8 NEW SQUARE

020 7405 4321

Martin Howe QC

 


Year of call: 1978
Year of silk: 1996

Martin Howe’s practice encompasses intellectual property and extends into wider fields of EU law and commercial and public law. He acted for the Secretary of State in the High Court and Court of Appeal in the tobacco standardised packaging case (R (BAT) v Sec of State for Health [2016] EWCA Civ 335), a judicial review case involving issues of intellectual property law, fundamental rights, free movement of goods under EU law, and the interpretation of TRIPS.

He is very experienced in higher courts. He appeared in the Hong Kong Court of Final Appeal in Tsit Wing v TWG Tea, the first trade mark case to reach that court, and in the UK Supreme Court in RFU v Viagogo, which dealt with the balance between the protection of personal data under the EU Charter of Fundamental Rights and the courts' powers to order disclosure of the identities of individuals alleged to have used a website to advertise tickets in breach of the terms and conditions of the ticket issuer.

He has conducted numerous cases in the CJEU, both IP related and relating to wider aspects of EU free movement and regulatory law. These include the first ever case about the so called 'Specific Mechanism' on parallel imports of pharmaceuticals from the EU Accession States (Merck v Sigma), the industry changing group of cases on trans border satellite broadcasting (FAPL v QC Leisure/Karen Murphy), the leading case on whether copyright prevents replication of computer program functionality and computer languages (SAS v WPL), on internet streaming of TV broadcasts (ITV v TVCatchup) on which the CJEU gave judgment on the second reference in March 2017, and the first ever case in the ECJ on circumvention of copy protection (Nintendo v PC Box). He conducts cases in the ECJ on references from the courts of other Member States (as in Nintendo v PC Box, from the Milan court) as well as from the UK.
He appears frequently in the Court of Appeal, as in Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335 where he upheld a summary judgment by the defendants invalidating Glaxo’s EU Trade Mark based on a representation of its two-tone purple Seretide inhaler, on the ground that the nature of the registered mark was insufficiently clear from its representation to satisfy Article 4 of the EUTM; and in Robyn Rihanna Fenty v Arcadia Group (t/a Topshop) [2015] EWCA Civ 3, where he acted on behalf of the singer Rihanna in establishing a claim of passing off against Topshop for selling T shirts bearing an image of Rihanna.

He has a particular expertise in heavy technological cases, such as the internet, computers and IT, broadcasting and telecommunications technology, and biotech and pharmaceuticals: for details of his cases in these fields, see sections on Patents and on Copyright. 

His wide-ranging EU law practice focusses on free movement of goods and services and EU regulatory law. This has taken him to courts and tribunals outside the usual experience of IP practitioners, such as the Court of Appeal (Criminal Division), the Crown Court and the Admin Court on appeal - see section on EU Law.

He is the lead author of Russell Clarke and Howe on Industrial Designs (now in 9th Ed), and edited Halbury's Laws Title on Trade Marks. He is an Appointed Person to hear designs appeals from the UK IPO under the new appeal system of the Intellectual Property Act 2014.
 

Patents

Martin has a patent practice of enormous range and depth. He has conducted numerous patent cases in the higher courts, including Biogen v Medeva (see below), the first recombinant DNA case to reach the House of Lords. He has done patent/SPC cases in the CJEU, and many cases in the Court of Appeal and before EPO Technical Boards of Appeal at Munich. He relishes heavy technical cases, and has particular expertise in the fields of biotech/recombinant DNA, medical devices, pharmaceuticals and electronics and IT, including telecommunications, mobile phones and the technology of broadcasting.

In addition to appearing frequently as counsel in patent cases, Martin has appeared in court as an expert witness on patent law (Sanofi-Aventis in the High Court of Malaya, see below) and often gives lectures and talks on different aspects of patent law and practice.

Some highlights of Martin’s patent practice:-

Case C-539/23 Merck Canada Inc v Sigma Pharmaceuticals Plc [2015] RPC 30: importation of pharmaceutical parallel imports subject to a Supplementary Protection Certificate in the UK and the operation of the Specific Mechanism in the Act of Accession of the newer Member States. Martin persuaded the Court of Appeal to make a reference in this case (CA judgment reported at [2013] 3 CMLR 17; [2013] RPC 35), and succeeded in obtaining a ruling from the CJEU that if a patentee fails to respond to a Specific Mechanism notice given by a parallel importer then the parallel importation will not infringe the SPC for so long as the patentee does not indicate its intention to invoke the Specific Mechanism against the importation.

Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2013] EWCA Civ 919; [2014] RPC 6. Patent for a particular crystal form (polymorph) of a yellow pigment. After expiry of Clariant’s earlier patent which covered the pigment as such, Sudarshan began importing the pigment made according to the teachings of Clariant’s expired patent, but Clariant alleged that Sudarshan's product infringed its crystal form patent, and wrote a letter threatening to sue Sudarshan and its customers for infringement. In the Court of Appeal, Martin upheld the first instance decision that the patent was invalid, and that the threat made to Sudarshan to sue its customers was an actionable threat.

Smith & Nephew Plc v Convatec Technologies Inc [2013] EWHC (Pat). Patent action concerning antimicrobial wound dressings, where the court granted limited pre-action disclosure in relation to other patents of information disclosed confidentially for the purpose of determining whether there was infringement of the patent in suit in the main action.

Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4. Martin acted for the defendant in successfully resisting an application to revoke a patent relating to a process for moulding plastic articles with a sandwich type construction of solid plastic outer surfaces and a foamable plastic core, and resisted an “added matter” attack on a validating amendment to the claims.

Case C-427/09 Generics (UK) Ltd v Synaptech Inc [2012] 1 CMLR 4; [2012] RPC 4. Supplementary protection certificate for galantamine for its second medical use for the treatment of Alzheimer’s. Galantamine had been placed on the market in certain Member States before the Medicinal Products Directive 65/65/EEC had become effective, and the Court ruled that this precluded a grant on an SPC relating to it.

MMI Research Ltd v Cellxion Ltd [2012] EWCA Civ 7. Patent for method of intercepting mobile telephone calls and identifying mobile phones on GSM and other digital cellular networks.

Sanofi Aventis (Malaysia) Sdn Bhd v Fresenius Kabi (Malaysia) Sdn Bhd (High Court of Malaya, 2011) Martin gave evidence as an expert witness on patent law in this pharmaceutical patent case heard in Kuala Lumpur.

Occlutech GmbH v AGA Medical Corp [2010] EWCA Civ 702. A medical device case about implantable occlusion devices for atrial septal defects. The Court of Appeal ruled on the purposive construction of the claims in comparison with the approach of the German courts to the German designation of the European Patent in suit.

Sec of State for Education and Skills v Frontline Technology Ltd [2005] EWHC 37. The Department of Education sought to revoke a patent for a system of radio networking which allowed attendance registration in schools from handheld tablet devices. The patent was upheld in part.

Cintec International Ltd v Parkes (t/a Dell Explosives) [2003] EWHC 2328 (Ch). A patent relating to dampening the effects of bomb blasts using water filled semi-rigid “inflatable” devices. Issues concerning jurisdiction between Scotland and England arose, as well as the impact of Brussels Convention rules.

Appeal by Professor D Fray (Cambridge University Technology Appeal Tribunal, 22 June 2007) Adjudication on intellectual property rights between university and staff Management of patent rights Process for electro deoxidation of titanium and other metals. Cambrige University's Technology Appeal Tribunal was established to adjudicate upon disputes regarding the exploitation of intellectual property rights in inventions made by the university's academic staff. In this first decision by the Tribunal, it laid down general guidelines on the conduct of appeals and on the duties of staff members and Cambridge Enterprise towards each other.

Joined Cases C-267 & 268/95 Merck v Primecrown Ltd [1996] I-ECR 6285; [1997] 1 CMLR 83; [1997] FSR 237: the leading case in the ECJ on the parallel importation of patented products between Member States.

Celltech Therapeutics, opponent Eli Lilly Case T400/97 EPO Technical Board of Appeals, 26 May 2000. Patent for recombinant DNA technology hybrid (human/non human) antibodies. The validity of the patent was challenged on the grounds of prior public disclosure at a lecture and insufficiency. The Board rejected the attacks based on prior public disclosure but greatly restricted the claims on the insufficiency grounds.

Pertussis antigen/Evans Medical Ltd Case T780/95, European Patent Office Technical Board of Appeals, 11 March 1998. Patent for Recombinant DNA technology Pertussis (whooping cough) antigens. A biotechnology case concerning the validity of a patent for an antigen of the pertussis bacterium used in whooping cough vaccine. The Board held the patent to be insufficient. Also appeared in the trial on the same patent in the English Patents Court: Evans Medical Ltd's Patent [1998] RPC 517.

