Intellectual Property

William Fry boasts Ireland’s leading Intellectual Property Group with dedicated Intellectual Property lawyers dealing on a full time basis with contentious and non-contentious cases for clients.  The Intellectual Property team prides itself on its expertise and experience.  The Firm’s commitment to Intellectual Property as a core practice area is recognised internationally with William Fry being consistently ranked as Ireland’s premier law firm in the area.

William Fry was awarded Ireland Trademark Firm of the Year 2018 at the Global IP Awards 2018 and awarded 'Irish (Contentious) IP Firm of the Year' at the Managing IP Global Awards 2017.

The Firm’s reputation in this field is evidenced by its experience.  Whether in contentious or non-contentious matters it has represented clients in all key Intellectual Property deals and reported case law over the last five years.

Areas of Expertise Include:

  • Patents
  • Trade Marks
  • Passing Off
  • Copyright
  • Designs
  • Databases
  • Confidentiality Agreements
  • Franchising Agreements
  • Licensing and Royalty Agreements
  • Agency, Distribution and Merchandising Agreements

We are assertive and solution oriented in the boardroom and in dispute resolution, whether by arbitration, mediation  or in the Courts.  Our commitment to providing clients with an unrivalled professional service has made us Ireland’s leading practitioners in Intellectual Property.  Our focus is always on delivering results for the client.

William Fry is proud to have three of its leading lawyers listed in the 2019 edition of WIPR Leaders, which ranks the leading IP lawyers globally. Partners Leo Moore and Laura Scott and Consultant Carol Plunkett are included in the listing.  William Fry is the only big 5 Irish law firm to have more than one expert listed.

Laura Scott has been ranked in IP Stars 2019 as one of the Top 250 Women in IP globally. Laura is one of only three people ranked in Ireland this year and the only person in Ireland to have been listed both in 2019 and 2018.  

 

 

We act for major domestic and international clients in all sectors, recently including:

  • Bord Gáis Energy, an Irish utility supplier, on its sponsorship agreement with the GAA 
  • DCC Healthcare Limited, a leading healthcare business, during its acquisition of Medisource Ireland Limited. Medisource Ireland Limited is a pharmaceutical procurement business. The William Fry Technology team advised on some complex aspects of the transaction involving intellectual property and licencing arrangements 
  • PrePayPower in Irish Patents Office proceedings and recently successfully concluded Commercial Court passing off proceedings against Airtricity.  
  • Boehringer Ingelheim in the defence of patent revocation proceedings and in defence of supplementary protection certificate revocation proceedings.
  • ResMed on its technology and IP licensing deal with a global technology/entertainment company, as an integral part of it next generation platform.
  • GlaxoSmithKline in its trade mark infringement and passing off action against Rowex Limited (part of the Rowa/Sandoz group) in the Irish Commercial Court relating to one of its biggest selling pharmaceutical products, SERETIDE, a treatment for asthma and COPD. The case relates to the use of the colour purple by the defendant in respect of its AirFluSal Forspiro inhaler product. 
  • X-Celeprint in relation to complex patent licensing arrangements and research and development agreements relating to its market leading technology and on IP arrangements with partner companies.
  • Brown Thomas, Ireland’s leading exclusive high end lifestyle store, on a trade mark infringement and passing off action.
  • the RDS on all aspects of a complex long term stadium branding sponsorship agreement with a well known European Cup rugby team and a major world player in the insurance market.  We are assisting with all negotiations and drafting of the sponsorship agreement.
  • the Afilias Group, on copyright and other IP considerations in the development of an software products connected to its mobile device recognition software.
  • Premier Lotteries Ireland Limited, a joint venture between Ontario Teachers Pensions Plan and An Post, on IP and commercial aspects of its acquisition and implementation of the Irish National Lottery Licence 2014.
  • Afilias on the acquisition of Generic Top Level Domains and operation of its domain registry business.
  • MSD Corp., in the defence of Irish Commercial Court patent infringement proceedings by Ono Pharmaceuticals and Bristol-Myers Squibb in respect of anti-PD1 antibodies for cancer treatment.       
  • e-Dreams in the defence of Irish Commercial Court proceedings by Ryanair alleging infringement of trade mark and passing off by e-Dreams’ website.   

Generative AI Generates Infringement Litigation

Following the explosion of generative AI systems into the mainstream in 2022, the copyright infringement litigation has already started.


Court of Appeal Decision Awaited in Biogen Appeal on Interlocutory Injunction

Biogen has appealed a High Court decision, delivered on 26 October 2022, in which Mr Justice Twomey lifted an interlocutory injunction secured by Biogen against Neuraxpharm and Laboratorios Lesvi (which order has been stayed pending appeal) in a patent dispute about a drug used to treat multiple sclerosis.


CJEU Issues Guidance On When Parallel Importers Can Rebrand Generics As Branded Medicines

New CJEU guidance on rebranding parallel imported medicines.


Evidence of UK Use of EU Mark in EU Invalidity Proceedings Post-Brexit

General Court finds that evidence of use of an earlier EU trade mark in the UK is irrelevant in an application seeking invalidity of a later EU trade mark where the decision of the EUIPO was taken after the UK left the EU.


Unified Patent Court Update - Sunrise Period is Postponed by Two Months

UPC Update - The Sunrise Period is due to commence on 1 March 2023 followed by the entry into force of the UPCA on 1 June 2023.


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We are consistently ranked as one of the leading Intellectual Property law firms in Ireland.

