Katie Coltart
Overview
Katie Coltart is a partner in Kirkland’s London Intellectual Property team. Katie focuses her practice on patent litigation and licensing, particularly in the life sciences and tech sectors. Katie is experienced in dealing with major cross-border matters and multi-jurisdictional cases requiring significant coordination across multiple forums at both first instance and on appeal.
Katie has worked on the litigation and licensing of patents across a broad spectrum of technological subject matters including those relating to antibody and other protein biologics, biological product development and screening platforms, checkpoint inhibitor immunotherapies, diagnostics and next generation sequencing technologies, medical devices, wireless and mobile telecommunications, and consumer product technologies. With a degree in Natural Sciences (Chemistry and Biology) Katie is well placed to advise her life sciences clients on their most technical subject matter.
In addition to her patent practice, Katie also has experience dealing with trade secrets, trade marks, and other IP licensing matters in the finance, media, and retail sectors.
Katie is recognised as an ‘Up and Coming’ Lawyer by Chambers UK (2022), and praised by clients for her “good technical background” and “sharp mind.” Katie has also been ranked for the past three years as a ‘Next Generation Partner’ for Intellectual Property by The Legal 500 UK, where she is described as “incredibly responsive and astute”. She is further ranked as an ‘IP Trailblazer’ in World Intellectual Property Review’s Influential Women in IP 2019; and a WIPR Leader by World Intellectual Property Review.
Experience
Representative Matters
Since joining Kirkland, Katie has been involved in the following matters:
- Advising a leading biosimilar manufacturer in its market entry strategy in respect of a well-known blockbuster biologic.
- Assisting a significant Chinese telecommunications implementer in negotiating a FRAND/SEP licence with a prominent NPE.
- Acting for an Indian medical devices company in patent infringement proceedings brought by a US-based medical devices company in relation to transcatheter heart valve technology.
- Advising an international biopharmaceutical company on their global license negotiations with a reference product manufacturer concerning a well-known cancer drug.
- Advising a Chinese implementer on its SEP/FRAND strategy across several jurisdictions worldwide.
- Advising a multi-national pharmaceutical company on clearing the path for market entry of its first-in-class antibody drug for pain.
- Advising one of the world’s largest mobile handset suppliers in relation to the expiry of their SEP cross-licence.
- Acting for a Chinese telecommunications company in FRAND/SEP patent litigation brought by a significant NPE.
- Representing a US biotech company in its patent litigation against a UK biotech company concerning the use of transgenic mice as a therapeutic antibody development platform.
- Acting for a multinational telecommunications company in its defence of an SEP infringement and global FRAND licensing action.
- Advising a Hollywood film studio on trade mark issues surrounding the title of an upcoming film.
Prior to joining Kirkland, Katie worked on the following matters:
- Advised two collaborating pharmaceutical companies on their freedom to operate position in relation to one of their pipeline cancer immunotherapy products.
- Represented Novartis in patent litigation concerning the use of phage display for screening potential biological therapeutics. The case related to the client’s blockbuster sight-saving drug and was won in the English High Court and Court of Appeal. The case involved the cross-border coordination of litigations in several jurisdictions.
- Advised a multinational pharmaceutical company in relation to patent litigation proceedings brought by two competing market players against its exclusive licensor in respect of patents relating to vascular endothelial growth factor antagonists and their use in the treatment of certain non-neoplastic diseases. The case involved significant strategic collaboration with the patentee / licensor and was won both at first instance in the English High Court and in the English Court of Appeal.
- Advised Pfizer in relation to patent proceedings against another global player concerning a cholesterol-lowering antibody drug.
- Assisted a large biopharmaceutical company in respect of an EPO Opposition against one of its ‘crown jewel’ patents in Europe.
- Coordinated detailed surveys and analyses of the patent regimes of various emerging market jurisdictions for GSK.
- Advised Premaitha on its freedom to operate position in relation to its non-invasive prenatal testing and next generation sequencing technology.
- Advised a multinational company on the prospects of enforcement of a suite of patents related to consumer products. Further advised the same company in relation to the purchase of said patent portfolio.
- Represented a multinational telecommunications company in a multi-patent action brought by a competing market player concerning wireless communications systems.
