Dehns Dispute Resolution Group provides a fully integrated and strategic approach to IP dispute resolution in Europe, as we are able to bring together experienced solicitors and patent/trade mark attorneys (both UK and German) in a single legal team.

We have and can, conduct litigation at all levels of the UK courts (Intellectual Property Enterprise Court, High Court, Patents Court, Court of Appeal and Supreme Court), the Court of Justice of the European Union (including the General Court) the UK Intellectual Property Office, together with the German Federal Court (for nullity proceedings), the European Patent Office as well as the EU Intellectual Property Office (dealing with trade mark and design oppositions cancellation actions and invalidity actions).

Our team boasts the largest European Patent Office opposition and appeals practice in the UK, with more than 400 live cases at any one time. Our litigation team is headed by Paul Harris (a solicitor with more than 35 years’ experience of all types of IP disputes), and includes seasoned, qualified Patent Attorney Litigators. The Group has the backing of the technical and legal expertise of over 70 patent and trade mark attorneys.

This large and diverse team means that we understand the different approaches taken by these tribunals, both legally and procedurally, and accordingly, how best to co-ordinate related litigation and opposition proceedings.

Our goal is to provide clients with, strategic and pragmatic advice, in order to identify the most optimal, cost-effective approach to resolve any type of IP dispute. Having offices in several European countries, we are able to identify which jurisdiction would be appropriate in specific circumstances, and to handle cross-border disputes, as well as assisting international associates with coordinating multi-jurisdiction disputes.

 

What we do

In addition to disputes relating purely to patents, trade marks/passing off, copyright and designs (registered and unregistered), the team also deals with trade secrets/breach of confidentiality, licensing/IP agreement disputes, ownership/inventorship entitlement disputes, complaints before the Company Names Tribunal, as well as other facets of IP which are an adjunct to many disputes (including jurisdiction challenges and the like).

We feel we must be doing something right as our clients have given us praise for the work we have done for them:
"Solicitor Paul Harris is a senior member of the litigation team, with the skill to take over and turn around cases in which adverse decisions have been handed down for other firms."
World Trademark Review 1000, 2021
'All-sector solicitor Paul Harris is a "thoroughly straightforward person who manages to get right into the issues that need to be addressed – he responds quickly, works within budgets and is always easy to understand".'
Client Testimonial, IAM Patent 1000 (Bronze) for Patent Litigation – 2020
"Dehns is particularly recommended for providing litigation support for worldwide infringement conflicts through its well-regarded litigation practice"
Legal 500, 2018

Our experience

Our team have been entrusted with the IP litigation for major clients such as Stanley, Black & Decker, Baker Hughes, and Freyssinet.

Most recently, Paul acted in the patent case Icescape Ltd v Ice-World International BV and ors ([2017] EWHC 42 (Pat) and [2018] EWCA Civ 2219), the first case to apply the newly-introduced doctrine of equivalents, as well as The Black & Decker Corporation v Dvize BV ([2017] EWHC 3387 (Ch)), a trade mark infringement action with a jurisdiction challenge.

In addition, to acting for large, multi-national organisations, we are able to conduct cases cost-effectively for smaller clients. Uniquely, we are experienced in doing so via third-party funding, which enables suitable cases to be brought against well-resourced defendants.

EPO Oppositions and Appeals

Over recent years, Dehns has consistently been the highest ranked firm in the UK in terms of number of EPO oppositions; it is involved in over 3% of the total number each year. This level of experience means that Dehns is highly regarded for its Oppositions work, as is highlighted by the numerous accolades in recent years by the leading IP and legal directories, for example:

“Dehns is particularly recommended for handling European patent opposition and appeals” – Legal 500

“Chris Davies is an excellent attorney for contentious issues,” says a client. Adrian Samuels is “pragmatic and skilled at oppositions” – IP Stars

Trade Marks

Our Trade Mark team has significant experience in handling and managing Trade Mark disputes and in the conduct of Trade Mark oppositions and cancellation actions around the world. Our UK/Germany Trade Mark team has handled numerous oppositions and cancellation actions before the UKIPO and EUIPO, and our German office continues to conduct EUIPO proceedings after Brexit. Our UK team also continues to handle EUIPO proceedings that were on-going at the time of Brexit.

The majority of Trade Mark disputes are settled by negotiation between the parties and our Trade Mark team has extensive experience in negotiating pragmatic settlements.

The Dispute Resolution Team

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Paul Harris

dispute resolution View profile partner paul harris

background

paul is partner and head of litigation at dehns, having joined the firm in 2021. he has 38 years’ experience in handling intellectual property matters: both non-contentious and contentious. in relation to patents, he deals with a wide variety of technologies including complex chemical cases, electronics and mechanical patents.

for patent litigation, paul successfully defended black & decker in an action brought by electrolux, the outcome of which led to changes in the patents court guidelines on experiments and expert’s reports. he was also involved in the erythropoietin litigation (kirin amgen) and stent litigation (boston scientific). more recently, paul acted for the defendant in icescape v ice-world international: the first case to apply the doctrine of equivalence following actavis v eli lilly.

paul is also noted in trade mark matters (registered and unregistered), having successfully litigated the first case under the trade marks act 1994 (wagamama ltd v city centre restaurants plc). more recently, he was involved in the latest extended passing off case: fage v chobani, and again was successful when acting for stanley, black & decker in a trade mark infringement/jurisdictional battle involving a former distributor (the black & decker corporation v dvize).

