Description
The Department
Protecting and commercially exploiting intellectual property (IP) should be at the heart of most companies'business strategy. IP is an often under-represented asset, and one which can have a direct impact on the bottom line. We are one of the largest IP teams in London and we help the owners of some of the world's best-known rights create, protect and exploit their IP.
Our team provides our clients with a complete range of IP-related services. We act across all aspects of the patent life cycle, including: patent strategy and pre-filing advice, patent drafting and prosecution, contentious proceedings before the patent offices, freedom to operate advice and analysis, patent challenge and enforcement litigation, and everything in between. Our IP team also handles trademark and design portfolio management; franchising and licensing, and has the experience and know-how to take on the role of strategic advisor in pursuit of key business objectives and handle IP infringements of all types swiftly and tenaciously. Consequently, we have a broad range of high-profile clients including Aylo, Sky, Entain (the owner of Ladbrokes and Coral amongst many other gaming brands), Nintendo, Iceland Foods, Dr Reddy's, Hewlett Packard, Alexander McQueen, Wayve Technologies Ltd, Visa, Positec Power Tools.
We are regularly instructed in high-stakes and complex litigation and enforcement work across the gamut of IP rights, including groundbreaking cases before the UK and EU Courts and representatives on multiple UPC trials and ongoing cases. Example cases in recent years include: Dr Reddy's v. Warner Lambert (damages claim in the Patents Court under a cross undertaking), DISH v Aylo (multi-jurisdictional patent case), Sky v. SkyKick (CJEU and Supreme Court), Lupin v. Gilead (CJEU and Court of Appeal), Nintendo v. Sky (first ever blocking injunction based upon technological protection measures), Iceland v. Iceland (EUIPO Grand Board of Appeal).
The Team
Our patent attorney team sits within Mishcon's wider IP team, which also comprises our brand protection and IP enforcement/disputes teams. The IP team forms part of a larger team of commercial and technology lawyers who are deployed across our London, Cambridge and Oxford offices.
The patent attorney team is currently led by a managing associate with a background primarily in physics, high-tech subject-matter and mechanical and electromechanical engineering. The team also comprises an associate with a background in physics, mechanical engineering, electromechanical engineering and materials science. The team is supported by our patents formalities lead, with deep experience across all administrative and patent support functions, and a patent administrator. The team is overseen by, primarily, two of the IP litigator partners within the department.
Our patent attorney practice covers much of the work you might expect. For example, our team carries out a significant proportion of original patent drafting work (given the high proportion of direct client work it handles). Our team also prosecutes patents through to grant, both domestically/in Europe, and globally with assistance from local counsel. The team also act in/ advise on a high proportion of EPO oppositions/opposition appeals given the interplay this work has with much of the more contentious work handled in the wider team. The team also regularly advises on IP strategy and other advice work, acting for a range of clients in a range of fascinating sectors. Design registration and advice is another aspect to the team's work.
As a function of our full integration with the wider IP disputes team, there is a significant amount of collaboration on patent litigation matters. By way of example, our patent attorney team has acted in 4 separate UPC actions and 2 UK High Court patent actions this year alone.
Our team also meshes more widely with the technology and commercial lawyers in the team, particularly those working with technology transactions and emerging companies, assisting with patent aspects of those areas of work.
The Opportunity
Our patent attorney team, whilst still small and emerging, has a busy practice and there is a strong desire (and demand) for further growth.
Much of the team's current practice falls within the tech/ high-tech sectors, and with several high growth existing clients in this space, and both new and prospective client wins, the team is looking to bolster and enhance its expertise in this area of technology.
Our practice has also seen a significant uplift in contentious work in recent months, particularly with the experience and exposure the team has already had to the UPC, and hence the team is looking for further support and assistance with that work.
The opportunity is one with significant developmental and progression prospects. The team is ambitious, busy and has a desire (both internally and supported by the wider firm) for growth.
The aim for the incoming candidate would therefore be both to embed themselves within the existing, fast-paced practice and to support the growth and development plans. This of course would not be without support from the existing members of the team and more widely across the department, but the incoming candidate should relish the chance to take on autonomy and responsibility in their work and this project.
Duties and Responsibilities
We are looking for a finalist standard or a newly qualified Chartered/European Patent Attorney who has expertise in tech/high-tech sectors and is comfortable handling technologies in the wider engineering field. The ideal applicant will be highly motivated and driven, both in their day-to-day work and considering the task of building out and developing the patent attorney function.
The candidate would preferably be willing and able to travel to, and work in our London office given that is where the rest of our patent attorney team is currently based. However, we would also be willing to consider candidates that wish to be based in our Cambridge or Oxford offices.
We operate a flexible working policy which enables you to balance home and office working, with a preference for you to be in the office 'more often than not'.
Skills/Experience
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