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Job Title 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.

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.

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.

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