Heather Scott > Gill Jennings & Every LLP > London, England > Lawyer Profile

Heather works with a wide range of technologies in the physics, engineering and materials science fields, drafting and prosecuting patents for everything from semiconductor devices to DNA spectroscopy and all sorts in between. One of her particular specialisms is anti-counterfeiting technology for banknotes and other secure documents, having worked closely with leading banknote supplier De La Rue for over 15 years. Innovation is at the heart of De La Rue’s business and Heather leads a team within GJE which grows, maintains and defends a very active IP portfolio currently including some 1500 patents and patent applications across over 70 countries. This has equipped Heather with deep expertise in cost-effective international filing strategies and tactics for dealing with the many and varied issues encountered at patent offices around the world – such as the complex Australian patent opposition process which inevitably requires expert evidence.

Back in Europe, Heather has established herself as a go-to attorney for handling EPO oppositions, with an extremely high success rate whether attacking or defending. In the last 10 years, she has been involved with over 60 opposition cases and of those has won all but two hearings for her clients. Many of her cases involve defending against multiple opponents, and she has also dealt with several instances of prior use evidenced primarily by witnesses. A recent stand-out case was the culmination of a 10-year attack on one of De La Rue’s key patents, protecting one of their most valuable security features which is used on many banknote denominations around the world. Heather led the defence against three opponents, copious prior art citations, prior use and third party observations, ultimately succeeding in having the patent maintained by the Board of Appeal with sufficient breadth to continue protecting the product – and to ensure royalty streams worth many millions of pounds.

Alongside her client-facing work, Heather places great importance on the need for inclusivity and to promote diversity within the IP profession at all levels. She currently leads GJE’s diversity and inclusion team and has recently spear-headed the introduction of a new flexible working policy designed to support this. A particular passion-project of hers is to facilitate remote working, having spent 12 months travelling around the world in 2016/7 whilst continuing her role at GJE throughout and reporting back via a monthly column in the industry journal. She has spoken on the topic at various events organised by IP Inclusive and continues to draw on the experience to apply a flexible and adaptable approach to all aspects of the job.