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Evelina Marchesoni

Senior Associate
Italy

About Me

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 patent litigation in the life sciences sector, regularly engaging in pan-European litigation related to pharmaceutical and biotechnological patents, supplementary protection certificates, and patents on medical devices.

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).
Experience
  • National litigation experiences:
  • Assisting pharmaceutical companies in different proceedings - preliminary injunction, invalidity and infringement, 'descrizione' - related to pharmaceutical and biotechnological patents and supplementary protection certificates, including patents on pemetrexed, fulvestrant formulation, tadalafil dosage regimen, rivastigmine patch, esomeprazole, rosuvastatin, quietiapine extended release, paracetamol and tramadol, second medical use of botulinum toxin, bimatoprost, fluvastatin, nebivolol, olanzapine, finasteride, rituximab, natalizumab dosage regimen and the SPCs on telmisartan and hydrochlorothiazide, valsartan and hydrochlorothiazide, ezetimibe and simvastatin.
  • Assisting a biotechnology 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 Fortune 100 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 in proceedings for provisional measures related to a patent on insulin patch pumps before the Milan Local Division.
  • Assisting a medical device company in infringement proceedings related to a patent on continuous glucose monitoring devices before The Hague Local Division and Nordic Baltic Regional Division.
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Testimonials

Silver Rank for Patent Litigation

'Amazing during court proceedings, Evelina is well versed in offering local and foreign legal advice... Friendly and helpful, her guidance is always appreciated' (2024)

'Marchesoni is a specialist in healthcare and life sciences and is at home in pan-European contentious engagements. She has also developed her practice in the technology and communications sector, and has been creating strategies relating to the protection and enforcement of SEPs related to 3G, Wi-Fi and GSM' (2023)

IAM Patent 1000 (2023 - 2024)

Rising Star in Life Sciences

Legal 500 (2022 -2024)

Rising star in IP

MIP IP Star (2020 - 2024)

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