Patents Workshop: Freedom to Operate (FTO)

Overview

In this comprehensive patents workshop, we’ll guide you through the critical concept of Freedom to Operate (FTO) and how to assess whether your innovation is at risk of infringing existing patents. Understanding FTO is essential for any business or inventor seeking to commercialise new technologies without legal hurdles.

We’ll start by addressing the question: How do you navigate the existing patent landscape? You’ll learn the principles of using FTO searches to identify potential patent risks and to understand how the global patent system might impact your freedom to operate.

The workshop will also cover key topics like infringement, opposition, revocation, and invalidity, equipping you with the tools to handle potential legal challenges. We'll dive into how to identify infringement risks early in the process and explore strategies for defending against patent claims.

Additionally, we’ll explore the defences to infringement, from invalidating the patent to demonstrating non-infringement or use of exceptions, giving you the confidence to protect your innovations.

Speaker

Catherine Jewell, Partner, Beck Greener LLP

Catherine is a chemist by training, having completed a degree, PhD and post-doc in that discipline before joining the intellectual property profession. Catherine’s focus on the application of patent and trade mark law within the chemical, pharmaceutical, and materials sectors has been the cornerstone of her professional journey. Her expertise in patent drafting, prosecution, and strategic IP advice supports clients in navigating complex legal landscapes. With a robust skill set honed over nearly twenty years in the profession, Catherine has been instrumental in growing her clients' intellectual property portfolios and helping to maximize their worth.

Catherine’s commitment extends beyond client work to shaping the next generation of STEM professionals and broadening access to IP careers. Leading Beck Greener’s Corporate Social Responsibility outreach initiatives, she has been the driving force behind impactful projects that inspire students to explore science and law. Coupled with her contributions as a Visiting Lecturer at UCL, Catherine strives to ensure that future entrepreneurs are well-versed in the intricacies of intellectual property within the pharmaceutical and chemical industries.

In her free time, Catherine enjoys reading and a nice bit of light murder mystery, as well as biking, running and destructive gardening (not quite the same as rugby, but the closest thing now available).

James Stones, Partner, Beck Greener LLP

James read chemistry at Imperial College London, graduating in 1992. He stayed on at Imperial to conduct research into tethered Diels-Alder reactions for his doctorate, awarded in 1996. After discovering that he was all thumbs in the lab, James left the bench to join the patent profession and qualified as a European Patent Attorney in 2004 and as a Chartered Patent Attorney the following year. In 2010, he became a partner at Beck Greener LLP and now heads up the Chemistry team.

James has a broad client base across the chemistry, pharmaceutical and chemical engineering sectors. He has worked as external counsel for Air Products and Chemicals, Inc. for over 25 years on many different projects involving, e.g., cryogenic air distillation, gas purification, carbon capture, and more recently hydrogen production.

James not only drafts and prosecutes patent applications, but also defends his clients’ patents from attack during post-grant proceedings and preserves his clients’ freedom to operate by challenging patents of their competitors.

James is a visiting lecturer in IP at UCL School of Pharmacy and has also delivered IP lectures to post-graduate students in biosciences at University of Exeter and in chemical engineering at Imperial College.

Sarah-Jane Crawford, Associate, Beck Greener LLP

Sarah-Jane has been in the Intellectual Property Profession for over a decade. Prior to joining the profession, she obtained a degree in Chemistry for Drug Discovery before completing a PhD in organic synthesis. Sarah-Jane’s patent practice spans a wide range of technologies across the chemical, chemical engineering and pharmaceutical sectors. Her specialisms include materials chemistry, air and gas separation and purification, semiconductor manufacture and techniques for the site-specific delivery of drugs.

Sarah-Jane enjoys working with clients of all sizes, from individual inventors to large multinational companies. Her expertise lies in patent drafting and prosecution at both the UK and European Patent Offices. She also handles the global prosecution of clients’ patent portfolios and has considerable experience of representing clients in oppositions and appeals at the European Patent Office.

Sarah-Jane is a passionate STEM advocate and has been heavily involved in the firm’s STEM outreach program dedicated to inspiring the next generation of scientists and engineers. Through her role as a STEM Ambassador, she drafted the first UK patent application to be filed under the firm’s student pro bono scheme.

When she is not working or being kept busy looking after her two young children, Sarah-Jane enjoys spending time outdoors or getting lost in a good book.

The material presented in this webinar has not been peer-reviewed. Any opinions are the presenter's own and do not necessarily represent those of IChemE. The information is given in good faith but without any liability on the part of IChemE.

This event is one of an entire series of webinars by Beck Greener, find out more.

Time

09:00–17:00 BST.