Tom Hinchliffe

THOMAS HINCHLIFFE printPDF QC

Called to the Bar 1997

Took Silk 2016

Practice area

Tom Hinchliffe practices in all aspects of intellectual property law, including patents, trade marks, passing off, copyright, registered designs and design right and confidential information.

A significant part of Tom’s practice relates to hi-tech patent work.  He has particular experience in relation to pharmaceutical and biotechnological patents and has been instructed in many of the leading cases in this field in recent years.  Another area of Tom’s expertise is telecommunication patents, in particular relating to mobile telephones, smartphones and ADSL.

Prior to his appointment as a silk, Tom was ranked as the “star individual” at the junior bar for intellecutal property in the 2015 edition of Chambers & Partners and in the top tier of leading juniors in the 2014-2015 edition of the Legal 500.  He was also recommended as a leading junior for information technology by the Legal 500.

Reported cases
Cases before the UK Courts:

• Actavis v Eli Lilly [2016] EWHC 1955 (pat) (patent, male erectile dysfunction, tadalafil, formulation)

• Hospira v Cubist [2016] EWHC 1285 (pat) (patent, daptomycin, purification, chromatography)

• Unwired Planet v Samsung [2016] EWHC 94 (pat) (patent, UMTS mobile telephones, measurement reporting; FRAND)

•  Merck v Ono [2015] EWHC 2973 (pat) (patent, anti PD-1 antibodies for treating cancer)

•  Synthon v Teva [2015] EWHC 1395 (Pat) (patent, multiple sclerosis, expert witnesses)

• Novartis v Focus, Actavis and Teva [2015] EWHC 1068 (Pat) (patent, rivastigmine patches, dosing regime)

•   Merck v Sigma Case C-539/13; [2013] 3 C.M.L.R. 17 , [2013] R.P.C. 35; [2013] RPC 1 & 2 (patent, SPC, parallel imports, treaty of accession to the EU of Poland; scope of orders for delivery up, Patents County Court, Court of Appeal and CJEU)

•  Vringo v ZTE [2014] EWHC 3924 (patents, UMTS mobile telephones, Serving RNC relocation)

•  Teva v AstraZeneca [2014] EWHC 2873 (Pat) (patent, combination product for the treatment of asthma, formoterol, budesonide)

•   Philips v Nintendo [2014] EWHC 1959 (Pat) (patent, Nintendo Wii, motion controllers, 3D virtual body modelling)

•   AGA v Occlutech [2014] EWHC 2506 (Pat) & [2013] EWHC 3180 (Pat) (patent, medical devices, Vascular septal defect occluders, prior uses, confidentiality of prior use, obviousness and the common general knowledge; application to adduce further evidence after close of evidence)

•   Philips v Nintendo [2014] [EWHC 3177 (Pat) (patents, post-trial amendments, leaving patent on the register of patent in partially valid state with claims that the Court has found to be invalid)

•   Samsung v Apple [2014] EWCA Civ 250 (patents, stays of appeals pending application for a central limitation in the EPO)

•   Generics v Yeda [2014] R.P.C. 4; [2012] EWHC (pat) 1848 (patent, multiple sclerosis, copaxone, Court of Appeal and Patents Court)

•   Teva v Amgen [2013] EWHC 3711 (Pat) (Patents, Power of the Court to grant declaratory relief concerning a patent over a former proprietor of the patent)

•   Vringo v ZTE [2013] EWHC 1591 (Pat) (patents, application for determination of a FRAND royalty rate in advance of ant trial on the validity and infringement)

•   Hospira v Kennedy Institute 2013 (patents, biosimilar compounds, TNFα, infliximab)

•   Samsung v Apple [201] 3 EWHC 467 (Pat) (Patents, UMTS mobile telephones, error coding)

•   Glenmark & Mylan v Wellcome [2013] EWHC 148 (pat) (patent, anti-malarial drugs, Malarone)

•   Omnipharm v Merial [2013] EWCA civ 2; [2012] EWHC (pat) 3393 (patent, “spot-on” formulation of a flea and tick protector for pets, FRONTLINE)

•   Generics v Yeda [2013] FSR 13 (Confidential information; Employers’ powers and duties; Fiduciary duty; In-house lawyers; Injunctions; Patent attorneys)

• Perini v LPC UK and PCMC Italia [2012] RPC 30 (patent, damages inquiry, machines for make wound tissue paper).  Also [2009] EWHC 1929 and [2010] EWCA 525 (liability part of same case)

• Warner-Lambert v Teva, Phoenix & AAH (interim injunction, atorvastatin)

• Gedeon Richter v Bayer [2011] EWHC 583 (pat) (patent, oral contraceptives)

