Firm / Organisation

Marks & Clerk

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International Chairman: Daniel Talbot-Ponsonby
Number of partners: 107
Other qualified Patent and Trade Mark Attorneys: 159
Other qualified Lawyers: 41

THE FIRM
Marks & Clerk is one of the world’s leading intellectual property firms. Its team of patent attorneys, trade mark attorneys, and lawyers provides a full-service IP offering, from the initial filing of patents and registration of trade marks, through to litigation and commercial exploitation. The firm’s patent attorneys and lawyers operate across all industry sectors. Its client base is diverse, ranging from new ventures to well-known multinational corporations. Marks & Clerk has offices in 18 locations, including nine in the United Kingdom, and others in France, Canada, Luxembourg, mainland China, Hong Kong, Malaysia, and Singapore, allowing it to tap into local expertise, globally. The firm has over 290 IP practitioners worldwide, with over 190 patent attorneys, 60 trade mark attorneys, and 40 qualified lawyers.

PRINCIPAL AREAS OF WORK
Patents:
Marks & Clerk is regularly ranked as the top European filer of Patent Cooperation Treaty applications. In addition to assisting clients to obtain patent protection for their inventions, the firm advises clients in relation to the management and exploitation of their patent portfolios, provides freedom to operate advice in relation to third party rights, and acts in opposition proceedings before national and European patent offices. The firm also advises pharmaceutical and biopharmaceutical clients in relation to Supplementary Protection Certificates and telecoms clients in relation to FRAND issues. Marks & Clerk’s patent litigation team regularly acts in the largest and most technically complex patent cases heard in the UK courts, representing many of the world’s largest pharmaceutical and biotechnology companies and household names in the electronics and engineering sectors.

Trademarks:
Marks & Clerk’s trade marks team offers a holistic approach to brand protection. From filing trade marks to providing strategic portfolio management and brand development guidance, prelitigation advice and dispute resolution, and advice in relation to commercial exploitation, clients benefit from support and advice at every stage of the lifecycle of their brands, with the firm’s lawyers and trade mark attorneys working together to provide joined-up thinking and service. In addition to the firm’s considerable prosecution and enforcement experience representing clients before the full range of UK and EU IP courts, the firm regularly assists clients to negotiate positive results without the need for litigation and to extricate clients from existing litigation on favourable terms.

Copyright:
The firm’s copyright team advises clients on a broad range of commercial and contentious issues where copyright and related rights (such as moral rights and database rights) are key, including those relating to TV formats, rights clearance for film and TV production, software development, commissioned content, use of third party data, and TV production agreements. The firm is particularly active in the creative industries sector but also advises household name fashion clients on copyright ownership and infringement issues, and technology and media clients on software copyright matters.

Designs:
Marks & Clerk’s designs team advises clients in the industrial, creative, and aesthetic industries on filing strategies for registered designs, commercialisation and licensing of both registered and unregistered designs, and infringement risks in relation to third party rights. When disputes arise, the firm has an experienced design litigation practice and frequently appears for clients in the assertion and defence of registered and unregistered design infringement allegations before the UK courts. The firm’s combined litigation and prosecution practice enables experience from litigation of designs to be brought to bear on decisions made at the filing stage to optimise the designs obtained through the perspective of potential future enforcement.

Commercial Transactions:
The firm’s commercial transactions team provides advice and negotiation support in relation to a broad range of agreements and transactions that deal with IP rights. Marks & Clerk’s broad technical and industry specific knowledge, and its insights gained from the protection and enforcement of IP rights, inform the commercial advice provided to clients. The firm also utilises its strength and depth of experience across the full range of IP rights to undertake due diligence exercises, including open source software audits, and to provide strategic advice in relation to the commercialisation and monetisation of IP assets.