SCL Tech Law Essentials webinar: “Patents for computer inventions – always worth thinking about”

Description

Speakers:
John Leeming, Partner, European and UK Patent Attorney, Litigator, J A Kemp LLP
Stephen Hodsdon, Partner, UK Patent and Chartered Trade Mark Attorney, Litigator, J A Kemp LLP
Hermione Thompson, Partner, UK and European Patent Attorney, J A Kemp LLP

With the computing sector now dominated by software-led companies, from the FAANGs to individual app developers, it’s easy to take the view that patents are of little importance. After all, you “can’t patent software”… or can you? (Spoiler alert – you can, as demonstrated by the fact that the FAANGs all have significant patent portfolios.)

In this webinar the speakers:

• introduce the basic elements of the patent system;
• explain how it is possible to obtain patent protection for a wide range of computer-implemented inventions despite the apparent exclusions;
• explain the requirements for patentability of computer-implemented inventions; and
• review specific areas of innovation to demonstrate how these requirements are applied in practice.

Speakers’ Details:

John Leeming is a European and UK Patent Attorney with over 30 years’ professional experience. He drafts and prosecutes patent applications in the software, electronic and optical fields, with particular expertise in semiconductor device manufacturing equipment and processes. John’s clients range from large multinationals to smaller start-ups, including firms that have successfully progressed beyond the early stages to develop extensive foreign filing programmes. Protection of software inventions (often referred to as computer-implemented inventions) is a particular interest. John has written several articles on the EPO’s approach to this type of invention and has given many presentations on the topic to a variety of audiences. John also handles litigation and enforcement matters, having conducted IPEC and Patents County Court proceedings and assisted in various Patents Court proceedings over the years. Many matters have been successfully resolved without recourse to litigation, sometimes making use of alternative dispute resolution methods such as mediation and IPO Opinions.

John has extensive experience in recovering lapsed patents and applications, using restoration and restitutio procedures in the UK Intellectual Property Office (UK IPO), the EPO and elsewhere in Europe.

He is the chair of J A Kemp’s management committee and is recommended by The Legal 500, where he is described as “an eminent patent attorney well versed in European computer-implemented inventions practices” and “ knowledgeable about software technology, including cutting edge technologies such as AI”.

Stephen Hodsdon’s patent work focuses on the telecommunications, electronics, computer software, cleantech and medtech industry sectors. Stephen has particular expertise in handling cases where there is a cross-over with aspects of bioscience and biotechnology. Stephen’s design and trade mark work encompasses the fashion, consumer products, pharmaceutical, retail and transport sectors.

Stephen’s clients include multi-national companies, several universities in the UK and elsewhere and local SMEs. He is also a regular visitor to Japan and Korea. Stephen is also qualified as a patent attorney litigator and advocate and handles patent, trade mark and design litigation in the Patents Court (High Court) and Intellectual Property Enterprise Court (IPEC) and has conducted patent and trade mark appeals from the UK IPO in the High Court and advised on numerous pre-action matters in patents, trade marks, designs and copyright to achieve settlements for his clients.

In 2008 Stephen was called to the Bar (Lincoln’s Inn) to undertake a one year pupillage (training as a barrister) at one of the leading chambers specialising in IP in London, where he gained substantial experience in all aspects of IP litigation.

In 2009 he was awarded the Patent Agent Litigator Certificate allowing him to conduct intellectual property litigation in all relevant courts. In 2014 he was awarded the Higher Courts Advocacy Certificate, giving him full rights of audience in these courts, including the Patents Court, Intellectual Property Enterprise Court and on appeal from the Patents Court or IPEC.

Hermione Thompson is a European and UK Patent Attorney based in our London office. She has experience drafting, filing and prosecuting patent applications, particularly in Europe and the UK. Hermione has a technical background in engineering and has handled a wide range of electrical, electronic and mechanical patent cases. She has experience working in a large variety of fields, for example, those related to medical devices, software, power tools, packaging and manufacturing methods, and lithographic apparatus. Hermione often works on cases with subject matter relating to life sciences as well as engineering. In particular, she is familiar with the considerations of agricultural companies and has worked on various agritech cases. Hermione enjoys working on clean/green technologies. She heads up J A Kemp’s cleantech team and has experience drafting, filing and prosecuting related applications.

Hermione’s clients include individual inventors, start-ups and large multinationals and tailors her advice depending on the specific needs of the client. In addition, Hermione has experience advising clients on freedom to operate matters for both patents and designs.