Seminar on IP Case Law

20 November 2014
Burlington House, London


The Royal Society of Chemistry Law Group’s annual and highly popular seminar focused on recent high profile intellectual property law developments in the field of chemistry. The seminar concluded with a networking drinks reception. 

Topics for discussion included:

  • Roundup of recent EPO case law
  • Hospira v Genentech
  • SPC developments
  • UK and EU implementation of the Nagoya Protocol.   


Actavis v Lilly
Joseph Lenthall
UK and European Patent Attorney, Mewburn Ellis LLP

Joseph gained a Chemistry degree from Durham University. During and after his degree, Joseph gained experience of IP law by working for the technology transfer offices of Oxford University and the Medical Research Council. Joseph returned to Durham University to complete a Ph.D. working on selective recovery of platinum group metal catalysts from mixed metal solutions (sponsored by BP Chemicals). Joseph is now a European and UK patent attorney at the firm Mewburn Ellis LLP. Joseph drafts and prosecutes UK and European patent applications, with an emphasis on pharmaceuticals and polymers. 

A busy year from the CJEU on SPCs
James Horgan
Assistant Managing Counsel, Merck Sharp and Dohme Ltd

James Horgan is an Assistant Managing Counsel, heading the European Patent Department for Merck & Co Inc. He has a degree in chemistry and practices extensively in the pharmaceutical, vaccine and biotechnological fields. He has supported research sites for Merck in England and Italy. He has wide experience of prosecuting applications before the EPO where he regularly appears in ex parte and inter partes Oral Proceedings. He has filed and prosecuted a large number of SPCs. He has been involved in major multi-jurisdictional litigation for Merck in cases relating to Vioxx, Fosamax, Cosopt and Propecia, as well as in the parallel import case Merck v Sigma. He has completed an LLM in Intellectual Property Litigation through Nottingham Trent University.

Accounting for profit: the landscape post Hollister v Medik
Rob Jacob
Senior Associate, Stephenson Harwood LLP

Rob gained an MSci in Chemistry from Imperial College in 2004. He qualified as a solicitor in 2008 specialising in intellectual property law. Rob advises on the full range of intellectual property rights, undertaking both contentious and non-contentious matters. His particular focus is on the pharmaceutical sector having spent 9 months on secondment at GlaxoSmithKline in 2012. However, he also advises in relation to the oil and gas and chemical industry sectors. His recent experience includes advising GlaxoSmithKline in relation to a multi-jurisdictional trade mark dispute and advising on the acquisition of the worldwide rights to Florbetaben, a pioneering molecular imaging product for the diagnosis of early Alzheimer's disease, from Bayer Pharma AG.

Hospira v Genentech
Stuart Jackson
Partner, Kempner and Partners LLP

Stuart Jackson gained a degree in Chemistry from Imperial College, after which he pursued research at Oxford involving enzyme mechanisms. After a few years in the brewing industry, he subsequently spent 15 years as a chemist and project manager in the health care industry, principally in the field of wound healing. He qualified as a solicitor in 1996, and now specialises in intellectual property law, particularly patent law, undertaking both litigation and non-contentious work such as licensing.

UK and EU implementation of the Nagoya Protocol
Darren Smyth
Partner, EIP

Darren Smyth is a partner in EIP, a firm of intellectual property attorneys and solicitors in the UK. He is a UK and European patent attorney, and a European Trade Mark and Design Attorney. Darren has a DPhil in synthetic organic chemistry and a Masters degree in Natural Sciences (Chemistry), both from Oxford University, and spent two years as a post-doc in Japan at the Tokyo Institute of Technology before entering the patent profession. His patent practice is specialised in chemical subject matter, including pharmaceuticals, food chemistry, printing, and display technology. He also has a keen interest in registered designs. He is regularly published in the Journal of Intellectual Property Law & Practice (on whose editorial board he sits), and other publications including Chemistry World. He blogs as a member of the IPKat team and also more generally as the IP Alchemist.

Tools and pitfalls - recent decisions from the EPO Boards of Appeal
Leythem Wall
European Patent Attorney, Finnegan Europe LLP

Leythem has a Masters degree in Chemistry from Oxford University. He is a Chartered UK Patent Attorney, a European Patent attorney, a European Trademark and Design Attorney and works in the London office of the international law firm Finnegan, Henderson, Farabow, Garrett & Dunner LLP. Leythem has also previously held positions in the UK and abroad as in-house IP counsel for major multinational corporations. His work focuses on a variety of technologies in the chemical and medical fields including agrochemicals, petrochemicals, pharmaceuticals, coatings, composites, foods and medical devices. Leythem specialises in patent drafting, prosecution, opinions on infringement and validity and he has particular expertise in Oppositions and Appeals, including representation in Oral Proceedings before the European Patent Office in Munich and The Hague.

Chair and Organiser

Jennifer Harris
Partner, Kilburn & Strode LLP

Jennifer gained a Double Honours degree in Chemistry and Biochemistry from the University of Southampton, and during the course of her degree spent time gaining practical experience in the areas of medicinal and combinatorial chemistry at BioFocus. Since 2001 she has been working in the patent profession, qualifying as both a UK and European Patent Attorney in 2005 and working with Kilburn & Strode LLP since 2006. Jennifer's practice focuses on the drafting and prosecution of patent applications before the EPO, UKIPO and worldwide, representing clients in hearings at the EPO and providing infringement and validity opinions. She works with companies ranging from startups and university technology transfer offices to multinational companies. Her work has a particular emphasis on pharmaceuticals, but she also works in many diverse areas of chemistry, including glass, ceramic and composite material technology and process chemistry.

Downloadable Files

Actavis v Eli Lilly
Joseph Lenthall
PDF iconPDF (114k)  

Account of Profits - Landscape Post Hollister v Medik
Rob Jacob
PDF iconPDF (65k)  

Hospira v Genentech
Stuart Jackson
PDF iconPDF (130k)  

UK and EU Implementation of the Nagoya Protocol
Darren Smyth
PDF iconPDF (346k)  

Tools and Pitfalls - Recent Decisions from the EPO Board of Appeals
Leytham Wall
PDF iconPDF (182k)  

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