Joanne Welch

Managing Associate, Patent Attorney Litigator
London
jwelch@eip.com

Biography

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

Since joining EIP, Joanne has been lead associate in diverse matters including 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), [2021] EWCA Civ 1619, [2023] EWCA Civ 758) and patent revocation actions relevant to treatment of multiple myeloma. She has prepared and filed infringement claims at UPC.

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
  • Asus Licensing Technology v Xiaomi, 5G SEP (UPC)
  • Asus Licensing Technology v OPPO, 5G SEP (UPC)
  • Alcatel Lucent v Amazon, video coding, RAND commitment
  • 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
Publications
Education
  • LL.B Law - City, University of London (1994 — 1996)
  • MA Natural Sciences (Chemistry) - University of Cambridge (1981 — 1984)
Languages Spoken
Career History
  • Managing Associate at EIP (2022 — present)
  • Senior Associate at EIP (2018 — 2022)
  • Associate at EIP (2017 — 2018)
  • Patent Attorney, IP Litigator at Rouse Legal (2012 — 2017)
Specialisms
Awards

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