Day 2: Understanding how the EPO and USPTO can directly help you secure and maintain a valuable patent portfolio

Berkeley Center for Law & Technology and Kilburn & Strode are pleased to invite you to day 2 of our annual summit: Invigorating your Portfolio: Optimize IP assets, reduce risk and increase value
 
December 2, 2020, 12-2PM PST

Understanding how the EPO and USPTO can directly help you secure and maintain a valuable patent portfolio

A panel of USPTO and EPO representatives, along with expert practitioners and in-house counsel, will discuss the various innovative tools and programs available assist applicants with better data, better insights into portfolio, and better tools for management. Quality initiatives are also in place to help with valuation and evaluation of patent families. In this day, we will therefore discuss how the EPO and USPTO can directly help companies ensure that its patent portfolio is not only extensive, but also truly valuable.

Speakers:

Host: Harry Harden, Kilburn & Strode
Keynote: Jeremy Holmes, IP Group
Moderator: Kathryn Eldridge, Kilburn & Strode
Panel: Jeff Kessler, Denali
Panel: Wayne Stacy, USPTO
Panel: Richard Garvey, EPO
Panel: Chris Palermo, Baker Botts
Panel: Marco Morbidini, Kilburn & Strode


View the full event programme ►

WHEN:
December 2, 2020
12-2pm PST

CLE:
UC Berkeley only certifies MCLE credit for the California bar. To verify reciprocity with your state, please check with your state's bar.

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Jeremy Holmes, IP Group

Jeremy has an extensive track record in science and technology, both as a researcher and as IP Counsel. Following undergraduate degree and PhD at Cambridge University in Chemistry, he spent two years in Strasbourg working with Nobel Laureate Professor Jean-Marie Lehn. He then joined ICI as a research chemist, where he worked in their R&D function in a variety of roles, including a Royal Society Industrial Fellowship at Edinburgh University and three years in the Netherlands for an ICI subsidiary. In 2000 Jeremy entered the IP profession, and is a fully qualified UK and European Patent and Design attorney. During his time at ICI/AstraZeneca and Reckitt Benckiser, he was responsible for the management of global patent and design portfolios for major business sectors and gained extensive experience in IP litigation and due diligence. In January 2012 he joined Imperial Innovations as Patent Attorney and Due Diligence Manager, where his role was to manage the extensive IP portfolio, arising from Imperial College, in the Technology Transfer Group, liaising with numerous external attorney firms, ensuring that IP was robustly protected, as well as acting as an in-house consultant on IP issues. Jeremy also advised the Ventures Team at Imperial Innovations, and ensured that thorough and timely IP due diligence was carried out on investment opportunities. Following the take-over of Imperial Innovations by investment company IP Group plc in October 2017, and the subsequent re-integration of the Imperial Tech Transfer function back into Imperial College in March 2019, Jeremy moved to a more global role as Head of IP within IP Group plc, giving strategic IP advice to all of IP Group’s 200 portfolio companies throughout the UK, USA and Australia and New Zealand, and working with the investment teams in their assessment of IP at key stages in funding for these companies.

Marco Morbidini, Partner, Kilburn & Strode

Marco regularly drafts and prosecutes patent applications for a variety of clients across many engineering fields including controls, robotics, hybrid & autonomous drive, powertrains & transmissions, turbomachinery, telematics, digital manufacturing, industry 4.0, battery & electricity operated electrical goods, compressed and liquefied natural gas containment technology, wearable health monitoring and nanoporous materials. Marco also provides pre- and post- drafting/prosecution services: invention identification, harvesting and commercial impact assessment; patent infringement and validity opinions; patent portfolio building & management; and, IP due diligence. He also regularly attends oral proceedings at the EPO, including oppositions and appeals. Having obtained valuable experience as the head of an in-house IP department in an advanced engineering company, Marco has become an all-round engineering attorney with uncompromised commercial focus. He diligently and efficiently implements IP protection programmes tailored to client-specific requirements. He can also work proactively in close collaboration with his clients to define plans and strategies to achieve measurable success at any stage of the IP chain. Marco has also been an examiner in the Patent Examination Board (PEB) between 2015 and 2017, and is currently a Visiting Lecturer for the Postgraduate Certificate in Intellectual Property at Bournemouth University.

Harry Harden, Associate, Kilburn & Strode

Harry has a background in physics relating to medicine and has a Master’s degree in physics from the University of Nottingham. He primarily works in the software, AI, medical and music sectors, and his practice involves working on a wide range of technologies and advising clients on patent prosecution strategies across the globe. Recent work has involved significant preparation and prosecution of multidisciplinary, cross sector technologies. Such technologies include fertility testing devices, and technologies relating to the use of AI in predicting patient responses to certain drugs. Harry also has experience providing patentability opinions for machine learning technologies applied to a variety of life sciences technologies. Harry has particular experience in freedom to operate analysis and due diligence work on various scales, from start-ups to large multi-national corporations. Recent work has involved detailed patent due diligence investigations to advise on commercial implications of patent portfolios. He has previously been a member of the CIPA Patents Committee, which plays a key role in changes to UK patent law. He was also a member of PPWG, which is the UK’s chief liaison with the UK Intellectual Property Office.