• Datacard v Eagle Technologies [2011] RPC 17 (patent and trade mark, printer ribbons)
• Abbott Laboratories Ltd v Medinol Ltd [2010] EWHC 2865 (Pat) (patent, cardiovascular stents)
• Research in Motion v Motorola [2010] EWHC 118 (pat) (patent, mobile email)
• Scinopharm v Eli Lilly [2009] EWHC 631 (pat) (patent, process for making the cancer drug gemcitabine)
• Generics UK v Daiichi [2009] RPC 23 (patent, ofloxacin, levofloxacin, SPCs on enantiomer products)
• Actavis v Merck [2008] RPC 26 (finasteride, male pattern baldness, second medical use claims, when Court of Appeal can depart from previous decisions)
• Generics UK, Teva & Arrow v Lundbeck [2008] RPC 19 (patent, citalopram, escitalopram, enantiomers)
• Qualcomm v Nokia [2008] EWHC 329 (pat) (Mobile telephones, patents, infringement, validity, essentiality)
• Research in Motion UK Limited v Visto [2008] EWHC 355 (pat) (BlackBerry computers, patent, obviousness, computer software patents)
• Research in Motion UK Limited v Visto [2007] EWHC 900 (Ch) (BlackBerry computers, abuse of process by commencement of proceedings in Italy, dismissal under Art. 28 Brussels Regulation)
• Aerotel Limited v Telco (Patents Court, summary revocation of a Patent, method of doing business, patentability)
• Research in Motion UK Limited v Inpro Licensing SARL [2007] EWCA Civ 51 & [2006] RPC 20 (Court of Appeal & Patents Court, BlackBerry handheld computers)
• Conor Medsystems v Angiotech Pharmaceuticals [2007] RPC 20 & [2006] RPC 28 (Court of Appeal & Patents Court, approach to obviousness, drug eluting cardiovascular stents)
• Mayne Pharma v Debiopharm [2006] FSR 37 (Patents Court, waiver of privilege by service of Notice of Experiments, oxaliplatin)
• Badge Sales v PMS International Group PLC [2006] FSR 1 (High Court, design right, secondary infringement, whether innocent acquisition a bar to interim injunction)
• Stanelco v BioProgress (No.1) & (No.2) [2005] RPC 15 & 16 (Patents Court, RF welding, patent entitlement and breach of confidence, application to adduce further evidence after judgment)
• Coflexip v Stolt Comex (No.2) [2004] FSR 7 & 34 (Patents Court & Court of Appeal, sub-sea pipelaying, patent infringement, inquiry as to damages, estoppel as to validity, CPC Art. 33)
• Merck & Co., Inc’s Patents [2004] FSR 16 & [2003] FSR 24 (Patents Court, Court of Appeal, patent, validity, alendronate, bone resorption agents)
• Fulton v Totes [2004] RPC 301 & [2003] RPC 499 (Patents County Court & Court of Appeal, umbrella cases, design right and registered designs, construction of the statutory definition of a design)
• Kirin-Amgen v HMR/TKT [2003] RPC 31 (Patents Court, recombinant erythropoietin, amendment of a patent, good faith and reasonable skill & knowledge)
• Coflexip v Stolt Comex [2003] FSR 41 (Court of Appeal, patent infringement, inquiry as to damages, loss of profit, causation)
• Pharmacia/Monsanto v Merck [2002] RPC 775 & [2000] RPC 709 (Patents Court & Court of Appeal, patent infringement and validity – Cox II inhibitors, tautomers)
• Coflexip v Stolt Comex [2001] RPC 182 (Court of Appeal, patent, subsea pipelaying, infringement, validity, scope of final injunctions)
• Euromarket Designs v Peters [2001] FSR 288 (trade marks, use of trade marks on websites, revocation for non-use)
• Scandecor v Scandecor [1999] FSR 26 (passing off/trade marks, ownership of goodwill)
• Round v Redfearn (November 1998) High Court, design right, beer bottles)

Cases before the European Patent Office
• T812/00 (Thiophenes/Searle et al)

Personal
Regular competitor in triathlons – has represented Great Britain at both World Short and Long Course Triathlon Championship and has been a bronze medallist in his age group at the European Triathlon Championships.

Professional membership
Intellectual Property Bar Association; Chancery Bar Association.

 

Newly appointed silk highlighted for his abilities handling biotechnology and pharmaceutical patent litigation matters. Sources are quick to highlight his polished advocacy, his incisiveness and his commercial awareness.

 

Strengths: "He is a strong advocate who is extremely well organised and very service-oriented." "He is extremely personable, commercial, thorough and responsive."

 

Recent work: Successfully represented Teva in relation to a patent revocation attempt by Synthon for the patents covering Copaxone.

CHAMBERS & PARTNERS 2017, new silk

‘Extremely bright, thorough and a great team player.’

 

‘A star, who deserved his elevation to silk.’

Legal 500 2016-2017, new silk for intellectual property and information technology

Thomas Hinchliffe QC has a litany of patent victories to his name, but is as versatile as they come and adept on any case involving intellectual property.’

world trade mark review, The World's Leading Trademark Professionals for 2017

 

Education

•   Brasenose College, Oxford (1995 MA, First Class Hons. Chemistry)

•   City University (1996, Diploma in Law, Distinction)

•   Inns of Court School of Law (1997, top of year, graded Outstanding and Scarman scholar).


Career
• Called to the Bar in 1997, Middle Temple;
• Contributor to 15th and 16th Editions of ‘Terrell on Patents’.