Joanna Cripps

Joanna is in our life sciences patent team and focuses on the biotechnology and pharmaceutical sectors. She has over 30 years’ of experience in all aspects of IP capture including original drafting work, prosecution, filing strategy and European opposition and appeals. She has a particular interest in opinion work including large due-diligence projects, freedom to operate analysis and advising on strategic filing strategies.

Joanna is our Operations Partner and assists the Managing Partner and Chairperson with the day-to-day running of the business. She is also a member of our Management Board.

Areas of Expertise

• Immunology
• recombinant nucleic acid technology and genetic engineering
• virology and bacteriology
• biomedical research tools diagnostics including proteomic analysis and protein marker
• diagnostics, receptor-ligand assays, cancer diagnostic, genomic and diagnostic arrays, and microarray technology
• personalised medicine

Clients

Joanna’s clients include UK Universities and Technology Transfer departments, UK and US pharmaceutical and biotech companies and UK and European SMEs arising from technology transfer organisations and universities.

Background

Joanna spent time as an intern in an IP law firm in Philadelphia and continues to visit the East and West coast of the US to provide presentations and seminars on all aspects of European patent practice.  Joanna has also been a regular visitor to South East Asia particularly Singapore, providing IP seminars, workshops and lectures.

Joanna has a degree in biochemistry and zoology from Cardiff University and a PhD in biochemistry from the University of Cambridge.  Her PhD project involved determining nucleic acid splice variants and signalling during embryonic development. Her studies required techniques such as cell and tissue culture, in situ nucleic acid detection techniques, sequencing, Northern and Southern analysis and other molecular biological techniques.

Joanna joined Mewburn Ellis LLP in 1993, qualifying as a Chartered Patent Attorney in 1997 and a European Patent Attorney in 1998, joining the partnership in 2000.

Opposition highlights 

Joanna has worked on over 30 opposition cases, both offensive and defensive. Memorable cases include:

EP2420838 (T2744/16): Joanna acted for Roche in the Appeal of an offensive opposition where the patent was maintained in amended form after the first instance hearing.  For commercial reasons it was important to our client that the patent was revoked in its entirety. To overturn the first instance decision Joanna needed a new line of attack while negotiating the Board of Appeal’s strict rules against introduction of new arguments. She achieved this by persuading the board that we could change the starting prior art document for consideration of inventive step. It was successful and the patent was revoked in its entirety.

EP1224299, (T1311/13): Joanna acted in a defensive opposition for National University of Singapore. The patent was maintained in slightly amended form at first instance which in itself was a great success. However, the opponent appealed the decision which required us to defend the patent before the Board of Appeal. Unusually, in addition to responding to the opponent’s arguments, Joanna took a different approach and directly criticised the opponent’s form of the appeal. In doing so she managed to persuade the Board that the opponent’s appeal was deficient by failing to satisfy the requirements for substantiated grounds. This resulted in a number of their arguments being disregarded and a successful outcome for our client.  

EP2382228:  Joanna supported a large International life sciences company in an offensive opposition against Amgen Inc. Through various discussions with the client and an understanding of their commercial goals, a strategy was devised for this opposition which was very focussed on certain aspects of the claims.  Careful study of corresponding appeal proceedings in Japan provided an insight into the patentee’s line of argument and potential claim amendments. The grounds of opposition were framed specifically to drive certain amendments to the claims which would reduce the scope of protection and provide freedom to operate for the client.   This approach worked and is an example of how a successful outcome need not be revocation of the patent.

EP3228315, (T2347/19): Joanna acted in an offensive opposition against Amgen Research (Munich) GmbH for a large International life sciences company. Having successfully reduced the scope of claim at the first instance hearing to allow our client freedom to operate, we were tasked with responding to the patentee’s appeal to maintain the patent as granted.  We were able to provide extensive arguments that the patent failed to meet the requirements of sufficiency of disclosure which were successful and the patent was maintained with reduced scope of protection.

Joanna represented a large International life sciences company in a series of offensive oppositions against a number of related patents which potentially prevented freedom to operate for a new drug that was already in clinical trials.  Although separate oppositions were filed against each patent, considerable coordination of the grounds of opposition was required for consistency.   A strategy was devised for each of the hearings to focus the arguments not only on the case at hand but also on other members of the family so the patentee was restricted in their response.  In all cases, the claims were amended to restrict the scope of protection and provide our client with freedom to operate.

EP1997484, (T1797/10): Joanna acted for Arena Pharmaceuticals in an appeal against refusal of a patent application by the Examining Division.  The application was refused by the Examining Division under Article 84 EPC because the claim format was allegedly unclear owing to a combination of screening steps and method of manufacture steps.   The appeal was successful and the claims were held to meet the requirements of Article 84 EPC.  Thanks to Joanna’s arguments, the board of appeal were satisfied that a claim to a method of manufacture could contain a step of identifying a characteristic of the product as part of the process without this resulting in a lack of clarity. The refusal by the Examining Division was overturned and the case was remitted back for further prosecution.