JUVE Comment

Carpmaels has for years been one of the best-known patent attorney firms with one of the highest filing track records in the UK. Even across Europe, Carpmaels is on a par with the German market leaders such as Hoffmann Eitle and Vossius & Partner, especially when it comes to patents in pharma and life sciences. Some of the firm’s patent attorneys such as Cameron Marshall and Hugh Goodfellow have an outstanding reputation in these fields. This also goes for their work in disputes regarding life sciences patents, including before the EPO Boards of Appeal. “One of the absolute top firms in Europe for pharma patents,” says one competitor. Another praised how “the firm’s advice is very creative, sometimes pushing back the borders of what is possible”. Carpmaels’ strength in the prosecution of pharma patents means the patent litigation practice is also increasingly respected for pharma litigation. This is partly thanks to work for originator drug manufacturers such as Fibrogen, Celgene and Novartis. The team of lawyers around Ian Kirby benefits from the good ties to US companies and coordinates major Europewide disputes over traditional drugs and innovative biologics. The firm has advised originator drug manufacturers even more intensively on defending their key patents from attacks from competitors in UK revocation cases. But compared to the market leaders Carpmaels’ litigation team is considerably less active in tech patents than in life sciences, however. In the long term the team will have to boost its presence in top cases here, e.g. mobile communications or semiconductors, if it is to catch up to the top teams in the London patent market, such as Bristows and Powell Gilbert. That will be a challenge, however, since Carpmaels does not have the same solid client base on which to build here as it does in life sciences. Nevertheless, its patent attorneys are heavily defending patents owned by Intellectual Ventures in EPO appeals, albeit not directly in the infringement cases that are mainly playing out in Germany and France. However, some of the appeals are related to cases before German courts. Furthermore, Carpmaels saw success with its prosecution work for a streaming service. The litigation for Bissell against Philips in a case concerning vacuum cleaners underlined the litigation team’s breadth in tech.

Strengths

Pharma disputes for originator drug manufacturers, including a strong practice for EPO oppositions and appeals. Integrated approach of technical experts and lawyers.

European strategy

Despite having offices in Dublin and Munich, Carpmaels bundles the majority of its patent attorneys and litigation practice in London. This sets it apart from most of its direct competitors expanding in the UK, such as Marks & Clerk, or which pursue a clear European strategy such as Hoffmann Eitle. The Munich Carpmaels office is more of a representative office: it does not focus on German work. Up to now, Carpmaels has eschewed opening more offices on the continent in potential UPC locations. Instead, the firm relies on its relationships to individual IP firms on the European mainland. Given the uncertainty surrounding the new court, it is a strategy that could pay off. If the UPC launches without the UK, however, a recalibration will be necessary. Without local lawyers in UPC cities, Carpmaels might find it difficult to convince its strong US client base of its UPC expertise. Other London litigation practices, such as the internationally integrated teams of Allen & Overy, Hogan Lovells and Marks & Clerk, will be better able to prove their merit. These could be at an advantage when it comes to procuring coordination work for European litigation. Since this is also an important business field for Carpmaels, Dublin could prove to be a fortuitious move, as it could end up being an important location if the UK is not part of the UPC. In addition, Carpmaels’ integrated mixed team of lawyers and patent attorneys is fully in line with the current trend and is one step ahead of the Dutch and French patent attorney firms. Some competitors find the mixed approach of the firms remarkably strong. “The most successful mixed firm in the London market,” says a competitor.

Recommended individuals

Ian Kirby, David Wilson; patent attorneys: Cameron Marshall (“very visible throught Europe”, competitor; pharma and biotechnology), Hugh Goodfellow (“gold standard in the pharma and biotechnology sectors”, competitor), Harvey Adams (“very creative advice”, competitor; pharma and biotechnology, chemistry), Edward Oates (pharma and biotechnology), Gary Small (digital communication and computer technology, electronics)

Team

Litigation: 5 partners, 10 associates. Patent prosecution: 71 patent attorneys

Partner moves

Harvey Adams (from Mathys & Squire)

Specialties

Full-service patent prosecution practice with a strong focus on life science patents, including revocation cases and EPO proceedings. Litigation mostly for life science companies, as well as some cases in electronics and mechanics. Own practice for transaction-related IP advice.

Clients

Litigation: Fibrogen (defendant) against Ackebia and GSK and others in revocation cases and EPO oppositions over HIF stabiliser for treatment of anaemia; Celgene (defendant) against different generic drug companies in revocation case over Revlimid patents; Norgine (claimant) against Cantel in infringement and revocation dispute over Endocuff; Bissell (defendant) against Philips over vacuum cleaners; frequent work for Teva and Novartis. Prosecution: filing and oppositions for Gilead, Incyte, Johnson & Johnson, Vertex. Patent filing: Biosense Webster, DePuy, Ethicon, Micron, Stanford University. EPO oppositions for Novartis, Align Technologies, Eli Lilly over Foresto key patent, Takeda over Entyvio antibody, Stanford University over phagocytic anti-CD47 antibody; Highview Power on FTO and opposition over energy storage technology; Regeneron against Amgen over chronic eczema drug dupilumab and cholesterol-lowering drug Repatha.