Heather McCann

Partner, UK and European Patent Attorney
London, EIP Europe LLP


Heather is regularly cited in the Legal 500, Chambers & Partners and IAM Patent 1000 guides as a leading practitioner. She divides her time between EIP's offices in London and the US, from where she regularly advises Silicon Valley tech start-ups, SMEs and US law firms on European patent filing and prosecution strategy.

Heather joined EIP in 2002 from the IP Division of a major telecoms company. Heather has significant experience in drafting and prosecuting patent applications for innovation relating to the Internet of Things, security, computer systems and architecture, desktop applications, signal processing, wireless modem technologies, a range of networking topologies and protocols, electronic messaging systems and electronic trading systems. She has represented clients at opposition and appeal proceedings at the EPO on numerous occasions, and provides support on litigation matters, worldwide. Heather has extensive experience of developing, communicating and implementing IP strategies.

Heather has a PhD in Combustion and Fluid Dynamics, and a Bachelors Degree in Engineering, both from Imperial College, London.

Experience

  • Unwired Planet vs. Apple (Northern District of California). Acted for patent owner as global prosecution counsel in relation to post-grant proceedings
  • Unwired Planet vs. Google (District of Nevada). Acted for patent owner as global prosecution counsel in relation to post-grant proceedings
  • Unwired Planet vs. Apple, RIM (International Trade Commission, Washington DC). Acted for patent owner as patent counsel
  • Visto vs. Research in Motion. Acted for patent owner in international litigation relating to email synchronization technology, resulting in a $267.5 million settlement in favour of patent owner
  • Good Technology Corporation. Global lead prosecution counsel 2009-2016

Recent work

  • Unwired Planet vs. Samsung, Huawei and LG Electronics (Düsseldorf District Court). Acted for patent owner in providing technical and non-technical support to EIP Legal team in Germany in standard essential patent case related to LTE and GSM standards. The non-technical support work related to patent assignments and complex corporate transactions.
  • Unwired Planet vs. Samsung and Huawei (UK High Court). Acted for patent owner in providing technical support in 4G standard essential patent case.
  • Successfully progressed patents through to grant in Europe, the US and China for a multinational financial services company in the notoriously-difficult payments field.
  • Unwired Planet vs. Apple (Northern District of California). Acted for patent owner as global prosecution counsel in relation to post-grant proceedings

Education and qualifications

 

  • 1997
    PhD in Combustion and Fluid Dynamics, Imperial College, London
  • 1993
    Bachelors Degree in Engineering, Imperial College, London.

Career history

  • 2002 — present
    Partner, EIP
  • 1999 — 2002
    Patent Attorney, British Telecoms
  • 1998 — 1999
    Trainee Patent Attorney, BAE Systems

Awards and recognition

  • Legal 500, 2018: Recommended Patent Attorney (link)
  • Ranked as "Patent Star", IP Stars 2018 (link)
  • Women in Law Awards, 2018 (UK - Patents) - Lawyer Monthly
  • IAM Patent 1000, 2018. (link)
  • Chambers & Partners, 2017: Heather has "excellent technical knowledge" and an "ability to find arguments that differentiate a claimed invention from cited prior art." (link)
  • Legal 500, 2017: Heather "is noted for her ‘tremendous technical knowledge’."
  • Ranked as a "Patent Star" and "highly recommended", IP Stars 2017
  • IAM Patent 1000, 2017. "The masterful drafting of Heather McCann is a boon for IT innovators with complex applications."
  • Legal 500, 2016
  • IAM Patent 1000, 2016. “Heather’s biggest asset is her personal interest and pride in what she does – she is determined always to deliver quality work."
  • Ranked in IP Stars 2016
  • Legal 500, 2015

Speaking engagements

  • 6 December 2018
    Fieldfisher, Exploring the implications of Brexit on your business from a technology perspective
  • 5 December 2018
    Managing IP, European Patent Forum USA 2018
  • 26 October 2017
    Silicon Valley IP Law Association, Obtaining Unitary Patents - Effects of UPC Ratification & Creation of New Pan-European Patent System (link)