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James St.Ville

 


Year of call: 1995

James St Ville was called to the Bar in 1995. At Gray's Inn, he was awarded the Bird & Bird Award for Intellectual Property, the Moot Society Prize and the Prince of Wales Award. At St. John's College Cambridge he was a Morton Scholar and awarded 1st Class Honours in Engineering, Sir Joseph Larmor's Plate, the St.John's College Prize and the University IEE Institution Prize.

He is recommended as a Leading Junior in Intellectual Property by Chambers UK and Information Technology by the Legal 500 and is a chartered engineer with substantial commercial experience of electronics, optical communications and engineering.

James appears in patent, registered design, design right, copyright, database right, confidential information, computer contract and IT disputes many of which deal with complex engineering, electronics and software and is an author of Russell-Clarke and Howe on Industrial Designs (9th Edition, 2016) with Martin Howe QC and Ashton Chantrielle. He is regularly instructed in trade mark, passing off, data protection and threats actions, including domain name and internet disputes and appears in the High Court, Patents Court, Technology and Construction Court, Court of Appeal, Intellectual Property Enterprise Court (IPEC), UK IPO, EU IPO (formerly OHIM) and General Court of the EU. He is regularly instructed to appear against leading counsel and with juniors.

He  has expertise in areas of practice such as search orders, Norwich Pharmacal orders, disk imaging orders, delivery up of source code, ex-parte injunctions to identify and deal with computer hackers and other interim injunctions which need to be kept confidential,  third party disclosure, UK Border Agency seizures and disputes over letters of request and the examination of witnesses for the purpose of foreign proceedings.

James represents clients at mediations, advises in relation to IP disputes in other common law jurisdictions such as Singapore and Jersey, and has sat as an examiner in response to overseas letters of request.

His reported cases include Spin Master v. PMS [2017] WLR (principles applied by High Court to achieve proportionate management of registered design cases), Marks & Spencer v. Asda Stores [2017] FSR 11 (principles on which court applies costs management controls in patent and unregistered design right cases), Positec v. Husqvarna [2016] Bus LR 714, [2016] FSR 29 (disclosure on obviousness in patent actions under new CPR 31.5), Procter and Gamble v. Star Global [2016] RPC 19 (community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed), VPG Systems v. Air-Weigh Europe [2016] FSR 4 (invalidity of patent for on-board vehicle weighing system), Alfa Laval v. Separator Spares [2013] 1 WLR 1110 (CA) (the leading case on the test for determining whether breach of confidence and copyright claims against former employees are ‘matters relating to individual contracts of employment’ under the Brussels I Regulation), Virgin v. Casey [2011] ETMR 35 (maintaining registration of “Carbon Virgin” for advertising services in the face of Virgin’s appeal), Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA) (patent action and appeal about high strength channels and bolts), M Systems v. Trek [2008] RPC 18 (validity and amendment of the patent for the USB memory stick), Meridian v. IP Enterprises [2008] Info TLR 139 (CA) (implied terms concerning ownership of copyright in source code), Nichia v. Argos [2007] Bus LR 1753 (CA) (principles upon which disclosure should be ordered in patent actions), BSW v. Balltec [2007] FSR 1 (successfully resisting pre-action disclosure regarding equipment used in the offshore oil and gas industry), Quads4kids v. Campbell [2006] Info TLR 338 (illegitimate complaints about products sold on eBay and threats of design right infringement proceedings), IDA v. University of Southampton [2006] RPC 21 (CA) (substantial patent entitlement dispute), Premier League v. Panini [2004] 1 WLR 1147 (CA) (copyright in football club crests), CDW's Trade Mark Application [2003] RPC 30 (trade mark www.standupifyouhatemanu.com contrary to public policy), Collag v. Merck [2003] FSR 263 (confidential information and patent entitlement dispute regarding agrochemical formulations), Rohm & Haas v. Collag [2002] FSR 28 (CA) (agrochemical process patent) and Safari Trade Mark [2002] RPC 23 (alleged non-use negative by use under bare licence).

