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Jack Shepherd

Partner

London

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CIPA
EPI

Qualifications
  • Registered UPC Representative
  • European Patent Attorney
  • Chartered Patent Attorney
  • Certificate in Intellectual Property Law, Queen Mary University of London
  • MBiochem, University of Bath

I entered the profession after graduating with a master’s degree in biochemistry, which included placements in the pharmaceutical industry.  Being a patent attorney was always of interest to me, as it would allow me to continue using my technical knowledge in an entirely new context, and learn legal skills.  I also found the prospect of arguing for a living to be rather appealing (and still do enjoy this element of the job).

Written and oral advocacy have always been some of the more interesting parts of this role, especially in contentious proceedings such as oppositions and appeals. I particularly enjoy sifting through all the points that could be made in a case, and identifying the points (often limited in number) that should be made. In general, I find trying to get my argument across as succinctly and forcefully as possible to always be an interesting challenge.

AI presents new challenges and opportunities as well.  When working with AI you have a digital companion that can provide almost limitless ideas and critiques.  Again, identifying which of those of ideas and critiques should be picked up and ran with is an interesting new skill which I am developing.

Of course, I am fundamentally also a science geek (as any good patent attorney is), and so getting to wrap my head around the technology of my clients has always been fascinating.  This is especially important when drafting new patent applications and during opposition/appeal work – you absolutely have to be on top of the technical detail to get a good outcome for your client.

Recent experience

Leading EPO opposition proceedings alongside multiple parallel national invalidity and infringement actions.

Acting to clear the way on behalf of a pharmaceutical client against a ‘patent thicket’ of over 30 different patents/applications.

Drafting and filing over 20 offensive EPO oppositions during a period of two years.

Publications
Relevant Search Terms
Recommended Sites
Suggested Media
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Sector experience
Biotechnology
  • Antibody engineering
  • Antibody manufacture and formulation
  • Biosimilars
  • Gene editing (e.g. CRISPR)
  • Genomic and molecular tools and methods
  • Immuno-oncology (e.g. checkpoint inhibitors; modified T cells)
  • Next generation sequencing
  • Nucleic acid synthesis
  • Personalised medicine/disease biomarkers
  • Recombinant protein production and purification
  • Stem cell therapies
  • Synthetic biology
  • Therapeutic antibodies
  • Vaccinology (e.g. viral vectors; mRNA vaccines)
Computing and Software
  • Bioinformatics
Medical Devices and Diagnostics
  • Drug delivery
  • In vitro diagnostics
  • Medtech
Pharmaceuticals
  • Drug delivery
  • Generic market entry
  • Medicinal chemistry
  • Methods of production and synthesis
  • Personalised medicine/disease biomarkers
  • Pharmaceutical formulations
  • Polymorphs
  • Small molecule pharmaceuticals

I entered the profession after graduating with a master’s degree in biochemistry, which included placements in the pharmaceutical industry.  Being a patent attorney was always of interest to me, as it would allow me to continue using my technical knowledge in an entirely new context, and learn legal skills.  I also found the prospect of arguing for a living to be rather appealing (and still do enjoy this element of the job).

Written and oral advocacy have always been some of the more interesting parts of this role, especially in contentious proceedings such as oppositions and appeals. I particularly enjoy sifting through all the points that could be made in a case, and identifying the points (often limited in number) that should be made. In general, I find trying to get my argument across as succinctly and forcefully as possible to always be an interesting challenge.

AI presents new challenges and opportunities as well.  When working with AI you have a digital companion that can provide almost limitless ideas and critiques.  Again, identifying which of those of ideas and critiques should be picked up and ran with is an interesting new skill which I am developing.

Of course, I am fundamentally also a science geek (as any good patent attorney is), and so getting to wrap my head around the technology of my clients has always been fascinating.  This is especially important when drafting new patent applications and during opposition/appeal work – you absolutely have to be on top of the technical detail to get a good outcome for your client.

Recent experience

Leading EPO opposition proceedings alongside multiple parallel national invalidity and infringement actions.

Acting to clear the way on behalf of a pharmaceutical client against a ‘patent thicket’ of over 30 different patents/applications.

Drafting and filing over 20 offensive EPO oppositions during a period of two years.

Publications
Relevant Search Terms
Recommended Sites
Suggested Media
Recognitions
Additional Info

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