“ Zur Verteidigung der Erfinder, bewaffnet mit dem Schild der Patente,

unter dem Banner der Erfindungen, welche den Fortschritt vorantreiben... ”

english version versione italiana

Modiano Micaela N.

Partner

Education
University Degree in Chemistry, Harvard University, USA,
Master in Intellectual Property Law, University of London, UK,
Post-graduate Diploma in European Patent Litigation, University of Strasbourg, France

Practice
Patent Law;
Trademark Law;
Design Law;
Litigation;
Internet Law;
Copyright Law;
Transfer & Assignments;
Supplementary Protection Certificates

Professional Qualifications / Admissions
European Patent Attorney;
European Trademark Attorney;
Italian Patent Attorney;
Italian Trademark Attorney

Legal Areas of Expertise
Patent Law;
Trademark Law;
Design Law;
Copyright Law;
EC Competition Law;
Unfair competition Law;
Community Law;
Litigation;
Out of court negotiation;
Drafting of agreements (licensing, distribution, confidentiality, coexistence, etc.);
Due diligence;
Supplementary Protection Certificates

Technical Areas of Expertise
Organic and inorganic chemistry;
Pharmaceutical chemistry and biochemistry;
Biotechnology;
Vaccine technology;
Polymer chemistry

Patent / Design Specialties
Pre-filing search analysis;
National, European and foreign filing and prosecution;
Community Design filing and prosecution;
European opposition proceedings and appeals;
Patent / Design infringement and validity opinions;
Clearance opinions;
Technical counsel in national litigation;
Supplementary protection certificates

Trademark Specialties
Pre-filing search analysis;
Italian trademark filing and renewal;
Foreign trademark filing, prosecution and renewal;
Opposition proceedings before the EUIPO and worldwide;
Trademark infringement and validity opinions;
Clearance opinions

Associations
EPI (European Patent Institute);
FICPI (Fédération Internationale Conseils en Propriété Industrielle);
AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle);
INTA (International Trademark Association);
LES (Licensing Executive Society);
Italian Intellectual Property Bar Association;
EPLIT (European patent litigators association)

Professional Activities
Member of the epi Council (Council of the EP attorneys bar association).
Member of the EPPC (European Patent Practice Committee of the epi).
Associate member of the LitCom (Litigation Committee of the epi).
Member of EPLIT (European patent litigators association).
Former Member of the European Qualifying Examination Committee (Paper C - Oppositions).
Lecturer at the EPO "Train the trainers" seminar and at the national seminars on EPC2000.
Lecturer at the yearly Best Practices in Intellectual Property conferences (Tel Aviv, Israel).
Speaker at the Aspen Institute conference on Women in Technology (Expo, Milan).
Speaker at the Women in Biotech conference (Munich, Germany).
Lecturer on Patent Law at the European patent litigator course of the Polytechnic University of Milan.
Lecturer on Patent Law at the JLS Master in IP Law.
Lecturer on Patent Law at the Polytechnic University of Milan.
Lecturer on Patent Law at the University of Bologna.
Co-author of the book “Claims Limitation in Patent Litigation”.
Co-author of the book “Diritto industriale italiano” (Scuffi-Franzosi).
Co-author of the book “The EU Patent Protection: Lights and Shades of the New System” (AIDA).
Co-author of the book “European SPCs Unravelled: A practitioner’s Guide to Supplementary Protection Certificates in Europe”.
Member of the Editorial Committee of the Italian Patent Attorneys association newsletter.
Lecturer at EuroForum's Community Trademark Conference.

Recognitions
Named as an expert in the patents category by Euromoney’s Expert Guides every year since 2017.
Included in "Patent Stars" by Managing IP in its "IP Stars" every year since 2017.
Included in the "IAM Patent 1000" by Intellectual Asset Management in its list of top patent experts in litigation for 2018 and in prosecution for 2018, 2019, 2020 and 2021.
Nominated in the "Life Sciences" category for the "Women in Business Law 2019" award by Euromoney's Expert Guides in 2019.

Languages
English;
German;
Italian;
French;
Spanish


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