career as a patent agent. She felt that working in private practice (see sidebar) would give her the best and broadest training, exposing her to a wider patent portfolio. As a starting point, she set about investigating what the firms were looking for. "Some places were looking for someone with a specific background, others not,” she says. “Some did not even require you to have a Ph.D." In December 2000, she interviewed at the firm Mewburn Ellis L.L.P.. Being able to communicate difficult concepts in general terms--like explaining a game of hockey to Martian--was probably the key to her getting that position, she feels. The following September, she started her new job.

Patent Agents, Examiners, and Attorneys: What's in the Name?

Patent agents have several employment options, Thompson explains. The first is working in private practice--like a law or accounting firm--where you act as the interface between your client and patent offices. The second is to work “in-house,” for example, at a pharmaceutical company. In both scenarios, the patent agent is drafting, prosecuting, and defending the patent.

Patent examiners, on the other hand, review--and then reject or accept--the patent applications submitted by patent agents on behalf of their clients. They are employed by a government or inter-governmental agency, such as the U.K. Patent Office, in Newport, Wales, or the European Patent Office (E.P.O.), in Munich, Germany. Patent examiners may move to work as patent agents, says Thompson, "but not normally the other way around."

In the U.K., registered patent agents can use the title "Patent Attorney" although this title is also used by solicitors who may have no formal qualification in intellectual property.

A New Beginning

Although a scientific background is essential for her job, Thompson had to fully retrain to make the transition. For the first 2 years or so, Thompson worked under the supervision of various partners--senior patent agents--rotating every 6 months. "For example, I had to read examination reports from the European Patent Office (E.P.O.)," says Thompson. The key question a patent agent has to be expert in asking and answering, explains Thompson, is, "What is the invention? You need to be able to summarize a lot of complex data to do this. There was lots to grasp."

A year into her training, Thompson spent 4 months at Manchester University doing a foundation course--a certificate course in intellectual property--in preparation for the first of the two sets of examinations that are necessary to qualify as a patent agent in the U.K. During this period, Thompson studied U.K. and overseas patent law, trademark law, and design and copyright law. "It's an intensive course," says Thompson, "with a lot of subjects to cover." While on the course, Thompson was still on salary at Mewburn Ellis, and the firm paid her course fees. "It was good to do it full-time; not all firms allow that." On completing the course, participants can take an examination that is equivalent to the first of the patent-law qualifying exams. Back at the office, on her return, "I was allowed to be a little more independent," she says.

But her studying was far from over. She still needed to do part 2. The qualifying examinations--especially the second--are notoriously rigorous.Candidates are examined in all aspects of U.K. patent law. Passing the exams, says Thompson, "means studying most evenings and weekends" beginning many months prior to the exams. The failure rate is high; many have to re-sit individual papers. Last month, Thompson re-sat part 2 papers for the second time and is awaiting the results. Last March, she also took the European Qualifying exams--exams the vast majority of U.K. patent agents in private practice and industry take--so she will be authorized to work with the E.P.O. She needs to re-sit one of these next year.

Gaining Experience and Responsibility

Now that she is working at a more senior level, Thompson says, she really enjoys being able to argue why an invention is worthy of its name--or not. "You are kept up-to-date; intellectually you are on the go the whole time," she says. Agents at her current level manage a portfolio of applications, which means swift decisions and many deadlines. But it's fun.

Last year, Thompson moved from Mewburn Ellis to the biotechnology firm, Cambridge Antibody Technology (CAT), in Cambridge, U.K. Thompson appreciates the broad training she received in private practice, but she now finds specializing "in one particular technology area and working closely with the company's scientists" just as stimulating.

For those Considering Patent Law

Passing those exams, says Thompson, required tenacity and years of study. Tenacity--and an argumentative streak--have helped her make it as a patent agent. What else? Communication and time-management skills are key, she says. Knowing a foreign language is also useful. Research training is important, but don't expect to work on patents that match your research area. When she was working at Mewburn Ellis, Thompson's “specialty” was all of biotechnology. "I had only one neuroscience-related patent in those 3 years," she says.

Was it worth it? "It was hard, you have a lot to learn, but when you can argue the case of your patent application successfully to a patent examiner, it's great."

More Resources

Sarah Thompson highly recommends reading the guide to Chartered Patent Attorneys, published by "Inside Careers", which gives a thorough insight into training and career paths in patent law. She also recommends contacting The Chartered Institute of Patent Agents for further resources.

Anne Forde is Next Wave's North and East Europe Editor.

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