Legal guides
IAM Patent 2023, Recommended Individual
Qualifications
European Patent Attorney
European Patent Litigator
Chartered Patent Attorney
Degree
MPhil (Cantab), Physics MA (Cantab), Natural Sciences
Contact
[email protected]Paul Roberts
Partner
Paul manages a large prosecution practice across a wide range of technologies, ranging from microprocessors, computer graphics and electronics through to medical and mechanical devices. He specialises in drafting patent applications across these diverse fields and uses his experience advising on patent validity and infringement to craft patent applications which are robust worldwide. He has a particular interest in the patentability of software and computer-implemented inventions and is increasingly advising clients on developing portfolios in the complex area of machine learning.
Paul works closely with his clients, helping them to build strong patent portfolios and advising their management teams on how to best use their intellectual property to secure investment. As well as helping companies to capture and protect their intellectual property, Paul has particular experience managing large IP transactions across multiple jurisdictions. He is regularly engaged to draft and review agreements with third parties, including development agreements and complex licensing agreements.
A key part of Paul’s practice is advising on contentious matters, particularly in relation to the infringement and validity of patents and designs. Having represented both opponent and patentee, he is experienced in handling both oppositions and appeals before the European Patent Office and regularly conducts examination oral proceedings before the EPO and the UK Intellectual Property Office.
Paul also specialises in filing and prosecuting registered designs in all major jurisdictions, as well as advising on unregistered design rights. Having filed complex design applications all over the world, he understands the varied formal requirements of different jurisdictions and how to maximise the scope of design protection in light of those requirements.