Thierry Calame

Lenz & Staehelin

Zurich www.lenzstaehelin.com

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

Biography

Dr Thierry Calame is managing partner of Lenz & Staehelin in Zurich. He is an expert in intellectual property matters, with a particular emphasis in patent law, notably in life sciences. 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 other transactions as well as pharmaceutical law, including regulatory and advertising issues. He holds a master’s degree in both chemistry and law.

I first studied biochemistry and chemistry and went to law school afterwards because I did not only want to engage in analytical thinking and problem-solving, but also communicate, interact and collaborate with others. A career in IP law additionally allowed me to combine my science background with my legal background and, at the same time, to be exposed to fascinating new developments in science and technology.

What qualities make for a successful patent litigator?

A patent litigator needs a broad skill set that includes not only strong legal and analytical capacities, but also strong technical skills, including both a curiosity for technical issues and a sound understanding thereof. A patent litigator should equally have the ability to translate complex technical issues into logical arguments and clear and understandable language. Finally, a patent litigator should also have social skills and notably the ability to collaborate and communicate with multiple stakeholders including clients and their in-house experts as well as patent attorneys, colleagues from parallel jurisdictions and external experts.

What are the advantages and disadvantages of having a global practice?

An important advantage of a global practice is that it is always changing and evolving, bringing new challenges, which require analytical and strategic thinking. Another advantage is the dynamic environment: each case is different and provides for continuous intellectual challenges. Finally, the global perspective allows you to interact and collaborate not only with international clients, but also with foreign counsel, which provides an exciting and stimulating perspective. On the other hand, the demands of a global practice also mean that lawyers must be available longer hours.

On which types of matters have clients sought your advice in the past year?

In the past year, I have been involved in cutting-edge patent litigation involving complex DNA sequencing technology and related reagents. I have also advised on freedom to operate in the covid-19 mRNA vaccine patent landscape and represented a leading pharmaceutical company in (now settled) patent litigation matters involving a blockbuster antibody treatment. Clients have also sought my advice on the potential adjustment of a settlement/licensing agreement to reflect a significant change of the properties of the licensed antibody. Finally, I have been representing a leading life sciences company in arbitration proceedings involving inventorship issues and infringement of multiple patents in the field of medical devices.

How is patent law developing in Switzerland with regard to inventive step requirements, and which industries are most likely to be affected by this?

The Swiss Federal Patent Court's practice with regard to inventive step is closely aligned with the practice of the EPO Boards of Appeal. Notably, the Federal Patent Court has committed to apply the problemsolution approach and the could-would approach. However, it appears to apply a somewhat modified could-would approach to the extent that it requires a reasonable expectation of success. The Boards of Appeal have applied a similar concept (in the sense of an expectation of some improvement or advantage), but only in the biotech field. I expect that the Federal Patent Court will not maintain this modified approach for Switzerland and rather further align its case law with the practice of the EPO Boards of Appeal. All industries other than the biotech industry will be affected by this.

How has your previous experience as Reporter General at the AIPPI enhanced your current practice?

The AIPPI has enabled me to network with experienced experts in the field of IP and to exchange ideas on a highly professional level over many years. These relationships are still firmly in place and continue to benefit my practice both in terms of referrals as well as my ability to reach out to foreign counsel in any possible jurisdiction worldwide. The comparative legal studies and analysis that underpin all AIPPI Resolutions and that I have engaged in as Reporter General of AIPPI for so many years have also impacted on my basic approach to legal research. Even if I only need to analyse a specific research question at national level, I usually resort to a comparative legal analysis.

As co-head of Intellectual Property at Lenz & Staehelin, what are your main priorities for the practice group’s development over the next couple of years?

My main priority is to ensure that our dedicated team with specialist expertise can continue to advise on so many high-profile mandates that we have been privileged to be involved in for so long. In this regard, we will also seek to further expand the team. From a client perspective, a main priority is to continue providing highest-quality service as well as individual and tailored advice taking into account the client's specific business needs and demands. I will also make sure to continue dealing with the impact of digitalisation on the way we work, including relying on AI where it makes sense.

What has been your greatest achievement to date?

To become first partner and then – 20 years later – managing partner of one of the top firms in Switzerland were certainly important steps in my career. What is even more rewarding, though, is each single litigation or arbitration that I could successfully complete together with the support of my team to our clients' full satisfaction.

WWL says: Thierry Calame is lauded as “an excellent lawyer”, renowned in the life sciences sector for his market-leading patent litigation work.