Joanne Welch

Managing Associate, Patent Attorney Litigator
London

Joanne Welch

Having qualified and practised as a Patent Attorney and Trademark Attorney, Joanne now specialises in IP litigation.

Since joining EIP, Joanne has focussed on patent litigation, being lead associate in a patent infringement and validity action concerning medical devices and, more recently, in trials about telecommunications standards essential patents (Conversant v Huawei & ZTE [2020] EWHC 14 (Pat); Optis v Apple [2020] EWHC 2746 (Pat)).

Previously she was part of the dispute resolution team at an international IP firm where she was involved in High Court patent actions in both the electronics and life sciences fields with corresponding disputes across multiple jurisdictions and at the EPO. She advised on contentious trade mark matters, filed claims before IPEC and advised on anti-counterfeiting measures in the FMCG market.

Joanne gained understanding of the in-house perspective during her time at a synthetic materials multinational. She also has experience in the use of mediation for resolving IP matters.

She is a committee member and case officer for IP Pro Bono.

Joanne is well placed to advise clients on the new Unified Patent Court (UPC) - see further details at EIP Amar, our alliance created to support clients in any litigation before the UPC.

Recent work

  • Optis v Apple, SEP technical trial and appeal
  • Conversant v Huawei & ZTE, SEP technical trial and FRAND proceedings
  • Align v ClearCorrect, patent action concerning orthodontic appliances
  • GSK v Wyeth, patent action about meningitis vaccine
  • Nintendo v Philips, patent action on motion sensing and video imaging

Published articles

  • September 2021
    Entertainment Law Review, Facebook’s ‘Live Broadcast’ feature lives on
  • July 2021
    World Trademark Review, No stop for NOMAD (link)
  • July/August 2016
    Intellectual Property Magazine, Unjustified Threats
  • October 2014
    Intellectual Property Magazine, Double Patenting (link)

Education and qualifications

  • Higher Courts Litigation Certificate (2017)
  • Chartered Trademark Attorney (1990)
  • Chartered and European Patent Attorney (1988, 1989)
  • 1994 — 1996
    LL.B Law, City, University of London
  • 1981 — 1984
    MA Natural Sciences (Chemistry) , University of Cambridge

Career history

  • 2022 — present
    Managing Associate, EIP
  • 2018 — 2022
    Senior Associate, EIP
  • 2017 — 2018
    Associate, EIP
  • 2012 — 2017
    Patent Attorney, IP Litigator, Rouse Legal