International

“The group increasingly acts in cases with an international element, and it advises foreign firms who are seeking advice on behalf of their English clients.” Chambers & Partners UK

Experience

Global patent licensing and enforcement programme

We implemented a global licensing programme for a UK biotech client owning fundamental research tool patents. We have advised for over a decade on the worldwide licensing of these patents to major industry players (mostly US-based) for aggregate licence fees and royalties exceeding US$100m. Advice has also included strategic management of the company’s IP resources and coordination of legal representation in defending and enforcing the patents in Europe, the US and Japan.

Chinese joint venture

We acted for a UK medical devices company in a joint venture with a London-based investment bank, with a view to the development of a new medical device for the delivery of vaccines in China and the developing world. This involved the establishment of a BVI joint-venture company and preparation of a three-year R&D agreement between the JV company and our client for development of the new device.

International arbitration 

We conducted an international arbitration on behalf of a UK biotech client against a major Californian biotech company. This was a multi-million dollar dispute over payment of royalties and other disputed provisions of a patent licence. The arbitration was settled on payment to our client of a sum in excess of US$60m.

Multi-million dollar claim against US film studio

We acted for a well-known literary estate and associated parties in a claim against a Hollywood film studio for unpaid royalties in excess of $200m, in relation to a series of three blockbuster films. We instructed local lawyers to bring the claim in the Californian courts and managed the relationship between our client and the overseas firm.

Middle Eastern joint venture

We acted for a UK life sciences company in its joint venture with the government of Qatar in the establishment of a jointly-owned and managed proteomics laboratory in Qatar. The transaction involved an exclusive licence of technology and trade marks, an exclusive agency agreement and multi-million pound contracts for research, development and related services.

International M&A

We frequently act for overseas companies on the acquisition of UK companies and for UK companies on sales to overseas companies. We recently acted for an Australian public company on its acquisition of a UK water engineering software company for a consideration of approximately £13 million. We also represented the shareholders of a UK producer of property searches on its sale to a Canadian quoted company for £17 million.

Advice on grey-market trade in pharmaceuticals

We provide strategic advice to a number of US and European pharmaceutical companies on issues relating to parallel imports and exports of pharmaceuticals, both within and outside Europe. This involves advice on trade mark law (in particular relation to re-labelling, repackaging and re-branding), patent law (and the “specific mechanism” applying to the new East European memberstates), and the EU regulatory regime applying to parallel imports, as well as advice on applicable EU competition laws.