Joanne Welch

Managing Associate, Patent Attorney Litigator, UPC Representative
London

Joanne Welch

Having qualified and practised as a UK and European 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

  • October 2024
    EIP News Flashes, Intervention by patent pool administrator permitted (link)
  • August 2024
    EIP News Flashes, Costs orders at UPC (link)
  • August 2024
    EIP News Flashes , Steps needed following evidence preservation order (link)
  • May 2024
    EIP News Flashes, Access to documents from revocation action (link)
  • May 2024
    EIP News Flashes, Composition of appeal panel and access to documents (link)
  • April 2024
    EIP News Flashes, Bringing an action following preservation of evidence (link)
  • April 2024
    EIP News Flashes, Adding a patent to existing proceedings (link)
  • March 2024
    EIP News Flashes, Joining a party (link)
  • March 2024
    EIP News Flashes, Should a stay be ordered? (link)
  • February 2024
    EIP News Flashes, Financial penalties for disclosure of confidential info (link)
  • February 2024
    EIP News Flashes, Discretionary review or appeal? (link)
  • February 2024
    EIP News Flashes, Discretion allowing in expert declarations (link)
  • January 2024
    EIP News Flashes, Requirements for an intervention (link)
  • January 2024
    EIP News Flashes, 2023 – the year the UPC finally came into being (link)
  • January 2024
    EIP News Flashes, Service on defendants outside the jurisdiction (link)
  • December 2023
    EIP News Flashes , National or UPC jurisdiction for damages? (link)
  • December 2023
    EIP News Flashes, Request for a stay (link)
  • December 2023
    EIP News Flashes, Separate revocation claim and counterclaim both to proceed (link)
  • November 2023
    EIP News Flashes, Should the language of proceedings be changed balancing in the interests of the parties (link)
  • October 2023
    EIP News Flashes , UPC grants access to pleadings for the first time (link)
  • September 2023
    EIP News Flashes, When can third parties obtain access to written pleadings and evidence at UPC? (link)
  • September 2023
    EIP News Flashes, 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

  • Higher Courts Litigation Certificate (2017)

  • 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