United Kingdom: Scotland
Despite the ongoing uncertainty caused by the Covid-19 pandemic, innovation in Scotland is still booming – much to the relief of the country’s practitioners. Glasgow is a fertile breeding ground for high-technology start-ups, while Aberdeen maintains its status as an oil and gas hotspot. As the UK patent community as a whole strives to divine what its future will look like now that the jurisdiction has been definitively excluded from the Unified Patent Court plans, Scotland is seeking to forge a new path in the wider patent litigation landscape. As part of this, leading IP practitioners have been engaged in lobbying efforts to establish a Scottish equivalent of the IPEC.
- Burness Paull LLP
- Brodies LLP
- Pinsent Masons
- HGF Ltd
- Marks & Clerk
- Creation IP Ltd
- Lawrie IP
- Lincoln IP Limited
- Scintilla IP
- Brodies LLP
- Burness Paull LLP
Scotland’s largest law firm is home to a vast squad of commercial specialists, including a dedicated IP division that executes flawlessly on both contentious and transactional instructions. Despite some significant personnel departures in recent years, it remains at the top of its game, featuring prominently in much of the IP litigation taking place at the Court of Session and attending to the needs of a glittering roster of life sciences and energy clients. Meanwhile, longstanding relationships with local and international patent attorney firms ensure that patent prosecution briefs are efficiently dispatched. Iain Rutherford and Grant Campbell jointly lead the group. Heading up the IP dispute resolution unit, Rutherford has encyclopaedic knowledge of IT and telecommunications law, and puts in polished performances in patent, domain name and online defamation disputes. Campbell captains the IP technology and outsourcing unit, and has spent more than 25 years parsing the fine print of IP-related transactions in industries ranging from engineering to aviation and finance. Also working on the transactional side are Martin Sloan and David Gallagher. Sloan advises some of the world’s largest private equity firms on pan-European technology transfer agreements and M&A issues; while recent arrival Gallagher was previously commercial director and legal counsel at cell therapy company TC BioPharm, for which he negotiated countless high-rolling cross-border deals. As a result, multinationals, SMEs and universities alike all benefit from his “responsiveness and commercially astute advice”.
Burness Paull LLP
Unquestionably the top contentious IP practice in Scotland, Burness Paull continued to burnish its glowing reputation over the last year, appearing in more than half of all actions before the Court of Session. “The firm knows the Scottish court system like the back of its hand and collaborates effectively with in-house teams, concocting sophisticated legal strategies while also becoming rapidly familiar with the technical aspects.” In a recent highlight, the firm went out to bat for AstraZeneca in a series of infringement and revocation actions against Teva; the matter was masterminded by star litigator and IP head Colin Hulme, whose on-point advice and courtroom prowess have done much to elevate the firm’s profile. His impressive client list includes major players in the life sciences, energy and consumer goods fields, and he holds the distinction of IP specialist accreditation from the Law Society of Scotland. Heading up the non-contentious practice are David Goodbrand and Colin Miller. Goodbrand’s 20-year career has seen him advise extensively on IP commercialisation and strategy, as well as negotiating all manner of technology and data transfer agreements and sponsorship deals, and he also finds time to front the data privacy team and the fintech practice. Meanwhile, IAM Patent 1000 debutant Miller joined the firm in 2019 – qualified in both Scotland and England, he is a deft negotiator of licensing, franchising, and R&D agreements of every flavour.
Long esteemed for its transactional nous, the Scottish IP team of global juggernaut CMS has been ramping up its contentious capabilities since the 2019 arrival of litigator Neeraj Thomas and can now claim to be a true one-stop shop. Accredited as an IP specialist by the Law Society of Scotland, Thomas has been racking up the wins in high-stakes patent suits at the Court of Session on behalf of a legion of energy, transport and biotechnology players. For IP-rich deals, look no further than Scottish and English-qualified Carina Healy, who has spent more than two decades sewing up strategic IP licensing and commercialisation projects. She recently assisted renewables pioneer MacRebur on a range of collaboration and licensing agreements, and also has many fans in the life sciences.
