Managing IP’s International Women’s Leadership Forum was held in London recently and proved to be a very worthwhile day for both inhouse counsel and private practice attendees.
Emma Barraclough, Group Editor of Managing IP kindly invited me to attend and to prepare a series of short follow up articles for the IPcopy blog. These will be posted on IPcopy over the next few weeks. Emma is one of the driving forces behind the development of the Women in IP network and the London forum follows on from successful events she hosted in New York and San Jose last year. This post provides an overview of a few of the sessions that IPcopy attended.
The first of the sessions, concerning The Unified Patent Court, had a panel comprising of Nicola Searle, Economic Advisor with the UK Intellectual Property Office and two experienced lawyers specialising in contentious IP matters, Arty Rajendra and Rebecca Baines of law firm Rouse.
The economic benefits of the system were discussed at some length, with a general view that the Unified Patent Court is a very positive development – while not directly comparable to the establishment of OHIM and Community Trade Mark in 1996 the speakers highlighted the major changes this had brought to both trade mark practice and the trade mark profession in Europe – the Unified Patent and the Court will have a similar level of impact. It was also seen as a positive development for the UK legal profession, in due course reinforcing the excellence of UK legal services and an important part of the professional services sector with estimated £166m in litigation fees in 2011.
There is still uncertainty over key issues with the Unified Patent such as fees, with a general comment that a significant number of organisations are likely to opt out until things settle down. The functioning of the courts was discussed and the possibility of central revocation being of value as well as also posing risks was highlighted. An important point mentioned was that licensees need to understand what their licensing partners are doing.
The issue of forum shopping was also discussed – will there be a variations between courts that would encourage shopping around? The panel were optimistic that this would not be the case – a set of rules has been developed, now on its 17th draft, designed to ensure a standard approach is applied and help ensure consistency in decision-making across jurisdictions. The multinational nature of panels will help.
The unitary patent session led on to Strategies for IP litigation with Julie Dunnett, a UK & European Patent Attorney and Director of Intellectual Property at multinational engineering company GKN, Alexandra Brodie, IP litigation and licensing lawyer with Wragge Lawrence Graham, and Liliane Roriz of Licks Attorneys in Brazil.
Refreshingly, a good proportion of the session could have been called ‘strategies for avoiding litigation’, emphasising the need to take a measured, thoughtful approach to handling disputes in the context of the commercial interests of the various parties. Both inhouse counsel and external advisors have a role to play in supporting this approach. Informed IP owners will generally undertake Freedom to Operate exercises before new product launches and if appropriate will undertake ‘design arounds’. This does not always work but potential problems can be reduced if businesses can include consideration of IP as an integral part of the product development process – this generally involves including invention patent review point(s) in the development process and most importantly ensuring the IP counsel engage with engineering staff at all levels and ensure a good awareness of IP. The bigger the business the more difficult it is to do this and the ‘buy in’ of senior management is essential. IP landscaping exercises with well presented information can be helpful in communicating the message to senior staff.
Another key message from the session was that if a dispute develops consider the customer, i.e. don’t make it their problem, particularly if a potential dispute is with a competing supplier. An important discipline to is ensure customers are aware when you have strong IP – when bidding for new work include information about the IP, including highlighting key patents. This lays the ground work for the future. Should a dispute arise it is recommended that companies consult with their commercial partners and talk to their customers. The solution may involve the competitor who is infringing having to take a licence. The flip side is that a strong relationship with the customer can also be helpful when faced with an infringement action yourself and needing to come to a sensible licence arrangement with another supplier.
In the following discussion regarding international litigation the high cost of litigating in the US was highlighted, along with the inability to recover costs, while it was noted that litigating in major developing economies China and India can produce results but there is still a reluctance on the part of some IP owners to take action in these territories. Liliane Roriz, formerly a Federal Judge in Brazil and now an IP lawyer in private practice, highlighted the development of the country as a major economic force with international technology players and having an IP system trying to adapt to this. The Brazilian patent and trademark office has a backlog and has a reputation for being very slow with a first decision taking up to a decade, but Brazil has committed to the TRIPS Agreement and considerable drive for change is coming from the Brazilian courts themselves.
Keith Turner 27 February 2015