Kathryn Eldridge, Partner, Kilburn & Strode

Kathryn has extensive experience of working with a variety of clients, including both large multinational companies and start ups. She works closely with her clients to provide them with a bespoke service which allows them to maximise the value of their Intellectual property. She is extremely commercially focussed and her advice is tailored to the needs of her clients’ businesses. This commercial focus is combined with her extensive experience of prosecution and post-grant proceedings not just in Europe but in major territories such as China, Korea and Japan allows Kathryn, allowing her to provide her clients with an effective patenting strategy to efficiently protect their commercial products. In particular, as a very experienced practitioner before both the European Opposition Divisions and the Boards of Appeal, Kathryn is able to use her up to date knowledge of EPO practice to implement patent strategies and obtain strong and defensive protection. In addition to protecting her clients’ products, Kathryn routinely provides her clients with patent landscape reviews, freedom to operate opinions and due diligence opinions. Kathryn handles chemistry subject matter in a variety of fields such as polymer chemistry including petrochemicals, glycopeptides and controlled/living polymers, materials chemistry including catalysts and fuel cells, as well as industrial chemistry including refrigerants, propellants, solvents and foam blowing agents.

Jeffrey Kessler, Denali

Jeff is Senior Director, IP Legal at Denali Therapeutics in South San Francisco, CA. He has over 15 years of experience in intellectual property law, working both at law firms and as in-house counsel. His practice includes on patent drafting and prosecution, patent portfolio strategy, patentability and freedom-to-operate work, as well as drafting and negotiating agreements. Jeff focuses on biotechnology, particularly on complex patent portfolios involving large molecule therapeutics, and has worked at Denali to develop its large molecule patent portfolio around its Transport Vehicle platform for transporting large molecule therapeutics across the blood-brain barrier. Prior to Denali, Jeff was in-house patent counsel at OncoMed Pharmaceuticals in Redwood City, CA, and at the law firms of Goodwin and Clark+Elbing in Boston, MA.

Christopher Palermo, Baker Botts

Christopher J. Palermo has more than 30 years of experience advising clients on patent risk analysis, patent drafting and portfolio development, patent negotiation with the USPTO and worldwide, expert opinions and testimony, trademark clearance and negotiation, international trademark disputes and domain name arbitrations, licensing, privacy, and technology development agreements. Mr. Palermo has experience covering technologies related to AI and machine learning, e-procurement, security, distributed systems, networking, telecommunications, object-oriented software, and internet applications. Subspecialties include speech recognition, voicemail, e-commerce, cryptography, and digital imaging. He has served as a testifying witness on patent non-infringement and invalidity matters for Fortune 1000 companies and has an active opinion, FTO and expert practice.

Richard Garvey, European Patent Office

Richard Garvey has worked for the European Patent Office since 1998 and for the last 17 years has worked as a Key Account Manager in the Directorate “User Enquiries & Intelligence”. His main responsibilities are to facilitate the streamlined interaction between the EPO, their applicants & patent representatives, using the existing online services. Richard is also involved in providing user feedback for the next generation of tools, in the EPO user service area, under the Strategic Plan 2023 initiative. Combining his enthusiasm for the improvement of online services within the relevant legal framework, Richard supplemented his Bachelor of Laws, by successfully gaining a Masters of Laws in IT & Telecommunications, with the aim of helping the EPO & their users achieve these goals. He currently manages a portfolio of around 80 companies, made up from a combination of Applicants, European Patent Attorneys and International Patent Agents.

Wayne Stacy, Western Regional Director, USPTO

As the Regional Director of the USPTO’s Western Regional Office, Wayne Stacy carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and is responsible for leading the USPTO's Western Regional Office in San Jose. Focusing on the region and actively engaging with the community, Mr. Stacy ensures the USPTO’s initiatives and programs are tailored to the region's unique ecosystem of industries and stakeholders. Prior to joining the USPTO, Mr. Stacy was a partner in the Baker Botts Intellectual Property group from 2016 to 2020 and a partner at Cooley, where he practiced law for over sixteen years. With a computer-engineering background, he has over twenty years of experience litigating high-stakes technology cases, including patent, trade secret, software-based copyright, and technology-licensing disputes. He has served as the lead lawyer in numerous jury trials. For almost two decades, Mr. Stacy has dedicated his spare time to teaching law students about the realities of litigating technology cases. He has been an adjunct professor at four universities, teaching patent law, patent litigation, copyright law, and PTAB practice. Mr. Stacy also devotes significant time to improving the legal community. He has served on Federal Court local-rule committees, drafting patent local rules. He also served as faculty for the National Institute for Trial Advocacy, where he has taught a variety of courses from deposition skills to his favorite course, trial skills for public service attorneys.

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