“I get a sense of satisfaction every time I hear a client say, ‘Thank you for explaining that, I had an initial idea but had never thought of it that way’”, says Emilio Berkenwald, the subject of this month’s member profile and one of FICPI’s newest members – he joined in December 2023.
Emilio’s training and education are in highly technical areas including chemistry, process engineering, polymer engineering and mathematical modeling.
As well as being a partner in Berken IP in Buenos Aires, Emilio is also an Associate Professor at a University in Argentina, teaching transport phenomena such as fluid mechanics and energy & mass transfer.
He enjoys melding his scientific knowledge with legal expertise to explain the inner workings of IP law and create innovative IP approaches that surprise and delight clients.
Emilio’s background is both technical and international, with qualifications from several countries.
He originally studied to be a chemical engineer at the Instituto Tecnológico de Buenos Aires (ITBA) and as a process & environment engineer at the National Institute of Applied Sciences of Toulouse (INSA).
He then went on to achieve a doctorate in engineering at ITBA in 2016. In addition, he has a diploma in intellectual property studies from the Centre d'études internationales de la propriété intellectuelle (CEIPI) in France, where he now lectures about IP in Argentina.
In 2023, he became a qualified patent and trademark agent at the National Institute for Industrial Property (INPI) in Argentina.
He joined Berken IP in Buenos Aires as his first and current IP firm in 2012.
Adding Value to Clients
The international flavor to Emilio’s background and training is important to him and the Berken IP firm in adding value to clients:
“Our firm aims at having an IP practice of international quality standards.
“We encourage our team members to learn about IP in different jurisdictions, provide language courses, and we encourage the publication of articles relating to comparative law.
“In this manner, we offer our clients advice based on comparing different approaches to IP, as well as developing our local jurisprudence based on our knowledge of similar issues in other territories.”
Recent Satisfying Professional Challenge
Emilio shares an example of how he and the firm used technical and international knowledge to help a client in a recent case:
“One of the clients at the firm is a startup from Argentina.
“Following a Patent Cooperation Treaty (PCT) application that we drafted and filed was published, the technology became of interest to a large multinational company having an experienced in-house IP Counsel.
“A territorial and technical strategy was designed for prosecution in different countries in collaboration with the multinational’s IP Counsel. After three years, the multinational withdrew its interest in the technology, and our client found itself with multiple pending applications.
“We had to adapt our counseling from interacting with the IP Counsel of a big multinational to the CEO of a small startup.
“This involved re-designing the territorial and technical strategies to minimize costs as well as teaching how applications are examined before patent offices, which arguments are needed to reply to examination reports, and so on.
“The applications in the chosen territories were granted, so now the client can seek new investors based on a granted IP right.”
Changes to the IP Profession
Like many in the IP profession, Emilio is carefully watching the developments and impact of Artificial Intelligence (AI) on IP:
“I believe independent IP attorneys will need to be familiar with tools involving Artificial Intelligence (AI).
“While I do not believe that AI will in any way replace the work of an IP attorney, it will surely become a tool to help with some specific tasks such as drafting an application, doing a prior art search or translations, which would only require careful revision.
“An adequate and sensible use of these AI tools can be advantageous in that it may save time for the IP attorney and allow more time spent on designing and communicating the strategy for the client.”
Value of FICPI membership
Up to now, most subjects of our member profiles have years of membership under their belt– Emilio has just a matter of weeks!
However, he is very clear why he joined our trusted global community:
“I most enjoy being able to connect with colleagues from all over the world and having a reason to interact in other languages, acquiring the specific IP vocabulary in these different languages, as well as knowing and understanding different IP practices all over the world.
“I believe having a global network of trusted professionals is a key component to having a global IP vision and practice.
“I also enjoy how FICPI is very involved in the academic aspects of IP, since teaching is also a passion of mine. I find this is also reflected in how FICPI’s work has influenced patent practice and how’s FICPI’s position is materialized.
“Personally, memorandum C of 1973 really helped me understand the European practice regarding priority.
“Of course, the venues that are chosen for the annual Congresses and Open Fora can only add this list of reasons to enjoy being a member!”
Final word – outside of work
Emilio relaxes away from the pressure of being an IP attorney by indulging in very different pursuits - going for long walks and playing the violin. He has a weak spot for Bach and Mozart, which he says represent “a certain ‘perfection’ in classical music, as well as some of the more mathematical aspects – as my technical side is always present!”.