Firm overview
Built on solid foundations dating back to 1891, today Barker Brettell is a modern and vibrant intellectual property (IP) practice, the cornerstone of which continues to be patents, trade marks and designs and copyright and, ultimately, putting IP on its clients’ board room agenda through IP strategy and management, and additional services such as IP audits and valuations.
The firm’s clients benefit from over 60 attorneys and trainee attorneys with a variety of academic backgrounds, as well as a large and highly regarded support network of paralegals and administrators. It’s UK practice, based in Birmingham and Southampton, is also supported by a team of attorneys in Sweden, which means the firm can offer a seamless and consistent service for clients in Europe and, in respect of trade marks, before the EUIPO.
Barker Brettell’s UK-based and international client portfolio spans independent inventors, start-ups, SMEs, universities, university tech transfer and spin-out organisations and other research institutions and government agencies as well as large, multi-national, global corporations.
When it comes to patents, Barker Brettell operates and has strength and depth in all of the major (and EPO recognised) technical fields (including Biotechnology, Computer implemented technology, Electronics & Semiconductors, Engineering & Manufacturing, Fintech, Life Sciences & Chemistry, Medical devices, Pharmaceuticals and Physics & Materials) and practice-wide, the firm overlays its technical expertise with a sector-focused approach that spans the Aerospace, Automotive, Computing & Software, Cosmetics, Energy, Food & Drink, Medical and Universities sectors.
Types of work undertaken:
Patents: Our patent team continues to acquire and support the procurement and management of over 1,700 new patent applications annually, with particular experience in managing intricate patent portfolios. One service that helps us stand out in the IP market is our ‘IP Valuation’ package: designed for clients considering M&A, investment, or floatation; optimizing tax-efficiency, or calculating royalties.
The firm's patent specialisms include pre-filing advice and patentability searches, invention mining and the drafting of applications for new inventions, the filing and prosecution of patent applications, advice on contentious issues, EPO opposition work, freedom-to-operate opinions, landscape searching, transactional work relating to licensing and IP-related due diligence and recently added IP valuations and audits.
The firm has a strong secondment program seconding patent attorneys to internal in-house patent departments.
Trade marks: We routinely handle filing and prosecuting of 2,700 trade marks annually, which we are confident exceeds many of our competitors. We tailor filing and enforcement strategies for clients, handling oppositions, revocations, cancellations, cease and desist letters, internet takedowns, company name and domain name complaints and customs actions. We are also experts in the negotiation of settlements.
From advising to enforcement, our trade mark practitioners have extensive experience in all trade mark aspects. Our team acts directly before the UK Intellectual Property Office (UKIPO) and the World Intellectual Property Office (WIPO); we continually rank among the top filers of UK trade marks (and formerly EU trade marks, until this work transferred to our Sweden office).
The firm's trade mark specialisms include IP strategy, the searching, filing and prosecution of applications, oppositions, cancellations, enforcement programmes, the negotiation of settlement agreements, renewals, assignments and licensing, domain name issues, internet takedown actions, customs and excise actions, due diligence exercises, portfolio management and counterfeiting issues.
Designs & Copyright: Designs continues to be a real specialism within Barker Brettell's practice, and the firm is routinely ranked as one of the highest filers of UK and EU designs of any UK firm. With much interplay between designs and other IP rights, its designs team comprises patent and trade mark attorneys who provide robust and cost-effective strategies for design protection. Over the years the firm has built a strong reputation for designs advice and strategy.
In addition to its core services, the firm has a strong oppositions and appeals record and offers additional services including IP audits and IP valuations.
