Tom is a member of the firm’s tech and engineering practice groups. His work focuses on patent prosecution. He joined S&P in September 2019 after graduating from the University of Bath with a master’s degree in mechanical engineering and working as a technical lead in the computer software industry.
There’s no such thing as a typical day for a patent attorney. Life in private practice is especially varied; over the course of a week I’ll be working on cases across a wide range of technological fields for a variety of different clients, from renowned multi-national companies to universities and individuals.
Below, I’ve tried to give an impression of some of the things that I can end up doing on any given day in the office as well as a summary of my first year at S&P:
I arrive at the office. I used to commute from Leicester but now that I’ve moved to Derby it is just a 10-minute drive to our head office. One of the nice things about Derby is how easy it is to get around at rush hour. I grab a cup of tea from the kitchen and check my inbox for anything that requires immediate action.
I like to get my head down first thing in the morning and crack through my main task for the day. Normally, the last thing I do before leaving work is plan out what this task will be, so the next morning I can get going straight away.
Today, my morning task is to analyse an examination report which the European Patent Office has issued on a patent application that has been made by one of our multinational clients. This is the first time I’ve worked on this application so my first job is to familiarise myself with the invention and gain a good understanding of how the invention works.
Next, I read through the examination report and consider the objections that have been made. The examiner has argued that the client’s invention is not new and cites a number of ‘prior art’ documents in support. I read through these documents to gain an understanding of how the devices in the prior art documents work and how they differ from the client’s invention. After I’ve done this, I normally have a good idea of how to respond to the examination report. I’ll discuss my proposed arguments with my supervisor in the afternoon.
I get a call from reception saying an individual has called who wants to ask about obtaining a patent for an invention she’s come up with. The inventor talks me through her idea and we discuss the basics of patent protection and the process of applying for a patent. After the call I send her an email with some more detailed information on a couple of areas we spoke about and offer for her to come in for a free consultation meeting if she wants to move forward.
Interacting with potential or existing clients adds another dimension to your work and is a great way for trainees to develop as it tests the legal concepts we study, in a practical scenario.
First thing after lunch I always take some time to action any post that has come in during the morning and I make sure that everything is up to date in my work schedule. At S&P trainees aren’t just given piecemeal items to complete for more experienced colleagues; we’re immediately given the responsibility to manage our own cases. This is great experience but it takes a lot of organisation, so it’s vitally important to have a good system in place that allows us to keep on top of all our deadlines.
I see my supervisor to discuss the examination report I analysed this morning. One of the most important skills here is the ability to condense all of the information I read into a concise summary that contains all of the key details.
We talk through the case and I present my proposal for responding to the examiner’s objections. My supervisor has some comments and suggests a couple of things to think about.
I head back to my desk to draft my response. I’ll make the finishing touches tomorrow morning and write my letter to the client explaining our proposal. I’ll then go through what I’ve written with my supervisor in the afternoon and, after some small tweaks, we’ll get it sent out to the client.
Today I’ve been asked to shadow one of our associates in a client meeting. In the meeting, the inventor has brought in a prototype of their invention that they want patent protection for.
We discuss the features of their invention and try to identify which features provide the most commercial value to the inventor. Being part of client meetings is another great way to apply the legal concepts that we study to practical scenarios.
I’ve got to be out of the office quickly today as we have one of our company games nights after work. Today we’re off to Nottingham to play some multiplayer virtual reality games. Outside of games nights, S&P also organises 5-a-side football and netball events as well as heading to the pub every now and again.
The first year at Swindell & Pearson
At S&P trainees are assigned a supervisor, who will be one of the firm’s senior and most experienced attorneys, that oversees their development. The first few weeks as a trainee involve a number of sessions that are designed to give you an introduction into patents and how the firm works.
After these sessions, the majority of the training comprises working on real cases while receiving one to one training with their supervisor. This is supplemented by weekly seminars and, for the more experienced trainees, a patent drafting course which is conducted by one of the firm’s most experienced attorneys.
S&P trainees sit the Patent Examination Board UK qualifying examinations as opposed to the university courses available. In October, I sat my first set of UK qualifying exams. S&P provide a multitude of in-house resources as well as study days and the opportunity to attend external revision courses.
All of the S&P trainees work in our head office in Derby and the working hours are typically 9 to 5 although this can vary depending on approaching deadlines and during periods of study for examinations.