Potter Clarkson

Recommended - Firms: prosecution

Full-service IP firm Potter Clarkson is a well-known name in the United Kingdom and, of late, has been making a splash in the Swedish market. “Confident from the get-go, Potter Clarkson is growing into a strong name. To help ensure clients flourish, the team expertly assists with challenging patent concerns, which is a vital tool in the crucial early stages of start-ups.” Graeme McCallum and Jesper Sellin are holding down the fort in Stockholm. McCallum draws on decades of experience in both corporate departments and private practice, not only in Europe but also in North America and Asia, in order to effectively implement IP strategies and maximise his patrons’ IP portfolios. “Knowledgeable, prompt and meticulous, Jesper is always on hand to help with any concerns, no matter how small. Clients feel they are in safe hands, thanks to his impeccable service and detailed guidance.”

Bronze - Firms

Bronze - Firms: transactions

Gold - Firms: prosecution

Bronze - Firms: litigation

Offering a strong, combined practice of attorneys and solicitors, the depth of Potter Clarkson’s full IP service extends across soft and hard intellectual property, taking in multi-jurisdictional litigation, licensing negotiations and expert patent prosecution in every technical field. As one patron notes: “The entire team is efficient, approachable and incredibly professional, and I can’t recommend them enough.” Managing partner Steve Smith is a patent attorney in Nottingham, where most of the firm’s practitioners are based. A biotech specialist, Smith has been working in the patent profession for 25 years after completing a doctorate in neuroscience and several years in research. The group boasts a very strong offering in the biotech, pharmaceutical and chemistry space, including Richard Bassett, Rob Pugh, Stephanie Pilkington, Charlotte Crowhurst, Ian Dee, Stephen McNeeney, Fiona Law and Sara Holland. Consultant Bassett has 40 years’ experience in the profession, including in-house. A seasoned EPO opposer, Bassett’s deep knowledge in the patent space has seen him called upon to lecture at universities, serve as an expert witness and to write the chapter on biological inventions in the European Patents Handbook. “Rob is a great choice for EPO patent prosecution and general patent advice. He is great to work alongside, provides proactive advice and is easy to approach. He is a smooth communicator, offers a deep understanding of technical fields and delivers professional work product. His professionalism, communication, quick response times and problem-solving abilities are admirable.” Before her 25-year stint in the patent profession began, Pilkington completed a PhD and worked for two pharmaceutical companies as a research biochemist. This deep technical knowledge has given her easy confidence navigating issues for companies ranging from university spin-outs to multinationals with mature portfolios. Crowhurst specialises in the protection of chemical and healthcare inventions and has a deft hand in developing sound global IP strategies. Her global expertise has given her a leg-up in expanding the firm’s reach into Asian markets. Dee has personally handled more than 150 EPO oppositions. Formerly employed as a researcher for a large multinational chemical corporation, Dee has keen insight into the technical subject matters and the commercial objectives of his following. McNeeney shrewdly leads pharmaceutical companies through the patent process, leveraging his nearly 30 years in the business to help them get the most out of their IP assets. A PhD in chemistry also gives him rigorous technical expertise in the field. “Fiona is a skilled prosecutor. She has an excellent understanding of client needs and can explain complex issues in easy-to-understand, actionable terms. She has deep knowledge of the biotech sector and is diligent and thorough in her approach.” “Sara has an excellent understanding of the synthetic biology field and has been able to provide really effective and actionable advice on our portfolio. She is incredibly responsive and provides immediate advice.” The technology, engineering and design side of the prosecution offering includes Craig Brownlie, Ray Charig, Peter Finnie, Saiful Khan and Caroline Marshall, among others. Promoted to partnership in 2018, the smart and capable Brownlie puts his PhD in solid state physics to work for companies in nanotechnology, electronics and computing. Charig has over 30 years’ experience in the patent profession. He is particularly accomplished in technical fields such as telecommunications, but can also handle work for medical device manufacturers and in electrochemical fuel cell technology. Of Finnie, patrons write, “Peter is very responsive and engaged. Meetings with him are always a positive experience and he does top-notch work.” Khan works confidently across patents and designs and brings a commercial savvy honed at in-house practice to every patent application he prepares. Khan is an especially astute practitioner in the field of software and AI. Marshall’s work also takes in designs. A well-rounded practitioner, she worked as an examiner before private practice, giving her insight into the operations of the UKIPO – but she has not rested on her laurels, adding a certificate in litigation to her belt to expand her practice into contentious matters. Another duo of patent attorneys makes the list this year on the basis of high praise from clients: “Deborah Maxwell and Dave Clark are excellent patent prosecutors. Deborah submitted and obtained a patent. Her application was very high quality, and she brought a strong technical background to the work. They understand the client – even smaller projects, they really make one feel like they really care. Their responsiveness is outstanding. Dave went above and beyond – including doing work on the train while he was on holiday. They are wholeheartedly recommended and are lovely to work with.” Potter Clarkson also boasts a small but strong solicitor offering, encompassing both contentious and non-contentious patent issues. Nick McDonald, co-head of the litigation and licensing group, and Oliver Laing turn their hand to both; Mark Snelgrove can be counted on for the trickiest transactions; and Richard Roberts, the other litigation head, is an expert with disputes. McDonald helped to found the firm’s litigation offering in 2016 and is highly experienced in multi-jurisdictional patent disputes, especially SPCs and other life science issues. Laing has particular experience assisting pharmaceutical players with disputes and licensing issues, including supporting McDonald on a case for Astellas Pharma against Akebia and Otsuka. Snelgrove is particularly adept when it comes to navigating licence agreements, and his expertise extends across the full spectrum of intellectual property. Roberts is leading an enforcement campaign on behalf of a confidential company in the security system space. Equipped with a chemistry degree, Roberts is a smart choice for clients seeking technical acumen as well as legal know-how.