Intellectual property

Recent experience includes:

Novacyt S.A.

Advised Novacyt on acquiring the entire share capital of IT-IS International Ltd, a profitable diagnostic instrument development and manufacturing company, for an initial cash consideration of £10.1 million. IT-IS is the exclusive manufacturer of Novacyt’s q16 and q32 rapid polymerase chain reaction (PCR) instruments and the deal was vital to securing key IP for Novacyt's rapid-PCR instruments.

UCB

Advised UCB in relation to a new collaboration and licensing agreement with Lacerta Therapeutics, a Florida based clinical stage gene therapy company. The research collaboration and licensing agreement will focus on a central nervous system (CNS) disease with a high unmet need. Lacerta Therapeutics will lead research, preclinical activities and the early manufacturing process development, while UCB will complete IND-enabling studies, manufacturing and clinical development. This new collaboration will allow UCB to access Lacerta Therapeutics’ expertise in AAV-based CNS targeted gene therapies, fortifying UCB’s ability to produce effective treatments for neurodegenerative diseases. The IP issues were particularly complex given that this is new technology and the IP landscape is very uncertain.

Novacyt S.A.

Advised this Euronext/AIM-listed international specialist in clinical diagnostics on the IP aspects of its acquisition of IT-IS International Ltd, a diagnostic instrument development and manufacturing company. The acquisition secured key IP for Novacyt's q16 and q32 rapid-PCR instruments crucial for near-patient testing of COVID-19.

Shield Therapeutics plc

Advised on the IP aspects of this company's AIM IPO.

BTG plc

Advised this publicly listed company on a number of matters, including:

  • the IP aspects of its acquisition of EKOS Corporation, a manufacturer of interventional products for the treatment of blood clots; and
  • the purchase of the residual financial interest of the originator of the Varithena foam sclerotherapy technology for a one-off cash payment of £23 million, ensuring that BTG retains 100% of the future value of Varithena.

Piramal Enterprises Limited

Advised this Mumbai-headquartered life science company on the IP aspects of its sale of Piramal Imaging SA to UK based medical imaging services provider Alliance Medical Group, part of the Life Healthcare Group.

Individual inventor

Advised an inventor in relation to a diagnostic and treatment device in the ENT area. We provided strategic and practical legal advice to clarify the position on IP ownership and control over the product, and to prepare the ground for financial investment into and commercialisation of the device.

Cross border litigation - Protecting the shape of a medical device

Providing a global 3D trade mark protection and enforcement strategy to an international pharmaceutical company in relation to its multi billion pound medical device. As part of its work Stephenson Harwood acted as coordinating counsel to achieve successful preliminary injunctions in Poland, Czech Republic, Slovakia, Germany and South Korea against multiple generic companies. Proceedings were also initiated in the UK but settled shortly before trial.

Cross border litigation - Protecting distinctive getup

Working with local counsel to obtain a successful preliminary injunction in Sweden against a generic company that had copied our client’s distinctive colour combination getup.

Cross border litigation - Protecting well known brands

Acting as coordinating counsel in relation to what was probably the largest piece of trade mark pharmaceutical litigation to date. The dispute was between two of the largest pharmaceutical companies globally, related to the third best selling pharmaceutical product of all time and spanned 30 different countries. Jurisdictions included UK, Germany, Norway, Sweden, South Korea, Denmark, Ireland, Estonia, Latvia, Australia, and the United States.

UK litigation - Preventing unauthorised use

Advising on a dispute in which a third party was using our client’s name to sell substandard PPE. Following our involvement, the third party promptly rebranded.

UK litigation - Protecting well known getup

Advising on a passing off dispute in relation to our client’s OTC emollient product for the treatment of eczema and other skin conditions. The third party had copied our client’s well known getup and agreed to change following our firm’s involvement.

Copyright - Patient reported outcome questionnaires

Providing a copyright enforcement and protection strategy in relation to our client’s FDA approved patient reported outcome questionnaire in relation to patient’s experience with varicose veins during therapy.

Trade mark disputes

Advising in relation to a trade mark dispute to ensure our client can use its preferred name for its interventional and immuno-oncology business.

Trade mark clearance advice (including regulatory name safety)

Providing trade mark clearance advice, including regulatory name safety clearance, in relation to the launch of multiple prescription products in the UK, EU and beyond.

Trade mark disputes

Advising a French pharmaceutical company in relation to a third party that was infringing one of its trade marks.

Parallel imports

Advising a well known pharmaceutical company in relation to a parallel importer that was applying our client’s trade mark to products that were not put onto the market with our client’s consent.

3D and colour protection

Obtaining multiple 3D and colour trade marks in the UK, EU and beyond for our pharmaceutical clients.