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Intellectual Property, Data and Contracts Services Expansion

Our IPDC (Intellectual Property, Data and Contracts) team has recently expanded the scope of the services which it can provide to clients.

We were delighted to enter into a strategic partnership with Ellis IP which sees principals, Michael Ellis and Claudia Duffy, appointed as patent attorney consultants within our IPDC team.  This is an important and exciting development for the team and the wider firm.

The experience of both Michael and Claudia will be invaluable to MBM Commercial’s client base. Michael has a background in chemistry and pharmaceutical sciences and has worked in the patent profession since 1999 and founded Ellis IP in 2006. He has particular experience in life science and medical, materials and cleantech.  He is a mentor to many business start-ups and entrepreneurs andsits on the European Qualifying Examination committee for patent attorneys. Claudia is a former scientist turned patent attorney and has worked in the patent profession since 2008, both in private practice and in-house attorney roles in London, Cambridge and Edinburgh. Claudia has a background in physics and chemistry and advises on a range of sectors including electronics, software, engineering, material science and medical devices.  She is a co-founder of the Strategic IP Forum in Cambridge, leads CAMentrepreneurs Scotland, is a member of the Young Academy of Scotland and also the IP expert and a member of the angel syndicate Dunedin Solutions in Edinburgh.

The appointment of Michael and Claudia completes the range of IP services which the IPDC team can provide to clients.  In particular it is able to provide advisory patent services in far greater depth than previously, including:

  • patentability opinions as part of MBM Commercial’s IP audits;
  • expert input in relation to patent and other registered IP disputes and litigation; and
  • technical assistance in relation to treatment of patentable technology arising from collaborative projects.

It also simplifies the process for the IPDC team and more importantly, for clients, in relation to the filing and prosecution of patents internationally.   And it means the IPDC team now includes patent attorneys, a chartered trade mark attorney, a litigator, a US qualified attorney and a Law Society accredited IP specialist.

Their appointment has wider significance for the firm as well. It will be of particular benefit in relation to the level of expertise we can bring to bear in the many corporate transactions we work on for technology and IP rich companies where issues around company patent portfolios arise.

It also allows MBM to offer technical diligence on a target or investee company patent portfolio: an area which is often significantly overlooked.  The fact that a company has registered a patent does not automatically mean it has secured a significant commercial advantage. Patents can be drafted in a manner that makes it relatively easy for a competitor to ‘work around’ without infringing it, or can be considered weak and susceptible to revocation. Given the increasing awareness of the value of IP to a business, a greater focus on the category of IP which provides a monopoly right of exploitation is to be encouraged, and MBM Commercial is now well placed to help with this.

If you would like to know more about the patent advisory services or any of the other services which our IPDC team can provide then please contact Andy Harris at andy.harris@mbmcommercial.co.uk or on 0131 226 8208. Andy is a Partner and Head of MBM Commercial's IP, Data and Contracts team.

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