This content is from: Features

Shaping the future of IP

Managing IP reveals its selection for the annual Top 50, with an emphasis this year on individuals rather than institutions: bloggers, artists, litigants and campaigners


IP law is always in flux, but it's hard not to feel that fluctuation has speeded up in recent years. Patent harmonisation, patent reform, anti-counterfeiting treaties and of course the always accelerating world of copyright and piracy – one area where no matter what speed the law moves, online innovation moves faster.

This ebb and flow is influenced by many people. Judges, politicians and office heads set the boundaries for intellectual property and its practitioners. In-house counsel and industry associations influence their decisions. But just as important are the individuals that challenge the established views of institutions. These can be academics, artists, inventors, bloggers or just a person who gets so angry at the perceived injustice of it all that he resolves to litigate until his money runs out.

This year's version of the annual Top 50 aims to celebrate these visionary individuals, while still recognising the importance of people involved in the industry's big decisions. To that end, the 50 is divided into 10 categories: five judges, five bloggers, five artists and so on. This restricts the politicians and gives the creators of intellectual property more room to shine.

Three in particular, Fred von Lohmann (Google), Robert van Peursem (Hague District Court) and Lucy Nichols (Nokia), are given longer write-ups on the following three pages. The full contents of the list can then be seen on page 40.

There is no nomination or voting process. The 50 people selected here are the choice of the Managing IP staff in London, New York and Hong Kong. While we didn't always agree, I think it's fair to say we came up with an interesting list. I hope you agree.

I’m a campaigner for freedom

Fred von Lohmann
Senior copyright counsel, Google

Fred von Lohmann's transition from campaigner for internet freedom to in-house counsel has been relatively seamless, he says. "At the Electronic Frontier Foundation (EFF) I considered my role as a protector of innovation and free speech online, and I think that's still my role now that I'm at Google," says von Lohmann, who became senior copyright counsel for Google in July last year. At EFF, he helped Grokster in its famed Supreme Court battle with MGM Studios and was a vocal opponent of the movie and recording industries' litigious approach to protecting copyright online. But he adds that, despite widely held perceptions, "both EFF and Google are much more moderate on copyright than many seem to think".

Many do see Google as the enemy in the rapidly evolving game of protecting IP online. At the World Copyright Summit in Brussels in June, the company was the target of much criticism. Author Robert Levine, who wrote Free Ride: How Digital Parasites are Destroying the Culture Business and How the Culture Business can Fight Back, told an audience of copyright owners that Google's interests "are in direct opposition to yours". But von Lohmann says such statements are misdirected. "I sometimes think people use Google as a synonym for the internet," he says. "Lots of days that's a good thing, but often it's a bad thing. People don't pay attention to what Google's actually doing."

YouTube's Content ID programme, for instance, gives users an unprecedented amount of control over what is done with their copyrighted content, says von Lohmann, adding that Google and YouTube have gone to great lengths to work with IP owners. The problem is that some businesses still view the internet as a risk, rather than an opportunity, says von Lohmann. "If you have a business for which the internet is a threat, you are going to struggle. Google can't magically change that."

Von Lohmann is adamant that the internet is just the latest in a series of new technologies over the last 100 years that have been initially met with resistance by "incumbents", only to end up generating significant profit for them. He cites the player piano, radio and VCR among the many examples of this. "It's hard to imagine that the internet will be the one exception to that rule," he says.

But in the US, the internet has become the target of aggressive enforcement efforts by regulators, lawmakers and industry representatives, who claim that pirated content is putting content industries in peril. Many see Google as aiding and abetting this piracy, but von Lohmann says that business models must change first and foremost, before focusing on legislation. Enforcement alone isn't going to resolve the difficulties of online piracy. "The best solution to piracy is great products being made available at a price consumers find compelling. Piracy is in many ways just a failure of supply."

The video game industry has recognised and embraced this reality, according to von Lohmann, who cites the success of multiplayer online games such as World of Warcraft. "There are lots of new businesses being created. As time goes on, more and more people will find their way and copyright will soon become the boring backwater it once was."

And for von Lohmann, that is strangely the goal. "I look forward to the day I'm the geeky copyright lawyer who's not the center of attention once again," he says. "Everyone would be better off if instead of debating copyright law all day long they were figuring out the next new business."

But with copyright being front and centre for now, Google is very much interested in being part of the debate. Von Lohmann travelled to Russia in June and Ireland in early July to talk about new copyright legislation being considered in both countries. Google is also closely monitoring the results of the Hargreaves Review in the UK, with which von Lohmann says the company was "very pleased".

As for Google's own interests, and the high-profile court cases it is involved in, von Lohmann has less to say. Regarding the Google Books settlement, he says: "We're still talking to the plaintiffs and trying to decide what to do." On Viacom v YouTube, von Lohmann expects oral argument in autumn and remains optimistic: [The case] is important for all companies who rely on the DMCA safe harbours and the proper interpretation of the statute," says von Lohmann. "Even Viacom in its brief has said they have no objection to YouTube. That lawsuit is about a time that is already behind us."

Trying to forge a patent court

Senior Judge Robert van Peursem
The Hague District Court, The Netherlands

How would you design a new patent litigation system for Europe? It's a tall order, but you might start by assembling some of the most experienced judges and lawyers from the key EU member states – and then getting them round a table to discuss what works and what doesn't.

That's exactly what the European Commission has been doing over the past few years as it draws, redraws and then redraws again its plans for an EU patent and IP litigation system. After years of intense negotiations, the plans are sufficiently advanced that 25 out of the 27 member states have agreed in principle on a patent system (now known as the unitary patent).

But the unitary patent will be worthless without an efficient and predictable court system in which the rights can be enforced, and that is proving if anything even more difficult to agree. Plans for an opt-in system – known as the European Patent Litigation Agreement (EPLA) – collapsed when France raised constitutional objections. A compromise proposal – the European and EU Patents Court (EEUPC) – was essentially vetoed by the Court of Justice of the EU in an opinion earlier this year. The Commission's latest proposal, published in draft form last month, envisions an agreement between states that would provide for simpler litigation while minimising the role played by EU law. It's an imaginative proposal, but still needs a lot of work before it can be accepted.

Which is where Robert van Peursem comes in. As a Senior Judge in The Hague District Court, he is one of the most experienced patents judges in Europe and one of the Commission's advisers on patent reform. The Netherlands is also regarded as one of the most innovative and effective forums for patent litigation, metaphorically (as well as geographically) half way between the courts in England and Germany.

Van Peursem was a proponent of the EPLA and tells Managing IP that returning to that agreement is still a possibility: "We would have a coalition of the willing and get rid of unnecessary compromises." But EPLA does not seem to be on the agenda for the Commission or member states, he adds: "What the Commission in co-operation with the rotating Presidencies has recently come up with might work, but it needs to be an improvement over the current system of parallel litigation in Europe." He also argues that the politicians need to keep their eyes on the goals of meeting what users need: "We are doing our best to get agreement. People have very different agendas and I am genuinely concerned about political movement in a direction nobody wants, which could force users to revert to national filings. In that case we would be worse off than we are now."

He became a judge in 2001, following a 10-year career as a litigator with De Brauw Blackstone Westbroek and two years of lecturing on civil law. Like about 50% of Dutch judges, van Peursem is an "outsider" rather than a career judge, and has been based in the IP department in The Hague since 2006. Due to the volume and complexity of cases, the judges there now specialise in IP, a development that he regrets: "It's not necessarily a good thing to super-specialise. If you're not working in general civil law, in the end you run the risk you can't cope well with developments there." But he says he enjoys the freedom and independence of being a judge, compared to his previous career: "Now I can just disregard arguments with one stroke of the keyboard, so to speak."

