Profile












Published 23 March 2013

I am a barrister practising intellectual property, technology, media, entertainment and competition law from 4-5 Gray's Inn Square. I have appeared in several important cases including most recently Twentieth Century Fox and others v Harris and Strellson AG v Thornton & Ross Ltd.   I have written or contributed to a number of publications including "Enforcing Intellectual Property Rights" which I am now updating. I am an arbitrator and mediator and sit on the WIPO, Consensus Mediation and NIPC Arbitration and Mediation panels.

My Practice

Advice
Like most other members of the patent bar, I advise patent and trade mark attorneys, solicitors and in-house legal advisers on such questions as:
  • Can an invention be patented? Has a patent been infringed? Can we counterclaim for revocation?
  • Can a sign be registered as a trade mark? Is this trade mark registration invalid or can it be revoked? Has this trade mark been infringed?
  • Is this design registration valid? Has this registered design been infringed? or
  • Has this copyright, design right or right in a performance been infringed?
I also advise business owners and managers, venture capital, business angel and other investors, their accountants and other advisers under the Licensed or Public Access Rules on matters that do not require the intervention of an attorney, solicitor or other professional intermediary.   Typical matters might be identifying the optimum legal protection for a new intellectual asset or on assessing the strength of a patent or patent portfolio.

Contentious work
I advise, settle pleadings and other documents and represent parties to patent, registered or registered Community design disputes before the Patents Court, Patents County Court and hearing officers in the Intellectual Property Office. I provide similar services to parties to trade mark, copyright, unregistered design right, unregistered Community design, breach of confidence, passing off and other IP disputes in the Chancery Division, the Chancery County Courts and the Patents County Court (including the new small claims track about which I have written extensively).

I also help to resolve disputes through direct negotiation and mediation.

Non-Contentious Work
I advise and assist parties to complex or sensitive business negotiations such as bespoke software development projects and technology transfers. When a deal is agreed I draft an agreement or other instrument that reflects the parties' intentions

I also draft instruments that meet or my client's requirements such as standard terms and conditions of business, standard procurement terms, privacy statements, website access terms, end user licences and non-disclosure agreements.

Dispute Resolution Services
I am also arbitrator, mediator and domain name panellist.   I sit on the WIPO, Consensus Mediation and other panels. I have posted some of my older decisions under the Uniform Domain Name Dispute Resolution Policy on my Domain Name Decisions page.

Start-ups and Other Small Businesses

Over the years I have advised and represented many small and medium enterprises ("SME"). Through such work I have accumulated a great deal of knowledge and acquired considerable experience of their needs. Though the law applies to them as it does to all businesses they often require quite different advice than the advice that would be given to a larger entity.

For instance, it would be pointless to advise a start-up to take on an opponent with a much longer pocket in the Patents Court unless it had previously taken out intellectual property insurance or had some other funding for its claim.  I therefore encourage start-ups and other small businesses to consider before-the-end insurance when they seek advice on the optimum legal protection.

If such a business comes to me after a dispute has arisen I introduce them to alternative dispute resolution forums such as the Intellectual Property Office's Opinions service or the small claims track of the Patents County Court.

I distilled my knowledge and experience of advising and assisting SME in "Enforcing Intellectual Property Rights: A Concise Guide for Businesses, Innovative and Creative Individuals" which was published by Gower in 2009. Since I wrote that book new Rules and Practice Directions have been introduced to the Patents County Court (see my article "New Patents County Court Rules" 31 Oct 2010) including a new small claims track (see "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012). I am therefore updating my book and plan to deliver the manuscript for a second edition to my publisher later this year.

I also run the Inventors Club blog and Linkedin group. I set up and chair inventors clubs in Leeds, Liverpool and Sheffield. I attend a monthly IP clinic at Barnsley Business and Innovation Centre in conjunction with the Digital Media Centre. I used to hold similar monthly clinics at Bradford, Halifax, Huddersfield, Leeds, Rotherham, York and the Wirral which I have replaced with a national on-line service.

Biography

I was born in Manchester and educated at St Paul's School, the University of St. Andrews. and the University of California at Los Angeles. Before reading for the Bar I worked in the City as a research consultant and investment analyst. While working as an analyst I joined Lincoln's Inn and taught myself enough law in my spare time to pass Part I of the Bar exams.  I read for Bar finals at the Council of Legal Education, Inns of Court School of Law (now the City Law School) and was called to the Bar in July 1977.

