John de Rohan-TrubaMSci

Managing Associate

Solicitor (UK)

Offices: London (UK)

Languages spoken: English

John de Rohan-Truba

John is an intellectual property lawyer who helps clients to commercialise IP rights and resolve disputes arising from IP enforcement.

John’s main expertise lie in patent litigation, having represented clients in patent disputes across the electronics, telecommunications and pharmaceutical sectors.  He has extensive experience guiding clients through the complexities of proceedings before the UK Court, particularly the disclosure (discovery) process, evidence preparation and all aspects of trial.  He is especially familiar with TMT technologies involving communication network operations and protocols, content delivery systems, mobile device software, electronic storage drives and user interfaces.  This enables him to work closely with clients’ technical teams throughout matters, quickly understanding their technologies and providing appropriate strategic advice from the outset.  His TMT experience includes various FRAND disputes arising from the assertion of Standard Essential Patents.

Outside the UK, John regularly provides further litigation support to clients, coordinating parallel EPO opposition proceedings and harmonising strategy with clients’ litigation teams across multiple jurisdictions.  More generally, his litigation experience extends to disputes concerning IP ownership under research and development agreements and other entitlement disputes.

The majority of John’s day-to-day work involves helping clients to resolve disputes early, without the need for court proceedings.  In addition to patents, this frequently involves design, trade mark, goodwill and copyright disputes.  Where appropriate, John often assists clients with formal enforcement options at the pre-action stage, including customs detentions and online listings takedown procedures.

John assists clients across multiple sectors with the assessment and evaluation of IP portfolios arising from clients’ businesses.  He also handles the assignment and licensing of IP rights as well as due diligence on the acquisition of new IP assets.  His work on FRAND disputes provides invaluable insight when negotiating licences involving technologies which utilise standards.  Likewise, John can easily identify and avoid future issues with IP ownership which can emerge when businesses seek to enter into collaboration agreements.

John trained and qualified as a solicitor with another leading London IP firm, and joined Marks & Clerk Solicitors in July 2011.  Outside work, he enjoys playing golf and talking about playing golf; he also enjoys other sports, travel and cookery.


Educational Qualifications

Postgraduate Diploma in Intellectual Property Law and Practice, University of Oxford (2013)

Qualified as a Solicitor in England & Wales (2010)

Legal Practice Course, BPP London (2006)

Graduate Diploma in Law, BPP London (2005)

M.Sci. Astrophysics, University College London (2003)


Example Cases

SanDisk v Kingston

Smartphone/Access v LG Electronics

Rovi v Virgin Media / Tivo

Pet Brands v Wilkinson Hardware & James and Steel Ltd

Sonitor v CenTrak

Astex v AstraZeneca

John de Rohan-Truba works in the following sectors

Aerospace Engineering
Aeronautical Engineering
Electronics
Automotive
IT/Software
Mechanical Engineering
Pharmaceutical
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Business Intelligence
Newsletters

Business Intelligence

POSTED 22 March 2019
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Articles

Unwired Planet: one small SEP for man, one giant leap for FRAND-kind

POSTED 22 March 2019

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