JUVE Comment

Thanks to its high-profile clients in pharmaceuticals and medical devices, this mixed patent firm has experienced steady growth over the past year. The firm’s substantial prosecution practice has long ranked among Europe’s elite. Recently, the mixed teams have leveraged their strong visibility in EPO oppositions and impressive UPC debut to enhance their litigation profile in the UK market.

The litigation team’s work for Pfizer against GSK concerning vaccines, both before the UK courts and at the UPC, has particularly impressed competitors. Marks & Clerk appears to be establishing itself as a leading authority on vaccine-related matters in the UK, attracting further significant instructions in this sector. In medical devices, the intensive work of a patent attorney team for Meril Life Sciences in EPO oppositions has drawn considerable attention, connected to one of the most extensive pan-European litigation campaigns, including UPC proceedings.

However, the litigation team’s visibility outside life sciences remains limited. While it handles smaller national proceedings, the patent prosecution practice counts heavyweights such as Samsung and Google among its clients, particularly concerning mobile communications and electronics patents frequently litigated across Europe. Strengthening the team with an experienced litigator could therefore prove strategic.

European set-up

With offices worldwide, Marks & Clerk stands as one of the most international IP firms headquartered in Europe. It regularly conducts European litigation for international life sciences clients such as Meril, Pfizer, and Daiichi Sankyo, with recent focus shifting towards EPO and UPC proceedings.

Alongside Dehns, J A Kemp and Carpmaels, Marks & Clerk emerged as one of the most visible UK firms at the UPC in its early days. Jonathan Stafford, who handles EPO oppositions for Meril Life Sciences, is now heavily involved in various proceedings against Edwards Lifesciences regarding heart valves at the UPC alongside Hogan Lovells, Gide, and Sandart. Among other cases, this intense dispute between the two competitors promises to maintain Marks & Clerk’s high profile in UPC proceedings.

The firm represents Sumi Agro as lead counsel in infringement and PI actions brought by Syngenta concerning herbicides. A team led by Mike Gilbert has also expanded its representation of regular client Pfizer in the GSK dispute from UK proceedings to the UPC. However, unlike many Marks & Clerk patent attorneys, the firm’s lawyers are not yet authorised to represent clients before the UPC, temporarily limiting expansion of their UPC activities. Opening a Dublin office to secure lawyer admission via the Irish route appears a logical solution.

Strengths

Patent cases mainly for originator drug manufacturers and regarding medical devices.

Recommended individuals

Mike Gilbert (“best litigator in life sciences”, competitor); patent attorneys: Will Nieuwenhuys, Jonathan Stafford (“good successes at the EPO”, client)

Team

14 lawyers, 119 patent attorneys

Partner moves

Martin Hyden (from Wynne Jones in 2024), Graham Burnett-Hall (to Shoosmiths in 2024), Sheila Wallace (retired in 2024)

Clients

Litigation: Pfizer against GSK regarding features of vaccine for respiratory syncytial virus; Manitou against JCB over control units for telehandlers (settled in 2024); Meril Life Sciences in EPO opposition regarding heart valves; the Broad Institute in EPO proceedings regarding CRISPR/Cas patents; MG Electric in entitlement action at UKIPO over monitoring device; frequent litigation for Daiichi Sankyo, Genentech, Genuit Group, Roche, Sumitomo Pharma.