The IP department, which consists of seven judges, handles an average of about 200 IP cases a year in full proceedings, as well as some 128 cases a year in the preliminary kort geding proceedings. It has long had a reputation for being creative. "The accelerated regime for patents was an innovation from the beginning of the 1990s, which we arrived at working together with the patent bar, which was quite revolutionary in those days. The kort geding, which gives a preliminary view of both infringement and validity, is one of our crown jewels internationally, a rather unique system of preliminary injunctive relief, with no bearing on full proceedings."

More controversial was the issuance of cross-border injunctions in the 1990s, which led to the Dutch being seen (in his words) as "the cowboys of Europe". The court (and those in other countries that also issued cross-border injunctions) was reined in by the Court of Justice of the EU and van Peursem now argues that "the pendulum has swung maybe too far back". The solution, he says, is a European patent court. The will is there and the judges are ready: "At one point a group of judges sat around a table in Venice to discuss the principles of proceedings for the future EPLA court as it then was to be, we hoped. It was a gigantic effort. The severest part of the effort was to really understand each other's systems. Once we had spoken about our differences on the basic issues it was fairly easy to come to certain principles."

Let’s go set an example

Lucy Nichols
Nokia

Lucy Nichols goes looking for trouble. "When I was five years' old I loved catching the bad guys; I still do. And in IP, counterfeiters are definitely the bad guys. There's no grey area there."

Importantly for her inclusion in this list of 50 people shaping IP, she doesn't just love catching bad guys: she likes weaving the net that snares them. "I try to make a test case out of enforcement issues when the right one comes along. Fortunately Nokia doesn't lack problems with counterfeiters, so there are quite a lot of issues to choose from."

Luckily, Nokia's chief legal officer – Louise Pentland – is very supportive. When Nichols was told, off hand, that fake Nokia phones had been seized in the UK but were being released because they were in transit to Colombia, she immediately called her external counsel. The lawyer told her there was nothing she could do – unless she wanted to sue British Customs.

"I said, do it!" Nichols recalls. "He pointed out that I needed approval, but I said I was willing to stake my job on our head of legal agreeing with me. I was in China, and it was late at night, but we got the proceedings started right away.

"When we talked the next day she had exactly the same reaction as me. This was at a time when the US and EU were criticising China for not cracking down on counterfeits, and the UK was just letting these sail through."

Understandably Nichols appreciates this support, but Nokia as a whole understands that it is only if brand owners take the time, and money, to force these issues that they will be settled for the good of the industry.

The transhipment case was referred from the Court of Appeal in London to the Court of Justice of the EU. It has yet to be decided, but an opinion from the Advocate General in February gave some hope to brand owners. That opinion said that for Customs to seize goods they must have at least "the beginnings of proof" that the goods may infringe an IP right. Importantly for goods in transit, Customs must have a "well-founded suspicion" that they may end up on the market in the EU. But a lack of information may also lead to a seizure, as it could be seen as evidence for suspicion. This was the case with Nokia, where Customs could not establish the consignee or exact destination.

Nichols's big bugbear, however, is China. It started back in 2006, when Jiang Zhipei, then chief justice of the Intellectual Property Chamber of the Supreme People's Court, expressed his frustration at foreigners' criticism of the country's court system.

"His point was, how can they criticise when they haven't even tried it?" says Nichols. "He invited people to come to China and try the system and I thought, hey, I'll take him up on that. Other brand owners thought I was mad. But I've been filing there ever since, and I'd rather litigate there than anywhere else in the world."

That first case was over a design infringement, one Nichols picked out with the aim of establishing an informal precedent. As with several cases since, it involved suing SIPO and getting practice at the office changed. "Other brand owners thought I was crazy for pushing the case – they still do today with similar cases – but I believe in the system and I believe in the role of companies generally getting involved."

Her faith has been backed up by two big wins this year. In Beijing, Nokia sued SIPO over a decision by the Patent Reexamination Board to invalidate two of the company's designs, based on their unauthorised publication on a website just before Nokia filed for protection in the US. The Board's decision was reversed and SIPO's internal rules changed to reflect standard practice on prior art.

In Shanghai, meanwhile, a court ruled that a counterfeiter making fake Nokia TVs for export was still infringing the company's trade marks. That was an important ruling given a 2009 case that seemed to create a counterfeit loophole for company's making goods solely for export. Nokia succeeded where the brand owner in that case failed partly because Nokia's trade mark has been recognised as well known by the Trade Mark Office, establishing a duty of care on the other manufacturer to avoid infringement.

It is interesting to compare this experience to those of companies such as Dyson – profiled in this Top 50 on page 45. Sir James Dyson, the founder, loses no opportunity to berate China's enforcement, often writing on the subject in British media. But then Dyson's first experience with copycats was in 2010, with its bladeless fan. Perhaps the key is experience with the Chinese system.

"My biggest frustration is that other companies deride China's IP enforcement. It has been wrong for so many years and for some companies it is sheer ignorance – they have never even been involved in a case in China," says Nichols.

Judges

Shaping Google Books

Judge Denny Chin
US Court of Appeals for the Second Circuit

Judge Denny Chin, who last year became the first Asian-American to serve in a federal appellate court, preliminarily approved the Amended Settlement Agreement for Google's book-scanning project in November 2009 in the Southern District of New York.

He took the case with him to his new post at the Second Circuit Court of Appeals. The Department of Justice weighed in, and amicus briefs in opposition were filed by Google competitors Microsoft and Amazon. In his final order, Chin decided that allowing the proposed settlement would effectively reward Google "for engaging in wholesale copying of copyrighted works without permission". The results of a status conference that was planned for June 1 are unknown, but Google's senior copyright counsel, Fred von Lohmann (see p37), said that the company is still in discussions with the plaintiffs.

Chin has said that the parties have three options from here. They can: 1) choose to litigate over Google's claim that snippets displayed in search results represents fair use, which Chin said would fail to address any of the broader questions at issue in the settlement; 2) renegotiate the settlement agreement; or 3) ask Chin to certify an immediate interlocutory appeal. But any renegotiation would need to include an opt-in, rather than the current opt-out model for authors, which Google has said is not commercially interesting to the company.

Colin Birss
Judge, Patents County Court

Colin Birss does not meet the expectations of a traditional judge. Sprightly, energetic and open to new ideas, he matches exactly the new image of London's Patents County Court, of which he became judge last year. IP owners and practitioners are now looking to him to ensure the court delivers on its promise to bring quick, simple and cheap litigation to the UK – making it more competitive with its continental neighbours.

The new procedural rules introduced for the court, coupled with a cap on damages and recoverable costs, have already led to a greater workload – though more so in trade mark and copyright cases than patent ones so far. The first judgments of Birss, who is just 46 and was until last year a successful IP barrister, have been broadly welcomed and many believe that if he can prove successful in the Patents County Court, then a promotion to the High Court will come sooner rather than later.

We like patents

The Supreme Court of the United States


John Roberts, Antonin Scalia, Anthony Kennedy, Clarence Thomas, Ruth Bader Ginsburg, Stephen Breyer, Samuel Alito, Sonia Sotomayor, Elena Kagan

In just over one year, the US Supreme Court has heard and issued decisions in five IP (four patent and one copyright) cases and granted petitions to hear three more patent cases next term. The spike in the nine justices' interest in IP is hardly surprising, as IP assets become more crucial to economic growth and stability each year. The Court simply recognises that "patents are too darn important to leave to the Federal Circuit", in the words of former US solicitor general Paul Clement at a recent conference.

