Sam Bailey

Sam works principally on chemistry and materials science patents. He has extensive experience drafting new patent applications and coordinating prosecution and grant worldwide. He also regularly represents clients at EPO oppositions and appeals. Sam has a particular interest in Supplementary Protection Certificates (SPCs) and leads our SPC and Patent Term Extensions group.

Areas of Expertise

• Small molecule pharmaceutical compounds, compositions, and their uses in therapy
• Drug formulations – particularly modified release formulations
• Energy storage technology; including battery chemistry, separators, electrolytes, and cell architecture
• Carbon nanotechnologies, including graphene and carbon nanotubes
• Nanoelectronics
• Nanostructured materials
• Polymers such as silicone rubber compositions and polymer protective coatings
• Processes for production of basic industrial chemicals
• Inorganic magnetic materials
• SPCs and Patent term Extensions and strategies for authorised drugs and plant protection products

Clients

Sam’s clients in the UK and Europe include many of the top-ranked UK universities alongside companies ranging from small start-ups through to large multinationals. Sam has a particular focus on the US and regularly visits clients, particularly in the San Francisco bay area.

Background

Sam has a Masters degree in chemistry (MChem) and a PhD in carbon nanotubes chemistry both from the University of Oxford. He joined Mewburn Ellis LLP in 2002 qualifying as a European Patent Attorney in 2006 and a UK Chartered Patent Attorney in 2007. He joined the partnership in 2010.

During his training Sam spent three months working with a firm of US patent attorneys in Alexandria, VA.

Opposition highlights:

Sam has extensive experience working on opposition and appeal cases with some notable highlights including:

EP3173071: Sam acted for his client Dechra Pharmaceuticals Inc. in a defensive opposition of a patent for anti-sickness medication for companion animals. The main request was maintained at the opposition and the appeal is ongoing.

EP1870476: An offensive opposition for Ajinomoto against a patent relating to a process for forming an amino acid. Sam successfully revoked the patent entirely.

EP2694072, Roche vs Generics UK: Defence of a patent (Opposition Division and Appeal) for a combination product for treatment of prostate cancer. The main request was maintained.

Sam has worked on the defence of numerous cases for Nippon Paint against opposition by PPG industries. Cases cover various compositions and methods relating generally to metallic paints.  In each case, the patent was maintained based on main request or first auxiliary request – in all cases maintaining commercially valuable coverage for the client.

EP2548858: Defence for Dalian Institute of Chemical Physics against attack by Avantium Knowledge Centre. The patent covered a highly valuable manufacturing process for a basic chemical compound and was maintained based on the main request.