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MIP International Women's Leadership Forum 2016 - Overview

June 9, Convene Times Square, New York




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The MIP International Women's Leadership Forum is returned to New York for its third year on Thursday, June 9.

The Forum gets bigger and better every year and is supported by a string of successful events in London and California. The Forum continued to provide an opportunity for women in IP to hear the latest IP developments and thoughts from senior women general counsel and leaders.

This year's Forum was led by a panel of diverse general counsel and private practice who shared insights on:

  • Best practice and strategies for unconventional trade marks
  • Protecting your brand as technology becomes more sophisticated
  • The latest patent developments from PTAB and the UPC
  • International IP issues in Canada, Latin America and BRIC countries
  • How to build your network to progress your career


Who will you meet?
As always, the event welcomed associates, senior associates and partners in private practice as well as legal counsel, senior legal counsel and general counsel. In doing so, the Forum is perfectly positioned as a development opportunity for the next generation of women leaders and to provide an inclusive debate around building the talent pipeline as well as discussing the latest developments in IP.


International Women's Leadership Forum - London 2015 

Key takeaways


Trends in trademark protection

  • Make sure your petition is solid – have a creative approach
  • Look at brand usage guidelines, licenses of others, make sure brand materials are discoverable
  • Counselling at outset and doing damage control would be very useful for outside counsel
  • Educate new graduate levels especially on social media – have a defined policy in place
  • Convenient to have an enforcement strategy in place for key marks – outside counsel assess the entire field and collateral merchandise
  • Build a matrix – different for different countries. Scope of clients differ and matrix may be e.g. a lot more aggressive in the US. Jurisdictions have a different approach to likelihood of confusion and analysis. Will evolve as brand grows.

Protecting computer-related inventions in the aftermath of Alice

  • Patents create shareholder value, deter competitors from copying and provide freedom to operate
  • Trade secrets may offer immediate protection for fast-moving technologies
  • Alice, S. Ct. applies two-step Mayo framework – Abstract Idea or not applied/inventive concept
  • Challenges include inconsistencies in case law and Patent Office practice as well as more difficult to obtain and enforce patents
  • Portfolio strategies – include internal development plus joint ventures and exclude competitors’ next generation products

Anti-counterfeiting and brand protection

  • Social impact of counterfeiting – public policy concerns, child labour, economic impact
  • Proactive measures include obtaining trademark registrations in jurisdictions where you sell and manufacture as well as countries which are of commercial significance for the client
  • Pharmaceuticals – packaging, supply chain management and monitoring pro-active investigations and criminal referrals
  • Trends seen – internet proliferation; digital and technology increase; manufacturing in U.S. and Canada; and concerns over 3-D printing
  • Brand owners compete but anti-counterfeiting is an issue. Most owners are on the same side of the issue – work with INTA and IACC on these

PTAB litigation and inter-partes review

  • 66% success rate of all PTAB claims since AIA was enacted
  • Top petitioners include Apple, Samsung, Google and LG Electronics
  • Reasons provided for denying entry include non-statutory subject matter; written description and mainly obvious over art of record
  • New rules for claim construction can be requested from either party
  • Patent owner may file testimonial evidence with preliminary response
  • Duty of candor to the USPTO applies in proceedings before the PTAB

The Unitary Patent and UPC: state of play

  • Unitary patent for 25 jurisdictions – quicker, simpler and cheaper (78% reduction)
  • New standard procedure emphasises written rules/day hearing with panel of experts
  • Spanish challenges as it functions a little like the U.S. (district and state courts)
  • Proceedings will always be in English
  • Important to consider opt in or opt out options
  • Start thinking about this now – could lead to more litigation in EU for companies based elsewhere

Trending issues in traditional copyright arenas and emerging technologies

  • Internet Policy Task Force helmed by USPTO and NTIA to critically examine privacy policy, global free flow of information and cyber security
  • The Green paper outcome – The White Paper (summarises comments from stakeholders)
  • Remixes - goals include negotiated guidelines providing greater clarity around fair use; expand availability of variety of voluntary licensing options; and increasing educational efforts
  • Varsity Brands v. Star Athletica – District Court entered summary judgement for defendant as the holding designs were not copyrightable
  • Physical separability v. conceptual separability – resulted in a circuit split

Legal trends in the life science industry

  • The Bolar exemption – scope limited to generics and biosimilars
  • Discrepancies depending on location of infringement and Court seized
  • Several problems with skinny labelling – does not give a defence to patent infringement

The importance of leadership in developing your career

  • Money that’s on the table today will not be there tomorrow
  • Expand your skills and go out of your comfort zone – but realise where you can excel, not fail
  • Think where you want to be in five years – plan your steps to get there
  • Keep reinventing yourself – e.g. technology is going away so you have to get ahead of the game
  • Find a need or niche and see what you bring to the situation
  • Women apply for jobs when they tick 100% of criteria; men apply when they have 60%. Do not let that stop you
  • Find the perfect combo of being a generalist and specialist at the same time
  • Embrace and confront your demons – will produce more opportunities



 


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