Marks & Clerk > Manchester, England > Firm Profile
Marks & Clerk Offices
1 NEW YORK STREET
MANCHESTER
M1 4HD
England
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Marks & Clerk > The Legal 500 Rankings
TMT (technology, media and telecoms) > PATMA: Patent attorneys Tier 1
Marks & Clerk’s ‘highly intelligent and commercial team’ supports large pharmaceutical and biopharmaceutical companies, as well as start-ups, SMEs and academic institutions. It also counts major players in the electronics and engineering spaces amongst its sizeable client base, and the team has demonstrable strength in assisting clients with patents regarding 3D printing, machine learning, and AI, especially with filing patent applications. Simon Mounteney and Robin Oxley jointly lead the team for London, which is also home to Will Nieuwenhuys, whose practice encompasses the entirety of the patent lifecycle, from drafting applications and prosecutions before the UKIPO and the EPO, to global portfolio management. Manchester-based Mike Williams has expertise in digital technologies, especially AI, and Thomas Prock (London) leads the additive manufacturing and 3D printing practice.Practice head(s):
Simon Mounteney; Robin Oxley
Other key lawyers:
Matthew Jefferies; Thomas Prock; Philip Cupitt; Will Nieuwenhuys; Mike Williams; Andrew Docherty; Jonathan Stafford; Sheila Wallace; Tim Hargreaves; David Murray; Giles Pinnington; James Shearman; Lara Sibley; Daniel Sizer; Andrea Williams
Testimonials
‘Very willing to understand its clients’ very niche business requirements.’
‘Marks & Clerk, in particular Matthew Jefferies and Thomas Prock, have a very good appreciation of clients’ situations and needs.’
‘Marks and Clerk remain committed to understanding its clients’ technology, products, market, and competitors to ensure they can provide the best advice and methods for developing and supporting IP, interests, and risks.’
‘Highly intelligent and commercial team.’
‘Clients receive excellent support and expertise from Marks & Clerk in relation to patent application drafting and filings, dealing with examination and search reports, and investigations into potential infringements by third parties.’
‘The breadth of knowledge and technical understanding demonstrated by the firm’s team of patent attorneys is at a consistently high level.’
‘Philip Cupitt is recommendable to others who are looking for a trusted partner in the field of patent applications and IP management.’
Key clients
AB InBev
Uber
Hewlett Packard Enterprise
Bridgestone
THALES
Next Holdings
Pukka Pies
Virgin Media
Nintendo
Toshiba
Roche
Genentech
Pfizer
Landis & Gyr
Micron
Ricoh
Gilead Sciences
Michael Best & Friedrich LLP
AMS Osram
YASA Limited
Tokamak Energy Ltd
Advanced Medical Solutions
Crown Packaging Manufacturing UK
The University of Edinburgh
University of St Andrews
Cambridge GaN Devices
Inside Biometrics
Genuit Group
Provisur Technologies
RevoluGen
Dynex
Pal International
Flusso
Work highlights
- Advised Limbic with initial strategic advice regarding its patents and subsequently assumed representation for all of its patents.
- Advising Daiichi Sankyo on handling its patent and SPC portfolios relating to antibody-drug conjugates for treatment of cancers.
- Representing Provisur Technologies on European patent prosecution and contentious opposition work.
TMT (technology, media and telecoms) > Intellectual property Tier 2
Praised by clients for its 'international experience and knowledge', the team at Marks & Clerk calls upon a wealth of expertise to advise clients in the technology and life sciences sectors. The group frequently assists clients with the filing and registration of rights, in addition to portfolio management and risk limitation issues. The ‘commercially very astute' Simon Portman leads the Cambridge based team, often advising SMEs and large international corporates.Practice head(s):
Simon Portman
Testimonials
‘They are very professional and communication between each other and the client is excellent. International experience and knowledge in all aspects of intellectual property is available from one company. With full supporting commercial and company law. It provides a one stop practice.’
‘Simon Portman is extremely receptive from the start and is never phased by any requests. He provides very sound advice which changes my thinking in positive way. Commercially very astute. The advice given was very clear and uncomplicated.’
