John Miles
BSc, PhD, Fellow of the Chartered Institute of Patent Attorneys, European Patent Attorney.
Partner in the Biotechnology & Pharmaceuticals group since 1999.
John completed his first degree at the University of Bristol where he was awarded the W E Garner prize for biochemistry in his final year, and undertook his doctoral studies in microbial molecular biology at Sheffield University.
John started his patent career in 1992 at Potter Clarkson, and since then has worked extensively with technology transfer organisations, spin-outs, SMEs and big pharma in securing, defending and opposing patent rights in a range of biotechnological and medical areas as part of their commercial strategies. He has particular expertise in the patenting of cancer-related genes and their uses, vaccines, biotherapeutics including antibodies, immunotherapies, siRNA molecules, biomarkers, industrial enzymes and their uses, DNA analytical methods, stem cell isolation and characterization, medical diagnostics and treatment regimes. John has advised several clients in respect of patent strategy and due diligence for their initial public offering of shares, as well as in relation to private funding rounds, and has helped develop creative patenting and licensing strategies to maximize value in a client's patent portfolio. He has acted in respect of entitlement disputes before the UK Patent Office, and has a significant opposition practice at the EPO having handled over 60 cases largely in the above fields.
In addition to his patent work, John is very well known for his expertise in supplementary protection certificates (SPCs). He has been responsible for coordinating the filing and prosecution of over 200 SPC applications around Europe, and is one of very few people who has taken two SPC cases to the Court of Justice of the European Union (namely Yissum and Georgetown University et al). He has also lectured and published extensively on the subject and contributes the chapter on SPCs to the European Patents Handbook.
Before joining Potter Clarkson, John was a lecturer in biochemistry and molecular biology at Glasgow University, and before that he did post-doctoral research work on mammalian cytochrome P450 genes for Cancer Research UK at Edinburgh University. During his research career, John authored over forty research and review papers for international journals in the fields of biochemistry, molecular biology and genetics, including Nature. While doing his post-doc, John co-invented a P450 pharamacogenetic test, and had the unusual distinction when he joined Potter Clarkson of being able to prosecute the patent to the invention to grant, and successfully defend oppositions to it at the EPO!
During his time at Potter Clarkson, John has held various management positions including training partner and he served on the Board of Management from 2006 to 2010.
