Editor: Your career has been very distinguished - both in your firm, as a one time general counsel and corporate officer, and as a lecturer at Brown University, Harvard Medical School and the Center for Gene Therapy and Surgical Research in Switzerland. Please give us a bit more background.
Elrifi: I started my career in Toronto with a firm, Bereskin and Parr, which is a patent boutique. I later moved to another intellectual property boutique in New York called Fish & Neave where I worked for several years. Ultimately, I came to Mintz Levin to found the intellectual property department where I currently work. That department has grown from three lawyers to approximately 80 lawyers with patent lawyers in Boston, New York, Washington, Reston, Virginia and London, England.
Editor: What advantages for the firm and its clients did you and your partners foresee in setting up the London office?
Elrifi: Among the life science and high tech companies, but particularly the life science companies, one of the most important assets these companies have is their intellectual property portfolio. They typically have extraordinarily exciting technologies, but it takes several years for them to move through the regulatory process to gain approval for a drug or product. Insuring and maintaining the value of those intellectual property assets is critical for them to attract the financing they need to move these products through the regulatory process. Keeping a uniform, consistent intellectual property strategy, not just in the United States but also in Europe, is very important to them. We believe we are one of the first firms that can genuinely offer truly uniform, integrated European and United States patent law to our life science and high tech clients. That is part of the motivation for setting up a London office.
Editor: What was your role in planning for this expansion?
Elrifi: Many of our U.S. clients were urging our expansion to London. I spoke with several IP colleagues and began the planning for the office. A lot of people at Mintz were very supportive, and many have played a role in helping us achieve the reality of opening a real live office with live people sitting at their desks. I have been a coordinator along the way, but many people have participated in the recruiting effort of some superb European patent attorneys. In the real estate effort, we have a fabulous location and space that will allow us to provide excellent service to our existing clients and to new clients.
Editor: How many attorneys do you have in London?
Elrifi: We are continually hiring. By the beginning of our fiscal year, March of 2004, we expect to have a significant number of European patent attorneys and staff in the London office, numbering slightly less than a dozen.
We are definitely seeing the beginnings of an economic recovery in Europe. Usually coincident with an economic recovery is an increase in the funding that flows into life sciences emerging companies. When those companies representing that portion of our client base are well financed, they tend to protect their inventions and platform technologies so you see an increase in patent filings. If the economic recovery continues and is maintained, I expect we will grow. It really depends on the activity in the European market as well as the activity to some degree of the U.S. market.
Editor: Will the London office cover all of the EU?
Elrifi: The short answer is yes. The longer answer is that it will cover the member states that are party to following the rules of the European Patent Office. We also file and prosecute patent applications in countries that are not under the jurisdiction of the European Patent Office. Some of those will be run out of London and some of those will be run out of our offices in the Unites States.
Editor: Are you concentrating more heavily in biotech or all technology?
Elrifi: Our client base effectively falls along two main categories, life sciences and high tech. We will be following both of those areas in the European patent office.
Editor: Why did you select London as the venue for your first foreign office?
Elrifi: There are a number of attractive locations in Europe. London is one of the most attractive. Munich is also attractive to us because the European Patent Office is located there. London is also a key financial center and is a very straightforward destination for travel from the United States, being only five hours ahead of EST. London also has connections with many locations in which we have clients elsewhere around the world. It is a very centralized hub for us. London is a terrific jumping off point for us, and we look forward to expanding our footprint in Europe.
Editor: Is the London office a model for such expansion?
Elrifi: It is. Law firms are service industries which have to respond to the needs of our clients. London is a place where we have a particular client need that was important for us to satisfy. As we grow and expand, we will contemplate other European markets, as our clients need us to be in those markets.
Editor: Do you plan on concentrating your practice solely in IP or will you become a full service firm in time?
Elrifi: What we contemplate is broadening the range of services we would provide to the clients that are in our sector. I don't think it is fruitful for us in the first instance to take on established law firms in the London or European markets; they are very good at what they do. We intend to provide services that our clients need that the traditional firms have not provided. We like to grow slowly and to a strength that we have now, rather than to expose ourselves to undue risk. We would rather concentrate on providing services we know are required today.
Editor: Are most of your clients U.S. clients who are really global clients or are you seeing an influx of UK clients?
Elrifi: Our client base is global or international in the sense that we have clients whose home offices are in many different countries. Many of those clients have their home offices in Europe, whether the clients themselves are global or not. We certainly have clients that are U.S.-based with need of European patent counsel, European clients with need for European patent counsel and international clients with need for European patent counsel. We are serving all three of those types of clients.
Editor: As to your own practice area, is it biotech or high tech?
Elrifi: My particular area is life science because I know that area a little bit better. But we certainly have the skill sets in the firm to do high tech and a significant number of my partners are concentrated in that sector.
Editor: Of the dozen or so attorneys in London, I would assume they all have Ph.D.'s or advanced degrees.
Elrifi: Some do. We try to recruit in any office people with the appropriate educational background. Sometimes in the life sciences that is a Ph.D. or someone with industry experience, or both. For high tech we often look for people with electrical engineering backgrounds or a physics background or something that will suit them for the high tech arena.
Editor: I understand that it takes longer to prosecute patents overseas than it does in the U.S. I would think this would be a much more labor-intensive effort on the part of your attorneys in London
Elrifi: It can be the case relating more to a difference in the process. The European rules do differ in significant ways from the Unites States rules. There are different allocations of resources to the timing of examination of file patent applications in the United States Patent Office versus the European Patent Office. On both sides of the Atlantic, people will be working very hard, but it is nice to have the expertise in both patent offices under one roof
Editor: Tell us a little about the differences in UK and EU laws regarding intellectual property rights.
Elrifi: One of the main differences is that in the United States the patent law system is still a "first to invent system" whereas in Europe it is a "first to file system." Whoever gets to the patent office first in Europe wins, which is not necessarily true in the U.S. Another difference is that virtually all of the proceedings in Europe are public, and there is an opposition procedure after the patent has been granted. There is no such opposition procedure in the U.S., and much of European practice focuses on the opposition proceedings. There are other differences relating to the types of allowable subject matter, particularly in the life sciences space. For instance, methods of medical treatment are not permissible subject matter in Europe but are permissible subject matter in the U.S. At various levels of detail there are some similarities and some differences.
There was a recent decision called the Edinburgh Decision that relates to patenting of embryonic stem cells in the European Patent Office. There is a prohibition on the patenting of embryonic stem cells in the EPO, as I understand that decision, where no such prohibition would exist in the United States. The law will continue to evolve as people sort through the political, ethical and patent issues connected with new technologies.
Editor: Is there a tendency to make European patent law uniform?
Elrifi: That is the purpose of the European Patent Office. The signatory countries that have granted the European Patent Office jurisdiction all abide in large part by its rules. You prosecute a single patent application before the European Patent Office which application is nationalized or regionalized into the member states as the applicant elects, including England, France, Germany, Switzerland, Spain and so on.
Editor: It is becoming a united Europe in many senses.
Elrifi: Correct. The European Patent Office has been in place for some time. It is interesting to watch the EU develop economically at the same time as the patent cohesion is taking place.
Editor: Do you find you have referrals from British firms or American firms practicing in London because of your expertise?
Elrifi: Some European firms have good expertise in biotech, but it typically relates solely to the EPO patent law as opposed to a combination of both European and U.S. patent law. What we are trying to highlight is that for a single company to fully understand these issues, it can be advantageous for a single law firm to have those two distinct expertises under a single roof. The client will then get consolidated, coherent information.