Greg Sullavan 06a0620

A Day in the working life of an Australian Attorney: Q & A with Caleb Maher

Intellectual property (IP) is such an interesting mix of law and commercial practicality. While it is a niche area, working in IP means we get to meet with people and business owners from all industries, see all the innovative work they’re doing, and help them achieve IP protection for their brands, products and services.

The great thing about being an attorney is that no two days are exactly the same. The work is varied: attorneys get to use their technical knowledge to develop strategies and overcome challenges.  Handling every aspect of the trade mark, design registration and/or patenting process means there’s lots of problem-solving involved. The role also involves interacting with a multitude of people, from colleagues to clients, product designers, other professional advisors, and Examiners at IP Australia.

To give you a better sense of what a “typical” day might look like for our attorneys, we speak with Associate, Caleb Maher about everyday tasks, and how he balances client work, drafting, meeting deadlines, and answering enquiries, along with marketing and business development.

Q: What do you do first thing when you get into the office or login from home for the day?

A: The first thing I always do is grab a coffee and review my outstanding emails, not for content but for urgency. I look through to see whether there are any items that require immediate attention or response. I usually come into work with a tentative plan for how I would complete specific tasks, but often a single email can change the trajectory of my plan and I end up with a completely different day than expected. Once I have reviewed my emails, I can plan out my day with a bit more confidence and certainty. However, I need to be flexible as I am only ever a single call away from having to revise and formulate a new plan.

Q: What sorts of challenges might you face on a daily basis as an attorney, and how do you overcome them?

A: The main challenges that I have faced are time management and client management.

Time management is easily my biggest challenge. There is always plenty to do and I take pride in my work, so it can be easy to overestimate how much work you can get done in a day, but I try to manage client expectations by communicating deadlines and priorities with them.  

Q: What type of clients do you typically work with?

A: I have a broad range of clients which differ greatly in part due to my working in patents, trade marks and designs. With patents and designs, I tend to have more traction with SMEs as my background is mechanical engineering. As such, I often find myself drafting applications for the sole trader or weekend inventor.

With trade marks I do not need to understand the technology behind how the goods/services work, but more so what clients intend to sell and how they intend to label their goods/services with their mark. As such, my trade mark clients range from higher education service providers to new clothing companies.

Q: How often do you speak with clients?

A: In most cases, I speak with at least one client a day or at least every other day. During certain periods of the year things can get more or less chaotic. For example, leading into the holiday season there is a sense of urgency to close out matters before the end of the year. In contrast, like the traffic north of Brisbane, it can be a ghost town during school holidays when most people are taking time off to spend with their children.

Some clients require no conversations and prefer everything in writing so they can review at a time and setting that suits them best. Other clients prefer to speak through the process and get immediate feedback on any questions that they may have. I try to tailor my communication to my clients’ preferred method where possible. I find it’s best speaking on the phone and then following up with an email to confirm what was discussed verbally.

Q: Do you travel much for work?

A: If a client invites me out to their site, it is almost a 100% chance that I will accept as I enjoy seeing products that I have drafted specifications for come to life. It is also an opportunity to ensure that our clients have an efficient process for capturing new intellectual property which they may have overlooked or were unaware they could or should protect. Most importantly, I think it strengthens the relationship between myself and my clients as they know I am willing to meet them halfway and that they are more than a file reference to me.

As for international IP conferences and large networking events, I still consider myself young in my career, so I have not attended many major ones as yet. Within the next few years, I feel like conferences will begin to get exponentially more important for developing relationships with overseas firms and attorneys to build my practice within MBIP.

Q: What does drafting a patent application involve?

A: Patent drafting is a task of defining an invention with words which will be assessed without any external contribution from the inventor(s). As such, you must take an invention from an inventor’s mind and put it into words that can be reproduced without further comment by the inventor(s).

I think the key to drafting a robust patent specification is becoming familiar with every part and feature of the invention and knowing how it works. In addition to being naturally curious about new inventions, understanding what problem(s) the invention solves or seeks to solve can help with knowing which questions to ask the inventor. You do not want to rely on implicit disclosure for why certain integers provide a specific benefit or were selected over others and why certain features were left out entirely. If you expressly discuss the reasons for particular integers or absence of features, it may assist with prosecution in the future. Once you understand how the invention works, the process becomes very artistic and subjective.

One of the partners of a firm I worked at once told me that drafting a specification is like drawing a picture of a bowl of fruit. There is no one right way to draw a bowl of fruit. However, some drawings will be better than others and others will be wrong. I’ve taken this to mean to focus on the basic and try not to be too intricate from the outset. Similar to an artist, the more you practice a skill the better you get at it.

Q: Is there a part of the IP process that you find particularly enjoyable?

A: I find the first time a client reads a patent specification that I have drafted is particularly rewarding. Firstly, it feels great to know that they appreciate your time and effort. Secondly, it is the first time they can tangibly connect the costs of drafting a patent with the value of having a patent attorney draft the specification.

Q: What do most people not realise about your job?

A: Like many technical jobs, there is a lot more to being an attorney than meets the eye.

Firstly, nothing happens quickly. It’s easy to look at a document, email, report, etc. in hindsight and think that only takes a short time to complete. However, everything we do requires consideration of the effects of electing one pathway forward over another, or opting not to take certain actions. No two scenarios are identical and what is right in one situation may not be right for another.

Secondly, we are not the gatekeepers for intellectual property rights. Regardless of the due care and skill we exercise to ensure everything is done to the highest degree, we cannot control what has already been disclosed, nor are we the decision makers for what is patentable/registrable/grantable. In many instances, I have seen clients on the border of giving up IP rights which ultimately, they obtained protection over.

Finally, we have no idea whether your product will be successful or not. I have seen products which I thought were incredible have no commercial success and products which I thought were questionable in their usability have incredible commercial success. Market adoption is not a science and sometimes, good branding can sell a lot of a product.

Q: What advice would you give to candidates who are considering a career in IP?

A: Be naturally curious because there are a lot of inventions, rules, regulations and people in this industry. It is a lifelong learning process and the moment you think you know everything, things change. You could read every piece of legislation, every case, every book and still a client or associate will ask a question that we haven’t encountered before and will require research and a fresh problem-solving approach.

It’s a very rewarding career path with a lot of highs and lows and learning to separate your emotion from the process can help you think the most objectively and achieve the best outcomes for your clients.

Q: What sets MBIP apart from other workplaces you’ve experienced?

A: I have been fortunate to have good mentors, employers and bosses for which I am forever grateful. As for what makes MBIP unique, I believe there is a winning combination of giving you the freedom to complete your tasks while also having a friendly and collegiate environment that is open to discuss where you are less confident. MBIP also places great focus on shared learning. Mistakes happen in every firm however, at MBIP we focus on ensuring that if a mistake does happen, it only happens once. It is truly a team environment where there is a mutual desire to see everyone succeed.

If you are interested in a career in IP, check out our Careers Page for current opportunities to work at MBIP.