What are the main challenges you face in leading your firm’s life sciences practice?
Resource allocation is a key issue, even if only an internal one. We have a large life sciences group, so it is challenging to ensure that the right people have the right balance and type of work at different stages in their careers, particularly for a firm like ours which has a strong training and learning culture. Dealing with conflict when long-established clients move into new areas is another challenge. Finally, since I joined Carpmaels & Ransford almost 25 years ago, we have more than quadrupled in size. Despite this growth, we are determined to retain the feel and culture of a firm where everyone knows each other and enjoys working, training and socialising together. As we continue to grow, this becomes more challenging.
A large part of your practice involves working on oppositions and appeals at the EPO – what are the keys to succeeding in this?
Preparation, preparation, preparation – this may be obvious but a representative must know the patent and the prior art back to front. It is also important to have excellent technical assistance, ideally from someone who has worked in the relevant field. We have an advantage at a big firm like Carpmaels & Ransford because it is often possible to find a trainee or associate who has recently worked on the relevant technology at the bench. It is also important to have a lead attorney who has experience handling multiple hearings at the EPO and is supported by good technical help – not just from patent attorneys, but also from the client.
Which of the cases that you have worked on are you most proud of and why?
Some of our supplementary protection certificate (SPC) cases must fall into that category, particularly Neurim, which was a game changer. I have singled out SPC cases because we looked at the SPC regulation very early on (in the mid-to-late 1990s) and realised how unclear its terms were and how positions might be taken and defended for our clients that would extend their IP protection and create significant additional value. We were really the first group to do this, and not just accept the terms of the regulation as they were written.
In addition, I can think of various EPO hearings that were not going well, and then the tide was turned by a quick thought or a new argument that seemingly came from nowhere. It always amazes me when I have spent so long looking at a case (often months or years) and then from desperation comes a new angle – a new way of looking at a sentence or a paragraph – and the whole case changes in front of you.
What do you see as the main patent challenges facing life sciences companies in Europe currently?
A reasonable term of exclusivity is essential for life sciences companies to recoup the research and development investment and growing burden of clinical trials. While the European patent system seems in reasonably good health, recent SPC judgments (eg, Abraxis and the advocate general opinion in Royalta Pharma/Sandoz v Searle) and the advent of the SPC manufacturing waiver do not favour innovators. The inter partes review system has also created uncertainty over the validity of US patents that would formerly have carried a greater presumption of validity. This all makes investment more challenging to obtain.
How do you expect the European patent landscape to evolve over the coming years?
The obvious thing to mention is whether the unitary patent and the UPC systems will come to pass with the fallout from Brexit and the German constitutional challenge. One other thing to watch is how the patent system copes with the growing new fields of connected and digital health and inventions involving AI. I think patent firms will need to evolve the way in which they organise their practice groups away from the historic splits between life sciences, chemistry and engineering and towards sectors that combine expertise between, for example, molecular biologists, data scientists, bioinformatics and tech experts, and form interdisciplinary groups of attorneys who can acquire deep knowledge of these new fields.
This article first appeared in IAM. For further information please visit https://www.iam-media.com/corporate/subscribe