- Acted on a trade secrets litigation concerning algorithmic high frequency trading strategies.
- Advised a global media corporation in relation to various trade mark issues relating to certain key brands, including filings with the UK IPO and EUIPO.
- Represented a Middle Eastern media company in an ICC arbitration arising out of a contractual claim for (among other things) trade mark infringement and in a related claim for Community Trade Mark infringement in the English High Court.
- Advised a multi-national investment bank regarding a payment dispute in relation to a number of commercial software licenses.
- Assisted (pro bono) a charity in the coordination of the global registration of its trade mark.
- Advised an online payment services provider in relation to the overhaul of its standard services agreements with, and IP licensing to/from, merchants and acquiring banks, alongside various other contractual issues relating to software and IP licensing.
- Advised a global online marketplace in relation to the licensing of the IP of a large sporting association for use in online marketing and television advertising.
- Advised an English football club in relation to the IP licensing aspects of its sponsorship agreement with a large multinational sports brand.
Prior Experience
Self-employed Legal Consultant
- 2016–2018
Allen & Overy LLP, London
- Associate, 2011–2015
- Trainee Solicitor, 2009–2011
More
Thought Leadership
Publications
“Patent Litigation 2021: Trends and Developments”, Chambers and Partners Practice Guides, 2021
“Court on Camera”, World IP Review, April 2020
“Setting global licence rates for standard essential patents: will the UK take centre stage?”, Financier Worldwide Magazine, January 2020
UK Supreme Court Case Tracker: Unwired Planet v Huawei; Conversant v Huawei And ZTE, November 2019
“How to empower young IP lawyers to be leaders”, Managing Intellectual Property, July 2019
“Patent Litigation 2019: Trends and Developments”, Chambers and Partners Practice Guides, 2019
“What is indication extrapolation and is it affecting biosimilars in Europe?”, IPPro - Life Sciences, 2014
Press Coverage
Quoted “Virtual trials creating hurdles for expert witness testimony”, Managing Intellectual Property, January 2021
Quoted “5G’s Arrival Tees Up Patent Fights in Market Set to Grow 12,000%”, Bloomberg Law, October 2020
Quoted “Lawyer reactions: Unwired Planet ‘brings certainty’,” Intellectual Property Magazine, 27 August 2020
Quoted “Video hearings drive innovation in Europe’s patent courts”, JUVE Patent, April 2020
Quoted “The rise of the virtual court?”, World IP Review, April 2020
Quoted “COVID-19: Lawyers’ jet-set lifestyles may decline post-crisis”, Managing Intellectual Property, April 2020
Quoted “Paris now the ‘logical’ venue for FRAND disputes, claim TCL lawyers”, World IP Review, February 2020
Quoted “TCL Gets French Court To Oversee Philips FRAND Dispute”, Law360, February 2020
Mentioned “Paris takes first step towards becoming FRAND hotspot”, JUVE Patent, February 2020
Mentioned “UK Supreme Court Weighs Patent Disclosure In Mice Row”, Law360, February 2020
Quoted “FRAND At UK's Top Court: What You Need To Know”, Law360, October 2019
Quoted “In-House Counsel Should Pay Attention to Court Rulings in FRAND Litigation”, Law.com, August 2019
Mentioned “Developing the future leaders in IP”, Managing Intellectual Property, August 2019
Mentioned “Clients won’t litigate in every jurisdiction”, JUVE Patent, December 2018
Interviews
WIPRInfluential Women in IP Interview: Katie Coltart, Partner at Kirkland & Ellis
Memberships & Affiliations
The Law Society of England and Wales
International Association for the Protection of Intellectual Property (AIPPI)
Pharmaceutical Trade Marks Group (PTMG)
ChIPs Network
IPSoc
Credentials
Admissions & Qualifications
- 2011, Admitted to practice as a Solicitor of England and Wales
Education
- University of OxfordPostgraduate Diploma in Intellectual Property Law and Practice2012
- College of Law, LondonBachelor of Laws; Legal Practice CourseFirst Class Honours, with Distinction in LPC2008
- College of Law, LondonPost-Graduate Diploma in LawDistinction2007
- Durham UniversityB.Sc., Biology and ChemistryFirst Class Honours2006