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Charlotte May QC

 


Year of call: 1995
Year of silk: 2014

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Charlotte May QC has a broad practice across all areas of intellectual property, but with particular focus on patents, copyrights, trade marks and passing off. She has a niche practice in SPCs, with a wealth of experience in this area that is second to none. She also has a strong reputation for media and entertainment work, with a loyal client base.

Charlotte is a talented advocate who is “always up for the fight, but also sensible in her approach”. She is commended by the legal directories for her “sharp eye for detail” and “exceptional client skills”. Charlotte is known to work particularly well leading a team and for devising litigation strategies commensurate with clients’ commercial objectives.

Charlotte appears regularly before the High Court and Court of Appeal; and she continues to represent clients before the Trade Marks Registry and Patent Office in difficult cases. She also has significant experience of references to the CJEU, where she has represented commercial clients and the UK Government on numerous occasions.

Charlotte is a contributor to Laddie Prescott and Vitoria on the Modern Law of Copyright and Designs.

Patents

Charlotte read Biochemistry at Oxford and has experience of a number of biotech and chemical patent cases. Recent examples include Amgen v Sanofi & Regeneron (anti-PCSK9 antibodies for lowering cholesterol); Celltrion v Biogen (three patents covering dosage regimes for the monoclonal antibody rituximab, two for the treatment of chronic lymphocytic leukemia and one for rheumatoid arthritis); Accord v medac (formulation of methotrexate for the treatment of arthritis); Warner-Lambert v Actavis (use of pregabalin for treating pain; second medical use claims); Smith & Nephew v Convatec (silverised wound dressings).

However, she also acts in cases involving other areas of technology, including electronics and mobile phones. She is currently acting for Phillips in ongoing litigation concerning LED technology, and she represented Samsung and Google in the recent Unwired Planet litigation.

Charlotte has a particularly strong practice in SPCs, a burgeoning and important area of patent law. Her impressive repertoire of SPC cases include Actavis v Sanofi (CJEU); Eli Lilly v HGS (CJEU); AstraZeneca v Comptroller (CJEU); GSK v Comptroller (CJEU); Tulane (CA); Neurim (CA, CJEU); Generics v Synaptech (CA, CJEU); Novartis v Actavis (CJEU); Merck; and DuPont (CA). She has particular experience in leading the strategy of multi-jurisdictional SPC litigation and is the silk of choice for any SPC related case.

Example recent cases

Teva & Ors v Merck Sharp Dohme [2017] EWHC 539 (Pat);  SPC invalidity action of combination product; whether product protected by basic patent under Art 3(a) and/or had already been the subject of an SPC contrary to Art 3(c)

Celltrion v Biogen [2016] EWHC 188 (Pat); practice of listing patent trials within 12 months of start of action

Accord v medac [2016] EWHC 24 (Pat); formulation of methotrexate for treatment of inflammatory diseases; obviousness; insufficiency

Unwired planet v Huawei & Samsung [2015] EWHC 3837 (Ch); mobile phones; standard essentiality; validity; infringement

Warner-Lambert Co LLC v Actavis Group PTC EHF [2015] EWHC 2548 (Pat); use of pregabalin for the treatment of pain; second medical use claims

Smith & Nephew Plc v Convatec Technologies Inc
[2015] EWCA Civ 803); [2015] EWCA Civ 607 (June 2015); silverised wound dressings; infringement

Icahn School of Medicine of Mount Sinai O/552/14
; SPC application; whether requirements of Art 3 satisfied; ex parte hearing at the IPO

Trade Marks and Passing Off

Charlotte has a wealth of experience in cases involving allegations of trade mark infringement and passing off. Of recent note, Charlotte successfully represented the claimant in Thomas Pink v Victoria Secret, leading to the defendant changing the name of its stores across the UK from PINK to Victoria Secret Pink. She also appeared in Cartier v Sky, representing all of the ISPs against an application for an order that they should block internet access to various websites offering counterfeit goods for sale.

Example recent cases

Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors
[2014] EWHC 3354 (Ch); [2016] EWCA Civ 658

Thomas Pink Ltd v Victoria's Secret UK Ltd
[2014] EWHC 2631 (Ch)

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd
(Rev 1) [2014] EWCA Civ 1294 (Oct 2014)

REVOLVO trade mark application O/142/14
(April 2014); O/061/15 (Jan 2015); O/263/15 (June 2015)

Copyright, Media and Entertainment

Charlotte is one of the leading silks in copyrights and related rights cases. She has a loyal base of media clients, having previously represented the likes of Discovery, Endemol and the BBC on a number of occasions. Most recently she has appeared for the Government in the ongoing TVCatchUP litigation (streaming terrestrial TV channels over the internet without permission) and is representing Abot Hameiri in a high-profile format dispute against Banijay. She has previously been involved in a number of high profile cases, including FAPL v QC Leisure, establishing copyright infringement in respect of use of foreign decoder cards by publicans screening Premier League matches from foreign broadcasters. She has particular experience in fair dealing, where she advices regularly and has appeared in ProSieben v Carlton TV, one of the leading authorities, and Fraser-Woodward v BBC.

