Gregory Bacon

Partner

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 15 years, he has advised and represented clients on small molecule pharmaceuticals, biologics (originators and biosimilars), medical devices (hardware and software), as well as in the cosmetics, chemicals, technology, 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 EPO, through global pharmaceutical product coordination projects for many clients. He is also an Authorised Representative before the UPC.

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), EPLAW (European Patent Lawyers Association) and EPLIT (European Patent Litigators Association), and is a regular speaker at international conferences on UK and international patent litigation. Greg is also the editor of our On the Pulse life sciences microsite and one of the editors of our Biotech Review publication which explores key issues and developments in the biotech space, and co-authored the UK chapter of the AIPLA’s International Patent Litigation guide.

Example cases:

  • DSM v Mara Renewables & Algal Omega 3 – Patents Court litigation concerning omega-3 microbial oils, and processes for their manufacture.
  • 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®).
  • Servier v National Institute of Health and Clinical Excellence (NICE) – successful judicial review of NICE decision not to recommend a client’s osteoporosis treatment (Protelos®).

Credentials

  • Partner (since 2017)
  • Qualified as Solicitor in England and Wales in 2007, Solicitor Advocate since 2019
  • Authorised Representative before the UPC
  • Advocaat bij de Balie te Brussel
  • Admitted in Republic of Ireland
  • BA (Hons) Natural Sciences (Neuroscience), University of Cambridge
  • DPhil Neuroscience, University of Oxford
  • Diploma in Intellectual Property Law and Practice, University of Oxford

Publications

Biotech Review of the Year

Read here

What others say

“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
"He is strategic, relaxed and pleasant to work with, and has a sense of humour". Juve UK 2023
Gregory Bacon “has a technical background – in neuroscience – and is a master of pan-global strategy.” IAM Patent 1000 2022
“An excellent strategist; very relaxed and pleasant to work with.” Juve UK 2022
“Great patent litigator who is confident with the technical side of a case, but also has a good tactical legal brain.” IAM Patent 1000 2021
Gregory is "a creative thinker – he can propose innovative options as solutions." Legal 500 2020
Gregory Bacon "is particularly talented" in his area. Legal 500 2020

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