Expertise
Nic is a highly skilled and pragmatic patent attorney with 20 years of experience in the IP industry. He thrives on new technology and helping companies realise the commercial potential that IP protection can bring.
His technical background is in mechanical engineering, having an MEng from the University of Leeds as well as a Certificate in Intellectual Property Law from Queen Mary University of London prior to dual-qualification as both a UK and European Patent Attorney.
Nic’s practice spans all areas patent and registered design work from concept inception and product development, through commercial exploitation to exit or sale of IP assets. He has experience working with a variety of companies, from technology-focussed start-ups to established manufacturers and multinationals. Nic is a strong advocate of UK industry and works with clients to understand their commercial drivers so that IP protection is seen in this wider context.
Nic represents his clients in all procedures before the UK Intellectual Property Office and European Patent Office relating to engineering and software technology. He has experience of a wide range of subject matter including machine controls, manufacturing processes, equipment health monitoring, rotating machinery, power generation, engineering design/analysis software, aero/thermodynamics, and more general software technology, including machine learning, blockchain and video processing.
How do you help clients?
I predominantly help clients protect their innovations from copying by competitors through drafting, filing and prosecuting patent applications before the UK and European patent offices, and by coordinating prosecution of corresponding applications at other national offices.
I provide advice on the relevance of competitor patents to my client’s products and services, including patent landscaping and strategy, freedom-to-operate assessments, and formal opinions on patent infringement. I help clients find safe workarounds to competitor patents.
I conduct patent due diligence on patent portfolios, including advice on the significance of patents to commercial operations.
I handle contentious patent proceedings involving challenges to patent validity by way of European patent opposition, UK patent revocation, third-party observations and opinions form the UK Intellectual Property Office.
I can also advise on registered design protection to help add commercial value to a product design and prevent valuable designs being imitated by competitors. This includes filing options and strategy, and the preparation or amendment of drawings and other representations for optimal registration of a product design.
Experience
- Successfully defending opposition of a patent directed to secure banking technology at the European Patent Office.
- Advising a UK manufacturer in the food and drink industry on a number of alleged patent infringements relating to food production lines and strategies to mitigate risk.
- Managing co-ordinated patent strategy for a multinational shisha company, including advice on patent acquisitions, strategic focussing of patent protection to cover introduction of disruptive shisha pipe technology and competitor patent watching.
- Attacking the validity of a UK patent for nuclear waste storage technology based on the prior art effect of earlier patent applications
- Supporting a university spin-out up to exit to a major multinational organisation in the medical device sector for technology relating to patient monitoring, including international patent strategy, patent portfolio management and patent due diligence.
- Identifying Patent Box opportunities and fast-tracking numerous UK patents for manufacturers in various industries to ensure optimal tax savings can be made as soon as possible.
- Providing IP Audits to UK SMEs to understand their existing IP assets and help implement a strategy for protecting and exploiting their technology.
- Drafted and filed a priority application in January 2020, relating to an adhesive formulation with limited combustibility and suitable for external use on multi-storey buildings, following up with a full UK application in January 2021 which proceeded to grant of UK patent GB 2593793 in February 2022.