John Tothill

Partner
John Tothill

Background 

John joined Dehns in 1991 and became a Partner in 1999. At Cambridge he studied physics and materials science with options in electronics, microelectronics and optical materials. In 2017, John was appointed as Dehns’ Head of Engineering, with overall responsibility for the firm’s Electronics, IT and Communications, Physical Science and Materials, and Engineering groups.

 

Type of clients and client work 

John and his teams are responsible for large patent portfolios for a number of high-technology multinational corporations.  This includes drafting patents for new inventions and prosecuting patent applications in the UK, Europe, the USA and throughout the world, as well as advising on contentious issues and addressing any validity challenges that arise.

He also has particular interest and experience in assisting and advising SMEs, new and start-up companies in high technology industries both in the UK and Europe. This includes developing intellectual property portfolios, exploiting intellectual property assets and addressing the intellectual property of competitors.

 

Expertise 

John drafts and prosecutes patent applications in all areas of high technology, including electronics, microelectronics and microprocessors, computing, software, telecommunications, optics and other physics and engineering fields.  John has particular expertise in drafting patents for filing in the USA and in prosecuting patent applications in the USA.

John also regularly advises on infringement and validity of patents in these fields and on related issues, including the exploitation and use of intellectual property rights.

He has also been heavily involved in a number of major telecommunications cases, including litigation of patents concerning the GPRS standard and mobile email systems, and has particular experience in advising on patents relating to telecommunications standards and in licensing negotiations relating to patents alleged to be essential to standards.

 

Qualifications and Memberships 

  • UK Registered Patent Attorney, 1996 (Awarded Strode Prize for final examinations)
  • European Patent Attorney, 1996
  • Professional Representative before OHIM, 1996
  • Fellow of the Chartered Institute of Patent Attorneys
  • Member of the European Patent Institute

 

Higher Education 

MA (First Class), Cambridge University, Natural Sciences (Physical), 1991

 

Other 

John was awarded the Strode Prize by the Chartered Institute of Patent Agents for his performance in the Institute's final examinations

Publications:

‘The Mobile Phone Patent Disputes’, Electronics Weekly, August 2012

‘Are the Patent Wars Bad for Innovation?’ The Lawyer, May 2012

‘Are patents now stifling innovation’, Computing Magazine, September 2011