Thursday, 7 November 2013

Top 10 Tasks for Patent Attorneys in UK Litigation

This list is gleaned from a presentation at CIPA on 5 November 2013.  It is written from the perspective of a UK based European Patent Attorney assisting with UK Court proceedings.  It assumes that the Patent Attorneys will be assisting solicitors who will run the litigation.

1.  Knowing the technology. Patent Attorneys will know the technology inside out from day to day handling of the client’s cases, and thus will be able to advise on the strategy and reasoning behind the patent case. That knowledge can be used to guide preparation of the technical evidence and the expert witness.

2.  Global coordination.  Patent Attorneys will have knowledge of the global portfolio of cases and of litigation in other territories.  Thus decisions can be taken in view of existing strategies being followed on the entire portfolio.

3.  Knowledge of the client.  Patent Attorneys will know the client, including their budget and what their commercial goals are.

4.  Amendments. These are part of day to day practice for Patent Attorneys, and so they will have expertise in making amendments which solicitors won’t.

5.  History of the case. Patent Attorneys will know the prosecution history, ownership issues, validity and priority issues.

6.  Divisional applications.  Patent Attorneys will know of pending divisional applications and the strategy behind each.

7. Licensing.  Patent Attorneys will know about licences based on the patent, and therefore will be able to advise on the scope of amendments which can be made.

8. EPO case law and complexities.  Patent Attorneys will have more knowledge of EPO case law, and complexities such as biological deposits.

9. EPO timelines on parallel oppositions.  Often parallel opposition proceedings may be happening on the same patent.  Patent Attorneys will be able to advise on the expected timelines for those proceedings.  That will affect strategies for when to amend, for example.

10. Prior art searches.  Patent Attorneys may be better placed to construct a strategy for carrying out such searches based on their knowledge of the technology.

You may also wish to see related articles what UK biotech needs and Top 10 Points on Arbitration

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