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INTERNATIONAL PATENT FORUM - OVERVIEW

April 16 & 17, 2013 - Sheraton Park Lane Hotel, London





















Managing IP held the third annual International Patent Forum in London on April 16 & 17, 2013. The forum represented a development from the two previous International Patent events, based upon the most up-to-date research and consultation conducted within the industry.

An emphasis was placed upon practical guidance to promoting the monetisation of IP and utilising intellectual assets as significant driver of profits. 

A particular note was taken on the fundamental role played by China and Chinese IP practice within the running and management of IP in European companies. An Asian perspective will be incorporated into a variety of the vital discussions at hand.


TESTIMONIALS:
  • Industry/practitioner driven, covers a wide range of topics in patent law - Anonymous (2013)
  • Another excellent event from industry leaders in luxurious surroundings, Managing IP continue to keep their quality at high level - John Davies, Jaguar Land Rover (2012)
  • A must attend event for all in-house IP personnel - Gabrielle Rollinson, Vectura (2012)
  • Lord Justice Jacob - what a breath of fresh air, love his honesty. And great double act by Ryuka & Kopf - Indra Grohman, Diageo (2011)
  • A very high quality and worthwhile event - Catriona Hammer, GE Healthcare (2011)


KEY TAKEAWAYS
:

Keynote address: James Pooley, WIPO

  • The international patent system is a gateway to national systems and must be wide open, easy-to-use and frictionlessElectronic filing is moving from PDF to XML based: this will increase efficiency and reduce errors and give power to users
  • Finding better ways to communicate is one way to get harmony of standards of issuance of patents

IP and business focus: how to maximise the monetization of your patents

  • Four lessons from UNILIN: you need a technology partner to bring a product to market; be ready to invest in legal actions; prepare for patent expiry; stay personally involved
  • View from Atos: IT industry still sees trade secrets as Valhalla; they are cheap but have lots of limitations; patent monetization is indirect (review assets, tax credits, internal licensing) and direct (support OM, cross-licensing, divestment)
  • Monetization is a hot topic but it has to be built on solid patent rights; Unilever is working more strategically with suppliers, including joint ownership of IP from collaboration

Russia Focus

  • The court system is developing quickly, with new IP Court this year
  • Note the differences between Russian and Eurasian patents – Russian patents take longer to prosecute, are more formalised and less vulnerable to invalidity challenges
  • NPEs are a growing threat in Russia partly due to low patent examination quality – but Rospatent are alert to this

Europe, the unitary patent and unified patent court

  • Prediction: unitary patent will be used by many applicants for at least some grants, probably more than 10% on average
  • For pharma industry, it should be much, much cheaper (as normally file in all member states) But: risk is unitary revocation. Companies will have to assess risk/reward balance
  • Questions remain over SPCs – need to be sorted out or pharma industry will not use the system
  • Forum-shopping is dead – long live forum-shopping! System will be used by sophisticated patentees with traditional business models as well as trolls

Doing business in China

  • China is a civil law country but judicial interpretations are key and binding on lower courts. Defences to patent infringement include Bolar Exception since 2009 – but there is no patent extension
  • We should emphasise quality rather than quantity of patents. Patent quality in China very worrying but secondary markets are important in capturing value, eg Shanghai IP Exchange

Practical implications of US patent reform one year on

  • Are confidential sales prior art under the new system? PTO says no, but courts must address question. Safest approach is to assume they will be prior art until determined otherwise
  • Note that new USPTO procedures will be cheaper than litigation, but more expensive than EPO oppositions. But beware estoppel effect! (It may also affect cases against third parties, in practice)
  • Post-grant review may be most attractive in industries such as biotech where you have technically complex cases

Africa focus

  • Africa is second fastest-growing region in the world; it has 650 million mobile subscriptions
  • But: note importance of collaborating with local enterprises; more than 2,000 languages; local cultural differences; political and economic uncertainty; and corruption

Important tax take home points

  • UK government is lowering corporate tax rate, but broadening tax base
  • For non-patent income, UK not a great place to be based but for patent income, the rate is reasonably competitive
  • OECD also likely to revise guidelines to tighten up on abuses – may insist that arm’s-length is applied substantially as well as on pricing

Latest legislative updates of China's Patent Law amendment

  • China used to regard strong IP protection as a means by which to attract foreign investment. Now it sees it as a way of helping Chinese companies meet the government’s goal of China becoming technologically independent by 2020
  • Measures to provide IP owners with support from IP officials at trade fairs in China have been helpful in dealing with infringement, particularly when the product clearly infringes the patent
  • Proposals to update the Patent Act offer advantages to both plaintiffs and defendants. The rise in patent filings will lead to more litigation and it is likely that companies will find themselves acting as a plaintiff in a case one day and a defendant in a case the next

Licensing: Best practices

  • In 2012, 60% of patent litigation in the US was brought by NPEs. NPEs use a number of different models: litigation; licensing; defensive licensing
  • Consider whether it is better for you to indemnify licensees so that you retain control over litigation
  • Know your weaknesses as a licensee. If you know your company tends to be a late payer, for example, then ensure that you can meet the payment terms in the agreement
  • Setting the right price for standards patents is difficult. Low returns discourage participation. High returns discourage adoption

India Focus

  • India now has a fully-fledged TRIPs-compliant IP regime. It is not an anti-patent regime, as sometimes portrayed in the media
  • The issue of what constitutes “working of the patent” in the Bayer compulsory licensing case was important. The Court clarified that “working” can include manufacturing or imports and needs to be decided on the facts

Brazil Focus

  • Brazil is a growing market: since 2002 35 million Brazilians have moved into the middle class
  • There are no UK filers in the top 25 patent filers at the country’s IP office. UK filers make up 2% of patent applicants; France makes up 6%

High tech, electronics and software: What are the Smartphone Wars teaching/warning us?

  • Standardisation is the process by which the industry achieves interoperability. Most litigation focuses on standard-essential patents. Antitrust authorities sometimes see this as a sign of market failure but the smartphone market is vibrant and there have been plenty of new entrants
  • The reality of licensing is that it can be difficult to persuade people to pay a licence fee voluntarily. Sometimes litigation is needed to kick-start the process
  • Smartphone wars may simply be “business as usual” in the sector
  • Microsoft wants to spearhead transparency in the area of standards patents
  • The sale of Nortel’s patent portfolio for $4.5 billion raises awareness of IP among SMEs

Pharmaceutical Industry focus

  • Governments should only consider granting compulsory licences as a last resort, It would be better for companies to consider ways to ensure better access to medicines including differential pricing and licensing
  • The decision by the US Supreme Court in Prometheus revealed the different approaches by the USPTO and the EPO towards the patenting of dosage regimes
  • The CJEU’s decision in AstraZeneca suggests that the bar has been raised higher for pharmaceutical companies. They need to be seen to be operating with very clean hands if there is any risk that they will be deemed to be a dominant company
  • China’s new antimonopoly law came into force in 2008. It has already been used to fine pharmaceutical companies accused of acting to keep other companies out of lucrative markets
  • Poland is taking a wait-and-see approach to the unified patent court (it did not sign the agreement in February). It would be helpful if the Polish judiciary introduced a specialist division to handle IP cases

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