• Bio: Dr. Bobby Mukherjee is Chief Counsel in Group Intellectual Property for global technology firm, BAE Systems.
  • Role: Chief Counsel in Group Intellectual Property

Bobby Mukherjee

My studies

Prior to joining the profession in 1995, I spent four years at Cambridge University, including one year of experimental research work at the Interdisciplinary Centre of Superconductivity at the Cavendish Laboratory, gaining BA and MA Degrees in the process.

I spent four years studying for my doctorate degree at Oxford, where I carried out research into the excitation dynamics of a variety of magnetic materials and high temperature superconducting materials, using techniques such as inelastic neutron scattering and Raman light scattering.

I was able to conduct research at different sites in Europe and the USA during the course of my research. During that time, I attended and spoke at various international conferences and I published on the dynamics of superconductors in various scientific journals including Physical Review B and Phys Rev Letters.

Responsibilities

Currently, I am the Global Head (Chief Counsel) of Intellectual Property and Technology Law at BAE Systems plc. I have been in the role for nearly two years, and I have to travel from time to time to the different ‘home markets’ where we are seeking to build indigenous capability.

I actively lobby on behalf of the company and industry plc, taking into account developments in government policy, case law and legislation – for example, I represent the company on the Intellectual Property Federation and on the International Chamber of Commerce.

I am ultimately responsible for devising and driving through the Group intellectual property strategy in support of the company’s home market strategy and its industrialisation capabilities.

My team is responsible for the effective capture, protection, exploitation and enforcement of the Group’s valuable intellectual property assets. I am the budget holder for the function. I particularly enjoy leading and motivating my team of attorneys/solicitors and support staff, with the vision to be a ‘world class’ leading in-house function, which provides business-focused legal advice and which delivers global expertise in support of the company strategy.

To realise this vision, the mission of my team is to build an inseparable relationship with the business by understanding its needs and delivering valuable legal solutions that enhance and protect the value of the company.

In this role, I am continuously refocusing the function toward the future priority needs of our customers with an absolute commitment to total performance. This is about every aspect of the way we do business – namely, customer focus, financial performance, supporting programme/project execution, and responsible behaviour. Our core values are Trusted, Innovative and Bold.

A key element to that is that we learn to constructively challenge and take the initiative so that we operate with tenacity and resolve, accept challenges and manage risk, and set ourselves stretching goals.

To my mind, good intellectual property attorneys should seek to develop strong strategic commercial awareness and be intellectually curious. They should also be strong communicators so as to forge close links with the business, and possess good analytical skills with an eye for detail, when necessary.

Why I became a Patent Attorney

I wanted to join the patent attorney profession, because I felt this would provide me with an exciting development opportunity to apply and develop my technological skills and knowledge effectively in a new, challenging and dynamic commercial and legal environment.

Furthermore, I wanted to extend my horizons beyond the academic sphere. So, I joined a well-known private practice firm of patent and trade mark attorneys in London as a trainee, where I dealt mainly with mechanical and electronics-based inventions. During my time in private practice, I got heavily involved in UK patent litigation and in European patent opposition work. I was fortunate enough at that time to have a superb mentor and boss, and I feel this aspect is critically important to securing attorney qualification and to get the necessary skills-based competencies.

Before joining BAE Systems in 2001, I qualified as a European Patent Attorney in 2000. I decided to join BAE Systems because I wanted to work as an attorney in industry, in-house in a company which was well known to benefit from a remarkably broad and diverse business base, taking its strength from a wide range of programme activities.

Gaining new skills

At BAE Systems, I gained valuable commercial experience working with different businesses and managing the company’s central research laboratory intellectual property portfolio, covering an exciting range of cutting-edge technologies. I gained valuable experience in advising on technology-related agreements and in attending to pan-company issues like open source software, IP terms in employment contracts, and IP and taxation for businesses.

I qualified whilst on the job as a Chartered UK Patent Attorney in 2004, and I was subsequently promoted to Senior Counsel. If only to keep one’s career options open, I believe it is important to get both sets of patent attorney qualification (i.e. the UK and European qualification).

In my job, I strongly feel I am making a positive contribution/difference to business. I would recommend this kind of challenging, deeply satisfying work to anyone who is genuinely interested in and stimulated by technological, legal and commercial developments in the marketplace, and who wants to make a positive difference/contribution with regard to business and innovation.

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