Marks & Clerk

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Charlie is a Partner and patent litigator at Marks & Clerk Law who advises clients across a spectrum of fields encompassing biotechnology, medicinal devices, manufacturing, oil and gas, telecommunications, media and technology. After playing a leading role in a number of complex and high profile disputes and with over 15 years’ experience, Charlie is recognised as a global leader in life sciences patent litigation. His lead role in the successful, multijurisdictional Chugai Pharmaceutical v UCB case before the UK courts particularly stands out.

Michael Barrett

Michael is dual-qualified as a Chartered (UK) and European Trade Mark Attorney and as a solicitor. He advises brand owners on all aspects of trade mark protection and registration, including portfolio management, clearance searching, trade mark prosecution, opposition, cancellation, revocation, licensing, assignment, infringement and the law of unregistered trade marks/passing-off. He has an honours degree in English from Cambridge and subsequently obtained a Masters degree in English Renaissance Literature from Liverpool. He worked for five years for another firm of Patent and Trade Mark agents before joining Marks & Clerk LLP in August 2017. Michael now works with a number of high profile clients in different industries including manufacturing and food and beverage. He also supports the firm's creative industries group and has particular expertise in assisting clients with their brand strategies in this field.

Dafydd advises clients on the enforcement and commercialisation of intellectual property. He has particular experience of strategic advice on the litigation and licensing of TMT, electronics and software patents, regularly advising clients on such cases in the High Court and Court of Appeal. He has a broad range of experience, which, in the technology sector, includes advising on patents in fields such as software, broadcasting, graphical user interfaces, mobile telephony, network communications and internet applications. This includes recent and ongoing advice on FRAND and SEP licensing issues and related litigation. Dafydd’s other patent litigation experience relates to oil and gas machinery such as tong-positioning devices, wellbore technology and shale shakers and more general mechanical patents ranging from household equipment to industrial machinery. Dafydd also has significant experience in advising on the interaction of co-pending UK litigation and opposition proceedings at the European Patent Office, having worked closely with Marks & Clerk’s patent attorneys on a large number of oppositions relating to parallel UK litigation proceedings. In addition to his patent practice, Dafydd has considerable experience of advising on the litigation of designs, including advice on UK and EU registered and unregistered designs across a broad range of products.. His experience in this field includes such diverse areas as designs for fashion products, furniture, fitness accessories, packaging and camping equipment. Dafydd often also advises on disputes relating to trade marks, copyright and confidential information. As well as his litigation and dispute resolution experience, Dafydd has broad experience of advising clients on commercial and transactional matters involving licensing and commercialisation of intellectual property and has significant experience of IP due diligence. He has worked on R&D collaboration agreements, licensing and sponsorship arrangements, employee IP issues and the IP aspects of corporate transactions.Dafydd speaks English, French and Welsh fluently. He is happy to accept instructions and give advice in any of these languages. In particular Dafydd has recent significant experience of advising French-speaking clients on English litigation through the medium of French. Example Cases Rovi v Virgin Media and TiVo Gemstar v Virgin Media Sealed Air v Sharp Interpack Mast-Jägermeister v Global Brands Off the Wall v Sambell Engineering Mobile VPT v Link Interchange Networks and others Weatherford International v BJ Services

Samantha Collins

Samantha is a Partner and Chartered and Registered Trade Mark Attorney (UK) in our Oxford office. Samantha is also head of our national fashion and retail team, and works with both large established retailers and growing, dynamic fashion brands to develop their trade mark protection and enforcement strategies. Samantha also works with clients in the publishing, medical technologies and food and drink sectors. She advises clients in relation to both contentious and non-contentious trade mark matters in the UK, EU and around the world, including portfolio strategy and management, trade mark prosecution, brand clearance programs and trade mark oppositions and cancellation actions, as well as advising on trade mark infringement and passing off. Samantha also advises clients in relation to online infringement issues, such as keyword advertising, and domain name complaints.

Amy is a Senior Associate at Marks and Clerk. She joined us in 2013 as a trainee Trade Mark Attorney and is involved in every aspect of the registration, protection, enforcement and management of UK, EU and International trade marks across a wide variety of sectors. In 2015, Amy also completed a valuable secondment with one of the firm’s major clients.

