We understand the importance of European patent coordination: whether asserting patent rights on an international level or facing a threat across multiple jurisdictions, a coherent and carefully coordinated international strategy is essential. Powell Gilbert is frequently called upon to design and implement strategies for complex patent disputes, both across Europe and around the world.
We can help you to assemble and co-ordinate a team of specialist advisors across all key locations. We sit at the centre of a network of renowned law firms and advisers who specialise in IP. Leading or working alongside other firms, we are able to draw upon the most relevant expertise to assist with issues worldwide. Our style of working with advisers in other jurisdictions is collaborative, rather than top-down.
From our deep understanding of the cultural, legal and procedural differences of the significant patent jurisdictions, we can put together and execute a strategy which leverages the advantages of each jurisdiction to achieve the best overall outcome. For example, this may involve using an evidence-gathering procedure of one jurisdiction to feed into another, or could take advantage of a favourable judicial attitude in one court to obtain a first persuasive judgment. In each case, we aim to produce a strategy which is focussed on achieving our clients’ commercial objectives.
Our role is always tailored to the particular requirements of the matter and the needs of the client. Some clients want us to take the reins, whereas others prefer to be involved closely at all stages. However, the common theme for all coordination exercises is to select the best possible local counsel for the job, then to know when and how best to assist them – and when to defer to their knowledge and better judgement of the local system. Through using document sharing platforms and having a comprehensive oversight of the parallel proceedings, we ensure a cohesive and thorough approach to coordination.
Established as a single patent jurisdiction across a significant proportion of the European market, the Unified Patent Court (UPC) presents opportunities for the efficient enforcement and opposition of European patent rights.
With a proven record of top-tier patent litigation experience in the UK, as well as a renowned practice of developing and implementing both offensive and defensive European patent litigation strategies, Powell Gilbert is perfectly placed to advise and represent clients in litigation in the UPC.
The UPC has multiple divisions, and was developed as a compromise of various European national laws and procedures. Assembling a team of appropriately skilled European litigators will therefore be essential for successfully pursuing cases in the new system, ensuring the availability of relevant procedural knowledge, familiarity with the practices of local judges and appropriate technical support, with the strength in depth to respond to potentially aggressive deadlines.
Our team in London has a pre-eminent reputation for advising and coordinating the most complex and high-stakes multi-jurisdictional patent litigation in the European market. Combined with this, our Dublin office provides a base within the UPC jurisdiction from where we act for clients across the various national, regional, and central divisions of the UPC, bringing to bear a wealth of patent litigation experience and access to a deep bench of technically and scientifically qualified lawyers. All of our partners are admitted to practice in Ireland and are registered as UPC representatives.
In addition to our own pool of highly experienced and technically-astute lawyers, we can draw from a flexible network of renowned law firms and patent specialists, enabling us to assemble the most relevant expertise to represent our clients in whichever division of the UPC is most appropriate. We believe this gives us the flexibility to devise optimal strategies in selecting where cases are litigated and to ensure our clients have the best team to handle their litigation.
Our lawyers have been involved in the UPC since its inception, including contributing to EPO training materials, participating in mock trials and training the new judges. We are also contributing to a key practitioners guide for UPC litigation and frequently lecture on this topic at international conferences.
Even though the UPC commenced only in June 2023, we have been involved in a number of cases before the new court, including:
- The first two cases brought before the Nordic-Baltic Regional Division
- The first case brought before the Milan Local Division
- The first case brought before the Helsinki Local Division
- A number of cases brought before the German local divisions
Ranked in the top tier for UK patent litigation in all the major directories, Powell Gilbert’s renowned expertise in patent litigation and dispute resolution forms the core of the practice. With a team of lawyers at the forefront of the IP profession in the UK, we have been involved in many of the most high-profile and ground-breaking UK patent cases across a wide range of technologies and industries.
With nearly all of our lawyers having scientific or technical qualifications, including many lawyers with PhDs in disciplines such as computer sciences, molecular biology and immunology, we are extremely well positioned to understand the technical complexities of the issues our clients face. Combined with our high level of legal and commercial understanding and proven litigation track-record, we are ideally placed to assist in challenges over IP rights in the UK.
We are one of the busiest, and most experienced, firms in the UK patents courts, representing clients at all levels, from the IPEC to the High Court and on appeal to the Court of Appeal and the Supreme Court, where we have acted in a number of precedent-setting cases in recent years.
These have included:
- Regeneron v Kymab (transgenic mice) – We advised Kymab in this biotech dispute, all the way up to the UK Supreme Court’s seminal judgment on insufficiency
- Warner Lambert v Actavis (second medical use claims) – We advised Actavis in this dispute in which the Supreme Court clarified the law on infringement of second medical use claims and plausibility
- Unwired Planet v Huawei (smartphones/FRAND licensing) – We advised Huawei in this landmark dispute on SEP infringement and FRAND licensing all the way up to the UK Supreme Court
- HGS v Eli Lilly (novel gene sequence) – We advised Human Genome Sciences and GSK in this hard fought dispute, all the way to the UK Supreme Court which considered the issue of plausibility and gave a precedent-setting decision on industrial application. We also acted in a referral to the European Court of Justice on the application of the SPC regulation to functional claims (C-493/12).
As well as being ranked in the top tier for UK patent litigation in Legal 500, Chambers, IAM 1000 World’s Leading Patent Practitioners and Juve Patent, we regularly win awards for our UK patent litigation work, including “UK Patent Litigation Firm of the Year” in IAM’s Global IP Awards (2022, 2020 and 2019), “UK Firm of the Year” in LMG’s European Life Sciences Awards (2022, 2021), “Disputes Boutique of the Year” in the Lawyer Awards (2021) and “UK Patent (Contentious) Firm of the Year” in MIP’s EMEA Awards (2023, 2021, 2019, 2018 and 2016).