Innovation guardian: working in intellectual property law
Wilma Shi (2010 Croucher Scholar) has studied in the UK since the age of 14, taking an undergraduate degree in Natural Sciences and a PhD in Pharmacology at Cambridge. Since then, she has transitioned from the lab to a law firm, currently training to be a patent attorney.
A patent attorney represents clients in order to get patents for their client’s inventions. The role involves liaising between clients and patent examiners at the patent offices. Within a patent attorney firm there are many different fields one could choose to work, ranging from biotechnology and life sciences to engineering.
At the beginning of the patent process, a potential client contacts the firm with their invention. The firm may then explore whether or not the invention is patentable, and whether or not there is an existing similar invention that could potentially destroy the novelty of the client’s invention or make it obvious. After this, a strategy of where and when to file for a patent would be developed, considering the timing of the publication of any relevant papers.
Shi was required to have a science or engineering degree in order to begin training as a patent attorney, as a technical background is necessary to allow one to fully understand the client’s technology, and therefore to guide the clients through the application process. She currently handles approximately fifty different applications at any one time, while more senior patent attorneys can handle up to a hundred applications. This large caseload is due to the fact that not every application requires work at the same time.
Dr Shi has been training for two years, beginning in October 2014, and it will take an average of two to three more years for her to qualify. The exams she needs to pass to qualify are known for having a low pass rate. They test the trainee’s skills relevant to the day-to-day requirements of the job, such as advising clients, formulating arguments and knowing the pertinent laws. She is training to be both UK and European qualified, and as clients often apply for patents in more than one territory, Shi sometimes directs clients to suitable firms for the country or region in which they require a patent.
Shi had not heard of this type of work before discovering the job on her university’s careers page, and said that, once she discovered it, ‘It was like a whole new world opened up’. Shi thoroughly enjoys her role for several different reasons. Firstly, she finds it rewarding to see the instant impact of her work, and secondly she likes that it combines several of her interests, such as science, law and business. Dr Shi is also enjoying working outside of a laboratory setting. Where she once dealt mainly with bacteria she now handles applications and liaises with clients on a day-to-day basis. She is particularly interested in working with clients from Hong Kong or China, and in the future hopes to be given more work that originates from here as she enjoys seeing good applications coming from there and helping to get these applications granted.
Shi moved to the United Kingdom to attend a boarding school in Kent, and remained studying here for her undergraduate degree and her PhD, and now says that the UK feels like home. Shi was able to study at Cambridge thanks to the support of the Croucher Foundation, and has said, ‘I am really grateful that they could support my studies, and I think it’s a really great cause and foundation.’ She plans to stay in the UK both because she likes it and to suit her qualifications after becoming a qualified patent attorney.
Dr Wilma Shi studied at the University of Cambridge, obtaining her B.A. (Hons.) in Natural Sciences (Biological) there in 2010. In that year she was also awarded the Croucher Cambridge International Scholarship, with which she completed a Ph.D. in the Department of Pharmacology at Cambridge, which focused on identifying drug-binding surfaces in ATP-binding cassette (ABC) transporters from bacteria, supervised by Dr. Hendrik van Veen. She is now training to be a UK- and European-qualified patent attorney.
To view Dr Shi’s personal Croucher profile, please click here.