I am a contentious intellectual property lawyer with experience of cases covering the full range of IP rights: patents, designs, copyright, trade marks and breach of confidence. I have a keen interest in the development of the firm's China office having helped to establish it in 2008.
Tel: +44 (0)870 730 2812
Services: Intellectual Property
Best brains in ...
- IP enforcement in the Patents County Court.
- Patent entitlement disputes.
- Devising effective IP registration and enforcement strategies for clients looking to do business in China.
Highlight of your career so far?
Acting as managing fee earner in a 13-day patent entitlement trial in 2006 for Cinpres Gas Injection against Melea. This case was part of the longest-running dispute in the English patents courts. We reversed an earlier Court of Appeal decision concerning Melea's entitlement to a patent for gas-assisted plastic injection moulding technology. The decision turned out to be based on perjured evidence from the inventor.
Most challenging job you've ever done?
While the Cinpres case is my career highlight so far, it was also my most challenging job to date. This was due to the fact-heavy nature of the case, the history of litigation between the parties and the extent of the disclosure exercise. Marshalling the witnesses was also tricky as they were based in a number of different jurisdictions. In addition, the main protagonists were both in their eighties which brought its own challenges!
What about outside the UK?
A number of the patent and design cases that I have worked on contain an international element. I regularly liaise with lawyers in the US, China, Germany, Poland and Ireland.
I successfully defended Cobra UK Automotive Products Division in a patent infringement claim brought by BOS Gmbh. I worked closely with our German office as there were parallel proceedings in Germany.
What's your definition of going the extra mile... And when have you done it?
In response to client-driven demand for Western-style legal service in an unfamiliar jurisdiction, in 2007 I packed up my household and moved to Hong Kong and China for the best part of two years to assist in setting up our Guangzhou office. I forged relationships with local Chinese lawyers and other professionals over there. We work hand-in-hand with these lawyers to deliver great client service combined with local knowledge of the Chinese market and expertise in navigating the workings of the Chinese legal system.
Best example of a creative legal solution?
Cinpres again. Re-opening a case which had been decided by the Court of Appeal in 1998 based on the evidence of an inventor who had admitted perjury in earlier Patent Office proceedings, we finally secured Cinpres' entitlement to the patent. The case was highly commended in the FT Innovative Lawyers Report in 2008 for dispute resolution.
How do you get under the skin of a client business?
Secondments are a great way of getting under the skin of a client's business. In 2002, I was seconded to the legal department of British Airways for six months. In the aftermath of the events of 9/11, this was a very challenging time for the business. Stepping into the client's shoes and understanding the pressures faced by an in-house legal team impressed upon me the importance of providing commercial solutions to legal issues rather than mere re-statements of the law.
What's your single greatest contribution to Wragge & Co's corporate responsibility?
In my early days at the firm, I gave pro bono advice at the Citizens Advice Bureau. Interesting people, interesting issues!
What's been written or said about you that you're most proud of?
It's very satisfying securing successful results for clients. In 2010, I acted for Kohler Mira in three cases involving patent and design infringement. Director of marketing Craig Baker was delighted with the result, which he described as "a very successful chapter in Mira's IP history". He said that the settlement was "a fantastic way to finish the year", thanked me for "driving Mira on and chasing him up to get the job done" and described me as "a star throughout" which left me feeling – well - very shiny!
- Advised Kohler Mira, a leading manufacturer of bath and shower products, in its Community registered and UK unregistered design right infringement claim against Bristan. Trial took place in the Patents County Court in November 2012.
- Successfully defended Cobra UK Automotive Products Division in a patent infringement claim by BOS Gmbh. Trial took place in the Patents County Court in July 2012.
- Advised Kohler Mira on 3 High Court actions against Triton plc in relation to patent and design infringement resulting in Triton's products being withdrawn from sale.
- Advised Alcon Components in its defence of a patent infringement claim and successfully transferred the action from the High Court to the Patents County Court.
- Acted for Cinpres Gas injection in a patent entitlement dispute against Melea which culminated in a 13 day trial in the Patents Court in 2006. Cinpres secured success in the Court of Appeal.
- Advised Guangzhou Fortunique in its defence of an action for breach of confidence. Successfully narrowed the scope of an injunction and settled the dispute through mediation.
- Advised Baxters in a claim for copyright infringement and passing off in respect of labels on soup products.
- Advised British Airways following a six month secondment to the company. Recovered top level domain name ba.info in administrative proceedings under ICANN's Uniform Domain Name Dispute Resolution Policy.
- Conducted an in-depth review of 33 of British Airways' key trade marks and advised on strategies for clearance, registration, renewal, licensing and enforcement.
- Advised British Airways on a trade mark infringement claim against Britain Airways.
- Director, 2011
- Secondment to Wragge & Co in China, 2007-2009
- Associate, 2003
- Qualified into Wragge & Co's IP team, 1999
- Trained at Wragge & Co, 1997-1999
Contentious intellectual property including patents, designs, trade marks, passing off, copyright and breach of confidence.
Automotive, manufacturing and China-focused business
- University College London/King's College London, Certificate in Chinese Intellectual Property Law and Practice, 2007
- University of Bristol, Diploma in Intellectual Property Law and Practice, 2000-2001
- Admitted as a solicitor, 1999
- College of Law, York, Postgraduate Diploma in Legal Practice, 1995-1996
- University College London, LLB (Hons), 1992-1995
- Kind Edward VI High School for Girls, Birmingham, 1990-1992
Registration in Foreign Jurisdictions:
- Registered Legal Representative (Guangdong Province, China), 2008-2012
- Registered Foreign Lawyer (Hong Kong), 2008-2009
- Chartered Institute of Patent Attorneys
- The Institute of Trade Mark Attorneys
- China Britain Business Council
Publications and presentations:
- Regular speaker on IP enforcement issues in China including events organised by CIPA, CBBC, University of Birmingham, HSBC and Wragge & Co.
- Organiser of the annual European IP seminar in China, in conjunction with the Guangdong Intellectual Property Office and the Shenzhen Patent Association.