JUVE Patent

Pinsent Masons – UK 2021

JUVE Comment

The patents practice of this full-service firm is strongly positioned in patent litigation. It is best known in the life sciences sector for its work for long-standing clients, including Teva and Accord. But the team has diversified the pharma practice far beyond its traditional focus on generics manufacturers. It has thus landed several notable originators as clients and branched out into advising biotech companies. The patent team has skilfully taken advantage of its good contacts from the international network, for example from the transaction practice. This harbours further potential for Pinsent Masons to take the field of life sciences to the next level and push ahead into the top league of firms.

The UK team is also successfully expanding its work for tech clients. Pinsent Masons now covers a very broad range of technologies, for instance the power supply to air passengers’ seats for Safran or wind power technology for East Anglia One. The practice already demonstrated its expertise in the telecommunications sector last year in work for Archos in a since settled dispute against Sisvel. However, in this sector the UK team lost Deborah Bould, a partner who demonstrated Pinsent Masons’ SEP expertise when she played the lead role for ZyXEL in the dispute over DSL technology. She was supported by a young counsel, who one competitor praised as “the law firm’s next generation tech patent expert”. There are talented individuals in the practice who can drive its tech sector expertise forward.

Strengths

Disputes over pharmaceuticals mainly for generics manufacturers. Innovator and specialty medicines.

European strategy

The UK team is the most visible of Pinsent Masons’ European patents practices and coordinates the most pan-European patent disputes, for instance for regular clients Teva and Accord. While the Paris office has already carved out a certain market profile, the Munich team is still struggling to establish itself in the highly competitive German market. The firm does not yet have an IP team in the Netherlands, another important European market. Since the UK withdrew from the UPC process, the focus is increasingly on the Dublin office. Here, further expansion makes it likely the Irish capital will become more central to the firm’s UK strategy after Brexit. In European jurisdictions where the firm has no offices, international cases are managed via a partnership with a selected law firm with a patent specialty.

Recommended individuals

Clare Tunstall, Christopher Sharp (“I am impressed: very proactive, good case management”, client; “superb”, competitor)

Team

7 partners, 14 associates

Partner moves

Deborah Bould (to DLA Piper)

Specialties

Strong focus on patent litigation concerning biotechnology and medical devices, pharmaceuticals on the generics and innovator side. Technology, including an increasing number of mobile communication and FRAND disputes. Licensing projects, FTO analysis and transactions.

Clients

Litigation: Safran (defendant) against Lufthansa over electrical power supply device in aeroplanes, Archos (defendant) against Sisvel and Mitsubishi Electric in infringement and revocation case over SEP and FRAND; Zyxel (defendant) against TQ Delta concerning DSL technology including FRAND issues (settled); Juul Labs (claimant) against J Well in infringement proceedings concerning e-cigarettes; Flynn (co-defendant) against Neurim over insomnia drug; Numerous disputes for Accord Healthcare, for example in a revocation case against Allergan over bimatoprost; numerous disputes for Teva (defendant), for example against Gilead in SPC challenge over HIV product Truvada; intervention for British Generic Manufacturers Association in tadalafil case; East Anglia One on patent infringement against IHC IQIP over technology for offshore wind turbines.

Location

London, Birmingham