JUVE Comment

Thanks to its strong position in life sciences patents, this mixed patent firm has seen stable development in the second year of the coronavirus pandemic. Both its prosecution and litigation arms 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. But the team covers the whole spectrum of pharma products, from traditional drugs to biologics. The litigation practice’s reputation is primarily based on its close ties to Pfizer, which the litigators recently represented in several lawsuits such as against MSD, or against Regeneron involving antibodies and vaccines before the UK High Court and Court of Appeal. The firm also boasts an excellent relationship with biotech company Genentech, which it advised on SPC patents.

The litigation team is active across a wide technical spectrum beyond this, advising dSpace, for instance, in a now-settled case concerning control units and Manthorpe on building products. Mobile communications suits play a secondary role, unlike at competitor firms such as Taylor Wessing and Freshfields. A large series of proceedings for Wiko against Philips recently came to an end.

The firm does, however, have several proceedings involving electronic products in the pipeline. But the litigation team is far from harnessing the full potential offered by the strong prosecution practice with such high-profile clients as Amazon, Google, Samsung and Toshiba.

Thanks to its broad presence in the UK with eight offices, Marks & Clerk is clearly ahead of most of its competitors in prosecution work for innovative UK SMEs. Plans to open another office in Leeds did not materialise.

In terms of staff, there have been some recent shifts in the partnership. Marks & Clerk appointed six patent attorneys covering the entire technical spectrum to partner, but also lost four. Two from Birmingham and Aberdeen launched their own firm. One partner from Edinburgh retired and a Cambridge partner left Marks & Clerk to an unknown destination. Overall, however, the partnership remains robust across the various generations and practices. The firm also streamlined its structure as a result of Brexit. To better serve European trademarks from the UK, it integrated the Luxembourg office into the UK firm. This could pay dividends sooner or later for the patent litigation practice, as Luxembourg will be the seat of the UPC Court of Appeal. But for the time being, Marks & Clerk is only using the office for validation work on IP rights.

Strengths

Pharma cases mainly for originator drug manufacturers, prosecution across a breadth of 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. In litigation work, especially in the life sciences sector, the firm is currently focusing on its well-known UK practice among other things, to remain attractive as a cooperation partner in pan-European cross-border disputes and at the UPC.

Another option in the long term would be to establish its own litigation team on the continent with two offices in France and one in Luxembourg. Now, with the UPC likely to open doors in 2022, the firm already has offices at two central UPC locations Paris and Luxembourg. To serve clients in both UPC and UK proceedings as a one-stop shop, 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, could now be an excellent basis to play an even more important role in pan-European litigation. Because one fact sets the firm apart from strong competitors like Hoffmann Eitle, Grünecker and Carpmaels: 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, David Robinson (digital communication and computer technology), Ed Round (electronics), Jonathan Stafford (pharma and biotechnology)

Team

25 lawyers, 118 patent attorneys

Partner moves

Douglas Rankin, Stephen Blake (both own firm), Steven Gurney (unknown), Maureen Kinsler (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.

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 (settled 2021); Manthorpe (claimant and defendant) against Alumasc regarding infringment of building products; Manitou (defendant) against JCB regarding revocation and infringement over control units for telehandlers; frequent litigation for Daiichi Sankyo across the EU against generic drug manufacturers; frequent litigation for Genentech; dSpace (defendant) against Add2 regarding revocation and infringement over automotive electronic control units (settled 2021). Prosecution: Patent filing (including at the EPO) for Amazon, Bridgestone, Canon Medical Systems, Daiichi Sankyo, Gilead, Google, Hewlett Packard, Micron, Ricoh, Samsung, Thales, Toshiba, TTI Ltd. (mostly public knowledge). Advice: DS Bio and Fluoretiq regarding transactions; Reagent Genie Ireland and Smart separations regarding transactions and portfolio management, Sensory Design & Technology regarding transactions and licences.