JUVE Comment

Thanks to its strong position in life sciences, this mixed patent firm has seen steady but continual growth over the last year. Both its prosecution and litigation arms enjoy a good reputation for their work in the pharma and medical technology sectors. This not only applies to the lawyers’ work on infringement and nullity suits, but also the patent attorneys’ work in EPO proceedings. The firm built on its excellent position with its acquisition of a high-profile medical product manufacturer as a client for EPO proceedings against another major manufacturer.

Thus, 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 GSK over various vaccines before the UK courts. Behind the scenes, the litigators are working on numerous lawsuits for regular clients that have not yet found their way to the High Court.

Less visible are the litigation team’s activities in a wide technical spectrum. The most prominent case away from the life sciences sector was the successful litigation for Manitou against JCB over control units for telehandlers. But mobile communications suits still play a secondary role. In that regard, the litigation team is far from harnessing the full potential offered by the strong prosecution practice with such high-profile clients as Google, Hewlett Packard, Samsung, Thales 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. Although the firm has one of the largest patent prosecution practices in the UK and perhaps even in Europe, its patent attorneys are less visible in the market. Unlike Carpmaels & Ransford, Kilburn & Strode or JA Kemp, Marks & Clerk lacks stars. It is the firm itself that reaps praise for its work across Europe.

In terms of staff, the firm has recently seen less turbulent times. After several partner departures in the past two years, the firm has lately seen only the departure of litigator Trevor Crosse to Osborne Clark. In contrast, there was one partner appointment in the chemicals team and the promotion of numerous next-generation patent attorneys to the position of principal, the level below partner.

Strengths

Pharma cases mainly for originator drug manufacturers, prosecution across a breadth of technical fields.

European set-up

With its well-established mixed approach, Marks & Clerk’s UK patent practice is certainly part of the action when it comes to international disputes over life sciences patents. This goes especially for EPO proceedings involving high-stakes patents, for example for the Broad Institute, Daiichi Samkyo or – probably its most important client – Pfizer. In cross-border infringement proceedings, however, the firm does not play a role comparable to pure law firms like Hogan Lovells, Powell Gilbert and Kirkland & Ellis. That said, the Marks & Clerk litigation team acts for Pfizer in international disputes. Its coordination work tends to be behind the scenes, which means that the team is not as visible on the international stage as competitors. This is especially the case for proceedings away from life sciences patents.

With offices in North America, Europe and Asia, Marks & Clerk is without a doubt one of the most international IP firms with a head office in Europe. The firm’s client base is similarly broadly positioned. But because of the large number of SMEs advised, Marks & Clerk is a firm whose own strategic decisions follow the needs of clients. It is therefore taking a wait-and-see approach to the UPC launch.

The firm recently sold its French practice, including an office in Paris, to a French patent firm, as work there had not developed profitably enough. As such, it consciously accepted that it will no longer have an office in Paris, potentially one of the most important UPC locations. 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 and another potentially important centre for UPC litigation. The firm wants to avoid disrupting its bilateral relations with some leading German IP firms.

Nevertheless, the firm is lying in wait for the UPC, with its well-oiled mixed approach and an established office in Luxembourg, which it has strongly aligned with the UK practice recently. Should the new court become interesting for its many international clients, a whole host of German and UK patent attorneys experienced in litigation could run revocation cases alone, though complex infringement proceedings would be handled in cooperation with befriended local firms.

Should the UPC prove a success and to serve clients in both UPC and UK proceedings as a one-stop shop, an office with local litigators in Munich and in Paris, would complete the offering.

Recommended individuals

Graham Burnett-Hall, Mike Gilbert, William Cook

Team

24 lawyers, 132 patent attorneys

Partner moves

Trevor Crosse (to Osborne Clark)

Specialties

Full-service patent prosecution practice with a strong focus on electronics, computing and life sciences 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 (claimant) against GSK in revocation cases regarding features of RSV vaccines; Manitou (defendant) against JCB regarding revocation and infringement over control units for telehandlers; Manthorpe (claimant and defendant) against Alumasc regarding infringement of building products; The Broad Institute in EPO proceedings regarding CRISR-Cas patents; frequent litigation for Daiichi Sankyo across the EU against generic drug manufacturers; frequent litigation for Genentech. Prosecution: patent filing (including at the EPO) for AB InBev, Bridgestone, The Broad Institute, Celanese, Canon Medical Systems, Cook Biotech, Crown Packaging, Dynex, Daiichi Sankyo, Flusso, Genuid, Gilead, Google, Hewlett Packard, Micron, Milwaukee Electric Tool, Keystone Tower Systems, Ricoh, PQ Corporation, Samsung, Thales, Toshiba, University of Edinbrugh, Veo Robotics, Yasa (mostly public knowledge). Advice: Sky Medical Technology regarding revocation and infringement proceedings over medical devices for preventing thromboembolism and the prevention of post-operative DVT in China; DS Bio and Crown Packaging regarding transactions; Reagent Genie Ireland and Smart Separations regarding transactions and portfolio management; Sensory Design & Technology regarding transactions and licences.