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The European Union Unified Patent Court: To Opt-In or Opt-Out? That is the Question!
The date is nearly upon us for the Unified Patent Court (UPC) to begin receiving cases and for Unitary Patents (UP) to start being granted – current projection is that it will be June 1, 2023. The UPC will have exclusive jurisdiction over all Unitary Patents and, in time, all European patents validated in EU countries. The UPC will be the forum that decides infringement and revocation proceedings and determines remedies for these rights within the countries that have ratified the UPC law. The countries that agreed to participate in the UPC recognize the UPC will be a new, untested, multinational European court. As such, there will be a transitional period during which one can opt-out from the jurisdiction of the UPC for certain published European patent applications and European patents. Hand-in-hand with the UPC, the new Unitary Patent will simplify the administration of European patent rights – albeit at the risk of being centrally attacked. While there is no exhaustive list or one size fits all approach to dealing with opt-outs and the decision as to whether to seek UP protection, this program will consider practical aspects and actions to take now in preparation for June 1.
Moderator: Barrett Spraggins, Kennedy Lenart Spraggins, LLP, Austin, TX
9:30 - 10:45 AM
This panel will present diverse perspectives about the IP challenges companies face when launching and protecting new products in the exercise device arena. Speakers will provide real-life examples of numerous legal and business considerations that must be taken into account for a successful product launch. Particular focus on small start-up companies and design patent prosecution issues for wearable devices.
Moderator: Jocelyn D. Ram, Fountainhead Law, Santa Clara, CA
10:45 - 11:00 AM - Break
11:00 - 12:00 PM
In response to President Biden’s July 2021 “Executive Order on Promoting Competition in the American Economy,” which was focused on lowering drug costs, and the June 8, 2022 letter from several senators to the USPTO raising concerns about patent thickets, the USPTO proposed initiatives to bolster the robustness and reliability of patents to incentivize and protect new and non-obvious inventions while facilitating the broader dissemination of public knowledge to promote innovation and competition. The USPTO-FDA collaboration initiatives pose ethical challenges for lawyers. This program will provide insight into conflicts of interest and the duties of candor and confidentiality implicated by such initiatives.
Gill Jennings & Every LLP | PartnerIan Jones, PhD is a Partner at Gill Jennings & Every, LLP in London, England. Drawing on over a decade of experience, Ian advises pharmaceutical and industrial chemistry companies, as well as those in the biotechnology and medical devices sectors, on how to protect their innovation and leverage the value of their intellectual property.
Kilburn & Strode LLP | PartnerNick specialises in high-tech patent work and handles large volumes of high value work in the fields of healthcare technology, telecoms & standards, and electronics. His academic background and 20 years’ experience has led to him being recognised as a leading expert in healthcare technology. He advises his clients on all aspects of patent protection, including the preparation and prosecution of patent applications, opposition proceedings, freedom to operate, and infringement and validity opinions and he has particular experience of standards-related patent matters.
Barclay Damon LLP | AssociateGenevieve M. Halpenny is an associate at Barclay Damon LLP and uses her PhD in chemistry to advocate for clients who are seeking patents in a variety of chemical, engineering and scientific disciplines. Genevieve has worked with clients to protect their intellectual property rights in matters before federal courts, state courts, and the US Patent Trial and Appeal Board. Genevieve has also helped clients protect and monetize their technologies through licensing and other deals.
Meyer, Mercedes K.
Banner Witcoff | AttorneyMercedes Meyer, Ph.D., represents leading life science and technology companies maintaining an extensive biotechnology and pharmaceutical patent management, prosecution, opinion and due diligence practice. With a doctorate in virology and degree in chemistry, Mercedes has a deep understanding of complex biotechnology and scientific research, which is key for advising life science clients on commercializing and protecting product innovations as well as performing diligence for investing in new technologies, particularly in corporate joint development projects. Mercedes advises on developing patent strategies, managing the intellectual property rights, and making associated investments and acquisitions. Mercedes also handles patent reexaminations and inter partes matters.
