Solving in-house counsel challenges in European IP: Transatlantic teamwork

Solving in-house counsel challenges in European IP: Transatlantic teamwork

We were delighted to have taken part in yesterday’s CenterForce IP East 2022: New Beginning’s Virtual Summit. The calibre of speakers and delegates was truly outstanding and we thank everyone who took part in the discussions during our panel. 
During the conference, Kilburn & Strode partner Sarah Lau moderated a patent clinic on solving in-house counsel challenges in European IP. Panellists were: 

  • Andrina Zink, Senior Director, Intellectual Property at Alkermes  

  • Gregory Zinkl, Senior Patent Counsel at Genentech 

Both panellists shared their tips on working with European attorneys on the following challenges. The audience was lively and contributed numerous questions. Here’s a brief summary of some of the key takeaways that were shared with the audience of in-house IP professionals: 

1. Invention capture – patentability, invention spotting and filing strategy 

  • Get European counsel involved at an early stage, such as when drafting a PCT application. 

  • For example, European attorneys can help: 
    - Review data and advise on likely claim scope in Europe where an applicant needs to “solve the technical problem” across the whole scope of a claim for inventive step. 
    - Pre-empt some EPO added subject matter issues, for example relating to ranges, lists of embodiments and permutations of features. 

2. Selection and management of outside counsel 

What should you look for when selecting your European counsel? There are a number of important factors to include, from: 

  • Technical fit. 

  • Legal expertise. 

  • Do they add value? Of course, costs are a factor, but adding value is especially demonstrated by a willingness to disagree with their client and help them develop their understanding. 

3. Grant stage/validation issues 

Validation of European patents after grant can be expensive; there are 38 member states to choose from! How widely should an applicant validate?  
European counsel can assist with decisions on where to validate in some cases. Decisions are based on commercial value of the protected subject matter as well as sites of manufacture and import by third parties.  
Even if a decision is initially made to validate widely, it is worth revisiting this later. As in-house IP budgets in a number of sectors are squeezed, dropping patents in states that have turned out to be of little importance will save on renewal fees. These funds could perhaps be used more effectively elsewhere, for example on new filings, prosecution of key patents or strengthening an applicant’s case in opposition. 

4. Post-grant proceedings - opposition proceedings

  • Involvement in EPO oppositions for US counsel is valuable experience for drafting better applications and prosecuting more wisely. 

  • European attorneys understand how the EPO handles experimental data. They can help US attorneys and scientists understand what data are needed and how they can best be deployed, particularly when arguing for inventive step. 

  • It’s important to think through Auxiliary Requests in advance. 

Many thanks to our panellists for their insights, attendees for stimulating questions and to the conference organisers at CenterForce USA for a great event! 

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