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Intellectual Property

With the fast-changing pace of the world we live in, we work with our clients to capture and protect their innovation and intellectual property (IP) assets.

Working with clients to capture and protect their innovation and IP assets

Globalisation has made the world we live in more interconnected than ever. With the increase in innovation, creativity, and advances in technology – identifying and protecting your intellectual property has become increasingly important.

Our leading intellectual property team is actively engaged in supporting governments and their agencies, start-ups and industry-leading institutions that are driven by a thirst for transformation.

We help our clients across the entire intellectual property life cycle to capture, commercialise and protect their innovation and intellectual assets:

Protection  Commercialisation  Transformation  Enforcement  Development 
IP registration  Transactional M&A support  Sourcing and procurement Technology disputes Registration strategies
IP ownership validation  Franchising and licensing Emerging tech regulation Comparative advertising Tech and invention counselling
Assignment and transfer  Media, marketing and sponsorship Data protection and information security IP litigation IP portfolio planning
E-commerce Portfolio management

We support across our firm's main sector focuses and have developed a strong client base in traditional IP rich sectors such as, biotech and pharmaceutical, entertainment, and technology as well as brand-heavy sectors such as food and beverage, hospitality, retail and luxury goods. We are proud to say that we act for some of the largest and most established IP owners in these sectors, helping them to navigate the challenges they face from an intellectual property and business perspective.

Placing our clients at the centre of everything we do, our aim is to combine our specialist experience with market-leading relationship management to build a service which is tailored specifically to the needs of our clients, based on an understanding of their individual needs, as well as the risks, capital and operational issues they face.

Our Intellectual Property Work

  • All
  • Africa
  • Asia Pacific
  • Middle East
  • UK & Europe
  • Advising entrepreneur on various agreements in the veterinary sector

    Advising the client on non-disclosure agreements, collaboration agreements and licensing and distribution agreements for the commercialisation of his “brand extension” concepts for established veterinary products.  Also advising on freedom to operate around patents protecting those established products.

    United Kingdom

    Appeal from Patent Office’s refusal of a business method patent

    Conducting an appeal to the Patents Court from the UK Patent Office’s decision to refuse a patent application for placing trades at multiple stock exchanges simultaneously as being a method of doing business and/or being for a computer programme as such and so excluded from patent protection.

    United Kingdom

    Collaboration and services agreements for a biotech

    Advising our UK client on various agreements for the development and commercialisation of its technology through master services agreements with multi-national pharmaceutical companies and collaboration agreements with clinical companies outside the UK.  We also advised on and drafted agreements for the settlement of disputes arising from the collaboration agreements.

    United Kingdom

    Conducting series of patent actions relating to prenatal genetic tests

    Representing our clients in a long running patent infringement dispute, with revocation counterclaims, in the Patents Court relating to prenatal tests for foetal abnormalities such Downs syndrome.  Also advising on a related procurement dispute and judicial review.

    United Kingdom

    Copyright in boat fenders

    Defending an Australian client against an allegation by a UK company of infringement of copyright in the design of fenders for pilot boats. 

    United Kingdom

    Copyright in integrated chips for vocoders

    Acting for a US-based client in asserting copyright, trade mark and patent rights in plug-and-play devices (with integrated chips) for voice recording and synthesis against counterfeit devices being distributed in the UK and elsewhere in Europe.

    United Kingdom

    Copyright issues arising from the monitoring of television viewing

    Advising our client on potential issues of copyright infringement arising from its software for analysing the viewing habits of tv and video-on-demand customers.

    United Kingdom

    Defending validity of patent relating to nappy manufacture

    Defending the validity of a patent relating to ultrasonic bonding in the manufacture of nappies and other disposable absorbent garments in the Intellectual Property Enterprise Court and Court of Appeal.

    United Kingdom

    Design dispute concerning jewellery

    Defending our client from allegations of infringement of two EU registered designs for jewellery, as well as passing off, brought by a well-known US fashion house by demonstrating that the designs were invalid as giving the same overall impression as articles that were well-known at their filing date.

    United Kingdom

    Design dispute concerning plastic containers

    We defended a leading UK manufacturer and supplier to supermarkets of containers for ready-meals against allegations of infringement of multiple unregistered design rights and countered explaining the independent derivation of the designs from commonplace household articles. 

    United Kingdom
  • Local trademark law advice in Tanzania and Zanzibar

    Counselling a multinational company specialising in aerospace, defence and security on local trademark laws in mainland Tanzania and Zanzibar.

    Tanzania

    Advising a multinational health technology conglomerate on trademark renewals

    Advising a multinational health technology conglomerate on various trademark renewals and applications.

    Tanzania

    Advising a leading global manufacturer on trademark mergers

    Advising one of the world's largest manufacturers of bearings on trademark mergers.

    Tanzania

    Trademark applications for a multinational automotive corporation

    Managing various trademark applications for a German multinational automotive corporation.

    Tanzania
  • China IP - water filtration patent protection

    Advising leading manufacturer of water filtration equipment on patent infringement by a Chinese national. The Chinese national copied a patented cartridge and filed a utility model patent application for the copy-design. As China does not conduct a prior art search for utility model applications, the China Patent Office (SIPO) issued the utility model patent to the individual despite the lack of novelty and inventiveness. The individual then initiated a patent infringement litigation against...

    China

    China IP advice - roads and maintenance firm

    Advising global market-leading road construction and maintenance machinery provider on patent infringement litigation against a Chinese company and secured a first instance judgment of RMB500,000 in compensation and succeeded in defending the client's patents from the Chinese company's invalidation attempts.

    China
  • International restaurant franchise agreements

    Advising a UAE developed and owned restaurant brand on its expansion strategy and rollout internationally, including advising on its franchise agreements and protection of its IP assets.