Example recent cases

ITV Broadcasting Ltd v TV CatchUp Ltd and Secretary of State for Business, Innovation and Skills [2015] EWCA Civ 204 (March 2015)

Additional Information

Education and Awards
1989-93: Brasenose College, Oxford, BA (Hons) Biochemistry (2:1). Scholar.

1993-94: City University, London: Diploma in Law (with Commendation).
Inner Temple Award for 1993- 95.

1994-95: Inns of Court School of Law - Everard ver Hayden Foundation Third Prize for performance in Advocacy formal assessments. Very Competent.

1995: Called to the Bar by the Inner Temple

Publications
Modern Law of Copyright and Designs (Butterworths) Contributor to Fourth Edition.

Seminars
Recent Seminars and talks:

SPC Workshop, Max Planck Institute, Munich, March 2017

JIPLP Conference on the Present and Future of UK and EU Copyright, January 2017

Is IP Too Complicated? – TIPLO Dinner, Oct 2016

Seminar on Fair Dealing, Herbert Smith, June 2016

Leadership in the IP Profession, MIP Webinar, March 2016
 

Other
Member of Bar Council Committee on Wellbeing
Member of Chancery Bar Association Committee on Wellbeing
Co-opted Member of ITMA Designs and Copyright Committee
Equality and Diversity Officer
Standing Counsel to the Comptroller of Patents and Trademarks December 2008 – April 2014
 

Recent Activity

» (1) Sandoz Ltd (2) Hexal AG v (1) G.D. Searle LLC (2) Janssen Sciences Ireland UC [2017] EWHC 987 (Pat)
» Teva UK Ltd v Merck Sharp & Dohme Corp [2017] EWHC 539 (Pat)
» Cartier International AG and Ors v British Sky Broadcasting and Ors
» Accord v Medac [2016] EWHC 24 (Pat)
» Unwired Planet v Huawei and Samsung [2015] EWHC 3366 (Pat)
» Warner-Lambert Company LLC v Actavis Group PTC EFH [2015] EWHC
» Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 (24 June 2015)
» ITV v TVCatchup [2015] EWCA Civ 204
» Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)
» Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd (Rev 1) [2014] EWCA Civ 1294

What the Directories Say

"She has amazing experience for someone of her call and a good rapport with judges. She is a good advocate with a nice way of presenting things." "She is very thorough and very strong technically. She has an excellent manner with clients"
Chambers & Partners (Intellectual Property) 2017

"We rate her very highly and would be quick to turn to her for assistance with advertising and media disputes"
Chambers & Partners (Media & Entertainmenty) 2017

"Bright, interested and an advocate who gets the court's ear"
Legal 500  (Intellectual Property)  2016

"Her expertise in the patents field is equalled by her depth of knowledge and experience of trade mark work. Her attention to detail and authoritative advocacy really impress."
Chambers & Partners (Intellectual Property) 2016

"Straight-talking, commercial and appreciative of client needs."
Legal 500  (Intellectual Property)  2015

"Exceptionally capable, she's always charming, but never gives an inch" "A doughty opponent"
Chambers & Partners (Intellectual Property) 2015

"She's very careful and very methodical, and she has a fantastic way with clients. She has the ability to command the client's respect and at the same time help them undertsand what the best option is for them"
Chambers & Partners (Media & Entertainment) 2015

 

 

 

 

  • What the Directories Say
  • "She has amazing experience for someone of her call and a good rapport with judges. She is a good advocate with a nice way of presenting things." "She is very thorough and very strong technically. She has an excellent manner with clients"
    Chambers & Partners (Intellectual Property) 2017

    "We rate her very highly and would be quick to turn to her for assistance with advertising and media disputes"
    Chambers & Partners (Media & Entertainmenty) 2017

    "Bright, interested and an advocate who gets the court's ear"
    Legal 500  (Intellectual Property)  2016

    "Her expertise in the patents field is equalled by her depth of knowledge and experience of trade mark work. Her attention to detail and authoritative advocacy really impress."
    Chambers & Partners (Intellectual Property) 2016

    "Straight-talking, commercial and appreciative of client needs."
    Legal 500  (Intellectual Property)  2015

    "Exceptionally capable, she's always charming, but never gives an inch" "A doughty opponent"
    Chambers & Partners (Intellectual Property) 2015

    "She's very careful and very methodical, and she has a fantastic way with clients. She has the ability to command the client's respect and at the same time help them undertsand what the best option is for them"
    Chambers & Partners (Media & Entertainment) 2015