John has over 10 years’ experience in the trade mark profession and works with a portfolio of national and international clients on developing a strategy for their trade mark protection. He works on trade mark searches, applications, oppositions and other contentious actions covering the UK, Europe and the rest of the world. John’s practice involves a wide spread of sector expertise including the food and drink, apparel, FMCG, media and entertainment sectors as well as representing clients in manufacturing industries such as the plumbing and heating sector and electrical accessories. With significant experience working with clients to develop innovative trade mark protection strategies, John helps to strategically assess clients' geographic priorities and to identify the best forms of protection for clients’ commercial needs. This often involves advice on combining trade mark protection with other IP rights, such as registered designs, and advice on bespoke enforcement strategies to address counterfeiting activity – for example, through online marketplace platforms. John has expertise in advising on protection of non-traditional trade marks including shape marks in particular and is a member of the International Trade Mark Association’s European and Central Asian sub-committee in this area. In a recent case, John also worked on a successful appeal to the General Court of the EU concerning registration of a client’s mark on the basis of acquired reputation. John has been recognised as a leading individual by World Trademark Review 1000.

Hannah is an intellectual property lawyer who advises clients on a broad range of contentious and non-contentious IP issues primarily pertaining to trade marks, passing off, design rights and copyright matters.Hannah has been involved in multiple actions before the High Court and Intellectual Property Enterprise Court including cases with multi-jurisdictional elements. Hannah has experience providing clients with practical and commercial advice from the pre-action stage through to settlement. Hannah also has particular experience submitting online trade mark, copyright and PDO infringement notices to third party web-platforms and also domain name dispute resolution procedure.On the non-contentious side Hannah has worked on corporate transactions, drafting commercial contracts, intellectual property licensing and commercialisation, mobile application and website terms of use and privacy policies, and has also advised more generally on brand protection strategy, trade mark clearance searches and both trade mark and design applications and registrations.Hannah has represented clients operating in a wide range of sectors, particularly from within fashion, food and beverages and other retail sectors, digital media and has particular experience advising clients in the fast-growing health and wellness industry.

Kirsten Gilbert

Kirsten is a Partner and an intellectual property lawyer at Marks & Clerk Law who specialises in litigation, alternative dispute resolution and brand strategy. Kirsten advises in a broad range of sectors including food & drink, financial services, pharmaceuticals, fashion and creative industries. Kirsten “Gilbert creatively uses all available tools to score client-defined wins and is a master pragmatist who helps brand owners to avoid costly litigation.”(World Trademark Review) With over 20 years’ experience, Kirsten “brilliantly” leads the legal Brand Protection and Trade Mark team, finding efficient and pragmatic ways to overcome her clients’ challenges. Kirsten is drawn to the forever-evolving nature of both trade mark law and her (sometimes off form but always classy) team, Liverpool Football Club. Whilst Kirsten has been recognised for her sound approach to pre-litigation strategies, trade mark litigation and brand portfolio management, she also has significant experience in advising clients on registration strategies, and licensing of all types of IP rights. Kirsten is an active member of the Marks & Clerk Food & Drink Team Key cases Budejovicky Budvar v Anheuser-Busch (Court of Appeal, ECJ, High Court) GO Outdoors Limited v Design Go Limited (High Court Trade Mark) DNOW UK Limited v Distribution NOW UK Limited (High Court Chancery Interim Injunction) BlackRock Inc v Blackrock International Land (High Court Trade Mark) Silver Cross v Mamas & Papas (High Court Designs) SA Spadel v Harrogate Spa Water (High Court Trade Mark) Experience Represents clients in disputes in the High Court, Intellectual Property Enterprise Court and Court of Appeal. Represents trade mark clients in proceedings before the Court of Justice and the General Court of the European Union and has assisted in trade mark oppositions and invalidity actions in the EU IPO and the UK IPO. Represented clients in many domain name disputes. Advises clients on licencing agreements for wide ranging licensing activities in various sectors. Dealt with the Treasury Solicitors Office regarding the acquisition of bona vacantia IPRs and obtaining vesting orders for intellectual property rights held by the Attorney General on trust. Acted for clients in relation to applications for preliminary injunctions and full-scale trials. Professional Highlights Kirsten is named an ‘IP Trade Mark Star’ by Managing Intellectual Property and has also been recommended by Legal 500 and World Trademark Review. Kirsten co-authored the UK Chapter of Pharmaceutical Trademarks: A Global Guide 2020/2021.

