Marks & Clerk > London, England > Firm Profile

Marks & Clerk > The Legal 500 Rankings

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

Marks & Clerk has offices located across the UK, Europe, Canada, Greater China, and the Asia Pacific, and the team provides clients with an all-encompassing patent offering, from support with initial filing to representation in litigation and commercial exploitation. Its client base includes large pharmaceutical and biopharmaceutical companies, high-profile electronic, engineering, and software companies, SMEs, start-ups, and universities. 3D printing, machine learning, and AI all remain key areas of activity for the group, especially regarding filing applications. The practice is jointly led by Simon Mounteney and Robin Oxley, both of whom are in the firm’s London office. Another notable team member is Will Nieuwenhuys, who provides clients with support regarding the global management of patent portfolios and freedom to operate mandates. The clean technology arena is a key focus for Thomas Prock, and David Grant is strong in advising on mathematical and software-based inventions within the digital technology, AI, and machine-learning industries.

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

Marks & Clerk has a core focus on managing the international trade mark portfolios of clients from the creative and entertainment, fashion and retail, financial services, and food and drink industries. This offering encompasses filings, advice on brand protection, and representation in opposition and enforcement proceedings before the UKIPO and EPO. Birmingham-based Esther Gottschalk heads up the UK and EU trade mark practice, and she has expertise in assisting US corporates with the management of their global portfolios. Also in Birmingham, French and Spanish-speaking John Ferdinand boasts expertise in the protection of non-traditional trade marks, for example shape marks, as well as international disputes. In London, dual-qualified solicitor and trade mark attorney Michael Barrett has experience in appeals before the Appointed Person.

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

Marks & Clerk has a national IP practice that comprises solicitors, patent attorneys and trade mark attorneys. Partner Simon Portman is the key contact in its  Cambridge office, where the focus is on the commercialisation of IP and other issues with a commercial component, including strategy, risk limitation, due diligence, brand protection, portfolio management, commercial contracts and industry-specific regulatory issues. Portman frequently advises companies on AI patent applications, including compliance issues within the EU AI Act.

TMT (technology, media and telecoms) > Intellectual property: patents (contentious and non-contentious) Tier 3

With expertise across hi-tech, software, and manufacturing sectors, to name a few, Marks & Clerk‘s technical capabilities enable it to operate for pharmaceutical and biotech companies that hold established global presences. Life sciences expert Mike Gilbert, who has handled a range of revocation, infringement, and declaration proceedings, and litigator Dafydd Bevan, who handles a plethora of mechanical, electronic, software, and telecoms mandates, jointly helm the group. Charlie Balme is especially knowledgeable in the field of biopharma patent litigation, while Daniel McGrath is noted for his ability to handle technical patent and SPC litigation.

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

Marks & Clerk is well-versed in issues arising from the creative, fashion, financial services, and food and drink industries, with the capacity to assist clients with portfolio work, brand protection, and global-scale disputes. Kirsten Gilbert leads the team with her wealth of experience advising clients on collaborations and brand licensing in particular, while Dafydd Bevan has a firm grasp of mechanical, electronics, software, and telecoms mandates. Gina Lodge departed to Temple Bright LLP in August 2023.

Industry focus > Life sciences and healthcare Tier 4

Clients ranging from start-ups and universities to the likes of Gilead and AstraZeneca turn to the patent prosecution team at Marks & Clerk for assistance with work such as patent revocation actions, patent portfolio due diligence and EPO opposition matters. Mike Gilbert heads up the team alongside Will Nieuwenhuys. Gilbert's practice combines high-profile patent litigation and matters concerning Supplementary Protection Certificates, while Nieuwenhuys is known for his expertise in small molecule organic and pharmaceutical chemistry. Charlie Balme is equipped to handle litigation, arbitration and commercial IP matters connected to medical devices.