Contact details

Rob Jacob

T: +44 20 7809 2072 M: +44 7825 601 925 Email Rob | Vcard Office: London

Awards

Intellectual property; Pharmaceuticals and biotechnology

Intellectual property; Pharmaceuticals and biotechnology

Intellectual property

Intellectual property

Rob Jacob Partner

Contact details

Rob Jacob

Rob Jacob
Partner

T: +44 20 7809 2072 M: +44 7825 601 925 Email Rob | Vcard Office: London

Rob is a partner specialising in both contentious and non-contentious IP issues with a particular focus on trade mark and copyright matters. He has particular expertise in the life sciences, offshore construction and luxury brands sectors.

  • Profile
  • Services

Rob has a masters degree in Chemistry from Imperial College, London and a post-graduate diploma in IP law and practice. He trained and qualified into the IP team at Clifford Chance before joining Stephenson Harwood in 2009 specialising in all intellectual property matters.

Rob acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)) where the firm successfully argued for the extension of trade mark law in relation to post-sale confusion. His other more recently reported cases include: Glaxo Wellcome UK Limited v Sandoz Ltd [2017] EWHC 3196 (Ch), Parainen Pearl Shipping Ltd v Kristian Gerhard Skipsrederi AS [2018] EWHC 2628 (Pat), Smart Reamer Drilling Systems v NOV Downhole Eurasia [2018] 1265 (IPEC) and Pathway IP Sarl v easyGroup Ltd [2018] EWHC 3608 (Ch). He has also successfully argued that residual goodwill subsists in the NICHOLSON gin brand (UK Decision: Opp 0520-14) and has successfully convinced OHIM's Board of Appeal that the shape of GSK's DISKUS inhaler was distinctive (R2074/2013-2).

On the non-contentious side, Rob's highlights include working on the public takeover of Biocompatibles plc by BTG plc, the US$3.8 billion sale of Piramal Enterprises' domestic formulations division to US pharmaceuticals giant Abbott, the acquisition of the worldwide rights to Florbetaben (a pioneering molecular imaging product for the diagnosis of early Alzheimer's disease) from Bayer Pharma AG and the US$220 million acquisition of EKOS corporation.

Rob is a recommended lawyer in the Legal 500 UK directory for intellectual property and pharmaceuticals and biotechnology with "notable strengths in trade mark work". Rob has been described as “a very brainy guy who thinks deeply about his cases. He is always stress-testing and playing devil’s advocate to be as well prepared as possible. He is unflappable and his measured manner is very reassuring.” (WTR 1000, 2019) Rob also wrote the intellectual property chapter of the book Offshore Construction Law and Practice published by Informa Law from Routledge.

"Calm and imperturbable solution-seeker"

The Legal 500 UK 2019

  • Intellectual property

Extension of trade mark law

Acted on DataCard Corporation v Eagle Technologies Limited ([2011] EWHC 244 (Pat)), where the firm successfully argued for the extension of trade mark protection to prevent actions of an infringer which would lead to post-sale confusion.

Residual goodwill

Successfully arguing that residual goodwill still subsists in the NICHOLSON gin brand resulting in the UK IPO invalidating third party marks for the same on grounds of passing off and bad faith (Decision: Opp 0520-14). 

Non-traditional trade marks

Successfully convincing OHIM's Board of Appeal (R2074/2013-2) and the UK IPO that the shape of both GlaxoSmithKline's DISKUS and ELLIPTA inhalers were distinctive as well as successfully arguing before OHIM Board of Appeal in relation to a formalities objection (R0580/2013-2).

More: Intellectual property

Awards

Intellectual property; Pharmaceuticals and biotechnology

Intellectual property; Pharmaceuticals and biotechnology

Intellectual property

Intellectual property

Latest news & insights

16 Jul 2018

From News

Stephenson Harwood advises on Piramal Imaging sale

Law firm Stephenson Harwood LLP has advised on the sale of Piramal Imaging SA to UK based medical imaging services provider Alliance Medical Group.

More

27 Apr 2016

From News

Stephenson Harwood confirms nine promotions to partnership

International law firm Stephenson Harwood LLP today announces its largest ever number of internal promotions to the partnership.

More

print-footer
logo
© Stephenson Harwood LLP 2016. Any reference to Stephenson Harwood in this document means Stephenson Harwood LLP and/or its affiliated undertakings. Any reference to a partner is used to refer to a member of Stephenson Harwood LLP.