Before moving into private practice you spent a number of years as an examiner at the NIPO. How has the experience helped you in your current career?
My experience as an examiner has been fruitful in many ways. Knowing how examiners think is an advantage in respect of the drafting and prosecution of patent applications. It is also useful in freedom-to-operate analysis and due diligence processes (eg, when considering how a search should be performed and analysing the strength of patents and patent applications). It helps me to assess whether objections presented in written opinions might be overcome and interpret the scope of protection necessary. My experience at the NIPO has also proved valuable in patent litigation cases in Norway.
What key skills do top-class patent attorneys need to possess?
You need to understand client needs. That is, you may be clever with words and prepare what seems to be an impressive patent application, but this may not be enough. If you fail to grasp the core of the invention or the features that bring competitive advantages to your client’s technology, you risk drafting patent claims that are either out of scope of what your client really needs or of less value because they may be easily circumvented or difficult to enforce. You need to identify the best way to protect your client’s intellectual assets; filing a patent application is not always the right way to do this.
Further, a good overview of case law is important in order to provide correct advice in respect of the drafting and prosecution of patent applications and consider the strength or validity of patents.
In sum, top-class patent attorneys proactively see opportunities rather than constraints on what is possible to achieve in order to place clients in the best possible position in respect of their freedom to operate and competitive advantages.
What is the best piece of advice that you have ever been given?
I could mention several but will focus on the first piece of advice that has really formed my work as a patent attorney. It was a statement made by a client’s IP manager in one of the first patent litigation cases in which I was involved. He stated that when looking for patent attorneys to undertake patent drafting, he always looked for people with experience in patent litigation, infringement cases and validity cases. I soon experienced why: involvement in patent litigation provides you with an in-depth knowledge of what it takes to enforce a patent and also what mistakes should be avoided if you want to provide your clients with strong patent protection. Patent litigation experience is also useful to have in freedom-to-operate analysis, due diligence processes and validity and infringement considerations. I am grateful that over the years I have had the opportunity to work with many of the best IP litigators in Norway. It has been exciting and educational and given me unique experiences that I bring to my daily work.
In which technologies are you seeing the most growth in patent interest currently?
In the pharma sector, the main focus is always on protecting what can be protected when developing new medicines due to the research and development costs involved. However, the focus on personalised medicines and healthcare costs are both increasing. Thus, I expect further increases in patent application filings relating to methods, equipment and products that are useful in singling out patients who do or do not respond to a certain drug to guide physicians in selecting the best treatment approach for patients. In addition, the focus on AI is increasing in most areas.
How would you describe the main characteristics of the Norwegian patent system for international clients?
When it comes to regulations, guidelines and practice, the Norwegian patent system is more or less identical to the European Patent Convention and European Guidelines. The NIPO, the Norwegian Board of Appeal and the courts put emphasis on EPO Board of Appeal decisions.
Senior Partner [email protected]
Kari Simonsen is a European patent attorney with more than 20 years’ IP rights experience in the life sciences and pharmaceutical sectors, specialising in chemistry, pharmacy and biotechnology. Previously, she was a senior examiner at the Norwegian Industrial Property Office (NIPO). Ms Simonsen assists clients in drafting and handling patent applications, oppositions, freedom-to-operate evaluations, infringement issues and IP strategy. She has experience of infringement and validity in patent litigation cases in the Norwegian pharma sector.