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Lara Sibley

Lara Sibley
Patent Attorney (UK)

Simmi Mangat
Patent Agent (Canada)

Minghui Sun
Patent Attorney (UK)

Esther Gottschalk
Trade Mark Attorney and Partner (UK)

Richard Gibbs
Patent Attorney and Office Managing Partner (UK)

Isobel Ferguson
Patent Attorney (UK)

Lara Sibley Name: Lara Sibley

Job Title: Patent Attorney (UK and EPA)

Office: London (UK)

Qualifications: PhD, Physics, University of Cambridge

My background

I joined Marks & Clerk in April 2012, after finishing my PhD in Condensed Matter Physics at Cambridge. Although I really enjoyed working in a lab, I didn’t want to remain in the same field for the rest of my career. I had heard about the patent attorney profession through former members of my PhD lab. I knew that I wanted a career involving Physics, and the prospect of working with a broad range of subject matter seemed perfect for me. I also enjoyed writing and debating in my spare time at Cambridge, and these skills are a key part of the job.


Marks & Clerk is one of the very few firms to run its own in-house ‘training academy’, to prepare trainees for the UK and European exams. This involves a series of lectures delivered by webinar, as well as away days at our different offices around the UK. Trainees also have the opportunity to attend external exam preparation courses, as well as those organised by the Chartered Institute of Patent Attorneys (CIPA).

One of the advantages of working with a large firm is that there is a network of people to support you and help you through the training process. Sitting the exams with a group of peers means you can help each other with the preparation. There are also lots of people available to answer any questions you might have. In particular, being able to talk to people from Marks & Clerk Solicitors and from our overseas offices was very helpful when I was studying for my exams.

The job

A significant part of my job is working with inventors, often academics, to write patent applications. This involves meetings to discuss the invention, then writing the application with further input from the inventor. I also spend time dealing with objections raised by the Patent Office. Last year, I worked with my supervisor on an appeal case at the European Patent Office, which meant travelling to Munich to attend a hearing.  I’ve also observed patent litigation proceedings at the High Court.

The job can often involve working on technology outside of your specialism, and it is important to be able to pick up new concepts quickly. From my experience, it also helps to have good organisational skills – often you will be working on many cases at the same time, and you need to be able to keep on top of the various deadlines.

Why I chose Marks & Clerk

There are many benefits of working for a larger firm. I get to work on a wide variety of cases, and with many different types of clients, and this experience has been invaluable when preparing for the exams. Also, being part of an international network gives you a real insight into the global profession. Although, day to day, we work in small teams, it is great having the support and infrastructural strength of a large firm. I also like the social side of working in a big office, and being part of a group of trainees who all started at the same time and who support each other.

View Lara's professional profile here.

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Simmi Mangat Name: Simmi Mangat

Job Title: Patent Agent

Office: Ottawa (Canada)

Qualifications: MASc Electrical Engineering, Concordia University

Why I chose the patent profession

After graduation I joined a consulting firm specializing in reverse engineering for patent licensing and litigation. Part of my job was to read and understand the clients’ patents and compare the patent claims to devices of the clients’ competitors. I came to appreciate how the language of the claims dictated whether a client was going to be rewarded for their innovation or lose millions of dollars to a competitor. During the course of my work, I not only had the opportunity to “decipher” patent claims, but also create claim language through drafting patent applications. I liked the mix of technical and legal skills required in patent work.

Training and Qualification

As my interest in patents grew, I learned about the role of patent agents in Canada, and what was required to become a patent agent. Once a year, patent agent trainees can sit for the Canadian Patent Agent Examinations after having worked in the area of Canadian patent law and practice for a period of at least 12 months. The Canadian Patent Examinations comprise four exams: patent drafting, validity of an issued patent, response to an official action and infringement of an issued patent. The pass rate for these exams is quite low so it was a bit daunting writing the first time. After five attempts, I passed all four exams. Once I became a qualified Patent Agent I joined Marks & Clerk Canada. Even though I had passed the examinations, the real training was on-the-job. I was equivalent to a patent agent trainee as I lacked the practical experience. I was fortunate, however, to train with highly skilled patent agents who had many years’ experience.

