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Stephenson Harwood

Living Wage
1 FINSBURY CIRCUS, LONDON, EC2M 7SH, ENGLAND
Tel:
Work 020 7329 4422
Fax:
Fax 020 7329 7100
DX:
64 LONDON CHANCERY LANE WC2
Email:
Web:
www.shlegal.com
Beijing, Dubai, Hong Kong, London, Paris, Piraeus and 4 more

Rob Jacob

Tel:
Work 020 7809 2072
Email:
Stephenson Harwood

Work Department

Commercial litigation

Position

Rob is a partner specialising in both contentious and non-contentious IP issues with a particular focus on trade mark and copyright matters. He has particular expertise in the life sciences, offshore construction and luxury brands sectors.

Rob has a masters degree in Chemistry from Imperial College, London and a post-graduate diploma in IP law and practice. He trained and qualified into the IP team at Clifford Chance before joining Stephenson Harwood in 2009.

Rob acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)) where the firm successfully argued for the extension of trade mark law in relation to post-sale confusion. He has also successfully argued that residual goodwill still subsists in the NICHOLSON gin brand resulting in the UK IPO invalidating third party marks for the same on grounds of passing off and bad faith with his client being awarded the second largest IPO cost award of all time (UK Decision: Opp 0520-14).

Rob also has particular expertise in the Lifesciences sector. Rob spent almost 9 months in the trade marks team of GlaxoSmithKline where he gained considerable regulatory name clearance experience. We believe that this sets Rob aside from many lawyers in the city as it is very rare to hold both legal and regulatory experience in this area. Continuing his work for GlaxoSmithKline, Rob has successfully convinced OHIM's Board of Appeal that the shape of GSK's DISKUS inhalers was distinctive (R2074/2013-2), has successfully registered various national colour per se trade mark registrations in relating to colour purple and is currently working alongside Eifion in relation to one of the largest trade mark disputes in the life sciences sector.

On the non-contentious side, Rob's highlights include working on the public takeover of Biocompatibles plc by BTG plc, the US$3.8 billion sale of Piramal Enterprises' domestic formulations division to US pharmaceuticals giant Abbott, the acquisition of the worldwide rights to Florbetaben (a pioneering molecular imaging product for the diagnosis of early Alzheimer's disease) from Bayer Pharma AG and the US$220 million acquisition of EKOS corporation.

Rob wrote the intellectual property chapter of the book Offshore Construction Law and Practice published by Informa Law from Routledge.





London: TMT (technology, media and telecoms)

Intellectual property

Within: Intellectual property

The 'bright, commercially-minded, and creative' intellectual property practice at Stephenson Harwood¬†'combines practice and experience from different jurisdictions', and is considered 'a leading firm in multi-jurisdictional IP litigation'. The team acted for GlaxoSmithKline in a trade mark dispute¬†against Sandoz, in relation to the use of colour purple on asthma inhalers. The 'formidable litigator'¬†and 'experienced negotiator and strategist'¬†Eifion Morris¬†lalongside the 'calm and imperturbable solution-seeker'Rob Jacob, which includes proceedings across several jurisdictions.¬†Morris and Jacob¬†jointly head the practice alongside the 'highly knowledgeable'¬†Alexandra Pygall, who is singled out for her¬†'excellent¬†litigation strategy'. In another highlight, the team is representing Blue Power in a¬†‚ā¨1bn damages claim for breach of contract and breach of confidence including a misuse of trade secrets against¬†Eni. It is also¬†acting for¬†Eureka Shipping in a patent infringement dispute relating to technology for the loading, transport and unloading of cement products.

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Pharmaceuticals and biotechnology

Within: Pharmaceuticals and biotechnology

The 'excellent', 'very pragmatic' and 'professional' Stephenson Harwood focuses on intellectual property and corporate matters in this space. Corporate partner Andrew Edge jointly heads heads the team and recently advised Novacyt on its dual listing on the London Stock Exchange and Euronext Paris. Another key name on the corporate side is Anthony Clare, who assisted Acacia Pharma with its listing on Euronext Brussels. Team co-head Alexandra Pygall specialises in IP and is 'highly knowledgeable in this field'. For contentious matters, her litigation strategy is 'excellent' and she is also 'highly effective' in mediation. Rob Jacob is another key member of the IP team, with notable strengths in trade mark work. Also recommended is senior associate Eibhlin Vardy, who is experienced in patent litigation.

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Legal Developments by:
Stephenson Harwood

  • Companies should plan now to minimise their pension protection levy

    The amount that pension schemes have to pay to the Pension Protection Fund (PPF) for the year 2006/07 may have increased by as much as five times the previous year's levy. Employers who ultimately bear the cost of many pension schemes will need to make plans now to ensure the levy payable for the year 2008/09 is kept to a minimum.
    - Stephenson Harwood

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