Los Angeles CIPA Seminar – UK and European updates to the profession

Daniel Chew, CIPA Past President, Haseltine Lake Kempner LLP

As well as being one of the industry’s top mobile and communications technologies experts, Daniel is the driving force behind HLK’s success in Asia. Being a fluent Mandarin speaker and frequent visitor to Asia, Daniel has taken the role of Head of Asia Group and led the firm’s  presence in Asia from strength to strength. It is largely thanks to Daniel’s hard work and strategic thinking that HLK now represents the largest EPO filer in Taiwan and a number of top ten EPO filers in China. Daniel enjoys visiting clients and attending events, as he finds that this is the best way for him to listen to and fully understand each of his client’s needs in order to provide them global strategic IP advice.

On a higher level, Daniel has been involved in joint missions with patent offices in promoting the IP profession and IP protection in Europe through various overseas visits to Asian countries as well as the USA. In the last couple of years, Daniel also led the Asia Group and hosted delegations from the Shanghai Pudong New Area IP Administration in their visits to Germany and the UK. More significantly, Daniel was invited to be the keynote speaker at an Intellectual Property International Forum which was part of China’s First International Import Expo.

Daniel has been an active member of the CIPA Council for the last four years and has been a member of CIPA’s International Liaison Committee, chairing the China Working Group, for a number of years.  A leading European Patent Attorney with nearly 20 years’ experience in private practice, Daniel is also recognised as a future leader of the IP profession in the UK. In January 2022, he was appointed Vice-President of CIPA, and as President with effect from 1 January 2023.

Clare Cornell, Finnegan’s

Clare Cornell lead Finnegan’s London trade mark group and has 20 years’ experience in the IP industry. Her practice focusses on all aspects of trade mark portfolio management. Clare also specialises in trade mark enforcement and seeking settlement of complex IP disputes.

Clare is a both a Chartered and European trade mark and patent attorney having qualified to practice in the UK and in Europe in both disciplines. Skilled in coordinating national and international trade mark filing strategies, Clare serves an international client base, including through the UK Intellectual Property Office and the World Intellectual Property Organization’s (WIPO) Madrid International trade mark registration system. She has particular experience working with attorneys in China on the opposition and cancellation of bad faith trade mark applications and registrations.

Clare assists large multinational businesses in the management of their IP portfolios, working with in-house decision makers to ensure the smooth day to day running of their registration and enforcement matters and keeping portfolios up-to-date. Working closely with businesses in this manner provides her with valuable insight into the needs of a busy in-house IP team.

Recognized as an “IP Star” in the United Kingdom by Managing Intellectual Property, Clare provides a broad range of advice in high-level IP due diligence programs, advising on all aspects of IP as well as the preparation of agreements for the transfer of IP portfolios. She has assisted in multi-million dollar IP due diligence projects during both the acquisition and divestiture of businesses, as well as coordinated multi-jurisdictional post-acquisition IP assignment programs, and provided IP auditing services to clients who have acquired large IP portfolios, including portfolios having in excess of 1,000 rights. Before joining Finnegan, Clare was a partner in a UK law firm of patent and trade mark attorneys. Her technical experience includes advising clients in the construction, chemical, clothing, alcoholic beverage, packaging, and nutraceutical industries.

Peter Thorniley, Venner Shipley

Peter is a partner in Venner Shipley’s electronics and engineering team. With a background in theoretical physics, Peter has enjoyed a practice which consistently engages with the cutting edge of technology.

Peter has extensive experience supporting patent prosecution strategies of multinational corporations. He also has a strong background supporting the university sector and spin-out companies arising from this area. As well as prosecuting applications in the UK and Europe, he has extensive experience managing international portfolios, particularly in the US, China, Japan, Korea, Canada and Australia. He is proactive in providing commercial as well as legal insight, and has extensive experience of freedom-to-operate and due diligence processes. He has also worked to support clients involved multi-jurisdictional patent litigation.

As well as being a Chartered UK and European Patent Attorney, Peter holds the University of Strasbourg’s diploma on Patent Litigation in Europe.

David Hammond, Haseltine Lake Kempner

David is a partner in the Chemistry and Life Sciences team. With degrees in both chemistry and DNA technology, David is many of our clients’ go-to attorney for innovations in the medical area. He advises our clients on a range of healthcare technologies including diagnostics and biomarkers, small molecule drugs, microfluidics and medical devices. David is equally comfortable advising on inventions that lie mainly in the chemistry area, including inks and printing components, new food compositions and catalysts.

Having spent time on extended secondments with a number of our clients, David has a deep understanding of the in-house environment. For this reason, our clients value his strategic and business-focused approach, and appreciate the clear, commercially-focused advice he gives.

David’s strong academic background makes him uniquely placed to head up Haseltine Lake Kempner’s services to universities.

Dick Waddington, Appleyard Lees

Dick has a particular interest in imaging and printer technology, including both mechanical aspects and device security.

His expertise ranges from prosecution, including examination oral proceedings and appeals at the European Patent Office (EPO), to infringement advice.

Dick’s broader expertise relates to prosecution of European applications in the engineering and computing fields, including high-precision fixing technology, mining machinery, database computing and telecommunications. The work also includes management of portfolios that are diverse geographically and in terms of subject matter, which requires particular attention to the costs and benefits of pursuing protection in multiple jurisdictions, bearing in mind the likely activities of potential infringers.

He also has a wide and varied knowledge of overseas working practices and manages our overseas strategy and foreign attorney relationships.