Careers Spotlight: Rachael Evans, Trainee Patent Attorney

Rachael Evans was a White Rose DTP student in the 2014 intake at the University of York. Rachael was one of the alumni panelists who came to the 2019 Away Day to speak to us about their career – for Rachael, this is patent law at Mathys & Squire. I caught up with her recently to speak about how she got into the profession and how she’s finding it!

Maria and Rachael caught up over Zoom to chat about all things patent law!

Why did you choose to pursue a career as a patent attorney?

I’d never heard of the profession before starting my undergraduate degree in Biology, which I signed up for because I really enjoyed the subject at school. In my penultimate year there was a Careers event at my university where a patent attorney spoke about their job. The job involved all the parts of science that I enjoyed (problem-solving, writing and data analysis), but no lab work.

How did you get into the profession?

I thought I wanted to become a patent attorney after attending the Careers talk, but a final-year project with an amazing supervisor swayed me to do a PhD instead. Additionally, it’s difficult to get into patent law due to the large volume of applicants, so I thought staying in academia and getting a PhD would put me in a better position if I decided to apply later.

Halfway through my PhD I realised I wouldn’t like to stay in academia afterwards, so I started thinking about patent law again. I connected with an alum from the University of Sheffield who worked as a patent attorney through the Careers service (Author’s note: Rachael started her PhD in York, but her supervisor moved to Sheffield, so she had access to the resources at both universities; there are similar schemes in all of the White Rose universities). He was very enthusiastic about his job and speaking to him reinforced that this would be the career for me. I decided to build some relevant experience for my applications through working on business development with Badrilla for my PIPS. Another relevant opportunity is to work in a university technology transfer office (TTO), which will work with patent attorneys to file patents for inventions they know they’ll be able to license; I worked with Imperial Innovations as a trainee, for example (Author’s note: You can read a PIPS Case Study from Oxford’s TTO, Oxford University Innovations, on our website). I also did a couple of related online courses on Coursera. Gaining some basic understanding of the intellectual property landscape definitely helps to get more comfortable applying for positions as a trainee patent attorney and going into interviews.

I started looking for positions about 9 months before my final submission date. Quite a few big firms had already closed their recruitment cycle for the following autumn, so I continuously looked for ad-hoc positions opening up. IP Careers is a useful resource that lists current vacancies, but a lot of firms only advertise on their website. One key requirement for me was location as I wanted to move somewhere I intended to stay long-term. I was offered a position in Manchester, but ultimately took up a post with Mathys & Squire in Cambridge, working within the biological sciences team.

What is your day-to-day work life like?

My day-to-day work life is very varied! A patent attorney’s workload can range from drafting and prosecuting applications for new inventions right through to defending or opposing granted patents. As a trainee, the distribution of your workload is typically determined by the Partner(s) that you work for. Recently I’ve been heavily involved in drafting new patent applications for a variety of applicants, ranging from individual inventors to universities and start-ups. Drafting typically involves turning the scientists’ summary of the invention and any supporting data they have into a patent application which describes the invention in detail. Drafting can be technically challenging because it requires a detailed understanding of the core aspects underlying the invention, as such you typically have to dedicate significant time to a single draft, bearing in mind any pending disclosures and budgetary constraints.

Aside from drafting, I spend the majority of my time dealing with patent prosecution, which involves assessing objections raised by the patent office, reporting these to clients, and preparing responses. The time dedicated to these tasks depends on the complexity of the objections, and also the client we are representing. For example, if we work directly with an inventor or client who is not an IP-specialist, we aim to explain objections in detail and provide our recommendations for response. We will then work with the client to draft a response that is consistent with their commercial activities. On the other hand, if we are working with IP-specialists, e.g. overseas attorneys, our analysis tends to focus on the EPO specific objections. When preparing responses, we may be working from detailed arguments already prepared by the overseas attorneys, or simply from general instructions instructing us to prepare a response, which typically requires a detailed analysis of the objections and prior art cited in support of these objections.

The day-to-day work life changes as you gain more experience in the profession. In my first year I spent a lot of time in my boss’s office working through tasks together. Now (~3 years in) I work independently to prepare full draft applications or draft reporting letters and responses which I will then discuss with my boss. The profession is pretty individual so you can balance your own workload.

What do you enjoy most about your career?

The huge variety of subject matter. I’ve worked on projects ranging from caviar-based products to a Covid-19 vaccine! In order to be able to respond to patent objections, you have to really understand the technology so you get to do a deep-dive into subjects you don’t know much about. It’s challenging, but so satisfying when you work it out!

What skills that you gained during your PhD do you apply in your career?

  • Problem-solving – you have the skills to work out solutions to problems you haven’t faced before because you become the expert in your niche part of science by often working things out for yourself. You also have the initiative to look for solutions on your own.
  • Planning and managing your workload – juggling your PhD work alongside other commitments, such as poster presentations and talks at conferences, and teaching.
  • Motivating yourself and building resilience.
  • Organisation – as you gain more experience, senior colleagues will start relying on you to keep track of documents and deadlines, and looking to you to find this information.
  • Presenting skills – I didn’t expect I’d have to do much presenting, but I do! When I’m assigned a case, I usually have to discuss what’s interesting about it and present key points to other colleagues.
  • Communication – this ties in with presentation skills, but, as I mentioned above, you also have to be a conduit between your clients and patent offices.

You will probably be asked questions to assess some or all of these skills in interview (some interviews also include written exercises), including your motivation for going into the role and applying to the firm.

What is the route to qualification as a patent attorney?

There are two aspects to qualification, UK exams to become a Chartered Patent Attorney eligible to represent clients before the UKIPO; and European exams to become a European Patent Attorney eligible to represent clients before the EPO. The order in which you do these exams will depend on where you train. At Mathys & Squire, we start with the PGCert in Intellectual Property Law at QM University. Passing QM exempts you from sitting the UK ‘foundation exams’. Once you have passed QM, or the foundation exams, there are 4 UK finals: 1 is the legal paper which requires a lot of hours dedicated to learning/memorising as much of the UK patent law as possible. Preparation for the remaining 3 UK exams is focused on exam technique – various tutorials are provided for these but the best preparation is past papers, which are available online. The UK exams have low pass rates (on average ~50%), and it is perfectly normal to fail at least one on first sitting.

The EQE exams take the form of a pre-exam (pre-EQE), which can only be sat after 2 years of experience, and four final exams (EQEs), which can only be sat after passing the pre-EQE and after 3 years of experience. The main difference with the UK exams is that the EQEs are open book, so revision is less about memorising the law, and more about learning efficient ways of locating the relevant information in your reference books.

A lot of the difficulty in doing the exams is that, with the exception of QM, you don’t get to have paid study leave, so you have to juggle your day job with revision. For example, I’d try to do 2-3 hours of revision after each 8-hour work day.

One thing I was not used to is that nobody cares if you fail (at least on first attempt), which significantly reduces the pressure associated with the exams! In fact, it is common to fail at least one exam on first sitting.

The exams are difficult (the longest UK exam is over 5 hours, and the longest EQE runs from 8.30-3.15 with only a 45 minute break for lunch), but they are manageable – you just need to do a lot of intense preparation for them. However, once they’re done, you don’t have to think about them again! And you normally get a pay rise with each exam you pass, which is a nice incentive that doesn’t come with university exams!