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

Elkington + Fife LLP has demonstrable expertise in EPO opposition and appeals work, and it offers its pharmaceutical clients support with the entire lifecycle of their patent mandates; the group represents four of the largest pharmaceutical companies in the world. London-based senior partner Richard Gillard, praised as ‘tenacious and knowledgeable’, sits at the helm of the chemistry and life sciences practice with strong experience in opposition and appeals work and, while Nick Ertl in Sevenoaks chairs the electrical and mechanical group. Ertl is skilled in patent drafting for corporate clients, including for medical imaging, display technology, electronic circuits, optical communications equipment, and many more products. James Anderson (Sevenoaks) is highly adept at advising clients on mechanical, materials, and engineering patents, and London-based Jens Grabenstein is growing the firm’s biotechnology offering.

Practice head(s):

Richard Gillard; Nick Ertl

Other key lawyers:

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

Testimonials

‘Elkington and Fife are somewhat of a hidden gem amongst the leading UK patent firms. They are successful and great to work with.’

‘Richard Gillard and Oliver Kingsbury stand out. Richard is tenacious and knowledgeable, and Oliver is hugely experienced and develops winning arguments.’

‘The team is both knowledgeable and very responsive to inquiries.’

‘Robert O’Callaghan has consistently high availability for urgent matters, and provides proactive pragmatic recommendations to cost effectively move matters forward.’

‘Robert O’Callaghan is an in-depth expert in global navigation satellite systems!’

Key clients

AbbVie

Accord Healthcare

Alcon Laboratories

Amgen

Analog Devices

Apeel Sciences

Astex

Balfour Beatty

Bayer

Beam Therapeutics

Benuvia Therapeutics

Bial

Celleron Therapeutics

Corning Incorporated

Coventry City Council

Dana Farber Cancer Institute

Deka Research & Development

Fujifilm Speciality Ink Systems

Glowbuzzer

Graphene Composites

IBM

Imagination Technologies

Instituto de Medicina Molecular

Fujifilm

Kiniksa

Kyowa

Malvern Panalytical

Merck Pharmaceuticals

Merck KGaA

Microline Surgical

Milliken & Company

Mundipharma

NantKwest

Nestlé

NHS

Novartis

Philips

Pfizer

Polpharma

Procter & Gamble

ReNeuron

Rothwell Figg Ernst & Manbeck

Sandoz

Sanofi

Samsung

Serimmune

SLAMCore

Solvay

Strategic Support

Takeda

TempEasy

Teva

The Coca-Cola Company

The Dow Chemical Company

Thrive Earlier Detection

Torbay and South Devon NHS Foundation Trust

u-blox AG

Universal Quantum

University of Kent

Versuni

Viatris

Visterra

VitaFlo

Wood Phillips

Xylem

Zymeworks

Work highlights

  • Advising IBM UK on drafting and prosecuting patent applications for AI Intelligence and machine learning inventions.
  • Assisting Novartis with its prosecution proceedings and strategy regarding its entire immune-checkpoint-related antibody portfolio.
  • Representing Sanofi as an opponent in opposition proceedings against GSK covering RNA vaccines.

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

Elkington + Fife LLP boasts a team of ‘excellent subject-matter specialists’ that are highly adept at handling UK trade mark filings, oppositions and related disputes, clearances, and recordals. Well-known brands continue to instruct the group with their UK and EU trade mark portfolios, and it has seen an increase in instructions by large commercial firms and foreign associates. Chris McLeod ‘leads a talented and dedicated team’ from the firm’s London office and is praised as a ‘complete genius’. In Sevenoaks, Mark Scott is skilled in registered design mandates, while London-based Allister McManus focuses strongly on contentious matters.

Practice head(s):

Chris McLeod

Other key lawyers:

Testimonials

‘Chris McLeod leads a talented and dedicated team who are proactive, responsive, and great to work with. Chris is highly knowledgable in all aspects of trade mark law.’

‘I appreciate the honesty and straightforwardness, as well as the professional skills the individuals I work with in this firm apply.’

‘A very solid and professional group of practitioners. I have worked with Chris McLeod and his team for many years and find them reasonably priced, very available, and the advice is always of a very high technical standard. I have no hesitation in recommending them to my clients, and working with them as a team. Understated excellence.’

‘I have worked for many years with Chris McLeod. I don’t think he has ever made a mistake. He sees points very clearly, and has very good professional judgement. A true professional of the old school.’

‘The team are excellent subject-matter specialists and advise clients on a vast range of matters, from UK and international trade mark applications and design right infringements to domain name disputes. They are responsive, pleasant, and a joy to work with. Their fees are reasonable, and no problem is unsolvable.’

‘Chris McLeod is a complete genius. He responds at lightning speed and gives absolutely the best advice in a pithy and accessible way that clients can immediately understand.’

‘Allister McManus is responsive, helpful, and astute.’

Key clients

Formula One Management Limited

Fulham Stadium Limited

Fulham Football Club

Corning Incorporated

Philips B.V.

Signify Holding B.V.

Fujifilm Speciality Ink Systems Limited

BASF SE

Evonik Industries AG

Spire Healthcare Limited

Malvern Panalytical B.V.

OSA Fine Spirits

Decon Laboratories Limited

Citation Limited

Imperial College of Science

FabricNano Limited

LexiFi Limited

Mirabeau SAS

The Juice Master Limited

Petronella Ravenshear

Better Nature Limited

Corsearch

Slaughter and May

Borenius Attorneys

Blank Rome LLP

Merkenbureau Knijff & Partners

Collyer Bristow

Spencer West LLP

Marcuria

Onel Trademarks

Memery Crystal LLP

RGB Legal Services Limited

Nishimura & Asahi

Corpo Legem

CyberLink Corporation

Mana Biosystems Limited

Work highlights

  • Advising Formula One Management on the F1, Formula 1, Grand Prix, and associated trade marks.
  • Advising Fujifilm Speciality Ink Systems on filing and registering numerous UK trade mark applications, international registrations, and foreign national applications for the client’s established industrial ink brands.
  • Representing Corning Incorporated in trade mark applications and oppositions, and successfully assisted the client with resolving a long-running, multi-jurisdictional dispute with Evolv Technologies.

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 or law firms. 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. Partners are experts on pharmaceutical patent supplementary extension certificates (SPCs) in Europe with the firm handling the SPC filing programs for numerous blockbuster drugs. Oliver Kingsbury has 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 the EUIPO via the firm’s EU associates. 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 office in Sevenoaks, 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, EU 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, EUTM, foreign and international applications. The Elkington + Fife trade mark team also has substantial experience in relation to handling UK and EUTM 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.

Offices: London and Sevenoaks

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
Biology, biotechnology Jens Grabenstein
Pharmaceutical chemistry, polymer/inorganic chemistry Mark Scott
Physics, general engineering Ellie Seymour
Pharmaceutical chemistry & food technology Andy Nicoll
Consumer products, chemistry Richard Scott
Software, business methods, general engineering Zachary Jelley
Pharmaceutical chemistry, polymer/inorganic chemistry Paul Brookes
Number of UK partners : 19
Number of other UK fee-earners : 26
Total number of staff : 100