Marks & Clerk

Intellectual property

Michael advises clients on the commercialisation, monetisation and enforcement of intellectual property assets. He advises across a broad range of sectors including electronics, life sciences, transport and energy and has a strong interest in emerging technologies including AI and Additive Manufacturing.

“Michael Moore has acted for a remarkable array of companies…” and is described as “efficient, easy to get along with and down-to-earth” (IAM Patent 1000) and ‘first class in terms of service, knowledge and execution’ (Managing Intellectual Property IP Stars).

Michael leads Marks & Clerk’s growing commercial IP practice. With over 20 years’ experience advising clients on both litigious and commercial matters, he can apply his “first class… service, knowledge and execution” to undertake due diligence projects and negotiate and draft agreements dealing with the acquisition, sale and licensing of intellectual property rights across a range of industry sectors.

Michael also plays a key role in the firm’s patent litigation and dispute resolution practice and has acted in multi-jurisdictional patent disputes working with legal teams in Europe, the US, Japan and Korea relating to a range of technologies, from mobile and internet-based technologies and RFID devices to insulin-like growth factors.

Experience

• Telecommunications & electronics: Michael has acted in court proceedings and technical negotiations, including in the US and Korea, relating to a number of technologies covering communication network operations and protocols (particularly web technologies), content delivery systems, mobile device software, gaming devices, electronic storage drives and user interfaces, including disputes involving Non-Practising Entities and Standard Essential Patents.
• Open source software: Michael advises on the use of open source software embedded in devices and provided in software as a service including open source compliance assessment and recommendations to remediate any concerns.
• Life sciences and medical devices: Michael has acted in multi-jurisdictional biotech patent disputes relating to antibodies and insulin-like growth factors and advised on SPCs and paediatric extensions. Michael also advises medical device companies on freedom to operate and the acquisition of new technologies.
• Due diligence, licensing in/out and collaborations: Michael advises on due diligence projects, including freedom to operate and monetisation of IP, the licensing of IP rights and commercial collaborations, including joint ventures and European funded consortium agreements, relating to a wide range of technologies.
• Creative industries: Michael advises on UK and EU design right issues and has acted in legal disputes concerning design rights, copyrights and trade marks, including anti-counterfeiting, relating to a variety of sectors, ranging from consumer electronic devices and GUIs to FMCGs and designer lighting.

Key Cases

Eli Lilly v Genentech (patent)

Chugai v UCB (patent)

Case Furniture v UHS Group (designs)

BG Electrical & Nexus Industries v MLA (designs)

Rovi v Virgin Media/TiVo (‘951 patent)

Nintendo v Philips Electronics (patent, Court of Appeal)

Rovi v Virgin Media/TiVo (‘209 patent, High Court and Court of Appeal)

Smartphone/Access v LG Electronics (patent)

Pet Brands v Wilkinson Hardware & James and Steel Ltd (designs)

Eugen Seitz v KHS Corpoplast & Norgren (patent)

Monument v Toolstream (patent and designs)

SanDisk v Kingston (patent)

Intercede v ActivIdentity (patent)

Croydex v Sabichi (patent)

Professional Highlights

• Michael is recognised as a Global leader in patents (Who’s Who’s Legal), a ‘Patent Star’ by Managing Intellectual Property and is recognised in IAM Patent 1000, Legal 500 and Juve Patent.
• Michael is a member of the Law Society, European Patent Lawyers Association and the Licensing Executives Society.
• Prior to qualifying as a solicitor, Michael worked on intellectual property matters at the European Commission and Deloitte & Touche in Brussels.

European Patent Lawyers Association, Licensing Executive Society.

Genes, Clones and Patents, University of Oxford (2005)

Diploma in Intellectual Property Law, University of Bristol (2003)

Qualified as a Solicitor in England & Wales (2002)

PhD in Patent Law & Policy, Intellectual Property Institute Scholarship, University of Sheffield (1998)

MSc in Intellectual Property, Herschel Smith Scholarship, Queen Mary College, University of London (1994)

BSc (Hons) in Biological Sciences, University of Sussex (1993)

Michael remains “down-to-earth” in part because of his young family and inability to turn down a challenge. Having completed 5 London Marathons, Michael recently took to two wheels to complete the 100 hour cycling challenge of 735km, with 12.8km of ascent, across the Pyrenees from the Atlantic to the Mediterranean for the Cure Parkinson’s Trust charity.