Post-Grant Patent Opposition in Europe and the U.S.

Christopher P. Carroll is counsel in the Boston and London offices of Ropes & Gray. In addition to being a U.S. patent attorney, he is a solicitor in England & Wales and solicitor in the Republic of Ireland.  He is currently handling over 50 Oppositions and Appeals before the EPO.  He has argued at Oral Proceedings before the Examining Division, Opposition Division, and Boards of Appeal of the EPO.  

Heather M. Petruzzi, counsel at WilmerHale, focuses her practice on complex intellectual property issues. She represents clients across a variety of technologies in strategic post-grant proceedings before the USPTO, including inter partes review, ex parte reexaminations, and inter partes reexaminations proceedings. She has represented both petitioners and patent owners during inter partes review proceedings.  Ms. Petruzzi also coordinates global patent strategies for international companies facing oppositions and litigation in several forums.  She handles pre-litigation investigations, discovery, claim construction, expert discovery, expert reports and depositions. She also assists in drafting briefs and preparing for oral argument before the Federal Circuit.  Ms. Petruzzi counsels clients on freedom to operate matters and drafts invalidity and non-infringement opinions.  Additionally, she advises on IP sales and acquisitions and performs due diligence analyses. She prosecutes patent applications for start-up and large companies in the pharmaceutical and medical device space and has represented these clients in district court.

Michael Siekman counsels clients of all sizes in the biotechnology and pharmaceutical industries on a range of intellectual property matters, including patent prosecution and portfolio strategy, due diligence, licensing, opinions, post-grant proceedings, and litigation. His over 20 years of experience has involved blockbuster drugs as well as orphan drugs, and he has managed patent portfolios for several pioneering biotechnologies. He serves as the co-chair of Wolf Greenfield’s Biotechnology Group.

Michael has successfully run and argued ex parte and inter partes cases before the Patent Trial and Appeal Board (PTAB). He also has extensive experience extending patent terms in the U.S. and abroad, obtaining several Patent Term Extensions and Supplementary Protection Certificates, and maximizing Patent Term Adjustment for clients by petition and litigation. 

Rich Giunta has over 25 years’ experience and specializes in post-grant proceedings before the United States Patent Office.  He co-chairs Wolf Greenfield’s Post-Grant practice group and its Electrical and Computer Technologies practice group. 

Rich has successfully represented clients in Inter Partes Review (IPR), Covered Business Method (CBM) Review, and inter partes and ex parte reexamination.  He specializes in high stakes matters involving market leading companies involved in parallel litigation and has successfully represented clients in matters with more than one billion dollars at stake.  He has represented patent owners in twenty two post-grant proceedings without losing a single claim. 

Rich also has an extensive patent prosecution and counseling practice.  He counsels clients on the development of commercially valuable patent portfolios and leads teams to build those portfolios.  He has written and prosecuted patents that have withstood post-grant attacks and been successfully asserted in litigation.

Rich also has significant litigation experience.  He has architected infringement and validity aspects of major patent litigations and drafted winning claim construction motions. 

As a former senior design engineer,  Rich has particular expertise in handling all types of computer and software related technologies.  He has also handled other technologies in the electrical, medical device, and consumer products fields, including storage systems, digital rights management systems, automatic availability systems, databases, automatic speech recognition, text-to-speech generation, natural language understanding, semiconductor processing, imaging devices, healthcare systems, wireless networking systems, computer aided tomography, explosive detection devices, graphics systems, guidewires, stents, catheters, surgical patches, and endoscopes.

Rich represents a full spectrum of clients, including industry leading multi-national corporations (e.g., EMC, Nuance Communications, C.R. Bard,), mid-size companies, start-ups, venture capitalists, and academic institutions.

Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work in the mechanical arts. His experience includes all aspects of patent prosecution for patent and reissue applications, including corresponding with clients and preparing replies to all USPTO correspondence such as Office Actions, Restriction Requirements, Appeal Briefs, and filing Preissuance Submissions (third party submissions).  The experience also includes initiating and conducting post-grant proceedings such as inter partes reviews, ex parte and inter partes reexamination, as well as conducting legal research and preparing freedom-to-operate, patentability, infringement, and validity opinion letters. Mr. Perez is also the editor of the microsite dedicated to Post-Grant Patent practice (www.postgrantproceedings.com), and provides his clients comprehensive post-grant patent counseling including advice on strategies and pitfalls of the emerging USPTO post-grant proceedings.  Mr. Perez has also argued before the Court of Appeals for the Federal Circuit, as well as before the USPTO Patent Trial and Appeal Board (previously the Board of Patent Appeals and Interferences).

Claus Elmeros is a Partner and European Patent Attorney and European Design Attorney at HØIBERG A/S and work for clients ranging from start-up, small, and medium-sized companies to multi-national companies within mechanical technology, medical devices, manufacturing technology to control systems and software.

Claus has a M.Sc. in mechanical engineering/manufacturing from Aalborg University. Claus started in the patent profession in 1990 as a patent examiner at the European Patent Office in the Netherlands. Since 1995, Claus has advised on patents and registered design protection, including drafting and prosecuting patent applications, patentability assessment, licensing, patent infringement assessments, and opposition and appeal proceedings before the European Patent Office and the Danish Patent & Trademark Office. Claus received authorization as European patent attorney in 1997 and in 2013 completed the studies in the patent litigation in Europe.

In 2010, he was appointed technical judge at the Maritime and Commercial Court and acts as court appointed technical expert in patent related legal disputes.

Sander van Rijnswou is a European patent attorney specializing in computer-implemented algorithms and cryptography. He is an experienced tutor in the DeltaPatents’ opposition courses making full use of his experience in opposition and appeal proceedings before the EPO. In addition to his patent qualifications, he has a PhD in mathematics and a bachelor degree in law. Sander is the editor of DeltaPatent’s EPO case law blog and associate partner.