Susan Kirsch is a European Patent Attorney and partner at Carpmaels & Ransford LLP in the Chemistry and Materials team. She has a leading opposition and appeal practice, frequently representing clients before the Opposition Divisions and Boards of Appeal in hearings at the European Patent Office. Her clients are mostly large corporates within the consumer products, medical devices, foods, polymers and catalyst fields. Kirsch was featured in the 2020 edition of Managing IP’s Top 250 Women in IP list. Read her practice profile here.
When did you decide to pursue a career in law?
After completing my PhD in 1989, I started my career as a Research Scientist at Unilever in the Skin Research team. This introduced me to intellectual property law and I decided to move to the company’s patent department and train to become a patent attorney in 1990. I qualified as a European Patent Attorney in 1994.
Can you tell us a little bit more about your time at Unilever?
I was involved in the science behind the product “Ceramide Time Complex Capsules”, an Elizabeth Arden product (a company owned by Unilever at that time). This research exposed me to patents and they fascinated me, so much so that I moved to the patent department.
I started my patent training working in the homecare products category, protecting the rapid dissolution technology for detergent tablets used in washing machines and dishwashers. I then moved to the foods category protecting the science behind many household brands. The highlight of my time with Unilever was obtaining a granted patent for the Solero ™ ice cream product, defending this in a multi-party opposition proceedings before the Opposition Division and co-ordinating the litigation of the patent in the UK and a number of countries worldwide.
How have you found the transition from in-house to private practice?
I found the transition straightforward, perhaps because my role at Unilever included oppositions alongside drafting and prosecution work; all of which I handled myself. I found that it helped in private practice to have the previous experience of being in the client’s position. Working in-house, I had more interaction with the R&D strategy and overall business process and had global responsibility for a defined business sector; whereas in private practice I have been able to really focus on EPO oppositions and appeals for different clients and technologies and have become extremely experienced in the law, skill and strategy required to guide a case to a successful outcome.
Why and/or how did you join your current firm?
After many extremely fulfilling years at Unilever, I wanted a new challenge and moved to Carpmaels & Ransford in 2000. The reputation of the firm made it an obvious choice. I also admired partners such as Chris Mercer, Huw Hallybone and Adrian Fisher and greatly appreciated the opportunity to work alongside them. In 2005, I became the firm’s first female patent partner.
Can you briefly share two interesting client matters that you handled within the past 18 months?
(1) Raisio Nutrition: defence of cholesterol-reducing food product portfolio
Raisio Nutrition, a Finnish company, has an important portfolio of patents protecting their cholesterol-reducing product range sold under the brand Benecol ™. The portfolio has been defended when challenged by a number of competitors. Recent examples of cases include defending European patent EP2252675 against opposition by BASF SE. This case relates to a process for separating sterols and acids from tall oil pitch. The positive outcome before the Opposition Division was successfully maintained before the Board of Appeal after oral proceedings on January 29 2020.
European patent EP2688427 has also been defended in an opposition by BASF SE. In this instance the patent protects a drink product that reduces serum cholesterol. The patent was successfully defended at oral proceedings before the Opposition Division. This case is now in appeal proceedings.
(2) Johnson & Johnson: defending the Tylenol rapid release gelcaps
Representing the proprietor, Johnson & Johnson, in defending an opposition against European patent EP1773302 and the related divisional patent EP2098224 which protects the company’s rapid release gelcap product sold under the Tylenol ™ brand. The defence of EP1773302 required analysis of the complex relationship between partial priority and the assessment of a first application.
Applying the Enlarged Board of Appeal Decision G1/15, it has been successfully argued that the patent at least had a partially valid priority claim despite the opponent’s arguments that the priority should be completely invalid. This case has fundamentally changed how a first application is assessed at the EPO. After defending novelty and inventive step following remittal to the Opposition Division, it is now back before the Board of Appeal pending a second hearing.
In related case, EP2098224, we have considered what has been made available to the public and used this to successfully argue before the Opposition Division that a television advertisement that was submitted as being broadcast before the effective date of the claims could not invalidate this patent. The Board of Appeal will now hear the case in January 2021 following postponement due to COVID-19.
Did you find any part of the work you have just described uniquely challenging? If so, what were the challenges and how did you overcome them?
Each case I handle will have challenges. Preparation is the key to success. Searching for the key that unlocks the case is what makes my work so very rewarding.
You cannot afford to bury your head in the sand and just hope that your opposing counsel or examiner will not spot the weak arguments in your case.
Better to face your problems up front and work out how to address them and develop your case strategy with this in mind.
What do you enjoy most about working for your firm? What makes your role/work fulfilling?
Carpmaels & Ransford is a top tier firm and a truly inspirational place to work. We have a very supportive, collaborative work environment. We work on interesting, challenging cases directly for many corporate clients. We set high standards and then exceed them. As the partner responsible for training and development, I have an important role in ensuring that everyone has the opportunity to thrive and reach their full potential.
What is your most memorable piece of work to date as an IP practitioner?
I was responsible for the prosecution and defence of a key patent protecting Johnson & Johnson’s Acuvue® extended wear contact lenses. The EPO opposition took over three years, and resulted in the patent being maintained with minimal amendment following our strong defence against every attack conceivable from toxic divisional attacks to prior use.
Following the maintenance of the case by the Opposition Division, infringement proceedings were commenced in Germany with Carpmaels & Ransford providing extensive litigation support. The decision of the Opposition Division was appealed and the case on appeal had a total of 5 opponents and over 120 cited documents. Acceleration of the proceedings resulted in the completion of the entire appeal process within 12 months. Our work enabled the client to reach a favourable settlement agreement prior to a three-day hearing before the Technical Board of Appeal in July 2015.
What qualities and skills are required to do your job?
Motivation, passion and attention to detail. One also needs good advocacy skills, a strong technical background, and a love of hard work.
What advice would you give to women interested in joining the IP profession and/or to junior female IP practitioners who want to get to your position?
It is a really fulfilling career that can be flexible to suit your personal requirements at any given stage. There is no fixed career path, but you have to take responsibility and manage your own career. It is important to learn ways to relax and de-stress that work for you because the workload and deadlines can be relentless at times.
