Andrea Perronace Image

Andrea Perronace

Partner, Jacobacci & Partners

Andrea Perronace is a European Patent Attorney with Jacobacci & Partners.  He has been working in the IP field for 20 years drafting, prosecuting and litigating patents before EPO and national offices/courts. He has a master’s degree in Physics and a Ph.D. in Physical Chemistry, with specialization in computational models in both.

Andrea is a former external expert for the European Commission in the field of Anti-Counterfeiting Technologies and has been admitted as a Court Expert before the Specialized Intellectual Property Section of the Court of Rome.

Andrea is a full member of the ICT Thematic Group of the European Patent Practice Committee (epi) and participates in EPI’s Guidelines’ and ICT subcommittees e whose aim is to submit to the EPO proposals for improvement of the Guidelines for Examination.

As an epi delegate, he was a speaker at the “Patenting Artificial Intelligence” Conference at the European Patent Office in Munich, May 30, 2018.

He works on a broad range of subject matter in the physics, telecommunications, electricity, electronic and electro-mechanical fields, including ICT-related matters. He also teaches as tutor in patent law courses organized by Centre d’Etudes Internationales de la Propriété Intellectuelle de l’Université de Strasbourg, publishes articles on patent matters and is frequently invited to speak at the European Patent Academy.

Recent Articles by Andrea Perronace

Exploring the 2022 EPO Guidelines for Examination

The European Patent Office (EPO) recently published its Guidelines for Examination 2022, which come into force on March 1. Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability and biotech sections. Yet some changes have been made, mainly to software patentability guidelines, as well as to other important sections, such as partial priorities and amendments to the description. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

Patenting Simulations at the EPO: Decision G1/19 and Its Consequences for Computer-Implemented Inventions

The Enlarged Board of Appeal of the European Patent Office (EPO) recently published its decision No. G1/19 on patentability of simulations. There was great anticipation for such a decision, after landmark decisions 641/00 (COMVIK) and G3/08, mainly due to the ambiguous formulations of the questions of law to the Enlarged Board of Appeal. The result is “business as usual”, but several clarifications might be useful in the future. In the following, we first summarize the questions of law, the clarifications of the Enlarged Board of Appeal and then infer possible consequences for applicants and practitioners.

What to Know About the European Patent Office 2021 Guidelines for Examination: Part I – CII and Procedural Changes

The European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1.

The trend towards an accurate and detailed explanation of substantive and formal requirements is maintained, keeping up to speed with the recent case law. The changes are limited but helpful, and this witnesses the effort by the EPO in past years to arrive at a stable text of the Guidelines, particularly concerning the software and biotech patentability sections.

What to Know About the 2019 European Patent Office Guidelines for Examination

The European Patent Office (EPO) recently published its Guidelines for Examination 2019, which came into force on November 1. Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability sections. Yet some changes have been made to software patentability guidelines as well as to other important sections, such as the numerical ranges and clarity matters. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

Techniques for Patenting Blockchain in Europe, the United States, China and Japan

Patentability of Blockchain is a hot topic primarily because of the tremendous expectations around this emerging, disruptive and promising technology. On December 5, 2018, the European Patent Office (EPO) held an International Conference on Patenting Blockchain at The Hague to explore this topic in detail.

Practitioners who work on patent applications or clearance advice in this field should be careful in the choice of keywords for prior art searches and should be aware of what kind of patent they are seeking: core technology (with possible risks of a pure algorithm objection), applied technology, and virtual currency claim (which is excluded in China).

EPO Publishes Revised Guidelines on Computer-implemented inventions

The European Patent Office Guidelines 2018 were recently published on the European Patent Office (EPO) website. All substantial changes in the new Guidelines relate mainly to sections discussing the First Hurdle, the EPO equivalent to patent eligibility. Although the First Hurdle can be overcome simply by adding the presence of a computer, the number, quality of and relationship between technical features are essential in dealing with the Second Hurdle, or inventive step. A thorough analysis of whether each claimed feature is technical, or not, is essential to claim drafting and prosecution of a computer-implemented invention at the European Patent Office and many also believe may help assessing eligibility and patentability before the United States Patent and Trademark Office. Thus, U.S. patent practitioners working with Computer-implemented inventions (CII) would do well to review the new EPO 2018 Guidelines.