Foto del docente

Claudio Germinario

Adjunct professor

Department of Pharmacy and Biotechnology

Curriculum vitae

CURRICULUM VITAE

Claudio Germinario

Education:

1972‑1976 The University "Statale" of Milan (Italy).

Master’s Degree in "Pharmaceutical Chemistry and Technology" (July 1976).

Graduation thesis (1975- 1976) on: "Biosynthesis of sesquiterpenoids in plants of Dendrobium nobile".

Final mark: 110/110 cum laude

Positions Held:

Present position:

Partner Società Italiana Brevetti

Adjunct Professor University Bologna

European Patent Attorney,

Italian Patent Attorney,

Community Design Attorney

Official Technical Expert on I.P. matters of the Ordinary Tribunals of Roma & Milan

October 1995 – May 2001

Member of Board of Appeal of the European Patent Office in the technical fields of pharmaceutical, cosmetic and alimentary chemistry.

1982-1995 Patent substantive‑Examiner at the EPO (Munich) in the fields of Biotechnology (Plant and Animal modifications), Biochemistry and Pharmaceutical Chemistry.

1980‑1982 Documentary Search‑Examiner at the European Patent Office (EPO) in Den Haag (Holland) in the fields of Pharmacy, Alimentation.

1976-1980 Researcher at the Farmitalia‑Carlo Erba R&D plant – Milano. Technical field: organic synthesis.

Qualifications
Italian and European Patent Attorney, Community Design Attorney.

Practice areas

Technical counsel in patent prosecution and patent litigation.

Filing Italian and European patents in the field of pharmaceutical chemistry and biotechnology.

Opposition and appeal procedures before EPO.

Freedom to operate and portfolio analyses.

Tribunal Expert in I.P. matters

Regular Lecturer at the University ‘Alma Mater’ of Bologna on aspects of patent protection of pharmaceutical inventions

Expertise and Activities

Main activities: I.P. matters in Organic and Pharmaceutical Chemistry, Biotechnology, Nanotechnology.

Teaching

His main activity is providing technical counsel in patent litigation in the pharmaceutical field. He represents pharma and fine chemical companies in infringement and nullity proceedings before Italian Courts and patentability/revocation proceedings before the European Patent Office.

Before joining SIB's Rome office in 2001, he spent over 20 years with the European Patent Office in Munich, first as a biotechnology examiner and later as a member of the board of appeal competent for pharmaceuticals. He acted as rapporteur or chairman in more than 70 decisions on key points of law such as interpretation of a medicament’s second therapeutic application, definition of and interaction between medical and non-medical treatments, limit of a reach-through claim, meaning of a functional characterisation, applicability of non-supported disclaimers, anticipating effect of speculative prior art, and many others.

He is enrolled with the Register of Court-Appointed Experts on Industrial Property of the Court of Rome, and co-operate with the Tribunal of Milan, which are the Italian Courts with the largest specialised IP sections.

Lecturing and publishing

He gives regular lectures at the University of Bologna ‘Alma Mater’ within the course of “Pharmaceutical Socio-Economy and Patentability” on I.P. matters concerning pharmaceutical and biotechnological inventions and is co-rapporteur in many university theses on patentability.

He has contributed to national and international specialised journals such as the Max Planck Institute's IIC International Review of Intellectual Property and Competition Law, EPI Information, Bioprocessing & Biopartnering, Il Diritto Industriale and Nanotech IT, on subjects including European patent law and IP protection with regard to ground-breaking technologies. He has authored articles on the patentability of biotech inventions, embryonic stem cells, interpretation of the patentability requirements for nanotech inventions, disclaimers and double patenting. He has published commentaries on national and European Patent Office decisions, as well as on Italian biotech law. He is frequently invited to lecture on patent issues in the fields of chemistry, biotechnology or nanotechnology.

Claudio’s most recent publication is on Nature Biotechnology, Vol. 36, No. 5, May 2018; pp. 402-405, entitled “Patentability of Antibodies for Therapeutic use in Europe” available at: https://rdcu.be/NFqc [http://em.rdcu.be/wf/click?upn=lMZy1lernSJ7apc5DgYM8QDAY50EvkFkM2pd3nzB4Qc-3D_Bv5IPa4ZR8A8gQwUebUsVPkXP3WoOUOKQtSxW4Upxe6wCmvk1oN85-2BDIjkz8szmUcLhQ3a9Jir7bH9aaGTAOev9XK0KGCDgo5J1qSLLV8PKjdGqKNiob2ePYwHvzcNs3cxSYSe8jf21ArW34wmD-2BGIvYr6r3d0Dp-2FL2NzXhN-2F9-2Ft9-2FyRl-2Bs61PSqTsKgzenOe4FfA1xfAvPxHaZeULbdT7Hid4ro9gC7KLfgqr-2Ftz5Zk7D-2BDuZnvMyTDhw5TpG59EyxwN7swQwGwZnA7tg3MN9VWHSAnuCRsbxxn3mmrayQ-3D]

Memberships
Italian Industrial Property Consultants Institute [http://www.ordine-brevetti.it/], Institute of Professional Representatives before the European Patent Office [http://www.patentepi.com/],AIPPI, FICPI [http://www.ficpi.org/] (Biotechnology Committee); enrolled with the Register of Court-Appointed Experts on Industrial Property of the Court of Rome.

Recognitions and Quotations

Who’s Who Legal: Patents 2017-2019.

Managing Intellectual Property IP Star Italy 2014-2020.

Intellectual Asset Management Patent 1000 – The World’s Leading Patent Practitioners 2013-2020.
Intellectual Asset Management Global Leaders 2020.

Euromoney Guide to the World’s Leading Patent Law Practitioners 2009-2019.

 

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