Bird & Bird - Morag Macdonald

About me

                As joint head of our International Intellectual Property Group, I bring real depth of experience with cross border IP strategies - for litigation and transactions - addressing the commercial goals of our clients
            

I'm experienced in all forms of IP litigation and strategic advice, especially in an international cross border context. I have led the team in over 25 trials before the UK Patents High Court and the UK Patents County Court. I have also been the lead coordinator on well over 20 matters with patent litigation in two or more European countries. As well as IP litigation, I've been the advocate in a number of IP related arbitrations, provided freedom to operate advice and due diligence reports to companies in the life sciences, financial services and energy sectors as well as advising several companies on their patent and IP strategies in over 40 jurisdictions.

I joined Bird & Bird's Intellectual Property Group in 1985 having originally trained as a barrister, and became a partner in 1989.

My representative experience

The Medicines Company: defending a claim brought by Silence Therapeutics GmbH for entitlement to an SPC for our client's RNAi product, inclisiran, should marketing authorisation be granted.
Fisher & Paykel Healthcare: successfully acting for Fisher & Paykel Healthcare in High Court proceedings seeking revocation and a declaration of non-infringment in respect of three patents owned by ResMed for the design of CPAP masks for the treatment of sleep apnoea. Coordinating with our Bird & Bird colleagues in Germany to conduct related litigation on the same patents and with those handling the related EPO opposition proceedings as well as colleagues in a firm in the US conducting proceedings on equivalent patents there.
Electromagnetic Geoservices A/S: acting for Electromagnetic Geoservices in UK patent infringement proceedings where the Defendant, Petroleum Geoservices, put validity of the patent in issue which involved discussion of complex issues to do with electromagnetic subsea surveying.
Large European Life Sciences company: conducting ICC arbitration proceedings for large European life sciences company.
Global medical devices company: advising not only on patent litigation in a number of countries in Europe as well as the EPO but also advising on FTOs and general patent strategies.

My sectors & practice areas

My cases

Mentor -v- Hollister, Research Corporation's SPC, Reckitt & Coleman -v- Richardson Vicks, Cartonneries de Thulin -v- White Knight, Stolt Comex Seaway ats Coflexip, Freelift -v- Stannah, Synthon -v- SKB, Associated Newspapers -v- Express Newspapers, Sir Robert McAlpine -v- Alfred McAlpine, Allergan -v- Merz Pharma, Baxter Healthcare -v- Abbott Laboratories, European Central Bank -v- DSS, Edwards Lifesciences -v- Corevalve, Kuros Biosurgery AG -v- Baxter Healthcare, Edwards Lifesciences -v- Cook, Schlumberger Holdings Limited –v- Electromagnetic Geoservices AS, Danisco A/S -v- Novozymes A/S, Smith & Nephew Plc -v- Convatec Technologies Inc, Virgin Atlantic Airways Ltd -v- Air Canada, Velocys Inc v CompactGTL Ltd, Electromagnetic Geoservices AS -v- Petroleum Geoservices, Sarepta -v- Biomarin, Silence -v- The Medicines Company et al and ResMed -v- Fisher & Paykel.

My education & admissions

Education

University of Cambridge, MA (Hons), Physics, Mathematics and Law

Admissions

Law Society of England & Wales in 1988
Law Society of the Republic of Ireland

Testimonials

Recognised for Intellectual Property in the elite 'Legal 500 Hall of Fame 2018'. The criteria for entry is to have been recognised by the Legal 500 as one of the elite leading lawyers for eight years in the last ten, and also to have been ranked in the last UK edition. Legal 500 2018

Morag Macdonald boasts "a global presence" in the market, with one international commentator describing her as "the star of the show in England right now". Who's Who Legal 2018

Macdonald's 30 years at the coalface prove invaluable for clients seeking guidance on all aspects of IP strategy; she is "responsive, sensible and as strong on the commercial aspects of a case as she is on the law". IAM Patent 1000 2017