Thierry Calame

Lenz & Staehelin

Zurich www.lenzstaehelin.com

thierry.calame@lenzstaehelin.com Tel: +41 58 450 80 00

Biography

Dr Thierry Calame is an expert in intellectual property matters, with a particular emphasis in patent law. He has vast experience as counsel in patent, trademark, unfair competition and copyright litigation as well as IP-related arbitration. Thierry Calame also regularly sits as arbitrator in IP-related arbitration. In addition, Thierry Calame advises on licensing, the intellectual property aspects of a wide range of other transactions as well as pharmaceutical law, including regulatory and advertising issues. He holds both a master’s degree in chemistry and law.

I first studied chemistry and then law. A career in IP law allowed me to combine the best of both worlds – I could work as a lawyer engaging in analytical thinking, communication and collaboration with others and, at the same time, I would be exposed to fascinating new developments in science and technology.

What are the common causes for IP disputes among your clients, and how might they mitigate the risk of their occurrence?

Most IP disputes arise because the client seeks to stop infringements of its IP rights by way of infringement actions or because it wishes to clear the path prior to a product launch by filing nullity actions or declaratory non-infringement actions. It is not possible to completely avoid such disputes, because the more successful their own product and its branding is, the more likely it is to be copied or imitated. The same applies with respect to ground-breaking technologies or successful pharmaceutical products such as medicaments or medical devices. However, on the IP owner’s side, the risk of disputes can be somewhat mitigated by maintaining and communicating a clear enforcement strategy. On the alleged infringer’s side, previous market clearance and FTO opinions are helpful means to assess and mitigate the risks of encountering legal actions.

A further common cause for IP disputes, especially in the patent field, are ownership disputes, which often arise in the context of research collaborations and joint development setups. Such disputes can be prevented or at least considerably reduced by means of clear contractual regulations.

In your opinion, what are the biggest challenges facing IP practice in Switzerland this year?

This year continued to be dominated by the pandemic, albeit in a different way than last year, when the focus was more on general uncertainty, the organizational challenges of remote working, and on maintaining the continuity and efficiency of law enforcement procedures. With the exception of the life sciences field, which continued to thrive, there appears to have been a decrease in new litigation cases being brought to court this year, which may be due to budgetary constraints. Clients have been facing this challenge already for some time now and it appears to have been enhanced by the pandemic. This in turn forces IP practitioners to come up with competitive fee structures or to provide highest-quality service. Another challenge facing IP practitioners is that the clients increasingly expect more individual and personalised advice taking into account the client’s specific business needs and demands.

How is digitalisation changing the life sciences and your practice more broadly?

For the time being the impact of digitalisation on the way we work has not been as considerable as in other legal areas and sectors. However, with the digitalisation of medical products and medical applications and services, the life sciences practice is obviously affected on a more general level. For instance, nowadays, a life sciences lawyer needs to also be skilled with knowledge about data protection in the digital sphere. Furthermore, while artificial intelligence has the potential to automate many time-consuming IP tasks and increase the efficiency, flexibility and speed of our work, AI also brings up a whole new area of fundamental legal issues, such as IP ownership and the notion of the “average consumer” in trademark law, among others. It will take some time until case law will have developed or the legal framework is adapted to the new reality. Until then, it may be challenging to give legal advice with a sufficient degree of certainty in some instances.

To what extent is it vital that life science lawyers have a background in the sciences and/or previous in-house experience in the sector?

It is certainly a significant advantage to have a scientific background or even previous in-house experience in the sector. However, this does not mean that someone without a scientific background or previous in-house experience could not be successful as a life sciences lawyer as long as such a lawyer is willing and able to engage with the client’s experts and understand the underlying technology.

How has the relationship between arbitrators and parties developed over your career? How might this affect tribunals?

I cannot see any meaningful changes in this respect. In our experience, arbitrators and parties have always had a respectful and constructive relationship.

If you could make one reform to patent enforcement, what would it be and why?

The current Swiss patent enforcement system is still a relatively new system with the Federal Patent Court having taken up its work only 10 years ago. It has been very interesting to follow the developments of the Court and its case law over recent years, especially on procedural issues where the Court strives to provide clear guidelines. Overall, we have a well-functioning and efficient enforcement system and no major reforms are needed for the moment.

What underrated skills would you encourage the up-andcoming generation of patent lawyers to develop?

Patent lawyers need a broad skill set that includes curiosity for technical issues and a sound understanding thereof as well as strong legal and analytical capacities. A patent lawyer should also be equipped with the gift of being able to translate complex technical issues into logical arguments and clear language, making the lives of judges and arbitrators easier. Finally, a patent lawyer should enjoy working with multiple stakeholders including not only clients and their in-house experts, but equally patent attorneys, colleagues from parallel jurisdictions, external experts, opposite attorneys and the members of the court. Communication, collaboration, common sense and other social skills are therefore just as important as strong analytical and technical skills.

WWL says: Thierry Calame is praised as “one of the top patent litigators in the market” thanks to his vast expertise in patent law.