Our top-ranked patent team is recognised as being expert in complex patent disputes and strategic issues, often with an international and cross-border dimension.
We regularly handle important national and international disputes for a diverse range of clients.
Those for whom we act range from some of the world’s leading technology and industrial corporations to smaller, more local businesses (many of which have very exciting high tech products and which are growing exceedingly rapidly).
We have expertise in a wide range of technical disciplines, ranging from advanced technologies (such as those in the areas of very sophisticated materials science and advanced healthcare treatments) to those more associated with more basic physical and chemical properties. We are frequently involved in detailed issues arising from and during research and development, manufacturing and engineering activities – including for example measurement and other analysis.
Products and industries we are often involved with include medical devices and advanced healthcare products, chemicals, pharmaceuticals and other medical treatments, biometrics, leisure and sports, automotive engineering, consumer electronics, financial services, printing, satellite broadcasting, telecommunications and television.
Because many of our clients have broad international interests, when dealing with their needs we often work with leading intellectual property specialists around the world – and, in what we believe to be a recognition of our standing, many of these specialists ask us to act for them and their clients.
However, the expertise of the team does not simply extend to patent related disputes. It is often asked to advise on other matters such as strategy (ranging from basic patent strategy through to an overall intellectual property strategy of a client, or an analysis of that of its competitors) and other technology related issues – including for example the protection (and prevention of the misuse of) technology related confidential information such as manufacturing know-how and designs.
Currently significant attention is being focussed on the strategic and practical implications of both the Patent Box and the European Unitary Patent and Unified Patents Court.
Our expertise includes:
- patent litigation, including claims for or relating to patent infringement, revocation of patents, declarations of non-infringement of patents, relief for groundless ‘threats’ of infringement proceedings, patent amendment, patent ownership/entitlement and employee compensation. Where the patent litigation has been multi-jurisdictional, in addition to conducting the UK litigation, managing and co-ordinating the litigation in all the jurisdictions
- patent licensing and royalty disputes
- patent term extension requests
- opposition proceedings in the UK and European Patent Offices
- obtaining pre-emptive relief and advising on other strategies where proceedings are, or may be, brought abroad, particularly in the EU and in the USA (especially where patent trolls are involved), including instituting inter partes reviews of patents at the USPTO
- the practical and strategic implications of the European Unified Patent Court
- the interface between patent monopolies and regulatory law (especially in relation to healthcare and life science), antitrust/competition law, data protection and tax
- patent portfolio and exploitation strategies
- investigations involving the patent strategies of third parties
- Patent Box and tax strategies
- in relation to proprietary information and trade secrets: strategies for protection, advice as to minimisation of damage where there has been disclosure, bringing proceedings to prevent disclosure and/or obtain compensation, the extent to which data disclosed for regulatory or other purposes can be used by, or has to be disclosed to, others
- acting in Courts and tribunals at all levels, including the High Court, the Court of Appeal, the Supreme Court (formerly the House of Lords), the Intellectual Property and Enterprise Court (formerly the Patents County Court), the UK and European Patent Offices.
However whilst patents (and trade secrets) offer protection in the field of technology, so increasingly do designs and brands (especially for products where any patent protection is nearing the end of its life). The design of many products (especially high tech and innovative products) is key to the success of that product and indeed the business, and our expertise extends to the obtaining and protection of relevant intellectual property rights in designs.
Indeed, we are one of the few leading City law firms which has the commitment and ability to provide a holistic approach (and a complete ‘one stop shop’) to meet the intellectual property needs of clients in the area of designs.
Furthermore, as part of meeting the needs of clients in the patents and technology fields, we have a leading practice in the field of transactions involving intellectual property, ranging from acquisitions and disposals, through to licensing and joint collaboration agreements, and we work particularly closely with our colleagues in that field and also those in the anti-trust, competition law, data protection and employment law areas.
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UPCA Principal Developments
The Unified Patent Court Agreement ("UPCA") was signed on 19 February 2013 by 24 of the then 27 EU Member States.