Creation IP Ltd
Making its sophomore outing in the IAM Patent 1000 for 2021, patent preparation and prosecution outfit Creation IP earns plaudits from competitors for its “commercial and pragmatic attitude”. Engineering is a particular forte for the group, which files with alacrity and crafts forward-thinking portfolio strategies for companies of all stripes, from the youngest start-ups to multinational titans. Leading the charge is co-founder and mechanical engineer Bryn Williams, who knows how best to help burgeoning companies build IP commercialisation strategies from the ground up.
A dominant player in the global IP space, Dentons has cultivated a refined non-contentious IP and data offering in Scotland. No transaction is too challenging or negotiation too fraught for the patent group to negotiate; while the abundant resources of the wider firm mean that cross-border and multi-disciplinary instructions can be seamlessly handled. The set has also positioned itself as a trusted ally for myriad university spin-outs. Its twin figureheads are Alison Bryce and Ross Nicol: Bryce combines her IP-related commercial contracts work with a thriving practice encompassing data protection, e-commerce and outsourcing; while the “superb commercial advice” of transactional don Nicol likewise comes interlaced with ancillary e-commerce and data protection know-how.
HGF’s vast web of UK and European offices includes three Scottish bases, in Aberdeen, Edinburgh and Glasgow. It has turned patent prosecution into an art form, dispensing strategic advice, assisting with oppositions and filing meticulous patent applications with minimum fuss. Life sciences and electronics are strongholds, while its Aberdeen base has also attracted the attentions of numerous energy companies, including major oil and gas players and renewables outfit Sunamp Ltd, which recently engaged it to manage its portfolio of 200-plus patents. Leading on this matter is managing partner Gary Wilson, who has held the reins since the firm set up shop in Scotland in 2007. “Knowledgeable and responsive, Gary is a strong advocate in oppositions and a guiding light through the European opposition process.” Working alongside him on the Sunamp brief are Jamie Thomson and Jeremy Bretherton. Thomson matches a sparkling track record in oppositions with a discerning approach to the management of global IP portfolios. Bretherton has deep technical expertise – including a PhD from the University of British Columbia in the field of solid-state nuclear magnetic resonance spectroscopy – and garners rave reviews: “At each stage of progressing an application, he can explain the options in a comprehensible manner, providing both options for how to proceed and clear advice on those options. When drafting patent specifications, Jerry absorbs and understand the technical material very quickly; and his first draft of the specification invariably does an excellent job of establishing the protection being sought.” Leading on the electronics side is Susan Elizabeth Keston, a PhD in computational particle physics who has complex technologies on lock; she has carved a niche advising on computer-implemented inventions at the borderline of patentability. Her fellow electronics maven is Andrew McGettrick, whose PhD is in tunable diode laser spectroscopy; multinationals from as far afield as the United States and Japan, as well as university spin-outs, rely on his high-level filing skills and sage advice. A recent highlight is his management of the global patent portfolio strategy of Raptor Oil in relation to its downhole communications technologies.
Priding itself on its commercially focused, solutions-oriented service, prosecution shop Hindles has made both the life sciences and the electronics industry its own. Its group of European patent attorneys combines limitless procedural knowledge with a diversity of specialisms, ensuring it can quickly get to grips with even the knottiest technical subject matter. Giving the set its name is Alistair Hindle, who began work as a patent attorney in 2002 after a stint as a research scientist. His wheelhouse is broad, covering engineering, electronics, software and medical devices; and he is on speed dial for start-ups and SMEs looking to develop smart patent portfolio strategies. Similarly versatile is his fellow director Robert Gregory, a prolific prosecutor and reliable EPO advocate whose strategically-minded advice in areas from pharmaceuticals to oil and gas is informed by a PhD in chemistry.
