It has been said that the creative industries and the legal framework that supports them are becoming increasingly important to Scotland and the whole Scottish economy, supporting more than 60,000 jobs and generating some £5 billion for the Scottish economy.
Not surprisingly, then, intellectual property continues to be a good source of work for Scottish firms, buoyed up by a world-class life science industry as well as cutting-edge technology developments.
This year, World Intellectual Property Day, which falls on 26 April, celebrates “Visionary Innovators”, a theme that its website uses to link Rembrandt, Louis Pasteur, the Wright Brothers, Jimi Hendrix and Steve Jobs, among others. The term could equally apply to much of the leading work now taking place in Scotland.
“Commercialisation” is a term that features regularly in the profiles that follow, showing the importance to clients of being able to reap a proper reward for their creative efforts. And the range of clients, from universities to software companies to the oil industry to retailers, underlines the critical role of IP rights in almost every commercial sector.
The rich and varied experience of Scots lawyers in this practice area shows the profession once again willing to diversify and adapt to meet its clients’ needs, across the full range of intellectual property rights and applications.
ADVOCATES’ STABLES
Axiom Advocates
t: 0131 226 2881
f: 0131 225 3642
Offices: Parliament House, Edinburgh
Roisin Higgins
Specialises in commercial litigation, particularly IP. Currently rated as band 1 for IP (Chambers), and “the leading junior for IP matters” (Legal 500). Particular experience in: patent infringement/revocation, including the oil and pharmaceutical/medical sectors; copyright relating to architectural/industrial drawings and software programs; trade mark infringement/passing off; and design right infringement/revocation.
Murray Stable
t: 0131 260 5697
f: 0131 220 2654
Offices: Parliament House, Edinburgh
Iain Mitchell QC
UK rep, CCBE IT committee; chairman, Scottish Society for Computers and Law; member, IT panel, Bar Council England & Wales. Joint editor, International Free and Open Source Law Review; author, Scottish chapter, Electronic Evidence; co-author, UK chapter, Open Source Lawbook; hon lecturer, University of Münster. Recommended by Legal 500; Chambers.
Iain Artis, Advocate
Recommended in Legal 500 for brand management matters, Iain Artis has a background, unique at the Scottish bar, of having managed intellectual property affairs for large multinational brand and technology businesses, as well as having a foundation in litigation from all perspectives. The result is advice with practical insight.
Terra Firma Chambers
t: 0131 260 5830
f: 0131 260 5645
Offices: Parliament House, Edinburgh
Ralph Smith QC
An experienced practitioner in all forms of IP law, Ralph has acted in patent cases (Court of Session and Comptroller of Patents), has significant experience in parallel importing cases, has acted in numerous trade mark cases, and has experience relating to design rights, copyright disputes and restrictive covenants.
SOLICITORS’ FIRMS
Anderson Strathern LLP
t: 0131 270 7700
f: 0131 270 7788
w: www.andersonstrathern.co.uk
Offices: Edinburgh, Glasgow, Aberdeen
Leigh Davidson, Partner
Leigh is qualified in Scots and English law and specialises in providing intellectual property advice to clients ranging from SMEs to leading research institutions. She is accredited by the Law Society as an IP specialist and is described by Chambers as “a true IP specialist who really knows her stuff”.
Katrina Lumsdaine, Partner
A solicitor advocate who heads Anderson Strathern’s contentious IP practice, Katrina appears regularly in the Court of Session, using its specialist IP procedure. She also has experience of IP disputes in the English High Court, the IPO and the European Courts. Katrina is regularly invited to lecture on IP matters.
Appleby
t: 01624 647 647
f: 01624 620 992
Offices: Bermuda, British Virgin Islands, Cayman Islands, Guernsey, Isle of Man, Jersey, Mauritius, Seychelles; London, Hong Kong, Shanghai, Zurich
Claire Milne, Partner
Isle of Man Team Leader, IP/Telecommunications and Technology teams; partner, Corporate & Commercial department after re-qualifying as a Manx advocate. Previously partner, Thorntons, Tayside. Experience of in-house/private practice in all aspects of IP rights. Named “Leader in her Field” (Chambers UK, 2012; Chambers Europe 2011, 2010). Author; accredited IP specialist.