he is also known for his confidential information practice and handled the dyson v strutt litigation, relating to misuse of confidential information, and the same litigation on important issues of costs. he also led the successful team in the first conference v bracchi case, which included executing an interlocutory search and seizure order against the defendant.

on the non-contentious side, paul’s skill and experience in analysing and solving strategic ip matters is called upon by many international clients. it ranges from trade mark problems and licensing strategies, to patent analysis and assessment. he has also been instrumental in the negotiation and preparation of international licensing arrangements for patents and trademarks, and has been involved in many non-contentious dealings including corporate support by way of due diligence relating to the sale of businesses and the licensing of the ip, preparation of multi-national licensing and cross-licensing arrangements (including co-existence agreements), and most notably the £2 billion sale to du pont of ici’s film business. paul has also overseen programmes for the registration of trademarks in many overseas jurisdictions. he also deals with the copyright and design right field, and has acted for a management buy-out team in relation to computer software and computer hardware.

paul has lectured on both patents and trade marks, as well as confidential information. he is well-known domestically and internationally and has been invited to speak at international conferences as far afield as bulgaria, egypt, the uk and usa. he has also had the privilege of teaching aspects of trade mark law on the intellectual property diploma course at the university of oxford, since 1995. he has written many articles over the years, particularly on patent and trade mark issues.

 

representative matters

  • horsham nutraceuticals ltd & anor v manna pro products llc [2019] ewhc 1935 (ch)
  • icescape ltd v ice-world international bv and ors [2017] ewhc 42 (pat), and [2018] ewca civ 2219 – patent validity and infringement decisions in which the court of appeal decided on the application of g2/98 same invention concerning priority date, and applied the doctrine of equivalence following the uk supreme court’s decision in actavis uk ltd v eli lilly & c0.
  • the black & decker corporation v dvize bv [2017] 3387 (ch)
  • icescape v ice-world international & ors [2017] ewhc 42 (pat)
  • fage uk ltd v chobani uk ltd [2014] ewca 5, and [2013] ewhc 3755 (ch) – extended passing off action relating to yogurt.
  • credit suisse v arabian aircraft & equipment leasing co [2013] ewca civ 1169 on appeal from ec (2013) – ltl qbd (comm) (judge mackie qc) 24/04/2013 2013 ewhc 1094 (comm) – summary judgment application concerning aircraft finance and lease back agreement, considering analogous nature of leases and mortgages, the court of appeal confirmed the claimant could not change their case based on a skeleton argument in the absence of first amending their pleadings.
  • dyno holdings ltd & anor v dialarod home cover & ors [2013] ewpcc 8 – trade mark infringement
  • future publishing v edge interactive media – amendment to court order, february 2013
  • consumer focus tm – trade mark opposition – ukipo/decision: o-359-12
  • fage uk ltd & anor v chobani uk ltd & anor [2013] ewhc 630 (ch) – interim relief and permission for survey evidence, december 2012
  • first conferences services ltd v bracchi & ors [2009] ewhc 2176 (ch) – breach of confidence
  • schrieber tm – trade mark opposition – ukipo/decision: o-115-09
  • dyson technology ltd v strutt [2007] ewhc 1756 – costs orders
  • the black & decker corporation v ohim (joined cases t-239/05; t-240/05; t-245/05; t-247/05; t-255/05; t-274/05 – t-280/05; atlas copco ab ecli: eu: t: 2017)
  • dyson technology ltd v strutt [2005] ewhc 2814 (ch) – misuse of confidential information/restrictive covenant, november 2005
  • philips domestic appliances & personal care bv v salton europe ltd (part 20 claim v electrical & electronic ltd) – [2004] ewhc 2092 (ch) software in respect of coffee makers – this case has now become the leading authority on what constitutes “authorisation” of one entity by another to instigate infringement
  • yellow and black trade mark application in name of black & decker – appeal from tm registry, 2004
  • black & decker v. alm manufacturing – lawn edge trimmer technology, 2003
  • amey vectra ltd. v. vectra n. jones and others – misuse of confidential information, 2002
  • g.n.c. trade mark application vitality, 2000
  • e.r.a. technology v. a.e.a. technology – breach of fiduciary duty, copyright infringement, malicious falsehood, 1998
  • boston scientific v. johnson & johnson – stents (cardiography technology), 1997
  • route 66 & device in name of andre and mairade levy – trade mark opposition, 1997
  • electrolux northern v. black & decker – lawnmowers (suck and hover), 1996
  • wagamama v city centre restaurants plc [1995] fsr 713 (ch.d)
  • inadine tm [1992] rpc 421

 

memberships

  • international trademark association (inta), committee member
  • international association for the protection of intellectual property, uk council member
  • chartered institute of patent attorneys
  • chartered institute of trade mark attorneys
  • royal society of chemistry

 

other

paul has been regularly highlighted and acknowledged as a leading ip expert in various leading legal and ip directories. this has included:

  • wtr trademark 1000 – the world’s leading trade mark practitioners – 2021 & 2020
  • legal 500 uk (intellectual property: trade marks, copyright and design) – 2021
  • managing intellectual property, ip stars – ranked in trade marks and patents – 2021, 2020 & 2019
  • iam patent 1000 (bronze) for patent litigation – 2020 & 2019
  • chambers uk 2019 (intellectual property) – 2019

