Avidity attorneys have a top priority of providing clients with services which correspond to their commercial needs. It is also important to consider that, generally, commercial advantage in intellectual property matters often cannot be seen in the context of a simple “black and white” assessment of success or failure.
Thus, satisfying a client’s commercial needs can sometimes require lateral thinking and problem solving going beyond the norm. We can, of course, point to important and particular cases in which we have been involved or for which we have been responsible, and some of that is evident from the biographical material herein. Indeed, there are certainly a number of very high profile cases, often of considerable commercial value, in which we have been involved. However, in demonstrating our strong commitment to providing client needs, we believe it may be more helpful and illustrative to describe a number of instances in general terms in which we have taken actions in the clients’ interests beyond mainstream.
For example, there are many commercially valuable cases at the European Patent Office (EPO) in which we and others make use of expert evidence before Divisions and Boards of Appeal. We have, however, long recognised that there are many ways in which such evidence can be used. In one particular case evidence was generated with the knowledge of the client but always intended to be 'sacrificial'. Its filing in an appeal occasioned the Board to decide that, in the interests of balance, evidence filed by our opponent should be excluded as well as our evidence, thus removing a potential difficulty from the client’s case.
We have also used experts, knowing that other scientists will be present at an oral hearing, intending to stimulate informal discussion between those experts thereby putting them in a difficult position (in fact, causing one of the parties to a relevant proceedings in which we represented the patentee had to refuse to offer any further evidential contribution).
Timing is often an issue of considerable importance in the handling of important cases, whether ex parte or inter partes we have in the past adopted procedures calculated to expedite patent grant and also materially to delay it when appropriate, given our client’s commercial needs in reality. For example, on one occasion we were able to use the complexity of various procedures to delay grant by nearly 2½ years. In other cases, by direct, calculated and careful contact with the Examiner we have been able to change the claims of a patent already approved for grant but with commercially unacceptable scope, simultaneously to achieve both desirable claim scope and rapid grant.
Sometimes clients are involved in prolonged negotiations or rounds of fund raising. We have on occasion been able to employ tactical approaches to support these commercial realities with additional pressures. For example, in an area of legal uncertainty we were able to use already expired patents to achieve further intellectual property filings which enhanced the perceived protection for our client against normal expectations, thus enhancing our client’s position.
To illustrate our capability of being in advance of current thinking, Avidity attorneys conceived of the idea of filing for supplementary protection certificates (SPCs) for pharmaceuticals with a product definition which was only part of the entire pharmaceutical molecule in question (this can sometimes help to resolve and reconcile a number of awkward legal requirements for SPC protection). Some years later, the Court of Justice of the European Union expressly approved an approach specifying as the product the subject of the extended pharmaceutical protection a part only of a composite molecule.
As in life generally, nothing in intellectual property is 100% predictable, and a client’s interests sometimes dictate care in developing a case to a point where specific and unwelcome decisions will be issued. On a number of occasions, we have avoided unwanted decisions on particular points by withdrawing claims in their entirety and against expectations, but, nonetheless, clearly in the client’s best interests given a broad intellectual property landscape including jurisdictions quite different to Europe.
It can be helpful to remember the politics and business objectives of the EPO. On several occasions we have been able to succeed in matters where a client’s interests were jeopardised but arguably would not have been under earlier established procedures. The EPO has sometimes demonstrated a willingness to listen when pressed in such circumstances rather than have a “bad news” connection to its new procedures.