Elkington + Fife LLP

Elkington + Fife LLP is a leading firm of patent and trade mark attorneys with a worldwide reputation. It regularly punches far above its weight in terms of the quality of work and clientele. The partners and fee-earners are acknowledged experts in their fields, many having worked previously in-house in large multinational corporate IP departments or law firms. A consistently high standard of work is achieved by having a high degree of partner involvement in most work. The firm prides itself on giving high-quality responsive advice which is also commercial in nature and geared to the needs of its clients. The needs of clients are paramount and it is happy to look at ways of fitting its service to its clients’ individual requirements. It is not afraid to listen.

The firm: Elkington + Fife LLP has strong and expanding chemical, bioscience, electrical and mechanical departments. Partners Richard Gillard, James Anderson and Oliver Kingsbury have substantial patent opposition practices before the EPO. Nick Ertl has developed a significant outsourcing service for filing patents for a number of large multinational clients.

Elkington + Fife’s partners and fee-earners have a wealth of experience in their respective areas. Partners are experts on pharmaceutical patent supplementary extension certificates (SPCs) in Europe with the firm handling the SPC filing programs for numerous blockbuster drugs. Oliver Kingsbury has handled numerous pan-European SPC filing programme for major pharmaceutical companies. Chris McLeod handles a large portfolio of trade mark applications and opposition cases both before the UK IPO and at the EUIPO via the firm’s EU associates. He also has substantial experience in dealing with worldwide trade mark disputes.

As a whole, Elkington + Fife handles work for an enviable list of worldwide multinational companies including many household names and a number of top US companies listed in the Fortune 500. At the same time, through the firm’s office in Sevenoaks, its clients have a strong regional presence in the Kent and South East area.

Elkington + Fife LLP is also active at a professional level, having members on the councils of CIPA, INTA and CITMA committees. The partners regularly speak at conferences and act as editors contributing to the CIPA ‘black book’ or as senior editor to the CITMA and CIPA Trade mark Handbook, the leading authority on UK trade mark practice.

Types of work undertaken: The firm provides the expected full range of prosecution services including the preparation, filing and prosecution of UK, European and international patent applications, the clearance and searching of trade marks in the UK, Europe and worldwide and the filing of UK, EU trade marks, international and foreign trade mark applications and registered design applications. On the patents side, advice includes IP due diligence investigations and practical assistance on patent portfolio strategies.

Work is divided between three strategic departments:

Chemicals/biosciences: The department has a large opposition practice before the EPO and has acted for a number of the top 15 international pharma companies. The firm also acts for a number of British and US universities and UK-based hi-tech and engineering firms. Particular areas of expertise include nanotechnology, SPCs and life cycle management.

Electrical and mechanical: Elkington + Fife LLP has both a strong EPO opposition and patent filing practice. It is particularly experienced in helping electronics firms with their outsourcing and overflow drafting of applications, particularly in complex technologies.

Trade marks: The firm has substantial expertise in trade mark clearance both in the UK and worldwide and the handling of all aspects of UK, EUTM, foreign and international applications. The Elkington + Fife trade mark team also has substantial experience in relation to handling UK and EUTM oppositions and Europe and worldwide trade mark disputes, with experience of handling cases up to the Boards of Appeal and the General Court. The firm handles work for a wide spectrum of clients including blue-chip companies in the chemical, pharmaceutical, telecommunications, IT, toy retail, automobile and engineering, medical and entertainment industries.

Offices: London and Sevenoaks