Mike is an IP lawyer who advises clients in a wide variety of business sectors on issues including litigation and dispute resolution, IP strategy and risk limitation, due diligence projects and commercial and licensing transactions involving IP. His primary focus and expertise, however, lies in life sciences patent litigation where he is considered to be one of the UK’s leading practitioners. He has represented some of the world’s leading biopharmaceutical corporations in complex patent and technical disputes including Genentech, Roche, AstraZeneca, MedImmune, Daiichi Sankyo, Pfizer, AbbVie and Chugai to name but a few. He regularly advises those clients on SPC and paediatric extension matters, a field in which he is considered to be a particular expert. He has been responsible for some of the most important life sciences patent cases with a special focus on biotech and antibody and large molecule cases. He regularly advises on data and marketing exclusivity matters and orphan drug designations. Within patent litigation, Mike has acted for and advised clients in actions in the Patents Court of the High Court, the Court of Appeal and on several petitions to the Supreme Court. He has also acted for SME client in their disputes in IPEC. Mike has significant experience of acting for clients involved in multi-jurisdictional technical disputes working as part of and coordinating integrated teams of IP specialists spanning many countries. He is actively involved in defending patent, SPC and data and marketing exclusivity rights around Europe for his clients. Mike is well known for his strategic and creative vision and is consistently recommended in the IAM Patent 1000 guide, which describes him as “always at the top of the pile, especially for pharmaceutical matters”: “personable, approachable and user-friendly, he is a tenacious litigator able to take an objective view of a case at all times.” He is listed as a ‘patent leader’ by World IP Review and as an ‘IP Star' by Managing Intellectual Property. Mike is also listed by Legal 500, and recognised as an expert by Who’s Who Legal, which describe him as an “outstanding patent litigator” and say that his “glittering biotechnology practice wins him a position in the gold tier”. He is also recognised as the number one European thought leader by Who’s Who Life Sciences 2018, who describe Mike as follows:- “the “outstanding” Mike Gilbert ranks among the very elite of practitioners in our research, and is widely considered the “go-to practitioner for SPC matters in the life sciences sector". Example Cases Aontec v Smartrac Affymetrix v Illumina Tercica v Insmed MSD v Wyeth MSD v Pfizer GSK v Wyeth Regeneron and Teva v Rinat MedImmune v Celltech MedImmune v Novartis Genentech v Hospira Lilly v Genentech Regenernon and Bayer v Genentech Takeda v Roche UCB v Chugai Astex v AstraZeneca Whitserve v CPA Jeyes v Henkel Daiichi Sankyo v KRKA and TAD Pharma Novamedix v Fox & Gardner

Kirsteen Gordon

Kirsteen drafts, files and prosecutes patent applications worldwide and has experience of opposition and appeal work at the European Patent Office. She has also handled applications for Supplementary Protection Certificates and Patent Term Extensions in a number of jurisdictions. She additionally advises clients on due diligence and freedom to operate matters and provides infringement and invalidity opinions. Kirsteen has experience of a range of different chemical subject matter including pharmaceuticals, diagnostic assays, medical devices, polymers and petrochemicals. Her current practice focuses on pharmaceuticals and medical devices, and she is also Managing Partner of our Cambridge office.

Esther Gottschalk

Esther advises on all of the trade mark aspects relating to branding and is an expert in securing trade mark rights. Working across numerous industries, she provides clear, strategic advice on how her clients can utilise their IP to achieve their business goals. Esther is involved in all aspects of trade mark protection and portfolio management including trade mark selection, prosecution and enforcement. She works across a variety of sectors, and has particular experience within automotive, IT, insurance, food & drink and publishing. Esther’s clients are SMEs and multinational corporations from a range of sectors, with a particular focus on the US market. She manages the international brand and trade mark portfolios of those companies to meet their business needs. Her clients rely on her ability to develop trade mark strategies which clearly match their commercial needs and solve their legal branding challenges as they arise.

