JUVE Comment

This well-positioned London patent team has carved out a solid reputation by litigating for notable generics manufacturers against innovators. Work for regular client Teva kept the team very busy, for example against Bristol-Myers Squibb and Pfizer in a revocation action and parallel infringement proceedings over the anticoagulant drug Eliquis. In one of the first lawsuits concerning SPCs in the UK post-Brexit, Pinsent Masons was active for Teva against Janssen involving the schizophrenia drug Xeplion, a case that raises novel issues of SPC regulation.

Alongside its traditional focus on advice to generics manufacturers, the patent team has successfully been working on widening its client base for some years. Here, it focuses on the clear specialties of Pinsent Masons: the technology, energy and life sciences sectors. The patent practice thus not only won some well-known innovators, but also stepped up advice to clients in a broad range of other technologies. For example, the team has made particular headway in the energy sector, shown through advice and litigation for East Anglia One in connection with wind power technology. The patent practice, which competitors say is “on the up”, could build on the excellent contacts of Pinsent Masons’ energy practice even more. There is great potential here, particularly related to renewable energies, for the firm to position itself as a specialist for advice on green tech patents – a field into which few competitors have advanced so far.

The London patent team has also drastically boosted its manpower. The arrival of a team of six led by Gareth Morgan from CMS Cameron McKenna strengthens life sciences litigation, while partner Gina Bicknell, who came from Freshfields, brings experience in IP transactions. The associate level also saw substantial growth. These moves make Pinsent Masons one of the largest teams in the market and position it nicely to improve its track record in the broader tech sector.

Strengths

Disputes over pharmaceuticals mainly for generics manufacturers.

European strategy

The signs at Pinsent Masons are clearly pointing towards an expansion of the European practice. The UK team, which has recently raised its headcount significantly, is still the most visible of the firm’s European patent practices.

But despite its presence in most of the major European patent locations, Pinsent Masons rarely appears in large pan-European litigation for key clients with cross-border teams, compared to the market-leading teams like Hogan Lovells or Bird & Bird. The challenge is to establish a quality of advice similar to London in the key jurisdictions. A step in the right direction was the entry into the Dutch patent market with a lawyer who is very experienced in pharmaceutical disputes, and dual qualified as patent attorney. He worked for a long time in the patent team of Simmons & Simmons. A second new hire is mainly experienced in regulatory law and SPCs. But in other countries, Pinsent Masons still has a long way to go before it is a fully integrated European patent litigation team.

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. Following the departure of two litigators, one of whom was a partner, the Munich team now lacks expertise in technical sectors like electronics, mechanics and mobile communications.

Since the UK withdrew from the UPC project, the focus is increasingly on the Dublin office. Now that the UPC is likely to start in 2022, the Irish capital will become more central to the firm’s UK strategy in future.

Recommended individuals

Clare Tunstall, Christopher Sharp (“good strategist, highly knowledgeable”, competitor)

Team

45 lawyers

Partner moves

Gareth Morgan (from CMS Cameron McKenna), Gina Bicknell (from Freshfields Bruckhaus Deringer)

Specialties

Strong focus on patent litigation concerning biotechnology and medical devices, and pharmaceuticals on the generics and innovator sides. Technology, including licensing projects, FTO analysis and transactions. Increasingly strategic advice concerning energy technology.

Clients

Litigation: Teva (defendant) against Bristol-Myers Squibb and Pfizer over anticoagulant drug Eliquis; Teva (defendant) against Janssen over SPC for schizophrenia drug Xeplion; Flynn (co-defendant) against Mylan over insomnia drug Circadin; Numerous disputes for Accord Healthcare, for example as claimant against Allergan over damages following an interim injunction over Lumigan; Sun Pharmaceutical (defendant) against NHS over damages regarding citalopram; Juul Labs (claimant) against Chinese competitors in infringement proceedings concerning e-cigarettes; Safran (defendant) against Lufthansa over electrical power supply device in aeroplanes; East Anglia One on patent infringement against IHC IQIP over technology for offshore wind turbines.