Jane Clark

Partner at Mathys & Squire LLP
Ranked in United Kingdom: England and Wales
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

A top choice for prosecution across all manner of technical areas, Mathys & Squire also attracts plaudits for the quality of service delivered by its high-calibre attorneys. “As a firm, the Mathys & Squire team is proactive, responsive and accurate. Their communications are clear and easy to understand. The service they provide has been timely, accurate, helpful and courteous, and we have never had any issues with them. They have strong technical capabilities, and they make sure they have the right people doing the work. Their expertise, meticulous attention to detail, follow through and creativity always get positive results. Mathys & Squire won our business through competitive tender and have demonstrated the reasons for that win on an almost daily basis. The firm has continuously provided an excellent service.” Among the individual practitioners, “Jane Clark is an excellent patent attorney. Her work is high quality, she delivers timely responses to queries, she is flexible and always speaks her mind. More importantly, she never loses and consistently achieves value for her clients. She provides valuable insight and can craft persuasive and succinct claim amendments to persuade examiners to allow patent applications. On top of it all, Jane has a good sense of humour, and she is easy to work with.” Paul Cozens is an IP all-rounder, taking in trademarks and designs alongside a robust patent practice in the mechanical, electrical and software engineering fields. He is also a certified litigator and assiduously cultivates a knowledge of patent law as much as technical expertise. “Anna Gregson is a great choice for opposition and appeal work. She provides a pragmatic approach which is appreciated by business, and always delivers on time with a high-quality work product. On top of this, Anna is extremely personable and collaborative, so it feels more like she is part of the in-house team. Her responsiveness and ability to think strategically are appreciated.” Chris Hamer is best known for his deep technical knowledge of chemistry, ranging from petrochemicals to food chemistry. However, he also has a knack for commercialisation and has helped his clientele leverage their IP portfolios to grow from start-ups to valuations in excess of £300 million. “Dani Kramer is a great attorney and goes the extra mile to help out. He is very personable and easy to work with, which makes a real difference. He is also keen to help optimise collaboration procedures and works very well as part of a team.” Well respected for electronics wizardry, Alan MacDougall represents companies of all sizes, with technologies of all sizes, from robotics to hair straighteners. Martin MacLean is head of life sciences and is one of the country’s top practitioners in the space. He has a PhD in microbial engineering – but more than technical finesse, he has a 90% success rate at the EPO making him the right choice for almost any patron. A versatile prosecutor, taking in portfolios related to physics, electronics, engineering and material sciences, James Pitchford’s calmness under pressure and diligent work ethic recommend him to clients for domestic work and big-ticket EPO oppositions. “Craig Titmus consistently provides expert strategic advice and guidance on European patent applications. His quality work led to an extraordinarily rapid accelerated EPO intention to grant for a European patent. Craig’s academic background and expertise 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 complex work. The value Craig adds always exceeds expectations. He is exceptionally supportive, proactive and possesses the rare gift of reducing complexity to simplicity.” Recently promoted equity partner Andrew White is a skilled portfolio manager across a range of technologies, from medtech through software to the automotive industry. Alongside an analytical mind that penetrates technical issues across industries with ease, White is also prized by his following for his keen commercial insights. Three more attorneys joining the rankings this year are Stephen Garner, Juliet Redhouse and Michael Stott. Garner has 15 years’ experience prosecuting pharmaceutical drafts. This expertise, together with his experience before the EPO, no doubt recommended him to Sanofi, which has been instructing him and Stott on all matters concerning patent drafting, prosecution and appeals for rare disease drugs. Redhouse also sits in the life sciences team, taking on patrons in molecular biology, pharmaceuticals and biotechnology. A significant prosecution client is Abbott Diagnostics, and she is also defending Biogen against various opponents at the EPO. Stott’s technical acumen and commercial savvy were acquired through prior work within the pharmaceutical industry. A sophisticated and diligent portfolio manager, Stott knows how to get the most value from his clients’ intellectual assets.

Jane Clark's Profile

Jane Clark has over 30 years’ experience in drafting, prosecution, infringement, validity, commercialisation of intellectual property and global IP strategy advice, including freedom to operate, licensing advice, entitlement disputes and competitor monitoring. She has extensive experience in many technical areas, including metrological devices, medical devices, network and communications technology, semiconductor process and integrated circuit technologies and consumer products (particularly domestic appliances and personal care).

With significant experience in negotiating multinational IP agreements and collaboration agreements with high-tech companies and universities, she also has many years’ experience of EPO hearings and recently successfully defended a patent considered of very high value by the client during opposition proceedings.

While she has spent much of her career in private practice, she also has substantial experience as an in-house patent attorney, where (in addition to the drafting, filing and prosecution of patent applications) her role included advising on licence and collaboration agreement negotiations with third parties, including a number of universities. From this, she gained valuable insight and experience in optimising IP strategy to add value commensurate with specific commercial business needs; and in responding extremely quickly to IP issues (eg, ahead of an important product launch). She has applied this experience and insight to her dealings with direct large and medium-scale UK clients and with foreign IP firms, as well as overseas direct clients, providing them with practical advice matching their business needs.

She is recommended for her expertise in The Legal 500, in which sources describe her as “a pre-eminent prosecutor” and a “first choice” lawyer; in Managing IP’s IP Stars; and in JUVE Patent’s UK Rankings for the category of patent filing.

She has a master’s degree in natural sciences from the University of Cambridge, specialising in physics.

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, Cambridge, Manchester, Newcastle, 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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