Simon Thorley QC
Simon Thorley has an extensive intellectual property practice, particularly in the field of chemical and biotechnology patents but extending to cover all other patent matters, passing off, infringement of trade marks, copyright and designs and breach of confidence. He also advises on EEC law relating to intellectual property and in technical commercial disputes. In addition to his work in the UK, he has appeared in the European Court of Justice, the European Patent Office, the High Court of Ireland and in Hong Kong.
Master of the Bench of the Inner Temple 1999 Treasurer of The Inner Temple 2013 Deputy High Court Judge 1998 Deputy Chairman Copyright Tribunal 1998-2006 Appointed Person for Trade Mark Appeals 1996 -2003 Chairman I.P. Bar Association 1995-1999 Member of the Bar Council 1995-1999 Member IP Bar Association, Chancery Bar Association and AIPPI
Keble College, Oxford (M.A. Jurisprudence) 1968-1971. Called to the Bar of England and Wales 1972
Legal Directory Comments
Ranked as a “Star Individual” by Chambers & Partners
There are few more experienced IP Barristers at the Bar, as he has 24 years as a silk
under his belt. He deploys this experience in biotech and pharmaceutical patent cases,
although he also undertakes a wide array of patent and trade mark and design right matters.
Expertise: “The Best advocate at the patent Bar”
. “He has a manner with people that’s
perfect and has a very, very good sense of what’s going to win.”
Simon Thorley QC is a “leading light of the senior IP Bar, respected by judges and
opposing lawyers alike.
” He is lionised in all quarters for his magisterial track record handling
heavyweight patent matters. In particular he has won much respect for his battles concerning
pharmaceuticals and life sciences giants.
Simon Thorley QC can justifiably be considered an elder statesman of the IP Bar, and
he remains the barrister of choice for the most significant litigation. He is a “fantastically
and “a brilliant client handler who is masterful presence in court.”
Commentators say he us “incredible on his feet – he reads the court so well and knows which
points to develop and which to let drop. He’s bright and commercial – a real star.”
A leading luminary of the IP Bar," Simon Thorley QC is popular with instructing solicitors
and clients alike, who appreciate his "amazing brain" and "practical approach." In court he is
"an excellent cross-examiner
" who "handles himself with great panache,
" but what really sets
him apart is "his masterly intuition for which lines of argument are going to find favour.
House of Lords and Privy Council
• Asahi Kasei Kogyo K.K.'s Application (1991) RPC 49 Patents - Priority Date Application.
• Merrell Dow Pharmaceuticals v. H.N. Norton (1996) RPC 76 Patents - Disclosure - Prior Publication Prior
• Erven Warnink v. Townend (1980) RPC 31 Passing Off -Advocaat
• Biogen Inc. v. Medeva plc (1997) RPC 1. Patents-Genetic Engineering-Enablement.
• Canon K.K. v. Green Cartridge Co. (1997) FSR 817. Copyright. British Leyland Defence.
• Unilever v. Cussons (NZ) Pty (1998) RPC 369 Trade Marks.
• Sabaf SpA v MFI Furniture Centres Ltd  RPC 209
• Synthon BV v SmithKline Beecham Plc  RPC 10 Patents novelty.
• Eli Lilly v Human Growth Sciences  UKSC 51. Patents. Neutrokine α. Industrial Application
• Schutz (UK) Ltd v Werit (UK) ltd  UKSC 16. Patents. Scope of Infringement. Refurbishment
Court of Appeal
• A.C. Edwards v. Acme Signs  RPC 131 - Patents, Added Matter.
• Mentor v. Hollister  RPC 7 Patents - Sufficiency.
• Molynlycke AB v. Proctor & Gamble  RPC 49 Patents - Obviousness.
• Harrods v. Harrodian School  RPC 697. Passing Off.
• Lubrizol v. Esso Petroleum  RPC 727. Patents - Validity.
• Union Carbide v. B.P.  RPC 409 Patents Infringement.
• Chocosuisse v. Cadbury  RPC 826 Passing Off - Swiss Chocolate.
• Philips Electronics v. Remington Consumer Products  RPC 809,  RPC 14 Trade Marks -
Shapes. ECJ reference &  EWCA civ 14 (second action)
• Kimberley-Clark v. Procter & Gamble  RPC 422. Amendment of Patents.
• Bristol Myers Squibb v. Baker Norton  RPC 1. Patents. Methods of Medical Treatment.
• Lilly Icos Limited v. Pfizer Limited  FSR 809. Patents. Viagra. Obviousness of second medical use
• Arsenal Football Club v. Reed  RPC 144 & 696. Trade Marks. ECJ reference
• Boehringer Ingleheim KG v Dowelhurst ltd ECJ and Court of Appeal  FSR 970,  EWCA civ
757 Case C-348/04  EWCA civ 15
• DSM Anti-Infectives BV v SmithKline Beecham plc  EWCA Civ 1199. Patent licence. Jurisdiction
• Markem Corp v Zipher Ltd  RPC 31. Patents. Entitlement
• Aerotel v Telco  RPC 20. Patents. Methods of doing business.
• European Central Bank v DSS Inc. . Patents. Added Matter.
• Actavis v Merck  RPC 26 Patents. Second medical use claims.
• Generics v Lundbeck  RPC 19. Patent. Enantiomers. Insufficiency.
• Dr Reddy’s Laboratories v Eli Lilly  EWCA Civ 1362.  RPC 9. Patents. Olanzapine
• Hotel Cipriani v Cipriani (Grosvenor Street)  EWCA Civ 110.  RPC 16. Passing Off/Trade
• Schluberger Holdings v Electromagnetic Geoservices EWCA Civ 819.  RPC 33. Patents.
CSEM Surveying, Skilled Person, Secondary evidence.
• Diageo v Intercontinental Brands  EWCA Civ 920.  RPC 2.Passing Off. Vodka/Vodkat
• Novartis v Johnson & Johnson  EWCA Civ 1039. Patents. Contact lenses. Insufficiency
• Merck Sharp & Dohme v Teva  EWCA Civ 382. Patents. Glaucoma. Obviousness
• Eli Lilly v Human Growth Sciences  EWCA Civ 1185.  RPC 22. Patents. Neutrokine α.
• Medimmune v Novartis  EWCA Civ 1234. Patents. Phage Display. Priority. Infringement
• Astrazeneca v Hexal  EWCA Civ 454. Patents. Sustained release formulations
Co-editor of Terrell on Patents (13th, 14th, 15th & 16th editions)
INTERNATIONAL TENNIS FEDERATION TENNIS ANTI-DOPING PROGRAMME DECISION IN THE CASE OF KRISTINA ANTONIYCHUK Admission of an anti-doping rule violation Ms Antoniychuk has admitted that furosemide was present in the urine sample collected from her on 22 February 2010 at the 2010 Abierto Mexicano TELCEL presentado por HSBC Event held in Acapulco, Mexico (the “Acapulco Event”). Furosem
Cited in BIOBASE – BIOSYS Preview – Current Contents/Clinical Medicine – Current Contents/Life Science – Elsevier BIOBASE/CurrentAwareness in Biological Sciences – EMBASE/Excerpta Medica – MEDLINE – PsycINFO – Science Citation Index – SciVerse ScopusÒFull text available in SciVerse ScienceDirectÒOriginal articlesA long-term, clinical study on symptomatic infantile spasms