Kilburn & Strode LLP > London, England > Firm Profile

Kilburn & Strode LLP
LACON LONDON
84 THEOBALDS ROAD
LONDON
WC1X 8NL
England

TMT (technology, media and telecoms) > PATMA: Patent attorneys Tier 1

As highlighted by one client, Kilburn & Strode LLP has ‘remarkable bench strength, both in depth of knowledge, experience and breadth of subject matter expertise’, particularly across the pharmaceutical and chemistry arenas, as well as the automotive and consumer goods sectors. Patent prosecution takes up a large proportion of practice’s workload, as well as EPO opposition and appeal proceedings. Notable changes in the sizeable life sciences and chemistry team, which is led by Nick Lee, include the retirement of Kristina Cornish and recruitment of Jo Bradley from Marks & Clerk in August 2021. The technology group is led by Gareth Fennell, while Jim Miller leads the engineering practice. The firm also continues to consolidate its presence in San Francisco and the Netherlands.

Practice head(s):

Richard Howson; Nick Lee; Gareth Fennell; Jim Miller

Other key lawyers:

Mark Abthorpe; Nick Bassil; Elizabeth Crooks; Jennifer Harris; Sarah Lau; Nick Lee; Tom Leonard; Jo Bradley; Nick Shipp; Harry Harden; Alexander Korenberg; Jeremy Smith; Gwilym Roberts; Marco Morbidini; Robin Lloyd; Dayle Callaghan

Testimonials

‘There is remarkable bench strength at Kilburn & Strode, both in depth of knowledge, experience and breadth of subject matter expertise in intellectual property. The attorneys I have worked with are not only intelligent, highly motivated, and pragmatic, but take the time to understand my business needs and commercial considerations.’ 

‘Elizabeth Crooks is a smart and passionate advocate and many in my company have repeatedly commented on how lucky we are to have her on our side.’ 

‘Mark Abthorpe’s expertise and focus on value-added advice shines. He has a remarkable ability to quickly get to the crux of complex issues and develop/implement winning strategies and approaches for us.’ 

‘Marco Morbidini went the extra not one, but ten miles for us, effectively providing perfect in-house style services. From budgeting to summaries, participation in investor meetings to institutional/sponsor relations, Marco has offered and continues to offer just what’s right for us.’ 

‘The team manages our portfolio efficiently and without fuss.’ 

‘Dayle Callaghan is a very good patent attorney and is always ready to provide advice and assistance as needed.’ 

‘Jennifer Harris has shown particular strength in identifying appropriately balanced patent strategies and claim structures to provide broad and strong composition of matter IP protection.’ 

‘An efficient and knowledgeable firm who get on with the job well. Also, creative and proactive, always thinking out of the box to develop practical solutions.’ 

Key clients

Viasat

Kortical Ltd

Arrival Limited

Reaction Engines Limited

Honeywell International Inc

Immunocore Limited

F. Hoffmann-La Roche Ltd and Tusk Therapeutics Ltd

The Johns Hopkins University

Janssen Pharmaceutica NV/Janssen Sciences Ireland

Boeing

Work highlights

  • Successfully defended Viasat in an opposition filed by the EU.
  • Instructed by Neurim Pharmaceuticals (and Flynn Pharma) and successfully convinced the EPO to grant a new European patent covering Circadin, which was infringed by Mylan in the UK.
  • Managing Aston Martin’s patent and design portfolio.

TMT (technology, media and telecoms) > PATMA: Trade mark attorneys Tier 1

Kilburn & Strode LLP ‘take away the heavy lifting’ from its roster of clients, and the team is able to provide a seamless UK and European service from its twin bases in London and Amsterdam, as well as leveraging the expertise of the firm’s offices in Munich and San Francisco. Demonstrating its continued capability in filing EU trade mark applications, the firm’s European presence remains strong, and the Dutch team is expanding, particularly in the agricultural and horticultural sectors. Carrollanne Lindley, who ‘never pulls any punches and neither does she downplay issues’, leads the practice and focuses on strategically managing global trade mark portfolios, while Rowena Tolley is praised by one client as ‘incredibly prompt, responsive and commercially sensible’. Key areas of expertise include the electronics, pharmaceuticals, automotive, cosmetics and charity sectors.

Practice head(s):

Carrollanne Lindley

Other key lawyers:

Rowena Tolley; Iain Stewart; Ryan Pixton; Jeffrey Parker; Ben Scarfield

Testimonials

‘An excellent team with extensive experience. They provide timely and commercially focused advice on a range of matters, from specific prosecution issues through to pragmatic ways of dealing with contentious matters.’

‘Rowena Tolley is one of the best UK trade mark attorneys that we have worked with. She is incredibly prompt, responsive and commercially sensible. She communicates very effectively and efficiently, allowing us to dedicate minimal time to addressing the requirement at hand.’

‘Carrollanne Lindley is excellent, very commercial, hands-on and responsive. Ben Scarfield is also very responsive and knows his stuff.’

‘Ability to co-ordinate large and complex tasks. Excellent commercial knowledge and they take away the heavy lifting from me.’

‘Carrollanne Lindley is brilliant to work with. We have worked with her for over 20 years now. She never pulls any punches and neither does she downplay issues. She has advised on portfolio strategies, as well as prosecution and contentious matters. Her prosecution advice is always pragmatic and based on an extensive knowledge of case-law and practice.’

‘Rowena Tolley is highly responsive, practical, efficient, and a joy to work with.’

