Adam Gilbertson

Trainee Patent Attorney since 2015
Bsc (Hons), PhD
Telephone : +44 (0)121 456 0043

an ideal person to understand the needs of research groups and university spin-outs

Highlights:

Seeing a neat idea through from conception, to fabrication and measurement, to publication in a high profile journal
Driving the research activities and direction of a team at Imperial College based on my research proposal
Giving an invited talk at an international conference (NGS15) on my research and being a member of the programme committee
Working as the lead experimentalist on three successful EPSRC grants and collaborating with different research groups in the UK, Europe and US
Mentoring a talented PhD student

“Adam’s many years in post-doctoral research, and indeed leading a research team, make him an ideal person to understand the needs of research groups and university spin-outs. He is a great addition to our university sector group.”

John Lawrence, Patent Attorney & Senior Partner, Barker Brettell

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Sector specialisms:

Aerospace
Energy

Client business profile:

Universities, Spin-outs, SMEs, International Corporates.

Areas of expertise:

Experience in UK and European patent prosecution of applications across a range of different technologies including embolic coil delivery systems, CMOS imaging arrays and water purification systems; patent drafting.

Technical specialisms:

Solid state physics, electrical/optical devices and systems, measurements, sensors, graphene and other 2D materials-based technologies, nano-imaging, ultrafast spectroscopy, and energy harvesting; mechanical engineering.

Why did you want to become a patent attorney? What attracted you most to the profession? After working in academia for several years, I was on the lookout for a change – a new career with new challenges and no reliance on short term funding. After meeting with a number of patent attorneys to discuss the profession, I knew it was the career I wanted. What is the biggest change from your previous work? The biggest change has to be the fact that time is money. Ultimately you are providing a service that the client is paying for. What would your advice be to others looking to become a patent attorney? Training as a patent attorney is extremely interesting, varied and rewarding. But it is hard work, non-stop and challenging. Be prepared to feel useless for some time! What has been your biggest challenge to date in your training? Apart from studying for exams whilst working, it was meeting a deadline to draft and file several patent applications before an imminent public disclosure, following last minute instructions. It was a big team effort. What aspect of the job do you enjoy the most? I enjoy delving into the details of a patent application to understand how it works, what makes it unique, and applying that understanding to overcome difficult prior art. How do you problem solve? I start from the beginning. Focus on finding the source of the problem and how to overcome it, rather than being overwhelmed by end result, which at face value can often seem insurmountable. Which patent case have you found most interesting to date and why? Merrell Dow Pharmaceuticals vs Norton & Co Ltd: To me it embodies a classic case of achieving a result and publishing (or in this case patenting) it without full knowledge of the details. When Merrell Dow were later granted a patent for those details and tried to enforce it, it came back to bite them. What do you hope to achieve over the next 12 months? I hope for good results following my UK foundation exams and to keep making progress as a trainee. How would you describe your approach to work? Conscientious and a good team player. I like to understand “why” something is the way it is, rather than accept it as a given. How do you relax? Netflix and Hockey (not at the same time).

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