Gareth Probert

Partner, UK and European Patent Attorney
London

Gareth is highly skilled in contentious IP having represented clients in many Opposition and Appeal hearings at all levels of the European Patent Office.

For the last 10 years Gareth has held senior positions at two leading IP firms. He is now the head of the EIP HeathTech practice group protecting innovations in the medtech and healthcare sectors. In addition, his practice covers food and fragrance technologies and the crossover area of chemistry and biotech.

Gareth has a track record of success in high-value difficult cases, including in several oppositions which were carried out in conjunction with parallel litigation proceedings. During his 20-year career in the profession Gareth has gained substantial experience in medtech and healthcare, in particular the FMCG, formulation, peptide, food and chemical sectors. He is a member of the CIPA Life Sciences Committee and the FICPI UK Council.

Gareth has a PhD in Synthesis using Zirconocene and a degree in Chemistry and Organic Chemistry, both from Southampton University.

Experience

  • Acting for AstraZeneca's Nexium patents to defend them against multiple opponents (19 opponents against two patents).
  • Leading commercially significant opposition cases for Novo Nordisk which concerned protection of important products.
  • Represented Edwards Lifesciences in several significant medtech oppositions.
  • Achieved a commercially successful result for a client in an admissible Petition for Review involving a hearing before the Enlarged Board of Appeal.

Published articles

  • July 2022
    Lawyer Monthly, Why European Patenting is Back on Track (link)
  • August 2021
    Life Sciences Lawyer, Patenting implications of personalized healthcare boom (link)
  • August 2021
    Whitepaper, What's Next For Medtech? (link)
  • July 2020
    The Patent Lawyer Magazine, Supplementary Protection Certificates in the UK - what happens after Brexit?

Education and qualifications

  • European Patent Attorney, 2002
  • UK Chartered Patent Attorney, 2002

  • 1993 — 1996
    PhD Synthesis using Zirconocene, Southampton University
  • 1989 — 1993
    BSc Chemistry and Organic Chemistry, Southampton University

Career history

  • 2020 — present
    Partner, EIP
  • 2018 — 2020
    Partner, HGF
  • 2010 — 2017
    Partner, Potter Clarkson
  • 2004 — 2009
    Associate and Senior Associate, Potter Clarkson
  • 2002 — 2004
    Associate, WP Thompson
  • 1999 — 2002
    Assistant, Forresters
  • 1996 — 1998
    Synthetic Organic Chemist, Tocris

Awards and recognition

  • Recommended IAM Patent 1000, 2022. Gareth "is especially proficient when running them (medical devices) in tandem with parallel litigation". (link)
  • Legal 500, 2022 (link)
  • Recommended IAM Patent 1000, 2021. (link)
  • Legal 500, 2021
  • CIPA Gill Prize, 2002 - highest mark in the UK patent qualifying exams

Speaking engagements

  • November 2021
    CIPA Life Sciences Conference , Speeding Ahead at the EPO
  • November 2021
    Loughborough University, Intellectual Property in Additive Manufacturing
  • September 2021
    Medilink Midlands, Webinar: Additive Manufacturing & 3D Printing Special Interest Group (SIG) (link)
  • January 2021
    CIPA/EPO Seminar , Oral Proceedings and Examiner Interviews
  • November 2020
    CIPA Life Sciences Conference , EP Case Law Update (Implications of Covid 19 on Prosecution Implications of Covid 19 on Proceedings at EPO G3/19 Decision)