Associate - Patent Attorney 2+PQE, Cambridge, London or Oxford
Location
Flexible
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: freedom to operate advice
and analysis; patent challenge and enforcement litigation; trademark
and design portfolio management; franchising and licensing, the
experience and know-how to take on the role of strategic advisor in
pursuit of key business objectives; and handling IP infringements
swiftly and tenaciously. Consequently, we have a broad range of
high-profile clients including Sky, Entain (the owner of Ladbrokes
and Coral amongst many other gaming brands), Nintendo, Iceland
Foods, Dr Reddy's, Hewlett Packard and Alexander McQueen.
We are regularly instructed in
high-stakes and complex litigation and enforcement work, including
groundbreaking cases before the UK and EU Courts. Example cases in
recent years include: Sky v. SkyKick (CJEU and Court of Appeal),
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), Dr
Reddy's v. Warner Lambert (largest ever damages claim in the Patents
Court under a cross undertaking), Jack Wills v. House of Fraser, and
Rihanna v Topshop.
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 made up of a Managing Associate with a background
primarily in physics, hi-tech subject-matter, and mechanical
engineering, and an Associate with a background in mechanical and
chemical engineering. The team is supported by our patents manager,
with experience across all administrative and support functions, and
is overseen by, primarily, two of the IP litigators 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 more globally with assistance from local
attorneys. They also act in/ advise on a high proportion of EPO
oppositions/opposition appeals. Their practice also encompasses IP
advice and strategy work, as well as a body of design work.
Somewhat uniquely however, and as
a function of sitting within our wider IP team, there is a
significant amount of collaboration on patent litigation matters.
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.
TheOpportunity
Our patent attorney team, whilst
still small and young, is a busy team and there is a strong desire
for growth. With that in mind, and the current make-up of the team,
we believe the ideal next person to join the team will be someone
with biotech/ life sciences expertise to complement the areas of
technology already covered by the team.
The opportunity is one with
significant developmental and growth prospects. Whilst our current
attorneys have a busy practice, this is primarily in the areas of
their expertise and there is a desire (both within the direct team
and more widely across the department/firm) to bolster our patent
capabilities within the biotech/life science space given already
existing client requests and in view of the many further, 'untapped'
opportunities within the firm for an attorney in this space.
The aim for the incoming candidate
would therefore be to lead on the further establishment and growth
of the relatively nascent biotech/life science function of the
patent attorney team. This would not be without support from the
existing members of the team and more widely across the department,
including the patent litigation partners in the team all of whom
have a significant amount of biotech/life science and pharmaceutical
patent litigation experience.However, ultimately the candidate
will be confident (and even relish) the opportunity of leading and
establishing the biotech/life sciences patent attorney practice
within this support network.
Duties and Responsibilities
We are looking for a Chartered and
European Patent Attorney having biotech/ life science expertise. The
ideal applicant will be highly motivated and driven, both in their
day-to-day work and in light of the task of building out and
developing the life science/biotech patent attorney function.
The successful candidate will work
autonomously but as part of our fast-growing patents team. The
candidate will be responsible for leading the development and growth
of the biotech side of the patent attorney practice, whilst taking
responsibility for handling client work in this technology space.
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 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
UK and EP qualified and have at
least 2 years PQE.
Biotech/ life sciences experience.
Graduate in any suitable discipline.
Experience of working
autonomously as a patent attorney, preferably with experience of
managing others in that capacity.
Preferably, a track record of
helping to establish/grow a patent attorney team and winning work.
Internal and external business development
Able to build and develop
long-lasting and trusting relationships with clients.
A proven track record in all
core patent attorney skills, including drafting and prosecuting
patents across all major territories, managing patent portfolios,
providing advice on patent infringement and validity advice, etc.
Good experience with EPO
Opposition and Opposition Appeal work
Experience of acting for direct
clients, particularly 'start-ups' and 'scale-ups'.
Preferably, experience with
litigation work.
Good command of the relevant
case law in your specialist field.
Strong interpersonal skills and
an ability to communicate effectively with a broad range of individuals.
Preferably, experience in design work.
Working independently or ready
to move to the next stage of your career.
Please note that this job
profile is not an exhaustive list of duties but merely an outline
of the key components of the role. You may be required by your
line manager to take on additional responsibilities when requested.
About The Mishcon de Reya Group
The Mishcon
de Reya Group is an independent international professional
service business with law at its heart, employing over 1450 people
with close to 670 lawyers. It includes the law firm Mishcon de Reya
LLP and a collection of leading consultancy businesses that complement
the firm's legal services. We have grown rapidly in recent years,
showing more than 40% revenue growth in the past five years alone.
Based in London, Cambridge, Oxford, and
Singapore, with an association with Karas So LLP in Hong Kong, the firm services an
international community of clients and provides advice in situations
where the constraints of geography often do not apply. The work we
undertake is cross-border, multi-jurisdictional and complex,
spanning six core practice areas: Corporate ; Dispute
Resolution ; Employment ; Innovation ; Private ; and Real Estate.
As of 1 January 2023, Mishcon de
Reya andTaylor Vintersmerged. The merger delivers on
both firms' strategies to support the innovation economy and
accelerate our growing share of the technology, media and
life-sciences legal and consultancy services market in the UK and in
key international innovation hubs globally.
In times of such far-reaching and
profound change we want to be the law firm that enables our clients
- and our own people - to shape the world's possibilities. We are
here to help our clients benefit from new economies, new geographic
centres of wealth, the new global movement of people and capital,
and the impact of new technologies and new knowledge.
Our purpose remains rooted in our
founding values. We take pride in the diverse range of people who
make up the firm and are proactive in driving change and continuous
improvement across the spectrum of equality, diversity and inclusion.Mishcon Academy, our in-house place of learning,
development and new thinking for our people, clients and contacts
and our innovative impact strategy, including acommitment
to be a net zero carbon business, also play a central strategic
role in the direction of the firm. In 2020 we launchedMishcon Purpose, a first-of-its-kind
sustainability practice providing Environmental, Social and
Governance (ESG) advice and purpose-driven insight to clients.
We strive to create a fully
diverse and inclusive workplace where all our people are empowered
to fulfil their potential. We are proud of our agile working culture
and are always happy to talk flexible working.