The two latest additions to the bench – Elena Kagan and Sonia Sotomayor – have so far taken a healthy interest in the oral arguments and decisions that have been handed down. Their appointments, coupled with Justice John Paul Stevens's retirement last year, have led some to speculate that the Court is becoming decidedly more pro-patent than it has been in the past. With three Federal Circuit decisions having been affirmed by the Court this year, former Federal Circuit Chief Judge Paul Michel recently mused that the Court may have "a slightly different inclination this year than it did last".

But Clement said not to expect that trend to continue. "It is an anomaly that three cases were affirmed this term," Clement said, pointing out that the Federal Circuit was reversed by a cumulative vote of 59-2 in the seven patent cases prior to Bilski v Kappos last year.

To be sure, the Court still has its patent sceptics. Justice Stephen Breyer has taken issue with the potentially negative impact of patent protection in the past. In Stanford v Roche, he said in his dissent that "patents themselves have both benefits and costs" and that they "sometimes mean unnecessarily high prices or restricted dissemination; and they sometimes discourage further innovation and competition by requiring costly searches for earlier, related patents or by tying up ideas, which, were they free, would more effectively spur research and development". Breyer voiced a similar sentiment in Metabolite v LabCorp (2006).

Breyer's opinion in Metabolite could spell trouble for Prometheus Laboratories, whose patent was twice found to constitute patentable subject matter by the Federal Circuit, but is now in danger once again. Despite the Federal Circuit's favourable decisions, the Supreme Court has agreed to hear the case, which deals with a diagnostic method patent that is similar to the one at issue in the Metabolite case. It remains to be seen whether Breyer's views have changed, or if he may convince his colleagues to invalidate the patent, plunging diagnostic method patents into uncertainty.

Kong Xiangjun
Chief of the IP Tribunal at the Supreme People’s Court of China

Earlier this year the USTR released an out-of-cycle review of notorious markets that, in addition to naming most of Asia's infamous fakes hotspots, singled out online commerce sites Taobao and search engine Baidu. While both are trying to reduce IP infringement on their sites, the nominations showed that online enforcement of IP in China, which has strict rules for notarising and legalising evidence, can be almost impossible. Kong Xiangjun is one of the men tasked with trying to change that. Later this year, the Supreme People's Court is due to produce a Judicial Interpretation that will look at online copyright infringement. IP practitioners are waiting to hear how strict China plans to be. In addition to dealing with this issue, Kong has to cope with the increase in IP litigation in China's courts – a 36.3% rise between 2009 and 2010 – and is overseeing an experiment at the lower level where administrative, civil and criminal IP cases are held together to improve efficiency.

He is also unafraid to speak in public and impressed practitioners when talking about China's IP system at a conference coorganised by Microsoft and the McCarthy Institute at the University of San Francisco this year.

Regulators

The man in the middle

Kurt Pritz
Senior vice president, stakeholder relations, Icann

Icann's decision to press ahead with the new gTLD programme in 2011 focused a lot of attention on the two men at the top of the organisation – former chairman of the Board Peter Dengate Thrush and CEO Rod Becktsrom. But behind the scenes, senior vice president Kurt Pritz is one of the key figures responsible for implementing the programme. The Board decision to launch that programme, made in a packed room in Singapore last month (see news analysis on page 8), was predictably met with a standing ovation. The second standing ovation, however, came when Beckstrom chose to thank Pritz and his team for the work they have put in behind the scenes.

That ovation was a reflection of the affection Icann staff and the wider internet community have for the softly spoken Icann vice-president. Pritz has been involved in the non-profit corporation for almost eight years, joining from a position as vice president, engineering and production, at Disney. At a session explaining the new gTLDs his modesty came through in an admission that he is not a great public speaker, though he did admit to a "mastery of Icann arcania".

In an interview with Managing IP, Pritz said the main challenge with helping to develop the gTLD programme has been predicting where the problems might occur. "It's really about spotting the issues. My law background helped me fill in some spots, but it's about making something work that's effective."

Initially it seemed that the biggest problem would be defining the standards for morality and public order objections to new gTLDs. Then the trade mark lawyers and the GAC got involved. "I really think the IP issues were the most challenging and in a sense the most rewarding," says Pritz. While all sides wanted to prevent cybersquatting and other domain name abuse, they couldn't agree on how to do it.

The debate became increasingly heated and ended, on the evening before the vote, with a circular argument between the Board and the GAC over whether requiring trade mark owners to show use was fair, described by the EC representative as a "discussion between the deaf and the stupid".

Pritz has been on the outside, trying to facilitate that debate. "We always get stuck in the middle but we shouldn't be," he says. He stresses that, out of 80 initial problems that the GAC had, around 30 related to IP and only around four remained by the end. "They made tremendous progress and they never celebrated it and declared success," he adds. The challenge now for Pritz and the entire Icann organisation is to move from debate to implementation.

Margot Fröhlinger
Director, European Commission Internal Market

Can she do it? That is the question everyone is asking about Margot Fröhlinger, the European Commission's official in charge of IP policy, as EU member states inch closer to an agreement on a unitary patent and litigation system. No one doubts the determination or imagination of Fröhlinger, but the challenge of reconciling the demands of users, member states and the courts is enormous. All but two of the 27 EU states are now signed up to enhanced cooperation to create a single patent system, which is a considerable achievement in itself. But that system will not be used without an effective court structure – and that still requires a lot of work.

Meanwhile, Fröhlinger's team is also busy drafting what could be fundamental changes to the EU trade mark regime, following a report and consultation earlier this year. While less controversial than patent reform, this has also proved to be a tricky area to negotiate.

Commission officials normally rotate jobs regularly, and Fröhlinger has been tipped to move on soon. But with a Diplomatic Conference on patents pencilled in for next year, you would expect that she will want to do everything she can to seal the 40-year dream of a single patent system before taking up her next challenge.

Hugo Chávez
Venezuelan president

In 2006, President Hugo Chávez announced that Venezuela would withdraw from the Andean Community of Nations, a trade bloc now comprising Bolivia, Colombia, Ecuador and Peru, which in part set out the countries' IP policies. The move became official in April this year, three years after Venezuela's industrial property office (SAPI) announced that the country was abandoning Decision 486, the IP law of the Andean Community, and reverting to the Venezuelan Industrial Property Law of 1955.

The change has been a headache for IP lawyers, owners and for SAPI, but Chávez's view of IP rights, and patents in particular, makes it unlikely that stronger IP laws will be reinstated anytime soon. According to one source, the number of patents registered in Venezuela has fallen from nearly 800 per year in 1988 to fewer than 100 as of 1998. In 2009, during his weekly presidential address on state television, Chávez said: "What are patents? That's universal knowledge. We don't have to be subject to capitalist laws." Chávez's conflation of patents with capitalism has also led to the invalidation of several drug patents which could eventually lead to a drug shortage in the country. A new IP law is expected to be introduced this year by SAPI, but for now Chávez's policies have made the future for Venezuelan IP owners shaky at best.

Wen Jiabao
Premier of the People’s Republic of China

Since Wu Yi left her post as vice-premier in 2008, IP owners in China have expressed frustration that they do not have someone in government making the case for stronger enforcement. In October last year, Wen Jiabao stepped into the breach by persuading the State Council to approve a six-month campaign to crack down on fake and shoddy goods and personally endorsing the initiative. The campaign was extended to nine months and finished at the end of June.

Statistics in China are always impressive in size, and in a few months high numbers of seizures, convictions and new prison sentences are likely to be announced. More important, however, will be whether this campaign becomes part of a longer-term drive to improve enforcement. The influence of Wen, dubbed the People's Premier by domestic and foreign media, will be crucial in making sure that happens.