“solicitor paul harris is a senior member of the litigation team, with the skill to take over and turn around cases in which adverse decisions have been handed down for other firms.” world trademark review 1000, 2021

‘all-sector solicitor paul harris is a “thoroughly straightforward person who manages to get right into the issues that need to be addressed – he responds quickly, works within budgets and is always easy to understand”.’ client testimonial, iam patent 1000 (bronze) for patent litigation – 2020

Robert Jackson

engineering, dispute resolution View profile partner robert jackson

background

rob is a uk chartered patent attorney, a european patent attorney and patent attorney litigator.

having graduated from the university of durham with a bsc in physics, rob joined dehns in 1990 and became a partner in 2001. he handles patent work in a variety of engineering fields as well as design and industrial copyright matters.

in addition to his physics degree, rob also holds the certificate in intellectual property law from queen mary college, university of london, and the degree of master of laws and a postgraduate certificate in patent litigation, both from nottingham law school.

 

type of clients and client work

rob handles patent work for clients ranging from individuals and small start-up companies to major multinationals. a large proportion of this work is original patent drafting and advice work for direct clients in the uk, the us and scandinavia.

he also handles patent and design enforcement matters, including litigation in the patents court, ip enterprise court and court of appeal, as well as the opposition divisions and boards of appeal of the european patent office.

 

technical expertise

rob’s experience covers a diverse range of technical fields, ranging from medical devices to petroleum engineering, the beverage industry, civil engineering and computer security, oil exploration and offshore wind turbines and ultrasound.

he also deals with patent applications in the business/banking sector and has drafted patents for specialist energy trading systems.

 

qualifications and memberships

  • certificate in ip law, queen mary college, university of london 1991
  • uk chartered patent attorney, 1995
  • european patent attorney 1995
  • patent attorney litigator and commissioner for oaths 2008
  • fellow of the chartered institute of patent attorneys
  • member of european patent institute
  • member of the american intellectual property lawyers association

 

higher education

llm (2003) and post-graduate certificate (2004), intellectual property litigation, nottingham law school

bsc, physics, university of durham, 1990

 

other

rob was recently highlighted as a “key lawyer” in the legal 500 2022 edition. he has previously been highlighted as a “notable experienced patent attorney” in the mip ip stars 2019 legal directory.

rob is a long-standing member of the cipa council and member of the media and public relations committee. in his former role of chairman of that committee, he had extensive experience of speaking on ip matters to the media.

rob is often approached to comment on industry issues and has been interviewed on various broadcasting channels such as bbc1, itv, channel 5, radio 4 and radio 5. he has also been quoted in the broadsheet newspapers including the times, the telegraph, the guardian and the financial times as well as numerous trade and industry publications.

he attends the aipla global congress in the us every year.

Christopher Davies

engineering, dispute resolution View profile consultant christopher davies

background

chris is a uk and european patent attorney.

he joined dehns in 1980 with a degree in physics from southampton university, and became a partner in 1987. as well as his patent attorney qualifications, chris is a certified litigator and is therefore qualified to conduct patent litigation in all the courts in the uk. chris is a senior member, and former head, of our engineering patent group. he became a consultant to the firm in 2021

 

type of clients and client work

chris has handled patent work in the physics, engineering, electronics and telecommunications fields, as well as design and industrial copyright work. as well as prosecution work, he was heavily involved in many contentious matters as well as infringement/validity opinions.

in recent years chris has successfully represented major international clients in epo opposition and appeal proceedings involving some of their highest profile and most important patents, a number of which have been litigated in parallel in the national courts..

chris is one of the uk’s most experienced epo opposition practitioners, typically representing clients in around twenty opposition and appeal hearings each year, and his success rate in these proceedings is extremely high.

chris has also acted on a number of occasions as an expert witness in uk high court proceedings on issues such as patent validity amendment.

 

expertise

christopher has experience of handling patent work in the physics, engineering and electronics fields, as well as design and industrial copyright work. the technical fields of the various cases mentioned above have included patents relating to disposable absorbent products, tissues, health care, paper making, batteries, printing and medical products. he has also been heavily involved in a number of major telecommunications cases, including litigation of patents concerning the gprs standard and concerning mobile email systems.

 

higher education

bsc, southampton university, physics, 1980

Jennifer Waters

engineering, dispute resolution View profile senior_associate jennifer waters

background

jennifer is a qualified uk and european patent attorney. she joined dehns in 2009 having graduated from oxford university with a first class master of engineering degree in materials science. jennifer was made an associate of the firm in 2014 and then senior associate in 2019.

 

type of clients and client work

jennifer acts for clients of a variety of sizes, from individual inventors, university spin-outs and smes all the way through to multinational corporations. she works with numerous norwegian based clients.

she has experience in drafting new patent applications, prosecuting these applications to grant before the uk and european patent offices, defending and filing epo oppositions, and also handling international patent portfolios.

jennifer has also been involved with litigation before ipec and in norway. jennifer also has extensive experience in providing strategic advice regarding the infringement and validity of patents.

 

expertise

jennifer’s work involves handling patents in a wide variety of engineering and materials fields, including: combustion engines, beverage dispensers, oil and gas extraction and processing technologies, electroosmotic materials, composites, super alloys and surface microstructures.

