Marks & Clerk

Gold - Firms: prosecution

With virtually all disciplines on lock, only few outfits can match the technical capability of Marks & Clerk. Domestic research institutes and international players alike flock to the doors of its polyglot, multicultural cadre. A record-breaking total of seven patent attorneys at the Singapore office have been featured on our prosecution table this year. Qualified in both Singapore and the United Kingdom, engineering maven Jim Greene-Kelly founded the Singapore outfit in 1995. An illustrious list of global industry leaders seeks him out for outstanding patent portfolio management and drafting skills. Having been in practice since 2001, Daniel Poh collaborates with multidisciplinary patrons in the areas of information technology, software, computer engineering and mechanical engineering. He dispenses incisive counsels on domestic and overseas patent prosecution. James Kinnaird draws judiciously on his previous experience as a medical chemist at Pfizer and postdoctoral work at Columbia University to defend the interests of life sciences and pharmaceutical innovators to the hilt. With invaluable experience of practising in Europe and Japan, Gianfranco Matteucci is highly sought after for biotech and chemical-related briefs. Semiconductor, telecommunications and chemistry all fall within the purview of Magdelene Ong. A chemical engineer by trade, Upasana Patel brings her unrivalled technical acumen to the crew. Concluding the roster is engineering expert Matthew English, who tackles both drafting and prosecution work with aplomb — medical technology is a strong suit for the Trans-Tasman patent attorney.

Gold - Firms: prosecution

Clients rave about the expertise and service which Marks & Clerk’s Scottish branch delivers in spades. “I would highly recommend the team at Marks & Clerk. We have relied on them for over 30 years, over which the firm has reviewed and adapted their service to align with our changing needs. They are always available to address our queries and we consider them part of our team. There's no substitute for this depth of and trust in the relationship.” Among their numerous patent professionals can be counted the Edinburgh-based Paul Chapman, who brings over 25 years’ experience to his practice. “Paul knows what academics and research companies require in terms of IP. He always ensures provision of a team that is fully resourced to meet those requirements.” Joining Chapman in the capital are Timothy Edward Hargreaves, who manages the Edinburgh office, and Pamela Bryer. Hargreaves is master of a range of technologies, but he takes the lead on the group’s medical device practice. Bryer is praised by patrons: “I am very happy to recommend Pam. She is obviously skilled in the technical background and always provides helpful advice and responds to all questions. She particularly stands out with her clear advice and proactive suggestions.” On the oil and gas front, patrons point to Andrew Docherty, who heads up the Aberdeen office. “Andy and the M&C team are easy to work with and very knowledgeable around technologies, particularly relating to the oil and gas industry. Andy is very skilled at his work and articulating technical points clearly for clients.” In Glasgow, Richard Gibbs takes charge. A biotechnology specialist, Gibbs has advanced degrees in immunology and microbiology, and maintains close relationships with all the region’s leading universities. Alongside Gibbs in Glasgow are Graham McGlashan and David Murray, both of whom pick up outstanding recommendations from the market. “Graham is an absolute pleasure to work with. He is an IP technical expert and has great practical insights and experience. He knows easily how to navigate a large patent portfolio through the multitude of matters and decisions that need management. Graham is also a great presenter and explains the complex area of IP in a way that is readily understandable by his audience. Graham has a practical orientation and always proactively manages the client relationship, consistently making a valuable contribution alongside his colleagues.” “We often turn to David for his expertise in software. The quality of the work he provides is very good – not just in applying for a patent, but he consistently delivers amazing strategy. We work side by side with David and Marks & Clerk to brainstorm new angles and approaches to commercialising our IP. He has lots of expertise, keeps us informed of the developments and he is transparent about fees. We have had a good relationship with David and Marks & Clerk for a number of years and we expect it to continue into the future. We have a strong bond, and we trust David, his team and their guidance.”

Recommended - Firms

Highly-recommended - Firms: prosecution

A practice distinguished by its technical fluency and international presence, Marks & Clerk’s Hong Kong office is an integral part of its expansive international network advising multinationals on protecting their IP rights. Consisting of patent practitioners qualified in seven jurisdictions, the group is fully capable of drafting and prosecuting patents as per different regions’ specifications. Of particular note is that it has recently cultivated a thriving plant variety work in Greater China. In the spotlight is life sciences group leader Michael Lin. A biochemist by trade, he draws judiciously on his in-house experience at P&G to help develop holistic IP strategies for Fortune 500 companies.