Changing the face of IP enforcement

John Morton
Director, US Immigration and Customs Enforcement

John Morton, who was confirmed as director of US Immigration and Customs Enforcement (ICE) in 2009, has said that his intention is to "change the face of IP theft enforcement". And he isn't shy about his hard-hitting approach.

This includes tactics such as Operation In Our Sites, "which will continue" despite criticism, says Morton. Operation In Our Sites – under which 125 domains linked to infringing content have been seized to date – has been staunchly opposed by the ISP and tech communities. A recent case filed in a New York court by one of the seized domains – rojadirecta.com – claims that ICE's actions constitute "an unlawful prior restraint on speech and is infringing users' and readers' First Amendment rights". But Morton is standing strong.

"There has actually been far more support for Operation In Our Sites than criticism, with strong support being voiced by rights holders and many members of Congress," he says. Morton adds that the seizures utilise "judicially authorised warrants obtained pursuant to a statute enacted by Congress", and says that the approach achieves the proper balance between the Constitution's mandate to protect IP and any First Amendment considerations.

Operation in Our Sites is just one in a series of efforts by Morton to crack down hard on IP theft since he's been with ICE. He became the first ICE director to visit China in September 2010, when he met with the vice minister of the Ministry of Public Security to discuss joint efforts on IP theft enforcement. Unlike some members of the US Congress, who have accused China of sanctioning IP crimes through "implied consent", Morton says he is "neither critical nor sceptical of China's efforts to curb IP crime". However, he dubs the country "a tremendous challenge for those in law enforcement and government interested in IP theft enforcement" nonetheless.

Prior to joining ICE, Morton served as the acting deputy assistant attorney general over the Computer Crime and Intellectual Property Section of the Department of Justice (DOJ), which is responsible for coordinating IP crimes and policy within the DOJ. "So, while not surprised so much by the scope of the problem, I am very much concerned that counterfeiters have transitioned from the classic trade marks violations of high-end luxury goods to almost any item on which a criminal can make a profit if counterfeited," he says.

ICE's investigations now include counterfeit heart medicines, fake air bags and bogus parts for military hardware. Morton says the trend represents an "absolute disregard for the potential impact on public safety" and "should be seen as a major public health issue".

"Multilateral enforcement" would be the most helpful tool he could be given to help him do his job, says Morton. But with potential solutions like the Anti-Counterfeiting Trade Agreement (ACTA) still in flux and the concept of IP crime still nascent in many countries, Morton has a hard road ahead. "There is little, if any, domestic IP crime," says Morton. "Law enforcement and governments need to work together."

Artists and inventors

Giving it away

Cory Doctorow
Journalist, blogger, author

In 2003, Canadian journalist, blogger and first-time novelist Cory Doctorow published Down and Out in the Magic Kingdom, a science fiction work set in the 22nd century. He then put the text online under a Creative Commons Licence and encouraged readers to copy it. That it ended up working in his favour was perhaps a surprise to anyone but Doctorow himself, who has since released other books using the same method. He figures that much like comic books in his youth, e-books are social objects that should be shared and reused. Many who acquire his books for free wouldn't have bought them anyway, he says, so he loses no sales but gains an audience.

Doctorow attributes many of his successes to having his books read widely. In 2007, he was the Fulbright Chair at the Annenberg Center for Public Diplomacy at the University of Southern California. He is a contributor to The New York Times, the Guardian and Wired. Doctorow is a leading commentator on technology, serving as Boing Boing co-editor and having been featured in the popular webcomic xkcd. In it, he wears a red cape, goggles and flees in a hot air balloon despite a real-life fear of heights – all (but a hot air balloon) presented to him in a spoof by the Electronic Frontier Foundation in 2007, when he accepted its Pioneer Award. "My fans' tireless evangelism for my work doesn't just sell books – it sells me," he says in a 2006 Forbes piece.

A prevailing theme in his writing is the liberalisation of copyright laws so that digital content can be shared freely. It's the only way for media businesses to survive in the digital age, he says, as copying things will only get easier and "you sure can't force a reader to pay for access to information anymore". Doctorow warns of the dangers of digital rights management software (DRM). Most troubling is its ability to restrict content owners' access to their own works, effectively handing over the control to vendors such as iTunes and Amazon. Trying to control individual copies of works online is "a fool's errand", he wrote in a 2010 piece for the Guardian, in which he criticised Viacom's attempts to have Google and YouTube publicise all content to be screened for copyright infringement. Doctorow says he doesn't care if an individual made the "daft" choice to build a business around preventing people from doing so.

"But here's what I do care about. I care if your plan requires that online services censor their user submissions; if your plan involves disconnecting whole families from the internet; if your plan involves bulk surveillance of the internet to catch infringers, if your plan requires extraordinarily complex legislation to be shoved through parliament without democratic debate; if your plan prohibits me from keeping online videos of my personal life private because you won't be able to catch infringers if you can't spy on every video."

Make your own album

The Kaiser Chiefs
Songwriters

When thinking of musical innovators, the Kaiser Chiefs is not the first band that springs to mind. Famous for catchy, anthemic rock songs such as I Predict a Riot and Ruby, the Leeds-based band is similar to any number of British groups doing the festival circuit this summer.

They way they released their latest album, however, makes them pioneers. To get hold of new release The Future is Medieval, fans can go to the band's website, choose 10 songs out of the 20 available, put them in whatever order they want, select their own album artwork and then pay £7.50 to download it.

The more entrepreneurially minded can also post links to their version of the album using Facebook and Twitter. If they manage to sell further downloads of the album for £7.50 they can keep £1 of that in their own PayPal account. In effect, they are consumers and resellers.

It's a nifty idea. Lead singer Ricky Wilson has claimed he came up with it while eating fish and chips on holiday in Cornwall with a friend. The initiative has been given a lot of positive coverage in the media, impressed by the attempt to personalise the process of buying an album online.

In addition to, as the cliché goes, empowering consumers, paying people to publicise and distribute the work is an innovative attempt to stop illegal distribution. The Kaiser Chiefs had direct experience of the damage this can cause when their previous album – Off with their Heads – leaked three weeks before release. With this initiative, the Kaiser Chiefs have regained some control over the online distribution of their work.

At the other end of the spectrum, Prince recently announced that he had lots of unreleased songs, but had no intention of putting out a new album because of the extent of online piracy. In trying to find a middle ground in which consumers are incentivised to pay money to buy albums online, the Kaiser Chiefs are pointing the way forward, not just for English pop and rock bands, but for the entire music industry.

Jonney Shih
Chairman, ASUS

The leader of one of Taiwan's biggest and most successful notebook and motherboard makers, ASUS, believes that innovation is the key to his company's success. For chairman Jonney Shih, learning how people prefer to work – and play – are building blocks to innovation. In an interview with the BBC, Shih said playing ping pong helps him come up with ideas to beat his competitors. ASUS's products include desktops, computer parts, and, perhaps more notably, the netbook, a portable and fairly priced mini-laptop that transformed the computer world nearly four years ago.

But competition in the PC market is fierce. Rival gadgets such as Apple's iPad have forced ASUS to think quickly and more creatively. Demonstrating its capability in keeping up with the rapid growth of the technology industry, ASUS recently launched the Eee Pad Transformer, an affordable Honeycomb tablet with a detachable keyboard.

