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Case studies

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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

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