Key clients

Colgate-Palmolive

AT&T

NBC Universal

Costa Coffee (part of Coca-Cola)

BlackBerry

Bloomsbury Publishing

Porsche

Zoom Video Communications

Mastercard International Incorporated

Coinbase, Inc.

La Perla

Instagram

Vitabiotics

Mubadala

Samsung Electronics

Xor

Chiasma

Canadian Institute of Financial Planning

Paul Costelloe

Leonard Cheshire

Hay House

Geneva Laboratories Limited (Bio-Oil)

Lumen (formerly CenturyLink)

Immunocore

Gilead Sciences

Abbott

LSI Solutions

Precision Medicine

Scancell

Seagate

WarnerMedia

Sesame Workshop

Bad Robot

Entertainment Industry Association – Stand Up to Cancer

Millennium & Copthorne

Bahlsen

Perfetti van Melle

Block (formerly Square, Inc)

TeamViewer

USB Implementers Forum

Corza Health Inc

Blackbullion

The Modern House

Norton Motorcycles

easyJet

Hospital Corporation of America

Bill and Melinda Gates Foundation

Emerson Fittipaldi

Domestic and General

Cable & Wireless

Blo Blow Dry Bar, Inc

Candle-lite Company, LLC

Farmobile LLC

Groq, Inc.

Hero MotoCorp Limited

Ability Matters Group

Purity Wellness Group Ltd

Staffline Group (Staffline Recruitment/PeoplePlus)

The Spring League LLC

The Very Good Food Company Inc.

Work highlights

  • Managing Vitabiotics’ worldwide portfolio, spanning renewals and filings, together with strategic advice on household names including Feroglobin, Osteocare and Perfectil.
  • Assisting Mubadala Investment Company with its trade mark portfolio, providing reports and advising on how to strengthen its position, as well as regarding IP licensing within the group.
  • Advised Zoom Video Communications on multiple, interconnected opposition and revocation actions.

Kilburn & Strode understands the point where business, innovation and the law meet. Its reputation for straight-talking, commercially sound advice has helped to make it one of Europe’s leading intellectual property firms. Dedicated to helping its clients protect and profit from ideas, the team is renowned for making the complex simple and for seeing the business issues as clearly as the legal ones. This blend of skills has seen the firm consistently ranked as top-tier in independent surveys.

The firm: Kilburn & Strode is wholly focused on intellectual property. This single-minded approach enables the team to advise on the many legal, commercial and technical issues that come together in this highly complex area of the law.

The firm is home to many attorneys who are recognised as leading the way in their various disciplines. The well-respected trade mark and patent teams include specialists in tech (electronics and IT),  biotechnology, chemistry (material and pharmaceutical) and engineering. Collectively, they manage to combine being at the top of their game with a reputation for friendliness and jargon-free advice.

This is a firm that understands the value in tailoring its approach to suit the aims of each client. The team works collaboratively, taking the time to understand the issues on the table and the possibilities in the marketplace. It’s an approach that has been honed over many years with a range of clients – big and small, established and new, universities and individuals.

Working this way has ensured that Kilburn & Strode is a permanent fixture at the top of professional surveys and has helped to make the firm a leading choice Europe-wide for IP advice.

Types of work undertaken: Kilburn & Strode offers a complete intellectual property service – whatever it takes to help clients protect and generate value from their IP interests. The firm works with a wide variety of industrial and professional clients from around the world and is particularly well known for advising on the acquisition, enforcement and licensing of worldwide IP rights.

Patents: the patent team has a long track record of delivering legal advice that makes good business sense. Its full range of services is as broad as the world of patents itself and includes the filing and prosecution of patent applications, portfolio planning and management, watching and searching for third-party rights, infringement and validity opinions licensing, renewals, due diligence reports, fundraising prospectus opinions and patent term extensions (Supplementary Protection Certificates – SPCs).

The team also has a strong background in policing intellectual property rights and in litigation and dispute resolution. Appearing before the opposition divisions and appeal boards of the European Patent Office is a key specialism, as is working with solicitors and counsel in UK court actions, and with colleagues across Europe and internationally in multi-jurisdictional cases.

Trade marks: the firm’s trade mark team works with clients throughout the world and offers a service that spans all aspects of portfolio management. This includes trade mark searching and advice, opinions regarding infringement and passing-off, filing and prosecution of trade mark applications, oppositions and cancellation actions. The team also advises on licensing, anti-conterfeiting, copyright, due diligence, registrable transactions, enforcement processes and conflict resolution.

Handling the legal and practical issues surrounding community trade marks and international ‘Madrid’ registrations is another area where Kilburn & Strode has considerable experience. The firm’s attorneys have also spent a great deal of time handling contentious matters in the European Union and further afield.

Designs and copyright: Kilburn & Strode has established itself as a leading firm in this increasingly important area of IP law. Its attorneys are helping clients to safeguard their copyright and designs throughout the UK and Europe, delivering advice on the status of their IP and a strategy to protect it. They have a huge amount of experience in filing and prosecuting applications for design registration in the UK and before the EUIPO.

Supplementing these core disciplines, Kilburn & Strode offers services that extend into all areas of intellectual property – it’s fair to say that its attorneys’ command of their various subject areas makes them the first choice to advise on anything from the everyday to the exceptional.

DepartmentNameEmailTelephone
Managing partner Richard Howson
Trade marks Carrollanne Lindley
Life sciences & chemistry Nick Lee
Engineering and designs James Miller
Tech Gareth Fennell
Number of UK partners : 34
Number of other UK fee-earners : 99
Total number of staff : 249