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Elkington + Fife LLP

THAVIES INN HOUSE, 3-4 HOLBORN CIRCUS, LONDON, EC1N 2HA, ENGLAND
Tel:
Work 020 7936 8800
Fax:
Fax 020 7353 4329
Email:
Web:
www.elkfife.com
London, Sevenoaks

London: TMT (technology, media and telecoms)

PATMA: Patent attorneys
PATMA: Patent attorneys - ranked: tier 2

Elkington + Fife LLP

Elkington + Fife LLP is among the most renowned oppositions and appeals practices in the market, including extensive experience in petitions for review, with a strong electronics department and a powerful team specialising in the prosecution of chemical and pharmaceutical patents, most notably acting for major generics players. The practice's strength in the prosecution of patents for software and computer-implemented inventions is another clear asset. London's Richard Gillard directs the chemical and life sciences group while Sevenoaks-based Nick Ertl heads the electrical and mechanical group.

Practice head(s):Richard Gillard; Nick Ertl

Other key lawyers:James Anderson; Richard Cooke; Oliver Kingsbury; Rob O'Callaghan; Daniell Portch; Erik Scheuermann; Glyn Truscott

Key Clients

Corning Incorporated

Dow Corning

Fujifilm Speciality Ink Systems Limited

IBM

Nestlé

Novartis

Philips

Procter & Gamble

Samsung

University of Kent

Work highlights

  • Represented Mylan in EPO opposition proceedings against Novartis regarding a patent covering the commercially important osteoporosis and cancer drug zoledronic acid, ultimately securing revocation of the Novartis patent before the Board of Appeal, a decision later confirmed in petition for review proceedings.
  • Represented Procter & Gamble in EPO opposition proceedings and successfully defended a patent covering a new use of two decongestant drugs targeting cold and flu viruses.
  • Represented Atreca, Inc, a Stanford University spin-off, at the EPO, ultimately succeeding in obtaining the grant of a complex immunology patent after closely liaising with the client's US and in-house counsel, a key patent for the development of the client's patent portfolio.
  • Assisted Graphene Composites Ltd with the development of the patent portfolio protecting its core products, a range of new composite materials for armour and aerospace applications, filing several patent applications and advising the client on its IP strategy.
  • Assisting IBM with the drafting and prosecution of patents aimed at covering software-related and computer-implemented inventions.

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PATMA: Trade mark attorneys
PATMA: Trade mark attorneys - ranked: tier 2

Elkington + Fife LLP

Elkington + Fife LLP's trade mark practice continues to grow, attesting to the firm's success in carving out its space in the market since practice head Chris McLeod joined in 2015. Strategic trade mark advice and the drafting and filing of applications are as much a part of the team's portfolio of expertise as the representation of clients in opposition and appeal proceedings in which the group often prevails over opponents with significantly deeper trade mark attorney benches. The group succeeds in attracting a varied range of clients, acting for major international corporations, but maintaining a steady caseload for smaller domestic clients.

Practice head(s):Chris McLeod

Key Clients

Acer Incorporated

BASF SE

Blank Rome LLP

Corning Incorporated

Decon Laboratories Limited

Evonik Industries AG

Formula One Management Limited

Koninklijke Philips N.V.

Malvern Panalytical B.V.

Old St. Andrews Limited

Work highlights

  • Assisted Haart & Lieu Limited with strategic advice in relation to its global trade mark filing exercise and prepared and filed trade mark applications in the UK, the EU and other territories.
  • Represented Acer Incorporated in Nominet domain name dispute resolution service (DRS) procedures against third-party domain name registrations containing the ACER trade mark.
  • Represented Independent Vetcare Limited in relation to a growing portfolio of trade mark applications and registrations, including strategic advice and resolution of third-party disputes.
  • Represented a subsidiary of Vohkus Limited in the defence of a UK trade mark application for the mark CXO2 against an opposition by the telecoms company O2, involving an appeal to the Appointed Person.
  • Represented Toys R Us and successors in title in relation to multiple oppositions and other third-party disputes in the UK and EU, primarily in relation to trade marks containing the element “R US”.

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