Patent Formalities Lead

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.

• 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.
  
  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., 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.