By Fergus Riche, Trainee Patent Attorney at Carpmaels & Ransford
Can a PhD in Biomechanics lead to a career in law? For Fergus, the answer was yes.
Now a Trainee Patent Attorney in Carpmaels & Ransford’s Engineering and Tech group, Fergus shares the skills that transferred from his PhD, and what life as a trainee patent attorney is really like.
What did you study before moving into intellectual property?
I studied Engineering as an undergraduate, specialising in the analysis of biological systems using engineering concepts.
After that, I stayed on for a PhD with my MEng project supervisor. Partly, I wanted to experience research for myself and see what academic life was really like. I was also inspired by many of the people who had taught me, most of whom had PhDs themselves.
Why did intellectual property appeal to you?
Lots of my friends are lawyers, and I always found conversations about their work fascinating. Eventually, I began reading about intellectual property and patent drafting in my spare time. The more I learned, the more I felt it might be a good fit.
One of the things that particularly appealed to me was the structured training offered by many patent attorney firms. Knowing that there was a clear pathway into the profession was a major attraction.
I was also excited by the opportunity to work with a wide range of technologies.
Since joining the profession, I’ve come across all sorts of inventions that I would never otherwise have encountered, from surgical staplers to semiconductor topologies. That constant exposure to new ideas keeps the work interesting.
“No two cases are the same, and I’ve found out about all sorts of ideas that I would never have encountered otherwise.”
How does time management in industry compare with academia?
The biggest difference is that, in professional services, time is directly linked to client work.
Clients expect us to solve problems efficiently and to keep a close eye on how their fees are being spent. In academia, there is often no direct equivalent of a client, so researchers typically have more freedom in deciding how to use funding and resources.
There are some similarities though; both fields offer lots of freedom to decide how you’re going to organise your workload. Deadlines in patent applications are often months ahead, so you have to keep organised to make sure nothing sneaks up on you. You may also spend some time chasing up your supervisor for feedback on what you’ve written, which will be familiar to research students!
“There are some similarities though; both fields offer lots of freedom to decide how you’re going to organise your workload.”
How does the work compare?
Academic research is largely about working out whether a hypothesis is true or not, without any investment in the outcome.
Intellectual property work requires a slightly different mindset.
When you’re arguing with an examiner in the patent office, it’s your job to write the best case for your client’s application, without worrying about the other side of the argument. Both jobs require a degree of flexibility in your thinking, but as an attorney, you have to work towards your client’s best interests.
The scale of the work is different too.
Research projects can run for several years and involve large teams of people. Patent matters are often more focused, involving smaller pieces of work and closer collaboration with a supervisor or colleague.
Which skills from your PhD have been most useful?
Being a patent attorney requires a combination of technical understanding and the ability to explain complex things with clarity and objectivity.
A PhD provides plenty of opportunities to practise exactly that. It gives you practical exposure to technical subject-matter and requires you to convince others and defend your findings.
In a wider sense, a PhD is good preparation for a career in intellectual property because it builds resilience. Work in intellectual property is demanding; you need to think carefully through each of your lines of enquiry, bouncing back when you reach a dead end.
“A PhD is good preparation for a career in intellectual property because it builds resilience.”
What does a typical day as a patent attorney involve?
The days vary, depending on what cases you’re working on.
A typical case involves reviewing a report from the patent office and responding to their decisions about your client’s application.
Some cases are relatively simple; if you agree with the examiner, you can amend the application to reflect what’s patentable.
If you disagree with their assessment, you might have to spend more time constructing an argument about what makes your client’s invention special, so you can explain that in your reply. For tricky cases, you’ll arrange meetings with your supervisor to discuss how to proceed.
“The days vary depending on what cases you’re working on.”
What would you say to someone considering a move from academic research into intellectual property?
Read about the profession, attend open days and speak to people working in the field. In my experience, most patent attorneys were more than happy to talk about their careers and answer questions, and often they gave away more than I really asked about!
Make a table of the firms you’d like to apply to and find out what their application process looks like. Be warned; the cycle between making your application and starting can be almost a year, so take steps as soon as you think you might be interested.