Biggart Baillie LLP
t: 0131 226 5541
f: 0131 226 2278
w: www.biggartbaillie.co.uk
Office locations: Edinburgh, Glasgow
Colin Miller, Partner
Accredited specialist; sits on Law Society of Scotland IP Committee. Qualified Scotland/England. Numerous acknowledgments in
Brent Haywood, Partner
With determination and passion and over 20 years’ experience, Brent is commended for his pragmatic problem-solving approach. Brent specialises in dispute management and has developed an excellent reputation in the field of intellectual property, having concluded a number of high profile cases in the Court of Session.
Douglas McLachlan, Associate
Douglas has considerable experience in all aspects of intellectual property and IT. Well known for his efficient, down-to-earth approach. Particular experience in media and creative industries; has been on secondment to STV, the broadcaster and digital media business. Also has an excellent track record in negotiating software and computer contracts.
Brodies LLP
t: 0131 228 3777
f: 0131 228 3878
Offices: Edinburgh, Glasgow, Aberdeen, Brussels
Grant Campbell, Partner
A highly experienced commercial lawyer, Grant heads Brodies’ Technology, Information and Outsourcing Group. Accredited specialist in IP law by Law Society of Scotland; has a particular interest in information law. Grant acts for a diverse range of clients, but is particularly known for his technology work in the financial sector.
Will McIntosh, Partner
Will has considerable experience in the commercialisation of intellectual property and technology. He is one of Scotland’s leading practitioners in supporting the tech transfer activities of universities. Will continues to work with companies seeking to license and leverage their IP as part of corporate funding and M&A transactions.
bto solicitors
t: 0131 222 2939
f: 0131 222 2949
Offices: Glasgow, Edinburgh
Paul Motion, Partner
Head of Technology & IP team. Highly experienced. One of few solicitor advocates regularly in court conducting own IT and IP cases. Rapid response capability in urgent applications regarding copyright breaches, trade mark, design rights and website infringements, passing-off and removal of confidential information/trade secrets. Praised by clients (Legal 500).
Burness LLP
t: 0131 473 6000
f: 0131 473 6006
Offices: Edinburgh, Glasgow
Colin Hulme, Partner
A commercial litigator with in-depth experience at resolving IP and IT disputes, Colin was named IP Lawyer of the Year at the Law Awards of Scotland 2009, and is recognised as a leading IP/IT practitioner in Chambers, Legal 500 and Legal Experts. Has an LLM in IT and Telecommunications law.
David Goodbrand, Partner
Heads Burness’s Commercial, Technology and Outsourcing team, specialising in advising on: outsourcing; IT procurement; IP protection and licensing; software licensing; commercial contracts; e-commerce; data protection and use of information. Ranked as a key individual in IP (Chambers), an IP/IT expert (Legal Experts), and recommended IP expert by PLC Which Lawyer?
DLA Piper Scotland LLP
t: 0870 111 111
f: 0131 242 5555
Offices: Glasgow, Edinburgh
John McKinlay, Partner
John McKinlay is head of DLA Piper’s IPT practice in Scotland. He has a leading reputation in relation to commercial contracts involving the use of IP, particularly multiparty licensing and collaboration agreements.
Philippa Montgomerie, Partner
Philippa Montgomerie has a leading reputation for advising clients in relation to contentious IP issues and on the commercialisation and exploitation of IP, particularly for life sciences clients. She has a degree in biochemistry and particular interest and experience in biotech patent litigation and the regenerative medicine sector.
Dundas & Wilson CS LLP
t: 0131 228 8000
f: 0131 228 8888
Offices: Edinburgh, London, Glasgow
Laurence Ward, Partner
Partner since 1991, Laurence established Dundas & Wilson’s specialist IP/IT Group. Has a wealth of experience advising on IP protection, licensing and commercialisation, and complex, high value and strategically important ICT transactions. Vice chair of Scotland’s Technology Advisory Group, devising and overseeing implementation of Enabling Technologies Strategy for Scotland.
Carina Healy, Partner
Wealth of experience advising on IP licensing, development and exploitation over 15 years. Involved in many high profile transactions (including commercialisation of “Dolly the Sheep” technology). Clients include technology and life science companies, academic institutions, investors/funders. Particular expertise in life sciences, academic technology transfer, and complex disputes in oil/gas.
