BB S212739

David Pearce

Partner
UK & European Patent Attorney
UPC Representative

Based in Birmingham

Tel: +44 (0)121 456 0342

Overview

David is a highly experienced partner and UK & European patent attorney working with a wide range of clients from individuals and small companies through to large multinationals. Following an academic background in engineering science and several years research and development work in academia and industry, he entered the patent profession in 2004 partly as a result of inventing and developing a piezoelectric actuator and becoming more interested in the legal rather than practical side of inventing.

His current work covers mechanical, electrical, electronic and computer-implemented inventions, with applications relating to aircraft, medical devices, gas turbine engines, integrated circuit fabrication, RF communication, agricultural machinery and high-power electronics to name just a few.

As well as being highly experienced in drafting and prosecution work at both the UK IPO and EPO, David has handled numerous opposition cases at the EPO, both in attacking and defending roles, together with several appeal cases at the EPO.

Experience

  • Successfully defending a number of European patents for major international companies against opposition attacks
  • Pushing through UK applications for clients quickly and efficiently, getting applications granted in less than 12 months when required
  • A prolific writer on a wide range of subjects relating to IP in general, particularly patents in the UK and Europe. He was an early contributor to the popular IPKat blog – starting in 2006 – and contributed a chapter on software patenting in Europe to the IPKat’s recently published 20-year anniversary book
  • A key contributor to online, and in-person, discussions relating to the EPO Enlarged Board decisions in G 3/08 on software patenting and G 1/15 on partial priority, in both cases proposing answers that turned out to be in line with the Board’s decision
  • Is a widely followed, and highly regarded, expert on patent issues relating to Bitcoin and blockchain technology, and has been involved in three European opposition cases relating to contentious European patents on concepts relating to Bitcoin
  • A member of the pan-European organisation UNION-IP since 2016 and is currently the vice president of the Patents Commission
  • Writing monthly summaries of UK IPO decisions for the CIPA Journal since 2007 and a contributor to the CIPA Guide to the Patents Act (the “Black Book”)

“We’ve had some difficult cases and a lot of attorneys would just tell us what they thought we should do. David Pearce does an excellent job. He dug in and took responsibility. He was creative – taking the bull by the horns and adopting a real ‘let’s get this done’ attitude. David’s emails give us real analysis. We really felt he knew what he was doing and that he really understood what we needed. A lot of foreign attorneys will tell you what to do, but not why you should do it. David always explains why.”

Expertise

  • Mechanical Engineering
  • Oppositions and Appeals
  • Patent Drafting and Prosecution
  • Patent Portfolio Planning & Management
  • Patent Validity & Freedom to Operate
  • Patents
  • Physics & Materials
  • Unitary Patent

Sectors

  • Aerospace
  • Computing, AI & Software
  • Energy
  • Life Sciences
  • MedTech
  • Universities

Technical Specialisms

  • Advanced engineering
  • Computer modelling
  • Computers and electronics
  • Electronics and semiconductors
  • Fintech
  • Mechanical engineering
  • Medical devices
  • Security and cryptography

Credentials

  • CPA
  • EPA
  • UPC Representative
  • MEng (Oxon) Electronic and Structural Materials Engineering
  • MSc Intellectual Property
  • PhD Management of Intellectual Property

Education

  • University of Birmingham and University of Oxford

Insights from David…

Referral to the EPO Enlarged Board on description amendments
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Referral to the EPO Enlarged Board on description amendments

An intention to assign IP is not enough
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An intention to assign IP is not enough

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