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  • Overview

    Intellectual Property/Information Technology (IP/IT)

     

    Our team is led by Gina Bicknell (Partner) for non-contentious matters, and Douglas Skilton (Partner) for contentious matters. Between them, Gina and Doug have nearly 30 years’ experience of helping clients with complex IP/IT matters in a wide range of industry sectors.

    We understand that intellectual property (IP) is one of your most important assets, from high tech inventions to brands and creative works. We have the resources and experience to help you protect and commercialise your IP investments.
    Our intellectual property advisory services include:

    Transactions

    • Drafting and negotiating a wide range of IP-related transactions, including:
      • Term sheets
      • Confidentiality agreements
      • Material transfer agreements
      • Research collaborations
      • Promotion agreements
      • Commercial IP licences (patent, trade marks, copyright, know-how, data base rights, plant variety rights)
      • Intra-group licensing arrangements
      • IT/software licences and maintenance agreements
      • Source code escrow agreements
      • Supply, manufacturing, distribution and agency agreements
      • Joint ventures
    • Performing due diligence of IP assets for the purchase or sale of companies
    • Drafting and negotiating IP provisions of purchase agreements
    • Assisting with brand protection issues

     

    Dispute Resolution

    • IP contract disputes, including ownership disputes
    • Breach of confidence/misappropriation of trade secrets disputes
    • Branding disputes
    • Copyright, design right, trade mark and passing off claims
    • Domain name and company name disputes

     

    Data Protection/Data Privacy

    • Drafting/updating data protection and privacy policies
    • Drafting/updating website terms of use
    • Advising on compliance with current and upcoming data protection regulations
    • Reviewing direct marketing practices

     

    IP Ownership

    • Counselling on IP ownership aspects of employee/consulting agreements
    • Advising on ownership issues for contracts with third party contractors (e.g. third party software developers, contract research organisations, etc.)
    • Drafting patent, trade mark and copyright assignments

     

    General

    • Counselling on trade secrets issues, including unfair competition and reputation management issues.
    • Counselling on competition/antitrust issues in relation to licensing or enforcement of IP rights

     

    Registered Rights/Protection

    We work with carefully selected third party firms (local, London-based and international) who can help you file applications for patents, trade marks and design rights, and enforce your registered rights against infringers.

     

     

  • Related Client Stories

    Gina continues to assist AstraZeneca

    During her former role at a Magic Circle firm in London, Gina Bicknell assisted AstraZeneca in 2016 with its acquisition of the majority equity stake in Acerta Pharma, a privately-owned biopharmaceutical company based in the Netherlands and US. The acquisition provided AstraZeneca with rights to a potential best-in-class irreversible oral Bruton’s tyrosine kinase inhibitor, acalabrutinib, currently in Phase II/III development for B-cell blood cancers and in Phase I/II clinical trials in multiple solid tumours

    Advice on Trademark licenses

    Advice on Trademark licenses  

    Advice on Intellectual Property licensing issues related to insolvency

    Advice on Intellectual Property licensing issues related to insolvency

    Termination of contract – protection of IP rights

    A manufacturer of industrial vehicles instructed our Dispute Resolution team to help terminate a contract it had made with another company to co-design and build 250 industrial vehicles.

    Infringement of a software company's intellectual property rights

    We were recently instructed to act for software development company, to defend the alleged infringement of another company’s intellectual property rights.

    Fashion house trade mark dispute

    We were instructed in relation to a trade mark dispute by a fashion house, which designs and sells bespoke menswear.

    Advice on various licence agreements to protect intellectual property

    Our client works with many plant breeders to maximise the commercial exploitation of their plant variety rights, exploring opportunities with, and granting sub-licences to, many overseas fruit and vegetable growers.

    Drafting a consultancy agreement for software development

    Our client is a direct marketing and digital agency that specialises in e-bulletins.

    Getting the most out of a patent

    Our client had been approached by the owner of a patent which related to golf equipment and, following their initial discussions, our client identified an opportunity for it to exploit the patent commercially by manufacturing and distributing a new golf-related product.

    Advising our client on a research and development agreement for commercial exploitation

    Our client supplies plant-based products and, working in collaboration with a research group at a University, our client was looking to develop new products for commercial exploitation.

  • Latest Updates

    Unjustified Threats: New rules relating to groundless / unjust threats in IP cases

    New legislation came into force on 1 October 2017, to codify the law on unjustified threats made by the owners of intellectual property (IP), to sue a third party for infringement. The Intellectual Property (Unjustified Threats) Act 2017 (the Act) brings long-overdue consistency to the rules applicable to registered intellectual property rights, but there remain some areas of ambiguity.

    What is IP?