 

qualifications and memberships

  • uk chartered patent attorney, 2013
  • european patent attorney, 2013
  • certificate in ip law, brunel university, 2010
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute

 

higher education

meng (first class) materials science, university of oxford, 2009

jennifer’s fourth year research project focused on glazing in water soluble polymer films used to encapsulate consumer products.

 

other

jennifer was recognised as a “rising star” in the 2019 and 2020 editions of managing intellectual property’s ip stars publication.

she was also nominated by her peers as one of the world’s leading patent practitioners in who’s who legal: patents 2016.

Laura Ramsay

engineering, dispute resolution View profile partner laura ramsay

background

laura is a european and uk patent attorney recognised in the legal 500 by her clients as being both innovative and practical in her approach.

laura graduated from the university of cambridge with a first class master of science degree in physics and materials science and joined dehns in 2003. she became a partner of the firm in 2013.
type of clients and client work

a number of laura’s clients are start-ups or small/medium sized businesses at an early stage. here her focus is on working closely with the client to create an ip strategy that fits with commercial objectives. she advises on background landscape searching, building a useful portfolio of ip rights, ip licensing, and how to deal with third party rights or possible infringements.

she also has many years of experience in working with in-house ip departments. laura understands the internal pressure involved in managing a large patent portfolio, which may originate from multiple r&d sites. she will act responsively to quickly turn around drafting and prosecution work, often dealing directly with inventors to transform an invention disclosure into a patent application.

 

expertise

laura handles patent work in various fields spanning physics, engineering and materials science, including medical devices, renewable energy, nanomaterials, semiconductors, aerospace engineering, composite materials, process technologies, spectrometry, electromechanical controls and oil/gas exploration. she drafts and prosecutes both uk and european patent applications in these fields.

laura is regularly involved in opposition and appeal proceedings before the european patent office.

she can advise on all aspects of patent and design law including worldwide patent filing strategies, utility model and design registrations, enforcement of patents in europe, ip licensing, and issues of infringement and validity.

 

qualifications and memberships

  • uk chartered patent attorney, 2008
  • european patent attorney, 2007
  • certificate in ip law, university of london, 2004
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute
  • member of ficpi
  • basic litigation skills course, 2017

 

higher education

ma, msci (hons) physics and materials sciences, university of cambridge, 2003

masters project: “high aspect ratio piezoelectric strontium-bismuth-tantalate nanotubes”, journal of physics: condensed matter, 15 (2003), l527-l532.

 

other

laura was singled out in the 2018 edition of the legal 500 directory for her work with isansys lifecare regarding the granting of a patent for its wireless cardiac monitoring device ‘lifetouch sensor’. she was also listed as a “key lawyer” of the firm in the legal 500 2022 edition.

 

watch the short video below on the advantages that conceptomed, a norwegian company, experienced working with laura and using a uk patent attorney.

Adam Taylor

engineering, designs, dispute resolution View profile partner adam taylor

background

prior to joining dehns, he studied engineering at the university of cambridge, graduating with a first class master of engineering degree in 2003. during his studies adam worked for the uk ministry of defence where he gained experience in a wide range of defence and manufacturing industries. adam joined dehns in 2003, and was made a partner in 2013.

as a uk registered patent attorney and a european patent attorney, adam handles patent and design work in a variety of engineering fields

 

type of clients and client work

adam works directly with inventors, university technology transfer offices and applicant companies primarily based in the uk and norway, and this includes drafting and filing priority applications as well as co-ordinating prosecution of international patent families and conducting examination before the epo and uk ipo. he also works for large multinationals in relation to filing and prosecution of their epo and uk patent applications, as well as co-ordinating the preparation and filing of patent applications originating with their european inventors.

adam handles opposition and appeal work before the epo and regularly represents clients during epo hearings at first instance as well as during the appeal procedure. he advises clients in relation to infringement and validity of their own patents and third party patent rights and is highly experienced in relation to ip portfolio reviews for due diligence processes.

in addition to patent work, his practice extends to the registration and enforcement of uk and european community registered designs and related unregistered rights.

 

expertise

adam’s experience extends to a variety of fields focused on engineering and information technology, including aerospace, oil and gas/offshore technologies, heat and power production/distribution, hvac, mechanical engineering, medical devices, biometrics and smartcards.

qualifications and memberships

  • uk chartered patent attorney, 2007
  • european patent attorney, 2007
  • certificate in ip law, university of london, 2004
  • ip litigator
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute

 

higher education

meng (first class), university of cambridge, mechanical and materials engineering, 2003

adam was awarded the sir george nelson prize in applied mechanics by the university of cambridge, having achieved the highest marks in the third and fourth year examinations.

 

other

in 2007 adam received the gill prize from the chartered institute of patent attorneys for the best overall performance in the final examinations across the country.

adam was mentioned in the 2020, 2021 and 2022 editions of the legal 500 as a “key lawyer”.

Alex Gittins

engineering, dispute resolution View profile partner alex gittins

background

alex is a partner of the firm and handles a diverse range of work in the engineering, physical sciences and software fields, with a particular focus on aerospace and power systems engineering. he previously worked for a major engineering consultancy, and holds a degree in physics from imperial college, london. alex joined the firm in 2008.

