JUVE Comment

Thanks to its strong position in life sciences patents, this mixed patent firm has made good headway in the year of the coronavirus pandemic. This allowed the patent attorney branch at the Birmingham office to complete a generational change with two retirements and at the same time appoint three new partners in Glasgow and London.

Both its prosecution and litigation arm enjoy a good reputation for their work in the pharma and medical technology sector. 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, underlining this with its ongoing work for Wyeth against MSD. The firm, is however, involved for biotech company Genentech in numerous proceedings concerning antibody drugs.

The patent attorney practice has also a strong focus on electronics and automotive patents and advises clients such as Amazon, Google, Samsung and Toshiba. The litigation team around Graham Burnett-Hall was recently very active in cases involving electronic control units. But despite the team representing Wiko in a dispute with Philips over mobile applications involving FRAND, Marks & Clerk’s litigation team still does not have the same presence here as firms like EIP, Gowling or Simmons & Simmons. When it comes to pharma cases, however, the firm is now almost on a par with its fiercest competitor Carpmaels & Ransford.

Unlike other well-known patent attorney practices, such as Carpmaels, D Young or Kilburn & Strode, which pursue a one- or two-office strategy, Marks & Clerk stands out for its broad presence in the UK with eight offices. As a result, in prosecution work for innovative UK SMEs, Marks & Clerk is clearly ahead of most of its competitors. But its fee earners are less visible in the market than those of other outfits. Unusually, the patent attorneys and lawyers operate in two different companies under the Marks & Clerk brand. This fact is repeatedly commented upon by competitors, who see the firm as less integrated and thus less effective in big litigation cases. Marks & Clerk, however, is holding firmly to this approach and sees no disadvantage in terms of the degree of integration of the two professions. The integrated cooperation between the patent attorneys and lawyers in numerous high-profile pharma cases underlines this.

Strengths

Pharma cases mainly for originator drug manufacturers, prosecution in broad technical fields.

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 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. But after Brexit and UK’s departure from the UPC project the urgent question arises as to whether the firm will take on local litigators on the continent. In this case, an office with local litigators in Germany, especially in Munich, would complete the offering. 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 UPC start, it has taken steps to become a global IP firm much earlier than its main European rivals, with two offices in China and Canada, and one each in Malaysia and Singapore.

Recommended individuals

Graham Burnett-Hall, Michael Moore; patent attorneys: Kirsteen Gordon (“very happy with her in the medical technology field”, client), David Robinson (“outstanding specialist for machine learning patents”, competitor; digital communication and computer technology), Ed Round (electronics), Jonathan Stafford (pharma and biotechnology)

Team

Litigation: 6 partners, 14 associates. Patent prosecution: 94 patent attorneys

Partner moves

Tom Somervell, David Ward (both retired)

Specialties

Full-service patent prosecution practice with a strong focus on electronics, computer 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, Canada and continental Europe.

Clients

Litigation: Pfizer/Wyeth (defendant) against MSD regarding infringement, revocation and EPO proceedings over formulation of pneumococcal vaccines; Pfizer/Rinat (defendant) against Regeneron and Teva regarding revocation and infringement over anti-NGF treatments for osteoarthritis; Genentech (defendant and counterclaimant) against Eli Lilly regarding revocation and infringement claims over antibody ixekizumab; Genentech (defendant) against UCB Biopharma regarding revocation claims over antibody bimekizumab; Genentech (appellant) against UK IPO regarding the term of the UK SPC for Lucentis; Manitou (defendant) against JCB regarding revocation and infringement over control units for telehandlers; Dspace (defendant) against Add2 regarding revocation and infringement over automotive electronic control units; Wiko (defendant) against Philips over mobile communication patent including FRAND issues; frequent litigation for Daiichi Sankyo across the EU against generic manufacturers. Prosecution: patent filing at the EPO for Amazon, Babylon Health, Bridgestone, Canon Medical Systems, Daiichi Sankyo, Gilead, Google, Ricoh, Samsung, Toshiba, TTI Ltd. (mostly public knowledge).