Marks & Clerk, The European Patent And Trademark Attorneys

Marks & Clerk (Luxembourg) LLP recently joined the Silicon Luxembourg Business Club. Get to know the company through our interview of Stéphane Ambrosini, Senior Associate.
(Stéphane Ambrosini, Senior Associate at Marks & Clerk (Luxembourg) LLP / Image Credit © Anna Katina / Silicon Luxembourg)
What does the company do exactly?

Marks & Clerk (Luxembourg) LLP is a firm of European patent and trademark attorneys, so we provide specialist legal services to local and foreign businesses in matters of intellectual property (‘IP’), according to their situation and requirements.

This typically ranges from ad hoc legal advice to clients faced with a particular question or situation about IP, here in Luxembourg and/or across the world, to managing clients’ portfolios of IP families over their lifetimes, from the application stage through to maintenance, and enforcement if needed—again, irrespective of the jurisdiction.

How did you come up with the idea?

There is potential for IP issues to push business people to seek professional advice and services in just about all industries.

Every business, of any size, in any place and commercial context, produces and owns intellectual property. From your local hairdresser salon to our University of Delphi, and every startup and SME in-between, at the very least the name of each entity is intellectual property, an intangible asset which appreciates over time with the entity’s commercial viability and success.

IP arises in many different contexts throughout business cycles: in the infancy of a venture, with the choice of company name, or at a more mature stage when selecting a brand for new products and/or services; in companies engaged in research & development (’R&D’) efforts that yield inventions, and in those which create or commission the appearance and features of physical products and software interfaces; in the authoring of code, content for websites, social media, corporate literature, user manuals; in the structuring of databases; and more!

Each of these examples gives rise to one or more distinct types of intellectual property right, whether its patents, trademarks, designs, copyrights or trade secrets, wherein the commercial strategy and circumstances of their owner calls for their assessment, their documentation and, where desirable, their registration so as to capture them into tradeable company assets with a value.

What are your products and services?

We provide specialist legal services, wherein our “products” take the form of our advice to clients and, if opportune, of our clients’ patents, registered trademarks, and registered designs.

From auditing documented and undocumented IP assets to preparing and filing patent, trademark and design applications and prosecuting them until registration, including extending local or European rights to foreign jurisdictions like the USA, China and more, whenever there is a requirement to register a company’s IP in countries of commercial significance, we’re in the game.

“Our Luxembourg office is long and well established in the specialist field of European patent validations, attracting direct work from the largest American IP firms and from Japanese multinationals.”

What’s more, here in Luxembourg, we have particular expertise and experience in computing and biotechnological subject-matter for patents.

Naturally, we provide many further professional services all concerned with managing IP rights, such as monitoring and payment of periodical renewals, preparing and recording IP transactions at relevant national offices, IP-focused due diligence exercises—as much for establishing freedom to operate a particular technology or under a particular brand as for safeguarding our client’s rights and interests in licensing and other transactional contexts—and enforcement of IP rights or defence against third party IP rights in contentious contexts.

This is, effectively, the initial, procedural and highly-technical end of legal IP practice, which identifies and translates client concepts, activities and output into real intellectual property rights embodied as official registrations… long before IP lawyers and other corporate law specialists provide advice and services about the use or relevance of these rights in the context of broader commercial and contractual considerations and agreements.

What is your business model?

We build our client relationships on the model of a virtual in-house IP department, wherein we get to understand a client’s business, market offer, strategy, stakeholders, competition and development, to the extent that the client’s IP influence them all, as if we were an integral part of the client company.

We then advise and provide IP services in synch with that overall picture, according to legal provisions, procedures and timescales, so that the client’s IP fosters commercial opportunities, rather than remains a cost centre… as many businesses still believe it to be.

This is perhaps an opportunity to once again dispel some enduring perceptions about payments for IP legal services. We cannot provide services on a contingency or conditional basis (think “no patent grant, no fee”) or against company equity, as the various rules of professional conduct to which our attorneys are bound all strictly forbid any form of pecuniary relationship with a client, that could prejudice the independence of their advice to that client.

Outside of direct relationships with clients, we also engage year-round in seminars, networking activities and conferences, to grow our referral network and reciprocity-based work volumes. This activity is both local, to help demystify and promote the role of IP and its proactive management in an advanced and digitalised-knowledge economy like Luxembourg; and international, to promote the unique set of legal circumstances that makes Luxembourg the ideal jurisdiction in Europe in which to file priority patent applications.

Who are your clients?

Local companies and research organisations, from digital start-ups to the Université and its various applied research branches, including SMEs and even some members of Silicon Luxembourg.

Foreign companies with requirements to secure IP rights for their European markets, whether in Luxembourg or across Benelux, or on a still-broader European scale, either through a direct relationship with us or through an agency relationship initiated by their own local firm of attorneys, since typically these are unable to execute at the European level themselves due to the lack of relevant rights of audience.

Last but not least, with our sister offices in France, the United Kingdom, Canada, Singapore, Hong Kong, Beijing and Malaysia, whenever their respective clients likewise have an interest in securing IP rights in Luxembourg or across the Benelux, we help. We maintain highly privileged and synergistic relationships on a reciprocal basis with these offices.

What are next steps in your development?

Our Luxembourg office is long and well established in the specialist field of European patent validations, attracting direct work from the largest American IP firms and from Japanese multinationals, and our objective is to continue growing this aspect of our practice, for which we are the 2nd or 3rd largest specialist in Europe by volume.

Our main business development effort aims to extend this reputation—to balance our professional IP services provided at our Rue de la Vallée office—for Marks & Clerk Luxembourg to become the go-to IP service provider within the Grand Duchy and the Greater Region, whilst we mesh workflows and practices still more closely with our sister offices to develop unique value propositions for our local and foreign clients.

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