Alistair Wilson, Senior Associate
Specialises in commercialisation, protection and exploitation of IP rights. Particular interests: media and life sciences sectors (Honours degree in Genetics). Advises companies and academic institutions in all matters regarding technology transfer, development and global exploitation of IP. Also IP/branding issues regarding online trading platforms, social media and networking sites.
Gillespie Macandrew
t: 0131 225 1677
f: 0131 225 4519
w: www.gillespiemacandrew.co.uk
Offices: Edinburgh
Christopher Smith, Partner
Partner since 2003, heading Business Law Department and advising on IP and related commercial contract issues for clients including manufacturers, retailers, IT businesses and university spin-outs. Highlights include assisting in development of a regional produce brand for a farming co-operative, and advising statutory undertaker on commercial development of its brand.
Harper Macleod LLP
t: 0141 221 8888
f: 0141 226 4198
Offices: Glasgow, Edinburgh, Inverness
Tom Thomas, Partner
Tom has advised on some of the most significant intellectual property and ICT matters in Scotland. Clients include the Scottish Government and other public bodies. He also has extensive experience in the sports sector, acting for Glasgow 2014 Commonwealth Games, Sportscotland and, for over 10 years, the Scottish Premier League
Jamie Watt, Partner
Jamie specialises in IP, intellectual asset and complex commercial contract work. Experience includes advising on a number of major Government IT projects, managing multi-jurisdictional brand protection matters for internationally active clients, and addressing commercial and regulatory arrangements in the life sciences sector. Rated in Chambers' Guide to the Legal Profession.
HBJ Gateley
t: 0131 228 2400
f: 0131 222 9800
Offices: Edinburgh, Glasgow, Birmingham, Leeds, Leicester, Manchester, Nottingham, London and Dubai
Andrew Walker, Head of Commercial Team, Corporate Department, Scotland
Andrew has extensive experience in general transactional corporate work and a wide variety of commercial contracts. Specialises in advising companies on IP matters, in particular in the context of commercial contracts or deals. Takes a particular interest in helping high-growth businesses, often, but not exclusively, in the technology sector.
Ledingham Chalmers LLP
t: 01224 408445
f: 01224 408 400
Offices: Aberdeen, Edinburgh, Inverness, Stirling, Inverurie
Peter Murray, Partner
Experienced adviser on industrial copyright and trade mark protection matters (contentious and non-contentious), in addition to the licensing and commercialisation of all forms of intellectual property. Particularly experienced in energy sector work, including international aspects. Partner at Ledingham Chalmers LLP since 2002.
Fiona Neilson, Partner
Heading the corporate team, Fiona acts for company, charity, institutional and financial clients. Particular interest in IP, technology transfers/licensing, franchising, trade mark infringement, passing off, copyright and design issues, software licence agreements. Recent advice includes patent exploitation; trade mark infringement/business names; assignations of IP rights, and warranties relating to funding/investment.
McClure Naismith LLP
t: 0141 204 2700
f: 0141 248 3998
Offices: Glasgow, Edinburgh, London
David Gourlay, Partner
Accredited specialist in IP law advising on protection, management and exploitation of IP rights. Substantial experience of advising on IP/IT/information management issues in various sectors, including financial services, life sciences, social housing, education, renewable energy, technology and sport. Contributor to Greens Practice Styles IP precedents.
Euan Duncan, Partner
In-house counsel to Scotch Whisky Association from 1993. Completed MBA then joined McClure Naismith in 1999. Much of his practice is non-contentious, but has been involved in a number of IP litigations and works across industry sectors. Advised RZSS on all aspects of loan of giant pandas to Edinburgh Zoo.
Maclay Murray & Spens LLP
t: 0141 248 5011
f: 0141 248 5819
Offices: Glasgow, Edinburgh, Aberdeen, London
Alison Bryce, Partner and Head of IT/technology Team
Alison specialises in providing strategic, commercial advice on IP, IT and commercial contract matters. Also advises on data protection, e-commerce, outsourcing and technology issues. Client sectors include food and drink, oil and gas, and fashion/branding. Law Society of Scotland accredited specialist on IP law. Also director of Greenock Morton FC.
