Photo of Tanvi Shah

Tanvi Shah

Associate
Baker & McKenzie LLP

Biography

Tanvi is a Senior Associate and Solicitor-Advocate in Baker McKenzie's London Intellectual Property team, having joined the firm in August 2016. She has particular expertise in patents and is recognised by the Legal 500 as a key lawyer in the UK for Patents (Contentious and Non-Contentious).

During her career Tanvi has also gained in-house experience having been seconded for a year to the in-house R&D legal team of a global pharmaceutical company, focused on providing legal support for clinical trials across Europe, and for three months (on a pro bono basis) to Cancer Research UK's legal team.

Prior to becoming a solicitor Tanvi obtained an MSc degree in Chemistry from Imperial College London and carried out research in the field of biophysical chemistry at the Ludwig-Maximilians Universität, Munich (Germany).

Practice Focus

While Tanvi has broad experience advising on the full spectrum of IP rights across a variety of industries, her practice now focuses on patents (both litigation and transactional) across a number of sectors, IP issues faced by clients in the healthcare and life sciences sector, and healthcare regulation. She also leads the London office’s plant variety rights team.

Tanvi is a seasoned IP litigator and has been the lead associate on several patents and design rights cases that have gone to trial in the UK High Court (including one of the first cases to proceed under the Shorter Trial Scheme and in the Intellectual Property Enterprise Court), many of which have gone on to be heard by the Court of Appeal. Several of these cases also involved parallel proceedings in other jurisdictions and Tanvi has experience coordinating multijurisdictional matters. Her contentious practice naturally also includes patents and IP advisory work, including in relation to freedom to operate and pre-action infringement and validity analyses. Tanvi also has experience in leading on the IP aspects of corporate and insolvency transactions, in particular where patents and IP are a critical asset for the business, and in IP licensing transactions.

Tanvi regularly advises clients in the healthcare and life sciences sector on regulatory and IP issues, drawing on her in-house and technical experience. She has a particular interest in areas where healthcare regulation interfaces with IP issues (such as patents, SPCs and regulatory exclusivities; and counterfeiting and falsified medicines / illicit trade).

Representative Legal Matters

  • Representing L'Oréal in a patent dispute with a US company, Olaplex, in connection with a purpose-limited patent relating to a haircare product. 
  • Representing JCB in a claim for infringement of 5 patents relating to safety systems applied to telescopic handlers, against French competitor Manitou.
  • Advised Bowers & Wilkins, the leading British-based designer and manufacturer of luxury home and automotive audio products, on its sale to Sound United, leading on the IP aspects.
  • Coordinating the prosecution of complex Supplementary Protection Certificate applications across Europe for a global pharmaceutical company. 
  • Coordinating Eli Lilly's global (ex-US) anti-counterfeiting and customs recordals programme.
  • Acted for a major pharmaceutical company supporting it with measures to restrain unauthorised and improper use of its product in the UK, in a case which raised both trade mark enforcement and healthcare regulatory compliance issues.
  • Advising clients in the agriculture sector in relation to the implications of Brexit on plant variety right portfolios.
  • Working with local teams to advise numerous major multinational pharmaceutical companies on exclusivity issues (covering patent issues, patent linkage and regulatory data exclusivity considerations) on blockbuster medicines in the Middle East Region.
  • Advised a major pharmaceutical company in relation to the UK rules on Patient Group Directions (PGDs) and subsequently assisted the client with setting up a compliant PGD-based service with a third party.
  • Advised multiple pharmaceutical and medical devices companies on compliance with the medicines and medical devices marketing and advertising regulations, including in relation to issues around marketing authorisations and CE marking, and also compliance with the UK ABPI and ABHI Codes of Practice.

Professional Associations and Memberships

  • Law Society of England and Wales
  • International Association for the Protection of Intellectual Property (AIPPI)

Admissions

  • England & Wales (Solicitor) (2009)

Education

  • University of Oxford (Postgraduate Diploma in IP Law and Practice) (2012)
  • BPP Law School, London (Legal Practice Course) (2007)
  • BPP Law School, London (Graduate Diploma in Law) (2006)
  • Imperial College, London (Master of Science in Chemistry) (2005)

Languages

  • English
  • German

Publications

  • Author, "Should the legal definition of “inventor” encompass an AI machine? The position following “DABUS”", BM Connect On Tech Blog, September 2020 
  • Contributor (IP Rights section), "Brexit: Key Implications for the Healthcare and Life Sciences Sector", BM InsightPlus, September 2020
  • Author, "CJEU holds SPCs not available for new therapeutic applications of authorised products", Case C-673/18 (Santen), BM InsightPlus, July 2020 
  • Author, "Navigating the impact of Brexit on your plant variety rights portfolio", BM InsightPlus, June 2020
  • Contributor (UK IP Risks section), "COVID-19: A Global Review of Healthcare and Life Sciences Industry Issues", BM InsightPlus, first published May 2020 (kept updated)