Marcus Sims

Partner

+44 (0)20 7430 7500

Salisbury Square House
8 Salisbury Square
London
EC4Y 8AP

My academic background is in chemistry, and my cases span a wide range of chemical technologies including catalysts and pharmaceuticals.

I have completed two extended secondments: one to a multinational consumer goods company, and one to a specialty chemicals and sustainable technologies company. Being immersed in two very different organisations and understanding how clients in these sectors think and operate has been a valuable experience. One of my career highlights has been supporting these companies in their product development by helping them assess the risks along the way to launch. Working as part of a team alongside people with different areas of expertise, such as marketing and R&D, and seeing everything come together and succeed, is highly satisfying.

I have extensive experience in IP due diligence and freedom to operate (FTO) matters, gained in part as a result of these client secondments. I have presented at international IP conferences to share my experience and advice on best practice in approaching freedom to operate assessments. My practice also includes drafting and prosecuting patent applications, as well as contentious proceedings including EPO Oppositions and Appeals.

Passing my professional examinations was a transformative moment for me, and I was pleased to receive three prizes from the Chartered Institute of Patent Attorneys for my performance in these examinations, and to have been recognised individually by leading legal directories.

Boult offers a friendly and highly collegiate atmosphere to work in. Being surrounded by other experts with different perspectives, who are willing to share their time with you is incredibly useful. Moreover, this provides our clients with access to a wide spectrum of expertise, enabling truly out-of-the-box thinking across a range of IP matters.

“Working as part of a team alongside people with different areas of expertise, such as marketing and R&D, and seeing everything come together and succeed, is highly satisfying.”

Recent experience

Providing global patent portfolio management for a UK-based pharmaceutical company.

Acting for a multinational specialty chemicals and sustainable technologies company in the successful defence of a European patent against a multi-opponent opposition.

Providing advice on patent filing strategy and freedom-to-operate to a growing biopharmaceutical company.

Qualifications

  • Registered UPC Representative
  • European Patent Attorney
  • Chartered Patent Attorney
  • Certificate in Intellectual Property Law, Queen Mary College, the University of London
  • MRes Chemical Biology, Imperial College London
  • MChem (Hons) Chemistry, University of Oxford

Testimonials and recognitions

  • Named as a key attorney, Legal 500, 2023
  • Notable star, Managing Intellectual property, IP stars, 2022
  • Key lawyer, Legal 500, 2021
  • Notable practitioner, IP Stars, 2021
  • Chartered Institute of Patent Attorneys prizes for performance in the 2015 UK patent finals examinations, including the Gill prize for achieving the highest overall mark across the four finals papers

Sectors

Chemicals

  • Catalysts
  • Dispersions and colloids
  • Lubricants
  • Polymers and plastics

Consumer goods and retail

  • Food and beverage
  • Household goods

Energy and green technologies

  • Clean air
  • Fuel cells and battery technology
  • Renewables and recycling

Biotechnology

  • Drug delivery
  • Personalised medicine/Disease biomarkers

Food and beverage

  • Beverages
  • Nutrition

Industrial manufacture and processing

  • Additive manufacturing

Materials

  • Advanced materials
  • Nanotechnology

Pharmaceuticals

  • Drug delivery
  • Generic Market Entry
  • Medicinal chemistry
  • Methods of Production and Synthesis
  • Personalised medicine/Disease biomarkers
  • Pharmaceutical Formulations
  • Polymorphs
  • Small molecule pharmaceuticals
  • Supplementary Protection Certificates (SPCs)

Publications and speaking events

  • Freedom-to-operate in practice (Management Forum, February 2021)
  • Introduction to freedom-to-operate (Royal Society of Chemistry – IP for Managers, September 2022)

Memberships

  • CIPA
  • EPI