JUVE Comment

Bird & Bird’s patents practice is one of the leading teams in Europe. And in the UK over 2020, it has challenged the national market leaders more than in previous years. The London team is traditionally well positioned in litigation involving life sciences patents and made a name for itself here in work for regular clients like Takeda and Allergan. Medical technology manufacturers also rely on Bird & Bird, among them New Zealand company Fisher & Paykel in a major series of proceedings.

In telecommunications, the team led by Richard Vary raised its visibility, conducting large SEP proceedings for Sisvel and Mitsubishi against Xiaomi at the High Court. Once again, work for Nokia drew public attention. Richard Vary advised Nokia regarding a complaint by various auto suppliers to the EU Commission relating to the German connected cars claims. The London team had not conducted any litigation for its important regular client before the UK patent courts for some time, because Nokia had concentrated its proceedings in Germany. This led to unfounded speculation in the market about an end to the London team’s relationship with the client. However, despite these two success stories, in mobile communications the UK practice has not yet regained its previously powerful presence, and is not yet back on a par with the market-leading teams or, for example, Allen & Overy.

One of the biggest challenges facing Bird & Bird is transferring the market image of the established partners Morag Macdonald and Richard Vary to younger partners. A ray of hope is Jennifer Jones’ work for the Broad Institute in the EPO opposition involving CRISPR/Cas. The practice will most likely absorb the loss of a junior partner with pharma expertise to Osborne Clarke thanks to its strong headcount.

Bird & Bird is also widening its radius beyond the dominant life sciences and telecommunications sectors. When it comes to cross-border patent disputes, the London practice has a particular asset in its close cooperation with sister teams in other countries. For example, a pan-European team from London, Amsterdam, Munich and Brussels advised brewing company AB InBev in a dispute against Heineken over a technology for beer taps. The UK patent practice is also pressing ahead in other advisory fields, including licensing and transaction-related due diligence for IP. These harbour an opportunity to expand the client portfolio and target new clients for litigation work.

Strengths

Strong inter-office cooperation. High-profile pharmaceutical cases, especially for generic drug manufacturers. Acting in and coordinating pan-European telcommunications litigation.

European strategy

Bird & Bird is one of the top European players when it comes to international, cross-border expertise. It has not only one of the largest teams, but also very renowned partners in most jurisdictions. The teams in Düsseldorf, Hamburg and Munich in particular continue to operate at the top of the German market. The teams in Amsterdam, London and Paris are also strongly-positioned. Thanks to its Milan office, Bird & Bird is in pole position if the central division of the UPC, previously planned for London, moves to Italy. As well as strong visibility in these important UPC venues, the firm bolstered its Madrid office with an additional patent partner.

Unlike other large international firms such as Allen & Overy or Freshfields, IP is deeply rooted in the overall Bird & Bird structure. The patent team has therefore plenty of time to develop young partners to ensure a smooth generational change. In Paris there is room for a third, young partner, whom the firm has to appoint in good time.

In London Bird & Bird is operating in an uncertain environment with Brexit looming. It must find a strategy to ensure that the shift of the power structures between its national teams does not hinder the development of the European practice. This is all the more important since Allen & Overy and Hogan Lovells are developing their teams specifically for pan-European litigation in cross-border cases. It is therefore a welcome development that Bird & Bird’s German patent attorneys offer a useful interface for close cooperation with the other European teams.

Recommended individuals

Richard Vary, Jane Mutimear (“know their stuff, dedicated and indispensable”, client about both), Neil Jenkins, Morag Macdonald, Jennifer Jones, (“excellent team with a wide breadth”, competitor about all)

Team

13 partners, 25 associates, 1 of counsel

Partner moves

Tim Harris (to Osborne Clarke)

Specialties

Strong focus on patent disputes. Pan-European litigation specialising in life sciences as well as mobile communications. Also mechanics patents. Advice on technology transfer and licensing in FRAND. Some transactional work. Own patent filing practice in its Munich office.

Clients

Litigation: AB InBev (defendant) against Heineken over beer dispensers (settled); Fisher & Paykel (claimant) against Flexicare over medical device; Broad Institute (defendant) against eight opponents in EPO opposition over CRISPR/Cas patent; Sisvel and Mitsubishi Electric (claimants) against Xiaomi over mobile communications and on FRAND determinations; Allergan (claimant) against Aspire over ophthalmic solutions; Molycorp Chemicals & Oxides (defendant) against Anan Kasei and Rhodia concerning automotive catalysts; Ablynx and Vrije Universiteit Brussel (claimants) against VHsquared and Unilever on immunoglobulin antibodies; frequent litigation for Nokia (all public knowledge).