Andrew Clay Partner

Andrew is an IP lawyer who cuts through the morass and focuses on the underlying commercial issues to deliver optimum solutions to the varied IP problems his clients come to him with.

He has a strong track record of taking his clients’ IP rights into new markets via licensing, joint ventures and other exploitation vehicles. Clients also come to Andrew in relation to IP enforcement issues. He has a strong reputation for patent, design, breach of confidence and trade mark work in particular. He is possibly unique amongst UK IP specialists in that he has a strong criminal law practice, which focuses on the enforcement of the criminal sanctions for IP infringement against counterfeiters.

Andrew also advises clients how to develop and implement IP strategies, which are aligned to and support their business strategies. Such strategies cover everything from portfolio pruning, through invention making and disclosure incentivisation policies for R&D personnel to building IP thinking into clients’ basic operating processes and procedures (such as CAPEX approval and termination of employment processes).

With over 20 years experience of IP law, Andrew is frequently asked to speak at major IP conferences and has written many articles on IP law issues. He was until recently an honorary lecturer in IP Law at Manchester University. He founded the Midlands Intellectual Property Society in 2009 and is an advisor to the UK’s leading IP insurance provider – Safeonline LLC.

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

Andrew is listed in the 2012 edition of Chambers and Partners' Chambers UK as a leading individual for intellectual property.

Representative Experience

• Acting for a client in a relation to a multi-million pound international patent licensing arbitration concerning certain nanotechnology and securing a favorable settlement for the client after the award had been made (2010).
• 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 (on-going).
• Acting for a major manufacturer of FMCP in relation to a complex spin out of certain novel antigen biotechnology (2010).
• Conducting a private criminal prosecution against producers of counterfeit DVDs following a raid by the Metropolitan Police (on-going).
• Acting for Lee Cooper in relation to the its international brand licensing strategy (on-going).
• Advising the largest metal container manufacturer in the world in relation to the development and implementation of an IP strategy (on-going).
• Advising Specialised Covers, the world’s leading manufacturer of prestige brand car and caravan covers, in relation to an on-going design right infringement action, which is vigorously contested and scheduled to come to trial in September 2011 (on-going).

Recent Publications

• Transferring Intellectual Property Rights: PLC January/February 2011 page 43.
• Insulate For Life: How Not To Be Appealing: Journal of Intellectual Property Law and Practice 2011. 
• Case Report: RFID Patent Infringement - DataCard Corp v Eagle: Technologies Ltd: 2011 C.T.L.R., Issue 4
• Google's Revised Adwords Policy Causes Industry Divide: ECL &P 2010 12(8) 7-9.
• Strategies For Brand Owners In The Era Of New Domain Names: .E.C.L. & P. 2010, 12(7), 10-11.