    United Arab Emirates

    Media company operations advice

    Advising a leading Arab media company on production, advertising, event management, sponsorship and barter agreements.

    United Arab Emirates

    Franchise agreements for the oil industry

    Advising an international oil company on franchise arrangements in the UAE.

    United Arab Emirates

    Consortium response to regulator proposals

    Preparing a collaboration agreement and various framework agreements for a consortium of companies in relation to a proposal to the Telecommunications Regulatory Authority in the UAE for a licence to broadcast mobile television in the UAE.

    United Arab Emirates

    Research agreements for a non-profit organisation

    Representing a leading non-profit organisation in negotiations with local and international universities and research centres in relation to sponsored and joint research agreements.

    United Arab Emirates

    Motor racing series agreements

    Drafting, reviewing and advising on a range of agreements relating to the launch of a motor racing series, including various commercial agreements, licensing issues, sponsorship and the exploitation of the associated IP rights relating to the series.

    United Arab Emirates

    Retail trade mark infringement advice

    Successfully handling (at the Court of First Instance and Court of Appeal) the defence of a claim against the UAE franchisee of a key retail brand for trade mark infringement on behalf of the brand owner.  

    United Arab Emirates

    Broadcaster copyright infringement advice

    Defending injunctive proceedings relating to a major television series being broadcast in the Middle East (where the relief sought was to restrain the broadcast of the series). This action was based on a claim of copyright infringement.

    United Arab Emirates

    Trade mark infringement proceedings

    Advising a UAE-based manufacturer of soft drinks regarding trade mark infringement proceedings in the UAE and in relation to bifurcated patent proceedings in Germany (a patent infringement claim against our client and related invalidity proceedings brought by our client). Our advice also extended to potential patent litigation in the UK in relation to the same product, and strategies for our client to "clear the way" to enter the UK market.

    United Arab Emirates

    Luxury hotel group domain name dispute

    Successfully acting for a luxury hotel group on domain name disputes relating to the brand's trade marks.

    United Arab Emirates
  • Funding for a biotech

    Advising our UK client on an inward investment by a Chinese company and drafting the necessary deal documentation.  The funding enabled our client to bring a new device to launch as well as expand its commercial team and further develop its in-house intellectual property.

    United Kingdom

    Collaboration and services agreements for a biotech

    Advising our UK client on various agreements for the development and commercialisation of its technology through master services agreements with multi-national pharmaceutical companies and collaboration agreements with clinical companies outside the UK.  We also advised on and drafted agreements for the settlement of disputes arising from the collaboration agreements.

    United Kingdom

    Investment in and commercialisation of a consumer health product

    Advising the client on an investment by a private European individual, including negotiating and drafting the subscription documentation, and also advising the client in the licensing and commercialisation of its intellectual property in the US, including structuring advice regarding its US subsidiary and retention of control rights at the holding company level.

    United Kingdom

    Patent due diligence on a university spin-out

    Conducting and advising our private equity client on a due diligence exercise on the target spin-out company (a biotech) as part of the latter's round of fundraising.  The work included assessing the target company's patent portfolio (42 families), including for relevance to commercialised products, and advising on the significance of patent disputes in which the target company was involved. 

    United Kingdom

    Due diligence exercises for a mid-sized pharmaceutical company

    Conducting a series of patent due diligence exercises relating to products that our client was considering purchasing or licensing-in.  The exercises included advising on the strength of protection afforded by the patent portfolios in terms of claim coverage and ability to withstand validity challenges based on reviews of the USPTO and EPO filewrappers and, where warranted, additional prior searches.

    United Kingdom

    Setting up of joint venture relating to nuclear power

    Negotiating and drafting the relevant agreements (including a collaboration agreement, joint venture agreement, and head and sublicences) for the proposed JV, advising on tax aspects (including the Patent Box regime) and conducting a due diligence exercise on the 15 patent families that are to be licensed to the JV as well as various agreements relating to or potentially affecting the intended licensing regime.

    United Kingdom

    Advising entrepreneur on various agreements in the veterinary sector

    Advising the client on non-disclosure agreements, collaboration agreements and licensing and distribution agreements for the commercialisation of his “brand extension” concepts for established veterinary products.  Also advising on freedom to operate around patents protecting those established products.

    United Kingdom

    Restructuring of a licensing agreement

    Advising an EU-based biotech client on a contractual dispute with its licensee and on a proposal to convert the licensing arrangement into a joint venture (and the associated due diligence exercise).

    United Kingdom

    Defending validity of patent relating to nappy manufacture

    Defending the validity of a patent relating to ultrasonic bonding in the manufacture of nappies and other disposable absorbent garments in the Intellectual Property Enterprise Court and Court of Appeal.

    United Kingdom

    Conducting series of patent actions relating to prenatal genetic tests

    Representing our clients in a long running patent infringement dispute, with revocation counterclaims, in the Patents Court relating to prenatal tests for foetal abnormalities such Downs syndrome.  Also advising on a related procurement dispute and judicial review.

    United Kingdom

Our Intellectual Property team

Richard Berkahn
Richard Berkahn

Partner

Chris Burdett
Chris Burdett

Partner

Alec Christie
Alec Christie

Partner

Reece Corbett-Wilkins
Reece Corbett-Wilkins

Partner

Ralph Cox
Ralph Cox

Partner

Mark Devaney
Mark Devaney

Partner

James Holmes
James Holmes

Partner

John Moran
John Moran

Partner

Tenda Msinjili
Tenda Msinjili

Partner

Chris Williams
Chris Williams

Partner

Mark Williamson
Mark Williamson

Partner

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