Barry Franks

You have significant experience as an examiner at the EPO. How has your time in this position informed your current approach to patent strategy?

Working as an EPO examiner was my first IP position and it provided valuable foundations for my IP career. Knowing how examiners think, the production pressures placed on them and the dynamics of an EPO examining division make it easy for me to confidently guide my clients though the patent prosecution process. My experience gives me a pragmatic view of this, and the credibility needed when explaining why a client might have to accept a set of claims that are suboptimal from a commercial point of view, instead of fighting for the broadest possible scope of protection. It gives me the confidence to be realistic about the possibility of success for prosecution and opposition strategies and provide properly motivated reasons behind the courses of action that I recommend.

What are the most common mistakes that foreign rights holders make when it comes to prosecution in Scandinavia, and how can they avoid these pitfalls?

Patent prosecution in Sweden is very much based on the EPO model and EPO case law, and experienced foreign rights holders have no difficulties with this. If our clients give timely instructions and request extensions to deadlines before they become due, then prosecution usually runs smoothly.

As an expert in drafting and prosecuting patent applications, what risks should practitioners be aware of when using AI to streamline these processes? 

AI is advancing rapidly, and my comments today will certainly be outdated in a few months. My limited experience with AI for drafting so far has been experimental – I provided a drafting app with a short disclosure of an invention and the prior art, and it was able to expand on that and write a credible description of the invention. This saved time but the suggested text needed to be read carefully to remove unworkable descriptions of the invention. Using an IP prosecution app to analyse an office action and cited prior art was relatively easy, and the AI identified a novel and possibly inventive feature in a lengthy patent application in a matter of seconds – much faster than I could have. However, the risk is that once the AI has identified one such feature, a practitioner may be tempted to stop looking for further novel and inventive elements and could therefore miss a better rebuttal to an office action. 

Avoid problems by understanding that AI is not a professional peer! It should be treated as a competent junior colleague – someone who can do a good job but lacks experience and understanding of the nuances of drafting and prosecution – who requires clear and carefully thought-out instructions and whose work needs to be critically checked.

What recent decisions or legislative developments are having the biggest impact on IP strategy in Sweden right now?

I am not aware of any such new decisions or legislative developments.

Having spent seven years as in-house counsel, what prompted the move to private practice, and what advice would you give to others considering a similar change? 

Moving to an in-house position after 10 years as an EPO examiner and four years in private practice has complemented my IP experience. Being in close contact with colleagues from R&D, finance and sales and seeing how all of these teams worked together to turn an idea into a product was fascinating. However, I realised that I risked becoming an IP portfolio manager instead of a practitioner. I wanted to work with a wider range of inventors and inventions, so it was a natural step to re-enter private practice. 

Here I can credibly tell my clients that as a former in-house counsel I understand their position and problems, as an ex-examiner I understand what the examiner is saying and what they need, and with my decades of experience I can offer the best advice to satisfy both of them. Anyone working in industry and contemplating moving into private practice should take every opportunity to work with colleagues in other functions in their company, learn what drives their divisions and get involved with every IP activity as much as possible. If there is IP litigation, offer your help because even being peripherally involved in a case is relevant experience. Continue to draft and prosecute applications, because those are skills that are always required in private practice – managing an IP portfolio and giving orders to outside counsel is not as marketable.

Barry Franks

Partner
[email protected] 

Barry Franks is a partner in Bjerkén Hynell KB’s patent department. His IP career started in 1983 as an EPO examiner and he has previously worked as in-house counsel for one of the world’s largest multinational corporations. Mr Franks’s areas of expertise include drafting, prosecution, oppositions, appeals and strategic IP management. He graduated with a BSc in engineering with French from the University of Bath in the United Kingdom.



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