Broad protection - Block Drug Company, Inc. (now part of GSK)
| Sector: | Pharmaceutical |
|---|---|
| Size of business, location | $900m, operations in 100 countries, employed 3000 staff. Sold to GSK for $1.24 bn in 2001 |
| Challenges | To get a good breadth of protection for one of their European patent applications |
| Overview of steps taken | Worked with my client’s technical input to amend claims of application Proposed alternative amendments based on additional analysis of documents |
| Outcome | Obtained broader protection than expected by the client |
Revival of a dead application - Grenness, Australia
| Sector: | Law firm |
|---|---|
| Size of business, location | Top 10 law firm by size |
| Challenges | Previous European law firm failed to comply in time with official requirements relating to a newly-filed European Regional Phase application. The lawyer concerned concealed the default and the fact that he repeatedly botched attempts to restore the application |
| Overview of steps taken | We took over representation once we discovered that the application was dead We contacted the European Patent Office and liaised with a senior officer there, then prepared submissions to persuade the European Patent Office to revive the application |
| Outcome | We were successful in getting the application revived |
Pulling something awesome off - Phil & Ted’s Most Excellent Buggy Company
| Sector: | Household durables (Buggies for children) |
|---|---|
| Size of business, location | 140 employees, HQ in New Zealand |
| Challenges | Evolve an international patent application into a European patent application (called Regional Phase entry) long after the permitted deadline for doing so |
| Overview of steps taken | Gathered information concerning circumstances, then prepared and presented written arguments to the European Patent Office to persuade then to allow the restoration of the right to enter the Regional Phase |
| Outcome | The European Patent Office allowed late entry of the international application into the Regional Phase |
Getting a difficult job done - Schlumberger
| Sector: | Oilfield services |
|---|---|
| Size of business, location | $27.8 bn turnover and about 100,000 employees, Paris/Houston |
| Challenges | Previous patent attorney had taken nine months to partially draft a patent application. Client observed that it looked like it had been put into the “too difficult to do drawer” |
| Overview of steps taken | I liaised with the inventor and continued drafting the application for this complex subject matter, finalised the document and filed it at the UK Intellectual Property Office |
| Outcome | The application was finally filed, and the client was delighted |
Scarce resource - Siemens
| Sector: | Conglomerate |
|---|---|
| Size of business, location | €83 bn and 370,000 employees. I worked with the German office |
| Challenges | Patent applications needed to be written for a complex wireless communications subject matter, and there was insufficient expertise locally |
| Overview of steps taken | I flew out to the company’s German research facility, met with lead researchers and drafted several patent applications |
| Outcome | Multiple applications were filed quickly and efficiently |
Defending something big - Applera (now part of Thermo Fisher Scientific)
| Sector: | Life sciences/Bioinformatics |
|---|---|
| Size of business, location | $20.9 bn turnover and 70,000 employees |
| Challenges | The European patent for a device known as a Thermocycler (which is used in almost every molecular biology lab in the world) was being challenged. The Thermocycler implements a process that makes more DNA; the process was the subject of a Nobel Prize
Two competitors were trying to get the European patent revoked as they argued that the invention was an obvious progression and not inventive in its own right |
| Overview of steps taken | As part of a two-person team, the other person skilled in chemistry, we prepared what is known as “last written submissions” before attending a hearing
We travelled to Munich with the client’s in-house patent counsel and external US patent attorney to prepare for the hearing, then attended the hearing at the European Patent Office, advocating the merits of the application and why the invention was, indeed, inventive |
| Outcome | The patent was declared valid by the Opposition Division of the European Patent Office |
