9Oct
Congress

Wednesday 9 October

Congress 2024: The UPC and its impact

When and where

Date and time

Start: Wednesday 9 October 2024, 08:30 AM

End: Wednesday 9 October 2024, 07:00 PM

Location

Kimpton Charlotte Square Hotel, 38 Charlotte Square, Edinburgh, EH2 4HQ

Event Overview

This year’s Congress will be held at the Kimpton Charlotte Square, Edinburgh on Wednesday 9 October 2024.

By the time we reach Congress it will have been just over a year since the launch of the UPC, the biggest change to the patent landscape in Europe since the EPC.  The Committee are putting together a stimulating programme, including high-profile key-note speakers and topical panel discussions in which our members can share their expertise and views on using the UPC and how it is impacting the patent profession in the UK and beyond.

* please note subjects and timings are provisional

 

Extra Events

Congress: Pre-Conference Tour & Drinks Reception- 8th October

Following requests for more networking opportunities at CIPA Congress, we’re delighted to announce a Congress pre-event, hosted by the CIPA EDI committee, which will be held on Tuesday 8 October 2024 from 6.30pm to 9.30pm.

Join us for an exclusive evening at the National Gallery Edinburgh, for this year’s Congress pre-event drinks reception.  Please click the link above to learn about the Pre-Conference Tour & Drinks Reception

Annual Dinner- 9th October

This year’s Congress Annual Dinner will take place at 7.00pm on Wednesday 9 October 2024, after the conference, and is bookable separately. Join us for an evening surrounded by peers accompanied by a three course meal. Please click the link above to learn about the Annual Dinner.

Audience

All

Event images

Programme & Speakers

Wednesday 9 October

  • 8:30 - Registration and Refreshments
  • 9:05 - Opening by CIPA President
    Speakers
    Matt Dixon, CIPA President

    Matt Dixon, CIPA President

    Matt has been a member of CIPA Council for over 15 years. During this time, he has focused particularly on business practice and regulatory issues, especially consulting vigorously with IPREG on the issues of client accounts and anti-money laundering regulation with the ultimate aim of achieving clarity and simplicity for members. He has been a regular speaker to CIPA new entrants on commercial matters. In his own business career, he has been a partner at Dehns in both Munich and London, a director and founder of the London office of IP21 and a partner, London office head and head of the engineering group at HGF. He now has a role of counsel at Cranach, a brand-new patent attorney firm based primarily in Aberdeen.  In 2023, Matt served as the Vice President of CIPA and assumed the role of President in 2024.

  • 9:15 - Transparency at the UPC
    Speakers
    Christopher Stothers, Freshfields Bruckhaus Deringer

    Christopher Stothers, Freshfields Bruckhaus Deringer

    Christopher is an experienced patent litigator, managing strategic, cross-border disputes around Europe and beyond, including oppositions and appeals before the European Patent Office as a legal practitioner and disputes before the Unified Patent Court as a UPC Representative. He has particular expertise in pharmaceuticals, biotechnology, medical devices and telecommunications, and is well known for his work on the interface between IP, competition and regulatory law. Christopher also helps clients with other intellectual property, antitrust and pharmaceutical regulatory litigation, arbitration and mediation.

  • 9:45 - Practical experiences of using the UPC – Insights of users of the UPC in the first year
    Speakers
    Tilman Müller-Stoy, Bardehle Pagenberg

    Tilman Müller-Stoy, Bardehle Pagenberg

    Tilman Müller-Stoy, a renowned German patent litigator, secured the first inter partes preliminary injunction under the Unitary Patent for clients 10x Genomics and Harvard, establishing himself as a pioneer in the European Unified Patent Court. With over two decades of IP experience, he’s led hundreds of multinational patent disputes, specialising in high-profile cases across various sectors such as telecommunications, IT, automotive, and life sciences. As a trained commercial mediator, he also guides clients through IP-related alternative dispute resolution processes globally.

