A vital value of most UT Companies are their IP in terms of patents, trademarks etc. Once registered and secured, the companies work every day to monetise that investment in a global market. Sometimes the IP comes under attack from competitors or other companies, and an international IP professional is needed to assist them.

Those are some of the issues that a professional Intellectual Property Solicitors work with. But how do they work, and what is the difference between a Property Solicitors and a Patent Attorney?

*Marcus Riby-Smith* *of UT Partner Marks & Clerk, UT’s go to intellectual property firm, talks to us about the work of an Intellectual Property Solicitor.*

As Jasmine Percival of UT partner Marks & Clerk explained last time, patent attorneys identify and obtain registered protection for inventions. Now, her solicitor colleague Marcus Riby-Smith explains how intellectual property solicitors help clients to monetise those rights and defend them if they come under attack. Like Jasmine, Marcus has taken an interesting and varied route to becoming an IP professional.

My interest in law in general stems from childhood discussions with my mother, who worked as a conveyancing paralegal. However, it was during the honours year of my biotechnology degree, and more specifically while completing a “Commercialisation of Research” module, that I first encountered intellectual property law. I quickly became fascinated by the nexus between science and law, and the legal regime underpinning rights in technological advancements. I went on to speak to various intellectual property practitioners and biotechnology entrepreneurs while also attending a series of intellectual property lectures and seminars, all of which only stoked my interest in the field. I subsequently decided to pursue a career in law, and more particularly intellectual property law.

What makes a good intellectual property solicitor?

Intellectual property is a broad area of law that covers copyright, trade marks, patents, designs and confidential information. Due to the broad nature of this area of law many solicitors may specialise in a limited number of these sub-categories. Furthermore, intellectual property solicitors may assist clients with both contentious work (including disputes and litigation) and non-contentious work (including inter-party agreements and transactions); again with many intellectual property solicitors specialising in one of these types of work. Though broad in scope, work within each of these subcategories requires certain key skills, including:

Communications skills: As intellectual property solicitors often correspond with business people, scientists, technicians and engineers; they must be able to understand technically challenging scientific concepts and inventions and be able to reduce these (and any applicable legal concepts) to simple and easy-to-understand language. They may also be called upon to communicate with opposing solicitors, formulate Court submissions and legal arguments, and assist in negotiations. As such, the ability to understand the technical, legal and commercial realities of a situation and formulate clear and logical legal argument and strategies is very important.
Information analysis and problem solving: To outmanoeuvre opposing parties in Court proceedings or commercial negotiations solicitors need to employ creative thinking and problem-solving skills. No two legal situations are exactly the same and the best course of action may not always be the most obvious. Solicitors are therefore often call upon to think outside the box and formulate novel legal solutions for their clients - whether that’s in non-contentious matters (like negotiating licensing or sponsorship agreements) or contentious matters (like drafting legal pleadings or negotiating settlements). It is therefore essential that a solicitor is able to analyse large amounts of information, absorb facts and figures, and solve problems creatively.
Organisation, time management and resilience: Intellectual property solicitors are often called upon to manage the drafting legal documents and contracts, manage negotiations and meet clients at the same time. This need to juggle multiple concurrent work streams for different clients with various deadlines makes time management and organisational skills (including the ability to prioritise the most time-critical tasks) essential. Intellectual property solicitors need to be able to remain focused on the task currently at hand while maintaining a handle on the various other tasks they are managing.

How do you qualify as a solicitor?

There are various routes to qualification. The traditional route to becoming a solicitor in the UK (which is currently being phased out) involves either: (i) the completion of an undergraduate law degree followed by the Legal Practice Course (LPC); or (ii) completion of a non-law related undergraduate degree followed by the completion of a Graduate Diploma in Law (GDL - otherwise known as a law conversion course), and then the LPC. Each of these two routes then require a candidate to undertake a two-year period of recognised training (otherwise known as a training contract) at a law firm or in-house legal department. Candidates who started a law degree, PLC or GDL before September 2021 can continue qualification via the above routes until 2032. Thereafter the Solicitors Qualifying Exam (SQE) process will replace the LPC and GLD.

An alternative route is to first qualify as a chartered legal executive through the Chartered Institute of Legal Executives (CILEX). This route is designed to improve access to a career as a solicitor by replacing the formal training contract with a 3-year period of legal work experience.

In other countries the road to becoming the local equivalent of a solicitor may vary but, wherever in the world you qualify, it is a challenging process.

Day to day duties

Working as an intellectual property solicitors is incredibly varied. A typical day may involve working on both contentious and non-contentious matters. You could find yourself interviewing fact witnesses or technical experts for an upcoming legal action and assisting in drafting relevant statements and expert reports; meeting with clients to advise on litigation, negotiations or the drafting of agreements; or drafting a variety of Court documents, agreements and/or advice notes. These all involve understanding the relevant law, the technicalities of the right(s) in question, the client’s commercial objectives and the industry in which they operate, and (in contentious matters) what the opposing party’s objectives might be. Clients will also rely on you to foresee potential future hazards and take account of these in the documents you produce and the advice you provide. My science background has proven to be invaluable because, inevitably, many of our clients are tech-orientated and expect us to be able to grasp the nature and functionality of what they have developed, as well as its commercial potential and any related legal risk.

Working as an intellectual property solicitor requires dedication and a diverse set of skills. The various industry sectors you may work in, and tech-orientated clientele, allow you to learn about new and exciting technologies with interesting industrial applications. In short, it is an intellectually challenging and rewarding career where you are continuously learning new things and no two pieces of work are ever the same.

About Marks & Clerk

Marks & Clerk is one of the world’s leading intellectual property firms. Its team of patent attorneys, trade mark attorneys, and lawyers provides a full-service IP offering, from the initial filing of patents and registration of trade marks, through to litigation and commercial exploitation.

Marks & Clerk’s patent attorneys and lawyers operate across all industry sectors. Its client base is diverse, ranging from new ventures to well-known multinational corporations. It has offices in 18 locations, including nine in the United Kingdom, and others in France, Canada, Luxembourg, mainland China, Hong Kong, Malaysia, and Singapore, allowing it to tap into local expertise, globally.

Marks & Clerk was established 135 years ago and has 300 IP practitioners worldwide.

See www.Marks-Clerk.com for more information.

What Makes a Good Intellectual Property Solicitor and What Do They Do?