Publications

In spite of the number and value of biotechnology acquisitions last year, continued M&A activity, and the strategic importance of the biotechnology sector to the wider pharmaceutical industry, various research has suggested that patenting activity is declining. A key study into patenting in the biotechnology industry was recently undertaken by Marks & Clerk, throwing significant light on the industry’s development, the environment at the various Patent Offices and the industry’s commitment to patenting across geographical, commercial and academic spheres. The following review presents Marks & Clerk's research, which uses patent applications and publications spanning the years 2002-2006.

Published in Pharmaceutical Law Insight, July/ August 2007

Decisions for IP Investors.

Dr Robert Naismith, Partner

It is becoming better acknowledged that intangible assets, rather than real assets, constitute a very high proportion of deal values these days, with PriceWaterhouseCoopers recently concluding that approximately 75% of all deal values are made up of intangibles. A range of intellectual assets, including brands and intellectual capital, substantially underpin these assets – IP rights which then help protect and consequently support these assets’ value. Naturally, the quality of IP rights is highly important and can play a crucial part in the overall asset valuation, even when the IP rights themselves are only assigned 10-20% of intangible asset valuations.

Published in Intellectual Asset Management, May 2007

Talking Heads - Intellectual Property in the New Network Environment.

Robert Lind, Partner

Undeniably, today’s networks are evolving at a rapid pace. More convergent technologies are starting to emerge, whilst the promise of third generation mobile networks may be on the point of delivery through higher speed data access and the provision of quality content. Yet in spite of this high rate of change, the landscape remains a disparate collection of different technologies. Debates as to the respective merits of WiMAX and LTE, Bluetooth and WiFi rage despite all the talk of convergence. So what role does intellectual property have to play in this complex environment?

Published in Connect-World, March 2007

Blatant Orient - Clear Opportunities for Western Firms in China.

Simon Mounteney, Partner

China’s economy has been consistently, and somewhat hyperbolically, described as expanding “exponentially” for what feels likes an interminable period of time. So long in fact that its growth should surely have reached terminal velocity by now. The truth is, however, that whilst China’s growth has been amazingly rapid, it is nonetheless set to continue well into the future.

Published in The Engineer, January 2007

The Big Small Problem Facing Europe's Electronics Industry.

Maureen Kinsler, Partner

A new report by Marks & Clerk has revealed that Europe is not converting its important research and development into a correlating number of patents in the nanoelectronics area. Dr Maureen Kinsler, author of the report and a partner with the firm, argues that European academia and businesses must work harder to commercialise findings.

Published in Electronics Weekly, October 2006

The EPO and National Courts - An Odd Relationship.

Graham Burnett-Hall, Associate

The Patents County Court has recently handed down its judgment in the latest stage long running dispute between Unilin Beheer BV (“Unilin”) and Berry Floor NV (“Berry”). The dispute concerns the validity and infringement of Unilin’s European patent for hardwood floor coverings.

October 2006

Community Registered Design Invalidated by Prior Registered Trade Mark

Darren Smyth, Partner, Marks & Clerk Patent and Trade Mark Attorneys

Published in Journal of Intellectual Property Law and Practice, May 2006

.mobi domain launch & New trade mark law in Guernsey - Update

Update May 2006

EPO Boards of Appeal Further Restrict the Valid Filing of Grandchild Divisional Applications

Darren Smyth, Partner, Marks & Clerk Patent and Trade Mark Attorneys

Published in Journal of Intellectual Property Law and Practice, December 2005

CTM Update

Update November 2005

UK Designs Update

Update November 2005

.eu Domain Update

Update, November 2005

Gillette Case Cuts into Third Party Trade Mark Rights.

Alice Gould, Partner, Marks & Clerk Solicitors and Elaine Rowley, Partner, Marks & Clerk Patent & Trade Mark Attorneys

Business did not exactly get off to a flying start for King Camp Gillette. In his first year of trading he sold a total of 51 razors and 163 blades. By the 1990s, the Gillette company was earning US$780 million from its shaving products, 95% of which was from razor blades alone.

Published in European Lawyer, June 2005

Making Research Pay.

David Tubby, Partner

The Government has pledged more money to aid the commercialisation of university research and development. David Tubby, partner at Marks & Clerk, the UK’s largest firm of patent and trade mark attorneys, welcomes the extra money, but argues that there should be a greater focus on some of the more complex issues that prevent pharmaceutical companies from extracting more value from university research and development.

Published in Pharmafocus, April 2005

The Implications of the Clementi Report.

Simon Mounteney, Partner

Any proposals that kick-start a debate for the reform of a legal system that the government itself calls “outdated, inflexible, over-complex and insufficiently accountable or transparent”, are to be welcomed with open arms. Sir David Clementi’s proposals recommend the creation of legal disciplinary partnerships (LDPs), which would in principle bring trade mark and patent attorneys together and on to an equal footing with solicitors, barristers and other lawyers, thereby addressing calls for reform of the current legal system. The report focuses on partnership as a single unit, rather than on the individual practitioner, which should have the effect of opening up competition and creating more cost effective services for the benefit of clients and consumers.

Published in Trade Mark World, March 2005

Software Patents – Patently Necessary.

John Collins, Partner

In 2002, the EU Competitiveness Council proposed a Directive on the patentability of computer-implemented inventions, now commonly known more popularly known as the Software Patent Directive. With software innovation developing at an ever-increasing pace, the Directive was designed to provide uniformity across all the EU member states as to what could and couldn’t be patented. However, two years on, the future of the Directive now looks uncertain, following sustained lobbying from the open source community and the recent withdrawal of support from the Polish Government.