Patent Agent Role

The bulk of my work involves prosecuting patent applications before the Canadian Patent Office. I also have the opportunity to work with U.S. patent attorneys prosecuting patent applications before the United States Patent and Trademark Office on behalf of Canadian clients. Both technical and legal skills are involved to understand various technologies and ensure that the patent applications comply with Canadian practice. At the same time, a patent agent has to ensure that the patent applications accurately reflect the client’s invention and the scope thereof. Patent agents must also excel in communication, both written and oral, especially when corresponding with the patent office and the client. As the law is always evolving, patent agents must also keep up-to-date with changes in the law and patent practice.

Why Marks & Clerk?

As Marks & Clerk Canada is part of a multinational firm, I see a variety of clients and technologies. No two days are the same which makes the job both challenging and rewarding, but never dull. I also have the pleasure of working with highly experienced staff members who are always willing to spend time sharing their knowledge and providing advice.

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Esther Gottschalk Name: Esther Gottschalk

Job Title: Trade Mark Attorney and Partner

Office: Birmingham(UK)

Qualifications: MA, Pembroke College Oxford

Having completed a degree in English Language and Literature, there was no obvious next step. English qualifies you for everything and for nothing. After finishing my degree, I considered training as a solicitor, but disliked the idea of two more years as a student and the heavy financial commitment. I therefore took the traditional arty/media route, and joined a publishing firm as a graduate trainee. Unfortunately, despite loving books and magazines, the career was not right for me. I wanted a role which was people-focussed, and that would give me real commercial experience in the areas of branding and marketing - where I was still able to do a lot of writing. As a result, I ended up working for a PR company. My written skills improved dramatically, and I learnt how to manage clients and work within a team. Randomly, I ended up winning the Marks & Clerk PR account, and ran this account for just over a year. It is safe to say that before this, I had never heard of trade mark or patent Attorneys. I expected the work to be incredibly dry, but instead, the attorneys were simply dealing with the legal side of branding, portfolio management and marketing. When my main contact at Marks & Clerk told me they were recruiting for a new trainee and that I should apply, I did so. Although Marks & Clerk usually aims to recruit trainees who have some sort of legal background, my knowledge gained through handling the firm's PR account stood me in good stead and I was lucky enough to be offered the job.

Training and qualification

My training was very much "on the job" - reading case files, drafting letters, discussing cases with my training partner. I was also lucky enough to be fast tracked through the basic qualifying exams, and had a term as a full time student again at Queen Mary, where I took the Certificate of Intellectual Property. This gave me an exemption from all of the foundation trade mark and patent exams. Taking the patent exams was a shock to the system, considering that I had given up all science at the age of 12 and was suddenly in a room with 100 people, mostly scientists, many of whom had doctorates. However, it did give me a thorough grounding in all aspects of IP. The three qualifying trade mark exams are much harder, and involve a lot of independent study. Qualification can take between four and seven years.

The trade mark attorney's role

Trade mark attorneys advise clients on the registration, use and exploitation of their trade marks, both in the UK and worldwide. My work involves managing trade mark portfolios, advising on assignments and infringements and litigation and researching new trade marks for new brands.

Trade mark attorneys need to be excellent writers and communicators, and to be able to combine academic, analytical thinking with strong commercial awareness. As the day to day job involves everything from drafting and filing written arguments and evidence, to arguing in a court-style tribunal, to discussing the legal implications of a client’s branding plans, to negotiation, the job is constantly challenging.

"...diversity of clients..."

A deciding factor for me was the diversity of clients that the firm attracts - from banks and multinationals, including engineering, electronics and software companies, to small and medium-sized companies, to new media start-ups. My clients range from fashion houses to travel companies to IT firms.

