The Legal 500 Guide 2018 East Anglia: Magnificent seven make Patent and TM elite
Seven of the nine firms of patent and trademark attorneys listed in the top tier by The Legal 500 Guide have offices in Cambridge. An eighth firm makes the second tier and a ninth Tier 3.
The magnificent seven, listed in alphabetical order, are Boult Wade Tennant, Dehns, J A Kemp, Marks & Clerk Solicitors, Mathys & Squire, Mewburn Ellis and Reddie & Grose.
Venner Shipley is included in the second tier while Appleyard Lees muscles its way into a crowded Tier 3.
The Legal 500 lists its comments on the leading firms alphabetically to avoid bias and the following is the guide’s take on the sector as it affects local practitioners in the UK pantheon.
“Boult Wade Tennant has ‘unparalleled professionalism in UK and European IP matters‘ with ‘fast response times‘, ‘clear and concise advice‘, and ‘a team of individuals with valuable expertise in various areas of technology‘.
“Nick McLeish leads the hi-tech and electrical group and alongside Tony Pluckrose advised Boeing on its European patent portfolio. Nina White heads the biotechnology and life science group, and alongside Joanna Peak represented Hoffman-La Roche in opposing Centre National de la Recherche Scientifique’s patent, which treats cognitive impairments for people with down syndrome.
“Matthew Spencer and James Legg defended Adaptive Biotechnologies from three opposing parties of its technology, which protects against immune profiling.
“Nick Widdowson is also a key figure and assisted Intelligent Fingerprinting with the development of its patent portfolio. Daniel Weston and Neil Thomson worked with Generale Biscuit on its patent portfolio.
“James Short assisted Gravity Industries with building its patent portfolio. Other noteworthy names include Alex Frost and Simon Kahn, who both acted for Hamamatsu Photonics against Leica Microsystems, which opposed the client’s telemicroscopy patent. Adrian Hayes, Michelle Pratt and Jonathan Palmer are also recommended.
“According to one client, ‘the quality of advice at Dehns is outstanding‘ and the team is ‘very effective at patent prosecution and invalidation attack and defence’.
“Leading the team is Alexander Piésold, Hanna Dzieglewska (head of biotechnology), Philip Towler (head of the chemical group), and John Tothill (head of engineering).
“Other key figures include Mark Bell, who worked with the US lighting products company Cree on its European patent applications and Laura Ramsay, who assisted Isansys Lifecar with the granting of a patent for its wireless cardiac monitoring device ‘Lifetouch Sensor’.
“Patent portfolio management is a key specialty of Chris Goddard, who recently worked with Camurus on its portfolio. Matthew Hall and Adam Taylor conducted due diligence for EQT on the IP portfolio of its target company AutoStore.
“Associate Daniel Rowe drafted and filed the patent application for a test kit which measures bacteria and is used to detect bowel conditions. Alex Robinson, Barbara Rigby, Christopher Wilkins and Phillip Price are also recommended.
“J A Kemp is ‘extremely meticulous in fully understanding the business context, strategies and needs‘ of its clients, which include NBCUniversal, University of Vienna and Pharma UK.
“Celia Keen is head of the chemistry and pharmaceuticals team and has extensive experience in drafting and prosecuting patents. The ‘excellent‘ Mark Roberts is ‘very knowledgeable about European patent prosecution‘ and ‘offers prompt and appropriate advice‘.
“Other key team members are Patrick Campbell, Isobel Creek, Kieron Grehan, Andrew Webb, and Simon Wright, who are all ‘excellent lawyers‘.
Key mandates included Chris Milton advising Semblant on the management of its patent portfolio and Amanda Simons assisting F2G with the drafting and prosecution of its new patent applications.
“Other recommended individuals include Ravi Srinivasan, John Leeming, Andrew Bentham, Sarah Roques, and Graham Lewis.
“Marks & Clerk Solicitors runs the gamut of patent law work and has strong capabilities in life sciences, technology and engineering. Key figures at the firm include Sheila Wallace, who is an expert in chemicals and pharmaceuticals; telecoms and computing specialist Robert Lind; and Paul Chapman, who focuses on biotech, chemistry and pharmaceuticals.
