Managing Intellectual Property held its 4th annual International Women’s Leadership Forum at the Waldorf in London this Tuesday. Many in-house and private practice IP professionals were in attendance ready to discuss hot-topics in IP and give practical advice on managing portfolios.
After a quick coffee and croissant the morning kicked off with a subject never too far from mind: Brexit. Lara Elder, senior associate at Carpmaels & Ransford, led the Brexit clinic giving an insight into the present situation and the impact that leaving the EU may have on trade mark rights. A “wait-and-see” approach was the advice the panel settled on. They recommended preparing a strategy to protect key marks, but conceded that it would be a resource burden to re-register marks preemptively. On a more positive note, Elder pointed out that the uncertainty is forcing brand owners to audit portfolios and look at what really matters.
Social media, brands and infringing fans
Following the Brexit talk, Helen Saunders, chief operating officer at INCOPRO, led a lively panel on social media and online infringement. She began by examining the history and development of social media across the world.
Catrin Turner (left), head of global IP at Dr Martens, then took the podium to review the practicalities of enforcing IP rights in a global e-commerce sphere. She cautioned that hurting fans hurts the brand and so infringement in this context should be handled more personally instead of jumping to injunctions. She illustrated this point with an example of a resolution struck with a fan site through direct communication. She added that different jurisdictions provide different copyright protections and so it does a brand “no favours to take an inflexible approach”.
After a coffee and networking break, the afternoon continued with a focus on protecting and defending IP rights. Shaoni Mitchel, senior counsel at Edwards, led a discussion on protecting trade secrets. Sarah Wright, partner at CMS, described trade secrets as an area that often gets forgotten and advocated training as a way to remind people of the importance of retaining confidential information and reducing internal risks.
Petra Simoncic agreed but added that external risks were more pertinent to her business at austriamicrosystems AG (AMS). This began a discussion with the audience as to when it is better to file a patent and make the information public and when it is best to keep the information internal but unprotected.
The DSM – a utopian vision?
Lorna Brazell, partner at Osborne Clarke, led a talk on the Digital Single Market (DSM) and critiqued the “utopian vision” on which it is being based. She argued that the DSM is trying to coordinate opposing member state views of author’s rights under copyright law and added that the reworking of copyright under the DSM has not progressed very far because it is “bogged down” in technicalities.
However she did examine one part of the DSM that has passed, the portability of content regulation. It comes into effect in April 2018 and will allow access to online copyrighted content that a resident would have access to in their member state while they are temporally in another member state. She was sceptical about how it will be known if someone is a resident in a particular member state and when they are only “temporarily” in another member state. The panel agreed that there was still much work to be done on the DSM and that it may not be as cohesive the EU initially envisaged.
Career development and work-life balance
To end the day, the panel and audience participated in a discussion on work-life balance and career management.
The panel discussed different attitudes they have experience towards part-time workers. Sofia Arenal, partner at Mewburn Ellis, said: “I think it is really important to decide your balance and limits ... You have to be realistic. Don’t be afraid to ask for and use flexibility in the way you work.” She went on to add that, although she had worked part-time for many years, she never felt this stunted her career progression.
Ruth Stone, general counsel at SCB, agreed with this and added that it’s important to not let “self-care” drop off the bottom of priorities.
The panel went on to discuss developing careers and focused on “pivoting to happiness”. To develop in business you must be willing to move around if you are not happy and “repackage your skills”, advised Veena Marr, global head of IP at eBay.
Our next event, Managing IP’s International Patent Forum, will be taking place on March 7-8 at the Waldorf Hilton Hotel in London. If you would like to attend, please visit our events page for more details.
The Forum is a development opportunity for the next generation of women leaders with the aim of providing an inclusive debate around building the talent pipeline as well as discussing the latest developments in IP. If you missed this year's event, view the key takeaways below.
For more information on the MIP Women in IP Global Network, email firstname.lastname@example.org.
Brexit and the short-to-medium implications on your IP portfolio
· The panel discussed the potential transfer of EUTM to UKTM.
