Tom Jones

CALL: 2013 (England & Wales 2013, Ireland 2021*)
Tom Jones
Tom has a broad and busy intellectual property practice appearing before the UKIPO, IPEC, High Court, Court of Appeal and Supreme Court. He has experience covering the breadth of intellectual property law including patents, trade marks, passing off, design rights, copyright, confidential information and data protection.

Recent highlights have included acting for Unwired Planet and Conversant in their respective ground-breaking FRAND litigation, for numerous generic pharmaceutical manufacturers in a clearing the way action concerning the drug tadalafil, for Pfizer concerning Arrow declaratory relief in respect of the drug bevacizumab and for Roche in patent validity proceedings concerning antibody glycosylation.

 

  • Experience

    Patents & SPCs

    • Technetix v Teleste [2019] EWHC 3106 (Pat): instructed in a one week trial concerning surge protection devices for use in cable television networks.
    • Takeda v Roche [2019] EWHC 1911 (Pat): instructed in a three week trial concerning the validity of a patent directed at antibody glycosylation, and counterclaim for infringement concerning the drug vedolizumab.
    • Pfizer v Roche [2019] EWHC 1520 (Pat): instructed in a three day trial concerning Arrow declaratory relief in respect of the drug bevacizumab.
    • Technetix v Teleste [2019] EWHC 126 (IPEC): instructed in a two day IPEC trial concerning signal splitting components used in cable television networks.
    • Actavis and Ors v Eli Lilly and Co [2017] EWCA Civ 1671; [2019] UKSC 15: Instructed in a two day appeal, and further appeal to the Supreme Court concerning a patent for a dosing regime for the drug tadalafil.
    • Unwired Planet v Huawei & Samsung (Trial C) [2016] EWHC 576 (Pat): Instructed in a two week trial concerning the infringement and validity of a patent for hand-over technologies in mobile telecoms networks.
    • Unwired Planet v Huawei & Samsung (Trial A) [2015] EWHC 3366 (Pat); [2017] EWCA Civ 266: Instructed in a two week trial and two day appeal concerning the infringement and validity of a patent for measurement reporting technologies in mobile telecoms networks.
    • AstraZeneca v KRKA [2014] EWHC 84 (Pat); [2015] EWCA Civ 484: Assisted in a two-week trial and instructed in a three day appeal concerning payment on a cross-undertaking in damages in respect of a patent for the drug esomeprazole.

     

    Copyright & Databases

    • Absolute Lofts v Artisan Home Improvements [2015] EWHC 2608: Instructed in a one day IPEC trial concerning copyright in photographs of loft conversions.

    Trade marks & Brands

    • Halewood International v Vera Lynn 0-766-19: Instructed in trade mark registry proceedings concerning the trade mark VERA LYNN for alcoholic beverages.
    • Burgerista GmbH v UK Prosper Limited [2018] EWHC 35 (IPEC): Instructed in a one day IPEC trial concerning the infringement and validity of the European Trade mark BURGERISTA.
    • Specsavers v ASDA [2014] EWCA Civ 1294: Assisted in a half day appeal concerning matters consequential to the CJEU ruling on the interpretation of Article 9(1)(b) and (c), 15(1) and 51(1)(a) of the CTMR.
    • NGRS v Milner [2014] EWHC 670 (IPEC): Assisted in a two day IPEC trial concerning infringement and validity of device marks, in addition to copyright infringement and passing off.

    Design Rights

    • G-Star v Rhodi [2015] EWHC 216 (Ch): Assisted in relation to a three day trial concerning infringement of design rights in a particular style of G-STAR jeans.
    • Jacobson v Crocs [2014] EWHC 987 (Ch): Assisted in a two day application for a stay of infringement and invalidity proceedings pending the outcome of proceeding before OHIM, concerning the design of Crocs shoes.

    IT & Telecoms Disputes

    • Unwired Planet v Huawei & Samsung (Trial C) [2016] EWHC 576 (Pat): Instructed in a two week trial concerning the infringement and validity of a patent for hand-over technologies in mobile telecoms networks.
    • Unwired Planet v Huawei & Samsung (Trial A) [2015] EWHC 3366 (Pat); [2017] EWCA Civ 266: Instructed in a two week trial and two day appeal concerning the infringement and validity of a patent for measurement reporting technologies in mobile telecoms networks.

    Jurisdiction & Remedies

    • Pan Optis v Apple [2019] EWHC 3538 (Pat): instructed in a two day challenge to the UK Court’s jurisdiction to hear a FRAND dispute.
    • Pfizer v Roche [2019] EWHC 1520 (Pat): instructed in a three-day trial concerning Arrow declaratory relief in respect of the drug bevacizumab.
    • Unwired Planet v Huawei (FRAND) [2017] EWHC 1304 (Pat); [2018] EWCA Civ 2344: Instructed in a six week trial and four day appeal concerning the FRAND licensing of a portfolio of mobile telecoms patents. A further appeal to the Supreme Court is pending.
    • Conversant Wireless v Huawei & ZTE [2018] EWHC 808 (Pat); [2019] EWCA Civ 38: Instructed in a four day challenge and subsequent four day appeal to the UK court’s jurisdiction to hear a FRAND dispute. A further appeal to the Supreme Court is pending.
    • Unwired Planet v Huawei (ASI) [2017 EWHC 2831 (Pat): Instructed in an application for an anti-suit injunction to halt parallel proceedings in China.
    • Actavis and Ors v Eli Lilly and Co [2017] EWHC 2880 (Pat): Instructed in an application for an interim injunction pending renewed appeal to the Supreme Court.

  • Education & awards

    BSc (1st Hons); ARCS

    BSc Microbiology; Imperial College; 2010

  • Professional memberships
    • IP Bar Association
    • Chancery Bar Association
  • Irish qualifications

    Tom has been called to the Irish Bar, but is not presently on the Roll of Practising Barristers; straightforward administrative steps would need to be taken before he can accept instructions as an Irish barrister.  Please contact one of the clerks to discuss how we may assist on European work.

  • Publications

    The Modern Law of Copyright (5th edition), LexisNexis,  Jones et al, Laddie, Prescott and Vitoria: The Modern Law of Copyright (5th ed, 2018)

    Contributing author to the leading practitioner text concerning all aspect of UK Copyright law.

  • Hobbies & interests

    Tom is a keen rock climber and mountaineer. He enjoys cooking and spending as much time on his bicycle as the weather permits.

Contact Tom Jones's clerks

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