Refresher guide UPC opt-outs

Kevin Mooney, Simmons & Simmons LLP

Kevin specialises in contentious and non-contentious intellectual property matters, focusing specifically on patent litigation, especially but not exclusively in the pharmaceutical industry.

Kevin is recommended by “Chambers Guide to the Legal Profession”; cited by peers as “the doyen of patent law”. He is a member of the Intellectual Property Solicitors Association, a member of the American Intellectual Property Law Association and a former member of the Nuffield Bioethics Counsel Working Party on Human Tissue. He is a past-President and a current member of the Advisory Board of the European Patent Lawyers Association (EPLAW). He has chaired three Venice conferences of the European Patent Judges.

Kevin has been part of an international team of lawyers and judges working on the creation of a new pan-European patent court. He was appointed Chairman of the Drafting Committee for the Rules of Procedure for the Unified Patent Court (“UPC”) and currently responsible for the implementation of the Case Management System for the Court. In addition, he is the only UK lawyer member of the Interim Working Groups of the UPC. In this capacity Kevin gave evidence to the House of Lords EU Justice Committee in October 2018 on proposals for U.K. continued membership of the UPC.

In the past Kevin has been appointed to a number of Government posts. In 2008 he was appointed to chair the Independent Review Panel for Borderline Medicinal Products and in 2009 the chair of the Independent Review Panel for the Advertising of Medicinal Products.

He is the author of many articles and a frequent speaker in the UK, Europe, US and Asia on intellectual property issues. He is a lecturer on patents both at CEIPI, University of Strasbourg and the Politecnico di Milano. Currently he is advising the European Patent Office on enforcement procedures for patents in Europe and on training for judges appointed to the UPC.

In March 2015, Kevin was awarded the Managing Intellectual Property Outstanding Achievement Award.

David Holland, Carpmaels

David is a Partner in the Life Sciences group and has a diverse practice, working with therapeutic proteins, modified nucleic acids and traditional small molecules. He frequently handles platform technology cases, from drafting provisionals to worldwide prosecution, and from divisional strategy to post-grant opposition. He has particular experience helping medium and early-stage companies build their IP strategy, with recent successes for Ionis Pharmaceuticals, Ambrx, and G1 Therapeutics. David’s advice is built on over a decade supporting both start-ups and more established players such as Incyte, Biogen, Acorda and Sanofi. Another of David’s specialisms is European patent term extensions (SPCs) for a wide range of products, including Jakavi, Spinraza and Evarrest.

David’s practice focuses on managing interrelated oppositions and appeals at the EPO, often providing strategic advice where his client is opponent in one case and proprietor in the next. He works in collaboration with the firm’s dispute resolution team, including trips to the German national courts to support on-going litigation. David has a particular interest in the development of the Unified Patent Court (UPC), and he’s worked extensively on his firm’s preparations for this new European patent system. David is often asked to share his UPC expertise, both through industry-wide events such as those organised by AIPLA and also as a guest lecturer at the European Patent Litigator course held by the Politecnico di Milano. David looks forward to representing clients in this new venue for pan-European patent litigation.

Another of David’s specialisms is European patent term extensions (SPCs) for a wide range of products, including Jakavi, Spinraza and Evarrest. Clients often rely on David to manage oppositions and patent prosecution that interlink with the SPC strategy. As part of this work, he assesses both the SPC and patent coverage, and the interplay with the regulatory protection available to his clients (including orphan protection). David is frequently involved in appeals against SPC refusals across Europe, including hearings at the UKIPO and supporting litigation in Spain and Sweden.

David was awarded a first-class degree in Natural Sciences from the University of Cambridge. He took full advantage of the breadth of this course by studying subjects as diverse as biochemistry, pharmacology, physiology and organic chemistry. This combination of experience gives David a particular edge when advising on products at the intersection of these fields, such as therapeutic polymers, antisense oligonucleotides and chemically modified proteins.