Topic:Panel Discussion on the Unitary Patent – Scope, Implementation, and Practical Considerations
Speakers: Greg Sach, Partner, Hoffmann Eitle; Jason Ferrone, Vice President, Patents and Corporate Development, Isis Pharmaceuticals Inc.; Bernie Greenspan, Prometheus Laboratories; George Whitten, Qualcomm; and Paul Holdaway, Qualcomm
Date: Thursday, September 17, 6:00 pm
Location: San Diego Marriott Del Mar, 11966 El Camino Real, San Diego
For several decades, the member states of the European Union (EU) have been negotiating the creation of a European patent with unitary effect (“unitary patent”) and a unified European patent court. In 2012, representatives of the EU member states achieved a breakthrough agreement: The European unitary patent will soon guarantee supranational protection for inventions in 25 countries across Europe. Meanwhile, the agreement to install a European patent court is currently being ratified by EU member states. The unitary patent – or “European patent with unitary effect” – is a European patent, granted by the EPO under the rules and procedures of the European Patent Convention, to which, upon request of the patent proprietor, unitary effect is given for the territory of the 25 Member States participating in the unitary patent scheme. Our panel will discuss the practical implications of the Unitary Patent and offer guidance to practitioners in pursuing patent protection in EU countries under the new system.
6:45-7:30 Dinner (salad pre-set)
7:30-8:30 Presentation (dessert provided during presentation if there is not enough time during the dinner period)
San Diego Marriott Del Mar
11966 El Camino Real
Greg Sach, Partner, Hoffmann Eitle
Jason Ferrone, Vice President, Patents and Corporate Development, Isis Pharmaceuticals Inc.
Bernie Greenspan, Prometheus Laboratories
George Whitten, Qualcomm
Paul Holdaway, Qualcomm
Greg Sach, Partner, Hoffmann Eitle
Greg Sach is a partner at the firm Hoffmann Eitle. Greg has been pre-selected as a part-time technical patent judge for the Unified Patent Court and has taken a keen interest in developments in the unitary patent package. Greg has over 10 years of experience in the patent profession, largely practicing in the medical device sector. He has particular expertise in prosecution and post-grant opposition and appeal proceedings before the European Patent Office. Greg represents clients from individual inventors to multinational companies with large patent portfolios. He prides himself on fully understanding the subtleties of the technology at issue and recognizing the associated business interests of clients. He aims to proactively propose optimal solutions for obtaining commercially relevant patent protection, while always striving for maximum time and cost efficiency in his work. For international clients, Greg takes care to ensure that their patent scope requirements are met as fully as possible under the particularities of European patent law and practice.
Jason D. Ferrone, Vice President, Patents, Isis Pharmaceuticals, Inc.
Jason is currently the Vice President of Patents at Isis Pharmaceuticals, Inc. and has been the lead patent attorney on all patent matters for the company since 2007. During his nearly seven years at Isis, he has developed and executed the patent strategy for Isis’ medicinal chemistry inventions, Isis’ numerous therapeutic programs and Isis’ pathogen identification platform (acquired by Abbott Molecular in 2009). Jason also served as lead patent counsel of several of Isis’ large transactions, including the sale of Ibis Biosciences to Abbott Molecular and the mipomersen co‐development agreement with Genzyme. Jason graduated from Suffolk University Law School (cum laude) with distinction in Intellectual Property Law. Jason also holds a B.S. in Biochemistry from University of California, Riverside and an M.A.inChemistry from San Diego State University.
Dr. Bernard Greenspan, Senior Director of Intellectual Property at Prometheus Laboratories Inc., a subsidiary of Nestlé Health Sciences.
His responsibilities include managing the company’s IP portfolio, setting strategies, performing diligence, and establishing in-house training programs. He received his BA in physics from Clark University and his MS and Ph.D. in biophysics from the University of Rochester School of Medicine and Dentistry. He is registered to practice at the USPTO as a patent agent. Prior to Prometheus, Bernie held positions as Director of IP Strategy Management for Pfizer La Jolla Laboratories, Senior Director of Intellectual Property at Verus Pharmaceuticals, and as an independent consultant to life science and medical device companies. Before moving into IP, he was actively engaged in aerosol science and respiratory drug delivery research. His research positions have included Director of Aerosol Research at Dura Pharmaceuticals and Elan Pharmaceuticals, and Staff Scientist at Battelle Pacific Northwest National Laboratory.
George Whitten, Vice President at Qualcomm.
He is one of only 6 patent attorneys in the UK with the triple qualification of Patent Attorney, Patent Attorney Litigator, and Patent Attorney Advocate. With an electronics engineering background and over 28 years of experience in the field of intellectual property law, his work ranges from high value patent infringement litigation, through post-grant patent oppositions, to patent prosecution strategies and management. He divides his time between homes in southern California and south east England. A well-known leader in the field, George has detailed knowledge of international laws and treaties that are relevant to international patent filing programs (PCT, EPC, Paris Convention, TRIPS, etc.). He has a broad and deep understanding of UK High Court practice and the expected behavior of players in court. His ability to work across different jurisdictions and to provide a bridge between US lawyers and European lawyers puts him in a strong position to work with teams spread out across the world from San Diego, CA through the UK and Europe, to Asia and New Zealand.
Paul Holdaway, Patent Counsel at Qualcomm.
He specializes in intellectual property including patents, trademarks and copyright. Prior to joining Qualcomm, he was patent attorney at Wells St. John P.S. after obtaining his law degree from Brigham Young University – J. Reuben Clark Law School. He has held industry positions, including Director, Product Management at World Wide Packets and Product Manager at Agilent Technology. Paul holds a MS degree in electrical engineering from University of Washington and a BS degree in Electrical Engineering from Brigham Young University.