Can you tell us about some of the biggest obstacles that you have faced in your professional life – and how you have overcome them?
The most significant challenge that I face as a patent attorney is to match the expectations of some inventors and applicants, who have unrealistic ideas of what can be achieved with regard to scope of protection compared with what they can substantiate, given the requirements established in the past 20 to 30 years of case law. This problem is well known to those working within biotechnology and life sciences. Years of experience with patent prosecution, along with the fact that I have had the chance to assist many of the most experienced IP lawyers in Norway in numerous patent litigation cases, means that I am able to ask the right questions, identify the risks in claiming an unrealistic scope of protection and discuss the necessary fallbacks. Further, I explain the benefits of not destroying the possibility of obtaining follow-up patents by avoiding overly speculative applications in the first place. It is crucial to have a proper patent strategy that goes beyond the very first application. Of course, it may be a strategic decision to prepare comprehensive applications with an extensive scope. However, it is vital that patent attorneys address the risk to the client so that they can make the correct decisions based on their present needs as well as in the years to come.
What are some of the biggest challenges facing your clients at present?
This depends on the area of technology. In Norway, start-up SMEs in the life science sector are struggling to attract investors, which today seem to be more easily drawn to companies within the green tech sector. Further, unemployment among highly qualified persons with university degrees within all areas of science and engineering is low. Therefore, it can sometimes be difficult to find employees with the required skills.
The race to develop and distribute covid-19 vaccines has thrust the biopharma sector into the spotlight – what changes do you expect to see from this scrutiny?
Every crisis brings about innovation. An increasing number of patent applications have been filed that relate to vaccine technology and diagnostics – in particular to covid-19. I expect that several other vaccines against other viruses will be developed using the technology from the coronavirus vaccines.
In Norway, there is little scepticism surrounding vaccines and uptake of the covid-19 vaccine is high. This is despite the fact that one of the vaccines was removed from the vaccination programme due to rare side effects that unfortunately led to several deaths in Norway.
Name three changes that you would like to see in the Norwegian patent litigation space – and how likely do you think that they will happen?
I look forward to opposition proceedings at the Norwegian Intellectual Property Office becoming more in line with EPO practices, particularly when it comes to handling all opposition against a patent together, not separately, as was the practice until recently.
I would like to see the Board of Appeal in Norway (KFIR) become more predictable (eg, confirm what EPO case law it might follow or disregard). Also, I would like to see KFIR no longer relying on experts unknown to the parties or citing prior art in a decision that has not been previously raised.
I am pleased to see that the new regulations ensuring attorney privileges to European patent attorneys in Norway entered into force this summer.
What technological developments are having the most significant impact on your clients’ patent activity?
There is a growing focus on climate change. An increasing willingness for change and investment in green technology will be followed by more enhanced R&D activity in this area and the subsequent need for protection for new technological solutions.
The high level of activity from a growing number of companies within green technology makes it important to provide a thorough overview of what is being patented in order to provide freedom to operate and achieve the proper protection of one’s own technology, as well as a competitive edge. Therefore, clients must identify proper service providers within freedom-to-operate/prior art searches, and IP consulting firms that can guide them through the jungle of information and third-party rights.
Senior Partner [email protected]
Kari Simonsen is a European patent attorney with more than 20 years’ experience of IP rights in the life sciences/pharmaceutical sector, and a specialisation in chemistry, pharmacy and biotechnology. She was formerly a senior examiner at the Norwegian Industrial Property Office. Today, Ms Simonsen assists clients in drafting and handling patent applications and oppositions, freedom-to-operate evaluations, infringement issues and IP strategy. She has acquired extensive experience of infringement and validity in numerous pharma sector patent litigation cases in Norway.