Electronics Qualified Patent Attorney – UK

Job ref: Electronics

Job Type:Patent Attorney
Sectors: Trade marks

Location: UK – Hybrid

Hours: Full Time 37.5 hours

Benefits: Annual performance bonus, agile working policy, pension, life insurance, private medical and dental, PHI, season ticket loan, 27 days holiday per annum, holiday purchase scheme.

About HGF

HGF Limited is one of Europe’s largest intellectual property specialist firms and one of only a few to offer a fully integrated IP solution, bringing over 200 Patent Attorneys, Trade Mark Attorneys and IP Solicitors together to provide a full-service IP solution.

With 26 offices across the UK, Ireland, Germany, Netherlands, France, Switzerland & Austria, HGF’s Patent and Trade Mark Attorneys provide specialist technical and legal advice to blue chip organisations and small to medium businesses across the world.  Many of our clients are household names, and the work HGF does allows them to protect and exploit their inventions, new products and branding.

Role Purpose:

You will work alongside our team of attorneys to support our clients in the management and prosecution of patent applications within the UK and Europe.  This includes responding to office actions and advising clients throughout the patent drafting and granting processes. This role includes coordinating with international associates for patent filings outside Europe. Therefore, a robust technical background, deep legal expertise and strong client advisory skills are required of role holders.

Main Responsibilities:

• Patent Prosecution (UK and Europe):
  • Draft, file, and prosecute patent applications within the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO).
  • Review and analyse office actions from UKIPO and EPO, preparing responses to advance prosecution.
  • Conduct examiner interviews and negotiate claim amendments to secure optimal patent protection.
  • Perform patentability assessments and provide strategic guidance on developing and managing patent portfolios.

• International Coordination:
• • Collaborate with international associates to coordinate patent filings and prosecution outside the UK and Europe.
  • Ensure seamless communication and effective handling of patent applications in jurisdictions beyond Europe.
  • Provide necessary documentation and support to associates for global patent filing processes.

• Client Advising:
• • Advise clients on drafting patent applications and navigating the patent granting process in the UK and Europe.
  • Offer guidance on procedural requirements, strategic considerations, and best practices for securing patents.
  • Conduct patentability and freedom-to-operate analyses tailored to clients’ needs.
  • Develop and present IP strategies aligned with clients’ business objectives and technological developments.

• Office Actions:
  • Analyse and respond to office actions from UKIPO and EPO.
  • Work closely with inventors and technical teams to gather necessary information for effective responses.
  • Prepare arguments, amendments, and legal documentation to address rejections and objections in office actions.

• Strategic Counsel:
  • Advise on IP strategy, including portfolio management and patent enforcement, for internal and external stakeholders.
  • Stay updated with changes in UK and European patent laws and emerging technologies relevant to clients’ interests.
  • Provide training and updates to clients and internal teams on IP best practices and recent developments.

• Collaboration and Communication:
  • Work with inventors, R&D teams, and clients to identify and protect intellectual property.
  • Communicate complex legal concepts clearly and effectively to non-legal stakeholders.
  • Prepare and present IP strategy reports and prosecution status updates to senior management and clients.

• Billable Work and Time Management:
• • Log an average of 4.5 hours of billable work each day.
  • Record non-billable work for data collection purposes, contributing to business insights on time allocation and efficiency.

Candidate Essential Experience, Qualifications and Skills:

• Education: Educated to MSc (or equivalent) in an electronics field.  Qualified to practice before the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO). Membership in the Chartered Institute of Patent Attorneys (CIPA).
• Technical Background: Degree in field of electronics is essential. Experience working with electronics and computing subject matter.
• Skills:
  • Thorough understanding of UK and European patent laws and procedures.
  • Proven ability to handle complex patent prosecution matters and provide strategic advice on patent-related issues.
  • Strong analytical skills and attention to detail.
  • Excellent drafting and communication skills, with the ability to convey complex legal issues to diverse audiences.
  • Ability to manage multiple priorities and deadlines in a fast-paced environment.

Values & Behaviours:

People – People matter. We treat people fairly, with respect and compassion. We foster a friendly, inclusive and enjoyable culture for everyone to prosper in. We invest in our people and offer appropriate coaching and training to assist with development and learning. We promote a healthy work-life balance. Progression is based on merit.

Excellence –  We strive to be the best. We pursue excellence in all our individual roles resulting in outstanding legal and technical advice for our clients. Our people are pragmatic, responsive and commercially minded. We do not presume but listen to understand so we can engage proactively and appropriately.

Teamwork – We stand together. We work with our clients to protect their interests, and with each other as a mutually supporting firm. We value, appreciate and listen to others, regardless of role, recognising each individual’s particular blend of talent, skill and experience. We are individually and jointly accountable and take responsibility for our actions and decisions.

Progressive – We innovate. We continually improve our services and processes through understanding, creativity, and investment. We evolve by taking opportunities and adopting new business procedures, unencumbered by historical structures or out-of-date attitudes. As a firm, we have an entrepreneurial spirit, and encourage new thinking in our people.