Ed Carter

Trainee Patent Attorney

Physics PhD, Cambridge University.

"I joined Marks & Clerk in January 2021 after completing a PhD in physics. I’ve now been here 15 months, sat my first exams in October, and have started hybrid home/office working after joining in lockdown. I was fortunate to have a lot of support from partners, associates and other trainees who made it easy to join the profession and get used to my role even when working entirely from home. I found Marks & Clerk to be extremely welcoming!

The biggest attraction to the profession for me was the chance to work with a variety of inventions in different technical fields. I have always enjoyed learning new things, and by the end of my PhD I was ready to move on from the field I trained in. I thought that by becoming a patent attorney I could avoid staying in just one technical area, and luckily I was right! As a trainee patent attorney I learn about new inventions every day across fields including electronics, software, optics, and machine learning. 

At the moment my primary role is handling correspondence with patent offices that have objected to our clients’ patent applications. That means understanding the invention and the objection – for example, the office may feel that the invention isn’t new – and either explaining why the objection isn’t justified, or amending the application to overcome it. I see it as puzzle solving and it’s always a satisfying intellectual challenge, no matter what the invention actually is.

I am also beginning to get experience with writing patent applications. This involves speaking to clients, understanding what they’ve invented, and figuring out how to write down the essential features of the invention in a precise and exact way. It’s very fulfilling to see an application that I wrote progressing through the stages to a granted patent.

Finally, I handle quite a few administrative tasks relating to patents, especially when patents are transferred between companies. This can get very complex, and it’s challenging to keep on top of what’s needed and communicate this clearly with clients.

The other major aspect of the job is studying and passing professional exams, and in this regard the Marks & Clerk training academy has been a huge benefit. I receive a lot of support with understanding the syllabus and preparing for exams, and instructors have generally been willing to answer questions and provide one-to-one support when needed."

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