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 team is currently led by a
managing associate with a background primarily in physics, high-tech
subject-matter and mechanical engineering and who, shortly, will be
joined by another associate attorney having a similar technical
background. The formalities side of the team is headed up by our
current formalities lead and supported by 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 role
We are hiring to replace our
current formalities lead.
What is on offer, and what we
think makes this opportunity unique, is the chance to be at the
heart of shaping and building the patent attorney function within
the firm. The small patent attorney team is in 'start-up' mode, with
all the collaborative dynamism that comes with that. However, that
dynamism comes within the context of a well-established, large full
service law firm and the support and stability that provides.
The patent attorney team is a
dynamic and busy team, and has strong ambitions for future growth.
More importantly however, the team is a friendly, lively and
enjoyable environment to be part of.
Unlike more traditional IP firms,
where formalities team can be siloed and kept separate from the
attorney teams, our small team is completely integrated with one
another. The candidate coming into the role will work hand-in-hand
with the attorney team on a daily basis, both on day-to-day work,
but also on growing the overall team and practice. They have the
chance at building out the formalities side of the team, helping to
train our current administrator, developing our internal systems and
workflow processes, and leading on future hiring and growth of that
part of the team.
The ideal candidate will be
someone who has been in the business for several years with a strong
foundational set of skills spanning the whole breadth of
formalities. We expect that the successful candidate will be someone
who is ready take a next exciting step in their career, perhaps
since they have become frustrated of the routineness and lack of
progression associated with their current role. That said, the
successful candidate will equally want to remain 'hands on' and will
not be ready to completely step away into a pure management role.
The successful candidate should have:
5+ years of experience in patent formalities.
CIPA qualification, optionally
also holds the EPAC.
Experience across the entire
breadth of patent formalities, from general docketing, handling
incoming communications from the patent offices, handling
correspondence with foreign counsel, filings and submissions at
the patent offices (UK IPO, EPO, IB), renewals and annuities,
handling European grant formalities and validations, etc, handling
and managing global formal document requirements, etc.
Understanding of management and
running a formalities team.
Desirably, a strong working
knowledge of Equinox IPMS/docketing system
Experience with design formalities.
Experience and/or willingness to
help train our junior administrator.
Ambitions to help progress a
team to the next level and visions of how to achieve that.
Readiness to get stuck in with
our friendly, dynamic and lively team.
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 seven core practice areas: Corporate
; Dispute
Resolution ; Employment
; Impact; Innovation
; Private
; and Real
Estate .
TheMishcon
de Reya Groupincludes consultancy businesses MDR
Discover,MDRi (in Hong Kong),MDR
Mayfair(in London, Singapore and Dubai),MDR ONE andMDRx.
The Group also includesMDR 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.