Mark Shillito

Practice Areas

Mark is an international law firm leader and IP specialist. He has over 30 years’ experience of helping clients to manage risk, commercialise assets and resolve their most complex and high value disputes, in sectors as diverse as life sciences, technology, media and FMCG. A few of those he has helped include: Apple, Akzo Nobel, easyJet, Eisai, ITV, MRC, Sky and Vodafone.

Formerly a London-based partner at Herbert Smith Freehills ("HSF") for 25 years, Mark was HSF’s Global Head of Intellectual Property for nine years and Head of Disputes, UK & US for six.

Mark has extensive trial, deal and multi-jurisdictional dispute coordination experience. He has acted in many leading UK IP cases, yet also spends much of his time helping organisations to reduce their risk and achieve their commercial goals, without the need to resort to the Courts.

He has been described by clients and the legal directories in complimentary fashion for many years, including as one of the leading lights in the London IP market.

Professional Memberships

Law Society of England & Wales.

Law Society of Ireland.

AIPPI.

EPLAW.

CIPA.

Work Highlights

Akzo Nobel in patent litigation brought by Chiron involving ELISA blood-testing kits for Hepatitis C virus; and in patent litigation against Fort Dodge/American Home Products, involving vaccines against canine parvovirus.

Bespak Plc in High Court proceedings to revoke one of 3M's patents on metered dose inhaler technology for delivery of pharmaceuticals to the lungs, including successful defence of related infringement proceedings; & in drafting standard form R&D and supply agreements for use by the company in dealings with a variety of third parties.

Eisai (one of Japan’s largest pharmaceutical companies) in two long-running projects coordinating multi-jurisdictional patent litigation across Europe concerning Eisai's blockbuster drugs Aricept, an Alzheimer’s treatment, and Pariet, an anti-ulcer drug (proton pump inhibitor).

ML Laboratories Plc on conclusion of patent licences and manufacturing and supply agreements with various parties concerning ML's proprietary icodextrin technology for a variety of uses, including: the reduction of post-surgical abdominal adhesions; and in the field of continuous ambulatory peritoneal dialysis.

Medical Research Council (MRC) in patent litigation; in counselling, MRC on all manner of IP issues, including: rewards for inventors schemes and grant funding and IP ownership provisions; & on the conclusion, administration of, and resolution of issues arising from, MRC's fleet of standard-form licensing agreements for MRC technology, including in the field of humanised monoclonal antibodies.

The Wellcome Trust advising WT on intellectual property protection for, and prospective challenges to, the patenting of human gene sequences arising out of The Wellcome Trust's funding of the highly publicised "mapping" of the entire human genome; and subsequently advising on the Haplotype Mapping ("hapmap") and the formation of UK Biobank.

Cadbury Schweppes in high value and strategic advice concerning a third party’s patent “thicket” in a proposed area of expansion for CS.

Otter Controls Ltd in patent infringement, threats and revocation proceedings concerning thermostatic devices for electric kettle controls.

Vodafone Plc in contentious patent amendment proceedings concerning third party patents in the field of Pay As You Go mobile ’phone top up cards; in trade mark infringement proceedings against Orange (comparative advertising); & in breach of contract and misrepresentation proceedings against the Jordan Formula 1 team, (alleged breach of $150m sponsorship deal).

Apple in trade mark infringement proceedings brought by Cisco in relation to the UK iPhone launch.

BSkyB (Sky) in proceedings before The Copyright Tribunal concerning the royalties which BSkyB should pay to the Performing Right Society for the PRS repertoire music used in its programming; & in a variety of similar claims for other clients against other collecting societies.

easyJet in its high-profile litigation with founder Stelios Haji Ioannou’s easyGroup over the airline’s use of the easyJet brand under licence.

IKOS (hedge fund) in a former director's proceedings asserting ownership of the intellectual property used by IKOS in its algorithmic trading software and alleged infringement of those IP rights.

Granada and ITV in breach-of-copyright and breach of privacy proceedings brought by “Prince of Pop”, Michael Jackson, in relation to Granada’s broadcast on ITV1 of the TV documentary “Living with Michael Jackson”.

Ball Corporation advising Ball, a US-listed beverage packaging company - on the successful resolution of a long-running multi-jurisdictional trade mark dispute, with ramifications in various Central European jurisdictions as well as the UK.

Education