 

type of clients and client work

alex advises on all aspects of patent and design law including worldwide patent filing strategies, enforcement of patents in europe, design registrations, ip licensing and issues of infringement and validity.

a large proportion of alex’s work relates to contentious proceedings at the european patent office (epo), with many years of experience representing clients before the opposition divisions and technical boards of appeal. alex is part of a revered team at dehns having an in-depth knowledge of the opposition and appeal procedure, and acts as lead advocate for roughly 10-20 opposition and appeal hearings each year. he has dealt with many of the more complex issues, such as where there is co-pending litigation, publication by public prior use, filing of expert opinion and evidence, to name a few.

alex has great relationships with inventors and enjoys learning about their technology. a number of his clients are smes and start-ups, with whom he has worked to obtain useful protection whilst bearing in mind the financial challenges that are often involved.

 

expertise

alex has experience in a diverse range of technical fields, from mass spectrometry through to blood analysis and consumer products. other areas of expertise include: medical devices (hematology and cytometry), energy generation (biomass and gas turbines) refrigeration, and oil/gas exploration (geophysics, drilling, completion).

 

qualifications and memberships

  • ip litigator
  • uk chartered patent attorney, 2013
  • european patent attorney, 2012
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute
  • member of the royal college of science and institute of physics

 

higher education

msci physics, imperial college, london, 2008

 

other

alex was mentioned in the 2020, 2021 and 2022 editions of the legal 500 as a “key lawyer” of the firm.

Tim Wilson

engineering, dispute resolution View profile partner tim wilson

background

after graduating with a degree in mathematics from the university of oxford in 2001, tim spent five years working for sharp corporation, developing new technologies for the consumer-electronics market, before joining dehns in 2006. he is a european and uk chartered patent attorney and primarily works in the fields of computer systems, electronics and signal processing. tim was made partner in 2018.

 

type of clients and client work

tim acts for clients of all sizes, ranging from individual inventors to multinationals, but has a particular interest in helping small and medium-sized technology companies. he works closely with several uk and scandinavian start-up companies, not only drafting new patent applications but also providing strategic advice on building and exploiting an effective patent portfolio. he is sensitive to the cost constraints faced by early-stage businesses.

 

expertise

he works in the fields of computer systems, software, electronics, signal processing medical technology and mechanical engineering. with a strong background in mathematics, he is especially well equipped to handle highly-mathematical inventions in areas such as cryptography, statistics, artificial intelligence and signal processing. in addition to drafting new patent applications, he has considerable experience in seeing patent applications through to grant before patent offices around the world, as well as advising on questions of infringement and validity. he also handles patent oppositions at the european patent office, and has been involved in patent litigation in both the united kingdom and the united states.

 

qualifications and memberships

  • uk chartered patent attorney, 2010
  • european patent attorney, 2010
  • intellectual property law post-graduate certificate, brunel university, 2007
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute
  • basic litigation skills course, 2017

 

higher education

mmath (hons), master of mathematics, university of oxford, 2001

 

other

tim was mentioned in the 2020, 2021 and 2022 editions of the legal 500 as a “key lawyer”.

publications:

“fitting yield curves with long term constraints”, smith, a. & wilson, t., research notes, bacon and woodrow, 2001.

“specifications for electronically enabled passports with biometric identification capability”, international civil aviation authority document 9303, part 1, volume 2.

“the european application home alliance (teaha) architecture”, ec community research and development information service (cordis), june 2006.

Annabel Beacham

chemical, dispute resolution View profile partner annabel beacham

background

annabel is a qualified uk and european patent attorney and is a partner in the firm. she joined dehns in 1994 having graduated from the university of oxford with a first class honours degree in chemistry and having subsequently been awarded a doctorate from the university of oxford for research in the field of carbohydrate chemistry. annabel became a partner in 2002.

 

type of clients and client work

annabel acts for a range of clients, including a number of us corporates. the majority of her practice involves prosecution and opposition work before the european patent office. she also handles applications for supplementary protection certificates and provides strategic advice regarding the infringement and validity of uk and ep patents.

 

expertise

annabel handles patent work in all areas of chemistry, including pharmaceuticals, agrochemicals, blood products, oil field services, cosmetics and personal care products.

 

qualifications and memberships

  • uk chartered patent attorney, 1999
  • european patent attorney, 1998
  • certificate in intellectual property law, queen mary college, university of london, 1996
  • fellow of the chartered institute of patent attorneys
  • member of the institute of professional representatives before the european patent office (epi)
  • foreign member of the american intellectual property law association (aipla)
  • member of the society of chemical industry (sci)

 

higher education

dphil, oxford university, “studies in higher sugars”, 1994

ma, oxford university, natural sciences (chemistry), 1991

 

other

annabel is the partner with responsibility for the firm’s formalities and records departments.

annabel was recognised as an “ip star” in managing intellectual property’s ip stars 2018 legal directory and as a “patent star” in the 20192020 and 2021 editions of the directory.

she was mentioned in the 2020 edition of the legal 500 as a “key lawyer” of the firm.

James Hull

engineering, dispute resolution View profile partner james hull

background

after graduating from the university of bristol with a degree in physics, james worked as a patent examiner in the uk intellectual property office for over four years. as part of this role, he searched and examined patent applications in both mechanical and electrical subject matter. james joined dehns in 2006, became an associate in 2012 and was made partner in 2016.

