Daniel Lim
Overview
Daniel Lim is noted for his ability to handle complex multijurisdictional patent litigation, often involving blockbuster life sciences and medical devices related matters.” - The Legal 500 UK, 2024
Daniel is a partner in Kirkland's IP Litigation Team in London. Daniel has a broad practice which covers a wide range of technical fields and is noted not only for his extensive experience in cutting edge life science patent litigation but also his success in representing clients involved in complex SEP and FRAND licensing disputes.
In addition to UK litigation, Daniel is regularly called upon to assist clients in devising, coordinating and executing patent strategies for complex multijurisdictional disputes at a pan-European and global scale. With dual qualifications in law and biochemistry, and experience litigating across the world, Daniel is readily able to grasp highly technical material and the international dimensions of disputes, which are often at the heart of effective strategies in strategically critical litigation for the most sophisticated clients. In recognition of his experience and leadership in the life sciences field, Daniel currently serves as the Vice-Chair of AIPPI’s standing committee on biotechnology.
A strong believer in the power of scientific innovation to improve society and quality of life, and the role of intellectual property in incentivising and protecting such innovation, Daniel often represents leading companies in a wide range of industries for whom such innovation is core to their business.
Daniel has developed a particular interest and focus in the rising gene editing technology CRISPR, and is recognised as a thought leader and regular writer, speaker and commentator on the topic. Daniel's previous case experience covers a broad range of technical fields, including dynamic scheduling and resource allocation in radio networks, time division multiple access (TDMA) radio signaling, voltage regulation in integrated circuits, laser engineering, oncology, immunology, neurology, ophthalmology, molecular diagnostics, formulation science, pharmacokinetics, clinical pharmacology and biostatistics.
Daniel has been recognised as a World Intellectual Property Review Leader and listed in IAM Patent 1000 every year since 2020. He was further recognised in IAM Strategy 300 in 2020–2022, as a Rising Star in Life Sciences by Expert Guides from 2018–2022 and was winner in the UK and Life Sciences categories at the Euromoney Legal Media Group Europe Rising Stars Awards 2019. Daniel has also been recognised as a notable practitioner by Managing Intellectual Property each year since 2021.
Daniel has spent time on secondment in-house to the generic arm of a leading global pharmaceutical company, and spent a year as Associate to Justice Yates of the Federal Court of Australia. Prior to joining Kirkland, Daniel was a lawyer at Australian top tier firm Clayton Utz, and senior associate at magic circle firm Allen & Overy.
Experience
Representative Matters
Since joining Kirkland, Daniel has worked on the following matters:
- InterDigital v Lenovo — Representing Lenovo in SEP/FRAND litigation against major non-practising entity InterDigital, securing major win on FRAND rate in the second ever trial in the UK to determine global FRAND licensing terms.
- Alcon v AMO Development — Represented Alcon in UK and pan-European litigation relating to laser systems for cataract surgery, including securing a win at trial in the UK resulting in the direct revocation of 2 patents and the subsequent submission to revocation of 2 further patents that had been challenged by Alcon.
- R2 Semiconductor v Intel — Representing Intel in defence of patent infringement proceedings brought against fully integrated voltage regulator technology employed in many of Intel’s modern processor products.
- Pfizer v Amgen — Representing Pfizer in relation to UK patent litigation to clear the way for the launch of a major new bispecific antibody cancer treatment.
- Edwards Lifesciences v Meril Life Sciences — Represented Meril in defending multiple sets of infringement proceedings brought by Edwards in relation to technology used in transcatheter heart valve implantation.
- Novartis v Dr Reddy’s — Represented 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.
- Advising innovative biotechnology company in relation to patent issues regarding groundbreaking gene therapy-based treatment.
- Represented global electronic product innovator in defence of UK claims for SEP infringement and FRAND relief by major SEP licensing entity.
- Advised leading healthcare and medical device company in relation to major multinational medical device patent litigation.
- Advised leading biopharmaceutical company in relation to protection of blockbuster biologic product.
- Advised rapidly growing early stage cultured protein company in relation to IP strategy.