    Rachel Fetches, HGF

    Rachel Fetches, HGF

    Rachel, an IP/Patent Litigation Partner, specializes in contentious intellectual property matters spanning diverse sectors like life sciences, pharmaceuticals, and telecommunications. With extensive experience in UK Patents Court and High Court litigation, she also leads HGF’s UPC team, strategizing pan-European IP litigation for patents and trademarks.

    Jimmy Nicholls, J A Kemp

    Jimmy Nicholls, J A Kemp

    Jimmy, a seasoned European Patent Attorney and Litigator, specializes in biotechnology and life sciences patents globally. With expertise in immunology, genetic engineering, and biosensors, he serves a diverse clientele, including biotech companies and university spin-outs. His background in genetics and protein biochemistry enriches his ability to draft and prosecute patents across multiple jurisdictions, managing extensive patent portfolios with precision.

    Chris Thornham, Taylor Wessing

    Chris Thornham, Taylor Wessing

    Chris is an award-winning lawyer specialising in patents and technical disputes. He works with clients across the life sciences, engineering, and telecoms sectors.
    He advises clients on freedom to operate, product launch, patent litigation, and licensing strategies including FRAND licence disputes.
    He’s acted in over 20 English patent trials and appeals, as well as numerous arbitration cases.

    Chris advises on strategy and the coordination of multi-jurisdictional patent advice and litigation. He helps clients win infringement/validity disputes and to navigate through the remedies and relief available including interim and final injunctions, financial compensation claims, destruction of infringing products, modification of products, court declarations, publicity orders and costs awards.
    Chris has a strong background in natural sciences and multi-jurisdictional patent disputes. Before practising law, Chris graduated with a degree in natural sciences, specialising in experimental physics. In his early career, he also gained experience working in Washington DC and California.
    He speaks and writes regularly on patent issues.

    Daniel Wise, Carpmaels & Ransford LLP

    Daniel Wise, Carpmaels & Ransford LLP

    Daniel specialises in biologics and pharmaceuticals, focusing on EPO opposition proceedings with extensive experience in both attack and defence, including high-profile cases like AbbVie v. Janssen and Amgen v. Sanofi. He also handles original drafting, prosecution, opinions, and freedom to operate analyses, adeptly navigating pan-European litigation. With a passion for aiding clients in bringing innovative medicines to market, Daniel boasts comprehensive knowledge of supplementary protection certificates (SPCs) and has contributed to key cases at the Court of Justice of the European Union.

  • 10:55 - Refreshment break
  • 11: 20 - Architecture and processes of the UPC
    Speakers
    Prof. Willem Hoyng, Hoyng Rokh Monegier

    Prof. Willem Hoyng, Hoyng Rokh Monegier

    Willem’s practice primarily consists of litigating in the field of intellectual property law.  Willem acts before all the national courts (the courts of first instance, the courts of appeal and the Supreme Court). He also regularly litigates before the Court of Justice of the European Union (CJEU) and the European Patent Office (EPO). Willem is also involved in advising on European patent strategies and coordinating and conducting European patent proceedings. He is the adviser of many innovative Dutch and foreign multinationals, including pharmaceutical and biotechnological companies.

    Willem is a professor of Intellectual Property Law at the University of Tilburg.

    Willem is one of the founding members of HOYNG ROKH MONEGIER, he was the managing partner of HOYNG MONEGIER from 2011 until 2015, when the firm merged with German IP boutique ROKH IP and stepped down as a managing partner of  HOYNG ROKH MONEGIER in January 2018.

    Willem is a member of a select group of lawyers admitted to appear before the Dutch Supreme Court.

    Willem is the Chairman of the Advisory Committee of the Unified Patent Court (UPC). He was a member of the drafting committee of the Rules of Proceedings of the UPC and advises the Dutch Ministry of Economic Affairs on UPC matters.

    Willem Hoyng has registered Intellectual Property Law and Supreme Court litigation as his principal legal practice areas in the Netherlands Bar’s register of legal practice areas (rechtsgebiedenregister). Based on this registration, he is required to obtain ten training credits per calendar year in each principal legal practice area in accordance with the standards set by the Netherlands Bar.

