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Operations Partner, Patent Attorney
Life Sciences
Bristol
UPC Representative Oppositions ExpertOur IP specialists work at all stages of the IP life cycle and provide strategic advice about patent, trade mark and registered designs, as well as any IP-related disputes and legal and commercial requirements.
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Read our law and practice guidesJoanna is a highly accomplished patent attorney with extensive expertise in the biotechnology and pharmaceutical sectors. She has many years of experience in all aspects of intellectual property (IP) capture, including drafting original patent applications, prosecution, strategic global filing programmes, and managing European opposition and appeal proceedings.
Joanna has found this work hugely rewarding over the years and has established herself as the ‘go to’ person for this strategic advice in this field.
Joanna is known for her expertise working alongside clients as a valued and respected strategic advisor, making it her priority to understand fully their objectives to ensure their IP is relevant and aligned to their commercial aims.
In addition, her deep technical knowledge and legal expertise make her a sought-after advisor on complex opinion work, including large-scale due diligence projects and freedom-to-operate analyses.
Over the years Joanna has developed considerable expertise in many biotechnology areas, now particularly focusing on cancer and autoimmune immunotherapies, biologics, genomics, proteomics, immunology, and personalised medicine. She has worked with a hugely diverse range of clients, including leading pharmaceutical and biotech companies, universities, technology transfer organisations, and medium-sized organisations globally.
International Experience
As part of her professional development, Joanna spent time as an intern in an IP law firm in Philadelphia. She continues to maintain strong professional ties with the US and regularly visits both East and West coasts to deliver tailored lectures and presentations on European patent practice. Additionally, she has been a regular speaker at IP seminars in Southeast Asia, particularly in Singapore.
Academic Experience
Joanna holds a degree in Biochemistry and Zoology from Cardiff University and a PhD in Biochemistry from the University of Cambridge. Her doctoral research focused on the identification of nucleic acid splice variants and signalling during embryonic development, utilising techniques such as cell and tissue culture, nucleic acid detection, sequencing, and molecular biology techniques.
Personal Qualifications
Additional Roles
Alongside her legal expertise, Joanna sits on the partnership leader group panel for the firm and is closely involved in governance matters to ensure that they are closely aligned to the firm’s commercial values, initiatives and interests.
What people say
“It is always a pleasure to work with Jo and her team, but especially on complicated prosecution matters because they remember that they are involved in the prosecution of a portfolio, not just a single application─ As a result, both the portfolio and application are better prepared for any substantive challenges that may arise." - Joseph W. Ricigliano, J.D., Ph.D. | Partner, Hoffmann & Baron, LLP
“I have had an excellent collaborative relationship with Jo and Mewburn Ellis for almost thirty years. Her knowledge and familiarity with complex biotechnology patent cases have facilitated the successful prosecution and grant of many patents for my clients. Jo is thorough, meticulous and provides solid advice for applicants interested in obtaining patent protection before the EPO. Aside from being an absolute pleasure to work with, her depth of experience translates into expert guidance for difficult to prosecute cases.” - Kate Rigaut, Ph.D. | Partner, Howson & Howson LLP
“Stated simply, Jo is one of the finest patent attorneys I’ve worked with in my 40 years as a US patent counsel. I was fortunate to be introduced to Jo about seven years ago, and since that time she has deftly navigated through several tricky EPO prosecutions to help us obtain important patents. She understands our goals for each application and provides sound advice for attaining them. Jo and her team stay on top of our matters, and Jo is always available to discuss and ensure the quality of our filings. I’ve come to think of Jo less as an outside counsel, and more as a partner in our efforts to build a strong portfolio that protects our IP.” - Colin Sandercock, M.S.E., J.D, Senior Vice President & General Counsel, Cue Biopharma Inc.
Oppositions highlights
Joanna has worked on many opposition cases for her clients over the years, both offensive and defensive. For the majority of cases Joanna is lead attorney at both first instance and appeal hearings. However, she has recently been a key member of a high-level attorney team involved in large multi-party defensive oppositions with up to 10 opponents.
Opposition highlights include:
EP1997484, (T1797/10): Following refusal by the Examining Division, we successfully established before the Board of Appeal that claim format providing a combination of screening steps and method of manufacture steps met the requirements of Article 84 EPC. 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, paving a way to a combination claim format at the EPO.
EP2420838, (T2744/16): Successfully overturned first instance decision by persuading Appeal board to start from an alternative prior art document when considering inventive step, despite Board of Appeal’s strict rules against introduction of new arguments.
EP1224299, (T1311/13): Maintained patent at appeal by in part successfully arguing 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: A large multi-party offensive opposition where a strategy was devised for driving amendment of the patent away from the client’s product. Careful study of corresponding appeal proceedings in Japan provided an insight into the patentee’s line of argument and potential claim amendments.
EP2637670, (T2347/19): A specific strategy to attack sufficiency of disclosure at appeal successfully resulted in reduced claim scope and our client’s freedom to operate.”