Nick Bertke (Pogo)
Mashup/remix artist

Type the name DJ Pogo into your favourite search engine and you will be led to so-called movie remixes such as Alice, Upular and Expialdicious. These musical delights blend visual and audio clips from your favourite Walt Disney films – Alice in Wonderland, Up, Mary Poppins – into decidedly catchy and almost entirely altered beats. They are the creations of Nick Bertke, better known on the web and in the music scene as Pogo. Pogo began his career on YouTube, where he has shared his music with over 11 million people. Not surprisingly, his work was initially met with resistance. In 2009, Sony Pictures Entertainment had the video Bangarang – a remix of the film Hook – removed from YouTube, claiming that it infringed copyright. The release of Upular also resulted in the deactivation of Alice, Expialdicious and White Magic. "I suppose this had to happen eventually given the kind of world we live in," said Bertke following the removal of Bangarang. Not holding back, Bertke continued: "It's high time the music industry pulls its head out of its ass, and realises that today's remix culture is an asset, not a liability. To shoot down the potential here would be utterly illogical." Eventually, industry listened. Bertke has since been hired by Disney, and today spends 63.2% of his time on commissioned work for some of the largest entertainment companies.

Sir James Dyson
Founder and chairman, Dyson

While known primarily for designing innovative household products, Dyson has made a number of headlines this year by bringing up one of the most consistently hot topics in IP – poor enforcement in China. When Chinese Prime Minister (and Top 50 member) Wen Jiabao visited the UK in June, Dyson publicly asked UK Prime Minister David Cameron to pressure Wen on improving China's IP system. He claims that the company's latest invention – the Air Multiplier bladeless fan – has been the subject of over 100 infringements in 20 countries, all from copies originating in, you guessed it, China.

Many IP practitioners believe that Dyson is too negative about China's IP system, which is new and showing steady improvement. Foreign IP owners have had some notable successes (see the profile of Lucy Nichols of Nokia on page 39). But Dyson's criticism is part of a sustained attack on China's IP system. In the US, a report by the ITC claimed earlier this year that the US would gain 2.1 million jobs if China raised its IP enforcement level to that of the US. US politicians have latched on to this figure and, with a presidential election next year taking place in the context of weak US job growth, criticism of IP enforcement in China is likely to grow louder

Office heads

Popular and reforming?

António Campinos
President, OHIM

Less than a year into his role as OHIM president, António Campinos has shaken the office up while also winning support across Europe. In May this year, he won Board approval for an ambitious five-year plan that aims to increase the quality of examination, improve IT systems and enhance staff relations. Users and member states welcomed the plan, and put their trust in Campinos as the man to deliver it.

He was already familiar in the trade mark world when elected last year. Formerly head of the Portuguese IP office, he had chaired OHIM's Administrative Board and also been active within WIPO and in working with Portuguese-speaking countries. But following Wubbo de Boer as OHIM president was a step up, particularly given the strides the office has made in the past 10 years in becoming more efficient and eating into the backlog (not to mention building up hundreds of millions of euros in reserves).

But there will be tough tasks ahead. Users want examination quality improved, while Campinos will also have to implement any reforms that arise out of the European Commission's review of the trade mark system later this year. OHIM is also set to house the new Anti-Counterfeiting Observatory, something that many are sceptical about: the president may have to work hard to win them over.

You make billions from us

Tian Lipu
Commissioner, SIPO

It is not often that heads of foreign IP offices write opinion pieces for the Wall Street Journal. That Tian Lipu did so late last year underlines both the importance of China's record on protecting IP rights in US-Sino relations and the SIPO chief's determination to challenge received wisdom about it. In a self-assured article, Tian reminded readers that Western companies earn hundreds of billions of dollars from China in the form of royalties and warned that when it comes to creating a sound international environment for IP protection, "a climate of complaints and denunciations doesn't help".

But the public defence of China's achievements in the area of IP enforcement is just one part of Tian's international strategy. As the head of an office whose examiners are seeing a phenomenal rise in the number of patent applications coming across their desks, Tian has a real interest in securing greater cooperation between offices when it comes to handling requests for IP rights. To that end, the head of SIPO is playing an increasingly influential role in bilateral and multilateral collaborative efforts: he agreed to launch a pre-pilot patent prosecution highway with Japan earlier this year and is due to start others with the US and Korea. In the IP5, made up of the IP offices in Europe, the US, Korea, Japan and China, Tian is something of an old hand: since 2007 the heads of each of the other offices has been replaced.

Of course longevity alone does not guarantee influence. But the astonishing rate at which demand for patent rights is growing in China ensures that SIPO is taken seriously. Last year, for example, Tian's office received more than 390,000 applications for invention patents. A high figure already by the standard of any international IP office, SIPO estimates that applications will double by 2015, in part the result of meeting commitments the government made in its latest Five Year Plan. In it, politicians for the first time set goals for the number of patents Chinese inventors apply for, as part of a strategy to shift economic growth away from low-end manufacturing and towards high-end innovation. The Plan says there should be 3.3 invention patents for every 10,000 people in China by 2015, almost doubling the ratio in 2010.

Tian told Managing IP in June that meeting this aim would probably require SIPO to double its number of examiners: from the 5,000 it has now to 10,000. Unsurprisingly, he described this as a great responsibility and pressure on the Office. If Tian can manage the unprecedented expansion of both applications and the team of examiners without jeopardising patent quality in China, his reputation and influence abroad will only strengthen.

Benoît Battistelli
President, European Patent Office

A year into Benoît Battistelli's five-year term as EPO president, insiders already remark on how he has transformed the Office. In an attempt to draw a line under controversial changes (such as limits on divisionals) he has promised no more urgent changes, and adopted a deliberately open, inclusive approach – for example publishing a weekly blog on patent issues at the EPO and beyond.

But that does not mean he has been idle. As well as overseeing some senior management changes, Battistelli has reached out to countries such as Morocco, cooperated with other international bodies, and is playing an active role in the discussions on patent reform in the EU. The Frenchman also last year signed a deal with Google ("that well-known European SME" as he quipped) to develop machine translations of patents.

There remain important challenges, particularly to do with relations with member states and managing the Office's ever-growing workload, but during his first year in office Battistelli has earned enough goodwill to ensure he should be able to tackle them.

Francis Gurry
Director general, WIPO

"The cushiest job in Europe!" That was how the grand position of WIPO director general was described by one observer recently. Well, any job is what you make of it and it might be true to say that not all the occupants of the top position at WIPO have given the impression of diligence. But that accusation could hardly be levelled at Francis Gurry.

For Gurry, the role of director general is not about photo opportunities with heads of state in exotic locations (though a certain amount of that is required). The Australian is a strong believer in multilateral solutions to IP policy problems – whether in the area of patent harmonisation or audiovisual works – and sees WIPO as the main forum to achieve them.

Given the deadlock in the past few years between north and south, negotiating substantive treaties has become harder. In that context, and under Gurry's leadership, WIPO is increasingly focusing on improving and building platforms to simplify and enhance IP information, procedures and systems. The workload is considerable and, half-way through his term, Gurry would probably challenge (eloquently) the contention that his role is in any way undemanding.

David Kappos
USPTO

As usual, the head of the USPTO has had his work cut out for him the past year. At the top of David Kappos' list has been getting patent reform passed. A bill was approved by the full Senate in March this year that would grant the Office control of all its user fees, harmonise patent prosecution with the rest of the world by changing the US to a first-inventor-to-file system and revamp the post-grant review process. Then, in an historic move, the House of Representatives passed its own bill late last month, bringing the US closer than ever to transforming its patent system. But – importantly for Kappos – the House bill differs in its approach to allowing the USPTO director to control fee collections, which Kappos has said is the Office's "biggest challenge".

Many were disappointed with the final House version, but the USPTO still supports the bill and is hoping that the language will be clarified before it becomes law. When and if President Obama signs the bill into law, Kappos will be busier than ever. He will have to get his Office ready for major changes to and expansion of post-grant review proceedings, which will require hiring more staff, phasing out current procedures and drafting extensive rules packages for public comment.