 

type of clients and client work

james works for clients ranging from individuals up to multinational companies, as well as overseas patent attorneys. james has extensive experience drafting and prosecuting applications in the uk intellectual property office and the european patent office. james also advises on infringement and validity of patents and has dealt with numerous appeals and oppositions before the european patent office.

in addition to patent work, he also files registered design applications and advises on matters of validity and infringement of registered and unregistered designs in the uk and europe.

 

expertise

james handles patent work in a variety of engineering fields, including aeronautical and automotive engineering, materials science, flow control systems, additive manufacturing, power generation, storage and transmission, electrical consumer goods, healthcare products and medical devices.

 

qualifications and memberships

  • european patent attorney, 2011
  • uk chartered patent attorney, 2010
  • intellectual property law post-graduate certificate, brunel university, 2007
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute

 

higher education

bsc, university of bristol, physics 1999

Adrian Samuels

consulting, engineering, dispute resolution View profile partner adrian samuels

background

adrian samuels is a uk and european patent attorney with an ma in physics from oxford university. he handles patent work in various fields of physics and engineering.

adrian joined dehns in 1995 and became a partner in 2003.

 

type of clients and client work

adrian has extensive experience of drafting original patent applications for direct clients, from start-ups to larger established companies; in particular he helps them take a commercially-focused strategic approach to building an ip portfolio which maximises company value. he also has indepth experience in contentious matters including european oppositions and uk and us litigation.

 

expertise

he handles patent work in various engineering fields including ultrasonic interfaces, control systems for domestic appliances, fluid control valves and various areas of physics such as optics and optical sensors.

adrian also has a significant practice in electronics both at systems level and component level; and in computer-implemented inventions, mainly for smaller companies in areas which have include telecommunications, short range radio data communication, mathematical modelling and microprocessor design.

 

qualifications and memberships

  • european patent attorney, 1999
  • uk chartered patent attorney, 1999
  • certified patent valuation analyst 2013
  • ip litigator
  • fellow of the chartered institute of patent attorneys
  • basic litigation skills course, 2017

 

higher education

ma, physics, university of oxford, 1994

 

other

adrian has been recognised as a “global ip star” in the managing intellectual property ip stars 2018 edition and as a “patent star” in the 2019 edition, where he was also highlighted as a “notable experienced patent attorney”. he was once again recognised as a “patent star” in the 2020 and 2021 editions of managing intellectual property’s ip stars directory.

Andrew Chiva

engineering, designs, dispute resolution View profile partner andrew chiva

background

andrew is a european patent attorney and chartered uk patent attorney. he joined dehns in 2002 after graduating from imperial college, london with a masters degree in physics. andrew handles patent work in a wide range of engineering-related fields and was made a dehns partner in 2013.

 

type of clients and client work

the majority of andrew’s clients are multi-national corporations and small/medium sized companies, although he also works with universities and individuals. he advises on all aspects of the patent process, including drafting applications, prosecution in multiple jurisdictions, post-grant proceedings at the european patent office, and patent infringement and enforcement matters.

 

expertise

andrew handles work in a wide range of technologies, including mass spectrometry, oil drilling systems, fire and security, containers, and sanitary products and equipment.

 

qualifications and memberships

  • certificate in ip law, university of london, 2003
  • european patent attorney, 2005
  • uk chartered patent attorney, 2006 (awarded gill prize for first place overall and strode prize for first place in practice paper)
  • fellow of the chartered institute of patent attorneys
  • european patent institute

 

higher education

msci (first class), imperial college, london, physics, 2001

 

other

andrew was awarded the gill prize and the strode prize by the chartered institute of patent attorneys for his performance in the institute’s final examinations.

Katherine Mabey

engineering, dispute resolution View profile partner katherine mabey

background

katherine joined dehns in 1999, having graduated from oxford university with a first class honours degree in physics. she became a partner in 2011 and handles patent work in various fields including physics and telecommunications. she also handles design work.

 

type of clients and client work

based in the brighton office, katherine drafts and prosecutes patent applications in a diverse range of fields of physics and engineering, including satellite navigation systems, packaging, oil drilling systems, personal care articles and medical devices. she also advises on infringement and validity of patents in the above fields, and handles design work. she has particular experience in oppositions and appeals before the european patent office. her clients range from large us multinational companies to smes and overseas patent attorneys.

 

expertise

katherine handles patent work in the physics, engineering and electronics fields, as well as design work. she has considerable experience of handling opposition and appeal work before the european patent office.

 

qualifications and memberships

  • uk registered patent attorney, 2002 (awarded gill prize for first place overall and strode prize in practice paper)
  • chartered patent attorney
  • european patent attorney, 2002
  • certificate in ip law, university of london, 2000

 

higher education

ma, university of oxford, physics (first class), 1999

 

other

in 2003 katherine was awarded the gill prize by the chartered institute of patent agents for achieving first place in the final examinations, and the strode prize for the top performance in the practice paper.

Neil Campbell

chemical, dispute resolution View profile partner neil campbell

background

neil is a european and uk chartered patent attorney. he graduated with a first class honours degree from the university of oxford, in natural sciences (chemistry). his degree included a year of research in sugar chemistry. he joined dehns in 1995, was made a partner in 2003, and handles patent work in a wide range of chemical fields.

