The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

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

Elkington + Fife LLP is a leading firm of patent and trade mark attorneys with a worldwide reputation. It regularly punches far above its weight in terms of the quality of work and clientele. The partners and fee-earners are acknowledged experts in their fields, many having worked previously in-house in large multinational corporate IP departments, law firms or at the EPO. A consistently high standard of work is achieved by having a high degree of partner involvement in most work. The firm prides itself on giving high-quality responsive advice which is also commercial in nature and geared to the needs of its clients. The needs of clients are paramount and it is happy to look at ways of fitting its service to its clients' individual requirements. It is not afraid to listen.

The firm: Elkington + Fife LLP has strong and expanding chemical, bioscience, electrical and mechanical departments. Partners Richard Gillard, James Anderson and Oliver Kingsbury have substantial patent opposition practices before the EPO. Nick Ertl has developed a significant outsourcing service for filing patents for a number of large multinational clients.

Elkington + Fife's partners and fee-earners have a wealth of experience in their respective areas. Gordon Wright, a consultant, is widely acknowledged as the pre-eminent expert on pharmaceutical patent extension (SPCs) in Europe. Both he and Oliver Kingsbury have handled numerous pan-European SPC filing programme for major pharmaceutical companies. Chris McLeod handles a large portfolio of trade mark applications and opposition cases both before the UK IPO and at OHIM. He also has substantial experience in dealing with worldwide trade mark disputes.

As a whole, Elkington + Fife handles work for an enviable list of worldwide multinational companies including many household names and a number of top US companies listed in the Fortune 500. At the same time, through the firm's offices in Sevenoaks and Sandwich, its clients have a strong regional presence in the Kent and South East area.

Elkington + Fife LLP is also active at the professional level, having members on the councils of CIPA, INTA and CITMA committees. The partners regularly speak at conferences and act as editors contributing to the CIPA 'black book' or as senior editor to the CITMA and CIPA Trade mark Handbook, the leading authority on UK trade mark practice.

Types of work undertaken: The firm provides the expected full range of prosecution services including the preparation, filing and prosecution of UK, European and international patent applications, the clearance and searching of trade marks in the UK, Europe and worldwide and the filing of UK, Community trade marks, international and foreign trade mark applications and registered design applications. On the patents side, advice includes IP due diligence investigations and practical assistance on patent portfolio strategies.

Work is divided between three strategic departments:

Chemicals/biosciences: The department has a large opposition practice before the EPO and has acted for a number of the top 15 international pharma companies in the last year. The firm also acts for a number of British and US universities and UK-based hi-tech and engineering firms. Particular areas of expertise include nanotechnology, SPCs and life cycle management.

Electrical and mechanical: Elkington + Fife LLP has both a strong EPO opposition and patent filing practice. It is particularly experienced in helping electronics firms with their outsourcing and overflow drafting of applications, particularly in complex technologies.

Trade marks: The firm has substantial expertise in trade mark clearance both in the UK and worldwide and the handling of all aspects of UK, CTM, foreign and international applications. It also has substantial experience in relation to handling UK and CTM oppositions and Europe and worldwide trade mark disputes, with experience of handling cases up to the Boards of Appeal and the General Court. The firm handles work for a wide spectrum of clients including blue-chip companies in the chemical, pharmaceutical, telecommunications, IT, toy retail, automobile and engineering, medical and entertainment industries.

Other offices: London, Sandwich

  • Number of UK partners: 13
  • Number of other UK fee-earners: 21
  • Total number of staff: 63
  • Breakdown of work %
  • ‚Ä©
  • Chemical/biosciences: 45
  • Electrical/mechanical: 40
  • Trade mark, design, copyright: 15

‚Ä©

Above material supplied by Elkington + Fife LLP.

Legal Developments in the UK

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • Court of Justice rules on source of income for Derivative Residence applications

    On 2 October 2019, the Court of Justice delivered its judgment in Bajratari v Secretary of State for the Home Department (Directive 2004/38/EC) Case C-93/18 which concerns Chen applications and the source of funds for self-sufficiency. 
  • End of the ‚Äėcentre of life test‚Äô in Surinder Singh cases?

    In the recent case of¬† ZA (Reg 9. EEA Regs; abuse of rights) Afghanistan ¬† [2019] UKUT 281 (IAC ), the Upper Tribunal found that there is no basis in EU law for the centre of life test, as set out in Regulation 9(3)(a) of the Immigration (European Economic Area) Regulations 2016 (the ‚ÄúRegulations‚ÄĚ). It further found that it is not to be applied when Judges assess ¬†Surinder Singh ¬†cases that appear before them.
  • Terms of employment as a sole representative

    In this article we examine the working arrangements of sole representatives, looking at the terms and conditions of employment that the Home Office will expect a sole representative to have in order to qualify as a representative of an overseas business.  
  • Can Sole Representatives Be Shareholders?

    The Immigration Rules require that an applicant for a¬† sole representative visa ¬†is not ‚Äúa¬† majority shareholder in the overseas business‚ÄĚ.
  • Immigration Skills Charge - A Guide for Employers

    As a Sponsor, you may be required to pay the Immigration Skills Charge (ISC) each time you sponsor a migrant in the  Tier 2 General  or  Intra-Company Transfer (ICT) Long-term Staff  subcategory.
  • 5 FAQS about paragraph 320(11)

    In applications for entry clearance where the applicant has a negative immigration history in the UK, the application may be refused under the general grounds for refusal, which are found in part 9 of the Immigration Rules. Where an applicant has ¬†‚Äėpreviously contrived in a significant way to frustrate the intentions of the Immigration Rules‚Äô,¬† the application could be refused under paragraph 320(11). In this post we look at five frequently asked questions about paragraph 320(11).¬†
  • Multiple nationality and multiple citizenship (including dual nationality and dual citizenship)

    British nationality law permits multiple nationality and multiple citizenship, including dual nationality and dual citizenship.
  • Applying for Indefinite Leave to Remain in the Exceptional Talent or Promise Category

    The  Exceptional Talent  and Exceptional Promise categories are for individuals who are recognised leaders or emerging leaders in their field of expertise. There are a number of endorsing bodies for lots of different fields of work, including  artists and musicians ,  architects ,  digital experts ,  scientists  and  academics . While there isn’t an endorsing body for every expert, the growing list means that many individuals could enjoy the flexibility that this category has to offer. 
  • PARALLEL PROCEEDINGS ‚Äď CIVIL AND CRIMINAL

    Syedur Rahmanconsiders the factors that determine when civil proceedings can go ahead before,or at the same time as, criminal proceedings relating to the same circumstances.
  • Rights of appeal after the Immigration Act 2014

    The Immigration Act 2014 (‚Äúthe 2014 Act‚ÄĚ) reduced the circumstances in which the refusal of an immigration application will give rise to a right of appeal.¬†The¬† explanatory notes ¬†to the 2014 Act state that the Act was intended to restructure rights of appeal to the Immigration Tribunal. Previously, a right of appeal to the Immigration Tribunal existed against any of the 14 different immigration decisions listed in s.82 of the¬† Nationality, Immigration and Asylum Act 2002 ¬†(‚Äúthe 2002 Act‚ÄĚ). As explained below, whether or not the refusal of an immigration application currently generates a right of appeal depends on the subject matter of the application rather than its categorisation.