Simon Kiddle

Simon has more than 30 years’ experience in original patent drafting, patent strategy European oppositions and appeals, including complex multi-party proceedings, and due diligence work, across the life sciences field for both large and small molecule therapeutics. He has worked on the portfolios covering many top selling biologics and has been at the forefront of patenting in the field of precision medicine and life cycle management for therapeutics. Simon heads up the firm’s Life Sciences practice group and is a member of our Management Board.

Areas of Expertise

• biologics such as antibody, protein and peptide therapeutics
• tumour necrosis factor receptor and ligand biology
• small molecule pharmaceutical chemistry
• industrial bioscience, especially enzyme engineering for various industrial and domestic uses
• next generation sequencing
• formulation technology
• biological nanoparticles and their uses
• microfluidic devices
• microarray technology

Clients

Simon works with large and small biotech companies, universities and research charities. He also advises start-up companies and investors in patent strategy.

Background

Simon has a chemistry degree from Oxford University. He joined Mewburn Ellis LLP in 1991, qualifying as a Chartered Patent Attorney in 1994 and a European Patent Attorney the following year. He joined the partnership in 1997.

Opposition highlights

Simon has represented patent proprietors, opponents and applicants in more than 200 opposition and appeal proceedings.

Notable EPO Examination Appeal cases

• EP0904366, T70/05 (Apoptosis receptors/Genentech), CLBA, 10th Edition, II.D.3.1.8 and 3.1.9, page 467: Intermediate generalisation of prior art amino acid sequences causing loss of priority entitlement.
• EP0768889, T93/03 (Lymphotoxin/Genentech): Medical use of combination therapy not anticipated by in vitro experiments in the prior art.
• T1262/04 (Non-invasive localization/Leland Stanford), CLBA, 10th Edition, I.B.2, 2.1.2 and 2.2.2, pages 41 and 42: Exclusion from patentability under Art. 53(c) for claims to experimental animal models, scope of the exception under Rule 28(d) and credibility of disclosure in prior art documents.
• EP1267875, T1642/06 (Sigma receptor/Spruce), CLBA, I.C.7, page 165: Successfully established the principle that medical use claims based on an undisclosed technical effect identifies a new clinical situation.
• EP1889915, T0879/12 (Apo-2 ligand/Genentech), CLBA, II.F.5, page 631: Successfully established the legal principle that of no double patenting between Swiss form medical use claims and claims in the EPC2000 medical use claims.

Notable EPO Opposition/Appeal cases

Microarray litigation: for Multilyte Limited vs OGT and Affymetrix

• EP0619321, T0384/08 (Method for investigating/Affymetrix: Successfully achieved revocation of key microarray patent for >1000 locations on a chip. Also cited in CLBA on legal point about transferability of oppositions and status of opponents, CLBA, III.O.2.1, IV.C.2, V.A.2, pages 989, 1191 and 1303.
• Coordinated corresponding international litigation across UK, Germany and the United States.
• EP0373203, T0378/02 (Analysis of polynucleotide sequences/OGT), cited in CLBA relating to clarity of relative terms, II.A.3, page 330: Successfully achieved limitation of second early DNA array patent.

DR5/Apo-2R Opposition/Appeals, three interlocking cases on priority between Genentech, Amgen and HGS

• EP 1005488 B, EP 0970213 B: Successfully represented Genentech in T1781/03 and the oppositions in multi-party opposition proceedings with 200+ cited documents, relating to agonist anti-DR5 antibodies in advanced clinical trials.

hGH and aqueous formulations (approved drug, lifecycle, opposition/appeals)

• EP0652766, T1241/03 (Human growth hormone/Genentech): Successfully defended the patent protecting approved Nutropin AQ liquid human growth hormone formulations. Cited in CLBA for the "try and see" approach to inventive step, CLBA, 1D7, page 223.

HIV Vaccines (lifecycle, first AIDS vaccine to get to Phase 3 trial)

• EP0527760, T0219/01 (HIV vaccine/Genentech): Successfully defended at first instance the patent covering first AIDS vaccine to get to Phase 3 trial patent proprietor.

Significant number of protein/enzyme engineering cases (high value, new technical area)

• EP1530637 - T1754/12 and EP0251446 - T1050/99 Representation in many cases in the protein/enzyme engineering field, including Subtilisin variants/Genencor International and Carbonyl hydrolases/Genencor.

Cancer susceptibility genes (lifecycle, personalised medicine)

• EP0858467, T0902/07 (BRCA2/Cancer Research Campaign): Wrote and defended the opposition/appeal proceedings relating to the identification of the BRCA2 gene susceptibility patent, legally relevant for priority entitlement of gene sequences.

Herceptin lifecycle management

• T1592/12 (Herceptin dosage regimen/GENENTECH) - three-week dosing on the approved antibody, HERCEPTIN^{® .}
  
• EP1282443, T2524/12: Defended the patent protecting three-week dosing of Herceptin, challenged by multiple opponents.

• EP2580576, T1748/19
• EP1368460, T1866/10
• EP1016419, T1262/04

Recommendations

Frequently listed in Legal 500 and IAM Patent 1000, gaining praise for being “thorough”, “diligent”, “efficient” and “reliable”, Simon has also been recognised for his work as part of a team defending five European patents in a string of EPO proceedings.

“His work is of a notably high quality, his strategic advice is clear and effective, and his judgement is sound.” - IAM Patent 1000, 2021

Simon “quickly understands the nuances of complex portfolios and provides expert strategic advice” - IAM Patent 1000, 2020

“A cleantech guru, with the ability to craft spotless patents and defend the least promising EPO cases with remarkable success” -  IAM Patent 1000, 2019

Noteable practitioner  - Chambers & Partners, 2019

Simon Kiddle is noted as being "a rock for Mewburn Ellis in his nearly 25-year career. Renowned for drafting iron-clad patents, he performs with guile on oppositions and appeals". - IAM Patent 1000 2014

Simon Kiddle has been recognised as Patent Star 2023 and 2024.

Focus on Inclusivity

Simon has personally signed up to the IP Inclusive Senior Leader's Pledge and is committed to a culture of inclusive leadership across the business and partnership, in particular to continuing the diversity of recruitment of graduates having the opportunity to train as patent and trade mark attorneys.