Intellectual Property

Carson McDowell’s Intellectual Property Team provides both contentious and non-contentious advice to clients on all aspects of intellectual property protection and exploitation. As such it has substantial expertise dealing with the intellectual property issues arising not only in a transactional and advisory context, but also in the litigation of matters relating to protection and infringement of intellectual property.

Our breadth of team is such that our advice covers a comprehensive spectrum of intellectual property rights, both registered and unregistered, including: copyright, design rights, trademarks, patents, knowhow and commercially sensitive information.

Specialist areas of expertise include the licensing of Intellectual property and, the prosecution and defence of patent infringement proceedings. The team's long standing relationship with the local Universities also means it has considerable expertise across a number of Technology Sectors.

What We Do

  • Advising on organisational policies and procedures for the management of intellectual property
  • Undertaking intellectual property audits
  • Conducting intellectual property due diligence in corporate transactions
  • Assisting with the registration of trademarks
  • Providing trademark portfolio management services
  • Instigating and assisting with trademark invalidation and revocation proceedings
  • Advising on the transfer of ownership of intellectual property of all kinds
  • Advice on the licensing of intellectual property both to and from third parties and intra group arrangements
  • Advice on appropriate forms of licensing arrangement in the context of spin out companies
  • Advice on the non tax aspects of the Patent Box
  • Advising on merchandising, advertising, and the grant of sponsorship rights particularly as regards sporting events
  • Advice on the management of business information and commercially sensitive information protection
  • Advice on the intellectual property issues arising in the context of APP development
  • Instigating and defending High court proceedings for the protection of intellectual property of all kinds
  • Advising as to strategies for protecting intellectual property from infringement without recourse to legal proceedings and particularly conducting negotiations between parties involved in the intellectual property disputes including drafting undertakings that will form the basis of any settlement
  • Advising on appropriate means of protecting unregistered intellectual property rights from infringement – passing off actions
  • Generally advising on copyright, patents, knowhow, trademarks and design rights

What Others Say About Us

Chambers and Partners UK 2019


What the team is known for

Prestigious full-service IT firm covering all areas of technology law. Offers comprehensive support for contentious and commercial matters. Expert in cross-jurisdictional work, including direct foreign investment for large companies investing in Irish technology.

Strengths

A client says: "They helped me implement a new software package, and they did it really well."

Work highlights

Advised Northern Ireland Electricity Networks on an ICT infrastructure procurement and associated regulatory compliance issues.

Notable practitioners

Dawn McKnight is noted for her expertise acting for both suppliers and customers of technology products and services.

Chambers and Partners UK 2018

What the team is known for

Widely acknowledged for strength in handling a wide variety of contentious and commercial IP matters, including licensing agreements and patent infringement litigation. Highly active within Northern Ireland's thriving research and development sector. Noted for advice on the tax-efficient structuring of IP assets, particularly with regard to the patent box scheme.

Strengths

One client describes the team as "a one-stop shop" whose "turnaround is excellent."

"A go-to for Northern Ireland," says another market source.

Work highlights

Providing ongoing advisory services to Xilinx in relation to its IP.

Advised Douglas & Grahame on an audit of its IP portfolio and brand strategy.

Significant clients

Wrightbus, Independent News & Media, Belfast International Airport, ISDM Solutions, SISAF.

Notable practitioners

Dawn McKnight advises on licensing and the IP aspects of corporate transactions, and has a special focus on technology contracts. According to clients, she is a "brilliant" lawyer who"leaves you in no doubt about what the correct solution is."

Declan Magee is a well-regarded litigator whose experience includes patent, trade mark and design infringement cases. He is recommended by sources on the basis of his "broad spectrum of knowledge" and his "experience across a range of industries."

Chambers and Partners UK 2017

What the team is known for

Widely acknowledged for strength in handling a wide variety of litigious and commercial IP matters, including licensing agreements and patent infringement litigation. Highly active within Northern Ireland's thriving research and development sector.

Work highlights

Continues to advise coachbuilder Wrightbus International on the management of its IP portfolio and on collaboration agreements with partners in the UK and abroad.

Assisted Pi Communications with the negotiation of a software development agreement with a view to ensuring the client retains ownership of intellectual property arising from the project.

Notable practitioners

Dawn McKnight is held in high regard for her experience handling licensing transactions within the technology sector. She also advises on the IP implications of corporate transactions.

Declan Magee is one of the most accomplished litigators in Northern Ireland. His IP practice takes in patent, design and trademark infringement disputes.

Significant clients

Independent News & Media, Xilinx, Ardmore Advertising, McCloskey International, Eakin Holdings.

The Legal 500 2018

What the team is known for

Carson McDowell’s IP expertise ranges from M&A-related IP work to patent agreements, infringements, licensing rights, software protection and ownership management.

Work highlights

The team is advising Independent News and Media on expanding its trade mark portfolio by registering new marks to protect its existing brands as part of its IP activities in Northern Ireland.

Assisted biopharmaceutical company SiSaf with entering into a patent and know-how licence agreement with another biopharmaceutical entity for developing plaque psoriasis treatment drugs through using SiSaf’s IPR.

Notable practitioners

Dawn McKnight leads the team, which also includes Declan Magee and Peter Guzhar, who are well known for acting on contentious IP mandates.

Significant clients

The group’s client base includes IT and technology companies, healthcare entities, educational bodies, energy companies, infrastructure providers and retailers. The firm acts for US technology company Xilinx, the University of Ulster, and Firmus Energy.

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