Bloggers

Opening up India’s IP system

SpicyIP

Clockwise from right: Shamnad Basheer, Prashant Reddy and Sumathi Chandrashekaran

As a visiting fellow at the University of Illinois at Urbana-Champaign, Shamnad Basheer started the Spicy IP blog "out of boredom" in 2005. He has three connected aims: to improve the quality of IP reporting in the mainstream press, to fight corruption in the IP system through transparency and to help create a more meritocratic IP profession in the country.

It was an ambitious agenda. Even dealing with aim one was a serious challenge: "More than 70% of IP reports in the mainstream media were factually incorrect," he says. By writing in an accessible style and working to educate a few reporters, Basheer has helped to remedy that. While inaccurate scare stories about mythical "yoga patents" do still recur, IP reporting in India has improved. In particular, CH Unnikrishnan, a reporter for Indian business paper Mint has broken a series of important stories.

A lot of Unnikrishnan's stories concern the second problem Basheer has in his sights – corruption. "One way to tackle this is by shedding more light on the process," he says. The blog has consistently campaigned for greater access to information, launching a public petition on the topic in 2009. It found a close ally in PH Kurian – the Controller General of Patents Trade Marks and Designs appointed in 2009. Kurian made the system more transparent by publishing more information and, crucially, increased automation to ensure that time-consuming matters such as appeals were dealt with in chronological order, not according to the size of the envelope handed to the official. The focus has not just been on India's Patent and Trade Mark offices. Co-blogger Prashant Reddy has been using Right-to-Information requests to uncover what has been going on at two of India's copyright collecting societies – IPRS and PPL.

Reddy joined the blog when Basheer put out a call for new contributors in 2007. "In the beginning it was just about building up a good team of writers," says Reddy who is, like Basheer, a former private practitioner turned academic.

It is impossible to write a blog about IP in India without getting involved in the debate on patents and access to medicines. The blog itself takes care to be issue-based and has at times criticised both the global pharmaceutical companies and the NGOs and campaigners who oppose their patent applications.

The difficulties of trying to bridge that divide were shown in 2006 when Basheer pointed out that a government report into the compatibility of India's Patent Law with TRIPs had copied part of his submission. NGOs unhappy with the conclusions of the report then launched a campaign against the author, RA Mashelkar, claiming that the report was plagiarised, and forced the author to withdraw it and write it again.

The Trademark Blog

Martin Schwimmer

Leason Ellis partner Martin Schwimmer has worked for Moses & Singer and Fross Zelnick Lehrman & Zissu in New York, handling trade mark and copyright issues. But perhaps he's best known as the publisher of The Trademark Blog, billed as the world's oldest weblog on trade mark and copyright issues, with entries dating back to May 2002. Schwimmer uses his blog to succinctly summarise cases and include court documents. He at times even pokes fun at himself, as he did in a June 21 post featuring a screenshot of an appearance on CNN titled "I might wear concealer all the time from now on". His online presence extends to Twitter, where he has almost 2,000 followers. Schwimmer's expertise in domain name disputes can be traced back to 1994, in MTV v Curry, the first reported dispute of its kind. In 1998, he participated in Tiffany & Company v Fabriques de Tabac Reunies in Singapore's Court of Appeal, which altered famous mark law there to introduce the concept "reputation without use". Schwimmer is a frequent speaker at the annual meetings of the ABA, AIPLA and at various INTA conferences.

Patently-O

Professor Dennis Crouch

Professor Dennis Crouch is renowned for Patently-O, a patent blog that he edits and updates on an impressively regular basis, focusing on cases before the US Court of Appeals for the Federal Circuit. Indeed, the blog is known for reporting on every single patent case before the Federal Circuit.

Crouch and Patently-O have a well-deserved reputation for dedication and attention to detail and it's not hard to find lawyers in the US who will refer to it as the best IP blog in the country.

Crouch is Associate Professor of Law at the University of Missouri School of Law in Columbia, Missouri. Before taking up the post he worked as a patent attorney at McDonnell Boehnen Hulbert and Berghoff LLP.

As an attorney Crouch worked on cases involving disputes on computer memory, hardware and automotive technologies. He has also taught at Boston University Law School. He has published several journals including A Trademark Justification for Design Patent Rights and An Empirical Study of the Role of the Written Description Requirement in Patent Prosecution.

IPKat

Jeremy Phillips

The IPKat isn't one person but rather eight; Jeremy is merely the most frequent contributor. But then one of those contributors is a cat – Merpel – and the IPKat and its opinions are frequently referred to in their own right. Then there are the pictures of cats, of which there always seems to be a new one that is oddly closely related to the subject of the post. Clearly many people out there delight in taking pictures of their cats expressing a variety of emotions.

Quirks aside, it is impossible to deny this blog's popularity, scope or level of analaysis. Over 5,500 people voluntarily receive its more than daily emails. At last count 2,346 follow it on Twitter.

The blog covers patents, trade marks and copyright, with a bias towards the UK and Europe but with regular updates from the US – in the person of the AmeriKat. It writes at least once a day, frequently including Sundays, and often seems to post at odd hours of the day. Much of this must be attributable to Jeremy's dedication, and as long as he is running it the blog will continue to influence thinking in IP for years to come.

Rewrite the law

TechDirt
Mike Masnick

If Mike Masnick could have his way, he'd have IP laws rebuilt from scratch. "I think our elected officials are mostly trying to patch together and duct tape the law, without realising that the fundamental structure of IP law doesn't fit with what the technology allows today," he says. It's a lofty ideal, he realises, one that likely won't happen anytime soon. It's just that the current method tends to exacerbate the problems it aims to fix. And he has never been one to mince words.

Masnick is the CEO and founder of Techdirt, a blog known for its outspoken commentary on technology issues. Formed in 1997, Techdirt gets between 75,000 and 100,000 hits a day. Masnick says the blog has allowed him to meet other tech-minded folks, and has led others to seek him out for consulting work and speaking engagements. In 2005, he even coined the 'Streisand effect' to describe an online phenomenon in which someone's attempts to conceal a fact actually draws it more attention.

The interactive nature of blogging – this "weird thing" that he started back in the day when the word by which it's now commonly known didn't even exist – shapes his commentary. "My whole thought process is never 'here is the final story'," he says. "My thought process is very much about 'here is what I know, and here is my opinion based on what I know'. I very much expect people to contribute to that."

Recent discussions have centred on Sony's attempts to stop users from "jailbreaking" their PS3s and subsequently getting hacked (an example of the Streisand effect in action, he says) and, more extensively, why the Protect IP Act is "bad news". For one thing, he says the Act is written in a way that could seize others' free speech as a result of the different ways people define infringement. While the VCR, the MP3 player and the photocopier were at one point thought to infringe property rights, for example, they were later able to work legitimately. Some became the predominant vehicle for the industry that formerly complained about them, he says. Further, he says the Act makes it far too easy for the government to shut down sites, possibly legitimate ones, without due process. "If you're going to have that situation, at the very least there should be some kind of adversarial hearing process," Masnick says.

While those in the tech industry could certainly put more effort into lobbying and educating Congress, Masnick says many politicians' deep-seated misunderstanding of technology makes this difficult. He believes some of the "massive tension" between where technology is going and the laws that govern it comes from a generational gap. But as technology is reaching people in unprecedented ways, Masnick hopes this will also change.

In-house

Let the litigation commence

Wang Haibo
IP director, ZTE

As China's technology companies seek new markets overseas, they will inevitably get involved in IP litigation. How they cope with that will be a key sign of whether they have what it takes to move beyond their huge domestic market and become global brands. Telecoms equipment maker ZTE already bears the scars of some bruising international patent battles, but will face even sterner tests over the next few years.

