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

Marks & Clerk is one of the world’s leading IP firms. Across its global network, the firm has unrivalled wealth and depth of expertise that ensure its clients are advised on how best to obtain, protect, exploit and defend their IP rights.

The firm’s patent attorneys, lawyers and consultants operate across all sectors. Its client base is diverse, ranging from new ventures to well-known multinational corporations. Marks & Clerk has offices in 16 locations, including eight in the United Kingdom, two in France and offices in Canada, Luxembourg, China, Hong Kong, Malaysia and Singapore. This allows it to offer clients access to an extensive but integrated international network of IP practitioners.

Globally, the firm has over 290 IP practitioners, with 190 patent attorneys (including trainees) and 30 lawyers.

An international attorney practice

Marks & Clerk has been consistently ranked as the top European filer of Patent Cooperation Treaty applications, but its expertise is renowned in all jurisdictions in which it operates.

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 worldwide strategies for patent protection, portfolio management 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 (SPC) 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.

A specialist IP legal practice

The firm’s legal practice has significant experience in the full range of legal services relating to the protection and enforcement of patents and related rights. The team specialises in dispute resolution, advising on patent enforcement and invalidity claims. Marks & Clerk’s UK team has significant litigation experience, having represented clients in disputes in the Intellectual Property Enterprise Court, the High Court, the Court of Appeal, the Supreme Court and courts further afield, such as the European Court of Justice.

The firm often coordinates multi-jurisdictional patent issues, particularly across Europe, advising on where to commence proceedings in order to maximise commercial advantage and the potential impact of proceedings in the European Patent Office and the forthcoming Unified Patent Court.

In addition to patent litigation, the firm regularly advises on SPCs, regulatory law (data and marketing exclusivity, orphan drug designations, abridged authorisation practices, global marketing authorisation exceptions and paediatric investigational plans at the European Medicines Agency and through European regulatory authorities), fair, reasonable and non-discriminatory terms (strategic and commercial advice), entitlement and employee compensation matters.

While the legal practice is best known for dispute resolution, it is equally proficient with IP opinions, due diligence, freedom-to-operate opinions and strategic advice on issues relating to UK rights and IP rights across Europe and the world. Commercial IP services are a particular strength of Marks & Clerk, with a dedicated team centred in the Cambridge technology hub offering advice on commercial agreements that have intellectual property at their core.

A unique consultancy

Launched in 2012, Marks & Clerk’s consulting practice provides a range of wider consultancy services complementary to our mainstream legal and IP advisory services. In particular, it offers:

  • valuations and all of the due diligence, documenting, validity and scope research and portfolio assessments needed to support credible valuations;
  • strategic advice on how to maximise the value of the portfolios reviewed;
  • budget and cash-flow forecasts; and
  • assessments of 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 (attorneys)
E: dward@marks-clerk.com

Mike Gilbert, Managing partner (solicitors)
E: mgilbert@marks-clerk.com

Other offices

Aberdeen, Beijing, Birmingham, Cambridge, Edinburgh, Glasgow, Hong Kong, Kuala Lumpur, Luxembourg, Manchester, Ottawa, Oxford, Paris, Singapore, Sophia Antipolis

Recommended individuals at this firm

Michael Lin
Hong Kong

Gerald Samuel
Malaysia

Daniel Poh
Singapore

Hetal Kushwaha
Canada

Mike Flint
Hong Kong

Graham Burnett-Hall
United Kingdom - England

Chris Hemingway
Malaysia

Ian Clark
Canada

Christian Nguyen-Van-Yen
France

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Issue 85