JUVE Comment

As this UK firm’s lawyers are not yet admitted to the UPC, it must instead deploy its large patent attorney team at the new court, and yet Marks & Clerk still made a successful start in litigation here. It skilfully leveraged its strong position in the life sciences industry to be present at the UPC in the few but large-volume, high-stakes proceedings in this field. A mixed team had already represented Pfizer in national disputes with GSK regarding features of RSV vaccines. Now the patent attorneys are acting as the main representatives in a revocation and infringement action at the UPC. They are cooperating with Clifford Chance as local advisors in Germany.

Even though the Marks & Clerk lawyers cannot act as lead counsel for Pfizer, Mike Gilbert is working intensively on the case. A competitor praised, “He is deep into the details, he truly thinks UPC.”

Jonathan Stafford, who has previously conducted EPO oppositions for Meril Life Sciences, is now also involved in various proceedings against Edwards Lifesciences regarding heart valves at the UPC. Although lawyers from Hogan Lovells and Gide are the main representatives, the bitter dispute between the two competitors still promises Marks & Clerk a great deal of visibility in UPC proceedings for some time to come. A Marks & Clerk’s team is representing Sumi Agro as main counsel in an infringement and a PI action brought by Syngenta over herbicides. The chemical company also brought in Bardehle Pagenberg as co-counsel for the two proceedings at the local division Munich.

Together with Dehns, J A Kemp and Carpmaels, Marks & Clerk is one of the most visible UK firms at the UPC so far. However, the firm has not yet leveraged its strong client base of biotech companies such as the Broad Institute and pharmaceutical giants such as Gilead and Daiichi Sankyo into UPC cases.

The patent attorneys work across a broad technical spectrum for UK medium-sized companies, but unlike their counterparts on the continent, these companies have not yet begun to use the UPC.

Strengths

Pharma and medical devices disputes.

Recommended individuals

Jonathan Stafford (“good successes at the EPO, brings a breath of fresh air to UPC cases”, client; “impressed me with his pleading in an oral hearing”, competitor)

Team

78 patent attorneys

Clients

Pfizer against GSK action over features of RSV vaccines; Sumi Agro against Syngenta over herbicides; Meril Life Sciences against Edwards Lifesciences in various cases over heart valves.