Simon Mounteney

As a Partner and Patent Attorney, Simon works with a wide variety of traditional and cutting-edge technologies. He has notable experience in optical and electro-optical devices, display technology, batteries, power generation systems, semiconductor device fabrication, control systems, communications systems, automotive systems and various types of mechanical engineering. Simon has significant experience of advising on IP portfolio management and patent strategy, with many clients undertaking multinational patent filing programmes. He continues to represent clients who produce some of the World’s most famous consumer products, but he also enjoys working with start-ups that are seeking to develop and structure their intellectual property for revenue generation and to secure investment. In addition, Simon has extensive experience prosecuting patent applications before the UK Intellectual Property Office and the European Patent Office, where he has also represented clients in oppositions and appeals. Simon has a particularly strong practice among Asian clients and heads up the firm’s Korean business team. Simon is listed in the Legal Media Guide to the World's Leading Patent Law Experts and also in the IAM's Strategy 300 – a guide to the world's leading IP strategists. He has also written widely on various aspects of IP and discussed both the law and economics of IP on television.

Will Nieuwenhuys

Will has experience in a variety of technical fields, with particular expertise in small molecule organic and pharmaceutical chemistry. His work encompasses all aspects of patent practice, including original drafting work, the prosecution of patent applications in the United Kingdom and before the European Patent Office (EPO), the management of worldwide patent portfolios, and the preparation of opinions and freedom to operate analyses.He also has significant experience of EPO opposition and appeal proceedings, and has appeared before the Boards of Appeal of the EPO a number of times. Will also has expertise in relation to Supplementary Protection Certificates (SPCs). In addition to his patent practice, Will also has significant experience in the registration of designs, particularly European Community Registered Designs.Will was recommended in the inaugural Who's Who Legal: Patent Agents guide 2015, which praises his "impressive experience", and was again listed as an expert in 2016.

Simon specialises as a commercial contract lawyer for technology companies. He works for clients in the electronics, bioscience, defence, software, nanotech and creative industries, advising companies ranging from small start-ups to big multinationals as well as individuals, public bodies and charities. Nordic clients form a significant part of his practice. He advises on a wide range of contracts, including licenses, R&D collaborations, manufacturing agreements and procurement documentation. On the regulatory front, he has advised on compliance with clinical trials legislation and novel food applications, as well as freedom of information and data protection issues. Simon has co-written two business textbooks, Commercial Issues for Life Science Companies and Intellectual Property: the Lifeblood of your Company and has contributed articles to numerous publications, including the Financial Times, Patent World and Managing Intellectual Property. He regularly gives seminars and workshops at pharmaceutical conferences in the UK and internationally. He was also part of a UK IPO steering group putting together policies and contracts suitable for R&D collaborations in China.Simon spearheads the Cambridge branch of Marks & Clerk Law. He heads the firm’s Extended Reality team and in that capacity supplies specialist advice and training to members of XR organisations such as Immerse UK and XR Nation. Simon has been recognised as a leading practitioner in Who’s Who Legal: Life Sciences 2019 and a rising star by Managing Intellectual Property, IP Stars, 2018. Simon is a Guest Lecturer at the University of Cambridge, teaching IP within the MPhil in Therapeutic Sciences. Representative Clients Alzheimer Scotland Daal Noise Control Systems IOmet Pharma Limited Downing College, Cambridge DS Smith Packaging Limited

Thomas advises clients in the high-tech field, in particular, in the electronics sector on software, artificial intelligence and internet related subject matter. Thomas moreover has a large medical devices practice and is active in the Cleantech field. Thomas leads the Marks & Clerk practice group for Additive Manufacturing / 3D Printing; a technology in which he is considered an expert. He has been invited more than once to join a panel of experts, as the only private practice patent attorney, to present at conferences organised by the European Patent Office (EPO) on the challenges 3D printing poses to IP. He has worked on patent applications relating to non-volatile semiconductor storage devices, data processing and exchange, mobile telecommunications, smart grid related inventions, waste reduction and medical imaging, to name a few. Thomas also has experience in contentious related matters, including European oppositions, appeals and litigation.In the LMG Life Sciences Guide 2014, Thomas is listed as a ‘Life Sciences Star’ for his work in the medical devices area. He is also commended in the inaugural Who's Who Legal - Patent Agents, which refers to him as a “definite inclusion on any list”.

