A Day in the Life of an IP Lawyer: Q&A with Marks & Clerk Law LLP and Pinsent Masons

Annabel Smith and Matthew Berrick recently interviewed Intellectual Property lawyers from Marks & Clerk Law and Pinsent Masons.

Having an insight into different sectors within a law firm is key to working out what firms you might want to apply to. In such uncertain times, The Legal Line Up believes giving you insights into each sector is beneficial.

Tell us a bit about yourself, and how you ended up at your respective law firms?

Jonathan Solomon:

I am Jonathan Solomon, an associate solicitor at Marks & Clerk Law. I am originally from Belfast, Northern Ireland but moved to Oxford in 2010 to study my law degree. I completed my law degree in 2013 and then studied a Masters at the University of Toronto. I completed my training contract at Allen & Overy in 2019 and moved to Marks & Clerk Law upon qualification.

Mark Marfe:

I graduated from Bristol University with a degree in cellular and molecular pathology and was living in London.

My degree was very interesting but I knew I didn’t want to be a lab-based researcher. I had moved to London and was looking into doing something related to my science degree. I had been considering scientific publishing when one of my housemates, who was training to be a barrister, suggested I consider a paralegal role he’d been offered at a US law firm.

The project involved the sale of energy assets in Spain for which they needed a Spanish speaker to assist. My friend felt his Spanish wasn’t quite fluent enough so he asked me if I wanted to apply. I’m from Gibraltar and am bilingual. 

I worked for six months at that firm, spending some of the time in Madrid, and really enjoyed the collaborative and varied nature of the work.  I then applied to various law firms with a view to doing a conversion course and ended up part of a cohort at BPP Law School with a training contract with Hogan Lovells. I was part of the IP team at Hogan Lovells until I joined Pinsent Masons in 2018.

Why did you chose to specialise in IP?

Jonathan Solomon:

When I was leaving school and thinking about what to study at university and having studied mainly science subjects for A Level, I considered studying to be a doctor. Unfortunately, after some surgical work experience I realised that I didn’t have the stomach for an operating room. Having spent a lot my time at school debating, I decided the most natural career was one in law. When studying my law degree, I really enjoyed a module in medical law and ethics.

Following my law degree, I decided to pursue the intersection between medicine and law further. I moved to Toronto to study an LLM sponsored by the Canadian Institute of Health Research. During my LLM, I researched a range of topics such as compulsory licences for HIV drugs in Thailand, whether or not we own our body parts and whether schools could be liable for concussion injuries for high school athletes.

Upon returning to the UK I knew that I wanted to practice in a field related to healthcare. After studying the Bar Professional Training Course and being called the Bar in 2015, I originally wanted to practice in clinical negligence. However, this was around the same time as significant legal aid cuts in that practice area and in 2017 I started my training contract at A&O. While at A&O, I completed seats in commercial and litigious IP. With my science leaning background, I really enjoyed the practice area and decided that is what I wanted to do going forward.

Mark Marfe:

The contentious nature of the work was of great interest. I am inquisitive and interested in technology and issues relevant to it. I am interested in delving into the technical detail of our clients’ business, and enjoy conversations with technical experts when preparing IP cases.

What is a day in the life of an IP lawyer like?

Jonathan Solomon:

Every day is different in terms of the subject matter of what I am working on. Since qualifying I have worked on a variety of cases including case relating to air flow valves for toilets to anti-inflammatory antibodies aimed at targeting chronic conditions such as psoriasis and Crohn’s disease.

I am lucky enough to live a few miles from the office so I walk or run (when not in lockdown) into the office and typically I arrive into the office about 9:15am. By the time I get my breakfast and set up at my desk, I generally start work around 9:30am. I start my day by reviewing emails that have come in overnight and doing anything urgent. I then turn to my ongoing cases. The tasks I am completing depend on the stage of litigation. I could be reviewing the patent and prior art in a case if it is in the early stages of litigation. Or, I could be preparing a witness statement or expert report for a case moving through the stages of litigation before trial. I generally have a team catch-up in which we discuss general strategy and the work streams of each member of the team. 

On the days that I am in trial, I arrive at the office a little earlier, generally around 8:30 so that I prepare for the day. The court day generally runs from about 10/10:30 until 4:30/5. After court we will have a team debrief before complete any necessary tasks, such as finding documents for cross-examination or researching points arising from the day in court.

Mark Marfe:

In one word, varied. That’s what I like it about. Many of our clients are international so it’s common to have emails from contacts in the US or Asia to review in the morning. Treat your action list as a dynamic thing that will inevitably change.  In this remote world we regularly have team discussions over VC to discuss the status of cases and strategy.  This will often include the barristers we are working with. There will be client calls too and we regularly advise via email. As a disputes lawyer I will often have a inter partes correspondence to review (or draft). I work better if I make time for exercise which I usually fit into the start of my day.

What’s the most exciting case you’ve worked on to date?

Jonathan Solomon:

Given the subject matter, I find the majority of cases I work on to be very exciting. The most exciting are those with hearings in the Court of Appeal or Supreme Court. It takes time and a lot of preparation to litigate a matter in the High Court and then appeal so by the time to get to appeal hearing you are even more invested and the stakes seem higher.

I also thoroughly enjoy cases involving technical points of law as it gives a nice juxtaposition to the technical, often scientific subject matter of my work. 

Mark Marfe:

I am very proud of having acted for German industrial packaging manufacturer Werit in the High Court, Court of Appeal and Werit’s eventual victory in Supreme Court in relation to patent infringement proceedings brought by a competitor Schütz in the UK relation to the replacement of consumable parts. The case changed the law in relation to patent infringement for consumable parts.

What are the typical tasks a trainee would do in your department?

Jonathan Solomon:

We do not have trainees at Marks & Clerk Law. However, our we have a great paralegal team that do similar work to that of trainees. Generally the paralegals are involved in preparing first drafts of correspondence, helping to collate and review scientific literature and helping to compile lists of potential expert witnesses.

If you could give one bit of advice for students trying to break into the legal sector, what would it be?

Jonathan Soloman:

Don’t give up. There are a lot of law graduates every year and getting a paralegal position, training contract or pupillage is not easy. It is important to remember to keep pursuing your goals and not to get disheartened if the application process takes longer than expected. 

Mark Marfe:

Be enthusiastic. You don’t necessarily need a STEM (science, technology, engineering and mathematics) background to work in IP. Many non-STEM graduates I have worked with took to the subject matter very quickly. What’s important is enthusiasm for the subject matter.

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