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Daniel Alexander QC

CALL: 1988 | SILK: 2003
Daniel Alexander QC is a highly-regarded advocate, focusing on IP disputes of international significance in a wide range of technologies and industries.

He has been lead counsel in a number of defining cases in electronics, pharmaceuticals, biophysics and biotechnology, as well as some of the leading trade mark and media disputes. Daniel has a broad practice, focussing on intellectual property but extending to contractual cases, IT, media/entertainment law and a range of international disputes. He is rated in the top band of QCs in IP in legal directories. He also sits part-time as a judge and arbitrator.

  • Experience

    Patents & SPCs

    • Accord v Celgene [2018]: patent action relating to thalidomide analogue.
    • Silence v Alnylam [2018]: patent/Supplementary Protection Certificate matter relating to small interfering Ribonucleic Acid (siRNA).
    • Teva v. Gilead [2017] EWHC 13 (Pat) & [2018] EWHC 2416 (Pat): regarding the validity of supplementary protection certificate protecting Truvada. The leading case on Article 3(a) SPC Regulation in CJEU.
    • Icescape Ltd v Ice-World International BV & Ors [2017] EWHC 42 (Pat) & [2018] EWCA Civ 2219: regarding the scope of claim following Actavis and law on priority.
    • Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd & Ors [2018] EWHC 1216 (Ch): ongoing litigation concerning alleged SEPs and FRAND issues for various generations of telecoms.
    • Bose Corporation v Freebit AS [2018] EWHC 889 (Pat): patent trial concerning in-ear headphones.
    • Eli Lilly v Actavis UK Ltd & Ors [2017] UKSC 48: the leading case in Supreme Court on scope of patent protection.
    • Shanks v Unilever Plc & Ors [2014] EWHC 1647 (Pat) & [2017] EWCA Civ 2: leading case on employee compensation currently before Supreme Court.
    • Novartis Ag & Ors v Focus Pharmaceuticals UK Ltd & Ors [2015] EWHC 1068 (Pat) & [2016] EWCA Civ 1295: regarding patent for rivastigmine delivery systems.
    • Thoratec Europe Ltd v AIS GmbH Aachen Innovative Solutions [2016] EWHC 2637:  patent case relating to cardiac pump device

    Copyright & Databases

    • AETN v Channel 4 [2006]: passing off case concerning use of programme title for alleged TV format.
    • Estate of Francis Bacon v Artprints [2006]: Copyright case relating to works by Francis Bacon.
    • Apple Corps v Apple Computer [2006] EWHC 996 (Ch): claim by the Beatles’ company in claim against Apple Computer in respect of breach of trade mark delimitation agreement.
    • Clearsprings  v Businesslinx [2005] EWHC 1487 (Ch): Implied terms in copyright licence.
    • IPC v Mirror [2005] EWHC 317 (Ch): fair use defence to copyright infringement and the law on comparative advertising.
    • British Horseracing Board v Cantor Index [2003] database right claim relating to horse racing information raising issues of UK and EU competition law.

    Trade marks & Brands

    • Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd [2016] EWHC 1537 (Ch): registrability of colour and design trade marks for pharmaceutical products.
    • Maier & Anor v Asos Plc & Anor [2014] EWHC 123 (Ch) & [2015] EWCA Civ 377: alleged infringement of trade mark and scope of “own name” defence.
    • Total Ltd v YouView TV Ltd [2014] EWHC 1963: media industry trade mark dispute.
    • Fage v Chobani [2013] EWHC 630 (Ch) & [2014] EWCA Civ 5: leading case on extended passing off, concerning the phrase ‘Greek yoghurt’.
    • Iliffe v HMRC [2012] UKFTT 696 (TC): leading case on assignment of unregistered marks in tax context.
    • Donvand v Altun [2010]: trade marks and passing off for online travel business.

    Design Rights

    • Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat): registered/unregistered design and patent case regarding endoscopy devices.
    • Spiralstem v Superframe & M&S  [2002-2006]: design right in display equipment and inquiry as to damages.
    • Landor & Hawa v Azure [2006] EWCA Civ 1285: design right case concerning s.213 CDPA and interpretation of “method or principle of construction”.

    Trade Secrets & Confidentiality

    1. Conductive Ink-Jet Technology v Unipixel Display [2013] EWHC 2968 (Ch): confidential information and patents dispute with complex jurisdictional aspects.
    2. Proceedings before Special Commissioners of income tax [2006]: concerning claims to confidential information relating to formulae in context of CGT valuation.
    3. Oliver v Arbuthnot Latham [2001-2]: acting for merchant bank defending claim for breach of confidence in proposals for a property development.
    4. Surface Technology v Young  [2002]: case concerning the transmission of rights of privilege and confidence in a liquidation. Acted for the defendant to proceedings on an application to determine where rights lay.
    5. Optimum Solutions v Yorkshire Electricity/Eastern Electricity [2001-2]: breach of confidence in electricity trading systems.
    6. Overseal v Phytone [1997]: action concerning confidential information in food additives.

    Data Protection & Privacy

    BUAV  v Home Office [2008] UKIT EA: appeal from Information Tribunal concerning information relating to animal experiments.

