Firm Profile > Elkington + Fife LLP > London , London

Elkington + Fife LLP
THAVIES INN HOUSE
3-4 HOLBORN CIRCUS
LONDON
EC1N 2HA
London

PATMA: Patent attorneys Tier 2

Elkington + Fife LLP is among the most renowned oppositions and appeals practices in the market, including extensive experience in petitions for review, with a strong electronics department and a powerful team specialising in the prosecution of chemical and pharmaceutical patents, most notably acting for major generics players. The practice's strength in the prosecution of patents for software and computer-implemented inventions is another clear asset. London's Richard Gillard directs the chemical and life sciences group while Sevenoaks-based Nick Ertl heads the electrical and mechanical group.

PATMA: Trade mark attorneys Tier 2

Elkington + Fife LLP's trade mark practice continues to grow, attesting to the firm's success in carving out its space in the market since practice head Chris McLeod joined in 2015. Strategic trade mark advice and the drafting and filing of applications are as much a part of the team's portfolio of expertise as the representation of clients in opposition and appeal proceedings in which the group often prevails over opponents with significantly deeper trade mark attorney benches. The group succeeds in attracting a varied range of clients, acting for major international corporations, but maintaining a steady caseload for smaller domestic clients.

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

Department Name Email Telephone
Pharmaceutical chemistry, polymer/inorganic chemistry Richard Gillard
Pharmaceutical chemistry Oliver Kingsbury
Pharmaceutical chemistry Richard Cooke
Pharmaceutical chemistry, polymer/inorganic chemistry Lee Mullen
Pharmaceutical chemistry, polymer/inorganic chemistry Samantha Busher
Polymer/inorganic chemistry, semiconductor technology Erik Scheuermann
Biology, biotechnology Glyn Truscott
Physics, general engineering James Anderson
Software, business methods Nick Ertl
Software, business methods Daniel Portch
Electronics, Software, & IT Rob O'Callaghan
Trade marks, copyright, designs Chris McLeod
Photo Name Position Profile
Dr Richard Cooke  photo Dr Richard Cooke
Number of UK partners : 13
Number of other UK fee-earners : 21
Total number of staff : 63