David Perkins

David Perkins

David Perkins

David Perkins has over 40 years of experience in all aspects of contentious intellectual property. Prior to joining JAMS, Mr. Perkins’ practice was primarily focused on multi-jurisdictional patent and trademark litigation, with related antitrust issues. He has also handled oppositions and appeals before the European Patent Office (EPO) in Munich and references to the European Court of Justice (ECJ) in Luxembourg. He has also acted as counsel and arbitrator in numerous arbitrations involving intellectual property rights.

David Perkins has served in major leadership positions in the intellectual property practice area at international law firms. He was a partner at Clifford Chance from 1975–2003 where he headed its European intellectual property litigation practice and subsequently at Milbank Tweed’s London office 2003–2009 and Arnold & Porter’s London office 2010-2013. He is the author of an extensive list of publications, articles, and conference papers on various aspects of intellectual property law disputes. He is also a frequent participant at international intellectual property conferences.

Mr. Perkins was a Member of the UK Government’s former Intellectual Property Advisory Committee (IPAC); a Council Member of the former Intellectual Property Institute (IPI), formerly known as The Common Law Institute of Intellectual Property (CLIP); a Founding member of The Intellectual Property Lawyers Organization (TIPLO); a World Intellectual Property Organization (WIPO) arbitrator and mediator; and a member of all major international intellectual property associations. He has also served as an instructor for WIPO’s Annual Arbitration Workshop since 2002.

Areas of Expertise

  • Patent infringement; trademark infringement; copyright infringement; registered design infringement
  • Trade secret, confidential information litigation
  • Disputes concerning agreements involving intellectual property rights (IPRs)
  • European Union Competition and TRIPs aspects of disputes involving the above subject matter
  • Oppositions and Appeals (European Patent Office)
  • References to the European Court of Justice in patent and trademark matters
  • International arbitrations of IPRs
  • IT outsourcing disputes
  • Disputes in the Telecommunications sector

Experience in Mediation

  • Mediation of a multinational trademark dispute – including proceedings in a U.S. District Court, the English High Court, and over 20 international Trademark Offices/Courts – involving two U.S. based multinational corporations (2014)
  • Mediation of trademark and passing off proceedings in the Patents County Court between a Canadian company and a UK company (2013)
  • Mediation of trademark and passing off proceedings in the High Court between two UK entities (2009)
  • Mediation of a dispute involving two arbitrations between U.S. and German entities – one under AAA Rules and the other under ICC rules – resulting from patent litigation in the United States and other jurisdictions (2012)
  • Mediation of High Court (Patents Court) patent infringement case between a German company and a United Kingdom company (2010)
  • Mediation of trademark dispute between two multinational telecom providers – one from the United Kingdom and the other from Asia Pacific (2009)
  • Mediation of patent license dispute between two U.S. companies and a Danish company – first mediation in London (2008) and second mediation in Geneva (2012)
  • Significant involvement in advising on the use of ADR techniques for approaching multi-jurisdictional disputes involving IPRs
  • Counsel in numerous mediations involving patents and trademarks, including (inter alia) counsel for major confectionary manufacturer in mediation of European Cross-Border trademark dispute (2003), counsel for leading manufacturer of medical/analytical apparatus in patent infringement/validity proceedings (2005), and counsel for U.S. financial institution in a multi-jurisdiction (U.S. and Europe) trademark dispute with an international Telecoms provider

Experience in Arbitration

  • WIPO Domain Name Panelist (1999 to date)
  • National Arbitration Forum (NAF) domain name panelist
  • WIPO arbitrator (2003 to date)
  • Hong Kong International Arbitration Center (HKIAC) panel member
  • Singapore International Arbitration Centre (SIAC) panel member
  • Kuala Lumpur Regional Centre for Arbitration (KLRCA) panel member
  • International Center for Dispute Resolution (ICDR) panel member
  • Sole Arbitrator in WIPO arbitration involving Patent License and Patent Validity (both US and European Patents), (2003-2005)
  • Arbitrator/co-Arbitrator in approximately 150 proceedings under the UDRP
  • Sole Arbitrator in ICC arbitration relating to gTLDs (2013)
  • Sole Arbitrator for the IFTA (Independent Film & Television Alliance); dispute relating to Film Distribution Agreement (2013)
  • Arbitrator in LCIA arbitration relating to patent entitlement/ownership (current)
  • Chairman of ICC Dispute Resolution Board for potential disputes arising from a complex technology transfer (2009-2016)
  • Counsel in four ad hoc arbitrations involving trade secrets/confidential information (1985-1991)
  • Counsel in ICC arbitration involving parties in the computer industry (2006-2007)
  • Counsel in 2 ICC arbitrations in the energy sector (New York 2007-2008)
  • Counsel in two ICC arbitrations in the iron and steel sectors (2009)
  • Counsel in ICC arbitration in the solar energy sector (2010)
  • Counsel in ICC arbitration in the audio/sound reproduction sector (New York 2011)
  • Counsel in three LCIA arbitrations in the telecoms and mining sectors (2008-2009)

Representative Matters

  • Acting for Thetford Corporation in ECJ proceedings involving exercise of national patent rights in a non-discriminatory matter (Articles 30 to 36 Treaty of Rome). [Case C-35/87]
  • Representing (as Counsel) the European Federation for the Pharmaceutical Industry (EFPIA) in the ECJ in relation to the single Trademark Requirement [Case T-123/00]
  • Acted for Catnic Components in House of Lords case establishing the test for evaluation of patent infringement (the Diplock purposive construction test) still applicable under the new law/EPC Article 69 and Protocol; EPC 2000
  • Acted in major cases involving assessment of damages in patent infringement proceedings
  • Acted for Lenzing AG in notorious Judicial Review proceedings seeking reinstatement of Lenzing’s EP (UK) following revocation of the EP by an EPO Board of Appeal. Applicability of Art. 32 TRIPS
  • Advising International Industry Groups and the EC Commission on TRIPs in relation to Competition/Anti-Trust Law issues concerning IPRs
  • Appearing as Expert Witness for major companies in U.S. litigation involving patent and trademark issues

Intellectual Property, International Arbitration, M&A Disputes, Mediation

40+ Years

Qualifying Examination Part II, Law Society of England and Wales, 1969
LL.B., Newcastle University, 1966

English
70 Fleet Street,
London

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David Perkins