JUVE Comment

This French IP boutique is known in the market for the well-rehearsed teamwork between its lawyers and patent attorneys. It enjoys an excellent reputation for litigation before the French courts and in EPO oppositions, as well as for its vast prosecution experience. The client list in chemicals and life sciences is particularly impressive. Regular client Total Energies, for instance, ramped up collaboration and is entrusting the team all-round in filing, prosecution and numerous EPO oppositions. For regular client L’Oréal, the firm enjoyed a winning streak at the EPO against competitor Henkel and now also advises the cosmetics corporation on mechanics patents in connection with packaging.

With its mixed approach, the firm conducted several of the first appeals against the national patent office (INPI), for L’Oréal among others. For life sciences client Biogaran, Casalonga was involved in one of the year’s landmark decisions at the Court of Appeal regarding the question of whether a PI can be issued on the basis of a patent application.

The team is also active in one of the few major suits in the telecoms sector currently underway in France with its work for Sagemcom. Additionally, the prosecution team welcomed two new arrivals in partners Augustin Le Tourneau and Ghislain de Trémiolles, who complement the team well.

Strengths

Litigation for manufacturers of generic pharmaceuticals. Patent prosecution regarding pharma, biotechnology, digital communication, computer technology and electronics.

European set-up

For years, Casalonga has been on a drive towards expansion both in terms of staff and strategically, which the IP boutique skilfully manages while remaining financially independent. As a result, it has risen up to become a major player in both national and European litigation, in the latter before the EPO above all. With its successful teamwork between patent attorneys and lawyers, deeply rooted in the firm’s structure, it is well set for UPC litigation as well, even though its clients have not yet been involved in the first UPC proceedings.

A pan-European merger or close cooperation with litigation boutiques from neighbouring jurisdictions could help Casalonga’s positioning in European litigation. All the firm has at present is a small office at the EPO headquarters in Munich.

Recommended individuals

Arnaud Casalonga (“regularly my first choice”, client), Marianne Gabriel; patent attorney: Francis Zapalowicz (digital communication and technology, electronics)

Team

8 lawyers, 24 patent attorneys

Partner moves

Augustin Le Tourneau and Ghislain de Trémiolles (both patent attorneys from Santarelli)

Specialties

Full-service patent prosecution practice, including revocation cases and EPO proceedings with recommended expertise in pharma and biotechnology, digital communication and computer technology. Litigation mostly for pharma companies, as well as cases in electronics and mechanics.

Clients

Litigation: Biogaran (defendant) against Novartis over multiple-sclerosis drug fingolimod/Gilenya; Biogaran (defendant) against MSD over cholesterol-lowering drug ezetimibe/Inegy (public knowledge); Biogaran (defendant) against Daiichi Sankyo and Sanofi over SPC for pravastatin; Zentiva (defendant) against Eli Lilly over cancer drug Alimta (public knowledge); Sagemcom as co-defendant of Orange and Bouygues against Intellectual Ventures over SEPs for DSL (public knowledge); INPI oppositions: L’Oréal (defendant) on Appeal concerning cosmetics. EPO oppositions: Biogaran against Novartis over everolimus; Total Energies (opponent) against Shell in EPO opposition and Appeal over liquid-fuel composition for hybrid electric vehicles; L’Oréal (defendant) against Henkel in EPO opposition over compositions for cosmetics; L’Oréal (defendant) against Unilever in EPO opposition over packaging; Biogaran (opponent) against Amgen in EPO Enlarged Board of Appeal case over cinacalcet.