University: The University of Cambridge
Degree: MA Natural Sciences
Intellectual property work can be divided into two main areas: hard and soft IP. ‘Hard’ IP relates mainly to patents, while ‘soft’ IP principally covers trademarks, copyright, design rights and passing off. IP barristers advise on issues such as infringement disputes, issues on validity of registered IP rights, and commercial agreements that deal either exclusively with IP rights or with IP rights in the wider context of larger commercial transactions.
With a background in science and an interest in complex areas of law and “difficult problems”, Michael Edenborough QC recalls having to decide between IP and tax after receiving a pupillage offer in both areas of law: “I made my decision based on the fact that the subject matter of IP disputes is inherently more interesting. You can barely walk a few metres without bumping into an IP right – for example the clothes we wear, the beverages we drink and the computers we use are all littered with IP rights – IP considerations are literally everywhere.”
Difficult points of law
Now, with over 25 years’ experience (and 10 years as a silk), Michael continues to find joy in his work as an IP barrister. He specialises in all aspects of IP law and practice, in particular “trade marks and passing-off, copyright and designs, patent and confidential information. I also deal with plant varieties, geographical indications, moral rights, database rights and data protection issues.” IP is very international in nature, with many cases having a multijurisdictional aspect, be it the validity of pan-EU rights or infringing activity in several countries.
He advises on “particularly difficult cases, either factually or legally” and he often pushes the boundaries of the law: “I do mainly technical advocacy before specialist tribunals, quite often on appeal, with relatively little trial work handling live witnesses.”
More recently, Michael has participated in an increased number of remote hearings as a result of coronavirus and the UK’s lockdown, which has seen the Bar move toward more online advocacy. However, Michael comments that “to some extent we are already familiar with remote hearings as it is not uncommon to have a witness overseas, for example, whom you must cross-examine via a translator on a video link over different time zones. I expect nearly everybody in chambers will have done this before. Coronavirus has resulted in the entire trial being conducted remotely, as opposed to just part of it.”
Throughout his career as a barrister Michael has found the complex nature of IP law to be crucial to his enjoyment: “I really enjoy appellate advocacy when I am pushing the boundaries of the law, as it is fun to address difficult questions from an informed court.”
Michael shares a particular highlight of his career to date: “I appeared as counsel for the lead party before the Grand Chamber – 13 judges – of the Court of Justice with 11 interveners. That case concerned the validity of millions of EU trade marks across the EU28. It was probably one of the most important trade mark cases in the past 20 years.”
Looking into the Bar’s future
Although the Bar has increasingly moved online, the financial hit of coronavirus remains a concern. Michael says: “Recruiting talented practitioners could be a real issue. Most sets are not that big or well-resourced. Therefore, they cannot offer that much by way of pupillage, nor can they offer a guaranteed income – partly due to the self-employed nature of the Bar. Serle Court is an exception to both of these general points as our pupillage award is generous and we guarantee a new tenant’s income for the first two years of practice. However, what this means is that a lot of indisputably good people, who would otherwise be good barristerial candidates are perfectly sensibly saying that the financial risk is too high. The junior Bar is commonly adversely affected by poor cash flow.” Extending this point, Michael emphasises the diversity issue at the Bar and the overdue change required to address this. Referencing the work that Serle Court is undertaking in this area Michael says: “We are not perfect, but we are travelling in the right direction and making a conscious effort to do so, for example, chambers has an Equality, Diversity and Wellbeing Committee that reviews all of chambers’ policies in order to promote these objectives.”
While covid-19 will continue to affect the Bar going forward, Michael explains that Brexit’s impact on IP law will also be interesting to watch: “An awful lot of our work is heavily influenced by the Court of Justice and the fact that we are a member of various EU-wide agreements that confer pan-EU rights. I currently have four instructions to the General Court this year, but come 11:00pm on the 31 December I will lose my rights of audience and those cases will need to be handed over to someone else in what will become the EU27.”
Don’t be a clone. It’s important that you have other qualities, as well as the standard intellectual ability and ability for hard work. For example, music, drama, sporting activities and charity work.
Be more than just a clone
To become a top barrister in IP law it is critical for candidates to have not only the “raw intellectual ability, as the law is complex and the technology can be very advanced”, but also “commercial awareness” – a skill that is essential for all aspiring lawyers – “coupled with a strategic oversight to advance clients’ cases in the best way possible”. Michael adds: “You must work hard and produce work that adds value.”
It is becoming increasingly important for budding barristers to show why and how they can add value, especially in light of the current economic climate. Michael says: “It is a brutal but good discipline to sit down and consider whether, for example, you have added real substantive value to the case – this might be by thinking of the killer point, or amending a sentence that materially adds to the document’s clarity or alters its meaning in a way that is favourable to your client – or whether you have just added some questionable commas (as one of my less illustrious leaders once did).”
Meanwhile, having an interesting CV is also crucial: “Don’t be a clone. It’s important that you have other qualities, as well as the standard intellectual ability and ability for hard work. For example, music, drama, sporting activities and charity work.” That said, Michael explains that is not enough simply to express an interest in these activities – budding barristers must expand their interests further than just a casual enjoyment. “For example, there are people in chambers who are very highly skilled chefs who are as good as those on MasterChef. So, if you have an interest in reading, it’s important not just to state that you like reading books but that you attend a book club where you criticise books each month.”
Charity work is highly valued, so long as it is genuine, as it shows a sense of moral purpose, which some sets like Serle Court consider important. Michael, himself, nearly always has a least one pro bono publico case on the go at any one time. Finally, before budding barristers set out on their path to pupillage in an IP set, they must be able to identify why they want to be a barrister and “why IP in particular.” To get to this stage, Michael encourages candidates to “gain relevant experience (both negative and positive) to help justify the answers to why they want to be a barrister and why IP law”.