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Tim Whitfield

Partner

Tim
Whitfield

Partner

  • +44 (0)20 3040 8031
  • tim.whitfield@powellgilbert.com
  • linkedin.com/in/tim-whitfield
  • People
  • Tim Whitfield

Tim advises clients in contentious IP matters across a wide range of technologies, especially disputes having an international element and in the pharmaceutical sector.
 
Tim advises on contentious matters across all IP rights, with a strong focus on patent litigation and strategy. He represents clients in cases before the English Courts, as well as in proceedings before the European Patent Office. He has very extensive experience of advising clients on the co-ordination of international patent litigation strategy including in the consumer products, pharmaceutical, medical devices and electronics fields. Tim also advises on related issues arising from international technology standards, patent pools and licensing, as well as pharmaceutical regulatory issues and SPCs.
 
Tim’s strong scientific background allows him readily to understand complex technical issues. He has advised on patents and litigation strategy relating to a diverse range of technologies, including consumer products embodying a wide range of technologies, pharmaceutical and biotechnology products and formulations, medical devices and associated consumables, telecommunications (both implementation patents and those declared essential to telecommunications standards), industrial processes and consumer electronics.
 
Tim also has experience of patent portfolio due diligence projects, contentious design right issues and trade mark infringement disputes.
 
Tim regularly presents at conferences, workshops and international meetings on UK and European patent law and litigation strategy issues.
 
Tim joined Powell Gilbert as an associate when it was founded in 2007, and became a partner in 2012.
 

Key cases

  • Otsuka v GW (royalty issues regarding cannabinoid epilepsy therapies)

  • Philip Morris v Nicoventures / BAT (heat-not-burn tobacco)

  • CommScope v SOLiD (digital distributed antenna systems)

  • Napp v Dr Reddy’s & Sandoz (buprenorphine transdermal patches & subsequent cross undertaking damages inquiry)

  • Accord Healthcare v Research Corporation Technologies (anti-epileptics)

  • Varian v Elekta (MRI / radiotherapy devices)

  • Merck Sharp & Dohme v Royalty Pharma Collection Trust (DPP-IV inhibitors)

  • Unwired Planet v Huawei & Others (telecommunications)

  • Fresenius v Advanced Renal Technologies (dialysis fluids)

  • Baxter v Fresenius (medical devices)

  • Motorola Mobility v BT (digital TV)

  • Microsoft v Motorola Mobility (smartphones)

  • Corma v Hegler Plastik (extruded plastics)

  • Fresenius v CareFusion (medical devices)

  • Nuance v Vlingo (speech recognition)

  • Philips & Others v Alba (MPEG-2 / FRAND licensing)

  • Sandoz / ratiopharm v Napp (patents - controlled release oxycodone formulations)

  • Aveva v LTS (nicotine transdermal patches) 

  • Tupperware v Lékué (silicone products)

Qualifications
  • 2004 Solicitor
  • 2014 Solicitor Advocate
Education
  • MChem (Chemistry), Oxford University
  • Diploma in Intellectual Property Law and Practice, Bristol University
Awards and recognition
  • IAM Global IP Awards, UK Patent Law Firm of the Year (2020, 2019)
  • Managing IP EMEA Awards - UK Patents (Contentious) Firm of the Year (2021, 2019, 2018)
  • Who's Who Legal Patents and Life Sciences Lawyer
  • Recommended Individual JUVE Patent UK
  • Client Choice Awards 2017 in Intellectual Property: Patents, UK
Connections and networks
  • EPLAW, AIPPI and LSLA

Tim is incredibly calm and collected under intense pressures – there is no drama, just a steely resolve

IAM Patent 1000 2022

Tim has extraordinary attention to detail. As far as I can tell nothing escapes him and we have often been two steps ahead of our well-represented opponents. Tim has deftly avoided or managed issues very effectively, and on the flip side he has tied opponents in knots and forced missteps, all to our commercial advantage.

IAM Patent 1000 2022

technically brilliant with life sciences and picks things up incredibly quickly. He "never loses sight of the commercial goals of his client" and is lauded for his "strong legal and communication skills".

WWL 2022

Incredibly calm and collected under pressure, he never loses sight of clients’ commercial objectives. Tim looks 10 steps ahead and manages large teams effectively while keeping on top of the details and regularly making insightful observations.

IAM Patent 1000 2022

Tim Whitfield, one of the younger, but already very experienced partners is very knowledgeable in all issues of patent litigation.

Legal 500 2022

litigator par excellence, very impressive in court

JUVE 2021

Tim is an outstanding lawyer. He has cutting-edge knowledge and application of the law, is always on top of the detail and, critically, always plans to be a step ahead of our opponents." "He is a genius, dynamic and really hard-working

Chambers and Partners 2021

an excellent understanding of the pharmaceuticals sector and has delivered excellent results for his clients in a series of cases in which I have been involved. He has a good instinct for when to fight and when to talk

Legal 500 2021

strong scientific understanding and excellent patent skills

IAM 1000: The World's Leading Patent Practitioners 2020

sharp, clever practitioner

IAM 1000: The World's Leading Patent Practitioners 2020

recognised for the depth of his patent expertise and extensive experience handling multi-jurisdictional litigation and strategy

Who's Who Legal, Patents 2020

a highly respected practitioner whose practice encompasses patent litigation and strategy in the life sciences space

Who's Who Legal, Patents 2019

The "excellent" Tim Whitfield is recognised in the international market for his extensive experience coordinating cross-border patent litigation strategies for major clients in the pharmaceutical, medical devices and electronics sectors

Who’s Who Legal, Life Sciences 2018

Tim Whitfield is also “outstanding” in this space, with sources widely endorsing him as an authority in contentious IP matters. He is particularly well known for his outstanding work on patent litigation and strategy

Who’s Who Legal, Patents 2018

Tim Whitfield has strong experience in contentious IP matters, particularly patent litigation, where he is praised as "indispensable, one of the best in the market"

Who's Who Legal, Patents 2017

Tim Whitfield is praised by sources for his handling of complex and often international patent disputes involving consumer electronics, FMCG and life sciences.

Chambers and Partners 2015

Tim Whitfield is a “very diligent” up-and-coming partner who has impressed clients with his advisory skills and responsiveness.

Chambers and Partners 2014

Tim Whitfield is “very bright and has tremendous drive”.

Legal 500 2013

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