 

Additional Information

Talks & Seminars

James regularly gives talks and seminars. Subjects he has addressed include ‘Watch this space – Actavis v. Lilly – the changing faces of patent construction’ for the Midlands Intellectual Property Society,  Construction of Patents for the Chartered Institute of Patent Agents, Software copyright & adwords for Berks, Bucks and Oxon Junior Lawyers Division, Practical tips for litigation for the Chartered Institute of Patent Agents in Nottingham, Defending your Trade Mark for the Wilkes Partnership, Data Protection after Durant at Lawrence Graham and again (by request) at Bristows, Recent Developments in Patent Law - Interpretation & Entitlement at Simmons & Simmons, The Proposed Community Patent Court for the Commercial Lawyer, Trade Secrets for Coudert Brothers, UK and European Intellectual Property Law for Coudert Brothers, Domain Name Dispute Resolution at Humphries Kirk for a group of solicitors & patent agents and The Law of Internet Security at  the Internet Special Interest Group.

Education & Professional Background 

St. John’s College, Cambridge (1986 - 1989) - 1st Class Honours in Electrical & Information Sciences & Engineering. Morton Scholarship. College Prize. Sir Joseph Larmor’s Plate. University IEE Prize. National Engineering Scholar.

GEC-Marconi Research Centre, Great Baddow (1990 - 1995) - Consultant in optoelectronics, 1993-95. Group Leader, Optical Communications Networks Team, 1992-93. Project Leader, Optical Techniques Group, 1991-92.

City University and the Inns of Court School of Law (1993 - 1995) - Bird & Bird Award for Intellectual Property. James McMahon Studentship. Prince of Wales Award. Moot Society Prize at Gray’s Inn.

Chambers of Mark Platts-Mills QC, 8 New Square, Lincoln’s Inn (1995 - Present) - IP Bar Association, Chancery Bar Association, The Intellectual Property Lawyers’ Organisation (TIPLO), Institution of Engineering and Technology (formerly IEE) and the Engineering Council. Called to the bar of the Eastern Caribbean Supreme Court.

Other Interests - Playing jazz flute, contemporary opera and fringe theatre.Gray’s Inn advocacy trainer. James is also on the board of the Clod Ensemble theatre company and was a governor of Thornhill School in Islington and the independent chair of the Steering Committee for the RIGHT healthcare modelling research collaboration of 7 universities.

  • What the Directories Say
  • "He is an absolute perfectionist with a real eye for detail, which is really useful for trade mark infringement cases." "He is extremely thorough and leaves no stone unturned. His preparation on every case is superb and detailed, and he has first-class drafting"
    Chambers & Partners (Intellectual Property) 2017

    "Especially noted for his skill in handling cases with dominant mathematical and technical elements" 
    Chambers & Partners (Information technology) 2017

    "He has excellent knowledge of technology and a keen eye for detail."
    Legal 500 (IT and Telecoms) 2017

    "His calm, forensic approach is absolutely invaluable"
    Legal 500 (IT and Telecoms) 2016

    "He has a keen eye for detail and is very thorough"  
    Chambers & Partners (Intellectual Property) 2016

    "A user-friendly and very experienced junior"
    Chambers & Partners (Information technology) 2016 

    "Excellent in advising on matters with an IP or contractual dimension"
    Legal 500 (IT and Telecoms) 2015

    "Displays incredible attention to detail, is very responsive, gives sound commercial advice and has excellent IT industry knowledge" 
    Chambers & Partners (Information technology) 2015

    "He leaves no stone unturned- he offers superb detailed preparation on every case and first-class editing"
     Chambers & Partners (Intellectual Property) 2015

    "Expertise in IT disputes involving engineering, electronics and software"
    Legal 500 (IT and Telecoms) 2014

    "Technically strong," he is "hard-working and on top of the detail"
    Chambers & Partners (Intellectual Property) 2014

    "He is very good on the technical side"
    Chambers & Partners (Information Technology) 2014