"...a legal career that is a little bit different."

I find that the people and written skills I gained in PR are very valuable in the job I do now. This role also offers me a more intellectual, academic role that I missed in my previous jobs. While the training can be gruelling, there are a lot of trainees who are going through the same thing and you make friends very quickly. Ultimately, the role offers a diversity of rewarding experiences and challenges for those looking for a legal career that is a little less mainstream.

View Esther's professional profile here.

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Richard Gibbs Name: Richard Gibbs

Job Title: Patent Attorney and Office Managing Partner

Office: Glasgow (UK)

Qualifications: PhD, Immunology and Microbiology, University of Edinburgh

I started out wanting to be either an architect or an animator, but after nine years at university gaining two degrees and experience of lab work and lecturing, I realised that pursuing a career as a Patent Attorney was the path for me. I joined the profession in 2003, was appointed Partner at Marks & Clerk in 2013 and I recently became the Office Managing Partner for the Glasgow office.  I specialise in biotechnology inventions, advising my clients on all matters concerning intellectual property.

Why I pursued a career as a Patent Attorney

My long standing interest in science and technology, and natural curiosity to find out how things work, makes a career as a Patent Attorney the obvious choice – although I did not know that 20 years ago.

Throughout school I had a particular interest in biology and I went on to study for a degree in medical microbiology at The University of Edinburgh. After completing my degree I was still undecided as to my career; I knew it would involve science and I considered a career in academia. After a period as a lab technician I decided to study for a Ph.D and it was during this period that I entered the Biotechnology and Biological Sciences Research Council (BBSRC) sponsored young entrepreneur business competition.The organisers ran a weekend of seminars and workshops that taught aspects of business and finance to science graduates. For the first time, I was able to appreciate just how important intellectual property is to the biotechnology industry. I realised that a career as a Patent Attorney represented the perfect way to fuse my passion for science and technology with my new found interest in business.

Qualifications and training

Most firms require that you qualify both as a Chartered (UK) Patent Attorney and a European Patent Attorney and to this end, it is necessary to pass the UK and European examinations.

Training for these exams is conducted on the job and usually involves organised in-house lectures and tutorials to help you develop all of the skills, knowledge and experience necessary to pass the exams. There are also a number of externally run revision courses. The exams are held each year and it is possible to tailor your progression to ensure you sit exams only when you are ready for them.

The exams test everything from your ability to know and understand intellectual property law to your ability to draft patent applications, assess complex infringement or validity issues and apply this knowledge in practice. It generally takes between four and five years to become fully qualified.

I opted to spread my UK foundation exams over two years and in my third year I sat the UK advanced papers, and my European examinations in years three and four. At present, the UK exams consist of a set of five foundation exams followed by four advanced papers. To achieve European qualification you must pass the preliminary exam and then the four finals papers. In total there are now 14 exams to pass to achieve UK and European qualification.

The exams are hard; it is not uncommon for trainees to fail exams and re-sit – but with hard work and the right support you can get there. Marks & Clerk is one of the few firms to run its own “training academy”, bringing together trainees from across the UK Firm to actively support their learning and establish a useful peer network.

My current role

I have a varied practice and regularly meet with inventors from local academic institutions and businesses to discuss new innovations and prepare patent applications. This is one of the most enjoyable parts of the job and I am privileged to learn first-hand of some of the remarkable innovations taking place around us.

I am most regularly involved in what is known as patent prosecution: assisting my clients to obtain granted patents by guiding them through the various national patent systems and addressing objections raised by patent examiners.

I also work with a large number of foreign clients; this adds to the variety of work I tackle each day. For example, in addition to drafting patent applications and general patent prosecution work, I handle patent assignments, infringement and validity issues, and provide reports to help my clients assess the scope of patents in a particular field. In any given day you may find me drafting a patent application, preparing a response to an examination report and reviewing a draft scientific manuscript for new intellectual property.