David is a Partner at the firm and is recognised as a leading practitioner for digital technologies and as an “outstanding specialist for machine learning patents” (Juve Patent UK Rankings). David’s academic background allows him to quickly and effectively understand complex computer-implemented and mathematical inventions – David holds undergraduate and master’s degrees in computer science and maths and the interface between the two and David also completed a Ph.D in Automated Reasoning before joining Marks & Clerk. David’s practice includes managing patent portfolios of leading multinational software companies, as well as working for universities and SMEs. David has considerable experience of drafting and prosecuting patent applications throughout the world, as well as advising clients on infringement and validity matters. David also has particular expertise in advising in connection with the inherent patentability of computer implemented inventions in different jurisdictions around the world. Alongside David’s particular experience in artificial experience, David’s experience covers a full range of aspects of computer science including data storage systems, computer implemented mathematical methods, image analysis including methods for analysing circuit boards and medical image processing, data analysis, communications protocols and computer graphics to name just a few. David is also the managing partner of our Manchester office.

Ed became a partner at Marks & Clerk in 2004. He advises clients operating in a variety of business sectors, with a focus on advanced electronic and data technologies. He has extensive experience of the complex legal issues surrounding patent protection of computer implemented inventions. The primary focus of his work is on obtaining patent protection for clients, allied with advising on other aspects of IP management such as infringement risk, patent validity, and the impact of standards essential patents. He uses his background in Communications Engineering to advise businesses on the impact of IP to digital data and mobility technologies. He has substantial experience of preparing and prosecuting patent applications directed to signal processing, channel detection and physical layer protocols, through to data level technologies such as video coding and compression, and data security, including cryptography. Ed has also advised at all stages on working with technical standards, specifically IEEE and MPEG standards. He is currently focused on helping businesses meet the challenges and opportunities presented by the industrial application of digitalisation, notably technologies relating to the Internet of Things, 5G, Blockchain and AI. Ed has been listed as an expert by Who’s Who Legal on numerous occasions, most recently in 2019.

Mike is experienced in all aspects of trade mark, copyright and design work, including the filing and prosecution of UK, overseas, EU and international trade mark and registered design applications, and advising on availability and conflicts. Mike heads up the trade mark team in the Manchester office and is leader of the firm’s design-copyright practice group. Mike’s practice centres on contentious matters such as trade mark oppositions and cancellation actions, alongside trade mark and design infringement matters. Mike has particular expertise in relation to trade mark and design law relating to creative industries and advertising, and the handling of complaints at the Advertising Standards Authority. He also has considerable experience in relation to the transfer and assignment of intellectual property rights.

Jonathan Stafford

Jonathan handles patent matters in the chemistry and life science sectors, with emphasis on pharmaceuticals, industrial chemistry, materials, synthetic methods and medical and diagnostic devices. Jonathan has particular expertise in the area of small molecule drugs, formulations, graphene, catalysis, polymers and polymer additives, and stereoselective synthetic processes. Jonathan also handles design work in all fields. He was recognised as a Rising Star by IP Stars in 2017 and named as a recommended life sciences practitioner in the Legal 500 2020 rankings, JUVE 2020 and JUVE 2021 rankings, and IAM Patent 2021 rankings. Jonathan's work includes the drafting and prosecution of patent applications including coordinating the prosecution of multi-jurisdictional patent portfolios, advising on validity and infringement, and advising companies on improving their IP strategy and processes. Jonathan has significant experience in leading EPO opposition and appeal proceedings, including complex multi-party hearings representing patentees and opponents, and working closely with litigators to coordinate EPO opposition and local national litigation strategies. Jonathan also has extensive experience in handling IP due diligence for companies looking to buy, license, or invest in new technology, including conducting freedom to operate and SWOT analyses. Jonathan's clients include large corporations, SMEs, start-ups and university technology transfer companies. He has particular experience of advising spin-outs in patent matters from initial start-up stage through to preparing for the IPO process. Furthermore, he was recognised by the IAM Patent 1000 rankings as "the quintessential full-service practitioner, with the perfect balance of acumen, command and reliability: He understands a wide variety of complex technologies and is astute at identifying the opposition’s weaknesses and turning them in the client’s favour.”

