New Zealand: James & Wells welcome on board biotechnology bright spark as a patent attorney
Last Updated: 27 March 2014

This month, James & Wells welcomed Eleanor Gilbert to the Hamilton Patents team as she takes on the challenge of becoming a patent attorney.

Hailing from Christchurch, Eleanor has had frontline research experience with the likes of Plant & Food, (working on Apomixis in Heiracium) and AgResearch, (working on Endophytes).

Eleanor holds a Bachelor of Laws and a Bachelor of Applied Science majoring in molecular biotechnology.

Stumbling on new and improved methods, this biotech bright spark loves to experiment with cooking. Delving into the fantasy realm of books or jogging are just some of the pastime ventures Eleanor enjoys.

Eleanor will work alongside Jason Tuck to provide services to clients on IP1 issues – particularly searching2 to advise on patentability3 and freedom to operate4 issues, drafting patent5 specifications for client inventions, and managing the prosecution6 of patent applications.


1Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

2A review of patent databases to look for relevant published patent specifications. Typically the search will be performed with respect to particular jurisdictions. Patent searching can be carried out for a number of reasons. The most common reason is to determine whether a party has freedom to operate in particular countries, in which case the search will only be concerned with patent applications and granted patents which remain in force in those countries. Patent searching may also be conducted to identify relevant prior art which can be used to support a patent opposition/revocation, or by an examiner during examination of a patent application.

3The extent to which an invention is able to satisfy the legal requirements to be the subject of a granted patent. This is dependent on those aspects of the invention for which protection is sought, as defined by the claims of a patent application. In general, the claims of a patent must include at least one feature that is novel, involves an inventive step and is useful to be patentable. A patent search can be carried out to assess whether an invention is patentable in view of known technology.

4Typically used in respect of a search performed on granted patents or pending patent applications to determine if a product or process infringes any of the claims. If the search determines that there are no relevant granted patents then someone may be said to have freedom to operate (ie to operate a business making and selling the product or using the process). Pending patent applications may affect freedom to operate in the future if granted. Note that the search may be expanded to include registered designs.

5A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.

6The carrying out of a legal proceeding. The prosecution of a patent application refers to the process of filing the documents constituting the application and the process of examination of the application.

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