18 Oct 2017
My job is to keep clients out of trouble or, if trouble cannot be avoided, to extricate them from it as quickly, cheaply and satisfactorily as possible. I also help clients to protect and thereby leverage and exploit their investments in branding, design, technology and creativity
I do that in several ways. When a client has an idea for a new business, product or service, I help him or her to identify possible risks and opportunities. I also advise the client how to avoid or reduce the risks and suggest ways in which the client can seize opportunities.
I can do that because I have many years experience of advising on difficult points of Intellectual property (“IP”) and technology law, drafting complex legal instruments and representing clients in negotiations and court, Intellectual Property Office arbitration, mediation and other proceedings.
I have gained that experience as a barrister specializing in IP and related areas of law. For those not familiar with the legal systems of the United Kingdom, legal services are provided by different legal professionals who practise in different ways. Solicitors who can practise in association with others manage their clients’ legal business and conduct litigation on their behalf. Patent and trade mark attorneys prosecute patent, trade mark and design registration applications. Barristers, who generally practise solo, advise and assist solicitors and attorneys on difficult points of law, by drafting complex documents or representing them in courts and other tribunals. All the judges who have ever sat in the Patents Court and Intellectual Property Enterprise Court (“IPEC”) as well as most of the judges who sit or have sat in the other superior courts of the UK practised as barristers in England, Wales or Northern Ireland or as advocates in Scotland before they became judges.
I am sometimes asked for examples of the work I do.
Here are some of the jobs I do for businesses that are not in a dispute:-
Early Stage Businesses: I listen to founders with an idea for a new business, product or service and warn them of legal pitfalls. I advise them how they might avoid those pitfalls such as obtaining a patent, trade mark or registered design or by keeping their ideas under wraps and relying on trade secrecy laws. I urge them to make sure they have the means of defending themselves through insurance or other funding. If they do not already know a patent or trade mark attorney I help them find one with exactly the right qualifications and experience that they need and assist them to instruct him or her.
Business Documents: I draft, review and advise on all kinds of contracts ranging from terms and conditions, website access terms and privacy statements, non-disclosure agreements and confidentiality clauses, end-user licences, software development contracts, hardware and software maintenance agreements, source code escrow instruments, agency, distribution and franchise agreements, patent, trade mark, copyright and other IP licences, assignments and joint ventures.
IP Advice: Working with R&D and marketing personnel, in-house legal advisors, patent and trade mark attorneys and external professional advisors, I help businesses identify intellectual assets and suggest ways of protecting and making money from them. I advise prospective investors and purchasers on the validity, scope and extent of patents, trade mark and design registrations, the compatibility of licence agreements and other transactions with national and EU competition law and whether they are FRAND (fair, reasonable and non-discriminatory).
Here are some of the things I do where there is or may be a dispute:-
Pre-Action Negotiations: I advise on the merits of an intended or threatened claim and advise how a dispute may be avoided. I draft, review and advise on letters before claim and responses in accordance with the Practice Direction Pre-Action Conduct and Protocols and the Code of Practice for Pre-Action Conduct in Intellectual Property Disputes. I represent parties in direct negotiations, mediations, arbitrations and other ADR forums. I suggest alternatives to litigation where they are viable such as domain name dispute resolution and IPO examiners’ opinions on validity and infringement.
Litigation: I appear in the Business and Property Courts (including the Patents Court and IPEC multitrack and small claims track) in the Rolls Building and Birmingham, Bristol, Cardiff, Leeds and Manchester hearing centres, the Court of Appeal and Supreme Court. I apply for, and resist, interim injunctions including search orders and freezing injunctions, strikeouts and summary judgments. I settle particulars of claim, defences and replies, Part 18 requests and replies, requests for specific disclosure and other interim orders. I appear at case management conferences, pre-trial reviews and trials. I advise on prospects and grounds of appeal and appear at appeal hearings.
Arbitration: I draft arbitration agreements and arbitration clauses in commercial agreements. I settle arbitration notices, points of claim and defence and appear at meetings and hearings. I also sit as an arbitrator.
Mediation: I draft mediation agreements, opening and confidential statements and appear at mediations. I also act as a mediator.
Domain Name Dispute Resolution: I draft complaints and responses in domain name dispute resolution proceedings and sit as a panellist for the WIPO.
IPO Opinions: I draft requests for opinions and replies to requests for opinions.
For particulars of my qualifications and experience, see my Profile. For information about instructing me, see Instructing me. If you want to discuss the services that I offer, call me on +44 (0)20 7404 5252 or send me a message through my contact form.
NIPC Inventors Club