 

type of clients and client work

neil handles patent work for a variety of clients, from sole-inventors and small start-up companies to large multinational corporations. he provides patent drafting, filing, international prosecution and strategic ip portfolio advice. he is also a regular traveller to munich and the hague where he represents his clients before the opposition division and appeal board at the epo. neil regularly handles 10 to 15 such hearings every year.

 

expertise

neil handles work in various technical fields, with particular expertise in polymer chemistry, especially in polyethylene and polypropylene manufacture and formulation. he also has considerable experience in the drafting and prosecution of pharmaceutical patents. other fields in which neil works include: marine paints, chewing gum, graphene and nutraceuticals.

 

qualifications and memberships

  • uk chartered patent attorney, 1999
  • european patent attorney, 1999
  • fellow of the chartered institute of patent attorneys
  • member of the european patent institute

 

higher education

ba (first class) university of oxford, natural sciences (chemistry), 1995

certificate in ip law, university of london, 1996

 

other

neil was recognised as a “patent star” in the 2020 and 2021 editions of managing intellectual property’s ip stars directory.

Thomas Kudlek

engineering, trade marks, designs, dispute resolution View profile partner thomas kudlek

background

thomas became a patentanwalt (german patent attorney) in 1995 after working for a munich based german law firm, and qualified as a european patent attorney in 1997. he is also a european trade mark and design attorney.

thomas co-founded kudlek, grunert & partner, a german firm of patent and trade mark attorneys, and joined dehns as a partner following the merger of the two firms in 2021 .

his patent work includes mechanical engineering, optics and electrical engineering.


type of clients and client work

thomas’ practice involves all aspects of patent, designs and trade mark law: drafting, filing and prosecuting german and european patent applications, dealing with oppositions and appeals, and registering trade marks and designs. thomas also has in depth expertise in copyright and domain names.

thomas also has expertise in the field of patent litigation and arbitration, and advises in relation to infringement and validity of german patents, whether obtained nationally or at the epo. he also advises on ip strategy and provides advice on due diligence.

most of his clients are large multinationals, including those based in asia, but he also has a number of smaller clients based in germany with whom he enjoys helping expand internationally.


expertise

thomas has technical expertise in fields such as mechanical engineering, automotive technology, electrical engineering optics and photonics. in particular, he has extensive knowledge of automotive technology, especially in automobile body and interior technology, common rail technology and hybrid systems.


qualifications and memberships

  • german patent attorney, 1995
  • european patent attorney, 1997
  • european trade mark and design attorney
  • chamber of german patent attorneys
  • european patent institute
  • international federation of intellectual property attorneys
  • international trade mark association
  • european communities trademark association


higher education

  • scholarship at the agricultural university of wageningen, the netherlands, 1996
  • dipl.phys – ludwig-maximilians university, munich, 1990 (core subjects: solid state physics, laser physics and optics diploma thesis in the field of solid state physics)


other

thomas speaks german, english and french.

thomas has been named as one of ‘germany’s best lawyers’ for patent law in an exclusive ranking published by the handelsblatt in june 2021.

Roberto Calamita

chemical, trade marks, dispute resolution View profile partner roberto calamita

background

roberto joined dehns in 1985 and was made a partner in 1996. he is a uk chartered trade mark attorney and is also a uk chartered and european patent attorney. roberto is a graduate of the university of oxford where he obtained an honours degree in natural sciences (chemistry).

 

type of clients and client work

roberto has more than 30 years patent and trade mark experience and has worked for a wide range of clients, from start-ups and smes through to blue chip global brands.

in relation to trade mark clients, roberto has specialised in devising and developing trade mark strategies for companies in the early stage of expansion. this has included creating and implementing global protection strategies based on the likely development of a business with a 10-15yr projection, and supporting organisations with overseas expansion to protect their brand both in and out of court.

roberto recently won a significant trade mark battle on behalf of a food sector client at the general court of the cjeu, highlighting his ability to advise on strategically important cases for major global brands. click here for further information on this case.

 

expertise

with substantial trade mark experience, especially in contentious matters, roberto has a diverse client base covering a range of commercial areas, including food and beverage, chemistry, pharmaceuticals, engineering, lighting, clothing and fashion, publishing and media, telecommunications and financial services.

in relation to patent matters, roberto prosecutes patent applications in all areas of chemistry, and with particular emphasis on materials, polymers and alloys. roberto has significant experience in relation to patent prosecution and opposition proceedings before the european patent office.

 

qualifications and memberships

  • european patent attorney, 1991
  • uk chartered trade mark attorney, 1991
  • uk chartered patent attorney, 1992
  • certificate in intellectual property law (distinction) from queen mary college, university of london, 1987
  • chartered institute of trade mark attorneys
  • fellow of the chartered institute of patent attorneys
  • european community trademark association
  • international trademark association

 

higher education

ma, oxford university, natural sciences (chemistry), 1985

 

other

roberto is regularly listed in the main legal and ip directories for his work. most recently, he was mentioned in the 2021 world trademark review’s annual “world’s leading trademark professionals” publication: “roberto calamita captains the group with poise, while serving as a vital partner to one of the world’s best-known food sector companies, whose lucrative uk and global growth strategy he has helped to guide for nearly 20 years“. roberto has also been included in managing ip – ip stars 2017 and in the 2017 edition of the legal 500 where he was described as: “an expert on spin-offs and smes who regularly advises pret a manger on its ongoing international expansion.

most recently, roberto was named as a “key lawyer” in the 2022 edition of the legal 500, one of the leading legal directories in the uk.