· Panellists speculated that businesses should adopt a “wait and see” approach unless it is a key mark as there could be some “auto-transfer” or “opt-in” system put in place.
· They recommended doing an audit to see how affected the business will be in any eventuality as presently it is hard to predict.
Social media, brands and trade mark infringement
· One question the panel discussed was whether social media platforms could or should be liable for user infringement.
· Recent cases around this issue came up including Ziggo, L’Oréal v eBay and Google France.
· Rachek Alexander (partner at Wiggin) propositioned that the “safe harbour” defence could breed hosting sites that are inactive in infringement prevention through fear of losing their “safe harbour”.
· Catrin Turner (head of global IP at Dr Martens) gave a talk on infringement strategy and advised that businesses should be flexible in the e-commerce sphere.
· She recommended use of the take-down methods provided by sites and direct contact with infringing fans as a way to resolve issues without hurting the brands reputation.
· She also suggested that businesses should pick and choose where to take action based on the copyright protection provided in that jurisdiction.
Strategically managing your trade mark and design portfolios
· This panel spoke about changes to the EUTM regulations.
· Since October 2017 “graphical representation” is no longer a requirement and five new types of trade mark have been added as registerable marks.
· Elizabeth May (lead IP counsel at Richemont International) provided some key points for protecting brands, which included using the double filing strategy to cover trade mark and copyright protections if a business budget permits.
· She also recommended building up a bank of evidence to prove use of designs and trade marks.
Industry 4.0 and the digital revolution of IP
· The panel discussed what IP rights can safeguard big data.
· Emily O’Neil (IP and litigation counsel at Spectris) advised that, although copyright cannot be used to protect individual data, it can be used to protect a larger base of data, thus companies should go through the individual factors needed for protection and establish whether it is likely to warrant protection.
· Cordula Schumacher (partner at Arnold Ruess) then spoke about IP litigation and FRAND licencing post Huawei v ZTE.
· She examined the case studies that have followed and suggested that there are still open questions that will be considered as more industries create a standard-essential patents (SEPs).
Protecting your software patents in EU and US post-Alice
· The panel discussed Alice and other cases surrounding software patentability.
· Panellists went on to examine the 2018 case of Finjan v Blue Coat where the software constituted an “improvement in computer functionality” that provides more than a “mere result” differentiating it from the abstract idea of virus screening and making it patentable.
· They then reviewed the 2018 case of Core Wireless Licensing where again the software was particular and improved efficiency enough to be more than an abstract idea.
· The panel also discussed the European view of software patents. Hellen Wallis (partner at CMS) reiterated that due to the “inventive step”, as clarified in Comvik, software must solve a problem and so the technical benefits and effects need to be described clearly for software to be patentable.
Identifying, protecting and defending your trade secrets
· The panel strongly advocated companies providing training on trade secrets as these are often a big asset.
· Petra Simoncic (IP manager at AMS) added that external risks were an issue and businesses should have a plan in place for if a secret is about to or does get out.
· The audience also participated in a discussion about when it is better to keep a trade secret internal and unpatented and when it’s best to file a patent and make it public.
Copyright protection and Digital Single Market
· Lora Brazell (partner at Osborne Clarke) critiqued the Digital Single Market (DSM) and commented that it has not yet progressed very far.
· She evaluated one part of the DSM that has passed, the portability of content regulation.
· The panel commented that the regulation is not necessarily well-defined enough to police as it does not define when someone is only “temporarily” in another member state.
· They agreed that the DSM still has a long way to go and may not be the “utopian vision” the EU had hoped for.
Leadership through the keyhole
· To end the day, Emma Graham (partner at Mewburn Ellis) led a discussion on career development and attitudes towards part-time workers.
· The audience and panel spoke about management attitudes towards part-time workers and working overtime and how this impacts employees.
· On career development Veena Marr (global head of IP at eBay) suggested that if you are unhappy in a job then it’s time to move on and progress your career. She remarked that you have to “repackage your skills” and “pivot to happiness”.
For more information on the MIP Women in IP Global Network, email email@example.com.
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