Gregory Bacon

Partner – Patent litigation

Greg’s extensive scientific background gives him a valuable understanding of technical issues that can underlie IP matters, particularly in the life sciences field. For over 20 years, he has advised and represented clients in patent litigation concerning small molecule pharmaceuticals, biologics, biomanufacturing, medical devices, as well as in the chemicals, cosmetics, food, shipping and online publishing sectors.

Greg has represented clients in many patent cases before both the English High Court (including Patents Court) and Court of Appeal. In addition, Greg has extensive experience of strategic multinational litigation in multiple jurisdictions, including at the UPC and EPO, through global pharmaceutical product coordination projects for many clients. He is also an Authorised Representative handling cases before the UPC.

  • In the UPC, Greg is representing GC Aesthetics in patent infringement and revocation proceedings in the Brussels Local Division in proceedings against Establishment Labs concerning breast implants. Parallel proceedings are also ongoing in the UK.
  • Winnow v Orbisk – represented patentee Winnow in UPC proceedings before the Local Division (The Hague) concerning commercial food waste management solutions.
  • Greg was part of team of internationally recognised lawyers that represented Novartis in the defence of a DNI action instigated in the Central Division (Milan) by Accord in relation to patents to Tasigna® (nilotinib).
  • Greg is representing the US National Institutes of Health in Patents Court litigation against Janssen and commercial partner Legend Biotech. The dispute concerns the client’s patent to treatment of multiple myeloma by chimeric antigen receptor T-cell (CAR T) therapy, licensed to BMS.
  • DSM v Mara Renewables & Algal Omega 3 – Patents Court and Court of Appeal litigation concerning omega-3 microbial oils, and processes for their manufacture. Mara successfully revoked 2 of the 3 patents in suit, clearing the way to continue manufacture and sale of its products.
  • Novartis v Teva & Ors – Patents Court and Court of Appeal litigation concerning dosage regime patent for client’s blockbuster fingolimod product (Gilenya®), including ground-breaking application for interim injunctive relief pre-patent grant and significant decisions on the availability of Arrow declarations for use in foreign proceedings.
  • Otsuka v GW Pharma – IP licence dispute relating to client’s Epidiolex®/Epidyolex® cannabidiol (CBD) treatment for epilepsy.
  • Lilly v Novartis; UCB v Novartis – acting for Novartis in relation to global enforcement of IL-17AF antibody patent portfolio against IL-17 antibody products Taltz® and Bimzelx®.
  • Parainen Pearl Shipping v Kristian Gerhard Jebsen Skipsrederi – case on exhaustion of patent rights in a pneumatic cement discharge system for a ship, including a pan-European jurisdiction challenge.
  • Novartis v Focus, Actavis & Teva – Patents Court and Court of Appeal patent litigation concerning transdermal dosage regime patent for rivastigmine (Exelon®), including global coordination of parallel litigation and EPO opposition.
  • Orion v SS for Health and Social Care & Ever Neuro – judicial review challenge to decision of MHRA to grant generic marketing authorisation for dexmedetomidine hydrochloride, involving question of whether pre-accession Czech MA was compatible with Directive 2001/83/EC and thus the first MA for the purposes of calculating the term of data exclusivity.
  • Celltrion v Biogen, Roche & Genentech – clearing the way revocation action in the Patents Court in relation to biosimilar rituximab product (MabThera®).
  • Merck Serono v AbbVie – clearing the way revocation action in the Patents Court in relation to biosimilar adalimumab product (Humira®).
  • ConvaTec v Smith & Nephew – long-running case in the Patents Court and Court of Appeal concerning patents and claims to misuse of confidential information in relation to gel-forming wound dressings (Durafiber®), and subsequent damages claim under a cross-undertaking.
  • Allergan v Ipsen – patent litigation in the Patents Court on second medical use patents to botulinum toxin (Dysport®).

He has also spent time on secondment to the IP litigation department of a leading IP law firm in the Netherlands as well as the UK legal department of a global healthcare IT company, working on non-contentious IP/IT, regulatory and commercial matters.

Greg is a member of AIPPI (Association for Protection of Intellectual Property) and EPLAW (European Patent Lawyers Association), and is a regular speaker at international conferences on UK and international patent litigation, including the UPC.

Credentials

  • BA (Hons) Natural Sciences (Neuroscience), University of Cambridge
  • DPhil Neuroscience, University of Oxford
  • Diploma in Intellectual Property Law and Practice, University of Oxford
  • Qualified 2007
  • Partner 2017
  • Solicitor Advocate 2019
  • Admitted in Republic of Ireland 2019
  • UPC Representative
  • Advocaat Balie Brussel

Publications

Biotech Review of the Year

Read here

What others say

“Greg Bacon - commercially minded and tactically astute.“ Legal 500 2027
“Bacon has a particular knack for handling life sciences disputes, thanks to his doctorate in neuroscience; he delves deep into the scientific issues as well as the legal points to ensure his arguments are strong from every angle.” IAM Patent 1000 2024
“With a doctorate in neuroscience, Gregory Bacon has keen insight into technical issues in the life sciences. He has advised companies across the industry, but is equally deft at handling technologies in other fields, from software and online publishing to shipping.” IAM Patent 1000 2023

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