In April Swedish rival Ericsson sued ZTE in the UK, Italy and Germany, after negotiations of more than three years failed. Kasim Alfalahi, the chief IP officer at Ericsson, claimed ZTE infringed some of its patents for second and third generation wireless technologies. ZTE retaliated by suing Ericsson in China.

Later in the same month, domestic rival Huawei (both companies are based in the technology boomtown of Shenzhen) sued ZTE in Germany, France and Hungary, accusing it of infringing patents that cover long term evolution (LTE), a next-generation mobile technology, and data card technology. Huawei also accused ZTE of using one of its trade marks on some of its data card products without permission.

The man who has to deal with both attacks is Wang Haibo, ZTE's IP director. "We are facing a lot of IP problems in foreign countries. For example, our products have been seized by Customs because of alleged trade mark infringement and I have to deal with it. This is now part of the regular work," he says, claiming that the lawsuits were "not entirely unexpected".

The legal attack is, at least in part, a sign of success. Created in 1985 by a group of state-owned enterprises connected with China's Ministry of Aerospace, ZTE listed on the Shenzhen stock exchange in 1997 and in Hong Kong in 2004. It has since tried hard to expand abroad, winning a lot of orders for Code division multiple access (CDMA) networks. That money has been ploughed back into 15 global R&D centres. The company aims to invest 10% of its budget in R&D.

This has led to a stunning increase in PCT applications. From 188 applications in 2008, ZTE rose to 22nd in WIPO's table of biggest PCT applicants with 517 applications in 2009. Provisional figures for 2010 show ZTE jumping to second place in the table (behind Panasonic, but ahead of Huawei) with 1,863 applications. And in a press release in May, ZTE claims to have taken top spot in the first quarter of 2011, with 974 applications, far more than second placed Panasonic, which managed only 559.

Filing lots of patents does not necessarily mean that a company is innovative. But these patents will soon be tested either in the courts or in settlement negotiations.

Wang admits that IP litigation overseas initially "felt quite scary" but is now able to boast of the company's success in fighting off patent trolls that are still preying on other companies. The team is actively recruiting legal counsel to join it in Europe and North America.

He also seems relaxed about taking on Huawei – China's biggest telecommunications company. "From a marketing point of view, I agree with its policy of suing, because it is necessary to compete. But from a technical point of view, we don't fear it." In fact, his lawyers seem to be looking forward to the challenge: "Frankly, with a case against Huawei, our IP team gets quite excited."

Gerhard Bauer
Chief trade mark counsel, Daimler

Gerhard Bauer has been involved in IP since filing a patent application for a sealing device for a combustion engine at the age of 13. Given this early interest, it was perhaps inevitable that Bauer would follow his father into the patent attorney profession, working for the car company Mercedes-Benz.

More than 20 years on, he remains at the company (now called Daimler) but since 1992 has focused on trade marks and licensing issues rather than patents. He heads a team of 13 that manages some 36,000 trade marks, 5,000 design rights and 6,000 domain names and has become known throughout the global trade mark community as a popular speaker and advocate of trade mark harmonisation.

Earlier this year Bauer became the first non-native English speaker to be president of INTA. He says the "burning issues" for his one-year term are European trade mark reform, ACTA and the new generic top-level domains. Progress on all three is expected by the end of the year, and you be sure that under his presidency INTA – on behalf of brand owners – will be at the centre of the debates.

John Amster
RPX

When John Amster's company went public in May this year, the patent world watched with eyebrows raised. Founder of defensive patent aggregation company RPX Corporation, Amster has become a controversial figure in the patent world. But the success of its IPO of 9,695,000 shares has proven that companies find Amster's business model intriguing, at the very least. While some are sceptical of its ability to remain successful long term, RPX's first quarter financial results for 2011 showed that the company's revenue was up 89% from the first quarter 2010, at $34.4 million.

Looking ahead, the company intends to grow its client network, acquiring additional patent assets, enhancing client relations and providing "complementary solutions that further mitigate patent risks and expenses for operating companies", according to the company's S-1 filing with the US Securities and Exchange Commission. The latter includes plans to "facilitate joint defence agreements and cross-licensing arrangements" among RPX clients.

But the main challenge for RPX will be to keep its clients coming back. While its portfolio already consists of more than 1,600 US and international patent rights in consumer electronics and PCs, e-commerce and software, media content and distribution, mobile communications and devices, networking and semiconductors, that amounts to only a small fraction of total patents. "Our ability to attract new clients and renew the subscription agreements of existing clients depends on our ability to identify patent assets that are being asserted or that could be asserted against our existing or potential clients," says RPX, outlining the risks of its business model in its S-1. At an annual fee of up to $5.2 million per year depending on the company's operating size, RPX will have to buy up quite a few patents in order to prove its continuing worth.

Campaigners

Crusading against bad patents

Dan Ravicher
President and executive director, The Public Patent Foundation

Since establishing the Public Patent Foundation (PubPat) in 2003, Dan Ravicher has led a crusade against what he calls bad patents. His inquiries have sent patents owned by the likes of Microsoft, Pfizer and Columbia University back to the USPTO for reexamination. His quest – perhaps PubPat's biggest – against Myriad Genetics over breast cancer gene patents could reverse 35 years of USPTO practice regarding gene patentability. The US Court of Appeals for the Federal Circuit is expected to issue an opinion in the next few weeks.

Opponents claim a decision against Myriad would impede the patent system, but Ravicher points out that PubPat has challenged less than 10% of the claims in the seven patents in question. He and those on his side – the ACLU, 20 plaintiffs and the USPTO – challenged only the claims they believed to have violated the rules, leaving the vast majority intact, he adds. "What I hope to see and what I will continue to work on is improving quality in the patent system so legitimate, deserving patentees are rewarded," says Ravicher. "I just wish more people would focus on that."

Ravicher, who also teaches at the Benjamin N Cardozo School of Law in New York, says much of the troubles plaguing the patent system today stem from low quality patents. "If you have high-quality patents, all of the other problems would go away," he says. "The backlog would go away. You wouldn't have trolls."

Such hindrances, he believes, have left patent owners with few options to get the full value out of their patents. Attempts to do so have given way to the rise of patent auctions, as litigation is often costly, time-consuming and, in the case of technology licensing company Rambus, fruitless, says Ravicher. The California-based company has been embroiled in litigation involving memory chips since the 1990s. "It's very hurtful for the company, as far as I can tell," Ravicher says. "No one has legitimately challenged its patent validity, but it's still not able to get a verdict to get its patents fully respected. That's a real problem."

PubPat has also staunchly defended the false marking statute and criticises efforts to amend it to require that a person bringing a suit must have "suffered competitive injury as a result of a violation of this section". That language is part of both patent reform bills passed by the House and the Senate, and could become law very soon. Under the present statute, such suits can be brought as qui tam actions in the US, in which a third party with no competitive stake in the case can bring a claim.

Ravicher has been especially vocal about recent challenges in the Federal Circuit questioning the constitutionality of the false marking statute. The law, he says, prevents companies from misleading the public and, with the support of the Department of Justice and the US government, will likely hold up in court. "It's pretty clear why that's bad behaviour, especially [with respect to] large pharmaceutical companies – the ones we've sued," says Ravicher, who has brought claims against GlaxoSmithKline and Johnson & Johnson. "They shouldn't be allowed to exploit the system."

Richard Stallman
Free software activist

He's not the most popular figure among IP owners but, boy, does Richard Stallman have a big following among programmers and engineers. Anyone who has ever heard the response to his passionate speeches, seen the queues for his book signings or witnessed the applause for his withering attacks on the big software companies can testify to that.

