Axel Casalonga


Personal assistant : Catherine LIOT

c.liot at casalonga.com



Partner / Paris and Munich

French Patent Attorney

European Patent Attorney

European Trademark and Design Attorney

Doctor at Industrial Property Law

a.casalonga at casalonga.com

Education

  • - Doctor at law of Industrial Property – Paris II University - 1989
  • - Post-Graduate in Industrial Property Law at CEIPI (Strasbourg) – 1973
  • - Master of Industrial Property (Paris II University) - 1971
  • - Graduate Engineer of the Swiss Institute of Technology (ETH Zurich) - 1967

Practice description

Senior Partner of CASALONGA & ASSOCIÉS since 1975, Axel Casalonga has practiced Industrial Property law since 1969. He is recognized as one of the most prominent patent specialist in France

He has a large practice of drafting and negotiating contracts on patents and know-how. He specializes in the preparation and defense of patents in mechanical and in the software field. He has carried out numerous audits and evaluations of patent portfolios and brands, including mergers and acquisitions.

Thanks to his long experience of patent litigation, he has conducted numerous operations of infringement seizure to obtain evidence of infringement. He assists patent lawyers in complex patent litigation procedures in France and in other countries in various technical fields including mechanical and electronics.

He is handling numerous opposition procedures before the EPO. His experience in oral procedures before Opposition Divisions and Boards of Appeal of the EPO is widely recognized within the EPO itself.

He is member of the Council of the European Patent Institute (epi) which groups all European Patent Attorneys and represents the profession before the European Patent Organization.

He was Chairman of the European Patent Practice Committee (EPPC) of the European Patent Institute (epi) from 1997 to 2005 where he drafted, organised and supervised numerous epi position papers on various subject matters, including the PCT, the Community Patent System, the EPC 2000 as well as "amicus curiae" briefs to the Enlarged Board of Appeal of the EPO on questions such as disclaimers, diagnostic methods, …etc.

He was involved in the discussions of the previous drafts of European Jurisdiction (EPAC, EPLA) which were held even before 2000.

Since 2011, Axel has been nominated Chairman of the Litigation Committee of the European Patent Institute (epi) which is preparing position papers for the EU Commission and the EU Council relating to the Unified Patent Court and its proposed Rules of Procedures.

Axel Casalonga is part, as an independent personality, of the UJUB Association (French association “Union pour la Juridiction Unifiée du Brevet”), which gathers all the French professional associations interested in patent litigation (lawyers, patent attorneys and representatives from the industry) and was dedicated to promote Paris as the seat of the central division of the Unified Patent Court and is now working with the French public authorities to organize the operation of the central division as well as the French local Division of the UPC..

Adjunct teaching / Profesionnal organisations

Axel teaches patent law at the CEIPI (International Center of Industrial Property) in Strasbourg where he provides a basic course on the conditions for patentability in France and Europe since 1987.

He is member of the Education Committee of CEIPI and was a member of the CEIPI Board until 2007. He was responsible for post-graduate course at the Swiss Federal Institute of Technology in Zurich (Switzerland) on industrial property (specialized Master IP NDS) from 1997 to 2009.

Axel Casalonga teaches patent litigation at CEIPI in Strasbourg since the creation of this course in 2004.

He is member of numerous professional organizations such as the French Patent and Trademark association (CNCPI “Compagnie Nationale des Conseils en Propriété Industrielle”) of which he was elected Chairman from 1994 to 1996, the “Association des Conseils en Propriété Industrielle” (ACPI), the International Association for the Protection of Intellectual Property (AIPPI), the European Patent Institute (epi), the International Federation of Intellectual Property Attorneys (FICPI), the Licensing Executive Society (LES), the European Community Trademark Association (ECTA), the International Trademark Association (INTA), the Asian Patent Attorneys Association (APAA), the European Patent Litigators Association (EPLIT), the French association Union pour la Juridiction Unifiée des Brevets (UJUB).

Publications

  • - 2013: “How and when to bring a case before the UPC Central Division”, Patents in Europe 2013/2014
  • - 2002: « Is e-commerce patentable in Europe ?", IIC et GRUR International
  • - 2000: "The protection of software related inventions in Europe", Collective Book on Industrial Property LITEC :

Conferences

  • - March 2014: “Representation of Patent Attorneys Before the Unified Patent Court: Considerations, Dilemmas, Suggestions and the Best Routes Examined” – 26th Forum on Biotech Patenting – Munich – Germany
  • - December 2013: “UPC mock trial - Act 2: Electronic Patent Litigation” - 8th Edition of IP Summit – Paris - France
  • - November 2013: 3 days conference on Patents in Europe and the future European Patent – Beijing – China
  • - April 2013: “Europe United: The Unified Patent Court & Unified Patent” - Meeting organized by the Austin Patent Law Association – Austin – USA
  • - December 2012: “Patents Reloaded” – A comprehensive blend of key patent reforms - IP Summit 2012 – Brussels – Belgium

Languages

French, English, German