Can you tell us about some of the biggest obstacles you have faced in your professional life – and how you have overcome them?
One of my biggest challenges (that is what I call a professional ‘obstacle’) has been, over the years, making Italian companies and SMEs aware of the strategic importance of intellectual property and inviting them to consider the related tools available as opportunities for growth and access to global markets.
Even once awareness is built, it still remains very challenging to find the tailored compromise, between investments in intellectual property and revenue return, that will allow each company to further foster and feed R&D.
Another challenge I still face is finding the best approach to advise clients when patent procedures available with national and international authorities are not quite in step with the pace of innovation in new fields of technology – this means that my team and I must be creative, smart and quick in offering suggestions on how to fit existing IP tools to client needs.
Finally, smart working during the pandemic has posed an additional challenge in managing paralegals and attorneys so that although they are working remotely, they still feel like a team. It entails bridging the gap left by lack of personal interaction by multiplying occasions to stay in touch, also by trying to start video meetings with informal chats and exchanges of views before discussing the key professional topics.
What steps should rights holders take to update their filing and prosecution strategies in Europe as the inauguration of the UPC opening date draws closer?
Certainly the filing and validation strategy should be carefully planned. Several filings through national routes might be considered for patent applications concerning key technologies. Diversifying protection by filing divisional applications is another opportunity to be explored, depending upon the specific innovation.
Decisions concerning if and how to opt out of the exclusive competence of the UPC should have already been taken so that they can be made operative as soon as the system will allow it.
Before all that, awareness that each patent will be assessed by unified criteria basically relying, from a substantive point of view, upon those set by the European Patent Convention and associated case law, should in principle have already influenced patent strategy at the drafting stage.
How is the new Italian national route for Patent Cooperation Treaty applications affecting your clients?
The direct Italian national phase of International Applications under the treaty – as opposed to the closed route of filing a European patent application designating Italy – is a huge step forward in diversifying filing and protection strategies. This issue is, indeed, of specific relevance in view of the upcoming Unitary Patent Package, including the UPC as the court with exclusive competence in dealing with nullity and infringement actions concerning European patents granted by the EPO.
The direct Italian route is also a way to reduce costs at the time of entering the national/regional phases when international prosecution or commercial needs suggest that only a few countries remain of interest.
In addition, the Italian national phase includes the option of requesting protection as a utility model, which generally requires a lower level of inventive step with respect to standard patents and entails a simplified granting procedure.
What advice do you have for applicants drafting patents in the light of decision G1/19 of the EPO’s Enlarged Board of Appeal?
Global drafting of patent applications, particularly in the field of computer-implemented inventions, has become increasingly challenging over the years.
G1/19 – which, as we know, deals mainly with the assessment of inventive step of simulation methods – certainly does not make life simpler for inventors and patent attorneys. Two issues appear of key importance: disclosing in detail the hardware associated with the implementation of the method; and defining the final use, or aim, of the computer-implemented simulation, specifying applications in a field considered of technical relevance.
What are some of the biggest changes you have seen in the European life sciences space over the past 10 years?
As a biomechanical engineer, I deal mainly with life sciences from the side of mechanics and Internet of Things devices for medical use. This specific branch has seen only slight changes in actual legislation, for example in the field of computer-implemented inventions, but has faced more substantial modifications in office practice, particularly with regard to the requirements of written disclosure, sufficiency and clarity.
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Elisabetta Papa is head of patents at Società Italiana Brevetti. She is a European patent attorney with over 20 years’ experience, and focuses on biomechanic and biomedical patents, as well as acting as a court expert in patent litigation. Ms Papa also teaches courses for European patent attorney qualification exams and is recognised as a top patent practitioner by leading intellectual property guides including IP Stars Top 250 Women in IP, Who’s Who Legal and Expert Guides, as well as the IAM Patent 1000.