Marks & Clerk > Cambridge, England > Firm Profile

Marks & Clerk > The Legal 500 Rankings

TMT (technology, media and telecoms) > Intellectual property Tier 2

'The legal and commercial advice was so reassuring and the understanding of the problems l encountered was dealt with a great deal of empathy', says a client of Marks & Clerk. The Cambridge office is an outpost of one of the UK's largest IP firms and taps into a large network of solicitors, patent attorneys and trade mark attorneys across eight offices. In Cambridge, the key focus is commercial IP, for which the counts Alzheimer Scotland and Downing College among its clients. Simon Portman leads the Cambridge office and is co-head of commercial IP transactions along with Michael Moore, who works from both Cambridge and London.

TMT (technology, media and telecoms) > Intellectual property: patents (contentious and non-contentious) Tier 2

IP specialist firm Marks & Clerk enjoys a strong reputation in the biotechnology, chemicals, and pharmaceuticals sectors. Mike Gilbert leads the life sciences practice in the firm and advises on a number of high-value, highly complex patent disputes, particularly revocations. Dafydd Bevan specialises in hi-tech patent litigation and is a key contact within the team for disputes related to software, network communications, and graphical user interfaces, including FRAND and SEP licensing issues; he also maintains a strong mechanical engineering patent practice. Trevor Crosse is a biotechnology and pharmaceuticals patent litigation specialist, representing a number of major biopharmaceuticals clients in complex patent disputes. Graham Burnett-Hall is praised for his technical and ‘out-of-the-box’ approach to mandates, and Michael Moore advises on the more commercial aspects of the practice, particularly on licensing deals, collaboration agreements and M&A due diligence.

TMT (technology, media and telecoms) > PATMA: Trade mark attorneys Tier 2

With several offices across the UK and internationally, Marks & Clerk’s sizeable team focuses on five key sectors: beauty and health, food and drink, entertainment, and fashion and retail, as well as technology, which crosses over from the firm’s patent team. On account of its international capability, the team remains one of the most active UK and EU trade mark filers and is well-placed to strategically manage global portfolios. Counting multinational companies and research institutions among its key roster of clients, opposition and appeal proceedings at the EUIPO continue to make up a large proportion of the practice’s caseload. From the firm’s office in Oxford, chairman Daniel Talbot-Ponsonby leads the team alongside Simon Mounteney and Tom Farrand, both of whom operate from the London office, while Oxford-based Samantha Collins and London-based Michael Barrett were promoted to partner in August 2021.

TMT (technology, media and telecoms) > PATMA: Patent attorneys Tier 1

Marks & Clerk counts patents covering emerging technologies such as 3D printing, machine learning and artificial intelligence in its workload, and is noted for its demonstrable capability in filing patent applications relating to artificial intelligence in Europe. The team, which is jointly led by Oxford-based Daniel Talbot-Ponsonby and London-based Simon Mounteney, also provides ‘timely and pragmatic advice’ on matters pertaining to medical devices and software, and counts SMEs, universities and large corporates among its key roster of clients. The practice has experienced multiple changes; Stephen Blake and Douglas Rankin left in June 2021 to set up their own firm, while Steven Gurney departed in August 2021 and Maureen Kinsler moved to Schwegman, Lundberg, Woessner & Kluth in December 2021. The following patent attorneys were promoted to partner in August 2021: Matthew Jefferies, James Shearman, Lara Sibley and Daniel Sizer, all of whom operate from the firm’s London office, as well as Manchester-based Giles Pinnington and Cambridge-based Andrea Williams.

TMT (technology, media and telecoms) > Intellectual property: trade marks, copyright and design Tier 3

Marks & Clerk's brand protection team works with its integrated PATMA team to offer clients a combined approach to brand protection, strategic trade mark and design portfolio management and brand development matters, including litigation and commercial exploitation issues. The copyright arm of the practice is particularly active in the creative industries sector, advising on content creation, rights clearance, and software development. Kirsten Gilbert leads the practice; she recently handled high-profile passing off actions for international rugby players. Dafydd Bevan acts for major international brands in registered and unregistered design disputes.