Intellectual Property

Carson McDowell’s intellectual property team provides both contentious and non-contentious advice to clients on all aspects of intellectual property protection and exploitation. As such it has substantial expertise dealing with the intellectual property issues arising not only in a transactional and advisory context, but also in the litigation of matters relating to protection and infringement of intellectual property.

Our team's advice covers a comprehensive spectrum of intellectual property rights, both registered and unregistered, including: copyright, design rights, trademarks, patents, knowhow and commercially sensitive information.

Specialist areas of expertise include the licensing of intellectual property, along with the prosecution and defence of patent infringement proceedings. The team's long standing relationship with the local universities also means it has considerable expertise across a number of technology sectors.

What we do

  • Advising on organisational policies and procedures for the management of intellectual property
  • Undertaking intellectual property audits
  • Conducting intellectual property due diligence in corporate transactions
  • Assisting with the registration of trademarks
  • Providing trademark portfolio management services
  • Instigating and assisting with trademark invalidation and revocation proceedings
  • Advising on the transfer of ownership of intellectual property of all kinds
  • Advice on the licensing of intellectual property both to and from third parties and intra group arrangements
  • Advice on appropriate forms of licensing arrangement in the context of spin out companies
  • Advice on the non tax aspects of the Patent Box
  • Advising on merchandising, advertising, and the grant of sponsorship rights particularly as regards sporting events
  • Advice on the management of business information and commercially sensitive information protection
  • Advice on the intellectual property issues arising in the context of APP development
  • Instigating and defending High court proceedings for the protection of intellectual property of all kinds
  • Advising as to strategies for protecting intellectual property from infringement without recourse to legal proceedings and particularly conducting negotiations between parties involved in the intellectual property disputes including drafting undertakings that will form the basis of any settlement
  • Advising on appropriate means of protecting unregistered intellectual property rights from infringement – passing off actions
  • Generally advising on copyright, patents, knowhow, trademarks and design rights

What Others Say About Us

Chambers and Partners UK 2020

What the team is known for

Widely acknowledged for strength in handling a wide variety of contentious and commercial IP matters, including licensing agreements and infringement litigation. Highly active within Northern Ireland's thriving research and development sector. Noted for advice on the tax-efficient structuring of IP assets, particularly with regard to the patent box scheme.

Strengths

A client reports: "From initial consultation through to finalised positions on each case, we found them to be professional, mindful of cost to the client and focused on getting us the best result possible."

A market commentator says: "They're a multidisciplinary team who can sit down and resolve a dispute amicably."

Work highlights

Assisted SISAF, a silicon nanotechnology drug delivery company, with a number of IP matters, including patent know-how, collaboration and licence agreements with external parties.

Notable practitioners

Dawn McKnight represents the university sector and spin-outs as well as manufacturers and software houses on the full span of technology transfer and commercial licensing matters. She also conducts IP audits and due diligence in the preparation of corporate transactions.

Declan Magee leads the team's IP contentious offering and offers particular experience with regard to patent infringement in the electronics market. He also litigates trade mark and design disputes. Sources describe him as "diligent and commercial."

Peter Guzhar is building a strong reputation for his contentious intellectual property practice, which takes in copyright, design and trade mark disputes. A client describes him as "knowledgeable and good at explaining the law in practical, layman's terms."

The Legal 500 2020

What the team is known for

Carson McDowell advises on the full range of IP rights, including copyright, patents, trade marks, know-how and commercially sensitive information. In addition, the firm handles IP litigation, particularly patent and copyright infringement proceedings. The team has been highly active advising foreign clients with R&D facilities in Northern Ireland, and has growing expertise in software licensing, ICT managed services and technology transfer issues.

Notable practitioners

Declan Magee and Dawn McKnight head the contentious and non-contentious sides of the practice, respectively, and Peter Guzhar is highly recommended for IP litigation, particularly patent infringement.

Work highlights

Providing a general IP support service for Innovation Ulster (a wholly owned subsidiary of University of Ulster for IP and technology transfer-related activities).

Providing ongoing advice to Sisaf on IP matters such as a patent and know-how licence agreement entered into with Soterios Limited regarding the development of alopecia treatment drugs using Sisaf’s IP rights.

Advising the University of Ulster on a range of IP matters, including a consortium agreement with various other further education institutions to govern the use of funds as part of a research grant. This involved ensuring the client's background IP was fully protected and that it would fully own all foreground IP which it developed.

Acting for Cosyroof Ireland in a trade mark infringement case which involved a competitor using the client's trade mark in its domain name.

Advising Denman International on taking a full assignment of the IP of "Weaveaze", a product which it had had a licence to manufacture and sell for a number of years.

Significant clients

University of Ulster, Eakin Healthcare Group, Denman International, Vuelos Baratos, StatSport, Ansec IA, Council for the Curriculum, Examinations and Assessment, Denroy, Sisaf, Blue Clarity Consultancy.

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