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Tackling Brexit confusion a priority for new CIPA president

Patrick Wingrove, London

Julia Florence, who is new president of the UK’s Chartered Institute of Patent Attorneys and was senior patent counsel at GSK until 2018, says educating businesses abroad about Brexit and the EPO, and encouraging new and diverse talent to the IP profession are key tasks for her organisation

Julia Florence big
Julia Florence, CIPA president

Tackling Brexit confusion among businesses abroad is a priority for the Chartered Institute of Patent Attorneys this year, according to its new president.

Julia Florence, who was senior patent counsel at pharmaceutical company GSK for 17 years and retired from the firm in 2018, became CIPA’s new president on January 1 2019. She will be the organisation’s leader when the UK is expected to leave the EU on March 29. 

The institute, which represents patent attorneys in the UK, is leading a series of Brexit roadshows in the US in April. Florence says that a key message to US patent-focused businesses at those events will be that external counsel in the UK can continue to be able to represent US clients at the EPO.

She adds that it is important that businesses in the US and elsewhere outside of Europe understand that the EPO is not an EU organisation. It is important that they do not stop using their UK IP attorneys because of a mistaken belief that they cannot be as competitive or far-reaching in their services as their EU-based counterparts.

With the UK due to leave the EU on March 29, the CIPA initiative – organised by CIPA past president and former Merck Sharp & Dohme managing counsel Tony Rollins – has been carefully timed to clear up any misunderstandings that might exist stateside about the impact on IP.

“Quite understandably, there is a lot of confusion about the distinction between Europe, the EU and the EPO,” says Florence.

“I remember when the US was immersed in preparing for the America Invents Act. We knew it was happening, but most UK attorneys waited for the dust to settle before getting to grips with the detail. I am sure the same is true for most US attorneys with Brexit.”

The organisation is also planning to promote the UK’s IP offerings to US businesses. Mr Justice Birss, who made the first ruling in Unwired Planet v Huawei in 2017 that global SEP licences can be FRAND, will be speaking at the events and likely promoting the UK’s SEP dispute-resolution advantages.

Florence says she is looking forward to chairing these events.

Talent shows

Florence adds that she has personally supported the IP Inclusive initiative since its inception and will continue to offer her full support as CIPA president. Through the Careers in Ideas initiative, she explains, IP Inclusive is aiming to help IP departments and the IP profession broadly by working to attract new and diverse talent into the industry.

Students often opt not to take STEM subjects because they are not aware of the careers they can lead to, she says, and those that do may not realise that IP is one avenue they could follow. She adds that some demographics also tend to miss out on patent career opportunities, either because they’re not encouraged to pursue or are unware of them.

Florence points out that in her experience as an in-house lawyer, diversity is becoming ever more important to businesses.

“People are now more aware of the need for diversity. I come from a pharmaceutical firm where women are pretty evenly represented in the life sciences area. GSK takes diversity very seriously and when I left a significant number of senior managers in the IP department were women – as well as the CEO,” she says.

The organisation changed its byelaws at the end of last year, and introduced new categories of membership and new types of training and examinations, such as the patent paralegal and IP administrator courses, that will help drive new talent into the industry.

CIPA is making patent attorney education a priority this year, according to Florence. The organisation will continue to set up events where attendees can learn from speakers and network with other patent specialists.

It will also continue to organise webinars after the success that they enjoyed last year. Florence says she found these webinars particularly useful as an in-house attorney because they enabled her and her team to learn from the office.


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