Duncan White is the Managing Partner of the Oxford office. In the course of nearly 25 years in the patent profession, he has established a well-regarded international practice, spanning the UK, USA, Japan, Israel, and Northern Europe. Duncan specialises in the drafting and prosecution of patents in the fields of computer-implemented and software-related inventions, particularly in the consumer electronics sector. He also handles patent cases in a wide range of other industries, such as oil and gas, semiconductor manufacturing, and medical devices. Duncan also provides filing strategy and portfolio management advice, regularly represents clients in oral proceedings at the EPO and UK IPO, evaluates standard-essential patents, conducts freedom to operate searches, and handles design registrations in the UK and overseas.

Andrea Williams

Andrea is a Chartered (UK) and European Patent Attorney who works for both local and overseas clients to draft and prosecute biotechnology patent applications worldwide. She has significant experience in drafting and prosecuting applications covering new plant traits, transgenic and genome edited organisms.She also has wide-ranging experience in drafting and prosecuting applications for large molecule technologies. In particular, her practice covers gene therapies, including modiﬁed vectors for delivery, as well as a range of antibodies and ADCs for therapy and as diagnostics for cancer, autoimmune and neurodegenerative disorders.Andrea has considerable experience in contentious matters as well as in providing FTO, due diligence and validity opinions in the biotechnology field. She has also advised on plant breeders' rights and has presented at the Plant Variety Protection Conference.

Gareth Williams

Gareth specialises in biotechnology-related patent work, with particular expertise in genomics and peptides. For his doctorate he conducted research into human molecular biology and genetics, which was funded as part of the Human Genome project. His patent practice includes inventions relating to therapeutic antibodies and proteins, stem cells, pharmaceutical formulations, genetically modified organisms, diagnostic and screening methods, and research tools. As well as filing and prosecution of patent applications worldwide, Gareth has extensive experience of attending hearings at the European Patent Office. His practice also involves advising on patent term extension, infringement matters and general intellectual property strategy. He provides freedom to operate and other due diligence reports on complex IP portfolios for clients considering investing in or acquiring IP assets. Gareth is a frequent speaker at conferences, and has published many articles on aspects of biotechnology patenting practice, as well as authoring and editing Marks & Clerk's annual Life Sciences Reports. He is listed in the LMG Life Sciences Guide 2014 as a ‘Life Sciences Star’ and described as “easy to work with and capable of producing good reports concerning patent diligence and transactions.”

Mike is an expert in patent matters relating to digital technologies, and in particular artificial intelligence (AI). Mike is the lead partner on our AI Reports, in which we studied the impact of the spectacular growth in AI on patent filings at the European Patent Office (EPO) over the last two decades. Mike’s background in Computer Science, in which he holds a master’s degree from University of Manchester, gives him the ideal technical foundation to understand his client’s inventions in all matters of digital technologies. In addition to artificial intelligence, Mike has extensive experience of patent matters relating to all aspects of computer science, including signal processing, image analysis, communications protocols, computer graphics. Mike also is also an expert in the area of lithographic systems, analogue and digital electronics. Mike's uses his technical expertise and commercial focus to advise a broad range of clients from large multinational companies to universities and SMEs. Mike’s international practice means that he is fluent in drafting and prosecuting patent applications throughout the world, and advising clients to navigate contentious matters. Mike is also the partner responsible for both Marks & Clerk’s Training Academy and our Client Academy.