Joanne Welch

Managing Associate, Patent Attorney Litigator

Joanne Welch

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

Since joining EIP, Joanne has been lead associate in a patent infringement and validity action concerning medical devices, technical trials about telecommunications standards essential patents (Conversant v Huawei & ZTE [2020] EWHC 14 (Pat); Optis v Apple [2020] EWHC 2746 (Pat), [2022] EWHC 561 (Pat)) and patent revocation actions relevant to treatment of multiple myeloma.

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 was a committee member and case officer for IP Pro Bono for several years.

Recent work

  • Pfizer, Regeneron, Janssen-Cilag v Amgen revocation actions re bispecific binding molecules
  • Optis v Apple, two SEP technical trials and associated appeals
  • IP Bridge v Huawei, SEP essentiality assessment
  • 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

  • January 2024
    EIP Amar, Requirements for an intervention (link)
  • January 2024
    EIP Amar, Service on defendants outside the jurisdiction (link)
  • December 2023
    EIP Amar , National or UPC jurisdiction for damages? (link)
  • December 2023
    EIP Amar, Request for a stay (link)
  • December 2023
    EIP Amar, Separate revocation claim and counterclaim both to proceed (link)
  • November 2023
    EIP Amar, Should the language of proceedings be changed balancing in the interests of the parties (link)
  • October 2023
    EIP Amar , UPC grants access to pleadings for the first time (link)
  • September 2023
    EIP Amar, When can third parties obtain access to written pleadings and evidence at UPC? (link)
  • September 2023
    EIP Amar, Who is first to file? (link)
  • June 2023
    Life Sciences Intellectual Property Review, UPC after one month: Life sciences cases (link)
  • 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

  • UPC Representative (2023)

  • 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