Pupillage
I spent the first 6 months of my pupillage in the chambers of Roy Beldam QC (later Lord Justice Beldam) at 1, Paper Buildings under Roger Cox (later His Honour Judge Cox) where I learned about crime, family, personal injuries and clinical negligence. I spent the second 6 with Robert Reid (later His Honour Judge Reid QC) at 9 Old Square and it was there that I received my first brief.  I represented the Bank in Williams & Glyn's Bank Ltd. v Brown in the Dartford County Court and actually got an order for possession though it was reversed on appeal in the Court of Appeal and House of Lords. That appeal is better known as Williams & Glyn's Bank Ltd v Boland [1981] AC 487, [1980] UKHL 4, [1980] 2 All ER 408 with which it was conjoined.

8 Old Square
Between 1978 and 1982 I practised general chancery law (which included some intellectual property) from 8 Old Square, Lincoln's Inn.

VISA
In 1982 I was appointed as legal advisor to VISA International for Europe, the Middle East and Africa. Banks were developing electronic funds transfer systems which gave rise to many new legal issues on such matters as authentication, competition, privacy, software development transactions, telecommunications regulation and trans-border data flow. I wrote a number of articles and other publications including "Electronic Funds Transfer: the Emerging Legal Issues" for the Law Society Gazette in 1984 and contributed sections on computer contracts, data protection and electronic banking to Atkin and the Encyclopedia of Forms and Precedents. I also addressed The International Bar Association in Vienna in 1984 and the International Chamber of Commerce conference on electronic banking in Madrid in 1986.

Manchester
Between 1985 and 1995 I practised from Bridge Street Chambers in Manchester. Although I accepted all kinds of chancery work I tended to get more intellectual property work and computer contract work than anything else. I joined the Society for Computers and Law and set up a Northern Branch for the Society, the first outside London which I chaired for its first 4 years. I also served on the Council of the Society.

New Court
One of my first clients in Manchester was the National Computing Centre. The company solicitor encouraged me to return to London and introduced me to New Court which claimed to be the oldest patent set. Between 1988 and 1995 I practised in New Court and Bridge Street concurrently.  During that time I was instructed in three important cases::
  • Deutsche Bank v Ariff  1991 FT LR 20 Dec;
  • Total Information Processing Systems v Daman [1992] FSR 171; and
  • Ibcos Computers Ltd. v Barclays Mercantile Highland Finance Ltd. [1994] FSR 265.
I also qualified as a Fellow of the Charted Institute of Arbitrators in 1992.

NIPC
In May 1997 several members of New Court opened an associated set in Lancaster Buildings known as Northern Intellectual Property Chambers ("NIPC").  NIPC was the first and so far only specialist intellectual property set outside London.  While I was at New Court I was instructed in the following cases::
I also qualified as a mediator in 2002 and joined the WIPO arbitration, mediation and domain name panels.

4-5 Gray's Inn  Square
On 11 Feb 2013 I was invited to join 4-5 Gray's Inn Square, one of the leading commercial and public law sets in London which is rapidly developing a following in intellectual property, technology, media and competition law.

Publications and Presentations

In addition to Enforcing Intellectual Property Rights I have contributed to a number of other works and published many articles. As well as this and the Inventors' Club blogs also keep IP Yorkshire, IP North West and NIPC-Gulf. Particulars of those talks and presentations appear on my Publications and Presentations pages respectively.

Interests

I do have a life outside the law.

I live near Holmfirth, a beautiful little town in the Yorkshire Pennines where the BBC set the long running comedy series Last of the Summer Wine. There is an almost endless variety of lovely walks and drives in the vicinity.  I have lived in the Holme Valley for nearly 30 years and still discover something new and wonderful almost every day.

I am interested in computing and keep abreast with science and technology.   I also love the arts, particularly dance, drama, film, music and painting. I subscribe to the Huddersfield Choral Society. I enjoy all sorts of dance, especially ballet (about which I blog in Terpsichore).  I still attend ballet class once a week at The Base Studios in Huddersfield. I am often in the audience at the National Media Museum in Bradford and am a frequent visitor to Salts Mill in Saltaire and the Yorkshire Sculpture Park near Wakefield.

Social Media

You can follow me on Facebook, Linkedin, twitter and Xing.

Instructing me

As I live in Holmfirth I am happy to see clients in Bradford, Huddersfield or Manchester as well as London.

I try to quote a fixed fee for court, conferences and paperwork before wherever possible and I will always agree a charging basis before doing the work so that the client knows exactly how much he or she will have to pay.

Since the 31 Jan 2013 the basis upon which barristers accept instructions from solicitors has changed. I contract with solicitors, patent and trade mark attorneys on the terms that the Commercial Bar Association has negotiated with the City of London Law Society.

For clients who come to me directly I am bound by the Public Access Rules I contract in accordance with the model letters prepared by the Bar Council.

If you want a quotation for a piece of work please fill in my enquiry form.   You can also email my clerk or call him on +44 (0)20 7404 5252.