(This article by Chris Carter is reproduce with permission from Australian Physics, vol.44 no.2, p60, June/July/August 2007).


Photo taken in 2004 as a patent attorney. Initially the hardest part was getting used to wearing a tie, a daily requirement that has now largely disappeared in legal firms.

I was 15 years old when I found and read the old classic The Neutron Story, by Donald J. Hughes in my high school library, which immediately captured my imagination. Beginning that day, I wanted to become a physicist working in research and I took steps towards that goal. I studied undergraduate physics at the University of Western Australia, graduating in 1994. I greatly enjoyed my time there and even a year away spent backpacking around the world did not lessen the call of a life in physics. I began a PhD program in experimental plasma physics under Dr Joe Khachan at the University of Sydney, submitting my thesis in 1998. I still greatly enjoyed research and the allure of physics itself, but other thoughts had slowly begun to enter my mind.

Photo taken in 1995 of plasma processing apparatus at the School of Physics, Sydney University, on which I learnt a bit about the highs and lows of experimental physics.

Whilst searching for a potential job in physics prior to graduating two things became apparent: I would likely find a job in physics, but I would probably not be able to choose the part of the world where I would end up; and jobs in physics research in Australia are very limited, especially outside of academia. Originally, I had always welcomed the idea of moving about the world following physics jobs, but the timing of meeting my future wife made me reconsider, and predictably enough, she later ended up travelling the world for work while I would stay in Sydney. In the context of this job market, another thing happened - I was increasingly becoming interested in real world applications of physics. I was beginning to think of how exciting it might be to become involved with a start-up company based on a physics application. These where somewhat idle thoughts, but they instilled a greater change, I was beginning to think seriously about the commercial world. I began to consider jobs outside of physics and what they would be like, the types of jobs calling for non-specific but rigorous logical and methodic training, for example an advertised position as an analyst in an investment bank.

Photo taken in 1997 in a lab at Universite Joseph Fourier in Grenoble, France, during my PhD studies.

After getting a proper haircut and borrowing a suit, I ended up being offered a job training to become a patent attorney with a firm called Davies Collison Cave, were I was employed under the unglamorous title of a 'technical assistant'. Shortly before accepting the job offer in 1998 I had virtually no idea what a patent attorney actually did, other than being aware, like most other physicists, that Einstein had spent some time working in the Swiss patent office. Like many outcomes in one's life, I did not end up at Davies Collison Cave by design, but happenstance. I was having a conversation with a teammate from Sydney University's AFL side who happened to be a patent attorney in the biotechnology field who suggested I apply for an advertised job that I had not come across (it was directed to engineers). I was offered the job and looking back, it reminds me of the importance of your networks and communicating with those people. This is something I have learned is critical in business, but you will not be taught in physics. I was unsure if I would be suited to life in an office in a legal environment, I had always enjoyed building things and had never even remotely aspired to enter the field of law, but I resolved to stay 12 months then decide one way or the other.

To qualify as a patent attorney at the time I was expected to pass a series of nine examinations on various areas of intellectual property law, which typically took people 4-5 years. The exams had a very high failure rate and although not as conceptually difficult as physics, were the hardest exams I have ever sat. These days most of the exams can be done through a university program and it is easier to qualify as a patent attorney in 2-4 years. The exams are done concurrently with 'on the job' training. Patent attorney firms make a large investment in training people. To my surprise, I found I enjoyed learning about the law, it was such a new area to me and I found my general knowledge greatly improving as I learnt more about the history of Australia and the United Kingdom and how the law ebbs and flows with social circumstances over the decades. My previous aversions to the law were being broken down. I also enjoyed dealing with a large range of inventors and some ingenious ideas, from single inventors to multi-national research teams. Effectively working and communicating with people from different backgrounds are intangible skills that are critical in life, especially as a patent attorney, but are skills that need to be developed beyond a normal course in physics.

I greatly enjoyed working at the interface between technology, business and the law, and decided I would stay and work towards a career as a patent attorney. Although not a necessary requirement, I thought if I was going to do this I should do it completely, so I also enrolled part-time in a law degree at Macquarie University, graduating in 2006. This is becoming increasingly common, and next to the more traditional law students with liberal arts backgrounds, you will now find an increasing number of science majors of varying ages and backgrounds. Again, and unexpectedly for a physicist, it was quite interesting to study the law in general. One of my early tasks was to make a trap purchase at a wholesaler of imitation sunglasses of a well-known brand, which led to me being escorted out after not being subtle enough with my attempted photography. I believe my physics training served me well for being able to draw important facts from a complex scenario and logically apply a set of rules to those facts, whilst being aware of many legal exceptions that I found akin to approximations or assumptions often used in physics problem solving.

Not so world changing patent - UK Patent No. 1310990 for a controlled thermonuclear fusion propelled space vehicle (British Railways Board - 11 Dec 1970).

If it was not for my physics background I could not perform my present job. First and foremost, my physics training provided a good understanding of a wide range of technologies. All of my old physics textbooks are in my office and see regular use. Physics provided me with the ability to communicate effectively on a technical level with inventors from diverse scientific and engineering backgrounds. I find that some people from other more specialised technical backgrounds are often not as comfortable dealing with such a broad range of technologies. The rigours of logical analysis required for problem solving in physics lends itself well to a logical approach to the law, which might be viewed as one of the most complex, interrelated and recursive databases that morphs over time ever developed by humans. A physicist-cum-lawyer always will be fundamentally different to a lawyer, I find myself trying to actually solve a legal problem, not complicate it to create a new problem. If I have taken nothing else from my physics training that serves me well today, it is that no problem is too daunting to be tackled logically, and as a physics student I was always encouraged to do so.

I have now been working at Davies Collison Cave for over 9 years, with a secondment in Vancouver for a period of time. My day-to-day roles include meeting various people, such as inventors, business investors, company management, in-house legal counsel, etc., and discussing aspects of patent protection or infringement; writing patent specifications that are a legal document but draw heavily on my technical knowledge and understanding; prosecuting patent applications before various patent offices around the world which involves developing technical and legal arguments; providing general intellectual property or strategic development advice to a business commercialising new products; assisting people in disputes involving patents; or assisting in patent litigation when (rarely) matters end up in court. I write a completely new patent specification about every fortnight, meaning over 200 to-date, and enjoy the variation of seeing so many diverse projects. Having a physics background sees me handling matters in a wide range of technologies, such as information and communications technology, electronics, digital hardware, medical devices, internet based business systems (e-commerce), mechanical systems, mining applications, and many others, including of course anything more directly physics-related such as optics, micro-electromechanical devices, plasma processing, etc.. Intellectual property is a growing area and businesses are becoming far more active in this field, the U.S. Patent Office alone estimates it will receive 450,000 patent applications this year, up from about 350,000 five years ago.