“Mark Dauncey is particularly experienced in chemical engineering, cleantech and nanotechnology. Philip Martin, Julian Asquith and Peter Roberts are also highly recommended.
“Mathys & Squire LLP ‘really stands out from the crowd‘ thanks to an engineering, IT and electronics team whose advice is ‘extremely technical due to its prior engineering degrees‘ and which has ‘an impeccable understanding of IP law‘, and a life sciences and chemistry team that possesses ‘strong scientific knowledge combined with comprehensive knowledge of European patent law‘.
“Key figures from the engineering, IT and electronics team include Ilya Kazi, who advised Abbott Diabetes Care on the management of its patent portfolio. Sean Leach assisted Sevcon with the due diligence of its patent portfolio as part of its $200m sale to Borg Warner.
“Dani Kramer has ‘the ability to draft clear, actionable and commercially relevant patent claims‘. Paul Cozens, Alan MacDougall, Jane Clark and Catherine Booth are also recommended.
“On the life sciences and chemistry team, Martin MacLean is ‘very sharp‘ and ‘has a deep understanding of the law and the procedures at the EPO‘.
Chris Hamer is ‘an outstanding lawyer‘ thanks to his ‘combination of industry knowledge and attention to detail’. David Miller has been managing the patent portfolio of EngMab, which is new subsidiary of Celegene. Monika Rai, Philippa Griffin, Toby Simpson and James Wilding are other noteworthy names on the team.
“Mewburn Ellis LLP predominantly works in the life sciences sector, with clients that include the University of Manchester, Unilever and Cambridge Enterprise.
“Simon Kiddle is a key figure and recently advised Genentech and Hoffmann-La Roche on the defence of five EPO decisions involving the breast cancer treatment drug Herceptin.
“Also recommended is Seán Walton, who specialises in patent law relating to biotechnology. Patent attorney Katherine Green advised the University of California, Berkeley on the UK and European patent filings for CRISPR–Cas9 technology, which was developed at a laboratory in the university.
“Reddie & Grose LLP provides ‘a consistently high-quality work product‘, and has a client roster that includes Qualcomm, Skyworks and Nordson. Patrick Lloyd co-heads the practice alongside tech specialist Aidan Robson and recently advised SITA on its global patent portfolio.
“Other notable names include Alice Findlay, who focuses on the mechanical and material science sectors, and Simon Goodman, who has a particular interest in the CleanTech sector.
“Phil Bates is also a key figure and advised Avery Dennison on its European patent applications as well as assisting Ferring Pharmaceuticals with filing and drafting its patent applications.
“Other notable work highlights for the firm included Tom Sharman assisting Mahle Engine Systems with filing its patent applications, Nick Reeve acting for a major pharmaceutical company in defending two oppositions to patents for one of its by medical devices and Pete Sadler advising Chinese company Thunder Power on filing European patents for its electric vehicles.”
Moving into the second tier, the guide says of Cambridge’s representative here: “The ‘diligence shown and quality of work at Venner Shipley LLP is excellent’ and clients include Merck, Nokia and Hitachi.
“Managing partner Jan Walaski leads the team and is an expert in electronics. Other notable names include Ian Grey, who is an expert in mechanical engineering; chemicals and life sciences specialist Sian Gill; and James Tumbridge and Paul Harris, who are experts in contentious matters.
“Also recommended are Anton Hutter, who advised Neuro-Bio on the valuation of its IP portfolio, and Tim Russell, who defended Epizyme against opposition from GSK regarding one of its patents.”
And in the third tier, the guide reports: “Appleyard Lees works on patent prosecution and portfolio management for clients in the chemicals, retail, electronics, life sciences and pharmaceuticals sectors.
“Electronics and software specialist Ian Robinson is a key figure and recently advised Dell subsidiary VMware and Avecto on the management of their respective patent portfolios.
“Simon Bradbury similarly has been managing the patent portfolios of Azellon and Blueberry Therapeutics. Also recommended is chemistry specialist Bobby Smithson.”