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Marks & Clerk

World IP Survey Coverage: Print-friendly version

Editorial coverage

Canada

Marks & Clerk, the UK-based firm, continues its tradition in patent prosecution, which seems fitting given that its founders George Croydon Marks and Dugald Clerk were a renowned engineer and an inventor, respectively. The firm has a long history in Canada where it opened its first office in 1921. Today, it has one office in Ottawa and 16 professionals. While clients include companies from the mechanical, biotechnology and pharmaceuticals sectors, its practice is predominantly focused on high-technology – semi-conductors, telecommunications and software. It is also active in trade mark prosecution and opposition.


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France

UK prosecution firm Marks & Clerk is focused on, and known for, patent work in France. It has a staff of 26 attorneys in its sole French office in Paris, and 95% of work is on patents while only 5% covers trade marks. It is known for its high output and is one of the country's top PCT filers. It launched a new consultancy business in 2012, Marks & Clerk Consulting SNC, which provides IP advisory services, such as valuations of intellectual property, IP royalty audits and patent scoring. Aerospace, IT and defence are some of the firm's specialities. It represents Thales Alenia Space, Movea, Cooltech, France Brevets and Solsia.

The firm's joint managing partner, Christian Nguyen-Van-Yen, takes an active role in its work. In 2012 he was busy with several pieces of transactional work. He assisted a patent investment fund with its licensing and also advised Cooltech on a joint development agreement to use a new refrigeration technology.

Clients value the breadth of the firm's expertise. "It has the capability to handle any type of IP problem, not just filing patents but whatever IP question we have."


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Hong Kong

Marks & Clerk has a strong IP standing in the market. The firm has two offices in Hong Kong with 27 IP professionals under Simon Speeks' management. Approximately 50% of the team's work involves China matters and consequently the Hong Kong practice works closely with its representative office in Beijing. The firm advises a good amount of foreign companies looking to establish in Asia.

Trade mark and patent prosecution is the focus for this firm, and contentious issues that arise are directed to a trusted independent law firm, Anthony Evans & Co. The team was ranked by the Intellectual Property Department as the third largest filer in designs, trade marks and patents for two consecutive years. The firm has plans to expand its service offerings that are expected to be announced shortly. Three new recruits this year contribute to the steady expansion of the firm; Steven Yin, Katherine Man and Heather O'Kane all joined as associates in 2012.

Clients single out partner Michael Lin for his knowledge in life sciences. One client said: "Michael is very good when it comes to drafting patents. Not only in his ability to draft, but he is excellent in strategising our IP." Speeks is another practitioner who fellow IP partners single out as excellent for his experience in IP.


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United Kingdom

Marks & Clerk is a big name in the prosecution world, with large patent and trade mark prosecution practices in London. The firm has 154 professionals in total, including 63 partners, and aside from London has offices in Birmingham, Cambridge, Cheltenham, Leicester, Manchester and Oxford.

The firm's clients include Ericsson, Kraft Foods, Ricoh and Statoil, and the firm was also the top European filer of PCTs in 2012.

"Marks & Clerk still deserves the high tiers here, definitely," comments one competitor, while another attorney speaks well of it: "Marks & Clerk does have a good patent practice."


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Luxembourg - Benelux

Marks & Clerk is a strong international prosecution firm with an office in Luxembourg. The firm of patent and trade mark attorneys now has five fee-earners after losing an associate on August 31 2012. The firm retains its place in the top tier of the patent prosecution table.

The Luxembourg office specialises in the national validation of granted European patents. Its location puts it in reach of relevant translators as it is close to Germany, France, Belgium, the Netherlands and Switzerland. In 2012, the firm validated more than 2100 patents in all 38 EPO member countries. This resulted in more than 10,000 individual validations. Despite changing market conditions, this was an increase from 2011 and can be attributed to its streamlined and cost-effective validation service. "It's very efficient, has good systems and is responsive," one client says. "It's my go-to firm for validations."

In August 2012, the firm advised a client on the launch of a new beverage in Europe with a freedom-to-operate and validity opinion. Moreover, Hilton Lord and Christine Walmsley-Scott were agents for a global pharmaceutical company's supplementary protection certificates (SPCs) across 28 jurisdictions in the European Economic Area.


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Firm contact

This firm does not have a profile in the 2013 Handbook