Shu has extensive experience in drafting and prosecuting patent applications for a diverse range of clients, helping them to manage their IP portfolios and define their IP strategies worldwide. Shu is a member of the Withers & Rogers’ Electronics, Computing and Physics group and has particular expertise in dealing with patents in the fields of semiconductor device fabrication, nanotechnology, computer-related inventions and scientific instruments.
WHY DID YOU CHOOSE TO BECOME A PATENT ATTORNEY?
I have always had a fascination with science that started during my school years, and working as a patent attorney allowed me to continue to build on the knowledge that I gained through university whilst studying Electrical and Electronic Engineering. My chosen career also means that I can continue to stay in touch with a wide range of new and exciting technologies.
HOW DID YOU DISCOVER THIS CAREER OPTION?
When I was in my third year of university, I chose to study an elective course on Innovation and Strategic Management of Intellectual Property (IP) – this opened my eyes to the world of IP. Through studying the different stages in the lifetime of a patent, from research to bringing innovations to the market, I immediately found the subject interesting and I was able to see the impact of what I had been researching and their real world applications.
I discovered more about IP as a career when I managed to secure a secondment at a private practice patent and trademark attorney firm, which provided me with some basic training and gave me more of an insight of what it might look like to have a career in the IP industry as well as join the working world.
DID YOU (OR DO YOU) HAVE A ROLE MODEL IN TECH OR BUSINESS IN GENERAL?
One of my early role models was my physics teacher in school, who inspired us to explore technical and science-based careers. Her teaching really instilled confidence in me and the credibility of my potential in pursuing higher-education engineering.
Since then, I have found many role models in female leaders that I have worked with. One female patent attorney who was about a decade ahead in her career relative to me, was not only technically exceptional as an attorney but also went above and beyond when it came to sharing her knowledge and experience while supporting junior colleagues advance their career paths. She incorporated an open-door policy and made time to delve into specific details, which is something I appreciate the value of now that I am further along in my career and is something I hope to emulate in my role at Withers & Rogers.
WHAT ARE SOME OF THE HIGH POINTS IN YOUR CAREER?
My role is most rewarding when I am working with clients who are really engaged with the patent process and they can see the commitment and effort that goes into achieving results, which feeds into their business success. Having the chance to work closely with extraordinary businesses and people allows me to provide more tailored legal advice to them, which is essential to building strong and trusting long-term relationships.
As a patent attorney, we attend hearings and oral proceedings before patent boards for the examination of applications. One particularly tricky case involved appearing before the hearing officer of the UK Intellectual Property Office (UKIPO). Collaborating closely with the lead inventor and their local patent attorney, we formulated arguments together resulting in a win. That was a high-point for me as the subject-matter was particularly challenging to get granted in the UK.
WHAT DOES AN AVERAGE WORKDAY LOOK LIKE FOR YOU?
Working as a patent attorney is mainly a desk-based job. A stereotypical day might involve meetings with inventors, drafting new patent applications, prosecuting applications in the UK or Europe, instructing overseas attorneys as well as training and mentoring the next generation of attorneys.
At any one time, I will typically be working on a handful of cases that usually cover vastly different technologies. This is one of the more interesting aspects to the role as in the morning I may be working on a case involving electrical circuit design but in the afternoon, I may have picked up a case on the application of artificial intelligence for instance.
My role also involves a reasonable amount of overseas travel to see clients and visiting our network of patent attorneys. These trips are invaluable for maintaining strong relationships as well as building new ones. Also, seeing an invention in action really brings its functionality to life and allows a deeper understanding that can be difficult to gain from diagrams and description alone.
ARE THERE ANY SPECIFIC SKILLS OR TRAITS THAT ARE NEEDED TO BECOME A PATENT ATTORNEY?
Patent attorneys are generally known to be quite analytical and detail-orientated by nature. This is important when working with inventors as it allows us to capture the nuances of new inventions during the patent drafting process. Being an effective communicator as well as being able to understand the technical language of your clients is also important in gaining their trust.
It is also essential to be highly-organised and disciplined at time management as you will have a docket of deadlines at any given moment, which need to be proactively managed.
Finally, all patent attorneys must have a background in science or engineering – this is a requirement for sitting our professional exams. Some trainee patent attorneys come from backgrounds where they have gained industry experience before entering the profession, which can equip them with a deeper understanding of the current challenges that clients in those industries might be facing.
HOW EASY IS IT TO GAIN THE NECESSARY QUALIFICATIONS? AND HOW IMPORTANT IS IT TO HAVE A SUPPORTIVE EMPLOYER?
To become qualified as a patent attorney, you usually undertake three to five years of training under the supervision of an experienced patent attorney before sitting the final UK and European exams. Sitting the final exams is a particularly busy period as they require taking plenty of time to prepare for them whilst juggling the demands of your day job.
The initial training period for patent attorneys is essential as it is important to gain practical training in a wide range of legal scenarios. The final legal exams are unlike other exams that people from science and engineering based backgrounds are use to, as they are more essay based and require a different skillset.
ENTERING THE WORLD OF WORK CAN BE DAUNTING. DO YOU HAVE ANY WORDS OF ADVICE FOR ANYONE CONSIDERING A CAREER IN IP?
If you are passionate about being on the forefront of new innovations, science and technology as well as interested in how the legal system works, then this is a career that is definitely worth pursuing.
The landscape of the IP world has changed dramatically in the last ten years. When I entered the workplace, my sector (IT and engineering) was very heavily male dominated, which was due to the fact that more men typically enter science, technology, engineering and mathematics (STEM) subjects at university level. Now, there are more women in the workplace than ever before, but more can still be done to promote diversity and inclusivity in the workplace.
Alongside encouraging more girls to study STEM subjects from a young age, it is important to identify good female role models and mentors in your sector. The Chartered Institute of Patent Attorneys (CIPA) offers a mentoring scheme that new trainees can access and in my current role I’m investigating how we can set up an internal mentoring scheme within Withers & Rogers.
