European patent priorities
The panellists in the opening session on European patent
challenges began with a discussion on the Unified Patent Court (UPC). The
speculation was mostly humorous with panellists and audience members doubting
whether or not the UPC will ever come to fruition as a complaint against it is currently
stuck in the German court system. Some on the panel speculated that the courts
might be waiting for the fallout from Brexit before making any ruling.
Away from the UPC, Stephane Drouin, chief IP counsel at UCB,
commented on how IP is vital to industrial strategy and that UCB is committed
to staying in the UK even after Brexit. Clemens Heusch, head of European IP
litigation at Nokia, said in a separate talk that how you litigate a patent
dispute depends on the patent and the product. He commented that for a
pharmaceutical product, companies would ideally fight in every jurisdiction. If
you’re dealing with mobile phones with a portfolio of 20,000 families, however,
you need to pick and choose your battles carefully.
Patenting a robot
The panellists in the session on emerging technologies had a
great discussion on the challenges and opportunities of artificial intelligence
(AI) in emerging markets. A question was raised on how to patent an invention
made by AI as the UKIPO currently requires the name of a human inventor.
Another important comment related to the importance of protecting data, which
“is the new oil”. All of the panellists noted that it is absolutely crucial for
IP teams to keep their data safe even after they have finished using it. A big
issue they all face is how to patent a technology that has not yet been brought
Kristin Cooklin, head of patents at Zentiva in the Czech
Republic, led a very animated discussion on the uncertainties biologics face
getting their products on the market in Europe. A central theme was the
ambiguity around the supplementary protection certificate waiver. She commented
that the laws and regulations around the waiver are unclear, and that nobody
knows yet how it will be enforced. Daniel Lim, a partner at Kirkland &
Ellis in London, noted that biologics have much more sophisticated patents than
generics and that it is important to “knock your competitors off the market”
before your patent expires.
Be a FRAND
Earlier in the day, it had become clear that the concept of
fair, reasonable and non-discriminatory (FRAND) licensing rates has similarly
been a point of uncertainty for telecommunications licensors. David Muus,
patent licence programme manager at Sisvel, pointed out that FRAND makes it
difficult to tell willing and unwilling standard essential patent (SEP)
licensees apart, because those who claim to not understand whether an offer is
FRAND may be stalling for time.
“The uncertainty on the specific level of information you
should be giving [to show an offer of FRAND] is holding up licensing
discussions and sadly is the source of most telecoms litigation today,” he
Koenraad Wuyts, chief IP officer of KPN, added that
licensors were once criticised for bundling patents and have now been condemned
for unbundling patents. He said that as both a licensor and licensee, his
company can appreciate that businesses want everything in the supply chain to
be as cheap as possible.
Don’t be afraid to
Adam Pilcher, IPR attorney at Vodafone in London, spoke on
day two in a session about formulating an international IP strategy. He noted
that sometimes it may be wise to consider abandoning a patent if it’s no longer
useful. This would require careful judgment to make sure there are no third
party rights and that the patent will not be exploitable in the future.
Stephan Wolke, CEO of ThyssenKrupp Intellectual Property, spoke
of the difficulties of getting senior management and the R&D innovators to understand
the importance of IP. He noted that internal communication is essential and
used colourful examples from workshops that he has led on how to stress the
importance of IP to innovators and managers.
Anand Varu, IP director at It Luggage, said that the IP
strategy depends on the type of product being exploited. He said it is
essential to align IP with the business strategy of the company. The panel
agreed that using trade secrets means that you don’t have to file a patent and
then worry about having it invalidated in the future. The panellists agreed
that, when possible, it might be preferable to use trade secrets instead of
Evolution of Chinese
Andy Bartlett, divisional director of patents at the UKIPO,
spoke of the evolution of the Chinese IP system. He stressed that the Chinese had
no system in place to litigate IP in the 1980s, and that over the last thirty
years, they have built a system for registering and granting rights. The UK
continues to play an important role in influencing how the Chinese IP system
evolves and an attaché in Beijing helps UK businesses navigate IP concerns.
The session continued with David Lambourne, head of IP at UK-based
Morgan Advanced Materials, who spoke of the steps one should take to protect IP
in China, beginning with setting up meetings in China with IP service providers.
Wolke of ThyssenKrupp said it is very important to maintain a “high tech
status” when working in China. He also mentioned that the Chinese IP system is
becoming increasingly fairer.
Keeping a secret
The EPO issued a directive on trade secrets in 2016 which
has been fully implemented in the UK. James Thomson, head of media and
stakeholder communications at the UKIPO, gave eight tips for protecting trade
secrets. He began by stressing the need to understand the value of a trade
secret and emphasised the value of non-disclosure agreements. Mohammed Karem,
senior legal counsel at TiVo in the UK, followed by noting that commercial and
customer information constitutes valuable trade secrets which need to be
protected. He advised that if a company has a patent that can realistically be
protected using a trade secret, then they should consider doing so. The
panellists agreed on the importance of an exit interview with all employees
exposed to trade secrets.
A need for patent
In the final session of the conference, Frank Cullen, vice
president US IP policy, US Chamber of Commerce, and Kevin Jakel, founder and
CEO, Unified Patents, had a lively discussion on the US IP system. Jakel, a
former USPTO examiner, said that some patents being issued are directed to tiny
improvements in technology. In the long term, he said, policy needs to focus on
patent quality. Cullen argued that Section 101, which governs patent subject
matter eligibility, is a “political football” at the moment. He questioned
whether Section 101-related legislation would have a chance of being approved,
particularly when the US Congress had great difficulty in passing the America
Invents Act in 2011.