Eleanor has always had a passion for science and studied natural sciences at Cambridge University, followed by a DPhil in organic chemistry from Oxford University. She went on to carry out post-doctoral research at both Oxford and Kyoto University in Japan before deciding it was time to change direction.
“I enjoyed my time in research, both in industry and abroad, but ultimately realised it wasn’t what I wanted to do long term,” explains Eleanor, “I had friends working as patent attorneys, I loved learning about new technologies and had always had an interest in the law after a short spell working in a law firm as part of my high school work experience.”
After going along to open days to find out more, she applied for a trainee patent attorney position at Mewburn Ellis and has been working at the firm ever since. “I’m still here nearly ten years later because I really enjoy what I do – I like the variety, the range of clients I work with and the new technologies I get to find out about,” she says.
“It can be challenging. You need to be very sure you are taking the right actions for your client from a commercial perspective, which takes experience and in-depth knowledge. You need to be able to overcome objections and persuade with your arguments. That means reading case law, speaking to colleagues, comparing your case to what has gone before and understanding the similarities and differences.”
The job can be pressurised, but Eleanor finds that suits her well. “There are a lot of deadlines, with very little room for manoeuvre and whilst that can be stressful, for me it’s a great motivation to get things done,” she explains.
A team effort
Whether defending or attacking, oppositions can be time consuming and expensive - each and every one will be important to the client involved. Good teamwork is vital when it comes to successful opposition, something made clear to Eleanor when working with a polymer client to challenge a competitor’s patent.
“The client’s scientists saw that there were possible problems with the data presented in a competitor’s patent application, so we went away and conducted an in-depth analysis of the data, identifying certain inconsistencies and a lack of repeatability. It became apparent that either some information was missing in the patent or that the experiments were simply not reproducible,” says Eleanor.
These findings enabled Eleanor and her team to build a strong legal argument challenging the patent on the grounds of sufficiency. On presentation of the evidence, the Opposition Division of the European Patent Office revoked the patent.
“Revoking a patent on the grounds of sufficiency is relatively rare. In this case it was down to a massive team effort, both here at Mewburn Ellis and on the client side,” she explains. “The client was closely involved in the data analysis and with their intimate knowledge of their field were able to spot possible problems with the data. We could then dedicate time and resource to going through the data, analysing it, drawing up our findings and then using them to build a successful legal argument.”
The case, which is currently being appealed, also demonstrated the importance of good client care. “Procedurally the case was complex and unpredictable due to postponements and delays caused by the pandemic and a change to appeal board guidelines that came in between the first hearing and the upcoming appeal,” explains Eleanor. “In these situations, client care is all important, you need to take time to explain the process, what is happening, why it is happening and what they can expect in terms of potential outcomes.”
No surprises
According to Eleanor, the hardest part of an opposition is working out all the possible eventualities. “You need to consider anything that might come up at a hearing to ensure you aren’t surprised or derailed on the day,” she says. “Whether defending or attacking you only have a minute or two to answer questions and what you say at that crucial moment can have a knock-on effect. If you aren’t prepared and have not thought through what you are going to say there could be negative consequences for your case.”
That makes meticulous preparation all important. Patent attorneys will generally already be familiar with the application from the filing stage but the work can be time consuming. “Painstaking work can be the difference between winning and losing,” explains Eleanor. “When you are prepping you are always thinking – what am I missing or what would I say if I was on the other side?”
A sustainable future
One of Eleanor’s specialist areas is polymers, mainly plastics or alternative plastic materials. As sustainability climbs up the agenda, she expects competition in the sustainable plastics and plastic-alternatives space to increase, potentially resulting in an increase in oppositions in this area.
“Sustainable plastic alternatives, along with plastic recycling technologies and ways of making or using plastic to increase its life span will continue to be a growth area,” explains Eleanor. “Similarly, future foods – alternative proteins and protein manufacturing – are taking off due to environmental concerns, consumer demand for meat alternatives and the need to sustain a growing global population. We are already seeing a growth in filings and applications in these areas.”
Eleanor took on the role of Mewburn Ellis’s sustainability champion due to her personal interest in this area and her ambition to help make the business more sustainable. “As a business we have, over the past few years, put a lot of work into identifying what we are doing that impacts the environment and have started working to reduce our impact and increase sustainability.
“We’ve used third party experts Ecovadis to review and benchmark our performance and have been implementing changes both big and small, most notably cutting down our air travel to reduce our carbon footprint, committing to being carbon neutral and working towards the more ambitious goal of net‑zero. I’m excited to help steer this journey for the firm, particularly knowing how much support we have internally from all our people to work on sustainability.”
Keeping active
Eleanor works full time, has a two-year-old daughter and has recently moved house, so free time outside work is hard to come by. “Time to myself is pretty limited at the moment but I have lots of fun with my daughter and when I can, I like to run along the river in Cambridge where I live,” she says. “Before my daughter was born, I used to take part in triathlons. Fitness is important to me - I like to stay active when I get the opportunity.”
