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People » Marcus Sims

Marcus Sims

Partner

London

Contact
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Memberships
  • CIPA
  • EPI
Qualifications
  • Registered UPC Representative
  • European Patent Attorney
  • Chartered Patent Attorney
  • Certificate in Intellectual Property Law, Queen Mary University of London
  • MRes Chemical Biology, Imperial College London
  • MChem (Hons) Chemistry, University of Oxford

My academic background is in chemistry, and my cases span a wide range of chemical technologies including catalysts and pharmaceuticals.

I have completed two extended secondments: one to a multinational consumer goods company, and one to a specialty chemicals and sustainable technologies company. Being immersed in two very different organisations and understanding how clients in these sectors think and operate has been a valuable experience. One of my career highlights has been supporting these companies in their product development by helping them assess the risks along the way to launch. Working as part of a team alongside people with different areas of expertise, such as marketing and R&D, and seeing everything come together and succeed, is highly satisfying.

I have extensive experience in IP due diligence and freedom to operate (FTO) matters, gained in part as a result of these client secondments. I have presented at international IP conferences to share my experience and advice on best practice in approaching freedom to operate assessments. My practice also includes drafting and prosecuting patent applications, as well as contentious proceedings including EPO Oppositions and Appeals.

Passing my professional examinations was a transformative moment for me, and I was pleased to receive three prizes from the Chartered Institute of Patent Attorneys for my performance in these examinations, and to have been recognised individually by leading legal directories.

Boult offers a friendly and highly collegiate atmosphere to work in. Being surrounded by other experts with different perspectives, who are willing to share their time with you is incredibly useful. Moreover, this provides our clients with access to a wide spectrum of expertise, enabling truly out-of-the-box thinking across a range of IP matters.

Recent experience

Providing global patent portfolio management for a UK-based pharmaceutical company.

Acting for a multinational specialty chemicals and sustainable technologies company in the successful defense of a European patent against a multi-opponent opposition.

Providing advice on patent filing strategy and freedom to operate to a growing biopharmaceutical company.

Testimonials and recognitions
  • Named as a key attorney, Legal 500, 2023, 2021
  • Notable practitioner, MIP, 2023, 2021
  • Notable star, Managing Intellectual property, IP stars, 2022
  • Chartered Institute of Patent Attorneys prizes for performance in the 2015 UK patent finals examinations, including the Gill prize for achieving the highest overall mark across the four finals papers
Publications
  • Freedom-to-operate in practice (Management Forum, February 2021)
  • Introduction to freedom-to-operate (Royal Society of Chemistry – IP for Managers, September 2022)
Relevant Search Terms
Recommended Sites
Suggested Media
Recognitions
  • Notable star, Managing Intellectual property, IP stars, 2022
  • Key lawyer, Legal 500, 2021
  • Notable practitioner, IP Stars, 2021
  • Chartered Institute of Patent Attorneys prizes for performance in the 2015 UK patent finals examinations, including the Gill prize for achieving the highest overall mark across the four finals papers
Additional Info
Languages
“Working as part of a team alongside people with different areas of expertise, such as marketing and R&D, and seeing everything come together and succeed, is highly satisfying.”
Sector experience
Biotechnology
  • Drug delivery
  • Personalised medicine/disease biomarkers
Chemicals
  • Dispersions and colloids
  • Catalysts 
  • Lubricants
  • Polymers and plastics
Consumer goods and retail
  • Household goods 
Energy and green technologies
  • Clean air
  • Fuel cells and battery technology
  • Renewables and recycling
Food and beverage
  • Beverages 
  • Nutrition
Industrial manufacturing and processing
  • Additive manufacturing
Materials
  • Advanced materials
  • Nanotechnology
Pharmaceuticals
  • Drug delivery
    Generic market entry
    Medicinal chemistry
    Methods of production and synthesis
    Personalised medicine/disease biomarkers
    Pharmaceuticalsceutical formulations
    Polymorphs
    Small molecule pharmaceuticals
    Supplementary Protection Certificates (SPCs)

My academic background is in chemistry, and my cases span a wide range of chemical technologies including catalysts and pharmaceuticals.

I have completed two extended secondments: one to a multinational consumer goods company, and one to a specialty chemicals and sustainable technologies company. Being immersed in two very different organisations and understanding how clients in these sectors think and operate has been a valuable experience. One of my career highlights has been supporting these companies in their product development by helping them assess the risks along the way to launch. Working as part of a team alongside people with different areas of expertise, such as marketing and R&D, and seeing everything come together and succeed, is highly satisfying.

I have extensive experience in IP due diligence and freedom to operate (FTO) matters, gained in part as a result of these client secondments. I have presented at international IP conferences to share my experience and advice on best practice in approaching freedom to operate assessments. My practice also includes drafting and prosecuting patent applications, as well as contentious proceedings including EPO Oppositions and Appeals.

Passing my professional examinations was a transformative moment for me, and I was pleased to receive three prizes from the Chartered Institute of Patent Attorneys for my performance in these examinations, and to have been recognised individually by leading legal directories.

Boult offers a friendly and highly collegiate atmosphere to work in. Being surrounded by other experts with different perspectives, who are willing to share their time with you is incredibly useful. Moreover, this provides our clients with access to a wide spectrum of expertise, enabling truly out-of-the-box thinking across a range of IP matters.

Recent experience

Providing global patent portfolio management for a UK-based pharmaceutical company.

Acting for a multinational specialty chemicals and sustainable technologies company in the successful defense of a European patent against a multi-opponent opposition.

Providing advice on patent filing strategy and freedom to operate to a growing biopharmaceutical company.

Testimonials and recognitions
  • Named as a key attorney, Legal 500, 2023, 2021
  • Notable practitioner, MIP, 2023, 2021
  • Notable star, Managing Intellectual property, IP stars, 2022
  • Chartered Institute of Patent Attorneys prizes for performance in the 2015 UK patent finals examinations, including the Gill prize for achieving the highest overall mark across the four finals papers
Publications
  • Freedom-to-operate in practice (Management Forum, February 2021)
  • Introduction to freedom-to-operate (Royal Society of Chemistry – IP for Managers, September 2022)
Relevant Search Terms
Recommended Sites
Suggested Media
Recognitions
  • Notable star, Managing Intellectual property, IP stars, 2022
  • Key lawyer, Legal 500, 2021
  • Notable practitioner, IP Stars, 2021
  • Chartered Institute of Patent Attorneys prizes for performance in the 2015 UK patent finals examinations, including the Gill prize for achieving the highest overall mark across the four finals papers
Additional Info

Insights

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Bulletin

Priority following consolidated cases G1/22 and G2/22

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Bulletin

EPO Notice regarding the 10 day rule

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Bulletin

The “10 Day Rule” is Going.

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INSIGHTS