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A Day in the Life: Alex Burns

A Day in the Life: Alex Burns

06 December 2017

Alex Burns, associate in our electronics, computing & physics and engineering patent teams, joined Mewburn Ellis as part of our Graduate Training Programme in 2013. Below he gives us an outline of what working as a trainee patent attorney at Mewburn Ellis is like. 

We regularly tell people that there is no such thing as a “normal day” as a patent attorney. The job involves a very wide variety of different tasks but many of them only crop up relatively infrequently. This keeps the job interesting because each day is different and you really don’t know when you arrive at your desk what might turn up in any given day. Below, I’ve tried to give a flavour of some of the types of tasks that may turn up for a trainee and how I think about tackling them.

09:00: I arrive at work and check my email. I have been organising our next in-house tutorial so have received emails from both the tutors and trainees about when they are available. I send out a quick email proposing a date for the tutorial and deadline for sending our work to the tutors in advance.

09:30: I am currently preparing a response to the European Patent Office for a large multinational client. In the response, we have to reply to a number of objections against our patent application, and convince the examiner that the invention is both new, and not obvious, compared to several “prior art” documents. I studied the documents and started the reply to the examiner’s objections yesterday, so I finish this up, and write a letter to our client explaining what we have done.

10:30: My principal has forwarded me an email from a client containing questions about the law relating to licensing and the rights of exclusive licensees. I learned about this on the course at Queen Mary, but need to refresh my memory a little before replying to the client so I spend a bit of time looking at various online legal resources before putting together my reply.

11:30: We have had an enquiry via the company website from an individual inventor, and it has been forwarded to me. I give the inventor a quick call and have a chat about the basics of applying for a patent. I send through a follow-up email with more information, inviting him to organise a meeting with us in the office if he would like to pursue his idea. Talking to individual inventors like this is an important (and sometimes nerve-wracking) part of the job for trainees, as it gives us some experience of dealing with clients one-on-one.

13:30: I spend a while in the afternoon with my principal going over the response which I had finished this morning. There are a couple of places where he disagrees with my approach and suggests a few changes which I should make before we send a draft of the response to the client. As I have progressed, the amount of time spent going over pieces of work, and the amounts of changes which are made by my principal has gone down, but there is still some way to go (and a few exams to pass) before my work will go out unchecked by someone more experienced. I make the changes suggested and then have another quick chat about the response before sending the draft off to the client.

16:00: Another qualified attorney who works for the firm in a different office has asked me to prepare some written submissions for an oral hearing she has at the European Patent Office in a few weeks, as I have worked on the case with her before. This time round, we have received some instructions from the American attorney who is our client, so I don’t have to come up with all of the arguments myself. The submissions are likely to be very detailed and take a long time, so I spend an hour or so starting to review the case before heading home for the evening.

Alex joined Mewburn Ellis as part of our Graduate Training Programme in 2013. He has an MSci in Experimental and Theoretical Physics from the University of Cambridge. His final year research project focussed on the production of biomimetic photonic structures consisting of thin films of cellulose. Alex qualified as a Chartered Patent Attorney in 2016 and European Patent Attorney in 2017.

We are currently recruiting for our 2018 intake of trainee patent attorneys and trade mark attorneys. Find out more about our Graduate Training Programme.