Patent Attorney: Finalist - 3 PQE - Innovation, IP
Location
London
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 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 across the
gamut of IP rights, including groundbreaking cases before the UK and
EU Courts. Example cases in recent years include: Dr Reddy's v.
Warner Lambert (largest ever damages claim in the Patents Court
under a cross undertaking), 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).
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 engineering. The
team also comprises an associate with a background in mechanical and
chemical engineering. The team is supported by our patents manager,
with 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.
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 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.
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 Chartered/European Patent Attorney having expertise in
tech/high-tech sectors and who is also comfortable handling
technologies in the wider engineering file. 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 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
Either a finalist or a qualified
UK/European attorney with up to 3 years PQE.
Tech/High-tech experience.
Graduate in any suitable discipline.
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.
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 services business with law at its heart, employing over
1450 people with over 650 lawyers. It includes the law firm Mishcon de
Reya LLP and a collection of leading consultancy businesses that
complement the firm's legal services.
Mishcon de Reya LLP is based in London, Oxford, Cambridge, Singapore
and Hong Kong (through its association with Karas So LLP).
The firm services an international community of clients and provides
advice in situations where the constraints of geography often do not
apply. Its work is cross-border, multi-jurisdictional and complex,
spanning six core practice areas: Corporate;
Dispute
Resolution; Employment;
Impact; Innovation;
Private;
and Real Estate.
The Mishcon
de Reya Group includes consultancy businesses MDR
Cyber, MDR
Discover, MDR
Mayfair (in London, Singapore and Dubai), MDR
One, MDRi and MDRx.
The Group also includes MDR Lab, which invests
in the most promising early stage legaltech companies as well as the
Mishcon Academy, its in-house place of learning and platform for
thought leadership.
Earlier this year, the Group announced its first strategic
acquisition in the alternative legal services market, flexible legal
resourcing business Flex Legal. It also acquired a majority stake in
Somos, a global group actions management business.
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.