Published in Computers & Law, January 2005

New Era for Marks & Clerk: Full IP Services Under One Roof

On 20th December 2004, Marks & Clerk will embrace a new and exciting era. After nearly 100 years at Lincoln’s Inn Fields, the London headquarters will be moving to 90 Long Acre in Covent Garden. Crucially, the move marks the latest step in Marks & Clerk’s quest to provide clients with a full range of intellectual property under one roof as the associated law firm, Marks & Clerk Solicitors, and the office currently based in Clifford’s Inn will also be moving to the new location.

Published in Remarks - Winter Edition 2004

Is Greater Commercialisation of Research Just a Pipe-Dream?

David Tubby, Partner

The UK continues to falter in its ability to commercialise research and development. This has been recognised in the science and innovation investment framework – a response to The Lambert Review – which sets out a whole host of targets for greater investment in research and development, greater commercialisation of research along with a pledge of £1 billion to help to aid these processes. David Tubby, partner at Marks & Clerk, the UK’s largest firm of patent and trade mark attorneys, questions the wisdom of a report that fails to consider the importance of intellectual property rights (IPR) within this context and looks at some of the issues facing pharmaceuticals as they try to extract more value from university research.

Published in Pharma Marketletter, November 2004

A New Opportunity - EU Joins the Madrid Protocol.

Keith Hodkinson, Partner

From 1 October 2004, the European Union (EU) is a party to the Madrid Protocol, creating a link between the Madrid Protocol system and the Community Trade Mark system. This means that, for the first time, owners of Community Trade Marks can extend protection to a large number of other countries at a cost which is often far lower than filing national applications direct.

October 2004

Changes to UK Patent Office Examination Procedures.

Claire Borton and Steven Gurney

There are two changes to UK Patent Office Examination Procedures this year. The first introduces a preliminary opinion based on the findings of the UK Search Report, and the second introduces a requirement for an applicant to disclose the results of any equivalent Search Reports to the UK Patent Office.

Published in Remarks - Summer Edition 2004

Intellectual Property Rights Enforcement Directive.

Elaine Rowley, Partner

European Parliament has recently voted in favour of a Directive dealing with the enforcement of intellectual and industrial property rights including copyrights, trade marks, designs and patents. The Directive was approved before the 1 May 2004 and is therefore applicable to all 25 countries of the new European Union.

Published in Remarks - Summer Edition 2004

Service Marks in India and Pakistan.

Elaine Rowley, Partner

Although trade marks are vital to protecting brands, 32 per cent of company directors in UK pharmaceutical firms are unaware that it is possible to get trade mark protection for corporate colour schemes, according to a recent survey by Marks & Clerk, the UK's largest firm of patent and trade mark attorneys. This article examines the importance of protecting brands through trade marks, and looks at the range of options available.

Published in Remarks - Summer Edition 2004

A Guide To International Patent Drafting.

John Collins, Partner

Aspects of patent law in Japan, USA and Europe that impact on and in some circumstances provide competing requirements for patent drafting are reviewed in this article. A compromise needs to be reached between these competing requirements when drafting patent specifications intended for international filing. To assist practitioners faced with this task, characteristics of an international patent specification are identified to provide the basis for obtaining strong patent protection in any of the jurisdictions.

Published in Patent World, May 2004

Software Patents.

John Collins, Partner

The European Parliament's debate on software patents has thrust the issue into the news agenda once again - with both sides claiming that the other's policies will lead to economic catastrophe for the technology industry. However, the arguments have served only to reduce understanding of the matter. At the heart of recent controversy is the proposed Software Patent Directive (more properly known as the European Directive on the Patentability of Computer Implemented Inventions). This law was originally drafted with the aim of harmonising the "patentability of computer implemented inventions" across the EU, currently each country has different rules as to what can be protected.

Published in Financial Director, November 2003

The EU Directive on the Patentability of Computer Implemented Inventions: Creating More Heat Than Light.

John Collins, Partner

The patentability of software and business method inventions is a contentious issue with strong and vocal opponents and proponents. In view of a divergence of approach to the allowability of such inventions in EU member states and in view of the resultant confusion on the position in Europe, a proposed EU Directive has been drafted with the intention of clarifying and harmonise the approach across Europe. Recently the EU Parliament voted in favour of the proposal with significant restrictive amendments after vigorous lobbying by the opponents led in particular by the EuroLinux Alliance.

Published in European Lawyer, November 2003

Sound & Fury: The EU Directive on the Patentability of Computer Implemented Inventions.

John Collins, Partner

Software and business method patents have been a matter of contentious debate for the business and IP communities for some time now, with strong lobbies arguing both sides of the debate. While it is clear that software and business method inventions are patentable in the US, the legal position on the patentability of such inventions has varied across countries party to the European Patent Convention (EPC), to which all EU member states are contracted, as well as some non-EU states.

Published in E-Commerce Law & Policy, October 2003

Blue is the Colour - Protect Your Brand, Protect Your Profits.

Alison Melling, Partner

Published in Pharma Times, July - August 2003

Dreaming up a Fortune.

Robert Lind, Partner

While many companies pay lip service to the importance of innovation, relatively few have fully grasped the process of turning bright ideas into profits. Intellectual property protection can turn that flash of inspiration into a competitive edge, or a good reputation into healthy profits. Robert Lind, partner at Marks & Clerk in Oxford, argues that companies failing to exploit their intellectual property risk feathering competitors' nests, and examines the key intellectual property challenges facing businesses in Oxfordshire.

Published in Business in East Anglia, July 2003