Mark started his professional life as an electronics design engineer at the UK’s Rutherford Appleton Laboratory where he worked on data collection systems for the Large Hadron Collider at CERN. He then spent several years in microelectronics design, before fully qualifying as a European/UK patent attorney in 2011.
As well as specialising in electronics and software/web-based inventions involving principles such as communications protocols, machine-learning and cryptography, Mark also has an in-depth appreciation of mechanical design/operation/manufacturing principles such as 3D-printing, and materials properties. This broad mix of skills maps well onto the medical device sphere, as well as onto the automotive and aerospace fields, where software control overlaps with physical actuation.
Mark has particular experience of assessing and mitigating risk from 3rd-party IP rights, including directing searches for such rights and for invalidating prior art where needed. Mark has the combined technical and legal knowledge necessary to assess the results of such searches, often liaising with clients’ expert in-house engineers (helped by Mark’s experience of working as a design engineer), and thereby arrive at a risk assessment - including recommendations for mitigating any found risk (e.g. validity attacks, protective letters, development/suggestion of workarounds).
Mark’s combination of technical and legal knowledge has enabled him to help a vehicle manufacturer client to proactively assess and mitigate risks at the crowded intersection between vehicle technology and mobile communications technology (so-called “connected car” technology). Mark has also provided advice and support/analysis to defend against approaches by non-practicing entities, otherwise known as “patent trolls”, and he has provided strategic advice for reducing overall business risk (taking into account jurisdictional factors such as e.g. bifurcated infringement/validity assessment in Germany which can affect risk of injunction, and jury-trial of patents in the USA which can favour the patent owner).
Mark’s mixture of subject-matter expertise, covering software inventions as well as mechanical and electronic inventions, has enabled him to help clients successfully navigate the various exclusions to patentable subject-matter at the European Patent Office, and he has handled appeals before the EPO involving such contentious/evolving matters of EPO patent law. Such experience has proved particularly valuable when prosecuting patent applications in the field of medical devices, which commonly involve computer software in their operation, and must also skirt around the EPO’s prohibition against patenting of methods of treatment of the human or animal body.