As a Partner at Marks & Clerk I am also responsible for a team of people, and I must work with the other Partners of the Firm to ensure a constant flow of work into the business. As such, a crucial part of my job is business development and client care, and as part of this I will often attend and organise events for clients, as well as make trips to visit foreign associates. Since taking up the role of Office Managing Partner I have become more involved with finance, systems and people management. While this has absorbed more of my time, it has delivered some fresh and exciting challenges. However, I remain very much involved with my clients and the major focus of my day job remains on my patent work.

In addition to my patent work, I am actively involved in training our new recruits so that they not only gain the knowledge necessary to pass the exams, but also skills and experience for career progression through the Firm.

Advice for potential recruits.

Competition for training positions is intense and it is important to make your application as attractive and interesting as possible. Most life science graduates approach the profession with a number of higher education qualifications and a Ph.D. is increasingly common. While a Ph.D. is not essential, it is true to say that most trainee patent attorneys will have a strong academic background. Those successful in securing trainee positions will also exhibit a broad interest in science, have exceptional written and oral communication skills, a keen eye for detail and a diligent and conscientious nature.

Make sure you research the profession and speak to as many people as possible in order to understand what it is that we do and the services we offer. Becoming a qualified Patent Attorney requires a great deal of drive and commitment, and interviewers will be looking for those people they perceive best able to deliver this.

View Richard's professional profile here.

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Isobel Ferguson Name: Isobel Ferguson

Job Title: Patent Attorney

Office: Birmingham (UK)

Qualifications: MEng, Mechanical Engineering, University of Warwick

What first attracted you to a career at Marks & Clerk and to working in the Birmingham office?

After obtaining my degree from Warwick University I knew I wanted a career as a patent attorney. I wanted to remain in the region so Birmingham was a natural choice for me.

The office is located in the city centre, making it a great place to work and socialise.  Birmingham is home to many national and international businesses and has great travel links including the new Grand Central station. The city centre itself also offers great shopping and great places to eat and drink.

What does a typical working week look like?

My day-to-day work typically involves responding to objections raised against patent applications by the UK or European Patent Offices.  Since joining as a graduate, I have already had the opportunity to write a number of patent applications, which involves meeting with inventors to understand their invention and then writing the patent application with further input from the inventors. I am also working with my supervisor on a case that has been summoned to a hearing before the European Patent Office.  This will involve travelling to Munich to argue the merits of the application at Oral Proceedings.

I  attend two webinar lectures a week given by the in-house ‘Training Academy’ to prepare me for the UK foundation exams.  Marks & Clerk is one of the very few firms to offer an in-house training programme, which, in addition to delivering lectures, arranges regular ‘away days’ for trainees across the UK offices.

Give us an idea of the range of clients you work with and the variety of technologies?

I have worked on cases for a range of clients, from large multinationals (such as one of the largest internet based retailers in the world), to small start-up businesses.  I mainly work on software and mechanical patents, however, as a trainee I receive work from a number of patent attorneys in the Birmingham office which means I have the opportunity to deal with a wide range of technologies.

In addition to dealing directly with inventors, I also receive work from foreign attorneys whose clients are looking to gain patent protection in the UK or Europe.

Every case is different, which keeps the job interesting!

What is most enjoyable about working for the Marks & Clerk Birmingham office?

The Birmingham office has a great team of people. There are a good number of trainees, all at different levels, which means there is a great support system.

The office itself is very modern and has great facilities. It is located on the 26th floor giving excellent views over the city and there is also a large ‘breakout’ area which hosts Friday night drinks on the first Friday of every month, and offers a place to socialise.

Tell us about your career highlight to date.

Even as a graduate trainee I have the opportunity to attend client meetings which is probably my favourite part of the job.  They allow you to get to know the people you deal with on a daily basis, and often as we travel to see them, allow you to see new inventions in action.

What opportunities are there for development and progression at Marks & Clerk?

