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 to market.
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 says.
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.
Compulsory licences in Turkey
Private practice lawyers from Gun + Partners spoke on day two of the forum about the use requirement for compulsory licences in Turkey. Partners Özge Atilgan Karakulak and Selin Sinem Erciyas noted that under new IP laws, if a patent is not ‘used’, as defined under Turkish law, any interested party can seek a compulsory licence.
They added that such a request might be granted so long as on the date of demand, the patented invention is not being used or no serious and real measures have been taken to make use of the patented invention. A compulsory licence could also be granted if the level of current use does not satisfy domestic demand.
Don’t be afraid to abandon patents
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 patents.
Evolution of Chinese IP
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 quality
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.
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