Key clients
Hockey 21
Kingston University
Swamp Motel
Addenbrooke’s Hospital
Babraham Research Institute
University of Cambridge
John Innes Centre
UCL
Mundipharma
Flexenable
Ultimovacs
Work highlights
- Advising a former England hockey player who is setting up an online, interactive hockey game called Hockey 21.
- Advised Kingston University, in conjunction with a corporate finance associate and a serial tech entrepreneur, in compiling a 130 page manual for use by the above personnel to supplement the firm’s patent filing and contract advice to the client, covering the following issues in depth.
- Advising Swamp Motel, a client that writes and supplies immersive, interactive thrillers in which the user solves crimes or completes quests in an imaginary world.
TMT (technology, media and telecoms) > PATMA: Trade mark attorneys Tier 2
Marks & Clerk boasts a ‘well-established and well-resourced team’ that has a core focus on the creative and entertainment industries, fashion and retail, financial services, and food and drink sectors, as well as the technology sector. The team is well-versed in managing large international portfolios, which often includes filings and opposition and enforcement proceedings before the UKIPO and EPO, as well as brand protection matters and dispute resolution mandates. Trade mark practice head Esther Gottschalk also manages the Birmingham office; she has extensive expertise in working for US corporates and attorney firms. Fluent in French and Spanish, John Ferdinand in Birmingham is another key name to note, with expertise in non-traditional trade marks, such as shape marks. London-based trade mark attorney Michael Barrett is dual qualified as a solicitor with a focus on the sport, entertainment, and media industries. Tom Farrand transitioned to a consultancy role in September 2022.Practice head(s):
Esther Gottschalk
Other key lawyers:
Samantha Collins; Michael Barrett; Jason Chester; Claire Keating; Amy Dunn; Noëlle Pearson; John Ferdinand
Testimonials
‘The Marks & Clerk team provides tailor-made advice in a time-efficient manner. They count on highly skilled IP professionals with experienced backgrounds in the IP field. Communication with them is continuous and smooth, and they are extremely responsive.’
‘A well-established and well-resourced team.’
‘Personal attitude, helpful, and great initiative.’
‘Their expertise in trade marks and patents internationally is very good. They are great at explaining complicated situations, and they have great client service.’
‘Clear understanding of client requirements. Able to adapt to the circumstances in different countries and provide relevant advice. Trademark monitoring service provides notice of possible infringements on both names and logos.’
‘Samantha Collins is great to work with. She has clearly laid out the options available to us, is very responsive, and has managed our trademark portfolio very efficiently.’
Key clients
Lounge Underwear
Panda Life
FutureWELL Holdings Ltd
THALES
Butcher’s Pet Care Limited
RevoluGen
Next Holding Limited
Grafton International Ltd
Kee Safety Limited
Hill & Smith Holdings plc
Pukka Pies
Crew Clothing Company
First Longevity Ltd
Scottish Football Association
Scotch Whisky Association
Lothian Buses
Trespass
Bridgestone
Albert Bartlett & Sons
Work highlights
- Acted for Butcher’s Pet Care in devising a strategy to ensure and safeguard protection for a planned re-brand of products in the EU to align with branding strategy in the UK.
- Acted for Kee Safety in helping to prioritise their branding needs to help their IP reflect their success and expansion.
- Acted for Grafton International in their new launches, prosecuting the difficult marks and advising them on their necessary protection and enforcement issues.