Ross Nicol, Senior Associate
Advises on non-contentious IP/IT matters, with focus on commercial arrangements relating to technology creation/exploitation; also IP aspects of corporate transactions, e-commerce, data protection/freedom of information compliance and franchising. Works with individuals and startup companies through to UK PLCs, in sectors including life sciences, food and drink, financial services, software.
Susan Snedden, Associate
Specialising exclusively in IP/IT dispute resolution, Susan has broad experience, acting for pursuers and defenders, including patent litigation in pharmaceutical and medical devices, registered and unregistered design right disputes, trade mark disputes including parallel imports cases, passing off claims, software development disputes, copyright disputes, confidentiality/trade secret disputes and domain name disputes.
MBM Commercial
t. 0131 226 8200
f. 0131 226 8240
Offices: Edinburgh, Oxford
Stuart Hendry, Partner
Stuart is the head of the firm’s IP team, has a Masters degree in IT/Telecommunications Law and advises clients on non-contentious IP and IT matters, focusing on technology transfer, spin-outs, technology startups and investments. He advises clients operating in the e-commerce, IT, data management, engineering and life sciences sectors.
Andy Harris, Associate
Andy has a Masters degree in IP and Telecommunications Law and over a decade of experience in contentious and non-contentious IP work. From music to computer games, software to engineering, life sciences to digital media, he has advised on all manner of IP commercialisation contracts and issues.
Stuart Malcolm, Partner
Stuart Malcolm is a specialist intellectual property lawyer with a strong focus on the UK’s science, technology and innovation sectors and knowledge-based and creative economies. Stuart is widely respected for the depth of his sector knowledge and he acts for clients throughout the UK’s science-to-innovation and creative communities.
Morton Fraser LLP
t: 0131 247 1000
f: 0131 247 1007
Offices: Edinburgh, Glasgow, London
Austin Flynn, Partner
A winner of Corporate Lawyer of the Year (Law Awards of Scotland), Austin is praised for technical knowledge and expertise as well as his consistently high level of service. Described in Legal 500 as exhibiting “great knowledge and professionalism… inspires great confidence”, with “a laser-like focus on always moving forward”.
Sam Price, Associate
Sam provides specialist advice to clients on intellectual property, technology, data protection and freedom of information issues. Sam has extensive experience in advising clients of all sizes across a range of sectors, including SMEs, major household names, clients in the technology sector and public sector organisations.
Semple Fraser LLP
t: 0141 221 3771
f: 0141 221 3776
Offices: Glasgow, Edinburgh, Manchester
Scott Kerr, Partner
Law Society of Scotland accredited specialist in intellectual property law, Scott has experience of advising corporate clients on a wide range of IP issues, including corporate structures and commercial contracts. He has particular experience relating to trade marks, patents and copyright (including computer software). He regularly speaks on IP issues.
Shepherd and Wedderburn
t: 0131 228 9900
f: 0131 228 1222
Offices: Edinburgh, Glasgow, London, Aberdeen
Joanna Boag-Thomson, Partner
Joanna is well known in the legal marketplace as an approachable and commercially astute intellectual property lawyer. Her key areas are technology exploitation (with extensive experience in renewable energy and life sciences) and brand sponsorships, advising on a range of matters from multi-partner scientific collaborations to major sponsored events.
Paul Carlyle, Partner
Paul specialises in intellectual property law and advises clients in all sectors from high technology to branding and media clients. Paul and his team divide their time between the firm’s Edinburgh and London offices. Paul also sits on the intellectual property law reform committee of the Law Society of Scotland.
John Mackenzie, Partner
An experienced solicitor advocate, John deals with a range of commercial litigation and has particular expertise in intellectual property and IT matters. John advises clients in relation to IP portfolio management and, in particular, online brand protection. He is accredited as a specialist in intellectual property law.
Thorntons Law LLP
t: 01382 229111
f: 01382 202288
Offices: Dundee, Perth, Edinburgh, Arbroath and Forfar
Lesley Larg, Partner
Law Society of Scotland accredited specialist in IP, Lesley heads a team of six IP lawyers and has more than 10 years’ experience in this area. She has been extensively involved in advising a wide range of businesses, including software developers, music promoters, newspaper publishers, biotech companies, universities and NHS trusts.
