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Simon Thorley QC
Practice Area
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. Appointments
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 Education
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 who said:
2014 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.”
2013 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.
2012 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
smooth performer,” 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.” 2011 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."
Principal Cases
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
Use.
• 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 [2005] RPC 209
• Synthon BV v SmithKline Beecham Plc [2006] RPC 10 Patents novelty.
• Eli Lilly v Human Growth Sciences [2011] UKSC 51. Patents. Neutrokine α. Industrial Application
• Schutz (UK) Ltd v Werit (UK) ltd [2013] UKSC 16. Patents. Scope of Infringement. Refurbishment
Court of Appeal
• A.C. Edwards v. Acme Signs [1992] RPC 131 - Patents, Added Matter.
• Mentor v. Hollister [1993] RPC 7 Patents - Sufficiency.
• Molynlycke AB v. Proctor & Gamble [1994] RPC 49 Patents - Obviousness.
• Harrods v. Harrodian School [1996] RPC 697. Passing Off.
• Lubrizol v. Esso Petroleum [1998] RPC 727. Patents - Validity.
• Union Carbide v. B.P. [1998] RPC 409 Patents Infringement.
• Chocosuisse v. Cadbury [1999] RPC 826 Passing Off - Swiss Chocolate.
• Philips Electronics v. Remington Consumer Products [1999] RPC 809, [2003] RPC 14 Trade Marks -
Shapes. ECJ reference & [2006] EWCA civ 14 (second action)
• Kimberley-Clark v. Procter & Gamble [2000] RPC 422. Amendment of Patents.
• Bristol Myers Squibb v. Baker Norton [2001] RPC 1. Patents. Methods of Medical Treatment.
• Lilly Icos Limited v. Pfizer Limited [2002] FSR 809. Patents. Viagra. Obviousness of second medical use
• Arsenal Football Club v. Reed [2003] RPC 144 & 696. Trade Marks. ECJ reference
• Boehringer Ingleheim KG v Dowelhurst ltd ECJ and Court of Appeal [2002] FSR 970, [2004] EWCA civ
757 Case C-348/04 [2008] EWCA civ 15
• DSM Anti-Infectives BV v SmithKline Beecham plc [2004] EWCA Civ 1199. Patent licence. Jurisdiction
• Markem Corp v Zipher Ltd [2005] RPC 31. Patents. Entitlement
• Aerotel v Telco [2007] RPC 20. Patents. Methods of doing business.
• European Central Bank v DSS Inc. [2008]. Patents. Added Matter.
• Actavis v Merck [2008] RPC 26 Patents. Second medical use claims.
• Generics v Lundbeck [2008] RPC 19. Patent. Enantiomers. Insufficiency.
• Dr Reddy’s Laboratories v Eli Lilly [2009] EWCA Civ 1362. [2010] RPC 9. Patents. Olanzapine
• Hotel Cipriani v Cipriani (Grosvenor Street) [2010] EWCA Civ 110. [2010] RPC 16. Passing Off/Trade
Marks
• Schluberger Holdings v Electromagnetic Geoservices [2010]EWCA Civ 819. [2010] RPC 33. Patents.
CSEM Surveying, Skilled Person, Secondary evidence.
• Diageo v Intercontinental Brands [2010] EWCA Civ 920. [2011] RPC 2.Passing Off. Vodka/Vodkat
• Novartis v Johnson & Johnson [2010] EWCA Civ 1039. Patents. Contact lenses. Insufficiency
• Merck Sharp & Dohme v Teva [2011] EWCA Civ 382. Patents. Glaucoma. Obviousness
• Eli Lilly v Human Growth Sciences [2012] EWCA Civ 1185. [2013] RPC 22. Patents. Neutrokine α.
Sufficiency.
• Medimmune v Novartis [2012] EWCA Civ 1234. Patents. Phage Display. Priority. Infringement
• Astrazeneca v Hexal [2013] EWCA Civ 454. Patents. Sustained release formulations
Publications
Co-editor of Terrell on Patents (13th, 14th, 15th & 16th editions)

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