What We Do

“Commercial and responsive”
European Legal 500 2011

Our practice areas are geared to the demands of our clients. Ireland is fast developing as a key low tax European base for business and as a result there is an ever increasing amount of inward business investment involving intellectual property rights.

Many firms seek to offer a number of distinct sectoral practice areas under the one intellectual property banner. We offer separate and dedicated Intellectual Property, Information Technology, Media and Entertainment, Life Sciences and Retail and Leisure teams. The specialist nature of our practice groups enables us to offer a focused industry-based expertise while also providing strategic and expert intellectual property advice and litigation services.   

Our Intellectual Property Group represents a diverse local and international client base in both contentious and commercial IP matters.  We represent national and multi-national clients in intellectual property disputes and advise on IP issues in many of the largest corporate transactions taking place in Ireland.  

Led by Alistair Payne, an IP practitioner of many years experience both in Ireland and overseas, the IP Group comprises of dedicated IP lawyers based in the firm’s Commercial Litigation and Dispute Resolution Department. Our lawyers have specialised post graduate qualifications and are committed to delivering pragmatic, commercial and concise advice to our clients. 

Our group advises on:

Corporate

• intellectual property due diligence reviews and strategic portfolio advice
• acquisition/divestment and licensing of intellectual property rights
• preparing and implementing corporate intellectual property protection programmes
• employee rights and corporate ownership of intellectual property rights
• international re-structuring of IP rights
• securitisation of intellectual property rights
• confidential information and trade secrets

 
Branding and Trade Marks

• branding and trade mark protection programmes
• trade mark filing and prosecution through Matheson Ormsby Prentice trade mark advisors
• trade mark and get-up licensing
• protection of image, personality rights and business reputation
• trade mark infringement and passing-off disputes
• anti-counterfeiting and customs registration
  

Patents and Technology

• strategic patent protection and commercialisation advice
• research and development agreements and technology licensing
• patent ownership, infringement and validity disputes
  

Copyright Designs and Databases

• computer game protection advice and licensing
• registered and unregistered designs
• database rights
  

Internet and Domain Names

• Internet based trade mark and copyright infringement
• website intellectual property risk management
• international domain name protection strategies
• domain name disputes

We have specifically developed an Emerging Business Programme for companies at the formation stage of their development. This programme is designed to provide such companies with a range of key legal services and access to expert advice, all bearing the stamp of Matheson Ormsby Prentice's quality work - at a cost designed to match their resources. For further information, please access our Emerging Business Programme brochure.

Professional Activities

Lawyers in the Intellectual Property Group take an active role in local and international organisations concerned with the development of intellectual property law. Organisations in which we are involved include the Intellectual Property Sub-committee of the International Bar Association, the International Association for Protection of Intellectual Property (AIPPI), the Copyright Association of Ireland, the International Trademark Association (INTA) the Licensing Executives Society (LES), MARQUES (The Association of European Trade Mark Owners), the Anti-Counterfeiting Group (ACG) the Intellectual Property Sub-Committee of the International Chamber of Commerce and the domain name dispute resolution service administered by the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre.

Recent experiece includes:

• undertaking strategic IP due diligence investigations and advising on IP issues in the context of mergers, takeovers, new ventures and investments in the insurance and cable/satellite television sectors, manufacturing, retail, biotechnology and Internet based software sectors
• representing one of the largest international drinks manufacturers in trade mark infringement and passing-off proceedings and in brand protections matters 
• representing Irish fashion retailer in unregistered design litigation brought by a series of high street retailers 
• representing technology and research institutes and government agencies in patent ownership and infringement disputes 
• advising on parallel importation issues and representing parties in patent infringement disputes 
• advising and representing an international pharmaceutical company in a patent infringement dispute 
• representing branded merchandise manufacturers in trade mark and anti-counterfeiting matters 
• advising international paint manufacturer on copyright protection issues 
• advising banks, insurance companies, Ireland's national postal service provider, a international publishing conglomerate, international media company on trade mark and branding strategies and transitional arrangements in the context of mergers, acquisitions and joint ventures 
• advising multinational information service provider on copyright and licensing issues 
• advising Irish national sporting body on exploitation of image rights 
• advising private tertiary and governmental institutions on intellectual property policies and the commercialisation of intellectual property rights 

Matheson Ormsby Prentice’s “commercial and responsive” team boast the “excellent” Alistair Payne at its helm.
Intellectual Property: European Legal 500 2011

This firm handles a wide range of contentious work and is particularly highly regarded for healthcare litigation, IP cases and judicial reviews. Sources remark that “it is prompt in its responses and the partners are readily available to help".
Dispute Resolution: Chambers Europe 2011

Clients commend the IP team not just for its legal expertise but also for its"great understanding of both our business and the technology aspects of the case".
Intellectual Property: Chambers Europe 2011

Matheson Ormsby Prentice’s IP group is housed within its dispute resolution department and handles contentious and non-contentious work across the spectrum of IP. Though the volume of commercial IP work has slowed due to the economic downturn, work on the contentious side has surged, and the group has been involved in several high-profile cases. Most notably, it acted for Internet service provider UPC Ireland in commercial court proceedings brought by a number of record companies over what liabilities UPC faced for alleged copyright infringements by its customers. On the advisory side, a recent significant development saw the group take over management of Danone’s substantial trade mark portfolio in Ireland, whilst work for other major clients such as Google continued apace. Clients say: “From our point of view, commercial thinking is extremely important, and the firm delivers on that. We find it customer-focused, practical and solutions-oriented.” Key IP contact Alistair Payne“doesn’t over-egg the pudding. He is very effective and knows what clients are looking for.”
Intellectual Property: Chambers Europe 2010

Matheson Ormsby Prentice provides‘very commercial advice’ and ‘excellent client management skills’, and team head Alistair Payne is ‘not hesitant in forming a view - he won’t sit on the fence and delay proceedings’. The firm is representing broadband company, UPC Ireland, in a Commercial Court Case brought by the ‘Big Four’ record labels relating to UPC’s liability for copyright infringements allegedly committed by its customers.
Intellectual Property: European Legal 500 2010

This firm is now home to an integrated contentious and non-contentious IP group, which operates out of the commercial litigation and disputes resolution department. Sources like the integrated approach that the team adopts, saying: “The team has a broad skill base and there is plenty of interaction between lawyers with different areas of expertise.”
Intellectual Property: Chambers Europe 2009

Clients have"great confidence" in team head Alistair Payne. The firm is strong across the board, with clients drawn from the financial services, technology, life sciences and retail sectors.
Intellectual Property: European Legal 500 2009

Matheson Ormsby Prentice will merge its contentious and commercial IP practices in 2008 to create a fully integrated IP offering headed up by the ‘very responsive’ and ‘client-focused’ Alistair Payne.
Intellectual Property: European Legal 500 2008

Clients commended the “excellent service and commercial advice”.
Intellectual Property: Chambers Europe 2008