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
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
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.