Biogen Inc v Medeva PLC [1997] RPC 1. House of Lords. Patent for recombinant DNA technology the expression of Hepatitis B virus surface antigen for use in vaccines. The patent was held valid at first instance, but held invalid in the Court of Appeal and the House of Lords. The case established the principles applicable to the patentability of inventions in the genetic engineering field. (Proceedings in the lower courts reported at [1995] RPC 25).

Pioneer Electronics v Warner Music Mfg [1997] RPC 757, Court of Appeal. Patent infringement by importing product of process CDs made from mould not 'direct products' of process for making mould. The defendants imported and sold compact discs which were alleged to be the direct products of a patented process, so infringing contrary to section 60(1)(c) of the Patents Act 1977. The last step of the process set out in the claim was the production of a stamper for moulding the CDs. The CDs were in turn made by using the stamper. The Court held that the CDs could not be considered to be a "direct" product of the process within section 60(1)(c). Also at first instance at [1995] RPC 487.

Xylum Corporation v Gorog July 1997, Laddie J. Exclusive licence under patent Thrombosis diagnostic equipment Scope of improvements clause New patent taken out by relative of inventor. A case concerning apparatus for measuring the susceptibility of human blood to thrombosis. The defendant inventors had entered into an exclusive licence agreement with the plaintiff licensees. The agreement gave the plaintiff licensees certain rights in respect of improvements to the original invention. The court held that an apparatus patented in the name of the inventors' daughter amounted to an improvement to the original invention falling within the scope of the agreement.

Hepatitis B virus/Biogen Inc Case T886/91, European Patent Office Technical Board of Appeals, 16 June 1994. Parallel proceedings to those in the House of Lords concerning the same patent: see above.

Genentech's Patent [1989] RPC 147, Court of Appeal. Patent for recombinant DNA technology. Validity of a patent for the production of human tissue plasminogen activator by recombinant DNA technology. The patent was held invalid on the grounds of obviousness and because the claims were too broad. Judgment of the Patents Court at [1987] RPC 553.
 

  • What the Directories Say
  • "He always does a good job and is very effective in court. He is highly persuasive and always clear and rational" "he is really user-friendly and judges respect him. He is a bright, enthusiastic and committed barrister"
    Chambers & Partners (Intellectual Property) 2017

    "As well as being a leader in the field generally, he has a detailed technical grasp of computing and digital technology"
    Chambers & Partners (Information Technology) 2017

    "He has in-depth knowledge of copyright in broadcasts, EU copyright law and great commercial understanding of the client's objectives. He provides clear strategic advice"
    Chambers & Partners (Media and Entertainment) 2017

    "A specialist in the IP field with particular expertise in EU law."
    Legal 500 (Intellectual Property) 2017

    "A very good advocate"
    Legal 500 (IT and Telecoms) 2017

    "Recommended for IP work with EU elements"
    Legal 500 (Intellectual Property) 2016

    "Experienced in technical IT disputes"
    Legal 500 (IT and Telecoms) 2016

    "Highly regarded for media disputes with an EU element"
    Legal 500 (Media and entertainment) 2016

    "He has an excellent reputation as one of the senior silks in this area"
    Chambers & Partners (Media and Entertainment) 2016

    "He's a very safe pair of hands who's good on complex scientific cases"
    Chambers & Partners (Information Technology) 2016

    "Has market-leading knowledge on broadcast copyright and is a first port of call for this type of work" "He has great commercial understanding of the client's objectives and provides clear, strategic advice"
    Chambers & Partners (Intellectual Property) 2016

    "An experienced silk on big technical issues"
    Legal 500 (IT and Telecoms) 2015

    "He is very bright and industry-aware"
    Legal 500 (Media and entertainment) 2015

    "A team player who is thoughtful, cerebral and respected by the judiciary"
    Legal 500 (Intellectual Property) 2015

    "A precise, detail-oriented authority on EU law, with a software programming background he uses to outstanding effect in tech-based IP cases"
    Chambers & Partners (Information Technology) 2015

    " A cerebral lawyer, who is also accessible and a pleasant person to have on the team"
    Chambers & Partners (Media & Entertainment) 2015