International

As innovative companies increasingly expand their horizons on the global stage, securing impervious protection across borders remains a top priority. Presented here is a list of those firms which boast an international presence and secure IAM Patent 1000 listings in multiple regions.

Firms

H
Baker McKenzie
Bird & Bird
Clyde & Co LLP
Covington & Burling LLP
DLA Piper
EIP
Foley & Lardner LLP
Herbert Smith Freehills LLP
Hogan Lovells International LLP
Jones Day
Marks & Clerk
Mayer Brown
Morrison & Foerster LLP
Norton Rose Fulbright
O’Melveny & Myers LLP
Orrick, Herrington & Sutcliffe LLP
Quinn Emanuel Urquhart & Sullivan LLP
Ropes & Gray LLP
Rouse & Co International
Baker McKenzie
Flying its flag from 77 offices across 47 countries, Baker McKenzie is a global powerhouse. Its collegial lawyers band together to map out multi-jurisdictional portfolio management strategies that chime with clients’ overall business objectives and dazzle in cross-border fights. Global IP Manager, a piece of sophisticated online software, makes this cooperation seamless; updates are shared instantly and portfolios are viewable 24/7.
Bird & Bird
Since winning its first patent case in London in 1909, Bird & Bird has expanded wholesale to become a full-service heavyweight, but it still places tremendous emphasis on its IP practice, regarding this as fundamental to its overarching strategic vision. Around the world 230 patent specialists provide stellar filing, licensing and enforcement support. In the United Kingdom, eight ranked litigators blaze a trail in the pharmaceuticals space – supplementary protection certificate issues are a forte – while mandates at the intersection of patent and antitrust law continue to keep the 40-strong German team busy, which acted in the game-changing dispute between Huawei and ZTE. Outside Europe, the firm is particularly strong in China and Singapore, where leading lights are Christine Yiu and Alban Kang respectively.
Clyde & Co LLP
Clyde & Co has long been a leading player in the Middle East – it has been active in the United Arab Emirates for nearly three decades – but it has come on leaps and bounds in China recently too, thanks in no small part to the recruitment of Elliot Papageorgiou, a renaissance man beloved by waves of Fortune 500 companies. In the United Kingdom, Ralph Cox is leading the charge, now a regular in courts of all levels. Regardless of which industry sector they belong to or the stage of a patent’s lifecycle that is causing them problems, rights holders approaching Clyde & Co can rest assured they will receive 24-carat counsel.
Covington & Burling LLP
The venerable Covington & Burling renders total business and legal support to companies whose stake in the marketplace turns on the strength of their intangible assets and the sophistication of their technology. Listed in the US and UK rankings in this year’s IAM Patent 1000, the side performs flawlessly on transatlantic and global IP-rich corporate transactions. King deal makers here include life sciences co-chair, technology transactions head and corporate group vice chair John Hurvitz, and Daniel Pavin, a leader within the firm’s interdisciplinary digital health initiative; they are based in Washington DC and London respectively. By acquitting itself with distinction in litigation at the International Trade Commission (ITC), Covington further burnishes its international credentials.
DLA Piper
Recommended in more than eight countries on four continents, DLA Piper embodies the global law firm model. Its IP practice is thoroughly international – teams in different offices do not work in silos and ensure that technology companies operating across borders get joined-up and consistent advice. In December 2016, the firm launched its Global Patent Laws online product designed to give international actors an easy-to-use overview and comparison tool for analysing patent laws across multiple jurisdictions.
EIP
Rights holders with significant interests on both sides of the pond would be well advised to consider EIP. Its patent aces continue to advise on some of the biggest cases around and enjoy a formidable reputation when it comes to fair, reasonable and non-discriminatory licensing issues; the 2017 ruling that Gary Moss secured in Unwired Planet v Huawei Technologies was described by a former chief judge of the US Court of Appeals as the decision of the decade. This case represents a high-water mark for the London cadre. In San Diego, invalidity proceedings in front of the US Patent and Trademark Office’s Patent Trial and Appeal Board are keeping the troops busy; the addition of Bob Blair was a huge boon for the practice there but Mallary de Merlier remains its glue. Widely hailed as one of the top IP boutiques not just in the United States but in the world, Finnegan is deeply involved in every patent practice area and technical discipline; hundreds of its professionals spread across offices in the United States, Asia and Europe have scientific and/or technical degrees. On home turf in the United States, it continues to stand out for its post-grant, trial and appellate expertise, although that does not mean it has taken its eye off the prosecution ball – far from it, as the firm has filed over 12,000 US and foreign patent applications in just the last three years. In Asia, where it maintains a strong presence through offices in Seoul, Shanghai, Taipei and Tokyo, its lawyers are not there just to support companies with respect to their US endeavours; it has a broader role and leverages a comprehensive knowledge of local laws and practices to support its clients in many meaningful ways.