    Intellectual Property (IP) is often referred to as “creations of the mind” and intellectual property rights help you to stop people from taking those creations without your permission.

    FAQ: Intellectual property

    Q: What is intellectual property? A: Intellectual property (IP) is often referred to as “creations of the mind”, and intellectual property rights help you to stop people from taking those creations without your permission. You probably have heard of most types of IP rights, and own some as well. Patents protect inventions, trade marks protect branding, design rights protect the appearance of your products, and copyrights protect your written, musical, dramatic, photographic and other creative works. You also can protect your trade secrets and other confidential information by keeping that information secret. Some types of IP rights are automatic, but you need to apply for others through a formal application processes.

    Brexit: What does it mean for your IP?

    Curious about how Brexit will affect your intellectual property (IP) rights after the UK leaves the EU? Here’s a high level summary of some key points to consider. 

  • Know How

Get in touch

Just a short note to thank you for your outstanding support. I have seldom been through such a frustrating experience, but this was greatly eased by the thoroughly professional way in which you supported us. I cannot imagine there will be any more acquisitions coming my way, but if there is, you may be sure that I will seek your support again.

Client

Congratulations on your 10 years of success, with the quality of service you and your team provide I am sure the next 10 years will see more deserved success for you.

Client

Having the experienced and professional team from Thomson Snell & Passmore on board during the sale definitely added value to the transaction. Their tireless pressure and determination on legal points did not go unnoticed and I will always be grateful for the impact their hard work delivered to achieve the final result.

Client

I’ve been so impressed with you all and it’s been a real pleasure working with you and I hope this is the start of a long relationship. I’ve really appreciated the extra time and out of hours effort you have put in to help us get to the finish line. So thank you so much.

Client

I really appreciate the effort you and your team have put in and also for the goodwill of keeping the costs down. I certainly hope this to be the start of a long term relationship. I’ve been extremely impressed by you and thank you so much for turning it around quickly. It goes without saying I’d be happy to recommend you.

Client

We have had very good service across a number of disciplines and look forward to doing more in the future.

Client

I realise they have not been the easiest outfit to work with but I just wanted to say thank you - to you and your team - for the extraordinary commitment you have all put in to get us to the line. I was expecting you to hit your limit of tolerance these last few days, if that happened you hid it well and due to your effort, flexibility and forward thinking we finally got there… despite their best efforts at times!

Client

Thomson Snell & Passmore provides an ‘excellent level of service’ and ‘shows a good understanding of what is needed in all situations’.

The Legal 500 2014

Many thanks indeed for all you have done and particularly the way you have done it.  Straight to the point and very pragmatic – exactly how I was told you work and the way I like to do things too. The recommendation was spot on.

Client

Thank you again for all your help setting this up, it has been a truly painless experience thanks to your focus and determination to meet our rather challenging deadlines.

Client

There was much to this conversion that was not encountered before by TS&P, and much which we discovered, which belied the siren voices of how easy it would be. We are now there, on our way, and picking up momentum. So I offer our thanks to TSP.

Client

Had I not been recommended to TS&P and simply came across them, my answers would have been in the exceeded section but I was expecting exceptional and that is what I got!

Client

An excellent all round service from everyone involved.

Managing Director of Greenstar Hotels PLC

We have worked closely with TS&P for a number of years and have concluded several commercial transactions during that time. The service has always been professional, responsive and reliable.

Client

I would like to say a big thank you for all your efforts on our behalf over the past year. You have been extremely proactive, which was one of our principal requirements, and have taken the time to understand our business; it has been appreciated.

Client

TS&P took control. Took the lead with regards to all the other lawyers that were involved in the business and made the deal happen.

Corporate Intermediary

Very personable partners, vast experience in most areas of lawyer business.

Corporate Intermediary

At TS&P I have a contact and we were in deep discussion for hours. There was obviously a personal relationship that built up.

Client

Their commerciality is important - they know where we want to get to.

Client

The ‘very approachable’ corporate team at Thomson Snell & Passmore is noted for its ‘clear advice’ and ‘exemplary service’.  

The Legal 500 2013

Superb professional service. Instant replies to issues and enquiries. Easy access to decision makers.  

Client

Carry on as now; service like that is hard to beat.  

Client

Highly professional, not only dealing with the legal details but also with keeping the eyes on the overall commercial objective.

Client

I use TS&P as I have a very longstanding relationship. James Partridge has detailed knowledge of the affairs of my organisation and this, coupled with his sharp legal skills, means that I don't look elsewhere

Client

I expect and receive first class advice and service. This is helped by James's knowledge of my organisation and a good chemistry between us. I like to understand the reasons for the advice and James is focussed and succinct when discussing matters over the phone

Client

Meet The Team

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