Morag Macdonald of Bird & Bird in the UK talks about her career in IP law, two interesting client matters in the past 18 months, and life outside work.
Career in IP law
When did you decide to pursue a career in law?
When I changed from mathematics and physics to law at university.
Why did you choose IP law?
Because then I could carry on with my interest in science and technology whilst following a career in law.
How did you get into the IP profession? Did you experience significant challenges?
I got a pupillage in IP chambers but could not get tenancy and therefore interviewed with a series of law firms with specialist IP departments. Only one of the firms with whom I interviewed was willing to offer me a job.
Patent was a very heavily male-dominated part of the profession at the time. Back then you got questions in interview about things such as whether you were going to leave to have a family. And then it was apparent that when you said no, the interviewers did not believe you.
Why and/or how did you join your current firm?
Bird & Bird were the only ones with whom I interviewed who offered me a job.
What do you enjoy most about working for your firm?
Being surrounded by a whole host of other IP lawyers in all sorts of countries and working with them on a regular basis.
What makes your role/work fulfilling? Why do you enjoy IP work?
You never know what you are going to do each day. There is always tremendous variety, and you encounter cutting-edge technology and issues all the time. It is intellectually challenging and often fascinating. You never stop learning.
What career advice would you give to women interested in joining the IP profession and getting to your position?
Get the best possible training you can. Find a mentor, not necessarily in your organisation. There are a lot of different career paths in IP, and you need to have a good mentor that you can discuss this with to find what fits you best. Do not be afraid to ask senior women in the profession for a chat. They do not want you to have the difficulties they experienced in advancing your career.
Client work
What is your most memorable piece of work as an IP practitioner?
No one stands out. Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA was the most technically challenging patent case I have done — it involved resolving Maxwell’s equations. Chocosuisse Union Des Fabricants Suisses De Chocolat v Cadbury (a passing off action about Swiss chocolate) was the most fascinating trade mark case and it involved a lot of chocolate — what’s not to like!
Could you briefly share two interesting client matters you handled within the past 18 months?
I did a patent infringement case for Fisher & Paykel, a medical device company. The patent covered breathing circuits for use with ventilators (the tubes between the ventilator and the patient) which was quite topical.
The key to the invention was that it is important to humidify and heat the air for a patient on a ventilator, but the water vapour will dangerously condense out in the return tube. The patent was for such a tube having a wall that allowed water, but not gas, through to stop water doing this condensing out.
Another matter I worked on involved drafting all forms of IP legislation. It was fascinating because you need to think about each IP right and surrounding IPO mechanisms from first principle and look at areas where it could be modernised or improved upon. You also need to see how this will work in conjunction with the relevant court system, and this makes you very conscious of how IP rights and enforcement through the courts are intimately related.
Did you find any part of the work you have just described uniquely challenging? If so, what were the challenges and how did you overcome them?
The Fisher & Paykel trial was fully remote with our expert witness based in California. The sheer logistics of making sure that everyone has the necessary electronic and hard copy documents and that cross-examination can be sensibly conducted not only on video but with an 8-hour time difference required significant pre-planning.
What qualities and skills are required to do your job?
Good project management and people skills. You also need a lot of experience, especially when you are doing multi-jurisdictional litigation. It is also important to be able to develop a rapport with scientists and engineers so that you can fully understand their area of specialism.
What key principles do you follow or use to deliver the best possible outcome(s) for a client?
You always need to understand the client’s commercial goals and focus on the best way of achieving those.
I also think you need to be honest and clear with a client about the merits of their case, even though it may well not be what they want to hear.
I will always fight tooth and nail for them, but my client’s commercial goals and achieving them must always come first.
What if things don’t go or aren’t going according to plan, what keeps you going or motivated?
Things always go wrong in litigation, that’s the nature of the game. The thing is to find a way through. There is such a buzz if you succeed in doing so.
Life outside work
What is your favourite food and sport?
Good French food and wine. Sport has never been one of my strong points.
What is your favourite hobby?
People watching.
Could you share a fun and/or interesting fact about you?
I was partially sighted since birth until four years ago when I had an operation on both my eyes. Now I can even see to drive a car — which really was not an option before.
About Morag Macdonald
Morag Macdonald is an IP litigator who specialises in cross-border strategies and litigation. She became a partner in Bird & Bird in 1989 and serves as the co-head of its international IP practice. Read more about Macdonald here.
