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