JUVE Comment

For years, Carpmaels has enjoyed a strong position in the London market. It is one of the top names in Europe for filing pharma and biotech patents, as well as for complex EPO oppositions and appeals. “Very impressive setup as a classic originator firm”, one competitor comments. “Their lawyers are extremely professional”, said another.

Some of the firm’s patent attorneys, such as Cameron Marshall, have an outstanding reputation. Carpmaels plays a prominent role in EPO oppositions for Novartis concerning Afinitor and Regeneron regarding Praluent. The coronavirus pandemic is unlikely to change this position much. On the contrary, Carpmaels boasts excellent relationships with many originators and medical product manufacturers, which are currently profiting from the pandemic. It is probably only the two German firms Hoffmann Eitle and Vossius & Partner which have comparable sector ties in Europe.

Like Hoffmann Eitle and Vossius & Partner, Carpmaels operates in the life science sector with joint teams of patent attorneys and litigators making an impact. The small litigation team around Ian Kirby and David Wilson, which focuses primarily on life sciences disputes, conducts extensive proceedings for Fibrogen, BMS, Johnson & Johnson and Novartis before the UK patent courts. It is not unusual for these to include revocation cases for pharma and biotech patents as well as SPCs. Taking over the UK defence of Ceva Sante in the pan-European dispute over an animal drug against Bayer was the highest accolade, however. The French corporation transferred the litigation from another UK firm to Carpmaels while proceedings were underway. With such instructions, the firm is operating on a par with the top litigation firms for life sciences patents in the UK, such as Powell Gilbert, Herbert Smith Freehills and Allen & Overy.

However, despite its best efforts, the Carpmaels litigation team has not reached this level in the electronics and mobile communications sector. Although it did recently land an instruction for a telecoms company regarding a patent for contact centre payment systems. The ongoing litigation for Bissell in a case concerning vacuum cleaners underlines the litigation team’s breadth in technology. Carpmaels’ European competitor Vossius has shown how a mixed firm can build up a real litigation practice with a tech focus. But, through strategic investments in laterals with mobile communications experience and new prosecution instructions. Carpmaels does have some notable prosecution clients in this field, including Intellectual Ventures, Barclays Bank and Spotify. However, this is not a strong enough foundation for it to meaningfully compete with UK market leaders Powell Gilbert and Bristows.

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 those 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.

As it is clear that the UPC will launch without the UK, if at all, Carpmaels might recalibrate this strategy and tighten its links to continental firms. 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 with strong focus on life science disputes, such as the internationally integrated teams of Allen & Overy and Hogan Lovells, will be better able to prove their merit. These could be at an advantage when it comes to procuring coordination work for European litigation.

Opening an office in Dublin could prove to be a fortuitous move, as Ireland 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. It is one step ahead of the Dutch and French patent attorney firms.

Recommended individuals

Ian Kirby (“our experience of him in litigation was first-rate”, competitor), David Wilson; patent attorneys: Harvey Adams (pharma and biotechnology, chemistry), Stephen Duffield (“the rising star of the life sciences practice”, competitor; pharma and biotechnology), Hugh Goodfellow (pharma and biotechnology), Simon Llewellyn (“manages pan-European pharma disputes on a Champions League level”, competitor; pharma and biotechnology), Cameron Marshall (“very present in almost all high-profile cases on the originator side”, competitor; pharma and biotechnology), Edward Oates (pharma and biotechnology), Gary Small (digital communication and computer technology, electronics)

Team

Litigation: 5 partners, 9 associates. Patent prosecution: 68 patent attorneys

Partner moves

Richard Jackson (retired)

Specialties

Full-service patent prosecution practice in broad field of technologies, 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: Ceva Santé (defendant) against Bayer over veterinary medicine; Novartis over breast cancer drug Afinitor; Regeneron over cholesterol-lowering drug Praluent; Teva over multiple sclerosis drug Clift; Fibrogen (defendant) against Akebia and GSK and others in revocation cases and EPO oppositions over HIF stabiliser for treatment of anaemia; BMS/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 EPO oppositions for Eli Lilly, Gilead, Roche, Takeda; Novartis over breast cancer drug Afinitor; Regeneron over cholesterol-lowering drug Praluent; Teva over multiple sclerosis drug Clift; Stanford University over phagocytic anti-CD47 antibody; Highview Power over energy storage technology; Regeneron against Amgen over chronic eczema drug dupilumab. Patent prosecution: patent filing and oppositions for Align Technology, AMO, Barclays Bank, Biogen, Biosense Webster, BMS/Celgene, Ethicon, Icyte, Johnson & Johnson, Leo Pharma, Regeneron, Raytheon, Spotify, Stanford University. Patent filing for DePuy, Vertex. Advice: Harbour Biomed on patent and know-how licence, portfolio management for Barclays Bank.