    IT & Telecoms Disputes

    1. SSA v Megger [2003] TCC: dispute concerning scope of copyright licence raising points of estoppel relating to financial software.
    2. NERC v McKeown [2000-2]: dispute concerning quality of a large software installation for major public research body.
    3. Abraxas v Nationwide [2002] claim for copyright infringement in insurance industry software.
    4. (See also above on telecoms patents cases)

    Internet Law & Cybersecurity

    1. Cranway v Playtech[2009] EWHC 1588 (Pat): patent infringement claim for on-line gaming.
    2. Ellerman v Ritz [2001-2]: litigation concerning rights to use trade marks on the internet, raising issue of where use of a trade mark takes place on the internet.

    Jurisdiction & Remedies

    • Conductive Ink-Jet Technology v Unipixel Display [2013] EWHC 2968 (Ch): jurisdiction in confidential information and patent case.
    • GAT v Luk [2004-6]: the leading ECJ case concerning jurisdiction under Article 16(4) of the Brussels Convention.
    • Celltech v Medimmune [2003] EWCA Civ 1008, [2004] EWHC 1124 (Pat) & [2004] EWHC 1522 (Pat): impact of an exclusive jurisdiction clause on forum non conveniens arguments.
    • Apple Corps v Apple Computer [2004] EWHC 768 (Ch): Rome Convention on choice of law in an intellectual property agreement.
    • British Horseracing Board v Cantor Index [2003]: database right claim relating to horse racing information raising issues of UK and EU competition law.
    • Microsoft v BDL [1998]: article 86 allegations of predatory pricing and trade marks/copyright.
    • IDEX v UPEK/ST [2007]: litigation involving right to recover payments in respect of use of four patents in field of fingerprint identification technology involving multi-jurisdictional issue.

    Media, Sport & Entertainment

    • AETN v Channel 4 [2006]: passing off case concerning use of programme title for alleged TV format.
    • Estate of Francis Bacon v Artprints [2006]: Copyright case relating to works by Francis Bacon.
    • Apple Corps v Apple Computer [2006]: claim by the Beatles’ company in claim against Apple Computer in respect of breach of trade mark delimitation agreement.

    Arbitration & Mediation

    • International arbitration at Special Chamber of ITLOS (Ghana v Cote d’Ivoire, 2015-2017): maritime boundary determination pursuant to UNCLOS. Counsel for Republic of Ghana in interim measures and merits stages.
    • Premier League panel [2010-2017]: several confidential disputes between players and clubs, clubs and the Premier League. Arbitrator including chair of arbitral panel.
    • LCIA Arbitration concerning biotechnology agreement (2007-2009): acted as counsel for biotech company.
    • ICC Arbitration concerning biotechnology agreement (2007) – Appointed as member of arbitral tribunal but case settled at an early stage.
    • ICC Arbitration concerning computer contract (2005) – Member of arbitral tribunal. Case settled after preliminary hearing.
    • ICC Arbitration in Brussels concerning confidential formulations (2004-5) – Claim by US company against Belgian company and others relating to medical products. Acted as counsel for US company.
    • ICC Arbitration in Amsterdam concerning movie channel (2003-4) – Member of arbitral tribunal. Claim by UK company against Dutch company.
    • ICC Arbitration in London concerning petroleum industry joint venture (2003-2004)
    • Acted as counsel for oil services company. Claim between members of large multinational groups.
    • US Mediation-Arbitration concerning petroleum industry patents (2004) – Acting as expert witness on UK patent law in claims and cross-claims between US-based companies.
  • Education & awards
    • BA Physics and Philosophy (1st class, Oxford University, 1985).
    • Diploma in Law (PCL, 1986).
    • LLM (Harvard Law School, 1987).
    • Kennedy Scholar and Lord Harlech Award, Harvard Law School.
    • Queen Mother Scholar, Middle Temple.
    • Wilde Prize (jointly) for Philosophy, Oxford University.
  • Appointments

    Current Appointments

    • Deputy High Court Judge, 2006-.
    • Appointed Person under the Trade Marks Act, 2009-.
    • Member of the panel for disputes arising under Rules of the Premier League, 2007.
    • Chair, Intellectual Property Bar Association, 2007-.
    • Visiting Professor of Law, University College, London, 2007-2011.
    • Chairman of the Intellectual Property Bar Association 2015-.
    • Bencher, Middle Temple.
    • Regularly appointed as mediator in commercial disputes.

    Previous appointments

    • Chair of the Code of Practice committee for the images and metadata strand of the Copyright Licensing Steering Group.
    • Member of UK Government Commission on Intellectual Property Rights.
    • Member of European Commission advisory group on the Biotechnology Patents Directive.
    • Member of Bar Council and Bar disciplinary panels.
    • Trustee of the Natural History Museum, London.
    • Member of Oxford University Law Faculty advisory group.
    • Trustee of Kennedy Memorial Trust.
    • Governor, Bedales School.
    • Trustee of the National Endowment for Science Technology and the Arts and chair of the Invention & Innovation and Finance & Audit Committees.
  • Other relevant information
    • Called to the New York Bar, 1988.
  • Languages

    German

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