Tim

Whitfield

Partner

He 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. … he is incredibly calm and collected under intense pressures – there is no drama, just a steely resolve.” 

IAM Patent 1000

Tim

Whitfield

Partner

He 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. … he is incredibly calm and collected under intense pressures – there is no drama, just a steely resolve.” 

IAM Patent 1000

Profile

Tim advises and represents clients in significant patent and other contentious IP matters, with particular experience in complex patent disputes requiring co-ordination across multiple jurisdictions.

His practice is centred on UK, European and UPC patent litigation and the co-ordination of international patent litigation strategy. He acts in proceedings before the English courts, the Unified Patent Court and the European Patent Office, and regularly advises on the alignment of forum, validity, infringement and commercial objectives across wider international disputes. He has extensive experience managing multinational patent litigation in the consumer products, pharmaceutical, medical devices and electronics sectors.

Tim also advises on disputes and strategic issues involving SPCs and pharmaceutical regulatory matters, standard-essential patents, FRAND and licensing questions, and patent pools. His scientific background enables him to understand complex technical issues quickly and to translate them into clear, practical advice for in-house teams and senior management.  His experience covers a broad range of technology sectors, including pharmaceuticals and biotechnology, industrial chemistry, medical devices, energy, automotive, consumer products and electronics.

He also has experience of patent portfolio due diligence and freedom-to-operate projects, as well as design right and trade mark disputes. He is a regular speaker at conferences and industry events on UK and European patent law, litigation strategy and UPC developments.

Tim joined Powell Gilbert as an associate when the firm was founded in 2007 and became a partner in 2012.

Key Cases

  • Fast IP v Skechers (UPC – slip on footwear)
  • Garrett Motion v Melett (aftermarket turbocharger components)
  • DSM v Algal Omega 3 / Mara Renewables (algal omega-3 oil production)
  • Otsuka v GW Pharma (royalty issues regarding cannabinoid epilepsy therapies)
  • Philip Morris v Nicoventures / BAT (various heat-not-burn tobacco technologies)
  • 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 (controlled release oxycodone formulations)
  • Aveva v LTS (nicotine transdermal patches) 
  • Tupperware v Lékué (silicone products)
Qualifications

2004 Solicitor (England & Wales)

2014 Solicitor Advocate (England & Wales)

2022 Solicitor (Ireland)

2023 UPC Representative

Education

MChem (Chemistry), Oxford University

Diploma in Intellectual Property Law & Practice, Bristol University

Connections & Networks

Member of EPLAW, AIPPI, AIPLA and LSLA

Awards & Recognition

Juve Patent – Recommended Individual, Patent Litigation UK

Lexology Index – IP-Patents Thought Leader

Lexology Index – Healthcare & Life Sciences – Patent Litigation

World IP Review – Leader

IAM Patent 1000 – UK Patent Litigation (Silver Tier)

Legal 500 Key Lawyer

Managing IP’s IP Stars – Notable Practitioner

Client Choice Awards 2017 – Intellectual Property: Patents, UK

Additional Facts
Favourite place

Copenhagen – a city I have visited many times and always enjoy returning to

Additional Facts
Interests

food & wine, motor racing and cricket

Additional Facts
If I wasn't a lawyer

I would like to have been a cricket commentator