Department 

  • William Fry's IP team is described as "very strong in technology, food & beverage and pharma but is a full service team. The team is very responsive, cost efficient and always finds practical and commercially oriented solutions to solve even the most complex cases in favour of the client." Another client adds how "William Fry is the standout firm in Ireland for intellectual property litigation and patent litigation in particular." Legal 500 2020
  • One interviewee appreciates the team's "holistic approach to client service, which combines an unparalleled understanding of the law and a detailed understanding of business with a focus on client outcomes." Another source highlights the "dynamic team" for its "profound IP knowledge" and "great responsiveness," describing the lawyers as"very experienced, practical and hands-on, as well as client- and solution-driven." Chambers Europe 2020
  • A happy client says "the William Fry team are stand out leaders in the IP field; the service is fast, efficient, on point and commercial, and there is a real sense of strength in depth". Another client says "the team is very responsive, commercial and practical". Chambers Europe 2019 
  • One impressed commentator considers William Fry "the strongest IP firm in Dublin,"adding: "They are a young, dynamic and commercially minded team which demonstrates a real can-do attitude." Another source offers similar feedback: "Their strength lies in technology-related issues. They are a young and innovative team who are always great to work with." One interviewee highlights the team's client focus and "understanding of the bigger commercial picture," adding: "They are very responsive, bright and on top of technical and legal issues." Chambers Europe, 2018
  • One source lauds the department as one of "the leading practices in heavy IP matters," with another explaining that they are "technically very good, strategic and also nice people to work with."  One interviewee states: "We have been consistently pleased with the advice and the quality of the work",describing the team's recommendations as "practical" and "reliable." Chambers Europe 2017
  • "This firm is absolutely the best I've dealt with, holding its own on an international level." "I would not look past this team for any IP work - the firm delivers a top-notch service." Chambers Europe 2016
  • The ‘proactive’ team at William Fry is ‘preeminent’ in the technology and pharmaceuticals sphere, and is currently acting for Boehringer Ingelheim in patent proceedings. Legal 500 EMEA 2016

Team

Laura Scott

  • Laura has been described as an "expert in all areas of IP." One client reports they have worked with Laura "on a number of cases in the last 12 months ranging from SPC validity proceedings to copyright. We are awaiting judgment in one case where I expected we would lose at the proofs stage but now believe that we will likely win because of the work put in by the team. On the IP side I would rate Fry as the leading firm in Ireland." Another client adds that Laura "stands out for her technical know-how and is an excellent drafter." Legal 500 2020
  • Laura has been ranked in IP Stars 2019 as one of the Top 250 Women in IP globally.  
  • Laura Scott  is a highly respected IP practitioner with significant expertise in patent litigation. Sources praise her client-oriented approach, highlighting her "commitment and attention to detail" and adding that "she's a pleasure to deal with." Chambers Europe 2019
  • "Outstanding and a real pleasure to work with...Laura is a highly experienced litigator with intimate knowledge of all areas of intellectual property."  WTR1000 2019
  • “She is calm under pressure and has a depth of knowledge and experience which inspires confidence in her clients,” observes one source. Chambers Europe 2018
  • Laura is "on top of the technical detail...strategic and practical" and is praised for her "attention to detail and drafting skills". Legal 500 EMEA 2018 
  • Laura Scott receives plaudits for her trade mark and patent litigation practice, with particular knowledge of the pharmaceutical and life sciences sectors. Clients say: "She is very hard-working, responsive and dedicated to leaving no stone unturned in considering and communicating all available options. She is also extremely pleasant to work with." Chambers Europe 2017
  • Laura Scott has the ‘Midas touch with clients’. Legal 500 EMEA 2017

David Cullen

  • According to Chambers Europe 2020, David has been described by clients as "pragmatic and has a strong technology interest, which aids immensely in his understanding and his advice." 
  • One interviewee attests that he is "always available, responsive, timely and very well-versed." Chambers Europe 2019 
  • David Cullen is revered for his commercial prowess in intellectual property mandates. Chambers Europe 2018 
  • Practice head David Cullen "distils salient facts from complicated business scenarios". Legal 500 EMEA 2018 
  • David Cullen impresses clients with his commercial IP practice, one of whom praises his "absolute excellence in IP law, coupled with his strong technology and business acumen." Chambers Europe 2017
  • Esteemed practitioner David Cullen "has really incredible experience in the area of technology and IP, and is cool, calm and pragmatic," say sources. Chambers Europe 2016

Leo Moore

  • "Leo is very personable and as a lawyer, he is very responsive, cost efficient and always finds practical and commercially oriented solutions to solve the client’s issues." Legal 500 2020
  • According to sources, Leo "is very responsive and always finds practical, commercially oriented solutions." Chambers Europe 2020
  • Leo Moore is a towering figure in the market, widely respected for his advice on transactional matters, as well as outsourcing, data protection and the commercialisation of new technologies. Enthusiastic sources describe him as "super personable, kind, friendly, easy to talk to and proactive about keeping in contact." Others say Leo is "very approachable and provides the required advice in a form which is easily understandable for all around the table. He is very commercial in his delivery and solution-oriented." Chambers Europe 2019
  • Sources describe Leo Moore as an “extremely smart lawyer” and appreciate that he is “responsive, easy to talk to and always clear about the next step.” He is praised for his handling of multi-jurisdictional patent licensing mandates and strategic IP advice. Chambers Europe 2018
  • Leo is "practical and diligent". Legal 500 EMEA 2018
  • "Leo is a "top-notch lawyer" who is noted for his expertise in the technology sector and is often called upon to manage large IP portfolios for prominent companies" according to Who's Who Legal: Trademarks 2018  
  • One client says he is "easy to work with, very good at breaking down complex issues and provides clear advice." Chambers Europe 2017
  • According to sources, Leo Moore is "very good at grasping technical issues, and explaining them in a non-technical manner," with one adding: "One of the best things is that he figures out how to make things happen, never coming back with reasons not to do things." Chambers Europe 2016

Key Contacts

Laura Scott Partner

David Cullen Partner

Leo Moore Partner

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