“Knowledgeable on both the technical and legal sides, Lawrie IP makes it easy for clients to understand all aspects of IP protection. It ensures that patents are maintained and up to date, and considers every factor when assembling arguments and documentation.” The prosecution shop has enjoyed continued growth despite the pandemic, taking on new mandates and adding seven new members of staff in 2020. Its varied clientele comprises heavy hitters from fields such as life sciences, electronics, oil and gas and construction. The group is jointly led by Craig Hutchison and name partner Donald Lawrie. Physicist and electrical/mechanical engineer Hutchinson is a filer and manager of global patent portfolios par excellence, and a staunch advocate before the EPO; his technical insight encompasses cutting-edge areas such as retinal imaging and robotics. Lawrie is “a pleasure to work with, providing high-quality analysis and work product. A reliable and accountable adviser, he can always be reached and responds quickly to any queries”. Alongside them is electrical engineer Anders Jensen, an authority on software and web-based inventions who regularly advises on global filing strategy in relation to software patents.
Lincoln IP Limited
Oil and gas companies in particular flock to the doors of Lincoln IP in Glasgow and Aberdeen for its precision prosecution service – although the firm’s technically adept, procedurally astute practitioners are fluent in many disciplines, so no technology is off limits. Chief among them is namesake and founder Matthew Lincoln, who draws judiciously on his academic background in physics and mathematics to advise across all areas of engineering, building enduring portfolio strategies, conducting comprehensive IP due diligence and providing fulsome support in litigation. Running the Glasgow office is fellow physicist David Fulton, who holds a PhD in quantum optics and is on hand to assist private corporations as well as universities and their spin-outs with international filing programmes.
Marks & Clerk
As one of the UK’s largest and best boutiques, and the most prolific filer of PCT patents in the jurisdiction, Marks & Clerk is a force to be reckoned with in Scotland. From offices in Edinburgh, Glasgow and Aberdeen, it provides a wraparound patent prosecution service to clients across the industry spectrum, including many leading universities and A-list food and drink players, which are ably served by the firm’s dedicated practice group. Biologist Paul Chapman manages the Edinburgh office and specialises in cell therapies and antibody and vaccine technologies. A poised performer in EPO oppositions, he also has a flair for obtaining SPCs. Likewise armed with antibody, vaccine and molecular biology know-how is immunology and microbiology PhD Richard Gibbs; he previously worked as a research scientist and university lecturer, and leverages this experience to assist universities across the country with their patent protection needs. Meanwhile, energy and environment lead Andrew Docherty is intimately familiar with the dynamics of the oil and gas industry, which made him the perfect person to establish the Aberdeen office; other areas of expertise include medical devices, aerospace and vaping. When it comes to artificial intelligence (AI) and computer-implemented technologies, the practitioners to call are Timothy Edward Hargreaves and Graham McGlashan. Physicist and electronics ace Hargreaves has a cosmopolitan outlook, thanks to time spent in Marks & Clerk’s London and Paris offices, and is as confident appearing in EPO oppositions as he is conducting cross-border due diligence and product clearance projects. Fellow physicist McGlashan is in his element at the interface of different technological fields, such as when AI interacts with technologies; he can quickly decipher the complexities of inventions covering everything from software and video games to defence and renewables.
Murgitroyd is a colossus of the Scottish prosecution scene, with a large-scale IP renewal and filing practice comprised of a stellar group of high-quality attorneys. The group has enviable international reach thanks to a network of offices across Europe and Central America; but the story all began in Glasgow, which remains its central base of operations to this day. The lynchpin is Graham Murnane, who is “highly regarded for conducting EPO oppositions” and has been developing this side of the firm’s practice since coming on board 25 years ago, collaborating closely with his colleagues in Munich in the process. Formerly a substantive examiner at the EPO, he knows European patenting procedure like the back of his hand, and also has the technical side down pat thanks to his training as an engineer.
