UK | Patents

SJ Berwin's Patents Group, based in London has considerable experience advising clients and acting in patent disputes across the range of industries and technologies.  These include pharmaceuticals and biotechnology; chemicals / agrochemicals; mechanical / engineering and automotive; medical devices; electrical / electronics; telecommunications; software and computer-implemented inventions.  Clients in fields that have not faced patent exposure in the past (such as financial, gambling and retail) now also seek our advice and representation.

The Patents Group sits within the Intellectual Property Group and works closely with the Pharmaceutical and Life Sciences Group.  We act for a number of businesses in the life sciences sector on patent matters and the interface with regulatory and competition issues.  The Patents Group is a client-focused, dedicated and dynamic team.  Independent directories recognise these qualities of the Patents Group and its highly rated members.

Areas of expertise

Our Patents Group offers a range of services that include:

• product clearance and patent validity / infringement opinions;
• advising clients regarding product launch, interim injunctions and negotiated commercial outcomes;
• advising on related supplementary protection certificates (SPCs) and regulatory matters for clients in the pharmaceutical/biotech and agrochemical industries;
• acting in patent licence disputes (whether for patent-owners or those approached to enter into licences); 
• acting in court proceedings at trial and on appeal, where (non)infringement and (in)validity are in dispute;
• supporting clients in co-ordinated overseas multi-national disputes and acting in European Patent Office (EPO) proceedings and supporting clients in EPO oppositions proceedings;
• drafting agreements, including licences, R&D agreements, manufacturing and distribution agreements and non-disclosure agreements;
• due diligence services and advising in corporate sale/purchases and funding/investments where patents constitute significant assets of the business.

Over the years SJ Berwin has acted in many high profile cases that have shaped patent law.  Some of these include: Windsurfing International (defining the test for obviousness); Merrel Dow v. Norton (House of Lords case regarding anticipation by prior disclosure); Cairnstores v. Aktiebolaget Hassle (litigations by a "straw man"); Smithkline Beecham v. Generics (UK) Ltd (interim injunctions and "clearing the way" in pharmaceutical cases); Abbot v. Ranbaxy (revocation on summary judgment); Ranbaxy v. Warner-Lambert (claim construction in the “Lipitor” blockbuster drug case).

Publications & Conferences

The Patent Group issues a regular Patent Bulletin and contributes to other intellectual-property related publications of the firm (see list below).  Members of our group are recognised for their expertise and regularly speak at conferences and write articles.   We aim to provide clients with information and guidance promptly when there are new developments in this fast-moving field of law.