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Europe’s Unified Patent Court and Patents with Unitary Effect: Status, Perspectives and Impact of Brexit


Speaker(s): Francesca Giovannini, Jeffery P. Langer
Recorded on: Sep. 8, 2016
PLI Program #: 191724

Jeffery P. Langer uses strategic creation, management, and exploitation of IP assets to help clients achieve their business objectives. With over 12 years of IP legal experience, Dr. Langer relies on a wealth of innovative and practical approaches to solve client’s legal problems. As a former researcher and in-house counsel, he combines diverse technical knowledge with a strong skill set across multiple areas, including patent and design procurement, trade secret protection, portfolio management, licensing, due diligence, post grant challenges, and pre-litigation assessments. He has led projects in a variety of technology areas including semiconductors, consumer and industrial electronic systems, biomedical devices, and alternative energy systems. He is the cofounding partner of the Washington DC metro area office of Osha Liang, which is located minutes away from the United States Patent and Trademark Office.

REPRESENTATIVE EXPERIENCE

  • Led teams of IP professionals responsible for building and managing multimillion-dollar IP portfolios for clients in the consumer electronics and biomedical space in the Americas, Europe, and Asia
  • Managed multiple concurrent contentious matters with simultaneous actions in Asia, Europe, and the Americas before the European Patent Office, the State Intellectual Property Office (PRC), and the United States Patent & Trademark Office for clients in the consumer electronics and semiconductor memory technology areas
  • Lead IP due diligence attorney for multiple M&A acquisitions with valuations over $100 million dollars
  • Lead attorney as outside and in-house counsel for transactional matters including multicounty freedom to operate assessments, cross-border IP licensing, export control issues, and IP asset purchases

EDUCATION

  • J.D., cum laude, Columbus School of Law, The Catholic University of America, Washington DC (2009)
  • Ph.D., Electrical, Computer, and Systems Engineering, Rensselaer Polytechnic Institute, New York (2005)
  • M.S., Electrical, Computer, and Systems Engineering, Rensselaer Polytechnic Institute, New York (2001)
  • B.S., Electrical, Computer, and Systems Engineering, Rensselaer Polytechnic Institute, New York (1999)
  • B.A., Urban Studies, The College of Wooster, Ohio (1993)

ADMISSIONS

  • Virginia State Bar
  • District of Columbia Bar
  • United States Patent and Trademark Office

SELECTED PRESENTATIONS AND PUBLICATIONS

  • Panelist, United Nations Industrial Development Organization (UNIDO) Day Opening Ceremony and International Forum, under the theme of “Driving ‘Belt-and-Road’ Common Development Through Science & Technology Innovation and Capacity Cooperation,” Shanghai, China, April 2017.
  • Co-Author, “Ready for Your Next Trade Show? The TRO Trend Continues,” Law360, November 2016.
  • Lecturer, Europe’s Unified Patent Court and Patents with Unitary Effect: Status, Perspectives and Impact of Brexit, Practicing Law Institute (PLI), September 2016.
  • Panelist, Regulatory Pathways for Med Device and Pharmaceutical Compounds, C3: MedTech16 Conference, Houston, Texas, April 2016.
  • Co-Author, The Hottest Product At Your Next Trade Show — A TRO,” Law360, March 2016.
  • Strategic Intellectual Property Management – Building IP Portfolios, Chapter in Handbook of Clinical Nanomedicine: Law, Business, Regulation, Safety and Risk, Pan Stanford Publishing, Singapore (2016).
  • Lecturer, International Post Grant Proceedings, Practicing Law Institute (PLI), September 2015.
  • Panelist, Intellectual Property Due Diligence Essentials from the Buyer’s Perspective, 13th Annual International Conference on Current Medicine and Pharma, August 2015.
  • Panelist, Food Design: Value and Protection of Food Design and Packaging, Milan, Italy, June 2015.

PROFESSIONAL MEMBERSHIPS

  • International Intellectual Property Commercialization Council (IIPCC), Board of Governors and Chairman (Washington, DC Region)
  • PTAB Bar Association
  • Licensing Executive Society International (Vice-Chair, Communication Committee)
  • Rensselaer Alumni Network (Co-captain, Washington DC Metro area)
  • Giles S. Rich Inn of Court
  • Institute of Electrical and Electronics Engineers
  • American Association for the Advancement of Science

LANGUAGES

  • French (basic)
  • Mandarin Chinese (proficient)


PRACTICE AREAS AND INDUSTRIES SERVED

Francesca Giovannini’s practice includes foreign and European patent prosecution and European patent litigation, in the fields of materials science, chemical and mechanical engineering.

EXPERIENCE

At Osha Liang, Ms. Giovannini handles prosecution, opposition and litigation work for French and international clients, in particular in the oil field (e.g. wellbore fluids, drilling equipments), in process engineering (e.g. polymerization plants and processes, hydrocarbon separation processes and plants, heat exchangers, gasifiers, air-conditioners) and in materials science (e.g. polymers, fuel cells, batteries), and she regularly attends oral proceedings before EPO Examining Divisions, Opposition Divisions and Boards of Appeal. Further, she is involved in infringement and nullity actions before the French Court (TGI) as well as before the National Commission on Inventions made by Employees (CNIS). She assists bailiffs in French infringement seizures.

Prior to joining Osha Liang in 2009, Ms. Giovannini worked as patent attorney at Basell Polyolefine GmbH in Frankfurt, Germany, a joint venture between BASF and Shell which subsequently merged with Lyondell Chemical Company to form LyondellBasell. There, she harvested inventions in the field of polyethylene products, plants and processes and drafted and prosecuted corresponding patent applications globally, drafted patentability and freedom-to operate opinions and progressively focused on oppositions and appeals before the EPO, attending many oral proceedings. She also provided IP advice on core R&D projects relating to polyethylene catalysts and processes and she held internal training seminars on IP issues.

Before that, after a short experience as a patent engineer at a Patent Library in Vicenza, Italy, where she performed patent searches, Ms. Giovannini worked several years as patent agent for the IP law firm Porta, Checcacci & Associati in Milan, Italy, where she performed prior art searches, patentability and freedom-to operate analysis and drafted and prosecuted patent applications in Italy and abroad, most of them relating to the manufacture of tyres, glasses and dragées.

Additionally, Ms. Giovannini worked in the polyurethane industry as a materials engineer at Deltapur S.p.A., a company of Bayer group. In that position, she developed tailor-made polyurethane formulations for the automotive industry.

Ms. Giovannini graduated in 1996 with a M.S. degree in Chemical Engineering with a particular emphasis on process engineering and materials science and drafted an experimental thesis on the basis of a research performed to develop controlled release pharmaceutical systems.

EDUCATION

  • M.S., Chemical Engineering, University of Trieste, Italy (1996)
  • B.S., Chemical Engineering, University of Trieste, Italy (1996)

ADMISSIONS/CERTIFICATIONS

  • European Patent Attorney (2004)
  • Italian Patent Attorney (2002)

LANGUAGES

  • English
  • French
  • German
  • Italian

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

  • EPI, The Institute of Professional Representatives before the European Patent Office
  • Ordine dei Consulenti in Proprietà Industriale, Sezione brevetti
  • L.E.S. France / Licensing Executive Society
  • Co-lecturer of the PCT module of the course organized by the French Patent and Trademark Office (INPI) for the qualification of French patent assistants