Liam McMonagle, Partner
Expert in all aspects of IP law with more than 10 years’ experience, Liam advises public bodies, higher education institutions, technology companies and consumer-facing businesses on managing and exploiting intellectual assets. His practice has a particular focus on broadcasting, advertising and online publishing. Also qualified in England & Wales.
Tods Murray Solicitors LLP
t: 0131 656 2000
f: 0131 656 2020
Offices: Edinburgh, Glasgow
Susan McFadyen, Partner
Susan advises the public and private sectors on IP, including the Forestry Commission’s public-private partnership of its Forest Holidays business with trade mark registrations and IP licensing. Also advises on matters as diverse as setup and structure of spin-out companies, negotiating research agreements, copyright infringement, exploitation of IP, and patent licensing.
Claire McCracken, Senior Associate
Claire provides advice on all aspects of IP law, including the creation and protection of IP rights, and the licensing and exploitation of these rights. She also has extensive experience in information technology law and can provide advice on e-commerce, data protection and freedom of information matters.
Turcan Connell
t: 0131 228 8111
f: 0131 228 8118
Offices: Edinburgh, London, Guernsey
Lynn Richmond, Senior Solicitor
Lynn advises on all aspects of IP in addition to other matters. She is involved in litigation, mediation and arbitration; recently gained a Certificate in Advanced Litigation and Dispute Resolution (Nottingham Trent University), with distinction. Board member of Scottish Society for Computers and Law. Holds a Certificate in IP law.
Wright, Johnston & Mackenzie LLP
t: 0141 248 3434
f: 0141 221 1226
Offices: Glasgow, Edinburgh, Inverness
Angus MacLeod, Partner
Head of Technology, Media & IP services. Head of Franchising team (ranked number one in Scotland). Scottish IP/IT Lawyer of the Year 2008. DipITLaw. Advises on IP/IT issues, licensing and commercialisation across sectors, such as life sciences, renewables, creative industries, manufacturing, retail, food and drink. Member, Institute of Knowledge Transfer.
Martin O’Neill, Solicitor
LLM, IT Law. Leading individual in franchising (Chambers 2012). Clients from Scottish universities and public bodies, to global corporations. Recently advised software developers on exploiting IP internationally, and on sponsorship arrangements with major UK music festival. Co-author of Law Society of Scotland’s online CPD module on Data Protection in 2007.
IN-HOUSE
Bristows
t: 0207 400 8000
Offices: London (company operates worldwide)
Fiona Nicolson
Solicitor specialising in IP for more than 20 years. Head of IP at two leading Scottish law firms before joining Bristows (2009). Convener, Law Society of Scotland IP accreditation committee. Lectures widely on IP internationally. Past chair, Lex Mundi IP Practice Group; currently holds senior position in Licensing Executives Society International.
Standard Life Employee Services Ltd
t: 0131 245 7502
f: 0131 245 9790
Offices: Edinburgh, Glasgow, London
Graeme McWilliams
Graeme manages the group IP portfolio in the UK, manages the legal training programme and was involved in the 2011 rollout and protection of the repositioned brand. Member, Law Society of Scotland’s IP & Technology Committees and IP accreditation panel. Co-chairs the annual Society/Faculty of Advocates World IP Day event.
In this issue
- Data protection principles and family practice
- Data protection: another generation
- No guarantee of easy recovery
- Forced marriage: alive to the issue
- Mediation: business as usual?
- Electronic payments and electronic money
- Reading for pleasure
- Opinion column: Gillian Mawdsley
- Council profile
- Book reviews
- President's column
- Caution the souvenir hunters
- Together we thrive
- But you said...
- Heart in the Highlands
- Cut the lockup cost
- Who's who in intellectual property
- Taking liberties with bail
- Personal licences: a need for review?
- TUPE: fair or unfair for staff?
- 10%: a real gain?
- Renovating home PDRs
- Ademption and powers of attorney
- Working group to take forward ILG review
- Law reform roundup
- From the Brussels office
- Feedback, take 2
- Chinks in your defences?
- Business checklist
- Ask Ash