Gold - Firms

Highly-recommended - Firms: prosecution

“Marks & Clerk is a patent agency of distinction. It is professional, timely, reliable and provides clear explanations. One of the most difficult aspects of patent work is being able to understand and draft a clear description of an invention. Marks & Clerk has always done just that.” A premier patent agency in Malaysia, Marks & Clerk boasts a squad of 15 IP professionals with strong technical capabilities. The brain behind the success is doctor of microbiology Chris Hemingway, a UK-European-qualified patent attorney with a commercial background. He drafts and prosecutes patent applications across diverse fields – from pharmaceuticals and electronics to AI, fintech and other software-based inventions. Recently, he has assisted Fortune 500 company PETRONAS, Sengenics and Cancer Research Malaysia. Multilingual senior associate and former food technologist Fiona Jeffrey has almost 20 years of IP experience and excels in the pharmaceutical and mechanical fields. She offers a slew of value-added services to her patrons, including workshops and seminars. She worked with Hemingway on drafting and prosecution of biotechnological patents for the University of Malaysia Pahang. With a degree in electronics and electrical engineering as well as law, cosmopolitan Priya Krishnan drafts and prosecutes patent applications. Together with Hemingway, she drafted and prosecuted patents for Panasonic’s new air conditioners. Seasoned litigator Gerald Samuel takes care of the contentious front.