  • 11:50 - UPC judges, a view from the bench
    Speakers
    Andrās Kupecz, UPC

    Andrās Kupecz, UPC

    András Kupecz holds an LLM in private law from Amsterdam University and an MSc from Utrecht University with focus on molecular biology. He was active as a European patent litigator, dually qualified as a lawyer and a European patent attorney, before taking up his duties at the UPC.

    Klaus Grabinski, President of the UPC Court of Appeal

    Klaus Grabinski, President of the UPC Court of Appeal

    Klaus Grabinski studied law at the Universities of Trier, Geneva and Cologne. He passed the 1st and 2nd state examination in 1988 and 1992. He was a university assistant and received a Doctor Iuris from Trier University in 1991.

    He served on the German Federal Court of Justice’s 10th Civil Division, including as the Deputy Presiding Justice of the Division that has, inter alia, jurisdiction on patent litigation matters. Before joining the German Federal Court of Justice in 2009, he held a number of judicial roles, including as a presiding judge of a patent litigation division at the Düsseldorf Regional Court and as a judge at the Düsseldorf Higher Regional Court.

    He was an external legally qualified member of the Enlarged Board of Appeal of the European Patent Office.

    Since November 2022, Klaus Grabinski serves as President of the Court of Appeal and chairperson of the Presidium of the Unified Patent Court.

     

    Penny Gilbert, Powell Gilbert

    Penny Gilbert, Powell Gilbert

    With a degree in biochemistry and a doctorate in molecular biology, Penny’s strong scientific background has led to her specialisation in advising clients in the life sciences sector. She represents clients before all levels of the UK patent courts including the Court of Appeal and Supreme Court.  She successfully represented clients in appeals to the Supreme Court on issues of industrial application and sufficiency of claim scope.  She has also represented clients in referrals to the CJEU and the EFTA Court on the interpretation of the SPC Regulation.

    She has a wealth of experience in advising on European litigation strategy and co-ordinating multi-jurisdictional patent litigation. She has represented clients in European Patent Office opposition and appeal proceedings and in appeals from the UK IPO. Penny also represents clients in patent licence disputes before the UK courts and in arbitration. She is a qualified mediator and a solicitor advocate.

    Penny also counsels on pharmaceutical lifecycle management, and is experienced in providing freedom to operate and due diligence advice.

    She is a frequent lecturer on aspects of IP law affecting the life sciences sector and a tutor on the Oxford University Diploma in Intellectual Property Law and Practice course, teaching patent litigation.  As a former President of EPLAW, and a current member of its advisory board, she has been involved with its aims of harmonising European Patent law, including involvement in the training of judges for the UPC.

    Penny has been a partner at Powell Gilbert since it was founded in 2007.

    Kai Härmand, Judge, Nordic-Baltic regional division

    Kai Härmand, Judge, Nordic-Baltic regional division

    Estonian Kai Härmand is the second permanent judge at the Nordic-Baltic regional division. Like Stefan Johansson, she is currently only involved in the UPC cases pending before this division. Parallel to the UPC, Kai Härmand has been a judge at the Harju County Court since 2020. Prior to this, she was deputy secretary general at the Estonian Ministry of Justice and a legal adviser at the Estonian Patent Office. Between 2006 and 2014, Härmand was a legally qualified member of the EPO’s Enlarged Board of Appeal.

  • 12:50 - Lunch
  • 14:10 - Drafting for the World
    Speakers
    Toby Mak, Tee & Howe

    Toby Mak, Tee & Howe

    Born and educated in Hong Kong with a PhD in chemistry and The only Chinese patent attorney working in a Beijing Chinese patent firm from Hong Kong.
    Past co-chair of the AIPLA’s IP Practice in China committee and current co-chair of the AIPLA’s IP Practice in the Far East committee and is also Vice Chair of the Asian Practice committee of the IPO.

    Trained under the UK system and took the UK CIPA examinations, and passed some of the papers. Responsible for publishing articles on China IP update for the UK CIPA Journal.

