What has been your proudest professional achievement?
I am proud to be part of an incredibly competent and committed team of patent attorneys and lawyers at Onsagers. Here, everyone wants to contribute to our customers gaining freedom to operate and protect their competitive advantages in the best possible way. I am also proud to have worked with the finest IP litigators in Norway and have gained a great deal of experience from the many patent dispute cases that I have been involved in over the years.
You were formerly a senior examiner at the Norwegian Industrial Property Office. What were some of the biggest challenges that you faced in that role – and how did you overcome them?
I started as an examiner at the Norwegian Industrial Property Office one week after graduating from university. I had no idea what a patent was or how it was granted. The biggest challenge was to overcome my terrifying and incomprehensible impression of the formal and legal requirements for a patent application. Novelty and inventive step consideration were not that difficult, but grasping the legal aspect was a hurdle. Understanding the reasons behind the many regulations – taking into account both the applicants’ wish for reasonably fair protection and third parties’ need for legal certainty – was eye-opening as an examiner. The handling of oppositions was also interesting and made me want to work on the other side of intellectual property – ie, in private practice.
You have more than 20 years’ experience working as a European patent attorney, specifically in the life sciences/pharmaceutical sector. With that experience, what steps can you – and your firm – take to ensure that the next generation is also brilliant?
Give the next generation opportunities to solve challenging and instructive tasks by giving access to exciting and educational projects, cases and clients. In addition, we need to facilitate education and ensure that wisdom is passed down. The older guard must share their knowledge, rather than keep the exciting stuff to themselves.
What are your top tips for how to incorporate trade secrets into an IP portfolio?
It is crucial that clients understand trade secret legislation. Further, firms should have proper routines to ensure that trade secrets are kept safe and are not deliberately or accidentally distributed to third parties by their employees. If a trade secret is shared with collaborating partners (eg, contract manufacturers or research partners), it is crucial that carefully formulated agreements are in place to ensure that the information is not shared with third parties.
How do you think the covid-19 IP waiver might hit the life sciences scene in Europe?
It remains to be seen how the covid-19 IP waiver that the World Trade Organization agreed on in June 2022 will operate. To my understanding, the waiver aims to ensure that covid-19 vaccines (and optionally, later on, diagnostics and pharmaceuticals) are manufactured in larger amounts and become available across the world. While a better distribution of medicines will help poorer countries receive vaccines, I doubt that an IP waiver will solve everything. There are so many other aspects to take into account when setting up a vaccine manufacturing facility, ranging from access to equipment, reagents and manufacturing expertise to a proper system to distribute and administer the vaccine. A better idea may be to encourage pharmaceutical industries to solve these issues by creating incentives to scale up and distribute medicines to underdeveloped countries.
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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.