Q: Can you tell us about your team (eg, size, practice focuses and key individuals)?
A: Powell Gilbert focuses exclusively on IP dispute resolution and has one of the largest IP litigation teams in the United Kingdom, with 10 partners, around 20 associates and a skilled litigation support team. All of our litigators have strong technical backgrounds, including many lawyers with PhDs in disciplines such as molecular biology, computer science, nanoscience and pharmacology.
We are experienced in patent litigation across a broad range of technologies and are particularly renowned for acting in highly complex biotechnology patent cases, as well as playing a leading role in large telecoms and FRAND licensing litigation. With particular expertise in devising effective strategies and coordinating multi-jurisdictional patent litigation, we frequently manage European patent litigation for our clients.
We also have a knowledgeable team specialising in soft IP matters, advising on trademark and brand issues (including counterfeit, parallel trade and lookalike disputes), designs and copyright across several sectors.
Q: What are some of the advantages of working in a boutique?
A: A key advantage is that we can be extremely flexible in how we handle cases and run our business. We do not have to deal with the interdepartmental politics or red tape that can hinder IP teams in large, international firms. For example, in our multi-jurisdictional coordination work, we can collaborate with the best lawyers in each country for the particular case, irrespective of the firm at which they are based.
We have also been able to build a specialist team that excels in developing case-specific litigation strategies. As the most active firm in the Patents Court, our lawyers have a significant amount of practical experience developed through involvement in cases across a wide range of technical areas.
All of this provides a work environment where we thoroughly enjoy the challenges of IP litigation and develop the best approaches to achieve our clients’ commercial objectives.
Q: The London legal IP market is extremely competitive – how do you ensure that you stand out to new recruits and clients?
A: Our lawyers have been involved in some of the most high-profile cases in the United Kingdom and Europe. We have the opportunity to work for great clients who trust us with their most technically and commercially complex matters. This attracts ambitious new recruits who know that they will develop their own practice by working on disputes at all levels of the UK courts and across a broad range of technologies.
We strive for excellence in every aspect of our business. Our foundation for this is an intelligent, dynamic and enthusiastic team, in which every individual contributes to the success of the firm. We encourage an open, informal and honest atmosphere where people can provide their opinions, ask for support and offer their expertise.
Penny Gilbert and Peter Damerell, partners
Q: From a firm perspective, what was your highlight of 2019?
A: A particular highlight was our biennial staff retreat, to which every employee is invited. It coincided with the European summer heatwave and we were fortunate to be able to make the most of the activities on offer. As 2019 involved a packed schedule of hearings, trials and appeals, it was a fantastic opportunity for everyone to contribute their thoughts on the practice’s strengths and weaknesses, as well as to relax and enjoy some downtime.
One focus of the getaway was to assess how we can further minimise our impact on the environment, resulting in a new waste and recycling system in the office and the decision to support the Woodland Trust with our Christmas donation in 2019.
Q: Are there any industries or sectors in which you expect to see more activity over the next few years?
A: In recent years there has been a notable increase in challenges to patents relating to biologics and biosimilars, as well as to nucleic acid-based diagnostics and therapeutics. Activity in this area continues to increase and we expect it to do so for the next few years.
There has also been a sharp upswing in litigation in the United Kingdom with regard to SEPs and FRAND licensing terms since Mr Justice Birss’s seminal decision in Unwired Planet v Huawei. Many SEP owners appear keen to take advantage of the thorough assessment of infringement and validity of SEPs available in the UK courts as well as the possibility of obtaining declaratory relief with regard to FRAND licensing terms. We expect this trend to continue, particularly if the Supreme Court upholds the judge’s approach to injunctions in SEP cases.
Q: What have been some of the key trends in English and European patent litigation over the last year?
A: The UK Supreme Court has continued to hear appeals in patent cases addressing fundamental aspects of patent law, such as the test for obviousness (Actavis v ICOS) and plausibility/second medical use (Warner Lambert v Actavis) and the approach to injunctions in SEP cases (Unwired Planet v Huawei). This is set to continue in 2020 with an assessment of insufficiency (Regeneron v Kymab). We are delighted to have been involved in most of these cases.
One topic of particular interest across Europe is the assessment of proportionality when granting injunctions in patent cases. In the United Kingdom, recent cases such as Boston Scientific v Edwards and Regeneron v Kymab have continued to emphasise the importance of proportionality. In other jurisdictions, including Germany and the Netherlands, the issue continues to be studied to try to find a balanced approach that complies fairly with the EU IP Enforcement Directive.
Q: There appears to be growing interest in London as a centre for patent disputes, particularly in the SEP/FRAND space – do you expect that to continue?
A: Yes, we expect that the UK courts will continue to remain an important centre for patent disputes, both in SEP/FRAND cases and otherwise. The full examination of patent infringement and validity issues, specialised judges, procedural benefits (including the potential for disclosure, cross-examination of witnesses and reasoned judgments) means that parties are likely to continue to seek to litigate before the UK courts.
With regard to SEP/FRAND cases, the decision of the Supreme Court in Unwired Planet v Huawei is eagerly awaited all over the world. While UK courts will remain an attractive forum for resolving infringement/validity disputes regardless of the decision, the approach adopted by the Supreme Court to determine FRAND licensing terms and the grant of injunctions is likely to have a significant impact on the declaratory relief sought.
Q: What advice would you give to young patent litigators starting their career?
A: Our key advice would be to try to obtain as much exposure to hands-on litigation experience as you can in a wide variety of technical areas. There is no substitute to learning through experience – enjoy developing your understanding of the law, immerse yourself in technical discussions and consider everyone’s opinions. Many strategic decisions are extremely difficult to make, with no firm right or wrong answer, so get involved in debates and weigh up the pros and cons.
Remember that the IP community is a relatively small one. While the UK litigation system is adversarial, be polite and respectful to everyone that you meet as it takes a long time to build a good reputation but a very short time to earn a bad one. People enjoy working most when they like and respect the people with whom they interact.
Q: What are your main priorities for your firm’s development over the next five years?
A: Our key priorities are to continue to maintain our top-tier ranking for patent litigation in the United Kingdom, and to continue to attract clients and retain and attract the best patent litigators in London. Our people are our most significant strength and we intend to continue fostering an inclusive work environment where mutual respect is required from everyone, and every person feels supported and empowered to achieve.
We want to ensure that we remain at the forefront of the IP profession in Europe, working on the most technically and commercially challenging cases and contributing to the development of European IP law.
And, of course, we want to continue to do our best to win for our clients and to have fun doing so!
Q: Finally, if you could make one change to the patent world, what would it be?
A: A key issue in Europe currently is the Unified Patent Court, which remains in limbo pending the decision of the German Constitutional Court and the question of the continued involvement of the United Kingdom after Brexit. This uncertainty is a source of frustration for many of our clients, as well as ourselves, and we would like to see it resolved.
If the system comes into effect, it will represent a highly significant change to patent litigation in Europe. It will take a number of years to settle into a reliable and consistent system, with the transition period offering numerous opportunities and challenges from a strategic perspective. We would certainly hope to be a part of the new system if it goes ahead and help to guide our clients through these opportunities – and the potential risks – that it will offer.