- Advised early stage biotech company in relation to IP strategy for highly successful strategic pipeline pivot.
Prior to joining Kirkland, Daniel worked on the following matters:
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Warner-Lambert v Sandoz — Represented Warner-Lambert (a Pfizer group company) in successfully securing urgent injunctive relief to prevent the launch of a full label generic version of Lyrica® (pregabalin), its multi-billion dollar blockbuster treatment for pain.
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Warner-Lambert v Actavis; Warner-Lambert v Mylan — Represented Warner-Lambert (a Pfizer group company) in relation to landmark UK second medical use patent litigation against multiple generic parties concerning Lyrica® (pregabalin), its multi-billion dollar blockbuster treatment for pain. The case is considered to be seminal authority on a wide range of previously unresolved legal issues in relation to the validity and enforcement of second medical use patents in the UK.
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Novartis v Actavis — Represented Novartis in successfully defending the validity and establishing the infringement of a key formulation patent protecting its Stalevo® (levodopa-carbidopa-entacapone) combination treatment for Parkinson's disease.
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Novartis v Apotex; Novartis v Hospira — Represented Novartis in relation to second medical use and dosage regime patent litigation regarding its Zometa® and Aclasta® (zoledronic acid) medicines for the treatment, respectively, of tumour-induced hypercalcaemia and osteoporosis.
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Premaitha Health v Illumina — Represented Premaitha Health, a small UK-based innovative diagnostics company, in a large, multi-patent litigation relating to non-invasive prenatal testing and next generation sequencing technology against Illumina, Inc.
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Advised CRISPR-based biotech startup in relation to European regulations regarding genetic modification of organisms.
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Representing a leading pharmaceutical company in relation to UK, pan-European and global patent strategy for a number of key products across neurology and oncology fields.
Clerk & Government Experience
AssociateJustice YatesFederal Court of Australia2011–2012
Prior Experience
Allen & Overy, London
- Senior Associate, 2016–2018
- Associate, 2015–2016
Clayton Utz
- Lawyer, 2012–2015
More
Thought Leadership
Publications
“Trade Secrets 2023: Law and Practice”, Chambers and Partners Practice Guides, 11 April 2023
“Life Sciences & Pharma IP Litigation 2023: Law and Practice”, Chambers and Partners Practice Guides, 31 January 2023
“Trade Secrets 2022: Law and Practice”, Chambers and Partners Practice Guides, 28 April 2022
“Trade Secrets 2020: Law and Practice”, Chambers and Partners Practice Guides, 28 April 2020
“Crunch Time (Part 1)”, Intellectual Property Magazine, 28 February 2020
“Patent Litigation 2020: Trends and Developments”, Chambers and Partners Practice Guides, 10 February 2020
“CRISPR picture (Part 1)”, Intellectual Property Magazine, 24 January 2020
Co-author of UK chapter in “Antibody Patenting: A Practitioner's Guide to Drafting, Prosecution and Enforcement”, AIPPI Law Series published by Wolters Kluwer, 2019
“The future of precision medicine part 7: public engagement”, Life Sciences Intellectual Property Review, 29 August 2019
“The future of precision medicine part 6: reimbursement”, Life Sciences Intellectual Property Review, 8 August 2019
“The future of precision medicine part 5: keeping pace with regulation”, Life Sciences Intellectual Property Review, 26 July 2019
“How to empower young IP lawyers to be leaders”, Managing Intellectual Property, 24 July 2019
“Patent Litigation 2019: Trends and Developments”, Chambers and Partners Practice Guides, 20 June 2019
“Academia in the City: Bridging the gap between legal theory and practice”, Per Incuriam, 15 February 2019