Gold - Firms: prosecution

Silver - Firms: litigation

Bronze - Firms: transactions

Clients rave about their experiences with Marks & Clerk. “The typical quality of service from M&C is extremely high. Its attorneys provide very clear and efficient service, excellent support and expertise. The breadth of knowledge and technical understanding, demonstrated by its team of patent attorneys, has been at a consistently high level and has led to successful grant of patents in a range of territories around the world. Everyone at the firm has been very personable, professional and easy to deal with.” In England, the outfit has both attorneys and solicitors, with the former spread out across five cities – London, Oxford, Cambridge, Birmingham and Manchester. In the capital, the prosecution team includes Angus Fairbairn, Will Nieuwenhuys, Robin Oxley, Thomas Prock and Sheila Wallace. Nearing 30 years in practice, Fairbairn is an authority in the chemical and pharmaceutical space. Alongside Niewenhuys and Wallace, Fairbairn has been active prosecuting patents and defending against oppositions for Gilead, as well as handling patent and SPC portfolios for the Daiichi Sankyo Company. Nieuwenhuys and Oxley pick up enthusiastic commendations from patrons: “Will consistently provides timely, efficient advice. His counsel is effective, well reasoned and always technically sound. Will is very easy to work with. He is responsive, reliable and a trusted European patent attorney.” “Robin supports as a strategic patent agent in Europe. Robin always strives to deeply understand customers’ business intentions and demonstrates excellent leadership. He is well versed in the European patent system and the European intellectual property industry, explains these to clients in an appropriate and easy-to-understand manner, and advises on the optimal application format. He voluntarily sets up opportunities for lectures. He never neglects to communicate what he should do to improve client satisfaction.” Prock leads the dedicated 3D-printing team, and was the only European patent attorney in private practice asked by the EPO to present on the challenges that technology poses to industry and the patent profession. With a PhD in medical physics, Prock is a particularly strong choice for names in the medical device field. Wallace is a chemical expert, with in-house experience in the agrochemical industry and extensive expertise in pharmaceuticals. In Oxford, two leading practitioners are Robert Lind and Philip Martin. Lind is a strong choice for a range of technologies. He worked in-house for Nokia and has a PhD in bioelectronics. One interesting patron is Rhizomeet, creator of a messaging app that allows users to send messages to peers for collection at specific locations. Of Martin, clients write: “Philip is a hugely intelligent man and a delight to work with – regardless of turnaround time. Philip is particularly helpful in the early stages of IP development and always suggests ways to make patent filings stronger.” The Cambridge office also joins the rankings this year, represented by Kirsteen Gordon and Mash-Hud Iqbal. Gordon heads the firm’s chemistry and life science team, and manages the Cambridge office. An experienced hand at the EPO, Gordon has a well-earned reputation for achieving success in difficult circumstances. She leads the team for multinational chemical company SI Group. “Mash-Hud offers value-added prosecution services. He delivers excellent advice for improving the efficiency and impact of patent activities and overall strategy. He is eager to solve challenges, regardless of difficulty. He has arranged easy payment solutions. He is a true partner and a real force multiplier.” In Birmingham, “Philip Cupitt is a trusted partner for patent applications.” An engineering expert, Cupitt’s diverse practice takes in software, telecommunications, medical devices and a range of manufacturing technologies. David Robinson and Jonathan Stafford are two names to know in Manchester. Robinson has a PhD in computer science and can quickly and easily understand computer-implemented and mathematical inventions. He supports patrons with large software portfolios, as well as universities and start-ups. “Jonathan’s legal guidance and technical expertise shine through everything he does. He clearly explains filing strategy to clients and appreciates the tactical value in EPO coordination alongside litigation. He is very thoughtful – an exemplary attorney.” The Marks & Clerk team is no less well-stocked when it comes to legal services, delivering skilled and diligent solicitors across contentious and non-contentious patent issues. Mike Gilbert, the managing partner on the legal side, “is an excellent IP lawyer. He takes a comprehensive view of enforcement matters across Europe. He thinks through issues end to end, always with an eye on commercial objectives. Mike offers definitive and clear counsel.” Charlie Balme, Dafydd Bevan, Graham Burnett-Hall and Michael Moore are all skilled disputers, while Moore also turns his hand to transactional work. Balme is a biotech and pharma specialist, currently offering pan-European enforcement strategy advice to a major pharmaceutical company. Bevan works in the electronic and tech space, and has advised on complex disputes related to FRAND and SEP licensing. He led the team for Manitou, a heavy machinery manufacturer, in a high-value infringement brought by JCB. Initial proceedings went Manitou’s way, with an appeal likely to follow in 2023. Burnett-Hall has a highly diverse offering, taking in biotech, telecoms, medtech and mechanical engineering. He and Stafford are currently coordinating multiple actions for a leading medical device manufacturer that includes complex EPO proceedings as part of a wide-ranging dispute with a competitor. Moore’s mixed contentious/non-contentious practice takes in transactional advice as well as enforcement and freedom-to-operate strategies. He and transactional specialist Simon Portman advised a global-leading food and beverage company in a joint venture collaboration. Portman’s counsel has been praised as “outstanding. Simon is very responsive and takes the limited resources of start-ups and spin-outs into consideration. He is highly recommended for all matter of contractual and licensing issues.”

Silver - Firms: prosecution

The Canadian outpost of Marks & Clerk is a crucial cog in the larger international machine, and it advises clients of all shapes and sizes on their IP rights. In recent years it has made a deliberate effort to expand its practice, with Kamleh Nicola, a former Baker McKenzie lawyer, and Kevin Shipley joining the team in 2022. Nicola is widely respected and has established long-lasting relationships with both patrons and peers. She knows the ins and outs of Canadian patent law and how to best maximise intellectual property for commercial gain. Shipley is a keen problem solver who masters IP strategy. He has positioned himself as a vital sounding board for start-ups and emerging companies. Another fresh face is IAM Patent 1000 newcomer James Baker, who is well versed in all things pharmaceutical, and he collaborates with in-house IP counsel and inventors to provide strategic portfolio management. Working closely with him in the life sciences and leading the prosecution practice is Ian Clark. As a former research associate in the Institute for Biological Sciences at the National Research Council Canada, he can bridge the gap between the legal and the technical. Managing partner David Ruston is the name to note for those in the telecommunication and aerospace scene, and he provides an excellent hands-on service. Electrical engineer Jean-Charles Grégoire assists his clientele in a variety of ways and is up to date on all the latest developments. On the litigation front, “Amrita V. Singh is fantastic. She ensures that the needs of the client are always met and that the results are timely, thorough and well thought out. She is one of Canada’s top patent litigators.”