Emily Hayes

Most of Emily’s work is in the Life Sciences sector, with a focus on biotechnology. Emily has extensive experience drafting and prosecuting patent applications and is particularly experienced at handling large global portfolios and providing strategic advice to clients in line with their commercial interests. This also means that she has experience prosecuting applications not just at the European Patent Office, but worldwide. Emily has a sizeable oppositions and appeals practice and she is extremely experienced at handling hearings before the EPO.

Areas of Expertise

• Antibody therapeutics, particularly for oncology and treating inflammatory diseases
• Transgenic mouse technology
• Diagnostic methods and personalised medicine

Clients

In the UK and Europe, Emily’s clients are biopharma companies, multinational biotech corporations, as well as biotech start-ups, research charities and universities.  She also handles work for US attorney firms, as well as directly for some multinational biotech corporations based in the US.

Background

Emily has an M.Sci. degree in Natural Sciences (specialising in Biochemistry) from the University of Cambridge.  She also has a Ph.D. in Biochemistry from the University of Cambridge, focussing on the development of an anti-angiogenic gene therapy for the treatment of cancer.  Emily joined Mewburn Ellis LLP in 2005, qualifying as a Chartered Patent Attorney and a European Patent Attorney in 2009.  She joined the partnership in 2013.

In 2010, she spent three months on secondment to a US patent attorney firm in Boston, developing expertise in the US life sciences and patent sectors.  Emily has presented many seminars on European patent law practice to US patent attorneys, including at AIPLA.  She has also written for the Boston Patent Law Association newsletter.

Opposition highlights

Emily has extensive experience representing clients at opposition and appeal hearings at the EPO and has been the lead attorney on numerous oppositions, both defensive and offensive, many of which have been multi-opponent proceedings. 

Offensive opposition highlights:

• Revocation of Pfizer’s anti-NGF patents EP 1,575,522, EP 1,732,949 and EP 1,556,083 before the EPO Board of Appeal (T 441/12, T 858/13 and T 2145/13 respectively);
• Revocation of Amgen’s patent EP 2,559,705 relating to anti-activin A antibodies before the EPO Board of Appeal (T 813/19);
• Revocation of Orega BioTech and INSERM’s patent EP 2,654,789 relating to anti-CD39 antibodies before the EPO’s Opposition Division;
• Revocation of EP 3,636,778 relating to antisense nucleic acid molecules for treating facioscapulohumeral muscular dystrophy;
• Revocation of Altor BioScience’s patent EP 1,409,646 relating to transgenic animals comprising a humanized immune system before the EPO’s Opposition Division;
• Revocation of BioMarin’s patent EP 2,806,900 relating to antisense oligonucleotides for treating Duchenne and Becker muscular dystrophy before the EPO’s Opposition Division.

Defensive opposition highlights:

• Successfully defended EP 1,942,939 relating to the commercial formulation for Adtralza® (Tralokinumab) before the EPO’s Opposition Division;
• Successfully defended EP 2,997,036 relating to a platform technology for purifying recombinantly produced polypeptides before the EPO’s Opposition Division following opposition by two opponents, with the patent being maintained as granted;
• Successfully defended a series of patents relating to amorphadiene production (EP 2,021,486, EP 2,217,711 and EP 2,024,504) for Amyris, Inc. before the EPO Board of Appeal (T 1587/17, T 969/18 and T1424/18), as well as EP 2,066,778 before the EPO’s Opposition Division.  

Recommendations

Emily has been quoted in Managing Intellectual Property (MIP) about the new Rules for Procedure for the EPO Boards of Appeal.

Quotes from clients:

“The proceeding went extremely well thanks to your thorough preparation, and I compliment you for being clear and concise in your presentations to the OD - great job!  Attending the opposition and watching you in action gave me great confidence that we have chosen the right counsel for this and other EU patent matters.”

“You did a great job!  Your ability to think quickly and adjust to unpredictable situations is truly impressive.  That skill was definitely key to our success yesterday.”