Intellectual Property

Our Intellectual Property team is unique in its strength in advising on both contentious and transactional IP matters. We advise some of the largest multi-national companies, across a variety of industry sectors, on a wide range of IP issues, including commercialising, acquiring and licensing IP, and enforcing and defending IP in litigation, arbitration and other dispute resolution proceedings.

With an extensive team across numerous jurisdictions, we regularly conduct and co-ordinate complex cross-border IP disputes and advise on high-value, multi-jurisdictional corporate and commercial transactions. 

We recognise that IP issues often arise in the context of complex commercial and regulatory landscapes, and work closely with our anti-trust, corporate, TMT, tax and employment teams to provide co-ordinated and comprehensive advice to our clients.

 

IP disputes

We advise our clients on disputes relating to patents, trade marks, copyrights, trade secrets and other IP rights, in a range of dispute resolution proceedings, including litigation, arbitration and mediation. We have extensive experience in advising on contractual disputes relating to IP. Our expertise spans a range of industry sectors, including healthcare, technology, telecoms and consumer products.

Our multi-jurisdictional practice is able to provide a coordinated approach to cross-border IP disputes. We use our in-depth knowledge of the procedural rules in key jurisdictions to create strategic advantages for our clients, and work together closely to provide a seamless service across different countries.

Our lawyers, many of whom have scientific qualifications, are familiar with dealing with complex technologies and develop a deep understanding of our clients’ businesses. We use this knowledge to provide commercial and cost-effective solutions to IP disputes and maximise the value of our clients’ IP assets.

Our experience includes advising:
  • Johnson & Johnson in patent disputes relating to a number of different monoclonal antibody therapies for use in the treatment of a range of conditions, including rheumatoid arthritis, psoriasis and Alzheimer's disease    
  • Merck & Co., Inc., in patent revocation proceedings, relating a patent covering a nanoparticulate formulation of aprepitant    
  • Shire Pharmaceuticals in a cross-border patent dispute in relation to a biotechnology product    
  • Merck & Co., Inc., in a major cross-border trademark and breach of contract dispute against Merck KGaA, relating to the use of the “Merck” name, with parallel litigation in the UK, France, Germany, the US, Mexico, India, Switzerland
  • McDonald’s on a variety of trade mark and unfair competition issues in Belgium
  • William Hill in a UK trade mark infringement action, including a damages inquiry
  • Amazon in a number of copyright disputes against European collective rights management companies
  • a leading global manufacturer of LEDs in the enforcement of its patent portfolio in a cross-border patent dispute    
  • Tate & Lyle on cross-border patent infringement proceedings in the UK, France and Belgium, including search and seizure actions, and motions for injunctive relief and damages
  • the German Federal Ministry of Health in a dispute concerning copyright and database rights in a medical classification

IP in MA and corporate transactions

Our IP team has unparalleled experience in advising on the IP issues arising in M&A transactions. We have expertise across a wide range of industry sectors, including retail, food & beverages, technology, healthcare, financial services and energy & infrastructure, and have advised on some of the largest and most complex multi-national transactions ever undertaken.

As part of our work on M&A transactions, we advise on IP due diligence, the transfer of global IP patent and trade mark portfolios, transitional and long-term IP licensing arrangements and other IP separation and carve-out issues. We also advise on IP issues in the context on initial public offerings in IP-rich industry sectors, including biotechnology and telecommunications.

Our experience includes advising:

  • L’Oréal on the €1 billion sale of The Body Shop to Natura Cosméticos 
  • Delhaize Group, the Belgian-based food retailer, on its €28bn merger with Dutch-headquartered Ahold, creating one of the largest food retailers in Europe and the United States
  • Hutchison Whampoa on its £10.5bn offer to acquire O2 and its £300m acquisition of UK Broadband    
  • Just Eat, the leading UK online takeaway food business, on the acquisition of various online food businesses in the UK, Brazil, Mexico, Italy and Spain
  • Bayer on the carve out of the Bayer MaterialScience business and on the IPO of the new entity Covestro
  • the investment company Brait on its £1.9bn acquisition of New Look, the UK high street retail chain, and £1.3bn acquisition of Virgin Active New Look, the UK high street retail brand, and the £1.3bn acquisition of Virgin Active, the health club chain  , the health club chain
  • Novartis on the sale of its global vaccines business to GSK for US$7bn, the purchase of GSK’s global oncology business for US$16bn, and the sale of Novartis’ global flu business to CSL for $275 million
  • a consortium of banks, led by JP Morgan, on the IPO of Swiss biotechnology company Molecular Partners
  • Rakuten, the third largest e-commerce company globally and largest in Japan, on its acquisition of the messaging and VoIP company Viber
  • Siemens on its £1.7bn acquisition of the international automated rail business of Invensys plc, and on its £950m acquisition of Rolls-Royce’s energy gas turbines business
  • Lloyds Banking Group on the separation of the TSB business and the £1.3bn IPO of TSB

Commercialisation of IP

We work closely with our clients to develop bespoke strategies for maximising the value of their IP. We advise on a range of commercial arrangements, including technology and brand licences, R&D agreements, franchise agreements and joint ventures. We also regularly advise on the anti-trust and other regulatory issues that arise in these arrangements.

Our experience includes advising:

  • Nestlé on its joint venture with R&R Ice Cream to create the global ice cream and frozen food business Froneri, including advising on trade mark and technology licensing agreements and supply and distribution arrangements
  • a major auto rental company on its strategic partnership and co-branding arrangement with the largest Latin American car rental network, and on its strategic cooperation and co-branding arrangement with China Auto Rental
  • a leading global electronics manufacturer on a strategic joint venture in the transportation sector
  • a payment scheme on various arrangements for the exploitation of technology and trade marks in relation to payment systems (including mobile and wallet technology)
  • a leading global mining company on a number of R&D and collaboration agreements, including for the development of robotics technologies for mining and on low carbon projects
  • Shire Pharmaceuticals on licensing arrangements relating to a GI drug
  • a leading European food and beverages company in connection with the use of IP rights by way of securitization to fund pension schemes
  • a consortium of financial institutions on their project to develop a private virtual currency (the Utility Settlement Coin) using blockchain technology, to be used for settling financial transactions
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