Meet the team: Julie Carlisle, Partner, Patent Attorney and Litigator in the Chemistry team, London

As part of our 'meet the team' series, we talk to Julie Carlisle about her journey to becoming a patent attorney, the benefits of virtual opposition hearings and why so many chemists love to bake.

Julie Carlisle has a BA/MSci degree in Natural Sciences and a PhD in organic chemistry from Cambridge University. After leaving Cambridge she undertook post-doctoral research at Université Catholique de Louvain in Belgium and at King’s College, London, before deciding that long term, the lab was not the place for her.

“I’m a chemist by background and very much a chemistry geek at heart,” says Julie. “I knew I wanted to carry on working in the field but no longer wanted to be in research. I was vaguely aware that becoming a patent attorney was an option, as I knew of people who had gone down that route, but from the little I had heard about it, it actually sounded rather boring! However, when I went to the university careers service to find out more, I discovered this was far from the reality.
“I applied to every firm of patent attorneys listed in the careers service guide and Mewburn Ellis were the first to write back – I’ve been here ever since.”

Working as a patent attorney turned out to be the ideal career choice for Julie. “It’s hard to imagine doing anything else now after so many years. I still think of myself as a chemist, first and foremost, but I’ve grown very interested in the legal side of the job and really enjoy combining the two disciplines. I’m not afraid of an argument so the contentious aspects really appeal to me.”

Virtual hearings

As well as drafting and prosecution, Julie frequently represents clients in European Patent Office (EPO) opposition and appeal proceedings. Working on an opposition is all consuming, “You need to be in a place where you are familiar with every inch of the documentation and know the case inside out. Preparation is key - you need to make sure no surprises are thrown at you,” she says.

For Julie that means putting in the time to ensure that the knowledge she needs is at her fingertips, going through the documents and organising her thoughts, anticipating what might come up.

No two oppositions are the same, but one that stand outs out for Julie was undertaken in the depths of lockdown. “I was working on an appeal for a major pharmaceutical client,” she explains. “It was a polymorph case, one of my particular areas of expertise, and I was working with one of Mewburn Ellis’s Munich partners on an EPO hearing. 

“Despite both the UK and Germany being in full lockdown, the other side refused to conduct the hearing via video link. There was no possibility of me being in Munich in person, so we persuaded the EPO to let me attend virtually. 

“It was the early days of virtual hearings: there were technical issues which caused delays and so proceedings ran on late into the evening.  I was working from my kitchen, with my husband trying his best to stop the children running in and out, and at one point I even had to start preparing their dinner during a break in the hearing.”

In the end it was worth the effort. Mewburn Ellis was successful and the patent was maintained. Julie’s contribution was important in changing the EPO board’s mind. “The preliminary opinion of the board had been against us but, despite the disadvantage of being the only ‘virtual’ contributor to the debate, I was able to change their view of the main document that had until then been working against us.” 

Now virtual hearings are the norm, with first instance hearings virtual by default. Whilst there are some grumbles about technological glitches or difficulties ‘connecting’ with the board, from Julie’s point of view the convenience and the benefits for the environment far outweigh any problems.

“Like most of our pharma clients, sustainability is high up the agenda for us, so avoiding air travel and conducting hearings from our local office is an important step forward.” 

Undruggable targets

Julie’s patent practice focusses mainly on pharmaceuticals. Within that broad field, two current trends stand out to her. 

The first relates to so-called ‘undruggable’ targets. Traditional pharmaceuticals are usually inhibitors, targeting the active sites of an enzyme. However, some proteins cannot be pharmacologically targeted in this way. In recent years, however, there has been a great deal of progress in this area with new technologies being developed to ‘drug the undruggable’.

“The development of new strategies, including bifunctional molecules such as PROTACS (proteolysis targeting chimeras), is making it possible to target these previously undruggable targets and this is driving a great deal of innovation,” explains Julie. 

The second area relates to the repurposing of existing drugs. “Finding a new medical use for an existing pharmaceutical is generally quicker and far more cost effective than developing a brand new drug. These days, companies are increasingly looking to determine whether any existing drugs have the potential to address previously unmet clinical needs, often using data-driven approaches and artificial intelligence.

“It is relatively common for patents for ‘second medical uses’ to be challenged so, as we see even more filings directed to the use of existing compounds to treat new diseases then, further down the track, it may be that an increase in such oppositions will follow.”

Outside interests

When she’s not at work, much of Julie’s time is spent looking after her two young sons aged five and seven. “Getting some free time to myself is a rare occurrence,” she says, “When I’m not running around after the boys I love to sit down with a good book – preferably a page turner – perhaps a crime novel, that I can really get stuck into. 

“I also love baking. People often tell me that this is a common trait among chemists! I suppose it helps to understand some of the interactions going on between the ingredients, which make the perfect cake. Whether it’s down to my chemistry knowledge or not, I’m told I make impressive chocolate brownies.”