Mercer University School of Law | ProfessorProfessor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, and his law degree with Honors from Northwestern University School of Law. He practiced with Baker Botts and litigation boutiques from 1988 to 2002, litigating cases primarily involving patent infringement, legal malpractice, and general complex commercial matters. He is now a solo practitioner, representing practitioners and others before the Office of Enrollment and Discipline and in other disciplinary matters, consulting with firms about ethical issues, and serving as an expert witness. In 2021, he became a registered mediator.
Fountainhead Law Group P.C. | Senior IP CounselWith over two decades of intellectual property experience, in both private practice and at USPTO, Ms. Ram brings a unique perspective to clients. Ms. Ram utilizes unique USPTO insider knowledge in strategizing with her clients on how to quickly acquire valid patents and build a comprehensive IP portfolio. Her technology background focuses on biomedical, mechanical, electromechanical, and software technologies, with specialization in the medical device field. Her biomedical engineering degree from Cornell University, and communications & technology master’s from Georgetown University provide a strong foundation for both understanding the technical and legal aspects of patent law and for expertly communicating this subject matter to diverse audiences.
Polson Intellectual Property Law | Founder and Senior PartnerMargaret Polson, Founder and Senior Partner for Polson Intellectual Property Law, leads the firm in authority and expert knowledge of intellectual property law. Overseeing the preparation and prosecution of utility and design patent applications, trademarks, and copyrights, she also assists clients with licensing and intellectual property strategy and management.
Fitch Even | PartnerKarl R. Fink has been a partner at Fitch Even since 1995 and is co-chair of the Litigation Practice Group. His practice includes all aspects of commercial litigation and intellectual property litigation, creation, management, enforcement, and licensing, with particular emphasis on patent litigation. Karl has been a full-time first-chair trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the country, both at trial and on appeal, as well as in the International Trade Commission. His litigation practice also includes the handling of inter partes reviews in the U.S. Patent and Trademark Office.
DataFeel | Founder & CEOMatthew Leaper is the Founder and CEO of DataFeel® - a B2B company working to commercialize a proprietary line of haptic technologies with broad applications in communications and therapy. Mr. Leaper is a registered professional engineer (NE, Mechanical) and patent attorney (USPTO, NJ, NY) with 10,000+ hours of billable experience at boutique intellectual property law firms on the American East Coast and the Canadian West Coast. He founded the company in 2017 and has been building its IP portfolio ever since, resulting in two issued US patents across six open patent families in Canada, Europe, and the US with dozens of pending or allowed claims and trademark protections in nine countries around the world.
ZeroWheel, LLC | CEO, CTO, and FounderNeil Singer, PhD is the CEO, CTO, and founder of ZeroWheel, LLC, based in Armonk, NY. ZeroWheel is a high-end, motorized, fitness product, focused on making core development efficient, and accessible for users of all levels. Dr. Singer is an optimization expert specializing in dynamic systems and motor control technology. He received his BS in 1983, SM in 1985 and PhD in 1989, all from the Massachusetts Institute of Technology’s Mechanical Engineering department. Dr. Singer’s research focuses on machine design, dynamics, control and optimization of dynamic systems. He has published 39 technical papers, holds 19 patents, and his Input Shaping® technology for machine vibration reduction is taught in dozens of universities and used in millions of machines worldwide. He has also taught several courses at MIT.
Kennedy Lenart Spraggins LLP | Founding PartnerBarrett Spraggins is a U.S. patent attorney and founding partner of the IP boutique Kennedy Lenart Spraggins LLP. As a seasoned attorney with over 15 years in the IP profession, Barrett provides a variety of IP services including patent portfolio creation, strategic counselling, IP portfolio evaluations, technology transactions, patent licensing and litigation support. As a trusted advisor for organizations of all sizes, Barrett has considerable experience in managing global IP portfolios for international companies, as well as creating new portfolios for startups. With a background in electrical engineering, Barrett practices in a wide range of industries and technologies, including software applications, electrical power and battery systems, autonomous vehicles, sensor design, distributed computing environments, medical devices, circuit design and fabrication, and all types of computer hardware.