Marks & Clerk > Birmingham, England > Firm Profile

Marks & Clerk
ALPHA TOWER
SUFFOLK STREET QUEENSWAY
BIRMINGHAM
B1 1TT
England

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.

Practice head(s):

Daniel Talbot-Ponsonby; Simon Mounteney

Other key lawyers:

Thomas Prock; Will Nieuwenhuys; Mike Williams; Andrew Docherty; Jonathan Stafford; Sheila Wallace; Philip Cupitt; Tim Hargreaves; David Murray; Matthew Jefferies; Giles Pinnington; James Shearman; Lara Sibley; Daniel Sizer; Andrea Williams

Testimonials

‘Their technical knowledge on UK patent matters is excellent.’ 

‘M&C are a very professional team, and they do an excellent job of turning our ideas into patent applications. We have been very successful in gaining granted patents by using M&C as our attorneys.’ 

‘Their attention to detail is spot on and they provide timely and pragmatic advice.’ 

Key clients

AB InBev

Gilead Sciences

Uber

Toshiba

Hewlett Packard Enterprise

Bridgestone

THALES

Next Holdings Limited

Virgin Media

Nintendo

Roche

Genentech

Pfizer

Micron

Ricoh

Pukka Pies

Crew Clothing Company

Michael Best & Friedrich LLP

AMS Osram

YASA Limited

Tokamak Energy Ltd

Advance Medical Solutions

Crown Packaging Manufacturing UK Limited

The University of Edinburgh

University of St Andrews

University of Birmingham

Equinor

Cambridge GaN Devices

Inside Biometrics Limited

Genuit Group Plc

Provisur Technologies

RevoluGen

Dynex

Pal International

Flusso

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.

Practice head(s):

Simon Portman; Michael Moore

Testimonials

‘I have used the practice for many years now. The service at a commercial and personal level has remained excellent. They keep abreast of all changes and development in the marketplace, which gives me full confidence in my decision-making.’

‘I have recently had a very unusual transaction and the advice and help l received was excellent, despite me giving them a number of legal challenges. I cannot speak highly enough of the individuals l deal with.’

‘The advice and help l received from Simon Portman was exceptional. The legal and commercial advice was so reassuring and the understanding of the problems l encountered was dealt with a great deal of empathy.’

Key clients

Hockey 21

Alzheimer Scotland

DAAL Noise Control

XR Nation

Downing College, Cambridge

DS Bio

Tannoi

Work highlights

  • Advising a former England hockey player who is setting up an online, interactive hockey game, Hockey 21, in relation to IP strategy, contracts with game developers, sponsorship agreements, and licensing.
  • Advised Alzheimer Scotland in relation to intellectual property matters arising out of its participation in the Brain Health Scotland consortium.
  • Advising XR Nation in relation to its business ecosystem for Nordic augmented reality and virtual reality companies.

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.

Practice head(s):

Mike Gilbert; Michael Moore; Dafydd Bevan

Other key lawyers:

Testimonials

‘Marks & Clerk have successfully represented us in a patent litigation in England. Working with the team was a pleasant experience.’

‘Graham Burnett-Hall is good at understanding involved technical concepts. In technical discussion, he quickly grasps the core problems. He is patient in explaining the intricacies of British law and how they affect the litigation. He is good at thinking out-of-the-box in applying recent case law to the litigation.’

Key clients

Pfizer

Genentech

Daiichi Sankyo

AstraZeneca

PharmaMar

Manitou

The Broad Institute

dSPACE

Work highlights

  • Acted for Pfizer in a multi-patent High Court action against Regeneron and Teva relating to anti=NFG antibodies for use in the treatment of osteoarthritis.
  • Acted for dSPACE in its successful defence of High Court patent infringement proceedings relating to electronic testing systems.
  • Acted for Manitou in a complex, five patent action against JCB relating to control systems for heavy machinery.

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.

Practice head(s):

Daniel Talbot-Ponsonby; Simon Mounteney; Tom Farrand

Other key lawyers:

Esther Gottschalk; Samantha Collins; Michael Barrett; Jason Chester; Claire Keating; Amy Dunn; Noëlle Pearson

Testimonials

‘The team are incredibly efficient and knowledgeable. They must have invested in digital innovation as they are always on the front foot and proactive with their advice. They have assisted us not just with UK-based enquiries but also demonstrated they are very capable in offering advice covering the rest of the world too. Marks & Clerk make everything easy and seamless.’

