19 Nov

Elisabetta Papa

Società Italiana Brevetti

You work with a whole range of clients. How do you ensure a tailored service for each one?

Listening to the client’s needs and gaining a detailed understanding of its organisation as well as its production and marketing strategies play an essential role in providing tailored services. It is our policy to meet with clients regularly and include the marketing department in selected consultations. For research institutions and universities, we offer special service packages that take into account the limited financial resources available and the need to seek industrial partners at both the pre and post-filing stages. For medium-sized companies, we meet regularly with their R&D departments to optimise filing strategies and timings, while defining protection priorities. For larger companies, we liaise with the various stakeholders worldwide and coordinate efforts with foreign associates.

In a nutshell, knowledge and dialogue are key to proper advice.

In every case, we select a team of professionals who specialise in the same technical field(s) as the client, as well as in the necessary IP procedures.

How would you characterise the biomedical patent landscape at present?

The biomedical landscape has merged with those of other leading technologies, including AI and data management. Therefore, it generally poses a number of challenges in obtaining proper patent protection, as well as in litigating the validity of pending patents. In fact, these leading technologies are still the object of important eligibility debates worldwide and the harmonisation of various patent legislations and guidelines will prove essential for the appropriate protection of client investments.

Striking a balance between protecting intangible product inventions and the physical structures associated with them remains an issue, which is not necessarily handled in the same way by different jurisdictions.

Which key court decisions have had the biggest impact on your practice in recent years?

Decision G3/14 of the EPO Enlarged Board of Appeal (as further integrated by Decision G2/19) concerning objections of lack of clarity as dealt with in examination and opposition proceedings has been a milestone with regard to the handling of European patent applications. Although Decision G3/14 dates back to 2015, it has taken a few years for it to become consolidated into the practice of the EPO divisions and boards – in particular, through the streamlining of opposition proceedings, as well as through an increase in clarity issues raised at the examination stage.

Decision G1/15 concerning partial priorities has also helped to define filing strategies and has finally eliminated awkward situations of self-collision among applications from the same patentee.

The pending referral under Decision G1/19 is also likely to have an influence on the profession and patentees’ rights, and could be another milestone in the saga that is the protection of computer-implemented inventions.

On the infringement side, laws on contributory infringement have changed in some EU states, including Italy, for the purpose of aligning national legislation with the UPC Agreement. These changes have determined interesting decisions from national courts – especially on the interpretation of the notion of the ‘essential’ character of a claimed feature and the relationship between contributory infringement and potential or actual full violation.

What are the biggest hurdles facing innovators in the nanotechnology space?

Sufficiency of disclosure and evidence in support of inventive step remain the biggest hurdles, which make it difficult to achieve a proper compromise between the client’s need for early protection and the national or regional office’s request for adequate substantiation of the invention at the (first) filing stage.

What changes – if any – could be made to improve the European Patent Attorney (EPA) qualification process?

The EPA qualification path has been characterised over the years by various obstacles and important changes. Concerns about providing an impartial and quality qualifying examination have resulted in the creation of a large European qualifying examination committee, as well as a reshuffle in the number of EPO versus European Patent Institute (EPI) members.

Pre-examination has to some extent made the process more complex for both candidates and examiners, without necessarily simplifying or streamlining the main examination.

There is no simple solution to achieve a proper compromise. The current global pandemic calls for urgent consideration of a computer-based examination that can be suitably administered in a larger number of examination centres across Europe.

Another avenue that may be explored is that of providing qualifying courses followed by a final, simplified examination, possibly with intermediate tests, with involvement from the EPO and the EPI.

Elisabetta Papa

[email protected]

A European patent attorney with more than 20 years’ experience, Elisabetta Papa focuses on biomechanic and biomedical patents. She is head of patents at Società Italiana Brevetti and a member of the firm’s nano-bio team, a multidisciplinary group of experts that deals with drafting, filing and prosecuting patent applications concerning new technologies, particularly for the nanotechnology platform. Ms Papa also acts as a court expert in patent litigation and teaches courses for the European patent attorney qualification exams.

Società Italiana Brevetti

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Rome 00186


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