IP Asset LLP, Prama House, 267 Banbury Road, Oxford OX2 7HT
MA (Cantab.) Certificate in Intellectual Property, Queen Mary College, CPA, EPA, Solicitor, IP higher rights litigation certificate. Registered 1989.
Education and skills training is of immense importance to the profession in the coming months. We have all been responding to lPReg’s consultation on exams, but we will soon be addressing a consultation on knowledge and skills.
Litigation skills and the rights of representation in the light of the UPC are important. l would like to be elected back onto Council to continue the work I have been doing in relation to patent attorney rights of representation in court: this includes the grandfathering provisions for the UPC, the standard of any European Patent Litigation Certificate and arranging for relevant skills training, such as in finalising our Basic Litigation Skills Training Course (now needed for all patent attorneys qualifying from 2013 onwards) and obtaining IPReg accreditation.
l also wish to continue my work in relation to the UPC and the Unitary patent. I have been working with others to lobby over the implementation and will be reviewing how the IPO makes changes to the UK law prior to ratification.
As one of a small number of dual-qualified patent attorneys and solicitors, I feel that I bring a different perspective to CIPA, which is helpful to have voiced at Council level. I also give voice to concerns of smaller and non-London based practices, and of course I also have experience in large London law firms.
Mewburn Ellis 1985-1990. Stephenson Harwood 1990-1998. Eversheds 1998 to 2008, IP Asset LLP from 2009
Services to Institute:
Current roles: Chairman of Litigation Committee, and member of the Patents Committee, the Regulatory Responses Committee, CIPA representative on Intellectual Property Court Users Committee and alternate representative on the IP Court Users Committee, course leader for the Basic Litigation Skills Course, co-course leader for the IPEC (formerly PCC) training course.
Previous roles: Hon Treasurer Informals 1987-1989; UK Tutorial Organiser for Informals 1989-1992; Examiner of the JEB Law Paper 1995-1999; Former member of the Education Committee; former alternate delegate to ITMA Education Committee; Former member of the ad-hoc CPD Committee (1999/2000); Former member of the General Laws Committee; Former member and former Chairman of the congress Steering Committee (2001-2005); Former member of the Biotechnology Committee; Former member of the Membership Promotion Committee; Former member and former Chairman of the Social & Programme Committee.
Services to the profession outside the Institute:
Member of ITMA, Member of AIPPI, Hon-lecturer at Manchester University Faculty of Law 1999, member of the Law Commission’s advisory panel in relation to the review of the law of Groundless Threats 2012-2014.
Other relevant information:
CIPA clinician (since 1990), preparation of a number of CIPA’s submissions over the years, organiser and chair of seminars, contributor to the Modern Law of Patents, contributor to the CIPA Guide to the Patents Act 1977, lobbying in relation to the Unitary Patent and Unified Patents Court, lobbying in relation to the IP Bill 2013, in particular in relation to criminalising design infringement.
Liaison with IPReg: I realised that our rights to appear in the PCC (now Intellectual Property Enterprise Court), and rights to take appeals from the IPO to the High Court would come to an end with the transitional provisions, Legal Services Act 2007. I started liaison with IPReg for a new regime; a consultation process began and new regulations were made. In this way, we had already flagged the need to amend those regulations as the PCC changed into the IPEC. Those amended regulations went live on the right date and there was no break in the rights of patent attorneys to appear in the IPEC.
New Courses: As part of this new regulation, new patent attorneys now must take a Basic Litigation Skills Course. We ran a trial course in 2012. I am working with the CIPA Head of Education to ensure that we have a CIPA course accredited by IPReg and that we run that several times a year and at different locations across the UK.
Lobbying: The Unified Patents Court is an important area for litigation skills. I have been in discussions with both the IPO and with UK Universities in relation to the rights to be given to this profession before the current draft proposals are published for consultation. There will only be a short window to respond, so we also need to make sure that we prepare in advance so as to respond effectively. I have previously lobbied in relation to the Unified Patents Court agreement and Unified Patent regulation, including appearing for CIPA at the House of Commons European Scrutiny Select Committee.
2013-2014 Council Attendance: 9 of 10.