Penny

Gilbert

Partner

One of the most accomplished patent litigators in Europe, specialising in pharmaceuticals and biotechnology.” “A great litigator – very smart, experienced and calm under pressure.
Chambers and Partners

Penny

Gilbert

Partner

One of the most accomplished patent litigators in Europe, specialising in pharmaceuticals and biotechnology.” “A great litigator – very smart, experienced and calm under pressure.
Chambers and Partners

Profile

With a degree in biochemistry and a doctorate in molecular biology, Penny’s strong scientific background has led to her specialisation in advising clients in the life sciences sector. She represents clients before all levels of the UK patent courts including the Court of Appeal and Supreme Court.  She successfully represented clients in appeals to the Supreme Court on issues of industrial application and sufficiency of claim scope.  She has also represented clients in referrals to the CJEU and the EFTA Court on the interpretation of the SPC Regulation.

She has a wealth of experience in advising on European litigation strategy and co-ordinating multi-jurisdictional patent litigation. She has represented clients in European Patent Office opposition and appeal proceedings and in appeals from the UK IPO. Penny also represents clients in patent licence disputes before the UK courts and in arbitration. She is a qualified mediator and a solicitor advocate.

Penny also counsels on pharmaceutical lifecycle management, and is experienced in providing freedom to operate and due diligence advice.

She is a frequent lecturer on aspects of IP law affecting the life sciences sector and a tutor on the Oxford University Diploma in Intellectual Property Law and Practice course, teaching patent litigation.  As a former President of EPLAW, and a current member of its advisory board, she has been involved with its aims of harmonising European Patent law, including involvement in the training of judges for the UPC.

Penny has been a partner at Powell Gilbert since it was founded in 2007.

Key cases: 

  • BioNTech / Pfizer v Moderna (SARS-CoV2 vaccine)
  • BioNTech/ Pfizer v CureVac (SARS-CoV2 vaccine)
  • Sandoz/ Polpharma v Biogen (Tysabri)
  • NuCana v Gilead (phosphoramidated nucleosides)
  • Otsuka v GW (royalty dispute / jurisdiction challenge – Cannabidiol) 
  • Regeneron v Kymab (antibodies / transgenic mice)
  • Biogen v Gedeon Richter (Adalimumab formulations)
  • Biogen v Fresenius (Adalimumab formulations)
  • Biogen v AbbVie (Adalimumab)
  • Merck v GSK (pneumococcal vaccines)
  • Royalty Pharma v Boehringer Ingelheim (royalty dispute – Linagliptin)
  • Royalty Pharma (SPC – Sitagliptin)
  • Forty Seven v SSB (CD47 – therapeutic antibodies)
  • Eli Lilly v Eisai (Alzheimer therapies)
  • Mylan v Sandoz (protein purification)
  • GlaxoSmithKline Biologicals v UCB Pharma (royalty dispute – vaccines)
  • Icahn School of Medicine at Mount Sinai (SPCs – agalsidase beta)
  • Pharmaq v Intervet (SPCs – veterinary vaccine)
  • Eli Lilly v Biogen (monoclonal antibody use)
  • Synageva v CHRF / Shire (orphan drug / enzyme replacement therapy)
  • Eli Lilly v Human Genome Sciences (neutrokine alpha)
  • Eli Lilly v Human Genome Sciences (SPCs – neutrokine alpha)
  • Hospira v Amgen (protein pegylation)
  • Sandoz / ratiopharm v Napp (patents – controlled release oxycodone formulations) 
  • Roche v Chiron (SPCs – trastuzumab and enfuvirtide)
  • Oxford Gene Technology v Affymetrix (DNA microarrays)
  • Pharmacia v Merck (COX 2 inhibitors)
  • Inhale v Quadrant (protein stabilisation)
  • Quadrant v Roser (protein stabilisation)
  • Chiron v Murex & Others (HCV)
  • Chiron v Evans Medical & Others (pertussis antigens)
  • Genentech v Wellcome (tPA)
  • Genentech v Eli Lilly (HGH)
Qualifications

1991 Solicitor (England & Wales)

2004 Mediator

2005 Solicitor Advocate (England & Wales)

2016 Solicitor (Ireland)

Education

MA (Biochemistry), Oxford University

DPhil (Molecular Biology), Oxford University

Diploma in Intellectual Property Law and Practice, Bristol University

Connections & Networks

Former President of the European Patent Lawyers Association (EPLAW) and current member of the Advisory Board Editorial Board member – BioScience Law Review; LSIPR; Oxford Journal of Intellectual Property Law and Practice Member of EPLAW, AIPPI, LSLA, IPLA, and LES.

Tutor on the Oxford University Postgraduate Diploma in Intellectual Property & Practice

 

Awards & Recognition

Who’s Who Legal – Life Sciences – Patent Litigation Lawyer of the Year 2023

Managing IP’s IP Stars – Patent Star; Top 250 Women in IP

Juve Patent – Leading Individual, Patent Litigation UK

Legal 500 – Hall of Fame – Patents; Life Sciences

IAM Patent 1000: UK Patent Litigation (Gold Tier)

Who’s Who Legal – Patents and Life Sciences – Global Elite Thought Leader

Best Lawyers UK – Life Sciences Law and Intellectual Property Law

Expert Guides – Patents UK, Best of the Best; Women in Business Law

Managing IP EMEA Awards – Practitioner of the Year (2021)

EMEA LMG Life Sciences Awards: Patent Litigator of the Year: Biotech (2023) and IP Lawyer of the Year: Biotech (2022, 2021, 2020)

Who’s Who Legal’s Life Science Patent Litigation Lawyer of the Year (2022, 2020, 2017, 2011)

Women in Business Law Europe, Life Sciences Lawyer of the year (2022, 2021), Best in Patents Award (2020, 2014, 2012)

Lexology – Client Choice Award Winner – Life Sciences and Intellectual Property (2022)

World IP Review – Leader and WIPR’s Influential Women in IP (2019)

LSIPR top 50 Life Sciences leaders (2018)

Leaders League, Innovation – Technology & IP – Leading Partners

Super Lawyers top 100 in London (2015) and top 50 women

Top 100 business lawyers in the UK in “Chambers 100” (2013)

The Lawyer “Hot 100” (2009, 2008)

Additional Facts
Languages spoken

French

Additional Facts
Pets

Our daughter's cats: Thor and Loki

Additional Facts
Life before law

Research into oncogenes and tumour-associated antigens