TMT (technology, media and telecoms) > Intellectual property: patents (contentious and non-contentious) Tier 3
On account of its expertise in the life sciences field, ‘excellent’ Marks & Clerk counts large pharma and biotech companies in its roster. Steering the practice is Mike Gilbert, whose patent litigation experience in the biotech, pharma and chemical sectors means he acts for numerous high profile biopharmaceutical clients. ‘Exceptionally experienced’ key contact Dafydd Bevan is active in the electronics, software, telecoms and mechanical sectors and is well-versed in high-tech and engineering patent litigation. Graham Burnett-Hall is noted for his ability to handle highly technical mandates, while Charlie Balme regularly handles patent and licensing disputes in the life sciences field. Associate Tom Taylor adds to the firm’s litigation expertise. Trevor Crosse departed in November 2022 to Osborne Clarke LLP.Practice head(s):
Mike Gilbert; Dafydd Bevan; Graham Burnett-Hall
Other key lawyers:
Charlie Balme; Tom Taylor; Dan McGrath; Nicholas Fischer; Marcus Rigby Smith
Testimonials
‘At all times, I was made to feel at ease during our online and in-person meetings. They created a good environment for synergy.’
‘I was particularly impressed by the team work and methods structured by M&CL and the encouragement they gave during some of the more challenging aspects of the work.’
‘Dafydd Bevan is extremely knowledgeable in patent law, articulate and has an exceptional mannerism which made the process not only effective but enjoyable for me. His knowledge and ability to explain the patent concepts for my benefit were very impressive.’
‘Tom Taylor handled his role very professionally and with great ease. Tom and Dafydd’s combined input to the process was exceptional and key to ensuring the final version of my report was robust and accurate.’
‘An experienced firm which has both excellent contentious and non-contentious services.’
‘Dafydd Bevan is exceptionally experienced and goes beyond expectations to deliver a brilliant service.’
‘A skilled team.’
‘Dafydd Bevan is brilliant.’
Key clients
Manitou
Manthorpe Building Products
Pfizer
Wyeth
Owen Mumford
Work highlights
- Represents leading heavy equipment manufacturer Manitou in a multi-jurisdictional, high value patent infringement and validity action brought by JCB.
- Acted for Owen Mumford in opposition proceedings before the EPO Technical Board of Appeal in an appeal filed by Novo Nordisk.
- Acted for Manthorpe Building Products in High Court patent infringement proceedings relating to specialist building products.
TMT (technology, media and telecoms) > Intellectual property: trade marks, copyright and design Tier 3
The integrated brand protection and PATMA team at Marks & Clerk has demonstrable experience in the creative industries, fashion, financial services and food and drink sectors. Its work includes strategic portfolio management, brand development advice and dispute resolution, amongst others. Kirsten Gilbert spearheads the practice, acting for household name brands on the protection and exploitation of their rights, while Gina Lodge specialises in brand protection work, with vast experience representing clients in contentious matters. Another name to note is Dafydd Bevan, who handles registered and unregistered designs, particularly in the litigation sphere.Practice head(s):
Mike Gilbert; Kirsten Gilbert
Other key lawyers:
Gina Lodge; Dafydd Bevan; Hannah Finster; Marcus Riby-Smith
Testimonials
‘Dafydd Bevan is an excellent IP litigator. He excels in all areas of IP, including trade marks, copyright, and designs, as well as patents. He is an excellent strategist, never losing sight of his client’s commercial objectives.’
Key clients
House of Bruar
Long Harbour Limited and Way of Life Management Limited
Mike Tindall, James Haskell, and Alex Payne
Panda Life Limited
Groupe Guillin SA
Work highlights
- Representing Group Guillin as Claimant in IPEC design infringement proceedings concerning a key product range.
- Represented Long Harbour in IPEC passing off and trade mark validity and infringement proceedings relating to use of the WAY OF LIFE mark in respect of real estate services.
- Led former England Rugby players Mike Tindall and James Haskell, and sports broadcaster Alex Payne to a successful resolution of High Court passing off proceedings brought in relation to their “The Good, The Bad & The Rugby” podcast.
Marks & Clerk > Firm Profile
Marks & Clerk LLP is a market-leading firm focused on its clients, with an active interest in the development of the IP profession both in the UK and worldwide.
The firm: Marks & Clerk LLP was founded in 1887 by George Croydon Marks, who was joined in partnership by Dugald Clerk a year later. It is now the largest patent and trade mark attorney firm in the UK. Marks & Clerk International has 17 PATMA offices in the UK, North America, continental Europe, and Asia; associated firm Marks & Clerk Law LLP was founded in 2003.
