8 NEW SQUARE

020 7405 4321

The Rt.Hon. Professor Sir Robin Jacob

 


Position: Arbitrator and Mediatior

VIEW PDF VERSION

Hugh Laddie Professor of Intellectual Property Law
and Director of the Institute of Brand and Innovation Law,
University College London

Arbitrator, mediator, expert witness and advisor

Having read Natural Sciences at Trinity College Cambridge, Sir Robin then simultaneously read for the Bar and took an LLB from the LSE. He was called to the Bar by Grays Inn in 1965.

He practiced at the Intellectual Property Bar from 1967. From 1976 to 1981 he was the Junior Counsel for the Comptroller of Patents and for Government departments in intellectual property. He was appointed Queen's Counsel in 1981. His practice took him abroad often (Hong Kong, Singapore, Europe, USA, Australia). He was appointed to the Bench in 1993.. From 1997 to 2001 he was Supervising Chancery Judge for Birmingham, Bristol and Cardiff. He was appointed a Lord Justice of Appeal in October 2003. In the Court of Appeal he regularly sat on both IP and commercial cases. He formally retired from the Court of Appeal in May 2011 to take up his current appointment. He continued to sit from time to time in Court of Appeal until April 2016. He acts as an arbitrator, mediator and expert witness both in IP and commercial cases. He is a member of the following arbitral bodies LCIA, the ICC, SIAC, KLRC and HKIAC.

He is Hon. Fellow of the LSE, an Hon. Fellow of St Peter’s College, Oxford, an Hon. LlD of the University of Wolverhampton, Governor of the LSE, Hon. President of the UK branch of the Licensing Executive Society, Hon. President of the Association of Law Teachers, a member of the Advisory Board of the European Law Centre of King’s College London and Chairman of the Advisory Panel on the appointment and training of judges of the Unified Patent Court. He was a Governor of the Expert Witness Institute from its foundation until 2004 and is now a Governor again. He was Treasurer of Grays Inn in 2007. He was awarded the Outstanding Achievement in IP award by MIP in 2012. He was a member of the Scientific and Advisory Board of the European Patent Office during its existence. He has written extensively on all forms of intellectual property. He often lectures, mainly on IP topics, both in the UK and abroad and is regularly consulted on IP matters by the European Commission and the UK government. He is President of the Intellectual Property Judges’ Association (the association of European IP, particularly patent, judges). He is Chairman of the Advisory Panel on the Selection and Training of Judges for the forthcoming Unitary Patent Court.
 

Legal Career

Academic Studies and early legal career (1960 - 1967)

Sir Robin read Natural Sciences (physics) at Trinity College Cambridge (1960 to 1963) and then law at the London School of Economics (1963 to 1967). He was called to the Bar in 1965. At the Bar, as a barrister and trial advocate, he practiced mainly, but not exclusively, in all types of intellectual property law.

Legal career as a barrister (1965 - 1993)

From 1976 to 1981 he was the Junior Counsel for the Comptroller of Patents and for UK Government departments in intellectual property. He was appointed Queen's Counsel (“QC”) in 1981. His practice often took him abroad and he practiced as an advocate or legal adviser in Hong Kong, Singapore, the USA, Australia and in several European countries, as well as before the European Patent Office.

Sir Robin was a member of the leading intellectual property set, 8 New Square, from 1965 - 1993 until his appointment as a High Court Judge.

Career as a High Court Judge and Court of Appeal Judge (1993 - 2011)

When Sir Robin was appointed as a High Court Judge in 1993 he became one of only a small number of specialist designated Patents Court Judges.

In October 2003, he was appointed a Lord Justice of Appeal of the Court of Appeal, the second most senior court in the UK legal system. During his time as a Judge, Sir Robin wrote many leading judgments in intellectual property law cases and is regarded as one of the UK’s, and Europe’s, leading intellectual property judges of recent times.

Sir Robin formally retired from the Court of Appeal in May 2011, however he continues to sit in the Court of Appeal from time to time where his intellectual property expertise is required in particularly important intellectual property cases.

Sir Robin also acts as an arbitrator and mediator and as an expert witness on English or European law.

