Joe Delaney

Called to the bar 2006 Junior

Practice Areas

All aspects of intellectual property law, including patents, SPCs, trade marks, passing off, copyright, registered designs, design right and confidential information.

Joe is also instructed in matters relating to international commercial arbitrations that involve issues of intellectual property law, in particular disputes arising out of technology, know-how, patent and trade mark transfer and licensing agreements.

Recent and Ongoing Cases

  • Philips v ASUS & HTC[2016] EWHC 867 (Pat), [2016] EWHC 2220 (Pat): Representing HTC in a patent dispute relating to HSPA mobile phone technology.
  • Illumina v TDL & Ariosa [2016]: Representing the defendants in a patent dispute concerning non-invasive prenatal diagnosis and genetic testing.
  • Actavis & Ors v Lilly [2016] EWHC 1955 (Pat): Represented a number of generic pharmaceutical companies in a revocation action concerning tadalafil dosing and formulation.
  • Thoratec v AIS [2016] EWHC 2637 (Pat): Represented Thoratec in a patent dispute concerning catheter based heart pumps.
  • MRC v Celltech [2016]: Represented Celltech in a royalty dispute arising from patents concerning humanized antibodies.
  • Actavis v Lilly [2016] EWHC 234 (Pat): Represented Lilly in a dispute concerning pemetrexed as a chemotherapeutic treatment for lung cancer.
  • Regeneron v Kymab [2016] EWHC 87 (Pat): Represented Regeneron in a patent dispute concerning transgenic mice that can be used as platforms for therapeutic antibody discovery.
  • Adaptive Spectrum & Signal Alignment v BT [2013] EWHC 3768 (Pat), [2014] EWCA Civ 1462, [2014] EWHC 4194 (Pat): Represented ASSIA at trial and on appeal in its patent dispute with BT concerning the operation of BT’s ADSL network.
  • Teva v Leo [2014] EWHC 3096 (Pat): Represented Teva in a patent revocation and infringement action concerning a combination product for the treatment of psoriasis.
  • Fage v Chobani [2012] EWHC 3097 (Ch), [2013] E.T.M.R. 28, [2013] EWHC 630 (Ch), [2014] EWCA Civ 5, [2014] E.T.M.R. 26, [2014] F.S.R. 29: Represented Fage at trial and in the Court of Appeal, the well-known manufacturer of Total Greek Yoghurt, in its extended form passing-off claim against Chobani concerning the right to use the description ‘Greek Yoghurt’ in the UK.
  • HTC Europe v Apple [2012] EWHC 1789, [2013] EWCA Civ 451, [2013] R.P.C. 30: Represented Apple at trial and on appeal in an infringement and revocation action involving four “smartphone” patents owned by Apple. The judgment in the Court of Appeal is a significant post-Aerotel decision on the patentability of software-implemented inventions.
  • IPCom v HTC; Nokia v IPCom [2013] EWHC 52 (Pat): Intervened on behalf of Research in Motion on the issue of inspection of confidential licensing documents for the purposes of determining a FRAND licence.
  • An ICC arbitration [2013]. Junior counsel in a dispute between two major telecom companies arising out of a patent licence agreement.
  • MedImmune v Novartis Pharmaceuticals [2012] F.S.R. 23, [2011] EWHC 1669 (Pat), [2012] EWHC 181 (Pat), [2012] EWCA Civ 1234: Represented Novartis in a complex biotechnology trial in the Patents Court and Court of Appeal, concerning recombinant antibody phage display technology. This case raised important issues relating to the applicability of the ‘obvious to try’ test for inventive step, as well as the availability of SPCs following the CJEU’s ruling in Medeva.
  • Samsung Electronics v Apple [2013] F.S.R. 7, [2012] EWHC 889 (Ch): Represented Apple in the UK aspects of its dispute with HTC. An infringement and revocation action involving four “smartphone” patents owned by Apple was heard in April and May 2012.
  • Apple v Samsung [2012] EWHC 889 (Ch): Represented Apple in the UK aspect of its dispute with Samsung. This particular aspect of the dispute concerned Apple’s Registered Community Design for the iPad, and the correct interpretation of the jurisdiction provisions in the Community Design Regulation. It also raised issues of domestic UK law on the groundless threats provisions.
  • Enercon Gmbh v Enercon (India) Ltd [2012] 1 Lloyd’s Rep. 519, [2012] EWHC 689 (Comm): Represented the Claimant companies in their application under section 18 Arbitration Act 1996 to have various disputes (arising out of an intellectual property licensing agreement concerning wind-turbine technology) referred to arbitration in London under the supervisory jurisdiction of the English courts. The application in the Commercial Court raised complex issues of English and Indian law, in particular regarding whether the seat of the putative arbitration was England or India, and also issues of interim anti-suit and freezing relief.
  • Gedeon Richter v Bayer [2011] EWHC 583 (Pat), [2013] Bus. L.R. D17, [2012] EWCA Civ 235: Represented the Claimant in the Patents Court and Court of Appeal in relation to a claim for revocation of a patent concerning pharmaceutical formulations of contraceptive pills.
  • H. Lundbeck A/S v TDP Healthcare [2012]: Represented the Claimant in an action for infringement of its SPC for the antidepressant escitalopram, as well as infringement of its Community Trade Mark for CIPRALEX. The case involved issues of infringement arising out of the Cypriot Defendant’s operation of various websites that offered generic pharmaceuticals for sale in the UK.
  • Fresenius v CareFusion [2011] EWHC 2052 (Pat), [2011] EWHC 2663 (Ch), [2011] EWCA Civ 1288, [2012] 1 All E.R. 794, [2011] EWHC 2959 (Pat): Represented Fresenius in an infringement and revocation action concerning infusion syringe pumps. This was also the case in which the Court of Appeal abolished See v Scott-Paine / Earth Closet orders.
  • Warner-Lambert v Teva [2011] F.S.R. 44, [2011] EWHC 1691 (Pat), ), [2011] EWHC 2018 (Ch): Represented Warner-Lambert in a patent action involving Pfizer’s blockbuster drug Lipitor, including ex parte and contested interim hearings.
  • Apple v Nokia [2011]: Represented Apple in the UK aspect of this wide-ranging mobile phone related litigation.
  • An LCIA Arbitration [2011]: Instructed to assist commercial counsel in relation to intellectual property issues arising out of a patent and know-how licensing agreement concerning neurotoxins.
  • Albert Packaging v Nampak Cartons [2011] EWPCC 015, [2011] F.S.R. 32: Represented the defendant company as the sole advocate in a Patents County Court trial for infringement of unregistered design right in sandwich-wrap packaging.
  • Datacard Corporation v Eagle Technologies Ltd [2011] R.P.C. 17; [2011] EWHC 244 (Pat): Represented the Defendant in a trial involving infringement and revocation of patents concerning RFID technology in printer consumables, as well as trademark infringement via the use of signs on “click-through” links on websites.
  • Fosroc v W.R. Grace [2010] EWHC 1702 (Pat): Represented Fosroc in a Patents Court revocation action concerning cement admixtures.
  • Diageo v Intercontinental Brands [2010] EWCA Civ 920; [2011] 1 All E.R. 242; [2010] E.T.M.R. 57; [2011] R.P.C. 2 (Court of Appeal) [2010] EWHC 17 (Ch); [2010] 3 All E.R. 147; [2010] E.T.M.R. 17; [2010] R.P.C. 12 (High Court): Represented Diageo at trial and on appeal in this widely-reported action for extended form passing-off involving the ‘VODKAT’ range of products.
  • TIP v Motorola [2010]: Represented TIP, a subsidiary of RIM, in a patent action on infringement, ‘essentiality’ and revocation of a patent on GPRS mobile phone technology.
  • RIM v Motorola [2009] EWHC 213 (Pat): Represented Research in Motion in this Patents Court trial concerning mobile email systems.
  • Ratiopharm v ALZA; ALZA v Sandoz [2009] EWHC 213 (Pat): Represented ALZA in this Patents Court trial concerning transdermal fentanyl patches.
  • InterDigital v Nokia & NSN [2008]; Nokia Corporation v InterDigital [2007] EWHC 3077: Represented InterDigital in these wide-ranging patent actions concerning 3G and GSM mobile phone technology, and the determination of ‘essentiality’ to the ETSI standards.

