Strategic Research Partner of the American Bar Association's Section of International LawThe Queen's Award for Enterpise 2012

Morag Macdonald

Morag Macdonald
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Biography • 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, McAllergan 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 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 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, litigations including Baxter v Pharmacia & Upjohn/Genetics Institute (in the Netherlands, Sweden, Germany and before the ICC), NovoNordisk v DSM (in the UK, Belgium, the Netherlands and Germany), GlaxoWellcome ats Hoffman la Roche (in Belgium and Germany) and JCB v Manitou (in the UK and France), acting 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 (2015) states, "Morag Macdonald is highly regarded as an IP litigation specialist, and she has an excellent track record handling patent, trade mark and copyright disputes. She has much experience co-ordinating clients' multi-jurisdictional IP strategy. She is described by sources as "very bright and perceptive". IAM Patent 1000 (2014) describes her as “a doyenne of patent law’”.

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

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