Nicola Dagg
M +44 77 7651 5823

Overview
Nicola Dagg is a partner in the IP litigation team in the London office of Kirkland & Ellis International LLP. Nicola’s practice spans four areas: (1) strategic life sciences patent and product lifecycle advice; (2) patent litigation; (3) co-ordinating global IP enforcement/defence cases; and (4) standard essential patent (SEP) and FRAND disputes. Nicola has tried over 20 cases.
Nicola has extensive experience in pharmaceutical and biologics patent litigation including blockbuster small molecule litigation against generic companies, biologics and biosimilar litigation, antibodies, immunotherapies, genetics, vaccines, diagnostics and gene therapies. Nicola also acts in market leading SEP essentiality, validity and global FRAND adjudication litigation in the tech sector. Having served as UK and European/global co-ordinating counsel for numerous strategic IP litigation cases and drawing on more than 24 years of legal, IP, life sciences and tech experience she helps clients solve their most pressing global challenges.
Nicola writes and speaks extensively on intellectual property litigation. She was named Lawyer of the Year 2017 for Life Sciences (Patent Litigation); she is ranked as a leading IP partner in Chambers Global, Chambers UK and Legal 500. Chambers Global 2021 recognises Nicola as a “pre-eminent” litigator who is “an outstanding strategist and leader in IP litigation”. Nicola has also been selected as one of the 10 “Most Highly Regarded Individuals” in Europe by Who’s Who Legal: Patents 2016 and was named as one of the “Top 50 women lawyers in London” in the 2015 Super Lawyers list. Who’s Who Legal has listed Nicola as an expert in each of Patent Lawyers, Life Sciences patent litigation and as a Thought Leader for life sciences.
Nicola has consistently been recognised as a gold-ranked patent litigator by IAM Patent 1000 and in their 2019 directory they describe her as “fantastic – the driving force in what is one of the great success stories in recent years” and acknowledge her “impressive” team-building and client-handling skills.
Experience
Representative Matters
Since joining Kirkland, Nicola has been involved in the following matters:
- Pfizer (Warner-Lambert): lead Counsel in celebrated UK case (High Court, Court of Appeal and Supreme Court) against more than 10 generic defendants enforcing a second medical use patent covering Lyrica®, the blockbuster treatment for pain. Labelled the “IP case of the year” by IPKat. Obtained leave to appeal (extremely rare in patent cases) to Supreme Court on the most difficult issues in English patent law namely plausibility and infringement of second medical use patents.
- Pfizer (Warner-Lambert): lead Counsel to Pfizer in a follow-on damages inquiry against the Department of Health, the NHS and more than 20 generic companies, related to litigation enforcing a second medical use patent covering Lyrica®, the blockbuster treatment for pain.
- Nicoventures: lead Counsel to British American Tobacco (BAT) group company Nicoventures in patent revocation proceedings against Philip Morris Products recently filed in the English High Court.
- Regeneron: lead Counsel to Regeneron in litigation at the UK Supreme Court relating to Regeneron’s proprietary transgenic mouse platform for the therapeutic human antibody development.
- RAI Strategic Holdings: lead Counsel to RAI Strategic Holdings, part of the RJ Reynolds Group affiliated with British American Tobacco (BAT), in defence of patent revocation proceedings brought by Philip Morris Products in the English High Court.
- Meril: lead Counsel to medical device company Meril in defending multiple sets of infringement proceedings brought by Edwards in relation to technology used in transcatheter heart valve implantation.
- Novartis: lead Counsel to Novartis in successful preliminary injunction proceedings concerning its Afinitor® (everolimus) oncology medicine, to prevent the launch of a generic everolimus product approved for the treatment of hormone receptor positive breast cancer.
- Acting for multinational telecommunications companies in their defences of multiple SEP infringement and global FRAND licensing actions.
- Advising a multinational life sciences company in relation to clearing the path in the UK.
- Advising multiple multinational life sciences companies in relation to regulatory approval in the UK and EU.
- Advising a multinational telecommunications company regarding litigation relating to (non-SEP) mobile telecommunications technology and trade secrets.
- Advising a multinational real estate investment and luxury hospitality brand in protecting the misuse of its trade marks and goodwill.
Prior to joining Kirkland, Nicola represented the following clients:
- Huawei: lead Counsel in SEP and FRAND patent litigation against the non-practicing entity, Conversant relating to a portfolio of 2G, 3G and 4G patents. This is an industry test case on whether the English Court has jurisdiction to determine global FRAND.
