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People » Dr Simon Binnie

Dr Simon Binnie

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Address
Memberships
  • AIPLA (Committee member, Electronic and Computer Law Committee)
  • CIPA (Committee member, Computer Technologies Committee)
  • EPI
  • IPOA (Committee member, Software Related Inventions Committee)
  • Institute of Physics
Qualifications
  • Registered UPC Representative
  • European Patent Attorney
  • Chartered Patent Attorney
  • Certificate in Intellectual Property Law, Queen Mary University of London
  • PhD Physics, University College London
  • MSci Theoretical Physics, University College London

I always loved learning about new things, living at the cutting edge of technology. Given this, it was probably inevitable that I was drawn to becoming a patent attorney, spending my days getting to grips with so many different technologies and new ideas.

As a former theoretical and computational physicist my practice has developed a focus on the more mathematical end of technological innovation – often what is traditionally regarded as subject matter that’s difficult to patent. There are many interesting legal aspects about the various exclusions to patentability, that differ around the world. Understanding how a new innovation fits around these restrictions, and identifying what aspects are potentially patentable, is a large and often fascinating part of the challenge.

I typically work with a lot of SMEs and, occasionally, individual inventors, and it’s always enjoyable to introduce them to the patent process and guide them through it. I also have larger companies as clients that may have a large team of inventors. In all cases I can be embedded in the team, making the process as smooth as possible for them. I really enjoy this and how it makes it easy to contribute to their business – understanding what the client or inventor wants to achieve and how to help them do so. I love adding value in this way and working so collegiately.

One of my first clients had quite a wide geographical portfolio so I was lucky enough to build up my experience in directing prosecution in several jurisdictions farther afield including Japan, China, Korea, Brazil, India and South Africa. It means that when I’m now drafting a new application for a UK-based client or a primary direct client, I ensure it is not only fit for Europe, but also for other potential international markets, having had first-hand experience of the issues and considerations. Receiving good feedback from a client delighted about someone having thoroughly understood their invention always gives me a solid sense of achievement.

The whole process of engaging with the patent office is also very enjoyable. Often the optimal outcome can be achieved by a collegial approach and there are also times that call for some more adversarial thinking in order to best fight for my client’s interests. There’s a definite satisfaction to be found in the intellectual exercise of taking an argument apart, finding out where it’s wrong and then turning it around so that the objection is overcome and a claim that really works for the client granted. It’s wonderful to see clients relieved that their core business is protected and can be marketed, safe in the knowledge that they have a powerful piece of protection against copying.

Recent experience

Assisting a growing UK defence systems developer establish a portfolio of applications directed towards its innovative AI technology.

Aiding in the successful defence against an opposition, and so maintaining a medical device European patent for the client in the face of an initially negative opinion by the opposition division around complex legal issues of priority.

Providing detailed opinions and prosecution strategies for the European portfolio of a large bioinformatics company, doing genetic and genealogical analysis. I have helped navigate the applications through the EPO process where local restrictions around excluded subject-matter can be in play from many different directions – often without clear case law guidance due to the pioneering and cross-disciplinary nature of the field.

Acting for a large multinational software and data security company with strategic and practical assistance in its worldwide patent portfolio, along with helping build the portfolio through extensive drafting and prosecution work.

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“Receiving good feedback from a client delighted about someone having thoroughly understood their invention always gives me a solid sense of achievement.”
Artificial intelligence and machine learning
Automotive
  • Autonomous vehicles
Communications and networks
  • Cloud computing
  • Wired and wireless networks
  • Internet of things (IOT)
Computing and software
  • Bioinformatics
  • Blockchain and distributed ledgers
  • Communications and networks
  • Computer games
  • Data and software security, cryptography and digital rights management (DRM)
  • Data management and storage, databases and data compression
  • Digital assistants, virtual assistants and software agents
  • FinTech and AdTech
  • Metaverse, virtual reality (VR) and augmented reality (AR)
  • Machine vision
  • Multimedia, audio/video processing and animation
  • Natural language processing
  • Quantum computing
  • Robotic process automation
  • Search engines
  • Signal processing
  • Software applications and systems, mobile applications, user interfaces
Electronics and electrical devices
  • Computer and IT architecture and system design
  • Medical devices
  • Optics
  • Robotics
  • Scientific instruments
  • Semiconductor devices
  • Testing systems, control systems, signal processing
  • Wearable tech and human interfaces

I always loved learning about new things, living at the cutting edge of technology. Given this, it was probably inevitable that I was drawn to becoming a patent attorney, spending my days getting to grips with so many different technologies and new ideas.

As a former theoretical and computational physicist my practice has developed a focus on the more mathematical end of technological innovation – often what is traditionally regarded as subject matter that’s difficult to patent. There are many interesting legal aspects about the various exclusions to patentability, that differ around the world. Understanding how a new innovation fits around these restrictions, and identifying what aspects are potentially patentable, is a large and often fascinating part of the challenge.

I typically work with a lot of SMEs and, occasionally, individual inventors, and it’s always enjoyable to introduce them to the patent process and guide them through it. I also have larger companies as clients that may have a large team of inventors. In all cases I can be embedded in the team, making the process as smooth as possible for them. I really enjoy this and how it makes it easy to contribute to their business – understanding what the client or inventor wants to achieve and how to help them do so. I love adding value in this way and working so collegiately.

One of my first clients had quite a wide geographical portfolio so I was lucky enough to build up my experience in directing prosecution in several jurisdictions farther afield including Japan, China, Korea, Brazil, India and South Africa. It means that when I’m now drafting a new application for a UK-based client or a primary direct client, I ensure it is not only fit for Europe, but also for other potential international markets, having had first-hand experience of the issues and considerations. Receiving good feedback from a client delighted about someone having thoroughly understood their invention always gives me a solid sense of achievement.

The whole process of engaging with the patent office is also very enjoyable. Often the optimal outcome can be achieved by a collegial approach and there are also times that call for some more adversarial thinking in order to best fight for my client’s interests. There’s a definite satisfaction to be found in the intellectual exercise of taking an argument apart, finding out where it’s wrong and then turning it around so that the objection is overcome and a claim that really works for the client granted. It’s wonderful to see clients relieved that their core business is protected and can be marketed, safe in the knowledge that they have a powerful piece of protection against copying.

Recent experience

Assisting a growing UK defence systems developer establish a portfolio of applications directed towards its innovative AI technology.

Aiding in the successful defence against an opposition, and so maintaining a medical device European patent for the client in the face of an initially negative opinion by the opposition division around complex legal issues of priority.

Providing detailed opinions and prosecution strategies for the European portfolio of a large bioinformatics company, doing genetic and genealogical analysis. I have helped navigate the applications through the EPO process where local restrictions around excluded subject-matter can be in play from many different directions – often without clear case law guidance due to the pioneering and cross-disciplinary nature of the field.

Acting for a large multinational software and data security company with strategic and practical assistance in its worldwide patent portfolio, along with helping build the portfolio through extensive drafting and prosecution work.

Relevant Search Terms
Recommended Sites
Suggested Media
Recognitions
Additional Info

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