Clare Mann

trade marks, dispute resolution View profile partner clare mann

background

clare is a uk chartered trade mark attorney.

she joined the firm in 2000, having graduated from the university of hull with a first class honours degree in history. she became a partner in 2011 and handles trade mark work in a variety of sectors.

 

type of clients and client work

clare works for a wide range of clients, from individuals through to global corporations, handling all aspects of uk, european union, and worldwide clearance searching, prosecution and enforcement, as well as domain name disputes. she also manages significant global portfolios, and supports companies with their expansion plans by developing and implementing global ip portfolio strategies.

 

expertise

clare works with clients in a wide variety of sectors, including: sport, financial services, medical technology, food and beverage, entertainment, leisure, fashion, tourism and retail.

 

qualifications and memberships

  • uk registered trade mark attorney, 2005
  • chartered institute of trade mark attorneys
  • international trademark association

 

higher education

ba hons, university of hull, history, 1998

 

other

clare has been noted as “relaxed and unflappable under pressure” and highlighted for her “great manner with clients”; “mann is very professional, gives sound counsel and communicates clearly” in world trademark review’s annual “world’s leading trademark professionals” publication. in the 2021 edition of this publication, clare was noted for being “quick and responsive” and helping companies to expand their portfolios internationally.

clare was a ‘recommended lawyer’ in the 2017 legal 500 directory and has also been names as a “key lawyer” for the last few years, including the most recent 2022 edition.

most recently, clare was named again as a “key lawyer” in the 2022 edition of legal 500.

clare regularly represents the firm at conferences and other events, including speaking at industry seminars. she has also written and published a large number of trade mark articles – see below for further information.

Andrea Hughes

engineering, trade marks, dispute resolution View profile partner andrea hughes

background

andrea is a uk, german and european patent attorney. she joined dehns in 1989, having completed her beng in electronics and electrical engineering at the university of london, and was made a partner in 2000. she obtained a masters degree in law from the university of nottingham in 2000 and she handles patent work in the electronics and mechanical engineering fields.

andrea heads up the dehns office in munich where she has been based since 1999. in addition to being a uk, german and european patent attorney, andrea is also a registered trade mark agent and a member of the patentanwaltskammer.

 

type of clients and client work

andrea has particular experience in advising on, drafting and prosecuting european patents and she has considerable experience in representing clients at oral proceedings before the epo examining, opposition and appeal divisions.

her clients range from universities and ttos, to large multinationals requiring a global ip strategy with a structured ip portfolio.

 

expertise

she handles patent work in the electronics and mechanical engineering fields, and is a specialist in medical devices. she also handles trade marks in various fields such as medical technology and publications.

 

qualifications and memberships

  • uk chartered patent attorney, 1994
  • european patent attorney, 1994
  • uk registered trade mark attorney, 1994
  • professional representative before euipo, 1996
  • patentanwältin, 2019
  • registered trade mark agent (ireland), 2019
  • fellow of the chartered institute of patent attorneys (cipa)
  • patentanwaltskammer, germany
  • international trademark association
  • european patent institute

 

higher education

llm, nottingham university, intellectual property litigation, 2004

llb, university of london, law, 2000

beng, university of london, electronics and electrical engineering, 1989

ma translation, open university, 2019

 

other

having lived in germany for a number of years, andrea speaks fluent german.

Nick Leslie

dispute resolution View profile associate nick leslie

background

nick is an associate in our litigation team, focusing on intellectual property disputes. he is a dual-qualified english solicitor (2018) and canadian lawyer (2016), with considerable litigation experience in protecting and enforcing the full range of intellectual property rights. he has acted for clients in the english high court, the english court of appeal, and the ipec, recently acting for the defendant in icescape v ice-world international: the first case to apply the doctrine of equivalents following actavis v eli lilly.

nick’s non contentious work includes assisting clients with commercial arrangements for the creation and exploitation of intellectual property rights, including licences, assignments and development agreements. nick regularly advises smes and start-ups on preliminary aspects of development work, including third party contractual arrangements and the protection of confidential information. nick has considerable experience in the negotiation and preparation of international licence arrangements for trademarks and patents.

nick recently completed the postgraduate diploma in intellectual property law and practice at the university of oxford.

 

representative matters

  • horsham nutraceuticals ltd & anor v manna pro products llc [2019] ewhc 1935 (ch)
  • glew & others v amro biotech & others [2019] ewhc 3183 (ch)
  • icescape ltd v ice-world international bv and ors [2018] ewca civ 2219 – patent validity and infringement decisions in which the court of appeal decided on the application of g2/98 same invention concerning priority date, and applied the doctrine of equivalence following the uk supreme court’s decision in actavis uk ltd v eli lilly & co

 

qualifications and memberships

  • international association for the protection of intellectual property

 

higher education

  • postgraduate diploma in intellectual property law and practice, university of oxford (2020)
  • masters of laws, intellectual property law, queen mary university of london (2017)
  • bachelor of laws, cardiff university (2014)
  • bachelor of arts (biology & economics) colgate university (2010)

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