Publications

S. Wheelwright, S. Baron-Cohen, N. Goldenfeld, J. Delaney, D. Fine, R. Smith, L. Weil and A. Wakabayashi, (2006). “Predicting Autism Spectrum Quotient (AQ) from the Systemizing Quotient-Revised (SQ-R) and Empathy Quotient (EQ)”, Brain Research 1079:47-56 A. Wakabayashi, S. Baron-Cohen, S. Wheelwright, N. Goldenfeld, J. Delaney, D. Fine, R. Smith and L. Weil, (2006). “Development of short forms of the Empathy Quotient (EQ-Short) and the Systemizing Quotient (SQ-Short)”, Personality and Individual Differences, Volume 41, Issue 5, October 2006, Pages 929-940

Professional Association Memberships

Chancery Bar Association, COMBAR, IP Bar Association

Education

  • 2006-2007: 12 months pupillage with Colin Birss, Tom Hinchliffe, Tom Mitcheson, and Denise McFarland as pupil masters.
  • 2005-2006: Bar Vocational Course, BPP Law School, London
  • 2004-2005: Graduate Diploma in Law, BPP Law School, London.
  • 2001-2004: Natural Sciences (First Class), Emmanuel College, Cambridge.

Awards and Scholarships

Middle Temple: JJ Powel Prize, Astbury Scholar.

“He is very bright and good at synthesising simple-looking arguments from complex facts and law.” “He is very personable and has a good, practical sense of strategy.”

Chambers & Partners 2017

“Great intellect and calm under pressure.”

Legal 500 2016

“Joe Delaney has garnered praise for his “creative approach” and is someone clients “wouldn’t hesitate to recommend”.

Who's Who Legal 2016
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Extremely bright and easy to work with as part of a large team.” “Excellent on the details in technical cases, and very sound in his judgement when it comes to broader strategy issues.”

Chambers & Partners 2016

“He is technically superb, has great commercial insight, and delivers on every level.” “An old head on young shoulders”

Legal 500 2015

“Smart, efficient, capable and user-friendly.”

Chambers & Partners 2015

“An exceptionally talented junior, who really gets on top of a case.”

Legal 500 2014

“A real star of the future. He has all the technical side to him and his judgement seems very good for someone relatively junior. He’s very impressive.”

Chambers & Partners 2014

“A “rising star” is Joe Delaney, who in a relatively short time has become a battle-hardened veteran of the ‘smartphone wars’ between Apple and other mobile telecoms manufacturers. He wins much praise.”

Chambers & Partners 2013

‘Joe Delaney is a talented young barrister with a practice spanning the full range of IP law.”‘

Chambers & Partners 2012

“Stands out for being “capable beyond his years.” Delaney is “very focused, excellent on the detail in complex patent cases and a pleasure to work with.””

Chambers & Partners 2011

“strong technical skills.”

Chambers & Partners 2010

“Natural Sciences graduate Joe Delaney was only called to the bar in 2006 but is already winning rave reviews as “a barrister who is mature beyond his years and who is destined to go all the way to the top””

Intellectual Asset Management Life Sciences 250 – The World's Leading Life Sciences Patent Litigators 2010