Our patent and trade mark attorneys focus on patent and trade mark prosecution, IP strategy and all IP aspects of due diligence, and its clients range from start-ups to multinational companies or universities, and include Weatherford International (patents), Statoil (patents), Mondelez International (patents) and Next (trade marks). Overseas IP firms also refer work from their local clients.
At Marks & Clerk, we are committed to training excellence in both our IP professional staff and support staff, supporting them with compulsory and voluntary continued professional development. We have also founded a training academy for new graduates and works closely with the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys. We strive to maintain exceptionally high standards and are proud to have held ISO 9001 certification with a clean sheet since 2010.
Types of work undertaken
Patents: Our patent attorneys around the world are experts in securing the most effective patent protection for their clients, regardless of their size or industry.
Trade marks: Our experienced and international trade mark team advises clients, from SMEs to large multinationals, across all industries. We have developed a trade mark resale facility to assist clients realise the hidden financial potential of unwanted assets.
Copyright: Our network of patent and trade mark attorneys and lawyers provides a uniquely international approach to copyright matters. Working in all areas of copyright we help clients maximise their protection and exploitation of copyright and defend against infringement claims.
Designs: Our experienced patent and trade mark attorneys offer insight into how design rights work best as part of an IP protection strategy. We obtains design protection for clients around the world.
Domain names: Marks & Clerk can search for available domain names; register domain names; handle ADR procedures with ICANN; handle proceedings within the UK courts for trade mark infringement and passing-off; advise on domain name portfolio management; and register trade mark details with the Trademark Clearinghouse.
Due diligence: Our IP professionals advise on the IP aspects of corporate deals. We handle the acquisition and disposal of companies or businesses/assets, including vendor, investor and acquisition due diligence.
Asia Pacific IP protection: Through one central access point, asia@marks-clerk.com the firm offers patent, trade mark, utility model and design protection across a number of jurisdictions.
Oppositions at the EPO: Our patent attorneys have years of experience advising on and representing clients in opposition proceedings and appeals before the EPO.
Offices: Aberdeen, Birmingham, Cambridge, Edinburgh, Glasgow, Manchester, London, Oxford
Main Contacts
| Department | Name | Telephone | |
|---|---|---|---|
| International chairman | Daniel Talbot-Ponsonby | dtalbot-ponsonby@marks-clerk.com | +441865397900 |
| UK Managing partner | Simon Mounteney | smounteney@marks-clerk.com | +44 20 7420 0000 |
| Marks & Clerk Law Managing Partner | Mike Gilbert | mgilbert@marks-clerk.com | +44 20 7420 0250 |
| Managing partner, Aberdeen | Andrew Docherty | adocherty@marks-clerk.com | +44 1224 957 100 |
| Managing partner, Birmingham | Esther Gottschalk | egottschalk@marks-clerk.com | +441216435881 |
| Managing partner, Cambridge | Kirsteen Gordon | kgordon@marks-clerk.com | +44 1223 345520 |
| Managing partner, Edinburgh | Paul Chapman | pchapman@marks-clerk.com | +441312217000 |
| Managing partner, Glasgow | Richard Gibbs | rgibbs@marks-clerk.com | +44 141 221 5767 |
| Managing partner, London | Will Arends | warends@marks-clerk.com | +442074200000 |
| Managing partner, Manchester | David Robinson | drobinson@marks-clerk.com | +44 161 233 5800 |
| Managing partner, Oxford | Duncan White | dwhite@marks-clerk.com | +44 1865 397900 |
Lawyer Profiles
| Photo | Name | Position | Profile |
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David Robinson | David is a Partner at the firm and is recognised as a… | View Profile |
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Mike Shaw | Mike is experienced in all aspects of trade mark, copyright and design… | View Profile |
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Jonathan Stafford | Jonathan handles patent matters in the chemistry and life science sectors, with… | View Profile |
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Mike Williams | Mike is an expert in patent matters relating to digital technologies, and… | View Profile |