Murgitroyd ‘the leading IP consolidator’ with latest acquisition TLIP
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Director, Patents
Dr. Alex Turnbull joined Murgitroyd in December 2022 as part of the acquisition of Turnbull Lynch Intellectual Property by Murgitroyd. Alex was a founder and Director at TLIP, where he focused on patent prosecution, strategic patent counseling, and IP due diligence in a wide range of technical fields, including computer software, optoelectronics, materials, bio-engineering, inkjet and 3D printing.
Alex studied a BSc (hons) in Astrophysics at the University of Hertfordshire which included the award of an Erasmus scholarship to study a year of Applied Physics at Dublin City University. Following his degree he was awarded a Ph.D in Astrophysics, where he investigated the evolution of elliptical shell galaxies using observational astronomy and N-body computer modelling. During his Ph.D, Alex spent many nights using optical instruments at the Isaac Newton Group of Telescopes at Roque de los Muchachos Observatory on La Palma in the Canary Islands. He was one of the first wave of astrophysicists using Sun Ultra parallel workstations to carry out complex N-body computer modelling as the team sought to recreate the observed galaxy morphology by colliding galaxies together in code. Fortran and NAG library routines being the software of choice.
As a patent attorney, Alex enjoys drafting original patent applications with passionate inventors and IP managers pushing for commercial context.
Alex has a particular interest in freedom to operate issues and has considerable experience in managing complex new product searches as well as providing both ad-hoc and full infringement and validity opinions together with advice on workarounds and strategies to minimise risk. Alex is familiar with briefing UK counsel and regularly appoints counsel to advise on contentious issues.
As part of a clients’ acquisitions of businesses with patent portfolios or purchase of patent portfolios outright, Alex has undertaken complex due diligence analysis into company intellectual property assets and completed multi-jurisdictional assignment of patent rights. The total value of deals for which Alex has been directly involved in due-diligence activities is currently in excess of $200 million rising to $32 billion as a result of Softbank’s acquisition of Arm, for which Alex and his team were responsible for the Arm Internet of Things patent portfolio at the time.
Alex can offer strategic IP counselling in a role of Patent Portfolio Manager. With experience of licensing and litigation, Alex can advise on major areas of technology or marketplace including on topics such as:
1. Having a strategic understanding (and maintaining knowledge up-to-date) of the technology/marketplace and cooperating with product management, drafting/prosecution attorneys and licensing attorneys/executives at all stages;
2. Reviewing relevant invention disclosures at a high level to determine value for defence and licensing use and ranking accordingly;
3. Following progress of patent applications in the prosecution pipeline with reference to changes in marketplace/technology and revisiting ranking as necessary to determine effort in prosecution;
4. Providing lists of selected patents for potential licensing, and educating licensing attorneys/executives on the specifics to enable them to develop the proof packages for presentation to licensing targets;
5. Periodically reviewing granted portfolio v current needs/potential for licensing and determining any “culling” in light of renewal costs.
Alex is based in our Cambridge Office.