Sir Robin has written and lectured extensively around the world on all forms of intellectual property law and is regularly consulted on IP matters by the European Commission and the UK government. He is a co-editor of the Encyclopedia of UK and European Patent Law and advisory editor of Kerly’s Law of Trade Marks and Trade Names. A non-exclusive list of Sir Robin’s publications is set out below.

Academic Career

Sir Robin retired from the Court of Appeal to take up the Sir Hugh Laddie Chair of Intellectual Property Law at University College London.

Sir Robin currently holds the following academic and professional positions:

  • Sir Hugh Laddie Chair of Intellectual Property Law at University College London;
  • Director of the Institute of Brand and Innovation law (IBIL) at University College London;
  • Member of the Scientific and Advisory Board of the European Patent Office.
  • Hon. Fellow of the London School of Economics;
  • Governor of the London School of Economics;
  • Hon. Fellow of St Peter’s College, Oxford University;
  • Hon. LLD of the University of Wolverhampton;
  • President of the Intellectual Property Institute;
  • Hon. President of the UK branch of the Licensing Executive Society;
  • Hon. President of the Association of Law Teachers;
  • Member of the Advisory Board of the European Law Centre of King’s College London;
  • Governor of the Expert Witness Institute from its foundation until 2004 and is again Governor.

Sir Robin was awarded the Outstanding Achievement in IP award by Managing Intellectual Property magazine in 2012.

Publications

Books (in collaboration with others)

A Guidebook to Intellectual Property (5 editions from 1970 to 2004, a further edition is intended)

Kerly’s Law of Trade Marks and Trade Names (1972, 1983 and 1986 editions, editor; 2001, 2005 and forthcoming editions, consulting editor)

Encyclopedia of UK and European Patent Law (from 1977 onwards)

The White Book (once the Supreme Court Practice, now Civil Procedure Guide) Sweet and Maxwell, editor of sections on intellectual property for many years from 1970 to 1993, Supervisory Editor thereafter.

Bullen & Leake & Jacob Precedents of Pleadings. For many editions author of the various parts concerned with Intellectual Property, currently Consulting Editor

Atkin’s Court Forms. Editor of the sections concerned with Intellectual Property in the 1970s and 1980s

Articles and Lectures

Information Problems and the Law’, The Information Scientist, March 1972 p.3

The Protection of Geographical Indications of Origin in the UK’, chapter in Protection of Geographic Denominations of Goods and Services, ed. Prof. Herman Cohen Jehoram, Sijthoff & Noordhoff, 1980.

The Herschel Smith Lecture 1993, [1993] EIPR 312

Novelty of Use Claims’, IIC (1996) Vol 27 170 (also published in German GRUR (1996) Vol 45 p.1091), a paper for the 7th Symposium of European Patent Judges

The Stephen Stewart Memorial Lecture: ‘Industrial Property – Industry’s Enemy?’ [1997] I.P.Q. 3

European Patent Procedure’, a paper for the 1997 Fordham University Law School IP conference

When is a trade mark not a trade mark?’ for the 1997 Fordham University Law School IP Conference

The Harmonisation of Patent Litigation’, a lecture given to the Dutch AIPPI Group in Zeist Holland, March 1997, [1997] I.P.Q. 142

Some Recent Cases of Significance in the UK’, IIC (1997) Vol 28 880 (also published in German, GRUR Int 1/98) a paper for the 8th Symposium of European Patent Judges

Community Intellectual Property Law in the English Courts’, Chap. 15 of European Community Law in the English Courts, ed. Andenas and Jacob, Clarendon Press, 1998

Towards a European Civil Procedural Code?’ The 27th Lord Upjohn Lecture, (1998) The Law Teacher, 125

The future shape of the judicial system in Europe’ a paper for the Ninth Symposium of European Patent Judges, Special Edition of the EPO Journal. 1999 p.114

Objectionable Narrowness of Claim, a “Side Bar” in Principles of Patent Law’, Chisum et al., Foundation Press New York, (1999) also published in [1999] EIPR 40 along with subsequent correspondence

