What makes Murgitroyd stand out from other IP firms?
Murgitroyd’s unique blend of technical expertise and commercial awareness sets us apart from other IP firms. We pair leading attorneys in their respective fields with commercially focused advice to protect our clients’ technologies and maximise their commercial advantage. In addition, Murgitroyd is at the forefront of using data to assist clients in making IP decisions. When this is combined with our unique offering of strategic IP solutions, Murgitroyd truly provides a blend of commercially savvy, tech-enabled advice that differentiates us from other IP firms.
As chief compliance officer, what does effective yet inspiring leadership look like to you?
Leadership is all about setting goals and devising a strategy to reach them. Once this is complete, the next task for any leader is to clearly communicate said strategy to everyone in the team. However, this alone is not sufficient for effective and inspiring leadership. Leadership becomes inspiring when your goals build upon the team’s values and define a purpose that everyone can celebrate. Effective leadership is about empowering action, taking responsibility and being accountable for delivering on these aims. Developing that blend of clarity, purpose and ownership is the art of effective yet inspiring leadership. If you get it right, the results are incredible.
If you could change anything about the United Kingdom’s patent prosecution process, what would it be, and do you think it is likely to happen?
Patent applications protect inventions of greater complexity today than ever before. However, the application process is such that any documents filed at the UK IP Office (UKIPO) essentially remain paper documents in a digital age. If I could, I would change the patent prosecution system to allow applications at the UKIPO to include more digital media. I believe that this would dramatically increase the clarity of applications that focus on complex inventions. For example, allowing the use of colour drawings and charts would provide significant benefits. Further, I believe that including models that can be rotated or manipulated in applications depicting complex mechanical inventions would greatly improve understanding. I think that this is likely to happen – hopefully soon. The UKIPO has already conducted a consultation on the issue. However, patent offices globally will need to make the change together, which could slow implementation.
How has your membership with the Chartered Institute of Patent Attorneys (CIPA) contributed to your overall professional development?
I firmly believe that conversations and interactions with other IP specialists are the best way to keep developing professionally. No one person holds all of the knowledge in the industry and the CIPA is fantastic at bringing the members of the IP community together, both locally and nationally. Not only that, but the CIPA is also an expert in facilitating events that foster the development of everyone who attends, whether via panels, Q&A sessions or expert talks. Every time I attend an event I learn something new, be it emerging case law, nuances surrounding litigation or the latest commercial concerns that are occupying colleagues working in industry.
The UPC is becoming a popular strategic tool when it comes to bolstering SEP suits. What advice would you give to those considering filing an SEP suit at the court?
Filing an SEP suit at the UPC offers several advantages but also presents new challenges and strategic considerations. The UPC provides a unified forum for patent enforcement across multiple EU member states, which can significantly streamline litigation. For those considering filing an SEP suit, evaluating the benefits of this centralised approach is essential. A successful UPC ruling can grant relief across Europe, potentially allowing a single court decision to address infringement across a broad market. However, this also raises the stakes, as an unfavourable ruling could simultaneously impact all of those markets.
The recently proposed EU regulation on SEPs has also added complexity to this landscape. The draft regulation seeks to ensure greater transparency, fairness and balance in SEP licensing negotiations, potentially impacting how SEP holders approach litigation. In light of these changes, SEP holders must develop a comprehensive litigation strategy that accounts for the UPC’s broad jurisdiction and evolving regulatory framework. It is important to evaluate the potential risks of a pan-European judgment and the possibility of mandatory SEP licensing negotiations under the regulation. Therefore, keeping abreast of UPC case law and the progress of the draft regulation will be essential to formulating a winning strategy.
Thomas Gibb
Chief Compliance Officer
[email protected]
As chief compliance officer, Thomas Gibb is responsible for the firm’s professional activities. A qualified European and UK patent attorney, he handles patent and design matters for companies of all sizes and is particularly experienced in managing and prosecuting large patent portfolios.
Mr Gibb graduated from the University of Cambridge with a first-class BA and MSc in natural sciences before completing a PhD in chemistry at Imperial College London.