Mark Roberts

Mark Roberts EPA, CPA

Partner

Technology and Sector Specialisms

Medical Devices and TechnologyEngineeringIT and Software

Professional Qualifications

European Patent Attorney, UK Chartered Patent Attorney

Membership of Professional Bodies

Fellow of the Chartered Institute of Patent Attorneys (CIPA), Member of the Institute of Professional Representatives before the European Patent Office (EPI), Affiliate membership of the Institute of Physics and Engineering in Medicine (IPEM), Member of the OBN Medtech Advisory Board

Education

University of Oxford, Masters Degree in Engineering Science

The Legal 500 identifies Mark as a recommended individual who is always ready with useful advice and creative solutions. Managing Intellectual Property has gathered client opinions which state Mark is logical, responsive and appropriate with respect to his dealings with the patent office and the client. He is very good at explaining issues that are not that familiar to US attorneys. We always value his opinion. IAM Patent 1000: The World's Leading Patent Practitioners identifies Mark as a recommended individual and notes In the medical device space, clients would struggle to find anyone more technically fluent. The Legal 500 notes that Mark consistently exhibits a profound understanding in the area of medical devices and machines.

Mark handles a broad spectrum of work originating from the UK and USA, including drafting, filing and prosecuting patent applications as well as advising on third party patents as part of due diligence and freedom to operate exercises. He has a special focus on medical devices and medical machines and acts for a number of medical technology clients. He visits patent applicants and attorneys regularly in the USA.

Mark is extremely experienced in contentious proceedings before the European Patent Office and usually attends several Opposition Division hearings each year, as well as attending a significant number of Examining Division and Board of Appeal hearings. Mark has attended over 100 EPO hearings and has acted in a number of commercially important cases, both defending his clients' patents and attacking patents owned by competitors.

Mark has detailed knowledge of the intricacies of European prosecution and is also responsible within J A Kemp for monitoring changes in European patent law.

As well as European and British patent work, Mark has substantial experience in instructing patent attorneys abroad to obtain patent protection for clients there, especially in the USA, Japan, Korea and China. Mark is experienced in drafting, filing and prosecuting families of applications abroad and is able to coordinate patent filing programmes in an efficient and cost-effective manner.

Mark joined J AKemp in 1997 and became a partner in 2007.

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