Edward Oates

Partner

Ed built his “enviable track record” (IAM Patent 1000) on some of the most difficult and complex cases in the life sciences sphere, including the longest life sciences opposition hearing in memory (eight days attacking EP 2 188 302 on behalf of Merck Sharp & Dohme LLC) and some of the most heavily opposed life sciences patents ever (22 opponents on EP 2 478 907 and 15 opponents on its parent, EP 2 061 561, on behalf of Janssen Oncology, and 14 opponents on EP 2 292 219 on behalf of Novartis AG). Ed’s sole focus is healthcare, and he has worked on numerous marketed pharmaceuticals across a variety of fields, leading the key patent defences on some of the world’s most valuable medicines of recent times. Complementing Ed’s advocacy before the EPO, Ed is “an original thinker” (Who’s Who Legal: Patents) with exceptional experience in patent lifecycle management, and a “powerful intellect with great SPC knowledge” (Who’s Who Legal: Patents). He “operates at the forefront of the market” (JUVE 2023), also advising clients on paediatric extensions and related regulatory exclusivities. He has coordinated many complex pan-European SPC portfolios, and has a detailed understanding of law and procedure relating to the Unified Patent Court (UPC).

Ed has worked on some of the seminal European SPC cases of recent years, and consequently has been invited on a number of occasions to address the annual meeting of pan-EU SPC examiners. Along with his “terrific prosecution and SPC experience” (Managing IP), Ed has acted before the Court of Justice of the European Union, the Court of Appeal of England and Wales, the High Court of England and Wales and the UK Intellectual Property Office, and has managed litigations in many jurisdictions around the world. When not engaged in contentious work or prosecuting cases, Ed uses his “very impressive … breadth of pharmaceuticals knowledge” (IAM Patent 1000), coupled with his experience on big-ticket cases, to provide his clients with practical advice in relation to IP matters. This includes freedom-to-operate advice, transactional support, such as due diligence, and counselling relating to the UPC. Prior to joining Carpmaels & Ransford in 2003, Ed studied chemistry at University of Oxford where he was awarded a scholarship and a number of prizes for his academic performance, graduating with a first-class degree. After becoming a European and UK patent attorney, Ed qualified as a Patent Attorney Litigator, receiving the Hogarth Prize as the highest-ranked patent attorney in his year. Spurred by the advent of the UPC and his dual EU nationality, Ed more recently obtained the Milan European Patent Litigator qualification.

“The firm’s expert for SPC issues”
JUVE 2023

Qualifications

  • MChem (University of Oxford)
  • Chartered Patent Attorney
  • European Patent Attorney
  • Higher Courts Litigator
  • Higher Courts Advocate
  • Milan European Patent Litigator qualification
  • UPC Representative

Key Cases

  • Lead European counsel on Vertex’s cystic fibrosis portfolio, including the prosecution and defence of key IP relating to KALYDECO®, ORKAMBI®, SYMDEKO®/SYMKEVI® and TRIKAFTA®/KAFTRIO®.
  • Lead European counsel on numerous J&J commercial products, including the prosecution and defence of key IP in its prostate cancer program (e.g. ERLEADA® and ZYTIGA®), its HIV program (e.g. COMPLERA®/EVIPLERA®, REKAMBYS® and EDURANT®) and its neuroscience program (INVEGA SUSTENNA®/XEPLION® and INVEGA TRINZA®/TREVICTA®).
  • Lead European counsel for Merck Sharp & Dohme on various commercial products, including its antibiotics portfolio such as CUBICIN® and CUBICIN RF®.
  • Lead European counsel for Takeda on various commercial products including NINLARO® and ALUNBRIG®.
  • Lead European counsel for Acorda (licensed to Biogen) in relation to AMPYRA®/FAMPYRA®.
  • Lead European counsel for Ipsen (licensed to Servier) in relation to ONIVYDE®.
  • Lead European counsel for Eagle Pharmaceuticals in relation to BENDEKA®.
  • European counselling for Novartis, including SPC advice and EPO representation, on numerous pharmaceutical products including COSENTYX®, ENTRESTO®, EXELON®, EXFORGE®, EXFORGE HCT®, GLEEVEC®/GLIVEC®, ILARIS®, KESIMPTA®, LEQVIO®, LUCENTIS®, MAYZENT®, PLUVICTO®, SCEMBLIX®, and ZOLGENSMA®.