‘We work with Jason Chester. He is very responsive and his comments are always very clear and helpful. It is very important for us that we have someone we can always rely on.’

‘Having worked with Marks & Clerk for over eight years, I would say the team have a fantastic understanding of companies’ trade mark needs and are expert at navigating the various challenges that come with having and applying for trade marks.’

‘Claire Keating makes the difficult easy. She explains in a way that a business person, rather than legal expert, would understand. This means decision making and risk assessment becomes straightforward.’

‘Working with Jason Chester has been a pleasure, he always makes time and ensures we are provided with the best advice on our trade marks and potential pit falls associated with these.’

Key clients

Pukka Pies

Bridgestone

Next

Crew Clothing

QCare Site Services, Inc

Grafton International Ltd

Kee Safety Limited

First Longevity Ltd

Hill & Smith Holdings PLC

Luceco UK Limited

Panda Life

The Scottish Football Association

Anheuser-Busch InBev

Albert Bartlett

Tomatin Distillery

The Scotch Whisky Association

Renegade Spirits

Harris Tweed

Saniflo

S.Joon

St Pierre Groupe

Pal International

Ideagen Plc

Lothian Buses

Jägermeister

Work highlights

  • Filed various oppositions in Europe and the US on Panda Life’s behalf.
  • Protected THE PEOPLE’S PIE as a trade mark for Pukka Pies to support activity under that name and advised on IP implications in advance of strategic business decisions and planning.
  • Successfully overturning a decision on appeal at the EUIPO, which initially cancelled Saniflo’s EU trade mark registration for the SANI trade mark on non-use grounds.

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.

Practice head(s):

Kirsten Gilbert; Michael Moor

 

Other key lawyers:

Dafydd Bevan; Vicky Butterworth; Gina Lodge; Hannah Finster; Claire Chalmers

Testimonials

‘Strategic expert advice.’

‘Willing to listen and take on board the views of the client, provided practical assessments and negotiated resolution.’

Key clients

Bridgestone

Mast-Jägermeister

House of Bruar

Manthorpe Building Products

Work highlights

  • Advised 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.
  • Acting for Long Harbour Ltd in High Court passing off and trade mark validity and invalidity proceedings relating to use of the WAY OF LIFE mark in respect of real estate marketing and agency services.
  • Acted for leading country clothing specialist House of Bruar, in defence of registered and unregistered design infringement proceedings brought in the Intellectual Property Enterprise Court relating to a range of footwear products.

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

DepartmentNameEmailTelephone
International chairman Daniel Talbot-Ponsonbydtalbot-ponsonby@marks-clerk.com+441865397900
UK Managing partner Simon Mounteneysmounteney@marks-clerk.com+44 20 7420 0000
Marks & Clerk Law Managing Partner Mike Gilbertmgilbert@marks-clerk.com+44 20 7420 0250
Managing partner, Aberdeen Andrew Dochertyadocherty@marks-clerk.com+44 1224 957 100
Managing partner, Birmingham Esther Gottschalkegottschalk@marks-clerk.com+441216435881
Managing partner, Cambridge Kirsteen Gordonkgordon@marks-clerk.com+44 1223 345520
Managing partner, Edinburgh Paul Chapmanpchapman@marks-clerk.com+441312217000
Managing partner, Glasgow Richard Gibbsrgibbs@marks-clerk.com+44 141 221 5767
Managing partner, London Will Arendswarends@marks-clerk.com+442074200000
Managing partner, Manchester David Robinsondrobinson@marks-clerk.com+44 161 233 5800
Managing partner, Oxford Duncan Whitedwhite@marks-clerk.com+44 1865 397900
PhotoNamePositionProfile
Amy Dunn photo Amy DunnAmy is a Senior Associate at Marks and Clerk. She joined us…
Esther Gottschalk photo Esther GottschalkEsther advises on all of the trade mark aspects relating to branding…
Number of UK partners : 51
Number of other UK fee-earners : 112
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INTA - International Trademark Association
IBSA