About the European Patent Attorney profession

INTERVIEW

Nina Ferara

Country: Germany

Company size: 100+

Experience: 5-10 years

Type of work: In-house, education
(previously also private practice)

How did you learn about the Patent Attorney profession and what inspired you to become a (European) Patent Attorney?

By pure accident, like many of us I suppose! Back in 2015, I was finishing my Master’s degree in Theoretical and Mathematical Physics in Munich and desperately trying to figure out my next steps. I knew that I did not want to do a PhD and that I urgently needed a job – my financial reserves were running low and my right to stay in Germany after my studies depended on being employed. When I saw a few positions looking for patent attorney trainees, I had no idea whether this was related to work at the Patent office (something I knew I would not qualify for because of not having the right citizenship), but they were looking for physics graduates, so I dared to apply. I got very lucky without knowing it – I ended up working with a great supervisor who remains a role model and a mentor to this day. On top of it, training at a boutique patent law firm allowed me to work directly with clients and participate in a variety of different proceedings. I tried my hand at both European and German training and failed miserably at the latter - my written German was not up to the challenge. I qualified as a European Patent Attorney and called it a day as far as training goes.

Most people know that Patent Attorneys help clients obtain a patent. However, what other tasks are you responsible for? 

Now that I work in-house, patent portfolio management is a significant chunk of my work. This includes talks/workshops for our inventors, evaluating invention disclosures, coordinating work of external patent attorneys drafting and prosecuting our applications and the like. However, there are many more tasks we do as in-house patent attorneys. Across my two in-house positions these included: contract support for IP clauses, advising internal clients on a whole range of legal topics, Trademark support, infringement analysis/contentious matters support, negotiations concerning joint IP, worldwide patent portfolio management, patent strategy development and more. It's never a boring day at work!

What does the team structure at your workplace look like?

Currently, I work at the sole IP department at the R&D headquarters of my employer. The department is “klein aber fein” – small but very efficient and well organized. It includes several patent attorneys, paralegals and occasionally working students.

What does your average workday look like?

There is no such thing! On a given day, I handle a whole range of tasks like portfolio management, discussions with inventors, calls with examiners from the patent office, reviewing contracts or discussing matters with our external law firms.

What would a dream workday as a (European) Patent Attorney look like for you?

I really enjoy variety in my work and thrive in environments where I have a lot of autonomy. Handling a range of different tasks in parallel keeps me on my toes and allows me to grow professionally.

What is the most exciting aspect of being a (European) Patent Attorney for you?

I love working with cutting-edge technologies and all of the incredibly smart cookies developing them!

What are your least favourite tasks?

Tedious administrative tasks are not my favourite, but I know that they need to be done. I would also not want to be drafting patent applications all day every day, but this applies to most patent attorney tasks - I really prefer a variety of things to do rather than one type of work.

Does your job allow you to have time for your hobbies? Do you have any side projects related to patents?

My hobbies are actually also related to IP. I am very passionate about tutoring candidates for the European Qualifying Examination and helping them succeed. I am also engaged at the epi in various volunteer roles - this is something I recommend to every European Patent Attorney. Working with the epi helps you build an international network, stay connected with the profession and is just plain fun! My epi engagement focuses on two aspects: diversity, equity and inclusion (as a member of the D&I Working Group of the epi, and education (as a member of the Professional Education Committee, and of the Student Admissions Committee). I am also one of the editors of Visser’s EPC - a reference book for the European Patent Convention that is widely used by candidates preparing for the EQE as well as by qualified patent attorneys in the course of their work.

Shockingly enough, I still have some free time after accounting for all of the above. I spend it on travelling, immersive experiences, and travelling for specific immersive experiences!

If you could start your career over, would you change anything?

I would probably take a few computer science classes, since I am working with software inventions a lot. Apart from that, not much - one general principle of living life for me is to evaluate each major decision from the perspective of “considering all of the information available to me at the moment, what is the best course of action?”, and it seems to work so far!

If the Patent Attorney profession suddenly disappeared tomorrow, what else would you do?

I would try to pivot into other jobs in the innovation space - policy, technology transfer, innovation strategy, you name it =). Alternatively, some public service type jobs would also be appealing to me. I think in-house patent attorneys could make great project managers as well – our daily work involves balancing the needs of various stakeholders, a lot of communication across teams and handling various internal and external projects promptly and thoroughly.

What advice would you give someone that wants to become a European Patent Attorney?

I have met very few patent attorneys who are not satisfied with our profession, so I think that this is rare. However, I know a few folks who started out as trainees and then left the profession after one or two years. This can be a valuable experience - sometimes we realize that a certain career path is not right for us, but trying it out can help us zoom in to what we actually want our work life to look like. So my advice would be to try it out and be proactive about really figuring out what you like or don't like about it - should you work in private practice, industry or somewhere else (e.g. at a university)? Do you like prosecution, litigation or portfolio management? Talk to others in the profession - both your peers and more experienced folks. I have discovered many times that there are things that I don't know about and can't ask about because I don't know what to ask for!

What do you think about the future outlook of our profession?

Our daily work will undoubtedly change, just as it has changed over the last several years and decades. For example, more and more law firms and companies have moved away from the never-ending stacks of paper files stored in specially made rotating file cabinets to digital file storage. We will certainly move to AI-assisted drafting, prosecution and research. I am sure that additional use cases for AI will become more commonplace as well. Our work is at the forefront of technology, but I often find that we as a profession are a tad too conservative. Part of it is due to always striving for legal certainty, which is very important, but part could be an innate resistance to change. We need to evolve and adapt to change quicker, just like the technologies that we work with do!