    Member of AIPLA, IPO, UK CIPA and speaks several languages: Chinese (Mandarin and Cantonese), English

    Annette Flaherty, Murgitroyd

    Annette Flaherty, Murgitroyd

    Annette Flaherty joined the patent profession in 2001 whilst completing her PhD thesis. Annette has a PhD and 1st class BEng honours degree in Mechanical Engineering, both obtained following completion of a technical apprenticeship in the earthmoving sector.

    As a patent and design attorney Annette has experience working with and advising a range of clients including large multinational companies, SMEs and individuals about UK and European patent and unregistered and registered design protection. Her technical area of specialism is general/mechanical engineering technology, which includes oil and gas technology, renewable energy technology, automotive technology, earthmoving, agricultural technology, plumbing technology, optical fibre technology and tobacco technology.

    Annette joined Murgitroyd as part of the acquisition of Creation IP by Murgitroyd in April 2022.

    Jaime Choi, Sheppard Mullins

    Jaime Choi, Sheppard Mullins

    Jaime’s practice focuses on patenting complex, interdisciplinary technologies and building strategic patent portfolios, with an emphasis on evaluating and mitigating risk from third-party patents. She advises clients in a variety of market sectors, including bioinformatics, medical devices, robotics, microfluidics, semiconductor fabrication, digital signal processing, photonics, advanced imaging, optics and ultrafast spectroscopy, and fabrication of complex materials and devices that use them. Jaime also has deep experience in disputes, including litigation, arbitration, licensing, and trade secrets.

    Jaime draws upon her extensive experience gained in her previous roles at international law firms in the United States and United Kingdom to better advise her clients. She has established strategic global patent portfolios and supported disputes for a variety of clients and technologies, from genomic sequencing to smartphones, to blood glucose monitors, and inorganic materials. She also drafted applications for direct filing in the European Patent Office; prosecuted European, U.S., and international patent applications; performed freedom-to-operate and infringement analyses of third-party patents in numerous technical fields; and advised on U.S. contractual issues.

    Within the start-up community, Jaime has been involved in the University of San Diego, the SBDC (Small Business Development Center) at UCI Beall Applied Innovation, the USC Stevens Center for Innovation, and the Zahn Innovation Center at the City College of New York, providing innovators with essential information on intellectual property needs.

    Takeshi S. Komatani, Takashima International Patent Office

    Takeshi S. Komatani, Takashima International Patent Office

    Takeshi is an IP strategist and researcher, and also plays various roles in education and enlightenment activities in IP and entrepreneurships.
    Takeshi S Komatani is currently principal litigation certified patent attorney at TAKASHIMA International Patent Office, an IP law firm located in Osaka, Japan, and has a number of counsels, including in academia, start-ups and big pharma internationally. He is also qualified as a pharmacist with a certificate of Kampo and natural medicines specialist qualification.

    Takeshi received his PhD from the University of Tokyo, Japan, received his LLB and LLM (global legal practice) from Keio University, and is currently a visiting professor at the Graduate School of Science, Technology and Innovation, Kobe University, teaching IP strategy in entrepreneurship, since 2021. He has completed CEIPI IP Certificate 2022 at University of Strasbourg, France. He is also a visiting professor at Graduate School of Medical and Life Sciences, Doshisha University since 2023, and also give lectures on IP practice at Keio Law School, Tokyo, and pharma IP strategy at Osaka University, Graduate School of Pharmaceutical Sciences.

    He was a researcher at F Hoffmann-La Roche in Basle, Switzerland. Thereafter, he joined Shusaku Yamamoto, a patent and law firm in Osaka, Japan, in 1998, and then moved to TAKASHIMA International Patent Office in 2023. He has completed the EU-recognised PharmaTrain course at Osaka University in 2017. He was also qualified as a board-certified member of the Japanese Association of Pharmaceutical Medicine. He has been chosen as an IP mentoring expert of the IPAS programme run by the JPO since 2019. He has also been chosen as an IP adviser of MEDISO run by the MHLW. He has won Grand Prix of IP practitioner’s division of Fourth IP BASE AWARD in March 2023 hosted by the JPO.

