8 NEW SQUARE

020 7405 4321

Fiona Clark

 


Year of call: 1982

Fiona’s practice covers all aspects of intellectual property law including related contractual and EC matters, breach of confidence and trade libel. However, she has a particular interest in copyright, designs (both registered and unregistered) and trade marks and has extensive experience of product branding and in media and entertainment law. She has also advised in connection with a number of comparative advertising disputes involving high street and internet retailers. Fiona's practice commonly involves cases with significant technical content, particularly in the fields of manufacturing, mechanical and construction engineering, computer software, architectural designs, jewellery and textiles.

In addition to appearing in the High Court and the Patents County Court, Fiona also appears regularly in hearings before the Intellectual Property Office and on appeal to the Appointed Person. She also regularly advises in connection with proceedings pending before OHIM and the OHIM Boards of Appeal, has appeared on appeals to the General Court and the Court of Justice of the European Union and has represented clients in numerous IP and related mediations.

Fiona is also the Editor of the Fleet Street Reports and the Reports of Patents, Trade Marks and Design Cases (from 2012) and is a contributor to a number of leading practitioner textbooks (including her roles as co-author of the current edition of Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs and Senior Editor of The Encyclopaedia of UK and European Patent Law) and was invited to take part in various patent and trade mark workshops and seminars as part of the IPR2 co-operation between the European Patent Office and China in 2009 and 2010.

Patents

Fiona has been the Senior Editor of the Encyclopedia of UK and European Patent Law since 2000 and has experience of patent litigation in various fields. For the most part her patent practice has focussed on mechanical devices and manufacturing processes and her clients have often, although not exclusively, been SMEs. Most such actions have settled short of trial and accordingly, few are the subject of reported decisions. Fiona has also been brought in as a senior junior in patent actions in other areas where there have been new or complicated points of law and/or significant factual issues likely to require cross-examination. Fiona enjoys working as part of a team.

Reported cases include:

Virgin Atlantic Airways Ltd v. Jet Airways (India) Ltd [2014] R.P.C. 18 and [2013] R.P.C. 10

Appeared for the Comptroller in infringement action and on an appeal from a decision of the Patent Office under Rule 50. The Rule 50 appeal and the defendants’ counterclaim for invalidity raised issues as to whether the EPO and/or the Comptroller had acted ultra vires, it being contended that the UK designation of the patent in suit was a nullity, and as to the scope of the issues which could properly be raised on an application to the Patent Office under Rule 50. In the subsequent appeal to the Court of Appeal, where the issues arising extended to whether the existing system for challenging administrative decision in such cases complied with the right to a fair trial and whether the relevant jurisdictional threshold had been established in this case in any event.

Davies v. Helix Limited [2007] EWHC 3131

Application for interim injunctive relief. The patent was for a device for use as the making of envelopes and a method of folding paper to make envelopes using that device. The Defendant sold a multi-tool craft system which included an allegedly infringing device. The television launch of the Defendant’s craft system was imminent. Application successfully resisted and directions given for expedited trial.

Knight v. Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs [2007] EWHC 2264.

Appearing for the Comptroller in proceedings for the judicial review of the decision of the Office to refuse to accord a filing date to a PCT application on grounds that it did not comply with Article 11 of the PCT on grounds that there were no claims.The Claimant asserted that the abstract and/or a part of the description which included a numbered list should be treated as its claims for this purpose. There was extensive argument as to the role of the Office in receipt of a patent application and the nature and extent of any obligation imposed upon it under the Patent Cooperation Treaty. Decision of the Patent Office upheld.

Department for Education and Skills v. Frontline Technology Limited [2004] EWHC 1487

Action for the revocation of a patent relating to a wifi schools attendance registration system involving issues relating to identity of the person or persons skilled in the art and the nature and relevance of alleged prior use by the patentee. Patent held partially valid. Subsequent application to amend after trial failed at first instance. Appeal proceedings settled shortly before hearing. Revised form of amendment subsequently granted.

Penife International v. Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs [2004] RPC 37

Appearing for the Comprtoller in proceedings for the judicial review of the decision of the Patent Office to refuse to accord a filing date to a PCT application on grounds that it did not comply with Article 11 of the PCT on grounds that there were no claims. The “consistory clause” was asserted by the applicant to be adequate for this purpose. Decision of the Patent Office upheld.


Other noteable cases:

Coin Controls v Suzo [1997] FSR 660

Preliminary issue in an action relation to coin dispensing mechanisms. The Defendants applied to strike out part of the claim on grounds of jurisdiction, claims having been included in respect of acts committed out of the jurisdiction by group companies incorporated abroad. Application successful.

McDonald v Graham [1994] RPC 407 (CA)

Interim relief, including freezing orders, in a patent action before the Patents County Court involving issues of the jurisdiction of the Patents County Court and the grant of freezing orders generally, particularly whether a maximum amount should be frozen and the relevance of the subsequent bankruptcy of the Defendant.
 

  • What the Directories Say
  • "Very knowledegable"
    Legal 500 (Intellectual property) 2015

    "Insightful, dedicated and responsive"
    Legal 500 (Intellectual property) 2014