JUVE Comment

This large mixed patent firm has operated for years with a mixed team consisting of patent attorneys and lawyers. Its litigation team enjoys a good reputation for pharma cases. This not only applies to the lawyers’ work on infringement and nullity suits, but also the patent attorneys’ work in EPO proceedings. Marks & Clerk is firmly established in litigation for manufacturers of traditional pharmaceuticals and recently underlined this with its first instruction from Wyeth. Until now, the firm had not been seen litigating for a Pfizer subsidiary before the UK courts. Its work in biologics is not on a par with its pharma work, even though Marks & Clerk is involved in numerous proceedings concerning antibodies. The patent attorney practice has a strong focus on electronics and advises clients such as Amazon, Google and Samsung, which are active in mobile communications and often involved in major court cases. Despite a team around Graham Burnett-Hall representing Wiko in a dispute with Philips over mobile applications involving FRAND, M&C’s litigation team does not have the same presence here as mixed IP firm EIP, or pure litigation boutiques such as Bristows and Powell Gilbert. Unlike other large patent attorney firms such as Carpmaels, Marks & Clerk’s fee earners are less visible in the market than those of other outfits. This is partly due to the firm’s broad presence across eight UK offices, but also the fact that, despite a long tradition as a mixed firm, the patent attorneys and lawyers operate in two different companies under the Marks & Clerk brand. It is repeatedly commented upon by competitors that the solicitor side of the practice lacks in firepower even though in pharma litigation there is plenty of evidence to the contrary. And in prosecution work for innovative UK SMEs, Marks & Clerk is clearly ahead of competitors such as Carpmaels which focuses heavily on London.

Strengths

Pharma cases mainly for originator drug manufacturers, prosecution for pharmaceutical, electronics, and medical device patents.

European strategy

Unlike many of its UK competitors, such as Carpmaels or Mathys & Squire, Marks & Clerk has decided not to open an office in Munich, home to the EPO, so as to avoid disrupting its bilateral relations with German IP law firms. It is present on the continent with two offices in France and one in Luxembourg. The firm thus already has offices at two central UPC locations and would have a foot in the door of the new court if it launches without the UK. The question will then arise as to whether the firm will take on local litigators on the continent. In this case, an office in Munich would become more pressing. Marks & Clerk’s mixed approach, tried and tested over many years, would provide a good basis for litigation work at the UPC. But regardless of the uncertainty surrounding the European patent court, Marks & Clerk has taken steps to become a global IP firm much earlier than its main rivals in the UK and Germany, with two offices in China and Canada and one each in Malaysia and Singapore.

Recommended individuals

Graham Burnett-Hall, Michael Moore; patent attorneys: Jonathan Stafford; Ed Round

Team

Litigation: 8 partners, 13 associates. Patent prosecution: 111 patent attorneys

Partner moves

Will James (to Osborne Clarke)

Specialties

Full-service patent prosecution practice with a strong focus on electronics and life science patents, including revocation cases and EPO proceedings. Litigation mostly for pharmaceutical companies, as well as some electronics and mechanics cases. Further offices in Asia, two in Canada and three in continental Europe.

Clients

Litigation: Wyeth (defendant) against Merck Sharp & Dohme regarding infringement, revocation and EPO proceedings over formulation of pneumococcal vaccines; Genentech (defendant) against Eli Lilly regarding revocation and declaration of non- infringement claims over antibody ixekizumab; Wiko (defendant) against Philips over mobile communication patent including FRAND issues; frequent litigation for Chugai Pharmaceuticals. Prosecution: patent filing for ABB, Amazon, Bridgestone, Google, Ricoh, Samsung, Saudi Arabian Oil Company, TTI Ltd. (all public knowledge).