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Axel Casalonga

Associé / Paris

Conseil en Propriété Industrielle Brevets

Conseil en Propriété Industrielle Marques, Dessins & Modèles

Mandataire agréé près l’OEB

Mandataire agréé auprès de l’EUIPO

Docteur en droit

a.casalonga@casalonga.com


Assistante : Catherine Liot

c.liot@casalonga.com



Senior Partner at CASALONGA since 1975, Axel 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 has assisted patent lawyers in complex patent litigation procedures in France and in other countries in various technical fields including mechanical and electronics.

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

Adjunct teaching / Professional organizations

He was a 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 from 1980 to 2022.

He was Chairman of the European Patent Practice Committee (EPPC) of the European Patent Institute (epi) from 1999 to 2005 where he drafted, organized 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.

From 2011 to 2021, Axel was 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.

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

Axel 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 – entry into force in 2022.

Axel taught patent law at the CEIPI (International Center of Industrial Property) in Strasbourg where he provided a basic course on the conditions for patentability in France and Europe from 1987 to 2015.

He was member of the Education Committee of CEIPI and was a member of the CEIPI Board until 2007.

Axel taught patent litigation at CEIPI in Strasbourg since the creation of this course from 2004 to 2009.

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.

He also taught Community design law (now EU design law) in the Magister Lvcentinvs program at the University of Alicante until 2011.

Elected Chairman of the French Patent and Trademark association (Compagnie nationale des conseils en propriété industrielle – CNCPI) from 1994 to 1996, Axel is a member of numerous professional organizations such as : the “Association des Conseils en Propriété Industrielle” (ACPI), the European Patent Institute (epi), the International Federation of Intellectual Property Attorneys (FICPI), the Licensing Executives Society (LES), the Asian Patent Attorneys Association (APAA), the European Patent Litigators Association (EPLIT), the French association Union pour la Juridiction Unifiée des Brevets (UJUB).

Latest publications

  • - May 2022 : "Lis pendens and connexity before the UPC" with Marianne Gabriel – published in the Industrial Property Review. For more information, see under this link

Latest interventions

  • - June 2022 : Answering questions on the differences between EP without opt-out and UP, the comparison of protection costs, measures to preserve evidence and the conditions for a declaration of non-infringement action & workshop on “What to decide for my protection strategy : STAY IN or OPT OUT (the trial and its preparations)” – webinar entitled “Companies, ready or not ready for the UPC ?” organized by the Dispute Resolution Committee of LES France (Licensing Executives Society France)

Education

  • - Ph.D. in Industrial Property Law of the Université of Paris II – 1989
  • - Postgraduate Diploma in Industrial Property Law, specializations in Patents, Trademarks and Industrial Designs, at CEIPI (Strasbourg) – 1973
  • - Master of Industrial Property (Paris II University) – 1971
  • - Graduate Engineer of the Swiss Institute of Technology (ETH Zurich) – 1967

Languages

French, English, German

Latest awards

Publications et conférences