Jurisdiction & Remedies

Private international law and jurisdiction

Several members of 8 New Square have expertise in the application of private international law to intellectual property disputes including issues as to which court has jurisdiction over the claim.

Many members of chambers have experience of cases concerning jurisdiction over proceedings as between the courts of EU member states, including Fort Dodge v Akzo and Coin Controls v Suzo, and as between the courts of England and Wales, Scotland and Northern Ireland: Modus Vivendi v Sanmex and Cintec v Parkes.  Members of chambers acted as Treasury counsel for the UK government in proceedings before the ECJ concerning patents registered in another member state: GAT v LUK and Roche Nederland v Primus.

Members have been involved in several significant cases concerning jurisdictional matters such as forum non conveniens in the context of FRAND licensing (Conversant Wireless Licensing v Huawei and ZTE [2019] EWCA Civ 38), the justiciability of foreign patent rights (Chugai v UCB Pharma [2017] EWHC 1216 (Pat)) – and the jurisdiction of the Copyright Tribunal to settle licences covering foreign copyrights (BBC v PRS).

Remedies – Injunctions and financial relief

Chambers has always prided itself on its innovative approach to remedies and our historical record bears this out. In 1974 members of chambers persuaded the House of Lords to order non-party disclosure in Norwich Pharmacal and in 1976, the late Professor Sir Hugh Laddie (a former member of chambers) “invented” the Anton Piller Order (now known as a search order). These two types of order are now standard tools in intellectual property law and other litigation. More recently, members of chambers have been responsible for the creation of the post-expiry patent injunction (Dyson v Hoover), the rediscovery of the “John Doe” injunction directed to persons unknown (Bloomsbury v News Group), and the development of the “Arrow declaration” – a declaration that a product or process was obvious at the priority date of the patent in suit (Arrow v Merck [2007] EWHC 1900 (Pat) – recently approved and refined by the Court of Appeal in Fujifilm v Abbvie [2017] EWCA Civ 1.

Due to our extensive litigation experience, we are able to work with instructing solicitors and, where appropriate, forensic experts, as part of a “rapid response” team when urgent injunctions are sought or defended. We have extensive expertise in dealing with final remedies such as permanent injunctions, inquiries as to damages or an account of profits.