Robin Jacob


Sir Robert Raphael Hayim Jacob, PC, known as Robin Jacob, is a former judge in the Court of Appeal of England and Wales.

Personal life

Jacob's father was Sir Jack Jacob, a Senior Master of the High Court who is well-known for editing the White Book on civil procedure in the UK.

Education and professional career

He read Natural Sciences at Trinity College, Cambridge and law at the London School of Economics. He was called to the bar by Gray's Inn in 1965. From 1976 to 1981, he was the Junior Counsel for the Comptroller of Patents and for Government departments in intellectual property. He took silk in 1981. In 1993, he was appointed a High Court judge and to the Court of Appeal in 2003.
His primary area of expertise is intellectual property rights. He was admitted to the IP Hall of Fame in 2006. He was awarded the Outstanding Achievement in IP award by MIP in 2012. The position he held before includes member of the Scientific and Advisory Board of the European Patent Office and the European Commission’s Expert Group on the development and implications of patent law in the field of biotechnology and genetic engineering. He is the President of the Intellectual Property Judges’ Association and the Chairman of the Advisory Board concerning appointment and training of Judges to the Preparatory Committee for the Unified Patent Court.
He retired from the Court of Appeal in March 2011 to take up his current position as the Sir Hugh Laddie Chair in Intellectual Property Law at the , University College London. However, in accordance with of the Senior Courts Act 1981, he has continued on occasion since that date to sit as a judge in the High Court and the Court of Appeal until April 2015. Jacob is currently a door tenant at 8 New Square Chambers.
In 2018, Jacob took up the post of a Justice at the Astana International Financial Centre in the capital of Kazakhstan.

Selected cases in which Jacob appeared as counsel

  • Interlego AG v Tyco Industries UKPC 3 - in which he successfully argued that designs for Lego's bricks were not protected by copyright
  • Smith Kline & French Laboratories v Evans Medical 1 FSR 561 - in which it was held that private acts can infringe upon a patent if they are done for commercial purposes
  • Lux Traffic Controls v Pike Signals RPC 107 - it was held that a prototype tested publicly such that an observer would be able be to figure out how it worked would be disclosed, and thus constitute prior art

    Judgments

High Court

  • Henry Brothers Ltd v Ministry of Defence RPC 693 - concerning a patent for a prefabricated blast-proof building designed for use in Northern Ireland during the Troubles
  • EWHC 226 - where he held that the mere fact of encryption will not make information confidential for the purposes of the action for breach of confidence

    Court of Appeal

  • Walton v Independent Living Organisation EWCA Civ 199, ICR 688, IRLR 469 - UK labour law, regarding the National Minimum Wage Act 1998
  • ' EWCA Civ 159 - UK trademark law, on the test of confusion
  • ' EWCA Civ 565 - concerning copyright in unfinished works by Lalande that had been completed by the claimant
  • ' EWCA Civ 145 - concerning a patent for a cockroach trap
  • ' FSR 37 - he set out the prevailing test for inventive step, reformulating the test set out by Oliver LJ in the Windsurfing case
  • Aerotel Ltd v Telco Holdings Ltd RPC 7 - UK patent law, regarding the excluded subject-matter in the UK patent law
  • ' EWCA Civ 192 - notable for the graphical illustration of the importance of consistency in interpreting patent claims in relation to validity and infringement:
    ... Professor Mario Franzosi likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze.
  • ' EWCA Civ 936 - UK design law
  • Jacob gave the leading judgment in DWF LLP v Secretary of State for Business Innovation and Skills, "at the invitation of Arden LJ".

    Publications

  • Arms