As a celebrated expert in the patent world, what should practitioners be aware of when using AI to streamline processes, such as drafting patent applications? 

Drafting patent applications combines the art of claim drafting with more routine work, and AI is great for streamlining some of the more cumbersome tasks in private practice. 

AI tools have certainly made their way into the patent world, but there is still room for improvement. AI is far from replacing a skilled practitioner – and this may never even happen – but any practitioner should take advantage of the available tools to increase efficiency and improve the quality and consistency of their work. 

You often assist clients in disputes that span multiple jurisdictions. What are some key considerations to bear in mind when commencing cross-border litigation, and how do you account for jurisdictional differences? 

Coordination is key. 

It is important to have a clear strategy and objective before the courts. When commencing cross-border litigation, this is even more crucial. Judgments in one jurisdiction can influence developments in another, and new lines of attack and defence pop up all the time and can spread across borders. Intimate knowledge of the different procedures is a must and the timing of different actions is extremely important. 

The UPC has presented users with a very short timeline, whereas some national courts and the EPO – particularly its opposition procedures – appear to lag behind a little. Coordination between different teams is paramount for success.  

What inspired you to pursue a career in intellectual property, and what advice would you give someone considering a similar path? 

I actually got into intellectual property accidentally but have loved it since day one. The unique combination of technology, law and even languages has fascinated me ever since my days as an EPO examiner. As a private practice representative, it is a privilege and a challenge to help clients face different strategic scenarios and deal with different technologies daily. 

Anyone considering a similar path should work hard and go for it. I have found being an examiner and a patent attorney extremely interesting. The variety of work as an attorney is very attractive, but being in private practice is not easy and requires a lot of hard work to keep up with ongoing changes in technology and the law. When one is starting out, one should not simply say no to anything because something new can be learned from every task. At the end of the day, we are in direct contact with innovation and help to promote it and foster economic growth and welfare for society.

If you could make one change to the Spanish prosecution regime, what would it be, and do you think it is likely to happen? 

Both the law and the Spanish Patent and Trademark Office (SPTO) have come a long way from the days when patents were granted without any substantive examination, which led to many ‘paper patents’.

While the SPTO has made great strides and issued helpful guidelines for examiners and applicants, it could improve consistency and harmonisation between examiners. Using examining divisions like at the EPO might increase harmonisation and predictability in the examination process.

One must recognise the hard task that examiners face at smaller patent offices. It’s practically impossible for them to reach the same level of expertise, simply because they deal with much broader technical fields. 

In 2022, you told IAM that the advent of the UPC would be the most significant trend shaping patent enforcement practices. How are you adapting to the court now that it has been up and running for one year, and what do you predict will be the biggest challenge facing your clients over the next 12 months? 

My prediction in 2022 was not wrong. The UPC is and has been an exciting new component in the European patent landscape, presenting enormous opportunities and challenges for stakeholders. 

The patent litigation landscape is probably more complex than ever and this is difficult for everyone.

One example is the complications for patent holders dealing with multiple validity challenges arising from different actions at the UPC and EPO with completely different timelines. While the EPO’s case law is well established regarding substantive patent law, this is not yet the case for the UPC. Even at the EPO, the Enlarged Board of Appeal now faces a fundamental question of how to interpret claims in view of the description. The coming years will be most interesting and challenging.