With 20 years of experience, Matthew is valued for his strategic drafting and prosecution expertise, especially where there is an interplay between the US and Europe. Matthew is well placed to advise clients on the Unified Patent Court (UPC).
Matthew specialises in patenting complex devices, often at the cross-over of technical disciplines. A chemist by qualification, his experience is rich and diverse - he understands materials’ physical, optical and electrical properties at the molecular / nano-functional level, and how they are used and electronically controlled in a commercial device.
Examples include: quantum dots, microfluidics, electrowetting, display device architectures, AR / VR headset optics, fluid diagnostic and point-of-care devices incl. lab on a chip, pixel design incl. materials and optics (e.g. LCD, OLED, QLED, nanoLED), pixel matrix driving schemes, device control systems (software and hardware), medical devices incl. surgical guides and implants, photonic circuits, gas sensors, semiconductors, microfabrication techniques.
Matthew’s approach is dynamic, practical and commercial. As the first trainee (the third employee!) at EIP, he trained primarily under Jerome Spaargaren (founder of EIP) and Derk Visser (author of the leading text book “Visser's Annotated European Patent Convention”). Matthew thrives on the energy of a growing and successful firm, and enjoys working directly with innovative clients, understanding their business, sharing their enthusiasm, and getting results.
Experience
- Drafting and prosecuting a substantial international patent portfolio (ultimately ~1,000 assets) for Liquavista, a spin-out of Koninklijke Philips N.V. Based on its quality, the portfolio was ultimately acquired by Amazon
- One of only two client-recommended European attorneys for a top 10 Fortune 500 company
- Advising world quantum dot leader Nanosys on patent strategy and managing drafting / prosecution of their international patent portfolio (>600 assets), including due diligence in run up to acquisition by Shoei Chemical, Inc. (link)
- Drafting numerous patent applications for direct US filing and international prosecution (incl. US and Europe)
- High success rate from examiner interviews (US and Europe)
- Infringement research including revenue analytics and claim charting
- Strategic prosecution for coordinated multinational (GB / DE and US) litigation
- High value oppositions and divisionals
- Advising small / medium businesses on IP creation and building a patent portfolio
- Invention harvesting and educating inventors on what can be patented
- Patent analytics / due diligence for patent acquisition
- Prosecution for UK Patent Box claim, incl. coordinating with HMRC guidance and auditor
- IP ownership matters, including complex assignment projects
Published articles
- June 2022
EIP Talks, The Unified Patent Court (UPC) – Keeping it Simple and Practical (link) - April 2022
EIP Talks, Derk Visser’s insights: 30 years of studying the #EuropeanPatentConvention (link) - 10 December 2019
JIPLP, There is no hope in inventive step (link) - 12 October 2017
JIPLP, A hope to succeed - are the EPO Guidelines misleading? (link) - August 2011
IP Counselor, Fighting Counterfeits on the European Frontline - March 2011
EPI Information, Divisionals - Peering into the Mist (link)
Education
-
2003 — 2004
Certificate in Intellectual Property Law, Queen Mary, University of London -
1998 — 2001
BSc Chemistry, University of Bristol
Career history
- 2013 — present
Partner, EIP - 2007 — 2013
Senior Associate, EIP - 2002 — 2007
Associate, EIP
Speaking engagements
- 2 June 2011
London Business School seminar, Managing IP from start-up to exit
Specialisms
Digital
- Consumer electronics
- Digital health
- Electromechanical systems
- Photonics and optics
- Quantum computing
- Quantum sensors
- Semiconductors
Dynamics
- Electromechanical systems
Elements
- Electrochemistry
- Materials science
- Polymers
- Semiconductors
HealthTech
- Digital health
- Medical devices
- Personalised healthcare