Elkington + Fife LLP > London, England > Firm Profile

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

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

Demonstrating its continued capability and success in EPO opposition and appeal proceedings, Elkington + Fife LLP is ‘efficient, knowledgeable and experienced in the pharmaceutical and life sciences sectors’, and advises its roster of clients on patent prosecution matters. The team counts biotechnology mandates in its workload, as well as patent drafting for multinational companies, such as Philips and IBM, in the electronics field. From the firm’s office in London, senior partner Richard Gillard leads the chemistry and life sciences group, and is the firm’s key contact for EPO opposition and appeals work, while Sevenoaks-based Nick Ertl heads up the electrical and mechanical team, and has experience in drafting patent applications, particularly for corporate clients. London-based Jens Grabenstein is another key member of the team, who assists biotechnology companies in building their patent portfolios.

Practice head(s):

Richard Gillard; Nick Ertl

Other key lawyers:

Jens Grabenstein; James Anderson; Ellie Seymour; Oliver Kingsbury; Richard Cooke; Glyn Truscott; Daniel Portch; Lee Mullen; Mark Scott; Rob O’Callaghan

Testimonials

‘The team are efficient, knowledgeable and experienced in the pharmaceutical and life sciences sectors.’

‘Ellie Seymour is a superb patent attorney. She is very attentive to all the details, responsive, and has a great grasp of a broad range of different technologies.’

‘Very reliable, responsive and creative thinkers.’

‘Oliver Kingsbury is one of our preferred partners for life science patent matters. His thorough thinking and experience allows him to bring added value and to win oppositions cases.’

‘Expert technical knowledge combined with expertise in patent prosecution. They provide a high level of service.’

‘Oliver Kingsbury stands out as thorough and creative.’

Key clients

AbbVie Inc.

Accord Healthcare

Alcon Laboratories Inc.

Amgen Inc.

Apeel Sciences Inc.

Astex

Balfour Beatty

Bayer

Beam Therapeutics

Benuvia Therapeutics, Inc.

Bial

Celleron Therapeutics

Corning Incorporated

Deka Research & Development Corp.

Fujifilm Speciality Ink Systems Limited

Graphene Composites Ltd

IBM

Imagination Technologies

Instituto de Medicina Molecular “iMM”

Fujifilm

Kiniksa

Kyowa

Malvern Panalytical B.V.

Merck Pharmaceuticals

Merck KGaA

Microline Surgical Inc.

Milliken & Company

Mundipharma

NantKwest, Inc.

Nestlé

NHS

Novartis

Philips

Pfizer

Polpharma

Procter & Gamble

ReNeuron

Rothwell Figg Ernst & Manbeck

Sandoz

Samsung

Serimmune Inc.

Solvay

Strategic Support Ltd

TempEasy Limited

Teva

The Coca-Cola Company

The Dow Chemical Company

Thrive Earlier Detection

Translate Bio

Torbay and South Devon NHS Foundation Trust

u-blox AG

University of Kent

Viatris

Visterra

Wood Phillips

Xylem Inc.

Zymeworks

TMT (technology, media and telecoms) > PATMA: Trade mark attorneys Tier 3

Long-standing domestic and international clients continue to entrust Elkington + Fife LLP with the development and management of their UK and EU trade mark portfolios. Significant client wins include Fulham FC and the team has seen an increase in UK opposition and filing matters from commercial firms. The ‘venerableChris McLeod, who operates from the firm’s London office and ‘can be relied on to provide direct, no-frills advice’, leads the practice and Sevenoaks-based Mark Scott focuses on design matters for key clients, including Corning and Xylem. In the London office, Allister McManus ‘is an associate on the rise’.

Practice head(s):

Chris McLeod

Other key lawyers:

Mark Scott; Allister McManus; Carol Nyahasha

Testimonials

‘The team is very experienced and has great strength in depth. They are accessible and responsive, as well as being team players and generally great to work with. All advice is concise, clear and to the point.’

‘The team is led by the venerable Chris McLeod, who can be relied on to provide direct, no-frills advice, backed up by technical and strategic skills. All of this is delivered with a wit drier than a Tim Vine one liner.’

‘Allister McManus is an associate on the rise. Unfailingly good humoured, he gives careful and considered advice and has a great bedside manner.’

‘A very solid TM and Patent Attorney practice, led by very experienced professionals. They really know what they are doing, and try to give commercial, sensible advice which goes beyond “box ticking” to get their clients good service.’

‘Chris McLeod has vast experience and knowledge, and can be trusted to keep a cool head.’

Key clients

Formula One Management Limited

Fulham Stadium Limited

Fulham Football Club

Independent Vetcare Limited/Evidensia

Corning Incorporated

Koninklijke Philips Electronics N.V. (Philips Intellectual Property & Standards)

Signify Holding B.V.

Fujifilm Speciality Ink Systems Limited

BASF SE

Evonik Industries AG

Acer Incorporated

Malvern Panalytical B.V.

OSA Fine Spirits

Decon Laboratories Limited

Citation Limited

Decon Laboratories Limited

The Juice Master Limited

Blank Rome LLP

Slaughter and May

Collyer Bristow

Corsearch

Knijff Trademark Attorneys

Memery Crystal LLP/RGB Legal Services Limited

La Vit Technology LLC

Nishimura & Asahi

Borenius Attorneys Ltd

Intelink Law Group PC

Work highlights

  • Acting as sole UK advisers to Formula One Management Limited, in relation to protection of the F1, Formula 1, Grand Prix and associated trade marks, maintaining the client’s entire UK portfolio and regularly file oppositions to third-party UK trade mark applications for conflicting trade marks.
  • Assisting Independent Vetcare Limited/Evidensia in growing its portfolio of trade mark applications and registrations, successfully opposing third-party trade mark applications for conflicting trade marks, and assisting with litigation.
  • Filed numerous trade mark applications for Fulham Stadium Limited/Fulham Football Club, as well as overcoming UKIPO objections, and assisted the client in promptly resolving a dispute with SKY and a potential dispute with Orange Telecom.

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 a 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 . 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

DepartmentNameEmailTelephone
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
Biology, biotechnology Jens Grabenstein
Pharmaceutical chemistry, polymer/inorganic chemistry Mark Scott
Physics, general engineering Ellie Seymour
Number of UK partners : 15
Number of other UK fee-earners : 35
Total number of staff : 100