Foley & Lardner LLP
Much of Foley & Lardner’s patent work is global in scope; given its compelling blend of prosecution and litigation proficiency, leading technology companies feel confident putting it in charge of developing their worldwide portfolios and devising and executing comprehensive international IP strategies. Key contacts for interested parties include DC-based life sciences sage Michele Simkin, who chairs the IP department, and Tokyo-based Etsuo Doi, a former chief legal counsel at eBay Japan and an artful broker of cross-border technology-driven deals. With boots on the ground in 19 cities across the United Kingdom, Europe, Canada, the Middle East and Asia, Gowling WLG is a formidable force on the world stage. Its army of patent attorneys and attorneys at law boast experience in an array of sectors – including life sciences, pharmaceuticals, natural resources, electronics and manufacturing – and are developing unique expertise in autotech (the deployment of software and other high-level technologies in the automotive and aviation sectors). The policy of the firm has always been to grow from the ground up, bringing in newly qualified lawyers and instilling in them the attitude clients associate with the Gowling WLG brand, and this appears to be working wonders; the service on offer is finely calibrated and every office runs like a well-oiled machine. Having 30 years of experience under his belt, Gordon Harris is the main man in London, while Robert MacDonald is a name to note in Ottawa.
Herbert Smith Freehills LLP
The United Kingdom and Australia are two strongholds for Herbert Smith Freehills, a stellar commercial outfit whose wall-to-wall IP support ticks all the right boxes. Even when working to the sort of deadlines that would bring most practitioners to their knees, its diligent, dedicated members deliver technically tight and commercially sensible counsel on budget and on time. Global head of intellectual property, Mark Shillito cooperates closely with his London-based comrades Sebastian Moore and Sophie Rich to protect innovative pharmaceutical companies from generic challengers; a recent highlight saw Moore working hand in glove with the Melbourne-based Shaun McVicar to protect Gilead in various international infringement proceedings against Idenix, a sprawling conflict that has garnered plenty of publicity.
Hogan Lovells International LLP
Approaches that succeed in one jurisdiction may not work in another – this is something the Hogan Lovells practitioners are always mindful of; with communication between its 49 offices frictionless, it devises and executes joined-up strategies and never jeopardises its own success. Cliff-edge pharmaceutical and telecoms cases see it at its very best, but matters of all shapes and sizes are dispatched efficiently and effectively; it is little surprise that so many of the world’s biggest companies are loyal patrons. The firm’s preparedness for the Unified Patent Court is a notable selling point in Europe. There are few practitioners in Germany that have a comparably deep enforcement playbook to that of Andreas von Falck, while dynamo Natalia Gulyaeva wears the captain’s armband in Russia.
Jones Day
As one of the few firms in the IAM Patent 1000 recommended in multiple Asian and European jurisdictions and US states, Jones Day is in pole position to handle global patent disputes. Showcasing just what it can do, it has recently been representing Merck & Co and Idenix Pharmaceuticals in high-profile litigation against Gilead Sciences regarding a blockbuster Hepatitis C drug. On the frontlines of this battle, Anthony Insogna of San Diego won a $2.54 billion damages award against Gilead after a nine-day jury trial – this is the largest patent infringement jury verdict in US history. Christian Paul of the Munich and Dusseldorf offices anchors the German leg of the dispute, which is also playing out in Australia, the United Kingdom, Canada, France and Norway. Looking at what is going on in the Asia-Pacific region, the number of new client and panel wins secured by Anthony Muratore and Lisa Taliadoros in the life sciences theatre is particularly impressive.
Marks & Clerk
Complementing eight UK offices with flourishing practices in Canada and Southeast Asia, Marks & Clerk is an inarguable choice for international patent prosecution and portfolio management. The sheer breadth of expertise in the side’s ranks allows it to easily assemble teams of attorneys who can speak to inventors in their own language and chew over the minutiae of new technologies. A staple in the workload is European Patent Office oppositions – something in which it enjoys a tremendous track record. Sheila Wallace is a standout star in London, while Michael Lin dazzles in Hong Kong.
Mayer Brown
Partnering closely with clients, understanding their commercial concerns and then solving compound legal and business problems is the modus operandi of Mayer Brown. It does this with special finesse in the life sciences domain, directing, for example, global patent prosecution strategy for several of Mallinckrodt’s key pharmaceutical products. In charge of the account is Chicago-based Vera Nackovic, who debuts in the guide this year. When infringement headaches loom the firm has the cure; Jamie Beaber is one of several US trial lawyers who always delivers in significant international disputes. Beaber is a dynamo at the ITC, where he represents many Korean companies; in recognition of his sterling efforts, he secures a spot in the Korea foreign section, which has been introduced to the guide this year. Mayer Brown is, of course, very well known in Asia where it maintains one of the largest IP and technology practices among international players. Gabriela Kennedy in Hong Kong is the person to see for companies seeking to capitalise on this.
