Case studies: Intellectual Property Office (IPO) legal advisor: Sarah Whitehead

After studying biochemistry, gaining a PhD in Biocatalysis and Protein Engineering, and working in Australia and Sweden, Sarah decided life at the laboratory bench was not for her...

I started looking for alternatives to laboratory work and applied to the Intellectual Property Office (IPO) to be trained as a patent examiner. I started out as an associate patent examiner and, after being promoted quite quickly, started to look around for other opportunities.

After three years examining, I attained a two-year development opportunity in Patents Legal Section.

Although I spent some time working in food technology when I was a patent examiner (which is loosely related to my background), my particular subject of study was not relevant to securing my current job. I think the general skills gained from a science or engineering degree and Doctorate, along with the skills gained during my time at the IPO, were the important factors.

I took the development role as I wanted to gain experience outside of patent examining. Hopefully, this will provide good experience for potential management opportunities at a later date.

My days as a legal advisor are quite hectic and often I don't know what I'll have to deal with on any given day. Generally, my role involves providing guidance to examiners on what our practice should be when examining applications. This often involves considering new case law, evaluating whether our written guidance is in line and editing the guidance accordingly.

I also deal with queries on the interpretation of patent law from examiners, patent attorneys and members of the public. Sometimes a short telephone response is required, other times a lot of searching, discussion and consideration is needed.

Aside from these roles, I act as secretary for forums that discuss and decide on patent practice. This involves dealing with senior members of the IPO as well as external stakeholders.

I enjoy dealing with lots of people and the level of discussion that goes along with formulating practice. The team in Legal Section are great to work with. I also enjoy trying to get my head around various court decisions to pull out the relevant information and trying to understand how to apply a particular piece of legislation to unusual situations.

The most challenging part of the job is keeping on top of all the different priorities and tasks. Alongside the day-to-day work, I'm often required to work on small projects or deal with other unusual requests that come into the section. The trick is to be able to balance long-term work deadlines along with urgent queries, or requests from central government, which often have a very quick turnaround.

The best things about working in this sector are the Civil Service advantages in terms of holiday and flexi-time. In addition, the office is very flexible in finding working patterns that best suit the individual; career breaks, maternity/paternity leave, working from home or part time are all common.

The office, and the Civil Service in general, provides lots of opportunities to try something new and to gain experience in other areas, which for me is important.

I found when applying for the job that it was useful having some knowledge of patents. During my PhD, I took part in the Biotechnology YES (young entrepreneurs scheme) and this certainly gave me a start in thinking about intellectual property as a career.

I also think that being a patent examiner is what you make of it. Some people love working on a particular technology area, others are involved in project work, while others get involved in social responsibility work, which helps if you decide you want to move on or try something new.

AGCAS

Sourced by AGCAS editors

Date: 

September 2012

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