Micaela Modiano

Co-managing partner

Micaela is a co-managing partner of the firm, and she is also the head of the chemistry & life sciences department and of the European patent department.

She assists clients with drafting, filing and prosecuting their patent applications and managing their patent portfolios. Her practice also includes freedom-to-operate and prior art searches, freedom-to-operate and validity opinions, out-of-court activities and litigation before national courts, oppositions and appeals at the European Patent Office, due diligence and strategic IP planning both for research-driven companies and for non-patent owners.

Micaela also assists clients with license, distribution, confidentiality and settlement agreements in general.She has extensive experience with respect to supplementary protection certificates, both in terms of filing strategy and prosecution, assessment, advice and litigation.

Micaela is frequently involved in pan-European or international litigation on behalf of foreign clients, and often assists clients involved in patent litigation in the US, including helping clients with discovery and depositions. She also has experience in the field of European competition law, national unfair competition law, as well as regulatory and administrative law in the field of pharmaceuticals and agrochemicals.

Micaela assists clients in the fields of organic and inorganic chemistry, pharmaceutical chemistry, nutraceuticals, biochemistry, biotechnology, vaccine technology, immunotherapy, gene technology, polymer chemistry, agrochemicals, industrial chemistry, environmental chemistry, nanotechnology and medical devices.

Her clients range from large multinational corporations to small/medium enterprises and individual inventors, as well as research institutions, universities, technology transfer offices, venture capital firms and angel investors, both foreign and domestic, with a particular focus on foreign clients.

Micaela obtained her post-graduate diploma with a thesis titled “Differences between oral hearings under UK practice and under UPC [Unified Patent Court] rules”.

About me

My favorite movie is... Home for the Holidays - Jodie Foster

I’ve lived in... the US and the UK

In my free time I like... spending time with my family and going for walks

MY CV

Contact me

Focus

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

Professional qualifications
European patent attorney
European patent litigator before the Unified Patent Court
European trademark attorney
Italian patent attorney
Italian trademark attorney

Specializations in patents and design
Due diligence on patents, models and designs
Filing and prosecution of national, Community and international utility models
Filing and prosecution of national, Community and international designs
Filing and prosecution of national, European and foreign patents
Novelty and freedom-to-operate searches
Oppositions and appeals before the European Patent Office
Oppositions and appeals before the national patent Offices, domestic and worldwide
Patent, model and design portfolio analysis and/or management
Patent, model and design validity and infringement litigation
Patent, model and design validity and infringement opinions
Pharmaceutical regulatory law
Supplementary protection certificates
Technical advice/assistance to the court in national litigation

Technical areas of expertise
Biotechnology
Organic and inorganic chemistry
Pharmaceutical chemistry and biochemistry
Polymer chemistry
Vaccine technology

Languages
English
French
German
Italian

Associations
AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle)
Association of Italian Intellectual Property Attorneys
AUTM (Association of University Technology Managers)
EPI (European Patent Institute)
EPLIT (European patent litigators association)
FICPI (Fédération Internationale Conseils en Propriété Industrielle)
Institute of European trademark and design attorneys
Institute of Professional Representatives before the European Patent Office
INTA (International Trademark Association)
Italian Industrial Property Consultants Institute
LES (Licensing Executive Society)

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 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 at the EPO "Train the trainers" seminar and at the national seminars on EPC2000
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

Acknowledgments
Ranked by Leaders League as "Leading professionals for patent prosecution" in 2024
Named as an expert in the patents category by Euromoney's Expert Guides every year from 2017 to 2021
Included as an expert in the patent category by the 2022 edition of Women in Business Law Expert Guide
Included in "Patent Stars" by Managing IP in its "IP Stars" rankings every year since 2017
Included in "IAM Patent 1000" by Intellectual Asset Management in its list of top patent experts in litigation for 2018, and in prosecution every year since 2018
Nominated in the "Life Sciences" category for the "Women in Business Law 2019" award by Euromoney's Expert Guides in 2019