Morrison & Foerster LLP
Morrison & Foerster understands where the global technology industry has been and where it is going and, through its MoFo Tech blog, freely dispenses cutting-edge insight to benefit technology companies and patent owners whether they are clients or not. Helping it to keep pace with the evolution of the market far better than, for example, a litigation boutique, it has well-rounded prosecution, litigation and transactional practices in the United States and in Asia. Many of its heavy hitters are stationed on the US West Coast, such as trial lawyers Michael Jacobs, new recruit Stefani Shanberg and patent practice head Michael Ward. If you need a firm in Asia, look to the Tokyo office; Mofo has been in Japan since 1987 and has a substantial 120-plus lawyer team there, 80 members of which are Japanese or fluent in the language.
Norton Rose Fulbright
Norton Rose Fulbright has one of the largest international IP groups in the world – it numbers more than 230 professionals in 20 offices spanning five continents. The firm does a better job than most in utilising and integrating its various specialists across both practice areas and offices; a good example of this is its autonomous vehicle group, which brings together experts in cybersecurity, insurance, regulation and intellectual property in the United States, the United Kingdom and Germany. In the United States, the set has significantly elevated its practice, having recently made a number of astute moves. One of the smartest of those was securing the services of Jeffrey Lewis, an experienced life sciences trial lawyer and past president of the American Intellectual Property Law Association. His arrival helped put the firm in the New York listings for the first time this year. Partner hires in Texas and a merger with international outfit Chadbourne & Parke are other significant bits of news. Another merger was recently completed in Canada – with Bull Housser – giving it a presence in Vancouver and truly coast-to-coast reach.
O’Melveny & Myers LLP
Los Angeles-headquartered O’Melveny makes its first appearance in the IAM Patent 1000 international section this year, having been selected for inclusion in the California, New York and Korea foreign chapters. Multi-forum, multi-patent battles are the firm’s favoured province and just a glance at its recent highlights is enough to explain why it is trusted when the chips are down; among victories lately added to the illustrious organisation’s track record are a clean sweep for Google, Motorola Mobility and Samsung Electronics against Micrografx and the dramatic narrowing of a case against Samsung filed by Image Processing Technologies. Lisa Pensabene in New York has also been busy on a multitude of important pharmaceutical litigations.
Orrick, Herrington & Sutcliffe LLP
Global in its perspective, Orrick delivers fine-milled legal and business expertise to rights holders across myriad industries. It has intensified its focus on the technology sector in recent years and, since 2016, has made 12 partner additions to its interdisciplinary global technology team – the latest of which, Ellen Ehrenpreis, was announced in March 2018. Focusing on its patent and IP capabilities more specifically, Orrick absolutely shines in big-money litigations, often cross-border in nature, between industry competitors. Partners in its DC, New York, Beijing and other offices join forces to give patrons ample firepower.
Quinn Emanuel Urquhart & Sullivan LLP
Quinn Emanuel is famed for the depth of its trial bench; any number of its lawyers can take on a heavy-duty global patent case and come up trumps. Another distinction is the quality of its litigation team in Germany; there are only two other US outfits recommended for litigation in the IAM Patent 1000 Germany chapter, but both are in a lower tier. In one example of transatlantic cooperation, Quinn has been representing Varian Medical Systems against Elekta in parallel US and German actions.
Ropes & Gray LLP
Ropes & Gray is acknowledged as both a leading life sciences player and a technology transactions specialist in China. Geoffrey Lin, one of only two lawyers to be highly recommended in the China foreign transactions table, has been knocking it out of the park lately – as an example, he oversaw the IP due diligence associated with China Oceanwide Holdings in its multibillion-dollar acquisition of International Data Group. In the United States, having bowed out of the prosecution game, the firm’s IP practice has changed shape significantly, yet it remains a key player in high-stakes patent litigation and big-money transactions.
Rouse & Co International
Rouse hits the sweet spot when supporting rights holders in emerging markets; its offices in Indonesia, Thailand, Vietnam and the United Arab Emirates are all flourishing. It has acquired a unique reputation for getting the wheels turning again on patent applications that have lapsed – an ability that rests on extremely close relationships forged with local examiners. Having been in China since 1993, it also has a strong presence in East Asia. The local knowledge and patent office and courtroom experience of its practitioners immediately instil confidence in clients. Sara Holder leads by example in the United Arab Emirates; Fabrice Mattei and Manoon Changchumni are the names to remember in Thailand.
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Issue 91