Technology and Sector Specialisms
University of Bristol, Diploma in Intellectual Property Law; University of Nottingham, Honours Degree in Genetics
Tom has broad experience in patent litigation (infringement and validity) in pharmaceuticals, medical and mechanical devices, and electronics, including advice concerning threats provisions. Specifics range from anti-sense DNA technology to combinatorial weighing machines, and from video-on-demand systems to mosquito traps. Many of the matters in which he has been involved have an international aspect and Tom has experience in co-ordinating and managing litigation in multiple jurisdictions.
He has particular expertise in biotech patent litigation. Tom has a degree in genetics and worked on the first patent case in the UK relating to genetically modified organisms, Monsanto v Cargill, and the first patent case in the UK on DNA sequences, Eli Lilly v Human Genome Sciences.
Tom has been involved in some of the most significant patent cases in the UK in recent years. Conor v Angiotech and Eli Lilly v Human Genomes Sciences both went to the House of Lords/Supreme Court highest appeal court, while Dr Reddy v Eli Lilly only reached the Court of Appeal but is the definitive case in the law of selection patents.
Tom lived in China for three years, where he managed intellectual property enforcement for Western clients, including Dyson. He is named as an expert by the China IPR SME Helpdesk and his experience includes patent (design, utility and invention), trade secret, trade mark and copyright litigation against companies in provinces across China in sectors including capital and consumer goods, cosmetics and medical devices. He also has experience of non-judicial IPR enforcement in China at trade fairs, online and by Customs seizures.
Notable cases include:
- Conor Medsystems v Angiotech - The leading UK case on obviousness.
- Eli Lilly and Company v Human Genome Sciences - The leading UK case on capability of industrial application, and the first case in England relating to patents claiming DNA sequences.
- Dr Reddy Laboratories v Eli Lilly and Company - The definitive UK case on the law of selection patents. The patent was the subject of actions in around 30 jurisdictions in Europe, which were co-ordinated by the UK solicitors.
- Eli Lilly and Company v Trident and v Neolab – A case which resulted in an unusual and draconian court order for disclosure of the details (customer names and quantities sold) of sales already made.
- G-Star v Rhodi - An action relating to the infringement of design rights (registered and unregistered), Community Design Rights (registered and unregistered), copyright and passing off in the fashion industry.
- EPO Appeal on behalf of Diversey - The patent concerned a chemical formulation for cleaning-in-place products.
- lntervet (UK) Ltd v Merial - Action relating to sub-unit vaccines. This patent was the subject of revocation actions in the Netherlands and Germany and an Opposition in the EPO.
- Monsanto Technology LLC v Cargill International – This was the first case in England concerning patents for genetically modified plants.
Tom joined J A Kemp in 2015 after working elsewhere in private practice.