Tom

Oliver

Partner

“An extremely experienced and reliable lawyer, having a deep knowledge of IP law and litigation.”

Legal 500

Tom

Oliver

Partner

“An extremely experienced and reliable lawyer, having a deep knowledge of IP law and litigation.”

Legal 500

Profile

Tom specialises in complex intellectual property litigation, licence disputes and strategic counselling.

He has an international practice, with extensive experience in devising multi-jurisdictional patent litigation strategies and co-ordinating legal teams across Europe, Asia and North America.

With an academic background in chemistry and biochemistry Tom is well suited to handle complex life science disputes and has advised clients in a variety of disputes concerning biotechnology, pharmaceuticals and medical devices. However, Tom also acts for clients spanning a wide range of industry sectors and technologies, including the determination of FRAND rates for standards essential patents. Tom also has extensive experience in resolving contractual intellectual property licence disputes, including through arbitration.

In addition to considerable experience before the English courts, Tom is representing clients in several of the first cases brought in the UPC.

Tom advises on the full range of intellectual properties rights, including trade mark oppositions and infringement proceedings, confidential information, copyright and passing off.

Tom spent several months seconded to a leading German firm specialising in patent litigation.

Tom joined Powell Gilbert in 2010 and became a partner in 2020.

Key cases

  • ICC arbitration on behalf of a listed technology company concerning breach of its trade secrets
  • LCIA arbitration against a listed biopharmaceutical company over payment obligations in respect of patent sublicensing revenue
  • Glenmark v AstraZeneca (dapagliflozin)
  • Ericsson v ASUSTeK (UPC – video codecs / FRAND)
  • Ocado v AutoStore (UPC – robotics)
  • Luye v UCB (transdermal patches)
  • AutoStore v Ocado (robotics)
  • Warner-Lambert v Actavis & Others (pregabalin / damages inquiry)
  • Confidential patent licence dispute concerning payment of post patent-expiry royalties
  • Napp v Dr Reddy’s & Sandoz (buprenorphine transdermal patches / cross undertaking damages inquiry)
  • Helms-Man v Amazon (power adaptors)
  • Ansell v Reckitt Benckiser (synthetic polyisoprene products)
  • Leonardo MW v Elbit Systems (missile defence systems)
  • Unwired Planet v Huawei & Others (telecoms / FRAND)
  • R (Vitra, Cassina, Knoll) v Secretary of State for Business (judicial review – copyright)
  • Cambridge University v Punter of England (enforceability of trademark settlement agreement)
  • Wobben Properties v Siemens & Others (wind turbines)
  • Good Technology v Airwatch (mobile management technology)
  • HTC v Gemalto (microcontrollers)
  • HTC v Apple (smartphones)
  • LG v Sony (Blu-ray technology / FRAND)
  • W.L. Gore & Associates v Geox (footwear)
  • Abbott v Evysio (coronary stents)
Qualifications

2009 Solicitor (England & Wales)

2022 Solicitor (Ireland)

2023 Solicitor Advocate (England & Wales)

2023 UPC Representative

Education

MSci (Biochemistry and Biological Chemistry), Nottingham University

Diploma in Intellectual Property Law and Practice, Oxford University

Connections & Networks

Co-Chair of the Dispute Resolution Committee of Licensing Executives Society International (LESI)

Member of AIPPI, CIPA, EPLAW and LESI.

Awards & Recognition

Expert Guides – Rising Star in Patents (2021)

Managing IP’s IP Stars – Notable Practitioner (2022) and Rising Star (2020, 2019, 2018)

Legal 500 Key Lawyer

IAM Patent 1000 – UK Patent Litigation (Silver Tier)

Lexology Index – IP-Patents

World IP Review – Leader

World IP Review UK Trademark – Contentious: Highly Recommended

WTR 1000 – UK Litigation (Bronze Tier)

Additional Facts
Places I’ve lived

Paris, Dusseldorf, Swiss Alps.

Additional Facts
Interests

Cycling, Swimming, Skiing.

Additional Facts
If I wasn’t a lawyer

… I would be a scientist.