JUVE Patent

Rankings UK 2023

DLA Piper – UK 2023

JUVE Comment

The well-positioned practice of DLA Piper, which has once again grown at partner and associate level, has tended to attract litigation work from clients in the mechanical and technical patents sector. This is a trend which shows no signs of slowing; in 2022, the practice won two new clients in SafeStand and Alumasc, both of which hail from the building and engineering sector. However, while a host of notable clients pepper the firm’s advisory list, from sectors including life sciences, energy, transport and consumer goods, these are yet to turn into meaningful litigation work for the firm. So far, no high-profile telecommunications clients have instructed the firm despite multiple patent holder vs. implementer battles raging at the UK courts – on the other hand, upcoming work for one long-term client in this sector might help raise the pratice’s visibility.

While DLA Piper is yet to demonstrate the strength of the links between its practices in Europe as well as its close competitors, for example Freshfields Bruckhaus Deringer, one stand-out client that demonstrates the breadth of the team’s talent is for client Honeywell against Zebra. The case, which was since settled, involved three patents being litigated in Germany, China and the US.

As yet, however, the practice has no life sciences or medical devices clients in litigation. Alongside its dearth of telecommunication clients, this could prove detrimental to its future prospects given the attractiveness of the UK courts for such disputes. The firm is attempting to remedy this through taking steps such as co-practice head and partner Richard Taylor shifting his focus entirely to life sciences clients, although this is mostly on the transaction and advisory side. In some respects, this strategy is bearing fruit, with Scapa Healthcare a new client in life sciences on the advisory side. Long-standing DLA Piper client Guerbet has also recently turned to the patent team for advice on a joint venture with Bracco over a product used in medical imaging. However, while the other two London partners are also looking to build up expertise in this area, it remains far behind competitors such as Mishcon de Reya and Osborne Clarke in maintaining a solid base of either generic or innovator drug company clients.

European set-up

Although boasting a well-regarded German practice in Munich and Cologne, as well as a growing team in London and a new team in Paris, DLA Piper’s European practice is yet to expand its visibility as an integrated European team. Cross-border cooperation in litigation is still comparatively rare, competitors like Hogan Lovells are much further ahead. Yet the international network harbours much potential and the German practice already has excellent connections to some Californian tech companies.

DLA’s European practice would be the ideal port of call for the firm’s regular US clients, a fact exemplified by Honeywell, which now banks on the European team for proceedings in the UK and Germany thanks to a referral from the US practice. DLA also won a pitch for a Chinese electronics manufacturer for advice on SEPs in the US and Europe.

The firm continues to expand its continental practice. Paris has been the blank spot in DLA Piper’s continental offering, but with the acquisition of a larger IP team that also has patent expertise, the firm is now preparing to close this gap.

DLA also has smaller, but well-established offerings in Brussels and Milan. This means that the firm now offers an equally broad range of services for cross-border cases and the UPC, like Simmons & Simmons and Allen & Overy. But DLA Piper is some way behind their pan-European market visibility. The firm is addressing the issue by increasingly pitching with international patent teams.

Team

9 lawyers

Specialties

Broad patent practice with a roster of legacy technical brands for industry clients from the energy, automotive, electronics, consumer products and life sciences sectors. Also licensing and transactional work.

Clients

Litigation: Honeywell (claimant) against Zebra over digital imaging technology for barcodes (settled in 2022); Currys against competitor; Safestand (claimant) against Western Homes over innovative building products (public knowledge); British Airways against competitor; Alumsac (defendant) against Manthorpe over radiator-utility-pipe outlet plate. Advice: Unilever on patent and IP transactions; Abu Dhabi’s Advanced Technology Research Council on patent filing and advice on international research collaborations; Scapa Healthcare on transaction to licence the manufacture and supply to Baxter of Baxter’s proprietary strips for surgery; Guebert on joint venture with Bracco relating to medical imaging product; advice for Currys and Mavenir.

Location

London, Birmingham