You are renowned for your expertise before the EPO – what changes have you seen there over the last 10 years and what emerging issues should rights holders watch out for?
I would say that there are at least three main developments that have emerged in my practice before the EPO over the past decade or so. Firstly, the pressure being put on examiners to deal with cases more swiftly means that applicants often do not get as many opportunities to negotiate with the EPO in writing before being summoned to an oral hearing. This can sometimes unfairly prejudice the applicant’s position, as the preparation for, and attendance at, an oral hearing can be costly, which means that applicants must settle for a scope of protection that might be unduly narrow in order to avoid such costs. It is thus vital to make use of all opportunities that one has in order to progress the application as early on in the procedure as possible, so as to avoid being boxed into a corner with a summons.
Second, following the pandemic, oral hearings via video conference seem to be here to stay, so it is important to make sure that you have the technology and procedures in place to use this new platform to your client’s advantage in proceedings before the EPO. Finally, despite Brexit, the Unified Patent Court and unified patents now once again look likely to come into effect in the foreseeable future, and this will have far-reaching consequences for companies with European patent rights.
What are some of your top tips for building trust and understanding with clients?
My top tips include: really listening to your clients to make sure you have a clear understanding of their objectives and requirements; being pragmatic – clients mostly require practical commercial solutions, not legalistic opinions; and having a deep understanding of their technology and business so that you can provide clear and succinct advice.
As head of Mathys & Squire’s Israel practice, what does outstanding law firm leadership mean to you?
I believe that a successful law firm is based on the combined efforts of all individuals working at the firm. Outstanding law firm leadership involves building up a team of outstanding people that are empowered and inspired to achieve the best for their clients.
What are your top three tips for prevailing at a remote hearing?
First, master the technology – test everything (in particular, make sure that the microphones work, especially where simultaneous translation is involved) and be prepared for the odd hiccough.
Second, establish a back-channel – a significant advantage of remote hearings is that colleagues and inventors can silently observe the proceedings and interact with the attorney involved via a separate messaging application.
Finally, watch out for the mute button – it is very easy to accidentally speak to the division and the other side during breaks when you think you are on mute!
How are developments in AI and machine learning shaping the international IP landscape?
Developments in AI and machine learning have led to a huge number of patent filings in this area, and these have shifted and clarified the boundary of what is (and what is not) patentable.
New AI and machine-learning products have also started to alter aspects of a patent practitioner’s activities. In particular, the past few years have seen the release of patent-searching tools based on AI technologies. The IP industry can be somewhat conservative – not least because one inadvertent oversight can have dire consequences – so widespread uptake of such tools is unlikely until these tools have been fully tested. Moving forward, it is likely that some previously labour-intensive (and expensive) tasks will be greatly simplified (and cheapened) by AI and machine-learning tools. Patent practitioners who keep pace with these developments will have the opportunity to improve their service offering for the benefit of their clients.
The problematic question of whether an AI can be considered as an inventor is also vexing the courts, with different jurisdictions coming to quite different views on the subject. We will have to wait and see how new legislation might deal with this issue in the future.
Dani Kramer works in Mathys & Squire’s IT and engineering team, acting for large corporations, small and medium-sized entities and start-ups. His work includes drafting and prosecuting patent applications, advising on technology-based agreements and handling contentious infringement and validity matters. Mr Kramer’s practice focuses on the fields of internet, television, software, AI and machine learning, microprocessors, semiconductor devices, communication technologies, electrical and electronic engineering, mechanical engineering, fuel cells and other environmental technologies cases.