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Katie McConnell

Counsel
London

Katie McConnell
Languages
English
Practice Group
Intellectual Property

Katie is a solicitor advocate with extensive experience representing clients in major multi-jurisdictional patent disputes in the telecoms and pharmaceutical sectors.  Katie is also recognized for her practical and solution oriented approach when drafting and negotiating licensing, settlement, and IP aspects of other commercial agreements.

In the telecoms sector, Katie advises on and coordinates cross-border patent disputes (including acting on behalf of Qualcomm, HTC, ZTE), patent arbitration (including in relation to disputes over the appropriate royalties and terms for licenses of standards essential patents), and issues relating to standards essential and non-essential patents. 

Katie's has advised on a number of Life Sciences 'firsts', including acting for Merck in the first UK cases challenging the interpretation of European legislation regarding pediatric extensions, and in the first UK case on the interpretation of the Specific Mechanism (ultimately resulting in a favorable ruling from the CJEU).  Katie has significant expertise in the area of SPCs and pediatric extensions.

Key examples of Katie's transactional experience include acting for Novartis on IP aspects of is US$16bn portfolio transformation transactions with GSK, and advising the Kraft and Mondelez Groups on the IP aspects of their demerger, as it affected their global coffee business. Katie also regularly advises on a range of other non-contentious and pre-litigation IP matters including review and selection of suitable candidate patents for assertion in licensing negotiations and patent litigation. 

Katie has been recognized as a 'Rising Star' in Intellectual Property in 2013, 2014, and 2015.

'European Patent Firm – Contentious'

MIP Global Awards 2015

Representative Experience

Acting for Merck in first UK case dealing with the interpretation of European legislation regarding the Specific Mechanism for parallel imports.

Acting for ZTE in patent litigation against Ericsson relating to allegedly standards essential patents.

Acting for a leading manufacturer of innovative smartphones.

Acting for Merck and Du Pont on first UK cases challenging European legislation regarding pediatric extensions to supplementary protection certificates; won extension for Du Pont.

Acting for Qualcomm in its patent action against Nokia in relation to GPRS and EDGE mobile phone technology, and co-ordinating related patent actions across jurisdictions.

Advising one of world's leading food and beverage companies on IP aspects of business separation; various joint development arrangements; drafting and negotiating related contractual provisions.

Acting for Novartis on IP aspects of its acquisition of GSK's oncology products for an aggregate cash consideration of US$16bn.

Acting for Eli Lilly in its dispute with Actavis over Lilly's Alimta cancer treatment in relation to dextrose remission issues.

Acting for HTC in UK litigation against a non-practicing entity.

UK litigation against Nokia relating to over 30 allegedly non-essential patents asserted by Nokia in parallel German proceedings.

HTC's application for revocation of a patent for data entry systems.

Education and admissions

Education

  • Diploma in Intellectual Property Law and Practice, University of Bristol, 2006
  • Postgraduate Diploma in Law, Oxford Institute of Legal Practice, 2002
  • B.A., Jurisprudence, University College, Oxford, 2001

Memberships

  • AIPPI
  • CIPA

Court admissions

  • Senior Courts of England and Wales

2014

Rising Star Intellectual Property

Super Lawyers London

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