Chambers UK 2014

The Legal 500 UK 2013

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Andrew Clay

Consultant

Andrew Clay is an intellectual property (IP) specialist. He has 25 years’ experience of IP law and is widely recognised as one of the leading IP lawyers in the country.

Andrew joined the firm in 1992 and was a partner from 1997 to 2013.

Andrew’s practice covers all areas of IP law including both the enforcement and defence of IP claims as well as advice and assistance in relation to the commercialisation of IP rights.

Andrew has extensive experience of patent, breach of confidence, design, copyright and trade mark infringement and passing off actions. He also has experience of using private prosecutions to enforce IP rights.

Andrew also has significant experience of drafting licensing, joint venture, assignment and securitisation agreements relating to IP rights as well as many other types of agreements which involve IP issues.

He has been acknowledged as an expert in his field by both Legal 500 and the Chambers Guide to the Legal Profession. In Chambers  Andrew is quoted by his clients as being a “dynamic and highly competent practitioner” and in the Legal 500 his clients describe him as “responsive, and shows great attention to detail’ and “renowned for his ability to easily identify key issues in a matter”.

Andrew is frequently asked to speak at IP conferences and has written many articles on IP law issues. He was until recently an honorary lecturer in IP Law at Manchester University.

Andrew’s professional memberships include the ACG, CIPA, ITMA, AIPPI and the IPLA.

Andrew is listed in the 2013 edition of Chambers UK as a leading individual for intellectual property.

Representative Experience

  • Successfully obtained judgment for client Redcrier against Redrup in relation to copyright infringement claims relating to dozens of training manuals, which led to Redrup going into liquidation. Redcrier Publications Limited v Redrup Publications [2013] EWHC 3481.
  • Successfully advising a US corporation in relation to complex design right proceedings which lead to a successful settlement of the action. Bullitt Mobile Limited v Sonim Technologies [2013] EWHC 3367.
  • Advising Lee Cooper in relation to all aspects of its international licensing program and its owners (Red Diamond Sarl) on their 2013 disposal of the business to Iconix for £50 million.
  • Acting for a client in a relation to a multi-million pound international licensing arbitration relating to certain nanotechnology and securing a favorable settlement for the client after the award had been made.
  • Acting for a government department in relation to a major trade mark infringement and passing off action in the High Court against an infringer of a well-known trade mark.
  • Acting for a major manufacturer of FMCP in relation to a complex spin out of certain novel antigen biotechnology.
  • Convicting three traders for copyright infringement in relation to DVDs in a rare private prosecution.
  • Successfully defending Specialised Covers, the world’s leading manufacturer of prestige brand car and caravan covers, in relation to a design right infringement action. Pro-Tec Covers Ltd v Specialised Covers Ltd [2011] EWPCC 23.

Recent Publications
  • “Service on English patent attorneys? Think again,” CIPA Journal, November 2013.
  • “Transferring Intellectual Property Rights: Avoiding the Pitfalls,” PLC, January/February 2011.
  • “Strategies for brand owners in the era of new domain names,” E.C.L. & P., 2010.

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Leeds
T +44 113 284 7655
M +44 7711 107911

Education

Open University, Certificate, 1996
University of Bristol, Diploma, 1996
University of Leeds, C.P.E., 1989
University of St. Andrews, B.Sc., Honors, 1985

Admissions

England and Wales, 1991

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