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Marks & Clerk

World IP Survey Coverage: Print-friendly version

Editorial coverage

France

With an established reputation in aerospace, defence and information technology, Marks & Clerk continues to benefit from its spin off from Thales Group in 2005. The team, headed by Christian Nguyen-van-Yen, previously vice-president of intellectual property at Thales, works for aerospace manufacturers, other major French companies, public research organisations and start-ups, especially in computing, electronics and telecommunications sectors. Nguyen-van-Yen, along with partner Sophie Esselin, also assessed more than 300 satellite patents for a major European satellite manufacturer and licensing potential of a technology portfolio for the Technology Transfer Office of a French university. Similarly, the team acted for major French financial institutions in investigating the investment opportunities of monetising patents.


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Hong Kong

The market makes a note of partner Graeme Hall's move to the firm's Leeds office, but agrees that Marks & Clerk still has one of the biggest and strongest patent prosecution practices in Hong Kong. Sitting in the top Tier for another year, the firm provides original patent drafting for clients of various industry sectors and for Hong Kong R&D centres, including local universities. It also houses a number of trade mark attorneys and is one of the top filers in the city. Managing partner Simon Speeks has been heading the office since 1994.


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Singapore

Renowned patent firm Marks & Clerk Singapore is ranked in the top Tier for patent prosecution this year. On the back of glowing reviews from peers and clients, the firm is considered "a top patent operation with drafting expertise" by a competitor. The practice is extensive and consists of a team of 14 patent attorneys with expertise and experience across science and engineering disciplines. The firm has amassed an enviable list of global brands as clients, with some examples being Procter & Gamble, Rolls Royce, Sony, Toshiba and Wyeth. A client recommends the patent expertise of the firm: "We deal with it on patent matters – we find that it has in-depth know how on patent legal and technical matters."


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United Kingdom

In line with the constant ebb and flow of the UK's premier IP firms, Marks & Clerk experienced some personnel turnover this year. Despite this, the firm maintained its high quality of work for clients, as one attests: "It has consistently provided my company with sound advice and all the lawyers who handle our IP matters provide excellent service." Marks & Clerk Solicitors, the contentious practice of Marks & Clerk, hired litigation partner Will Cook from Simmons & Simmons and on the patent front, handled three of the 12 substantive patent appeals in the Court of Appeal. Cook's stand-out work for the firm includes leading a team that is representing Virgin Media in its patent infringement battle against Gemstar-TV Guide. It was successful for Virgin in EPO opposition proceedings, resulting in the key Gemstar patent being found invalid after a two-day hearing. SanDisk, BlackRock, Daiichi Sankyo and Nokia Siemens Networks are just a few of the firm's clients.


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Luxembourg - Benelux

Marks & Clerk also moves up this year to the top Tier. Practitioners argue that there is a difference in visibility in the market compared to the more established Office Freylinger and Dennemeyer & Associates, however the quality of the work is at an equally high standard. The firm "does good work," says an IP lawyer, "it is maybe a bit newer on the scene than Freylinger and Dennemeyer but it does very good patent work".


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Firm contact

This firm does not have a profile in the 2011 Handbook