- Regeneron: lead UK (High Court and Court of Appeal) and European Counsel in patent litigation against Kymab enforcing patents covering VelocImmune® a reverse chimeric mouse antibody discovery platform which has allowed Regeneron to build its market leading pipeline of antibody therapeutics. Reported as the most technically complex patent case to come before the English Court. Patent upheld as valid in Technical Board of Appeal in the EPO overturning EPO opposition decision to revoke the patent. The case was won in the English Court of Appeal and involved the global coordination of parallel/related actions in several jurisdictions.
- Thermofisher/Premaitha: lead UK and European Counsel in defending patent litigation brought by Illumina/Sequenom on patents covering gene sequencing and diagnostics with related antitrust defences and an EU antitrust investigation.
- Novartis: lead UK and global co-ordination Counsel on the preparation of litigation to enforce Novartis’ IPR on its Gilenya® treatment for MS.
- Novartis: lead UK Counsel on the preparation of litigation to enforce Novartis’ IPR on its oncology treatment, Afinitor®.
- Pfizer: lead Counsel on UK patent litigation obtaining a preliminary injunction on the patent for LIPITOR®, the blockbuster statin medicine. Infamous preliminary injunction obtained in one day to protect Pfizer’s UK market in its largest medicine (at that date) from an at risk launch. PI continued pending a favourable global settlement.
- Boehringer Ingelheim: lead UK Counsel on patent litigation on the SPC for SPIRIVA®, the client’s largest product, a treatment for COPD.
- Samsung: lead UK Counsel in patent infringement suit on washing machine drum technology.
- Intel: Represented Intel as interested third party (chip supplier) in celebrated UK case Unwired Planet v Huawei.
- Novartis: lead UK (High Court and Court of Appeal) and European Counsel in patent and SPC litigation against MedImmune (Astra Zeneca) on fundamental antibody/phase display technology. Secured an outright victory for Novartis in High Court and Court of Appeal.
- Blackberry: lead global Counsel in patent litigation against Motorola on LTE/3G patents. Case settled on favourable terms for Blackberry on the eve of trial.
- UBS: lead UK Counsel in copyright infringement case on oil and other financial indices. Case settled on confidential terms.
- UK Counsel for major hedge fund in long running trade secret litigation on high frequency trading algorithms. After inspection of the code and exchange of technical expert reports the case settled.
Prior Experience
Partner and Global Head of IP, Allen & Overy LLP
Hogan Lovells, London
- Partner, 1996–2006
Deputy Reporter General, AIPPI International
More
Thought Leadership
Publications
Dagg, N., Lim, D., Baldwin, S., and Bornstein, G. (2022) “Trade Secrets 2022: Law and Practice”, Chambers and Partners Practice Guides
Dagg, N., Baldwin, S., Coltart, K., and Shandler, B. (2021) “Patent Litigation 2021: Trends and Developments”, Chambers and Partners Practice Guides
Dagg, N., Lim, D., Baldwin, S., and Bornstein, G. (2020) “Trade Secrets 2020: Law and Practice”, Chambers and Partners Practice Guides
Dagg, N., Lim, D., Shandler, B., and Kritharidis, A. (2020) “Patent Litigation 2020: Trends and Developments”, Chambers and Partners Practice Guides
Dagg, N., Coltart, K., Lim, D., and Ooi, J. (2019) “Patent Litigation 2019: Trends and Developments”, Chambers and Partners Practice Guides
Dagg, N., Baldwin, S., and Rollins, T. (2017) “From Takeda to Teva v Merck: Are we treading the right path on combination products SPC’s? (Part 2 of 2)”, European Intellectual Property Review
Dagg, N., Baldwin, S., and Rollins, T. (2017) “The definition of product in the SPC Regulation: What’s in a name? (Part 1 of 2)”, European Intellectual Property Review
Dagg, N. (2014) UK chapter in “Copyright litigation - Jurisdictional comparisons 2nd edition”, Thomson Reuters
Dagg, N. (2013) “Second medical use”, The International Who’s Who of Patent Lawyers
Dagg, N. (2010) UK chapter in “Copyright Litigation – Jurisdictional comparisons”, Thomson Reuters
Video Interviews
Regulatory issues key for life sciences in Brexit debate. Life Sciences Review (25 August 2017)
Life Sciences Patent Network Europe, Life Sciences Review (20 December 2016)
Credentials
Admissions & Qualifications
- 1996, Admitted to Practice as a Solicitor of England and Wales
- Solicitor Advocate, Higher Court (Civil Proceedings)
- Admitted to the Law Society of Ireland
Education
- Newnham College, University of CambridgeM.A., Natural Sciences1991
- University of BristolDiploma in Intellectual Property Law and Practice1997