“The future of precision medicine part 4: diagnosing the diagnostic problem”, Life Sciences Intellectual Property Review, 14 February 2019
Cornel MC, Howard HC, Lim D, Bonham VL and Wartiovaara K, “Moving towards a cure in genetics: what is needed to bring somatic gene therapy to the clinic?”, European Journal of Human Genetics, 19 December 2018
“Patents, platform technologies and new therapeutic modalities”, IAM, 30 November 2018
“Four patent lessons the tech sector can teach life sciences companies”, IAM, 2 November 2018
“The four big trends that will transform life sciences patent strategies”, IAM, 1 November 2018
“The future of precision medicine part 3: translation from research to the clinic”, Life Sciences Intellectual Property Review, 23 October 2018
“The future of precision medicine part 2: data is king”, Life Sciences Intellectual Property Review, 17 July 2018
“The future of precision medicine part 1: challenges and opportunities”, Life Sciences Intellectual Property Review, 13 June 2018
“Disruption and development: the evolving CRISPR patent and technology landscape”, Pharmaceutical Patent Analyst, 8 June 2018
“More than Just a Game (Report 3): Loot boxes and gambling”, IP Kat, 22 February 2018
“More than Just a Game (Report 2): Music, video games, GDPR & technical protective measures”, IP Kat, 22 February 2018
“More than Just a Game (Report 1): eSports”, IP Kat, 17 February 2018
“Patent suits mount up but CRISPR industry rolls on regardless”, Intellectual Property Magazine, 26 January 2018
“CRISPR Update part 1 – Crowded field”, Intellectual Property Magazine, 5 December 2017
“Questions about CRISPR”, Intellectual Property Magazine, 29 March 2017
“AIPPI Congress Report 5: Antitrust and Pharma - seeking a balance”, IP Kat, 29 November 2016
“AIPPI Congress Report 2: AIPPI for the uninitiated – day 1 as a conference ingénue”, IP Kat, 18 September 2016
Seminars
Speaker, “Global Strategies for Biosimilars and Biologics Patent Litigation”, C5 Forum on Pharma & Biotech Patent Litigation, 24 May 2023
Moderator, “Finding FRAND”, JUVE Patent Insight roundtable event, 20 April 2023
Moderator, “Full Disclosure: Impact of Clinical Trials on Pharmaceutical Patenting”, AIPPI World Congress, 11 September 2022
Speaker, “FRAND Valuation and Pricing”, Standards and Patents: Law and Litigation Conference, 7 July 2022
Panellist, “British perspectives on FRAND”, OxViews 7th Intellectual Property and Competition Forum, 22 June 2022
Panellist, “Claims to antibodies - practical tips and tricks from a UK perspective”, Global Biologics, Cell and Gene Legal Summit, 15 June 2022
Speaker, “International Patent Litigation: UK Sufficiency of Disclosure”, European Summit on Pharma & Biotech Patent Litigation, 15 March 2022
Moderator, “Forensics in biotech litigation”, AIPPI Virtual World Congress, 20 October 2021
Moderator, “Reaping the fruits of wise prosecution when litigating BioPharma patents”, AIPPI Virtual World Congress, 19 October 2021
Panellist, Chambers Global Practice Guides: IP Authors Networking V-Meet, 6 October 2021
Panellist, “Global Licensing Considerations Involving CRISPR/Cas9”, Licensing Executives Society USA & Canada Annual Meeting, 27 September 2021
Moderator, “Innovator v Innovator Litigation”, AIPPI World Congress, 13 October 2020
Speaker and workshop leader, “Developing a Robust Trade Secret Framework Within Your Organisation”, C5 Pharma & Biotech Patent Litigation Conference, 24 February 2020
Moderator, “Brexit and IP: an update”, AIPPI World Congress – London, 17 September 2019
Moderator, “Patent litigation strategies in advance of the launch of new biologic medicine”, Managing IP International Patent Forum panel, 6 March 2019
“Somatic gene editing: Legal and regulatory aspects – what is needed to launch genome editing in the clinic?”, European Society of Human Genetics, 18 June 2018
“CRISPR’s IP licensing landscape”, Intellectual Property Magazine Webinar, 5 December 2017
“CRISPR: Legal and regulatory considerations”, CRISPRcon table talk, 16 August 2017