A potent IP player both in England and in Ireland, Pinsent Masons is likewise celebrated for its sophisticated Scottish patent offering. Infringement, revocation, invalidity and licensing disputes all fall within its remit; it is especially adept at handling cases with cross-border threads. The names to note are the “well-regarded” James Cormack and David Woods. Solicitor-advocate Cormack is an all-rounder who handles banking and IT disputes in addition to IP litigation; peers observe that he has lately been “nailing his flag to the fintech mast”. IP and IT suits are the bread and butter of Woods, who recently took on AstraZeneca for Teva Pharmaceuticals in high-profile patent revocation proceedings.
One of Scotland’s most dynamic and creative independent patent attorney firms, Scintilla continues to burnish its reputation through its flawless work product for electronics, software and telecommunications companies; it has lately been filing bulletproof applications for the likes of Dialog Semiconductor, Internet of Things innovator R3-IoT and the University of the West of Scotland. “Patent applications are always straightforward with Scintilla, even when faced with objections from examiners,” report clients. “Instructions are dealt with promptly and accurately, and their approach on the technical side is thorough and well informed. The team is a pleasure to work with – friendly, personable and understanding – which helps significantly when working on challenging matters.” Front and centre of the operation is managing director and founder Peter McBride, whose no-nonsense approach ensures that he can explain convoluted concepts in a clear, commercially focused way. “Peter is good with detail and is also an excellent listener, which means he takes in the specifics of the technical side quickly and easily,” elaborates one satisfied patron. “He’s never pushy and is always willing to run at our pace.” Also on deck is electrical engineering PhD and former nanofabrication engineer Iain McCrindle: “When Iain is briefed, he grasps the content and depth of the task immediately. He works in close collaboration with inventors, providing valuable updates along the way at an appropriate pace. His input is intelligent, well researched and delivered on time.”
Other recommended experts
Making his debut in the IAM Patent 1000 this year thanks to effusive commendations from peers, Stewart Cameron of the eponymous Cameron IP provides percipient counsel that is always tailored to clients’ commercial goals. Competitors observe that he is “expanding his business rapidly, with some major client wins, especially on the engineering side”. Based at Thorntons Law, Alistair Lang practises across the spectrum of commercial law, but has a special affinity for developing worldwide IP licensing regimes for companies with large global patent portfolios.
- James Cormack - Pinsent Masons
- Colin Hulme - Burness Paull LLP
- Iain Rutherford - Brodies LLP
- Neeraj Thomas - CMS Cameron McKenna Nabarro Olswang LLP
- David Woods - Pinsent Masons
- Paul Chapman - Marks & Clerk
- Andrew Docherty - Marks & Clerk
- Richard Gibbs - Marks & Clerk
- Robert Gregory - Hindles
- Alistair Hindle - Hindles
- Craig Hutchison - Lawrie IP
- Anders Jensen - Lawrie IP
- Matthew Lincoln - Lincoln IP Limited
- Peter McBride - Scintilla IP
- Gary Wilson - HGF Ltd
- Jeremy Bretherton - HGF Ltd
- Stewart Cameron - Cameron IP
- David Fulton - Lincoln IP Limited
- Timothy Edward Hargreaves - Marks & Clerk
- Susan Elizabeth Keston - HGF Ltd
- Iain McCrindle - Scintilla IP
- Andrew McGettrick - HGF Ltd
- Graham McGlashan - Marks & Clerk
- Graham Murnane - Murgitroyd
- Jamie Thomson - HGF Ltd
- Bryn Williams - Creation IP Ltd
- Alison Bryce - Dentons
- Grant S Campbell - Brodies LLP
- David Gallagher - Brodies LLP
- David Goodbrand - Burness Paull LLP
- Carina Healy - CMS Cameron McKenna Nabarro Olswang LLP
- Alistair Lang - Thorntons Law
- Donald Lawrie - Lawrie IP
- colin Miller - Burness Paull LLP
- Ross Nicol - Dentons
- Iain Rutherford - Brodies LLP
- Martin Sloan - Brodies LLP