Katie McConnell

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 – by both clients and counterparties – 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, patent arbitration (including in relation to disputes over the appropriate royalties and terms for licenses of standards essential patents (SEPs)), and issues relating to SEPs and non-essential patents.  She has won cases confirming that an SEP could be worked around, striking out an application for ex-UK damages claimed for infringement of a UK SEP (clarifying the law in this hotly contested area), and clarifying the scope of the UK’s Crown Use defence to patent infringement.

Katie 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 experience in the area of SPCs and pediatric extensions.

Key examples of Katie’s transactional experience include acting for Novartis on IP aspects of its US$16bn portfolio transformation transactions with GSK, advising Novartis on IP aspects of its collaboration with Microsoft to leverage artificial intelligence (AI) to transform how medicines are discovered, developed and commercialized, and advising the Kraft and Mondelez Groups on the IP aspects of their demerger as it affected their global coffee business. Katie also advises on other non-contentious and pre-litigation IP matters including selection of suitable candidate patents for assertion in licensing negotiations and patent disputes.