Dehns

Dispute Resolution

Partner and Head of Litigation at Dehns, Paul is a qualified solicitor and joined the firm in 2021. His 38 years’ experience covers the full range of contentious and non-contentious intellectual property matters.  Paul’s litigation practice incorporates UKIPO appeals and cases before the Business & Property Courts of England & Wales (Patents Court; IPEC), and the Court of Appeal (Civil); while his litigation experience and tactical expertise is called upon in cases currently before the UPC.

Paul’s experience extends across a range of technologies, incorporating, inter alia, complex chemical, electronics and mechanical.  He successfully defended Black & Decker in a patent action brought by Electrolux, the outcome of which led to changes in the Patents Court Guidelines on experiments and expert’s reports. He was involved in the erythropoietin litigation (Kirin Amgen); and stent litigation (Boston Scientific); and acted for the defendant in Icescape v Ice-World International, at first instance and on appeal - the first case to provide guidance on the application of the doctrine of equivalents following the decision in Actavis v Eli Lilly.

Paul is known for his trade mark practice (registered and unregistered). He 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 extended passing off case: Fage v Chobani, and successfully steered longstanding client, Stanley Black & Decker, Inc., in a trade mark infringement/ jurisdictional battle involving a former distributor (The Black & Decker Corporation v Dvize).

Paul handled the Dyson v Strutt litigation, relating to misuse of confidential information: the same action laid down guidance on the important issue of common costs recovery. He led the successful team in the First Conference v Bracchi case, which included executing an interlocutory search and seizure order against the defendant.

Paul’s expertise in non-contentious IP matters is called upon by domestic and international clients alike. He provides corporate support, strategic advice and innovative solutions across all aspects of IP, including programmes for registration in overseas jurisdictions; patent analysis and assessment; negotiation and licensing arrangements (incorporating multi-national and cross-licensing and co-existence agreements); and due diligence on the sale of businesses.  Paul notably played a part in the £2 billion sale to Du Pont of ICI’s film business. Paul also deals with the copyright and design rights, and has acted for a management buy-out team in relation to computer software and hardware.

Paul has lectured on patents, trade marks and confidential information. Well-known domestically and internationally, he has been invited to speak at conferences across the UK, Europe, the USA and the Middle East. He has, since 1995, taught aspects of trade mark law on the Intellectual Property Diploma Course at the University of Oxford. In addition, Paul has written extensively on IP matters, and been published widely, particularly on patent and trade mark-related issues.

Admitted as a solicitor on 15th January 1988.

English

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

Keele University (BSc Chemistry, 1982) College of Law (Conversion Course, as was, 1983-1984) College of Law (Law Finals, as was, 1986-1987)