Rachel Oxley

Introduction

Rachel leads our London engineering team, carrying out patent and design work in the engineering, chemical and materials sectors. She has experience in original drafting, prosecution, opposition and appeals, as well as providing IP strategy and worldwide portfolio management for UK clients. Rachel also handles opinion work including management and coordination of large scale, multi-jurisdictional FTO opinion work.

Areas of Expertise

• Medical devices
• Beverage transport, dispense and packaging 
• Sportswear and sporting goods
• Next generation tobacco and nicotine products
• Access and evacuation products
• Gas turbine engine components and composite materials for aeronautical applications

Clients

Rachel works with UK SMEs, multinationals and universities. She has a particular interest in working with clients in Australia, Taiwan and India, and regularly visits those countries.

Background

Rachel has a degree in chemistry and a PhD in polymer chemistry from the University of Durham. She joined Mewburn Ellis in 1998 and later qualified as a Charted Patent Attorney and a European Patent Attorney in 2002.

Rachel spent nearly two years working in an Australian patent attorney firm before returning to Mewburn Ellis in 2006 and joining the partnership in 2007. She regularly attends APAA and other international conferences.

Opposition highlights

Rachel has worked on numerous opposition cases, including:

EP3139928B - Defensive opposition of a patent owned by Rolls Royce High Temperature Composites in relation to a turbine engine component formed of a ceramic matric composite. Rachel successfully defended the patent at the first instance. The opponent appealed the decision of the opposition division but, despite a negative preliminary opinion from the Appeal Board, Rachel was successful in getting the patent maintained as granted at the appeal hearing.

EP7460454B - Defensive opposition of a patent owned by Hitachi-GE Nuclear Energy Ltd in relation to a fuel assembly for a boiling-water reactor. In the first instance, Rachel successfully overcame a negative preliminary opinion of the Opposition Division by filing a main request including a minor clarifying amendment to claim 1 as granted. The opponent did not file any appeal against the decision to maintain the patent on the basis of the main request.  

EP2212105B - Offensive opposition of a patent owned by United States Gypsum Company and directed to a gypsum slurry composition containing 0.5-10wt% HE starch. Rachel's main attack was based on lack of inventive step but the preliminary opinion of the Opposition Division was that the granted claims were inventive. At the oral proceedings, she was able to convince the Opposition Division that granted claim 1 was not inventive and the patent was maintained as amended with a claim 1 directed to a wallboard having the gypsum composition with 3wt% HE starch set between two parallel cover sheets - a much narrower claim scope than that granted. The Patentee decided not to appeal the decision.

EP2004570B - Offensive opposition against a patent owned by Siniat and containing claims directed to the use of a starch (in any amount) having a certain viscosity for manufacturing a plasterboard and for increasing compressive strength of a plasterboard. Rachel attacked these patent claims for lack of  novelty/inventive step based on documents that did not explicitly show the viscosity of the starch. Despite an entirely unfavourable preliminary opinion from the Opposition Division, she was able to successfully convince them at the oral proceedings that the granted claims lacked novelty by convincing them to apply the "balance of probabilities" rather than the higher "beyond all reasonable doubt" test to the question of whether or not the starch still had the same viscosity as that disclosed in an earlier experimental report. The patent was maintained with these use claims deleted and an independent claim 1 defining a slurry composition having a % weight range of starch outside that of concern to the opponent. 

EP2765424B - Defensive opposition of a patent owned by Hitachi High Technologies Corporation in relation to a biomolecule analyser. Added subject matter objections formed a large part of the opposition. In her response to the Notice of Opposition, Rachel requested maintenance of the patent as granted and argued against the added subject matter objections. The Preliminary Opinion of the opposition division was entirely in our favour and the opponent withdrew their request for oral proceedings. The opposition division issued a decision to maintain the patent as granted.

Recommendations

Rachel has been recognised in IAM Patent 1000 - 2022 and 2024.

“has an unprecedented ability to put complex inventions on paper and an exemplary approach which is logical and underscored by a high level of understanding” - IAM Patent 1000, 2021