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Venner Shipley LLP

200 ALDERSGATE, LONDON, EC1A 4HD, ENGLAND
Tel:
Work 020 7600 4212
Fax:
Fax 020 7600 4188
Email:
Web:
www.vennershipley.co.uk
Cambridge, Guildford, London, Manchester, Munich

Paul Harris

Tel:
Work +44 (0) 20 7710 7551
Email:
Venner Shipley LLP

Work Department

Legal Services

Position

Partner

Career

Paul is an Intellectual Property Litigation partner with over 25 years of experience in intellectual property matters. He has worked in both non-contentious and contentious matters relating to patents, covering a wide variety of technologies including complex chemical cases, electronics and mechanical patents.

On the contentious side, he handled the successful defence of Black & Decker in an action brought by Electrolux, the outcome of which led to the Patents Court guidelines on experiments and expert’s reports. He was also involved in the erythropoietin litigation (Kirin Amgen) and stent litigation (Boston Scientific).

Paul is particularly noted in trade mark matters (registered and unregistered), having successfully litigated the first case under the Trade Marks Act 1994 (Wagamama Ltd v City Centre Restaurants plc). More recently, he was involved in the latest extended passing off case: Fage v Chobani.

Paul is also known for his confidential information practice and handled the Dyson v Strutt litigation, relating to misuse of confidential information, and the same litigation on important issues of costs. He also led the successful team in the First Conference v Bracchi case, which included executing an interlocutory search and seizure order against the defendant.

On the non-contentious side, Paul’s skill and experience in analysing and solving strategic IP matters is called upon by many international clients. It ranges from trade mark problems and licensing strategies, to patent analysis and assessment. He has also been instrumental in the negotiation and preparation of international licensing arrangements for patents and trademarks, and been involved in many non-contentious dealings including corporate support by way of due diligence relating to the sale of businesses and the licensing of the IP, preparation of multi-national licensing and cross-licensing arrangements (including co-existence agreements), and most notably the £2 billion sale to Du Pont of ICI’s film business. Paul has also overseein programmes for the registration of trademarks in many overseas jurisdictions. He also deals with the copyright and design right field, and has acted for a management buy-out team in relation to computer software and computer hardware.

Member

  • International Trademark Association (INTA), Committee Member
  • International Association for the Protection of Intellectual Property, UK Council Member
  • Chartered Institute of Patent Attorneys
  • Institute of Trade Mark Attorneys
  • Royal Society of Chemistry


London: TMT (technology, media and telecoms)

PATMA: Patent attorneys

Within: PATMA: Patent attorneys

'The diligence shown and quality of work at Venner Shipley LLP is excellent' and clients include Merck, Nokia and Hitachi. Managing partner Jan Walaski leads the team and is an expert in electronics. Other notable names include Ian Grey, who is an expert in mechanical engineering; chemicals and life sciences specialist Sian Gill; and James Tumbridge and Paul Harris, who are experts in contentious matters. Also recommended are Anton Hutter, who advised Neuro-Bio on the valuation of its IP portfolio, and Tim Russell, who defended Epizyme against opposition from GSK regarding one of its patents.

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PATMA: Trade mark attorneys

Within: PATMA: Trade mark attorneys

Venner Shipley LLP has a broad practice with strengths on both the contentious and non-contentious sides, and a client roster that includes Mitel Networks, Aviva and FxPro. Practice head David Birchall is an expert in trade mark licensing and prosecution, and recently managed the trade mark portfolio for Clinigen. IP litigator Paul Harris represented Stanley Black & Decker in a contractual dispute with its former licensee for Europe. Senior associate Julia McFarlane focuses on non-contentious issues; recent mandates include advising Zimmer Biomet on its trade mark portfolio management strategy. Also recommended is James Tumbridge, who advised Norfolk Dinosaur Park on protecting the trade mark 'Dippy', which is being opposed by the Natural History Musuem.

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