Decisions relating to patents granted by the EPO in Great Britain and Germany, (1999) VPP-Rundbrief 13

Scope of patents in the UK - is there a doctrine of equivalents?’ for the AIPPI, Symposium, Helsinki, March 1999, published in Nordiskt Immateriellt Rättsskydd

Can European Patent Specifications be Safely Shortened?’ a paper for the FICPI conference, The Hague July 1999

International Intellectual Property Litigation in the Next Millennium’, The 1999 Deioma lecture, Case Western Reserve University, Cleveland, Ohio, Case Western Reserve Journal of International Law (2000) vol. 32 p.507

Intellectual Property in the new Millennium’ The Inaugural Presidential Address of the Shepherd and Wedderburn Centre for Research in Intellectual Property and Technology, Edinburgh, 1999

The Community Patent or a European Patent Court? Is it time to choose?’, for the 2000 Fordham University Law School IP conference

Trade Marks and the Olympic Games throughout the Years’, Marques Conference: Athens August 2000, [2001] EIPR 1

In Honour of Rudiger Rogge, Festshrift fur Rudiger Rogge zum 65. GRUR, October 2001

The Onward March of Intellectual Property Rights and Remedies’, Chap. 17 of Expanding the Boundaries of Intellectual Property, OUP 2001

The Grays Inn Reading, June 2002, Gresham College

Thoughts on Insolvency Practitioners and Expert Witnesses’, a paper for the R3 Conference, Malaga, May 2003, Insolvency Law and Practice (2003) Vol. 19 143

My Dad and Gray’s Inn’, (2002) 114 Graya 41

Law and the Human Genome Project’, a paper for the Washington University in St Louis, Missouri, Symposium, 2003, Perspectives on properties of the Human Genome Project, ed. F. Scott Kieff, Elsevier/Academic Press, 2003.

Creating the Community Patent and its Court’, an essay in Intellectual Property in the New Millennium, Essays in Honour of William Cornish, (2004) Cambridge p.79

The Perfect Patent Court, an essay in …".. und sie bewgt sich doch!"’ Patent Law on the Move, a Festschrift for Gert Kolle and Dieter Stauder, Carl Heymanns Verlag (2005) p. 313

The Globalisation of Copyright’, for the 12th Biennial Copyright Law & Practice Symposium, Sydney, November 2005. Copyright Reporter (2006) Vol 24 p.10

Interpretation of Claims and the Doctrine of Equivalents’, for the 13th Symposium of European Patent Judges, 2006, Special Edition of the EPO Journal, 2007 p.138

European Patent Litigation: Out of the Impasse?’ With Prof. Anthony Arnull, [2007] EIPR 209

National Courts and the EPO Litigation System’ an essay in Festbeiträge für Rudolf Teschmacher zum 65, (2008) GRUR Int 658

Monopolist v Antimonopolist: A never ending story:’ The Burrell lecture 2008

Recent Patent Cases in England and Wales’, for the 14th Symposium of European Patent Judges, Special Edition of the EPO Journal, 2009, p.139

Woolly Lines in Intellectual Property Law’, an essay in Patents and Technological Progress in a Globalized World, Liber Americiom Joseph Straus, Springer (2009) p. 781

Experts and Woolf: Have Things Got Better?’, an essay in The Civil Procedure Rules Ten Years On, ed. Dwyer, OUP (2009)

Knowledge of the World and the Act of Judging’, the Congrés de La Magistrature, Québec City, November 2008, Proceedings of the 2008 Judges’ Conference, p. 129

The Chapter on Intellectual Property in The Judicial House of Lords 1876-2009 ed. Blom-Cooper et al., OUP 2009

Patents and Pharmaceuticals’, a paper given in November 2008 at the Presentation of the Directorate-General of Competition’s Preliminary Report of the Pharm-sector inquiry, CIPA December 2008 p. 711

Foreword to The Common Law of Intellectual Property, a festschrift for David Vaver, Hart (2010)

Be ye ever so High’, a paper given to the First St. Petersberg Legal Forum, May 2011.

James v Kaney - where next?’ A paper for the Autumn 2011 Expert Witness Institute Journal.