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  • Higher Education group
• What we do
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The Higher Education practice group, headed by Rachel Wallis, provides specialist intellectual property advice and support to clients from Higher Education Institutes (HEIs). In particular, the group works closely with Technology Transfer departments within HEIs, as well as with spin-out companies.

We advise our clients on obtaining patent, design and trade mark protection and provide advice on freedom to operate, licensing and assignments. We also have experience in due diligence and inventor disputes.

We understand that HEIs face different challenges to other innovators. We appreciate that inventors in the HEI sector may not be driven by the same factors as those in other sectors. For example, the pressure to publish details of an invention is likely to be much greater for those working in a HEI. Additionally, many inventions made within HEIs are at an early stage, but have to be protected before further development to fund the additional work required.

We have experience in developing appropriate patenting strategies to take these needs into account. We also realise that HEIs may have different budgeting requirements to other clients and we are happy to work closely with those managing the IP portfolio to arrange a billing procedure that meets those requirements.

Our expertise

The group's members have wide and diverse technical backgrounds, reflecting the variety of inventions produced by HEIs. The group includes members of our Electronics, Computing & Physics, Advanced Engineering, and Life Sciences & Chemistry teams.

Our experience

We offer a number of services that some of our HEI clients find especially useful. We carry out regular portfolio reviews to identify areas which could be strengthened and where cost savings may be made. We offer IP surgeries, during which we will provide a preliminary opinion on patentability, based on information provided by the inventor. We also provide courses and lectures on IP which many new entrants to the Technology Transfer profession and inventors find helpful.

Wider perspectives

Several members of the group have on-going involvement with UNICO, the UK's leading representative body of professionals, set up to realise the potential of university and public sector research through commercialisation. Apart from attendance at UNICO conferences and forums, members of the team also support various universities' educational programmes by lecturing on IP. In addition, we run in-house IP primer courses to further understanding of IP matters among technology transfer departments. Such interaction ensures we understand this pivotal sector and the challenges it faces.

Group members

Karl Barnfather - his technical background is in physics and he has a doctorate relating to solid state physics studies using nuclear magnetic resonance and neutron scattering techniques. He has worked with a number of spin-outs from universities, the companies dealing with medical devices, infrared devices and nanotechnologies amongst others. He has also resolved inventor disputes within academic departments and helped to create best practice guidelines to avoid such problems in the future.

Russell Barton - is also part of the Electronics, Computers and Physics team. He has drafted and prosecuted cases for a variety of universities in technologies such as fibre optics and lasers, sensors, virtual reality display, thermodynamics, optical antennas and X-ray imaging. Russell regularly attends UNICO.

Dave Croston - has a degree in Mechanical Engineering and has particular experience of vehicle and occupant safety systems, exhaust systems, packaging and agricultural machinery. Dave was one of the first attorneys to attain a Masters degree in Intellectual Property Litigation and he is one of fewer than a hundred Patent Attorney Litigators in the UK. Dave was the firm's UNICO representative for around ten years and helped to set up the firm's university practice.

John Dean - has over twenty years' experience of working with universities and spin-out companies. His background is in microbiology. He particularly enjoys European Patent Office Opposition and Appeal cases and has a significant practice in that area in biotechnology-related oppositions as well as opposition and appeal cases in other technical areas. John set up the firm's patent primer course to provide basic IP training to Technology Transfer managers.

Rachel Wallis - has a degree in Veterinary Medicine and handles work in the Life Sciences area. She works closely with a number of universities and has drafted and prosecuted cases relating to immunology, especially antibody technology, neurology and medical devices. Rachel regularly attends the UNICO conference. She has lectured on IP to undergraduates at a number of universities and also provides update talks to Technology Transfer departments.

Joanna Westwood - read chemistry at the University of Exeter and was awarded a Ph.D. in co-ordination chemistry from the same university. She is a member of the Royal Society of Chemistry and the Society of the Chemical Industry. Joanna specialises in the handling of general chemical, pharmaceutical and healthcare inventions. She has particular expertise in the area of formulation chemistry having worked extensively with clients in the FMCG industries. At present she is gaining a valuable insight into the technology transfer profession, by working part-time in the Technology Transfer Office of one of the Midlands region's major universities.