The focus is not just on billing and from a very early stage there is the opportunity for personal development.  For example, I have already been involved in business development (such as networking events) and maintaining client relations.

Once qualified, I know the firm offers opportunities for career development – to Senior and Principle Associate level as well as Partnership.

What makes you stay at Marks & Clerk?

Marks & Clerk is a great employer and the Birmingham office, like the other offices I've visited, is really friendly. There are welcome lunches whenever a new employee joins, and the office is very social, with events such as bowling nights, wine tastings and go karting.

There are also a number of benefits associated with working for a larger firm with a global presence.  I am able to work on a wide variety of cases, with different types of clients, and I am able to get an insight into the profession globally.

There is also a large support network with fourteen trainees in my year across the UK offices, and we regularly meet up for ‘away days’. Having a peer group who understand the steep learning curve is invaluable.

If you had to describe Marks & Clerk in just three words, what would they be?

Challenging, friendly, rewarding.

View Isobel's profile here

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Minghui Sun Name: Minghui Sun

Job Title: Patent Attorney

Office: Manchester (UK)

Qualifications: MPhil, Electronic and Computer Engineering, Hong Kong University of Science and Technology

What first attracted you to a career at Marks & Clerk and to working in the Manchester office?

I applied for the position of trainee patent attorney while working at an overseas law firm. Marks & Clerk has a strong international reputation which is what first attracted me to apply for the position. During the interview process, I was impressed by the thoughtfulness and professionalism of the HR team and fee earners, especially given the fact that I could not attend the initial interview in person. All of the people I met during my interviews were very friendly and approachable. Based on these factors, I accepted the job offer without hesitation.

What does a typical working week look like?

I am not sure I have experienced a typical week so far, as there are always new and interesting projects to work on. I work closely with several supervisors who assign work to me and help to ensure that I can gain experience in a number of different areas of intellectual property law. I would say that patent prosecution is the main component of my work every week, but the type of technology and the patent offices involved vary. There have also been plenty of opportunities for drafting work and research/review work for larger-scale projects (eg EPO oppositions and appeals).

Give us an idea of the range of clients you work with and the variety of technologies?

The clients I have worked with include world-famous multinational companies, local and overseas SMEs and local start-ups. The technologies range from electronic circuits, computer hardware and software, telecommunications, general electronic systems and printing techniques - all of which suit my background and knowledge.

What is most enjoyable about working for the Marks & Clerk Manchester office?

The Marks & Clerk Manchester office is very friendly and everyone knows everyone else. There is a good camaraderie and we often go out for lunches together. The office is in a convenient location in the city centre. So far I am enjoying the luxury of a ten-minute walking commute to office.

Tell us about your career highlight to date.

During the preparation of an opposition to a granted patent of one of our client’s competitors, I was tasked with looking for relevant prior art documents that could form the basis of a novelty/inventive step attack. It initially appeared difficult, but after reviewing a pile of prior art documents thoroughly, I was able to locate several key documents which were used in the opposition. It is always a delight when my work gets acknowledged by the supervising attorneys and the clients.

What opportunities are there for development and progression at M&C?

At the Marks & Clerk Manchester Office, I receive thorough on-the-job training every day from several highly skilled and experienced patent attorneys.

Further, Marks & Clerk provides a training academy to guide trainee patent attorneys through the qualifying examinations. The training academy includes twice weekly webinar sessions from skilled attorneys and solicitors within Marks & Clerk and I have found these sessions to be invaluable. Marks & Clerk also provides several away days each year where trainees from the different offices in the UK meet-up for training. The highlight of this for me has been to visit the Edinburgh and Oxford offices as I had never been to these cities previously. It is always good to catch up with the trainees from other offices.

What makes you stay at Marks & Clerk?

Marks & Clerk provides a comfortable working environment with plenty of opportunities for professional development.

If you had to describe Marks & Clerk in just three words, what would they be?

Comprehensive, professional, and organised.

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