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Q&A: Morag MacDonald – Bird & Bird IP head on disputes, influences and serious maths

Sitting in the firm’s recently opened New Fetter Lane office, Matthew Field talks to Bird & Bird international head of intellectual property Morag Macdonald (pictured) as the firm targets London expansion.

What is the state of the IP market?

It’s more focused now, though there’s still a lot of issues emerging in electronic and digital areas. Every time we go through the next generation of mobiles you get a different set of cases, the latest being 4G/LTE technology. All the other international law firms we come across are corporate and finance, but our sector focus and heritage in IP means we are the only international firm that does what we do. That really makes us quite unique in the global market.

How has Brexit affected the IP world?

We thought the Unified Patents Court (UPC), which would cover all EU member states, would be a massive change, but who knows after Brexit. One of the court’s main seats was supposed to be in London. It is very difficult to see how the UPC would proceed in its current form but who knows, and frankly the UPC is not likely to be high up in the agenda for the government when they have so many other issues to consider.

What about the US?

There has been a real upheaval in the US patents market since the America Invents Act came into force in 2011, changing their patent system from ‘first to invent’ to ‘first to file’ and making some other significant changes such as the introduction of Inter Partes Reviews which are a form of opposition in the patent office to the validity of the patent. These reviews have reduced the number of big ticket patent trials now being seen in the US.

Bird & Bird has its new office, so what are the plans now?

We’ve been very rapidly growing our brand management practice in London and on a global scale, it’s really turning into a very successful practice.

We are doing a lot of non-contentious IP work. We’re helping clients develop their in-house IP strategy, that’s growing as well. The intangibles are becoming seriously valuable assets as a result of the digital world we now live in and this is becoming clear to companies who are becoming much more interested in managing their intangible assets proactively.

Which cases have been highlights for you? 

Last March I worked on probably the hardest trial I have ever done in my whole career. We had to have an expert scientific adviser come in for a teach-in for the court and Mr Justice Birss because the technology was so complicated.

The case was EMGS v PGS – a patent trial over a technique using electromagnetics to determine whether a sub-sea reservoir contained hydrocarbons or not. But it did involve some serious, serious maths like Maxwell’s equations. It was lovely stuff. It was the hardest maths and physics I have ever had to do for a trial, right up with what I was doing at degree level. Everybody was finding it challenging, but it was fascinating.

Which of your peers have stood out for you?

Throughout my career there have been a number of people I have found invaluable. When I joined the firm the head of the IP group at the time was Karl Arnold. I learnt a huge amount from Karl, not necessarily all about the law. He was a very well regarded IP lawyer, strategically he was stunning in terms of how he would work out cases.

I often worked alongside Trevor Cook, now at Wilmer Hale, who was a relatively junior partner when I joined the firm. I’ve also worked with Simon Thorley QC since he was a junior barrister, he has been the standout IP barrister for years. I’ve worked with and against him for years, he’s a pleasure to work with.

There are certain people when you do litigation who you can’t say precisely what they taught you, but whatever they did teach you it stood you in really good stead.