Best brains in ...

Patent litigation, licensing, collaborations and manufacturing agreements in the life sciences industry, as well as aspects of pharmaceutical regulatory law.

Highlight of your career so far?

The recent patent case which we won in the Patents Court for Siemens Magnet Technology against the University of Queensland. It involved particularly complex technology.

Most challenging job you've ever done?

Co-ordinating patent litigation in the UK and three other European states for a US East Coast life sciences company relating to its key product. Our expert witness was from the west coast of the US and the client's exclusive licensee, who was involved in all key decisions, was Scandinavian. The matter was eventually settled on advantageous terms for our client.

What about outside the UK?

Most of my work has an international element, but a more extreme example was negotiating an agreement for a Dutch company which was taking a licence from an Italian company and the agreement was subject to Swiss law.

An example of your great client service?

A client in the veterinary products business called from a trade fair to say that a competitor was launching an infringing product at that fair. Within an hour and a half I had analysed the infringing product, drafted a cease and desist letter and travelled to the fair to serve the letter on the infringers who pulled their product immediately.

Best example of a creative legal solution?

I was involved in the first case where the Patents Court sat outside London. We asked it to sit in Birmingham as the lawyers' clients and witnesses were all from that city. We won the case but the court has not repeated the experiment!

When have you ever given a client a real competitive edge?

One of my clients is involved in enforcing patents as an investment. I put him in contact with an inventor who had a patent but could not afford to enforce it. As a result of the subsequent enforcement program we have made several million pounds for the client and the inventor.

What's been written or said about you that you're most proud of?

'I have over 12 years experience in IP licensing and technology transfer – I'd rate Luke as one of the best legal advisors I've come across. I have recommended Wragge & Co to other organisations largely on the basis of Luke's service [to the client]. Luke would be one of only a handful of legal advisors I'd choose from to do business with.'

'Luke did an absolutely superb job for our company and our corporate partner. ... We would without any hesitation re-engage or recommend to a third party Luke Kempton & Wragge & Co for any future work in European litigation matters.'

Experience

• Advising Eisai Europe on a cross-border €95 million licence and copromotion agreement with Bial-Portela & CA, S.A for a medicine for the treatment for epilepsy. Eisai has a sole licence to market, promote and distribute the novel once daily anti-epileptic Zebinix® (eslicarbazepine acetate) within Europe.
• Advising a Japanese pharmaceutical company on a multi million euro cross-border Distribution, Marketing and License agreement with a US biopharmaceutical company in relation to a cutaneous patch. The client obtained the rights for Europe the Middle East and Africa.
• Advising a Japanese pharmaceutical company on a multimillion US dollar cross-border Collaboration and License Agreement with a US biopharmaceutical company in relation to an antibiotic. The client obtained the rights for Europe the Middle East and Africa.
• Acting for Eisai Europe on its acquisition of the European rights to the intrathecal painkiller Prialt from Elan for $100 million. This was a complex multijurisdictional deal.
• Acting for Cambridge Antibody Technology Group (now Medimmune) on a number of its patent licensing transactions including deals with Symphogen, Crucell and BioInvent.
• Drafting and negotiating all the clinical trial site agreements for two worldwide Phase I clinical trials for a European biotech company.
• Advising a European gene therapy company on numerous agreements including a license to a particular target.
• Advising a UK based SME on the grant of a complex license to manufacturing technology to a Far Eastern company.
• Advising NHS Innovation Hubs and Universities on the licensing of their technology.
• Drafting and negotiating drug manufacturing agreements including those for a large US biotech corporation, a UK big pharma company and a UK biotech company.
• Advising Novozymes A/S on and coordinating, multijurisdictional patent litigation throughout Europe (with parallel proceedings at the EPO) against DSM relating to an enzyme for use in baking.
• Advising Siemens in relation to litigation with the University of Queensland in respect of a patent for the design of magnetic resonance imaging machines. The client won at trial on all issues relating to infringement and validity.
• Advising in relation to due diligence on numerous corporate transactions including negotiating and drafting associated assignments, licenses and transitional agreements.
• Advising a Chinese company on the IP aspects of the purchase of UK based hi tech assets.
• Advising investors in various spinouts from Universities and companies on acquiring the IP.
• Carrying out patent freedom to operate reviews in relation to various technologies, either freestanding or in connection with corporate transactions.

Professional experience

• Partner Wragge & Co - May 2008
• Associate and Director - Wragge & Co - September 1996 - May 2008
• Qualified as a Solicitor - September 1994
• National law firm 1992-1996

Specialisms

Intellectual property licensing, collaboration agreements, supply agreements, patent litigation, freedom to operate reviews, due diligence

Business sectors

Life Sciences, technology companies

Education

• Law Society Finals - 1992
• Common Professional Examination (Commendation) - 1991
• University of Leeds, PhD - Biochemistry - 1990
• University of Leeds, BSc (Hons) Applied Zoology 1983-1986
• Abingdon School, Oxfordshire

Memberships

• Charted Institute of Patent Attorneys (CIPA)
• CIPA Exploitation, Competition and General Laws Committee
• Licensing Executives Society

Recent presentations

• C5 Pharma & Bio Patent Litigation conference, 17-19 February 2009, Amsterdam - "The role of the expert witness in patent litigation".
• C5 Biotech Patenting conference, 17-18 March 2010, Munich - Patent Due Diligence half day workshop
• C5' Biotech Patenting Forum 6-7 October, 2010 - "Second Medical Use Claims after G2/08" (with Paul Commander of Eli Lilly)
• Falconbury conference on Commercial Contracts for the Pharmaceutical Industry, 15-17 November 2010 - SPCs
• CIPA East of England Meeting - 21 January 2011 - "Licence Agreements - pitfalls and opportunities"
• CIPA Yorkshire Meeting - 11 March 2011 - Patent Due Diligence
• International Patent Litigation Seminar, Munich - UK Patent Litigation
• CIPA Life Sciences Seminar - 17 November 2011 - "Licensing in the Life Sciences - trying to satisfy everyone's expectations" (with Marion Rees of Oxford Nanopore Technologies)