Alan MacDougall

Partner at Mathys & Squire LLP
Ranked in United Kingdom: England
IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Recommended - Individuals: prosecution

Despite some significant personnel losses over the past two years, Mathys & Squire has maintained its position as a top choice for patent prosecution across the United Kingdom and Europe, combining a forward-thinking and technically skilled team with a dedication to premium client service. It appears among the list of outfits most often seen at the EPO, and thanks to its geographical reach and its 10 offices across the United Kingdom and Europe plus bases in China and Japan, cross-border work poses no problem. Heading up the IT and electronics side is physicist Jane Clark, an authority on everything from semiconductors to telecommunications and the automotive sector. She has recently been working alongside Andrew John White on EPO hearings for semiconductor manufacturer Silicon Genesis. White’s specialisms include medical technology, software, artificial intelligence and electric vehicles, and he works closely with a number of accelerators and incubators, providing workshops on patent issues. Also in the electronics sphere are 20-years-experienced Alan MacDougall – who heads up the Cambridge office, runs the telecoms department and takes the lead on the firm’s Japanese business development – and physicist James Pitchford, both of whom receive rave reviews. “The growth of our company is thanks to Alan’s continued and valuable efforts.” “James has the wonderful combination of being very skilled in his job as well as being very skilled in relaying his knowledge to lay people. Patrons appreciate his calm and patient approach and ability to provide advice in an accessible manner.” Heading up the engineering department is Paul Cozens, while the chemistry group is led by Christopher Hamer. Cozens has spent the past 30 years crafting and implementing sophisticated patent portfolio strategies. “Regardless of the client, Paul has always impressed me by his combination of technical aptitude, pragmatism and the ability to roll his sleeves up so as to get the job done. He is also very easy to work with on a personal level.” Meanwhile, ionic liquids expert Hamer is the lead partner for China and has acted in 100 hearings at a success rate of 90%. The same can be said for Martin MacLean, who is similarly prolific at a comparable rate of success – he heads up the life sciences group. His fellow life sciences aces are Craig Titmus, a vaccines and gene therapy boffin who is adept at managing even the most complex IP portfolios, and Anna Gregson, who is highly prized for her strategic nous and commercial acumen. Coming in for special praise, “Craig’s academic background in biochemistry and biotechnology have been of great value, as have his strategic and technical understanding of patent processes, collaborative approach, and management of his patents team supporting this work. Working with Craig is great because he is knowledgeable, focused and uses his experience and superb analytical skills in dealing with the various patent offices to get the best outcomes.” Completing the line-up in the IAM Patent 1000 this year is all-rounder Dani Kramer, who takes just as easily to technology-based agreements and infringement risk assessment projects as he does to portfolio management. He also heads up the firm’s Israel desk and has developed its Israelipractice.

Alan MacDougall's Profile

Alan MacDougall is a UK and European patent attorney with nearly 30 years’ experience acting for clients of all sizes, including small and mid-sized enterprises and large multinational companies, advising them on their IP strategies and managing their IP portfolios. He has significant experience in electrical, electronic, acoustics, communications and computing technologies. Mr MacDougall is recommended in The Legalem class="IndivProfile-Italic" lang="en-GB"> 500.

Mr MacDougall’s principal practice areas include strategic IP advice, portfolio management and patent drafting and prosecution. He also has expertise in both opposition and appeal proceedings before the European Patent Office. Mr MacDougall has detailed knowledge of networking and communications technologies, including specialist knowledge of mobile telecommunications standards, and advises on essentiality and licensing activity in this area. He also has extensive knowledge of robotics, control systems, navigation and routing systems, and sensing devices, such as inductive and capacitive sensors used in the automotive and computer fields. He advises extensively on software and business method-related inventions, particularly in the financial servicessector.

Mr MacDougall has a first-class honours degree in electrical and electronic engineering, as well as a master’s degree in communications, digital signal processing and control from StrathclydeUniversity.

Mr MacDougall is a member of the International Association for the Protection of Intellectual Property and regularly attends the Asian Patent Attorneys Association meetings as anobserver.

Firm Profile

Mathys & Squire is an IP powerhouse that puts its specialist knowledge to work for clients, to strengthen and secure what most modern businesses today treat as one of their most valuable strategic assets: intellectual property. The firm’s agile teams of attorneys, scientists and strategists are steeped in experience, working with IP-rich and high-growth industries to leveraging complex technologies and sophisticated commercial models across a broad range of industry sectors.

A full-service IP firm, Mathys & Squire has unrivalled expertise in patents, trademarks, design protection and litigation. Highly ranked in leading legal and IP directories, Mathys & Squire has over 110 years of experience in the protection and commercialisation of IP rights, leading the field with insight, innovation and quality.

Mathys & Squire has over 90 attorneys and a dedicated IP consulting team across offices in London, Birmingham, Brighton, Cambridge, Manchester, Oxford, York, Luxembourg, Munich and Paris, as well as teams based in Belfast, China and Japan. The firm’s attorneys and trainees have a mix of scientific degrees extending from chemistry, biochemistry, pharmacology, genetics, microbiology, plant sciences and zoology through to physics, electronics, telecommunications and engineering.

Mathys & Squire works with its clients to maximise the value of their IP assets. The firm’s breadth of technical expertise and depth of professional experience are coupled with a determination to add real commercial value, which drives significant revenue growth through the effective use of clients’ intellectual property.

The firm has a broad spread of clients, ranging from start-ups to major UK and global corporations, many of which are household names. Clients of the firm value its commitment to professional excellence and technical expertise.

Through its creative approach, the firm has a successful record of securing the grant of key patents and settling disputes. Client companies without in-house patent departments value the firm’s understanding of their business issues and the importance and commercial value of their intellectual property. Mathys & Squire enjoys excellent relationships with like-minded firms of associates from all over the world.

The Mathys & Squire patents team’s core areas of expertise include:

  • identifying intellectual property capable of protection by understanding the client’s technology and business objectives;
  • obtaining valuable patent registrations through skilful drafting and powerful advocacy before the world’s patent offices;
  • representing clients in disputes and contentious proceedings (especially those of the EPO), drawing wherever necessary upon the expertise of fellow professionals;
  • facilitating the commercial exploitation of a client’s intellectual property by way of sale, licence or joint venture; and
  • advising clients in relation to their IP strategy and management of their IP portfolios.

Mathys & Squire offers a full range of services across patents, trademarks, designs, litigation and related IP rights, both contentious and non-contentious, working across a spectrum of industries:

  • providing strategic management of global patent and trademark portfolios for major corporations;
  • advising start-ups in relation to the creation and ownership of IP rights and their commercial exploitation;
  • patent and trademark prosecution, including oppositions and appeals, for major corporations;
  • providing specialist European (EPO and the EU Intellectual Property Office) expertise to fellow professionals;
  • working alongside solicitors and counsel in the United Kingdom, bringing to bear the firm’s complementary skills and experience;
  • advising at CEO level on the role of IP rights in revenue generation and asset creation;
  • finding paths through third-party patent, trademark or other IP rights, including challenges to validity where appropriate;
  • valuation of intellectual assets to assist businesses with a potential sale or initial public offering;
  • resolving disputes through various forms of alternative dispute resolution to litigation, whether as the lead firm or as part of a team; and
  • bringing specialist IP skills to corporate finance, including due diligence and IP strategy.

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