Evelina Marchesoni

I specialise in multi-jurisdictional contentious patent matters, with a particular focus on Life Sciences & Healthcare and the Tech & Comms sector.

Since joining Bird & Bird in 2005, I have been involved in a wide range of intellectual property tasks, including patents, trademarks, designs, domain names, and unfair competition, both in contentious and non-contentious matters, for clients across various sectors.

In particular I have developed my expertise in contentious matters in the life sciences sector, daily engaging in pan-European patents and SPC litigation in the pharmaceutical, biotech and medical device fields.

I am also experienced in patent litigation in the telecommunications sector. In particular, I have been involved in various litigations concerning standard essential patents, as well as defining the strategy for the protection and enforcement of these patents and managing related competition issues.

My litigation experience now includes proceedings (both main and for provisional measures) before the Unified Patent Court.

My work has been recognized by rankings over the past years as a raising star in Legal 500, IAM Patent 1000 and MIP.

In addition to my litigation work, I have contributed to various legal publications and articles on intellectual property law (including Managing Intellectual Property Magazine, The Life Sciences Law Review, World IP Review, Life Sciences Legal Practice Guide, Studi in memoria di Paola A .E. Frassi), and I'm a member of the Editorial Board of EPLAW Patent Blog and of the European Copyright and Design Reports (Sweet & Maxwell).

• National litigation experiences:
• Assisting pharmaceutical companies in different proceedings - preliminary injunction, invalidity and infringement, 'descrizione' - related to pharmaceutical and biologic patents and supplementary protection certificates, including (mainly 'secondary') patents on the active ingredients pemetrexed, deferasirox, tapentadol, fulvestrant, tadalafil, rivastigmine, esomeprazole, rosuvastatin, quietiapine, paracetamol + tramadol, botulinum toxin, bimatoprost, fluvastatin, nebivolol, olanzapine, finasteride, rituximab, natalizumab and the SPCs on telmisartan + hydrochlorothiazide, valsartan + hydrochlorothiazide, ezetimibe + simvastatin, sitagliptin + metformin.
• Assisting a biotech company in preliminary injunction and infringement and invalidity proceedings related to a patent for DNA sequencing technology.
• Assisting a medical devices manufacturer in preliminary injunction proceedings related to a patent on breathing tubes.
• Assisting different companies in in the strategy and enforcement of standard essential patents, including patents related to GSM, 3G, LTE, Wi-Fi, DVB-T2, ATSS and WSS technology.
• Assisting a US company in proceedings for invalidity and infringement of a patent related to an automobile air conditioning refrigerant.
• Assisting a company active in the global outdoor apparel and footwear in preliminary injunction proceedings related to a patent on a waterproof-breathable footwear.
• Assisting a company active in the mechanical sector in 'torpedo' action for non-infringement of foreign patents and different designation of a European patent.
• Advising a pharmaceutical company on Italian issues arising from a patent litigation pending in the UK where the English judges exercised jurisdiction over claims for non-infringement (also) of the Italian designation of a European patent.
• UPC litigation experience:
• Assisting a medical devices company as defendant in proceedings for provisional measures related to a patent on insulin patch pumps before the Milan Local Division.
• Assisting a medical device company as defendant in infringement proceedings related to a patent on continuous glucose monitoring devices before The Hague Local Division and Nordic Baltic Regional Division.
• Assisting a retail company as claimant in proceedings for provisional measures (obtained ex parte) related to a patent on a motor cycle product before the Milan Local Division in Milan.