JUVE Patent

Dentons – UK 2021

JUVE Comment

The well-positioned mixed patent practice of international law firm Dentons is especially visible in London for technical patents, e.g. for telecommunications solutions providers and fibreoptic cabling. In the UK, the firm is well-regarded for its use of patent attorneys alongside its litigation lawyers, leading to an array of clients in the patent filing field. In London, aside from traditional patent attorney firms that have branched out to litigation such as Marks & Clerk or EIP, only Simmons & Simmons and CMS Cameron McKenna are currently following the mixed path like Dentons. However, although the firm is strong in patent litigation for technology disputes, the London team is yet to be involved in any major FRAND or SEP disputes. This could change since the London and Paris patent teams team have built up good relations to a large US mobile communications manufacturer.

The London team shows promise in expanding its pharmaceutical clients on the patent filing side, such as a new win for one pharmaceutical company with a focus on genomic medicine development. The filing work has been bolstered through its hiring of several patent attorneys.

On the life sciences side, the firm also demonstrates SPC expertise in its work for Zentiva. However, the London team’s lack of strong counterparts on the continent, especially in Germany, remains a hindrance to its patent capabilities. On the other hand, strong connections to its offices in the US have been fruitful, for example in the referral of patent filing work for electric vehicle and energy company Tesla to the London patent team.

Another boost to the firm’s reputation is the appointment of Campbell Forsyth as a deputy in the UK judiciary.

Strengths

Patent disputes in tech, including fibreoptic cables and consumer products. Mixed approach with litigators and patent attorneys.

European strategy

Despite being a global firm, Dentons remains somewhat on the periphery of the major players in the European patent market. However, it is taking steps to increase its visibility, for example by strengthening its patent team with lateral hires in Amsterdam. The firm has also opened an office in Dublin which currently has some life sciences capabilities. In addition it has a well-established patent team in Paris.

In Germany, until recently, the firm’s offices in Düsseldorf and Munich had no patent presence. But a key focus is currently to build up its Munich patent office, which is currently primarily focused on commercial disputes. Its recent lateral hire of a patent attorney from Vossius & Partner is helping bolster the patent team there. Adding an experienced litigator as lateral would be a strategically sound move given the possible start of the UPC.

Team

2 partners. Patent prosecution: 18 patent attorneys

Specialties

Full-service advice in patents, including litigation and prosecution, with the firm’s own patent attorneys. Also antitrust and regulatory work.

Clients

Litigation: Zentiva (claimant) against Gilead over SPCs; Emtelle (claimant) against Hexatronic over fibreoptic cables (settled); Positec Tool against Husqvarna over outdoor power tools. Patent prosecution: patent filing for ARM Holdings, Benevolent AI, BIOS Health, Dexcom Divergent Technologies, Positec Power Tools, Pindrop Security, Raytheon, Royal Mail, Sarcos, Starkey Laboratories, Tesla. Advise: client in cross-jurisdictional IP matters; client over dispute settlement.

Location

London