Canada European Patent Office France Hong Kong International Malaysia Singapore United Kingdom - England United Kingdom - Scotland Marks & Clerk

With over 17 locations worldwide, one of the largest international teams of patent attorneys and a reputation for high-quality work, Marks & Clerk is one of the world’s leading IP firms. Its team of over 180 patent practitioners, working across North America, Europe and Asia, has an unrivalled wealth and depth of expertise, ensuring clients of all sizes and in all technology areas receive commercially astute and strategically adept advice on how best to protect and manage their intellectual property, and how to allow it to work for them.

Our history

Marks & Clerk was founded over 125 years ago by George Croydon Marks, a renowned engineer and colleague of Thomas Edison. One year later the inventor of the two-stroke gas engine, Dugald Clerk, joined Marks in partnership.

From its origins in Birmingham, Marks & Clerk rapidly expanded to other cities in the United Kingdom. As early as 1911 the British press referred to Marks & Clerk as being “recognised as the greatest firm of its kind in the world”. The first Marks & Clerk office outside the United Kingdom was opened in Canada in 1921.

Today’s practice

Globally, the firm has over 230 IP practitioners, including over 180 patent specialists. In recent years Marks & Clerk has been consistently ranked as the top European filer of Patent Cooperation Treaty applications and the top UK filer of European patents. Its UK outfit is the country’s largest firm of patent and trademark attorneys.

To assist clients with the development of their protection strategies, Marks & Clerk attorneys review and advise on existing portfolios of rights within the context of competitor and sector activity worldwide. Additionally, they advise on portfolio management and worldwide strategies for patent protection, and on the many different ways to leverage IP rights.

When seeking to secure patent protection, attorneys advise on whether a new invention can be patented, provide novelty and infringement searches and draft and prosecute patent applications through to grant.

In addition, the firm can:

  • advise on issues such as amendment, validity and infringement of clients’ and third-party patents;
  • consider the possibility of designing around third-party rights to avoid infringement;
  • bring and defend actions for the revocation of patents and relating to the infringement of patents;
  • oppose the grant of patents before relevant patent offices;
  • contest inventorship or entitlement to grant;
  • help clients to police their patent rights to ensure that they are not infringed;
  • advise on supplementary protection certificate protection;
  • draft licences and assignments and assist in negotiations with third parties; and
  • assist with the transfer of rights or the acquisition of third-party rights.

End-to-end service

In addition to its international prosecution and strategy offering through Marks & Clerk Patent and Trade Mark Attorneys, Marks & Clerk Solicitors – the well-renowned specialist IP law firm – covers all aspects of patent law, including bringing and defending legal proceedings in the High Court; advising on IP strategy; providing opinions on validity, infringement, entitlement, ownership and priority; and acting in IP transactions, including licensing and due diligence.

Marks & Clerk Consulting provides a range of wider consultancy services complementary to our mainstream legal and IP advisory services. In particular, it offers valuations – and all the due diligence, documenting, validity and scope research and portfolio assessments needed to support credible valuations – and strategic advice on how to maximise the value of the portfolios reviewed, provide budget and cash-flow forecasts and assess licensing options and structures.

Main address

90 Long Acre
London WC2E 9RA
United Kingdom

Contact details

E: london@marks-clerk.com
T: +44 20 7420 0000
F: +44 20 7836 3339
W: www.marks-clerk.com

Professional contacts

Maureen Kinsler, International chair
E: mkinsler@marks-clerk.com

David Ward, UK managing partner
E: dward@marks-clerk.com

Jim Greene-Kelly, Singapore managing partner
E: jgreene-kelly@marks-clerk.com.sg

Recommended individuals at this firm

Christian Nguyen-Van-Yen
France

Gerald Samuel
Malaysia

Tim Watkin
Singapore

Chris Hemingway
Malaysia

Mike Flint
Hong Kong

Ian Clark
Canada

Michael Lin
Hong Kong

Daniel Poh
Singapore

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Issue 83