    He is a member of the AIPPI and vice chair of TRIPS SC and a member of IP-GRTK SC, and a member of the editorial board of the Pharmaceutical Patent Analyst (UK). He is also a member of JPAA, APAA, IPAJ, PSA, JPA, CSAIP and AAAS. He has lectured in academia, including at Japanese and German universities and WIPO Academy, and contributed to a number of articles. He is currently a member of the Advisory Board at BioCommunity Kansai (BiocK), a Japanese government-funded organisation to create the ultimate ecosystem in the field of biotechnology based in the Kansai region, Japan.

  • 15: 20 - UK University Spin-outs: IP Commercialisation and Investment
    Speakers
    Dr. Claudia M. Duffy, EPA BSc, MSc, PhD (Cantab) Founder of Innovare IP and Alta IP

    Dr. Claudia M. Duffy, EPA BSc, MSc, PhD (Cantab) Founder of Innovare IP and Alta IP

    A former Scientist turned European Patent Attorney and IP Entrepreneur, Claudia has 10 years’ experience as a Research Scientist (in Munich and Cambridge), over 16 years’ experience as a Patent Attorney in both in-house (for two Cambridge University spin-outs) and private practice roles (in London, Cambridge and Edinburgh) and over 5 years’ experience as an IP Entrepreneur. She is the Founder of Innovare IP, a full-service practice of patent and trademark attorneys working with entrepreneurial communities, investors and universities and Alta IP, a LegalTech company developing a Suite of Apps based on digitised IP services.

    Claudia is an Ambassador for Women Enterprise Scotland, a Professional Member of the Economy and Enterprise Committee of the Royal Society of Edinburgh. She is also a Member of CIPA’s and EPI’s IP Commercialisation Committee, as well as the IP Finance Advisory Group of the UKIPO.

    Sandy Finlayson, LLB OBE FRSE WS Co-Founder MBM Commercial

    Sandy Finlayson, LLB OBE FRSE WS Co-Founder MBM Commercial

    Now retired, Sandy was a Co-Founder and Senior Partner at Edinburgh and London based Award Winning law firm MBM Commercial. He sits on the CivTech Advisory Group and served for four years as Chair of Converge Challenge, Scotland’s leading company creation programme for all Scottish Universities and Research Institutes.

    Sandy has also held and continues to hold many other advisory and Chair roles with third sector organisations.

  • 15:50 - Refreshment break
  • 16:20 - Industry experiences of opt-outs, unitary patents and the UPC
    Speakers
    Lucy Wojcik, Chief IP counsel, Ocado Group plc

    Lucy Wojcik, Chief IP counsel, Ocado Group plc

    After graduating in materials engineering from Imperial College London, Lucy E Wojcik trained as a patent attorney in two private practice firms before qualifying as a European patent attorney and chartered patent attorney in 1999 and moving to an in-house role for BAE Systems plc. Having gained significant commercial IP experience, Ms Wojcik became a freelance IP consultant and patent attorney for Leonardo MW (a subsidiary of Finmeccanica SpA) and, more recently, for Ocado Innovation Ltd. She was appointed head of intellectual property for Ocado Group plc in 2016. She is also a visiting lecturer on the IP practice and management course at Brunel University.

    Susan Chiappenelli, GSK

    Susan Chiappenelli, GSK

    Susan began working at GSK in 1998 as a patent trainee.  Since then she’s worked in various IP roles across the company supporting small and large molecules, vaccines and technologies.  Having spent the 2018 – 2022 leading the team that provides IP support to the Pharmaceutical portfolio, she moved teams at the beginning of 2023 to perform the same role for the Vaccines part of the business.

    Dr Bobby Mukherjee, CIPA Vice President, BAE Systems plc

    Dr Bobby Mukherjee, CIPA Vice President, BAE Systems plc

    Dr Bobby Mukherjee, Chief Counsel, IP & Technology Law – BAE Systems plc and Past President (2012-2014) of the IP Federation. He is the Chartered Institute of Patent Attorneys (CIPA) Vice-President, President-elect as of 1 January 2024. He previously served and currently sits on CIPA Council, and chaired the CIPA Internal Governance Committee in its formative stage.

