Legal Matters -Jason Boakes, Partner, Secerna

October 2019

Legal Matters -Jason Boakes, Partner, Secerna

Jason Boakes is a founding partner of Secerna LLP. With offices in York and Newcastle, the firm helps UK-based and global companies defend, enforce and protect their intellectual assets.

What’s the biggest development you’ve seen in the legal world during your career?

The greatest development I’ve seen is the availability of information. I started my career in the early 90s, which meant no internet, PCs or laptops. Patent attorneys’ practice at the crossroads where technology and the law meet and, when I was a trainee, finding out about new technology meant a visit to the British Library. These days, so much information is available at the click of a button, which has transformed what we can do and how quickly we can do it.

What law would you like to see changed?

There are a few aspects of US patent law I would change, which can make it unduly costly to secure patent protection for our clients in that jurisdiction. In UK law, a few years ago the UK Supreme Court made a significant decision in a patent law terms of case that I believe hinders rather than helps people advising businesses on UK patent infringement. Having to consider the so-called ‘doctrine of equivalents’ makes it more difficult for those of us advising on contentious or possibly contentious matters to do so in a cost-effective manner.

What is the most exciting work you’ve ever done?

I’ve been fortunate to work on cases associated with technology that has truly changed the world. Professionally, nothing is more exciting than being at the start of the patenting process when the inventors involved are world-leading and explaining for the first time how they see a new invention solving a problem. As a patent attorney in that position you may be only the second or third person in history to know about how things will be in the future.

Who in the legal world do you most admire?

Partners in patent attorney firms need to be able to provide expertise in both scientific and legal fields. They need to understand the state of the art in the technical fields in which they practice and current patent law in multiple jurisdictions. They need to be able to manage people effectively and to develop and maintain long lasting client relationships. Not all attorneys are capable of excellence in all of these disciplines, and I admire those rare people who are.

What advice would you give someone starting out in the profession?

Finding a graduate role as a trainee patent attorney is a challenge. I see hundreds of CVs from graduates with first class or 2:1 degrees from notable universities for the small number of graduate jobs we have open each year, and it’s the same across the profession. My advice would be to consider a Masters or PhD in a subject likely to be of commercial interest, as it will give you transferable knowledge and skills.

Originally published in the Yorkshire Post on the 23rd October 2019

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