Press Coverage
Quoted “Major CRISPR patent decision won’t end tangled dispute”, Nature Portfolio, 9 March 2022
Quoted “So, just how much are those CRISPR patents actually worth?”, Endpoints News, 8 March 2022
Quoted “Broad Institute’s big US CRISPR patent win does little to clear path for Cas9 licensees”, IAM, 3 March 2022
Quoted “Pharma should make good use of the UPC from the beginning, says Bayer’s head of IP”, IAM, 11 August 2021
Quoted “DABUS: legal team reveals winning strategy and long-term hopes”, Managing Intellectual Property, 5 August 2021
Quoted “How to overcome antimicrobial resistance IP challenges”, Managing Intellectual Property, 24 June 2021
Quoted “How the EPO’s latest CRISPR revocation affects the Cas9 landscape”, IAM, 1 April 2021
Quoted “Virtual trials creating hurdles for expert witness testimony”, Managing Intellectual Property, 28 January 2021
Quoted “EU GMO Directive ‘stunts’ CRISPR patents,” Managing Intellectual Property, 14 January 2021
Quoted “Combatting Covid-19,” Intellectual Property Magazine, 29 October 2020
Quoted “Lawyer reactions: Unwired Planet ‘brings certainty’,” Intellectual Property Magazine, 27 August 2020
Quoted “The needs of the many,” Intellectual Property Magazine, 29 May 2020
Quoted “Editor’s Letter - May 2020,” Intellectual Property Magazine, 1 May 2020
Quoted “Compulsory licensing could create more problems than it solves,” Managing Intellectual Property, 22 April 2020
Quoted “Breaking: EPO revokes Broad’s CRISPR patent,” Life Sciences Intellectual Property Review. 16 January 2020
Quoted “Broad Institute facing tough fight in CRISPR patent appeal hearing,” IAM, 14 January 2020
Quoted “Should I stay or should I go? Private practice v in-house”, Managing Intellectual Property, 18 September 2019
Quoted “Beware the pay gap: Lawyers who shun an in-house switch”, Managing Intellectual Property, 21 August 2019
Quoted “Precision medicine: The personal touch”, Life Sciences Intellectual Property Review, 21 May 2019
Quoted “UCal granted wide-ranging CRISPR rights, but future patent landscape remains uncertain”, IAM, 30 April 2019
Quoted, “The big life sciences patent news from February”, IAM, 11 March 2018
Quoted, “Locus licenses CRISPR tech to Janssen in potential $818m deal”, Life Sciences Intellectual Property Review, 9 January 2019
Quoted, “Top 10 patent cases of the year”, JUVE Patent, 21 December 2018
Quoted, "Revolutionary change in CRISPR patent landscape poses tough questions for life sciences companies", IAM, 27 July 2018
Quoted, "EPO revokes Broad’s CRISPR patent", Nature Biotechnology, 6 March 2018
Quoted, "European Patent Office revokes Broad Institute CRISPR patent", BioWorld, 19 January 2018
Quoted, "CRISPR opposition hearing kicks off at European Patent Office", AgroNews, 19 January 2018
Recognition
The Legal 500 UK, 2024
IAM Patent 1000, 2020–2023
World IP Review — WIPR Leaders, 2020–2023
IAM Strategy 300, 2020–2022
Expert Guides — Rising Star: Life Sciences, UK, 2018–2022
Euromoney Legal Media Group Europe Rising Stars Awards — Winner — Rising Star: Life Sciences; Rising Star: UK, 2019
Managing Intellectual Property IP STARS — Notable Practitioner, 2021–2023
Managing Intellectual Property IP STARS — Rising Star, 2017–2018
Memberships & Affiliations
EPLAW – European Patent Lawyers Association
International Association for the Protection of Intellectual Property (AIPPI)
- Vice-Chair of Standing Committee on Biotechnology
- Vice-Chair of Standing Committee on IP and genetic resources/traditional knowledge
- Member of the UK Group
Credentials
Admissions & Qualifications
- 2012, Admitted to the High Court of Australia
- 2012, Admitted to Practice as a Solicitor of the Supreme Court of New South Wales, Australia
Education
- University of OxfordPostgraduate Diploma in Intellectual Property Law and Practicewith Distinction2016
- University of SydneyLL.B.First Class Honours2011
University of Sydney Law Revue
Minter Ellison Prize for Intellectual Property, 2010
- University of SydneyB.Sc.First Class Honours2009