    Bobby is a qualified UK and European patent attorney with over 28 years’ experience of IP gained in private practice and at BAE Systems plc. He is currently the Head of IP (2009 -) at BAE Systems plc (a FTSE 30 company), which has one of the largest in-house IP teams in the UK. During Bobby’s IP Federation Presidential term, Bobby played a prominent role, on behalf of Industry, in actively engaging with the Parliamentary stages of the UK IP Bill 2013-2014. This resulted in the UK IP Act 2014, with a positive outcome for Industry. He currently sits on the IP Federation Council and until recently, chaired the IP Federation Trade Working Group. On behalf of the IP Federation, he gave evidence in January 2023 on the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) IP provisions to the influential House of Commons International Trade Select Committee. As a direct result of the IP Federation’s diligent work to which Bobby significantly contributed since 2018, the UK is acceding to CPTPP on terms which do not threaten European Patent Convention membership, and which promote international harmonisation of patent laws, another long-standing IP Federation goal. This is a successful outcome for UK plc, and the wider UK patent profession.

    Bobby’s career has mostly been spent in the physics field, obtaining and defending patent protection for new products, processes and services globally. He gained a first degree in Natural Sciences (specialising in Physics) from Cambridge University in 1990, and then a Doctorate Degree (D.Phil.) on High Temperature Superconductors from Oxford University in 1995. He has published various research papers in leading Scientific Journals during that time, and during his work experience at the National Physical Laboratory.

    Bobby has been named a Corporate IP Star by Managing Intellectual Property every year since 2015.

    He received the Legal 500 UK individual of the Year 2019 award for IP. He has been listed on the IAM Strategy 300: World’s leading IP Strategists (2022 and 2023).

    In his spare time, Bobby enjoys spending time with friends and family, travelling, and closely following cricket.

  • 17: 20 - Hot topics and Closing Remarks
  • 17: 30 - Drinks Reception

Sponsors

  • Headline Sponsor - Thomson Reuters

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    Know today. Navigate tomorrow.

  • Exhibitor - SunIP

    “Sun IP is dedicated to streamlining global IP portfolio management, making it simpler and more efficient for our clients. Our primary focus is on assisting IP law firms and large corporations (with in-house counsel), through a comprehensive range of services including foreign filing, translations, renewals, and recordals. What sets us apart is our user-friendly platform, meticulously developed based on insights from industry professionals, ensuring a smooth and easy experience for users. Complementing our technology is our committed team of experts, available round the clock to provide exceptional support and guidance. Moreover, our extensive global network of experienced agents guarantees reliability and precision at every stage of the process. Collaborating with Sun IP empowers you to concentrate on strategic priorities and confidently lighten your workload while we take care of the intricate details, providing peace of mind and ensuring top-quality work every step of the way.”

  • Exhibitor- RWS

    RWS is the world’s leading provider of technology-enabled language, content management, and intellectual property services. With over 60 years of experience in the IP arena, RWS’s expertise in patent translations, foreign filing and IP research services is unrivalled.

    Clients trust RWS to deliver high-quality translations in a format ready for filing, in compliance with national filing formalities, and maintaining the same protective scope as the original.

    RWS also helps clients simplify and streamline their internal processes, by providing flexible, cost-effective foreign filing services that dramatically reduce the administrative burden associated with EP validations, PCT national phase entries and direct filings.

    When it comes to research, RWS offers the most robust intellectual property (IP) research services and tools available. AOP Connect, RWS’s market leading patent research platform, enables clients to store, manage, search and organise study data for future use. With search solutions to meet a vast range of needs, from analyst studies to crowd-based searches, RWS .

    RWS clients include many of the world’s largest filers including 19 of the top 20 applicants at the World Intellectual Property Organization and 16 of the top 20 applicants at the European Patent Office.
    Founded in 1958, RWS is headquartered in the UK and publicly listed on AIM, the London Stock Exchange regulated market (RWS.L).


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