Julie Carlisle

Julie’s practice focusses on patent work in the chemical and life sciences sectors. She works predominantly in the pharmaceutical field, but also has experience in the food and beverage sector. As well as drafting and prosecution, she represents clients in EPO opposition and appeal proceedings. She also has extensive experience of advising on infringement and validity issues, in particular providing Freedom-to-Operate searches and opinions. She provides general advice relating to intellectual property, including international portfolio management, and IP strategy. She is also qualified as a Patent Attorney Litigator and assists and advises on IP litigation matters.

Areas of Expertise

• Small molecule drug candidates
• New medical uses
• Novel synthetic routes
• Novel formulations, polymorphs, high purity forms
• Food technology, including novel ingredients and manufacturing processes

Clients

Julie works directly with a number of clients in the UK and abroad, including SMEs, large corporates, universities/research bodies, and overseas attorney firms.

Background

Julie has a BA/MSci degree and PhD in organic chemistry from Cambridge University and conducted post-doctoral research at Université Catholique de Louvain in Belgium and at King’s College, London. She joined Mewburn Ellis LLP in 2005 and qualified as a Chartered Patent Attorney in 2008 and European Attorney in 2009. She became a partner in 2013, the same year in which she gained her Higher Courts Litigation Certificate.

Opposition highlights

Julie has worked on numerous opposition and appeal cases at the EPO, mainly in the pharmaceutical field. Her notable successes include:

EP2534153 (T1126/19): Successful defence of a patent covering an approved drug product. Successfully argued for inventive step of the claimed crystalline form, despite the Board of Appeal adopting a much broader interpretation of the claim than had been accepted at first instance.

EP2457905 (T1245/19): Defence of a patent directed to pharmaceutical compositions comprising a high purity form of a well-known compound, methylene blue, against two opponents. Successful appeal against the first instance decision to revoke the patent for lack of novelty.

EP3378856: Successful defence of patent directed to a crystalline form of methylene blue. Opposition was completely rejected with no appeal being filed by the opponent.

EP2069374 (T2730/16): Assisted in the successful defence of this patent directed to a crystalline solvate form of an approved drug. The appeal hearing, held during the Covid pandemic, was notable in being one of the first (and few) hearings to have been conducted in so-called “mixed mode”, with the majority of participants attending in-person in Munich while Julie participated via video link - despite the potential disadvantage of being present only ‘virtually’, Julie’s detailed criticism of the prior art relied on by the opponent was instrumental in successfully overturning a negative preliminary opinion from the Board to ensure maintenance of the patent.

EP1505973: Represented a “straw man” opponent in the successful revocation of this patent directed to combination therapies for the treatment of multiple myeloma. The proprietor’s appeal against the decision was eventually withdrawn.

Julie also has experience of post-grant proceedings in other jurisdictions, including the UK, US, and Australia.

Recommendations

Julie has been featured in the ‘Who’s Who Legal’ list of the world’s leading patent agents. She is also listed as a "key lawyer" in the 2023 and 2024 edition of The Legal 500.