Patents & patent litigation

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Intellectual property

Patents and patent litigation

How to manage and get the most out of your IP

Effectively resolving disputes involving patented technology requires a specialist skill set. We work with clients to help them identify and protect what are often their key business assets; some of the UK’s best-known companies trust us to advise them to combat allegations of infringement of third party intellectual property rights.

Our team draws on its experience from the worlds of engineering, electronics, manufacturing, telecommunications and life sciences to deliver a service that is tailored to your industry and innovation - a significant proportion of our team have worked with, been on secondment to or worked in house at companies across these sectors.

Where the issue of infringement or validity of a patent becomes a live issue, we have extensive experience of litigating across many of the forums in the UK, whether this be in the Court of Appeal, High Court, Intellectual Property and Enterprise Court as well as experience with the UK and European Intellectual Property Offices.

What we do...

Specialists – experience of enforcement of patent rights, co-ordination of international patent litigation and dispute resolution, defending claims for patent infringement, dealing with challenges to the validity of patents, patent entitlement issues, declaratory relief, preliminary injunctions and opinion work (including freedom to operate reviews). A number of our patent litigators have scientific backgrounds, enabling us to understand our clients’ technologies.
Practical experience – practical rather than theoretical experience, enabling us to tailor each piece of litigation to suit the commercial needs of each client.
In-depth familiarity with the court system - we regularly conduct disputes in a variety of forums, ranging from the Intellectual Property Enterprise Court to the High Court and Court of Appeal.

Trusted advisors - we work with high profile clients who trust us to help them identify and protect what are often their key business assets.
International work – patents are territorial and we are well equipped to handle the international aspects. We can quickly and cost effectively instruct and co-ordinate foreign lawyers and IP attorneys through our close relationships with patent and trade mark attorneys, and through Pangea Net, a non-exclusive, international network of independent law firms.

Related resources

How to commercialise your IP: licensing, spin outs and JVs

Our expert panel, comprised of IP and corporate law specialists, will be discussing IP commercialisation strategies, their benefits and pitfalls, drawing on experience across the private, public and higher education sectors.

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A litigator’s perspective on up to date brand filing and prosecution strategies

Recent court decisions about bad faith, clarity, acquired distinctiveness and jurisdiction issues with enforcement have impacted on portfolio management best practice. In this webinar, Bonita Trimmer and Giles Parsons provided a trade mark litigator’s perspective on how these decisions should influence the choices of brand portfolio managers in the UK and throughout the EU.

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Competition law and IP agreements

There is a natural tension between IP rights and competition law. On the one hand, IP rights grant a legal monopoly to the holder while, on the other hand, competition laws seek to control restrictive agreements and the use/abuse of a monopoly position.

View

IP licensing: how to avoid the common pitfalls

Intellectual property (IP) licensing is a significant strategic tool for exploiting inventions and brands. However it is often neglected that for each of the different intellectual property rights, a degree of bespoke treatment is required at licensing level in the UK.

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What our clients say....

At London EV Company Limited we value our intellectual property highly. The team ensures that the management and enforcement of our rights is joined up and frankly easier to manage.

Peter Johansen - Vice President UK Operations, London EV Company Limited

What the directories say...

Browne Jacobson provides extremely well-integrated IP services – it doesn’t just look at trademarks but at everything relevant to brands. The team is excellent at competitive landscape analysis and demonstrates a thorough understanding of the consumer mindset. Its client service is superior and it meets expectations on costs – you won’t get questions about the relationship from your finance department.

World Trademark Review 2019

Browne Jacobson not only meets its clients’ needs but exceeds their wildest expectations on a regular basis. “Highly professional, adaptable and agile,” the firm is now “up there with the best, which is very impressive since it didn’t even have a London office until a few years ago.”

IAM Patent 1000 2019

Undertaking a slew of headline-making work covering all aspects of trademark protection, enforcement and commercialisation and judiciously recruiting high-level talent, Browne Jacobson is rapidly expanding in the trademark world and ascends to the WTR 1000 silver tier for 2018.

World Trademark Review 2018

On the contentious front, Browne Jacobson acted for the London Taxi Corporation in its spat with Frazer-Nash Research Limited and Ecotive – a multi-layered dispute of significant legal and public interest.

World Trademark Review 2017

Browne Jacobson’s commercial group has transformed itself from a regional heavyweight into a truly national player

Commercial team of the year, Solicitors Journal Awards 2017

Recent experience

Advising the provider of a cloud based customer intelligence platform in respect of a patent infringement and validity and breach of confidence dispute in which our client was the claimant. The litigation involved a large number of complex issues surrounding infringement, validity, patentable subject matter and amendment of a software patent. A corresponding European Patent was being opposed in the EPO at the same time.
Acting for a household name in the health sector in defence of allegations of patent infringement in respect of a therapeutically crucial diagnostic test.
Advising a leading 3D holographic technology company in respect of a complex patent infringement and validity dispute in which our client was the Claimant. The matter involved a number of disputes including the requirement for disclosures to be enabling, the standard of proof required in UK patent proceedings, and international patent rights exhaustion. As a result of two of the four defendants’ failure to pay relevant costs orders flowing from successful interim applicatons, our client applied for and obtained judgment for infringement of its patent.
Acting on behalf of one of the world's largest manufacturers of speciality metal cutting products in the High Court and Court of Appeal. Our client (a US based company) holds a global portfolio of patents that relate to new and innovative cutting geometry, as applied to high feed milling machinery. As well as raising complex issues of validity and infringement, the above proceedings remain one of the few cases where the interrelationship between amendment in the national Patent Court and the European Patent Office has been considered.
Advising Rapiscan Systems Limited and its parent, OSI Systems Incon patent infringement proceedings brought by American Science & Engineering and, at the same time, a revocation action at the UK Intellectual Property Office relating to one of Rapiscan’s backscatter x-ray detection patents. We were able to instantly provide them with a dedicated team which understands Rapiscan’s commercial and technical objectives, dealing with a dispute that is valued in excess of £10 million, listed with technical difficulty rating of 4, and with a five day trial listed for March 2016.