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Morag Macdonald

Morag Macdonald
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Who's Who Legal Life Sciences: Patent Litigation

Morag Macdonald, joint head of the international intellectual property group, is regularly named as a leader in the IP litigation field.

Morag joined the intellectual property group of Bird & Bird in 1985 having originally trained as a barrister and became a partner of the firm in 1989.  Her original degree, from Cambridge University, was in mathematics, physics and law. Her particular interests are all forms of IP disputes and strategic counselling, especially as regards international cross-border IP strategy advice. 

Reported UK IP trials in which she has been involved include 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, Proctor & Gamble v Reckitt Benckiser, Baxter Healthcare v Abbott Laboratories, European Central Bank v DSS, Edwards Lifesciences v Corevalve and most recently Kuros Biosurgery AG v Baxter Healthcare, Schlumberger Holdings Limited vElectromagnetic Geoservices AS, Danisco A/S v Novozymes A/S, Smith & Nephew Plc v Convatec Technologies Inc, Virgin Atlantic Airways Ltd v Air Canada and Velocys v Compact GTL.

In recent years she has been particularly involved in the coordination and running of various pan-European patent actions involving several jurisdictions in Europe not always including the United Kingdom. For example, the patent litigation between Baxter v Pharmacia & Upjohn/Genetics Institute (in the Netherlands, Sweden, Germany and before the ICC), between NovoNordisk v DSM (in the UK, Belgium, the Netherlands and Germany), between GlaxoWellcome ats Hoffman la Roche (in Belgium and Germany) and between JCB v Manitou (in the UK and France), for Allergan (in the UK, the Netherlands and Sweden), Halliburton v Smith (in the UK and Italy), Edwards Lifesciences v Cook Biotech (in the UK and Germany) and litigation between Honeywell and Arkema concerning (the HFO1234yf infringement (France, Germany, Spain, Portugal, Italy, Poland and Turkey).

She also acted in the first community design right case to come to trial in Europe, Mattel v Simba where she acted for the successful claimant.  

As well as IP litigation, she has been the lead advocate in various arbitrations including a major cross-border biotech arbitration, provided freedom to operate advice in the field of carbon capture and advised a financial services company on its patent strategy in over 40 jurisdictions.

Chambers UK (2017) says: ”Morag Macdonald is recommended for her magisterial handling of complex patent and trade mark infringement cases. Clients say: ’She has achieved fantastic results for us and is terrifically persuasive in court.’”

In 2016, Morag was honoured to receive recognition for her work in the form of ”best in patents” at the Euromoney LMG Europe Women in Business Law Awards.

Chambers UK (2016) says: ”Morag Macdonald concentrates on IP litigation with an eye to cross-border strategy, leading patent and also trade mark cases. Sources commend her intelligence, commercial understanding and ’excellent leadership skills’."

IAM Patent 1000 (2016) says: “Morag really offers high value, ensuring that she provides clients with the best strategy possible. She is extremely efficient – it’s a top-level service.”

WWL says: The “very experienced” Morag Macdonald is recognised by peers as a leader in IP litigation and is highly regarded for her patent disputes expertise.

This biography is an extract from Who's Who Legal: Life Sciences which can be purchased from our Shop.

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87 Lancaster Road, London
W11 1QQ, UK