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Barristers' practice areas

Intellectual property

Michael Edenborough QC

Serle Court

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 that raise “difficult problems”, Michael Edenborough QC recalls having to decide between IP and tax after receiving pupillage offers 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 (eg, copyright/designs, trademarks and patents) – IP considerations are literally  everywhere.”

Difficult points of law

Now, with more than 25 years’ experience (and 10 years as a silk), Michael continues to enjoy his work as an IP barrister. He deals with all aspects of IP law and practice: “trade marks and passing-off, copyright and designs, patents 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 (eg, infringing activities 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 the covid-19 pandemic, which has seen the Bar move towards more online advocacy. However, Michael comments that “To some  extent the IP bar was already familiar with remote hearings as it is not uncommon to have a witness overseas, whom you must cross-examine via a translator on a video link. I expect nearly everybody in chambers will have done this before. The lockdown regime 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 satisfying to address difficult questions from an informed court.”

It is a brutal, but good, discipline to sit down and consider whether you have added substantive value to the case.

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.” A recent high-profile case involved Colin the Caterpillar, where Michael is part of the #FreeCuthbert team: “It is rare for a legal case to be the subject of cartoons in both the Sunday Times and Private Eye!”

Looking into the Bar’s future

Michael says: “Recruiting talented practitioners is central to a chambers’ success. Most sets are not that big or well-resourced. Therefore, they cannot offer that much by way of pupillage award, 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, a lot of indisputably good people, who would otherwise be good barristerial candidates, are perfectly sensibly saying that the financial risk is too high as the junior Bar is commonly adversely affected by poor cash flow.” Extending this point, Michael emphasises the diversity issues at the Bar and the overdue changes required to address them. 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. So chambers has an Equality, Diversity and Wellbeing Committee that reviews all of chambers’ policies in order to promote these objectives in every aspect of chambers’ management. Recently, we appointed Elizabeth Jones QC as head of chambers.”

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: “A lot of our work was heavily influenced (and still is to a great degree) by the Court of Justice. I currently have four instructions to the General Court, but when those cases come to an end, along with the other current cases in which UK lawyers are appearing, then the influence of the UK upon EU jurisprudence will end. That will affect the evolution of the law in both the UK and the EU.

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 the 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 what they can bring to a case. Michael says: “It is a brutal, but good, discipline to sit down and consider whether you have added 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 altered the submissions in a way that anticipates and neutralises a potential, but as yet inchoate, attack – 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 required intellectual ability and capability 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: “If you have an interest in reading, it’s important not just to state that you like reading books but that, for example, 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 setting out on the path to pupillage in an IP set, a prospective pupil 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 their answers to those two questions.”