Marks & Clerk grows IP offering with Potter Clarkson partner

Mixed UK patent firm Marks & Clerk has reinforced its IP offering in London with the hire of Nick McDonald. He brings extensive experience in patent litigation, trademark enforcement, copyright and design rights disputes.

Previously, McDonald worked at Potter Clarkson, a firm historically dominated by patent attorneys, but which now operates in the UK market with mixed teams. It has a respected patent litigation practice in London and a strong reputation in UK life sciences patents.

Marks & Clerk is also primarily known for representing clients in the life sciences sector. However, with 119 patent attorneys and 14 lawyers employed in the UK alone, the firm has a much broader technical base. Most recently, however, its work for Pfizer against GSK over features of RSV vaccines and for Meril Life Sciences against Edwards Lifesciences in various cases over heart valves stood out. These cases were also pending before the UPC.

Targeted reinforcement

In joining Marks & Clerk, McDonald complements the firm’s life sciences offering. He often coordinates cross-border proceedings for pharmaceutical companies, biotech innovators and manufacturers.

One highlight case was Korean biotech company ToolGen’s infringement suit against Vertex concerning CRISPR/Cas technology, in which McDonald had the lead for his previous firm. Vertex’s Casgevy became the world’s first genome editing therapy to receive marketing authorisation. ToolGen claims Vertex’s therapy Casgevy infringes its EP 457 and filed an action at the UK High Court in spring. But the client will remain with Potter Clarkson.

The hire of McDonald is part of Marks & Clerk’s growth strategy. Partner Mike Gilbert says, “Nick’s appointment represents a significant milestone in the continued expansion of our capabilities. It strengthens our growing team and enhances our ability to handle the most sophisticated multi-jurisdictional disputes. His experience in leading high-performing teams and advising clients on complex international matters will be invaluable as we continue to build our practice.”

The UPC dream

Both Marks & Clerk and Potter Clarkson were among the more prominent UK law firms in the first two years of the new Unified Patent Court. Potter Clarkson attracted attention with a revocation action for Astellas at the Munich central division, while Marks & Clerk did so with proceedings for Pfizer and Meril Lifesciences.

While Potter Clarkson has recently been less active in cases before the UPC, Marks & Clerk continues to be involved in a number of proceedings. In particular, the dispute between Meril and Edwards is currently in the spotlight, with the firm working alongside lawyers from Hogan Lovells.

However, Marks & Clerk has recently shown ambitions to strengthen its presence at the UPC. While numerous patent attorneys can represent clients there, their UK lawyers are currently still limited in their ability to do so. Without an office in Dublin, they have no direct access to the UPC and usually work behind the scenes on UPC cases.

Even after McDonald’s departure, Potter Clarkson still has an eight-strong patent litigation team in the UK. Richard Roberts and Oliver Laing continue to lead the team. In addition, the firm has around 50 patent attorneys in the UK. Their work on life sciences patents remains unaffected by the departure.

The firm’s patent attorneys work for Novo Nordisk in EPO oppositions over the diabetes drug semaglutide, for example. Astellas and Novozymes are other regular clients of the firm. (Co-author: Laura King)