There are few shades of grey in Stallman's world: proprietary software should not exist as it "imposes an unethical social system"; Microsoft Windows is "Malware"; Apple's "iGroan and iBad" are as bad; Amazon's "Swindle" is a "threat to human rights"; software-as-a-service "is an insidious threat"; Facebook "is not your friend"; and ACTA is "a dishonestly named treaty".

The only true path is free software (don't call it open source), according to the man who used to work on artificial intelligence at MIT and wrote the popular GNU General Public Licence. He opposes digital rights management and supports the legalisation of file-sharing. Stallman is easily dismissed as an eccentric. But rights owners need to grapple with his arguments as he voices views that are widespread in western societies.

Javed Akhtar
Poet, lyricist, scriptwriter

Javed Akhtar is a man on a mission. He wants to reform India's copyright law and open up the Indian Performing Rights Society, which he claims is operating with Bollywood's film producers as "a kind of cartel" to deprive authors, composers and lyricists of their rights and the income that they deserve.

A successful poet and lyricist, Akhtar freely admits that he has had to learn about copyright from scratch: "I did not have the faintest idea what performing rights and publishing rights were." With the help of other high profile musicians and authors, Akhtar has pushed for amendments to the Copyright Act that would make sure that authors and composers are still entitled to a minimum of 50% of royalties earned outside of the box office (much of India's pop music comes from the film industry). The Copyright Bill is expected to be voted on during the Monsoon Session of India's parliament, which runs from July to September.

During his keynote appearance at the World Copyright Summit, organised by the International Confederation of Authors and Composers Societies, Akhtar explained his case clearly and passionately and was praised from the floor by Robert Ashcroft, chief executive of the UK's PRS for music, who described him as "a ray of light in what is a very gloomy world".

Ellen ‘t Hoen
Executive director, Medicines Patent Pool

The concept of a Medicines Patent Pool is gaining ground thanks in part to the strong and skilful advocacy of Ellen 't Hoen. Unitaid established the Pool in 2008 to increase access to medicines in low- and middle-income countries. It aims to do this by persuading patent holders to place their IP in the Pool and then licensing it to other companies capable of developing new treatments, such as medicines specifically designed for developing countries where, for example, it is more difficult to refrigerate drugs. The aim is to compensate patent owners that contribute to the pool.

The idea still has its sceptics. In 2009 Stéphane Drouin, head of European patents at Pfizer, said that IP is not an issue when it comes to access to medicines – a call that is echoed by companies pushing for stronger protection for pharmaceutical patents in India. Despite these doubters, the Pool is making steady progress. It is in negotiations with F Hoffmann-La Roche, Gilead Sciences, Sequoia Pharmaceuticals, Viiv Healthcare and the US National Institutes of Health. WHO director general (and former Top 50 member) Margaret Chan said that she admires the companies already involved in negotiations. In a press release 't Hoen said that "the call on patent holding companies to engage with the Pool is getting stronger by the day".

The human impact of patents

Michelle Childs
Médecins Sans Frontières

Michelle Childs spends a lot of her time chasing down effective extensions of TRIPs requirements in free trade agreements (FTAs). But her latest victory was more down to the people on the streets.

On June 22 at the UN High Level Meeting on HIV and AIDS, India confirmed that it will not accept data exclusivity as part of its FTA with the EU. Data exclusivity is part of a trio of patent protection measures – the others being patent term extensions and patent linkages – that would have extended protection of patents in India and the EU. Data exclusivity can extend protection by up to 10 years by preventing generic companies from accessing information on drugs whose patents have expired. The first two extensions had already been ruled out of the FTA, but this was the final confirmation on data exclusivity.

In March, around 4,000 people with HIV/AIDS protested in New Delhi against the impact the FTA could have on access to affordable medicines. "The reaction of civil society in India was great," says Childs, who is the director of policy and advocacy on the Campaign for Access to Essential Medicines at Médecins Sans Frontières. "It showed people were prepared to stand up for public health and agreeements not going beyond TRIPs."

There are still issues with the agreement from her perspective, particularly the extent of patent enforcement (which could extend to treatment providers like MSF) and international arbitration. But more importantly, there are other free trade agreements being negotiated, including India-EFTA (Norway, Swtizerland, Iceland and Liechenstein), India-Japan, EU-Mercosur, Asean and trans-Pacific.

"We hope this news from the EU-India talks will set an important precedent for those other negotiations," says Childs. The Mercosur and Asean regions in particular include Brazil and Thailand, both key countries for MSF. Indeed, she speaks to Managing IP from a health technologies conference in Brazil.

There have already been some positive signs: Norway has refused to take part in the IP aspects of the India-EFTA agreement and Australia is making similar noises in the trans-Pacific talks. "Everywhere countries are becoming more aware of their rights and attempts to extend TRIPs – they are far more sophisticated now than when they signed TRIPs," says Childs.

Childs has been at MSF for three years, having previously worked at NGO Knowledge Ecology International. The biggest benefit of being at MSF, she says, is that it brings the impact of IP into sharp focus. "Often talk about patents is just an intellectual debate between lawyers, but at MSF we are treating people first hand and understand the human effects these issues have."

Ian Hargreaves
The Hargreaves Review

As this issue of Managing IP goes to press, the UK government is about to publish its detailed response to the Hargreaves Review. Ian Hargreaves, the author and professor of digital economy at Cardiff University, is therefore understandably hesitant about predicting the impact of the Review. But he's certain that there are too many of them.

"One of the points I made quite strongly is that the fact there have been so many government reviews of IP suggests there is something wrong with the system. Having external reviews and parliamentary process is a cumbersome way to address an area that changes so quickly."

This frequency of analysis must certainly undermine the effect of the Review. But then the suggestions Hargreaves on that point could have a long-lasting effect themselves. He suggests several reforms of the UK IPO to give it a clearer remit, written in law, and small amendments to copyright law to build in adaptability to future changes in technology.

"Neither of those changes is simple, but they are both urgently needed. The UK will pay a big price in lost growth if they are not made. So perhaps the government will push ahead with them, given the high stakes," says Hargreaves.

Michael Geist
University of Ottawa

Canada isn't short of outspoken characters when it comes to copyright law. But blogger and academic Michael Geist gets the nod in this section, as law professor at University of Ottawa and Canada Research Chair in Internet and E-commerce Law there.

Geist encourages visitors to his blog to "speak out on copyright, make your voice heard", and his was certainly a voice to contend with in the debate over Bill C-32, the proposed legislation on copyright in Canada that was introduced last year but died with this year's elections.

Geist's writing is notable for its considered analysis, however, and lack of blog-fevered rant. As with a recent post on the Canadian Supreme Court's treatment of fair dealing, in which he compares the Court's test with a submission by the Canadian Recording Industry Association. It is only towards the end of two-page post that he concludes the Association is "displaying remarkable hubris" and its "legal arguments are weak – they rely almost entirely on non-Canadian law".

Wu Handong
President of Zhongnan University of Economics and Law, China

When Wu Handong talks about IP, China's policy makers listen. He has been president of Zhongnan University of Economics and Law for 15 years, serves as director of its centre for the study of IP rights and is chairman of the Intellectual Property Rights Law Association of the China Law Society. That research will also be crucial in forming the proposals for the amendments to China's Copyright Act. In an article for the inaugural edition of The WIPO's journal, Wu split China's IP history into four phases: passive acceptance (of an IP regime imposed from outside), selective arrangement (the first laws made in the 1980s and early 1990s), modulated application (meeting TRIPs requirements) and active decision making (the National IP Strategy and developing domestic innovation).

Despite widespread predictions that China is becoming a technology powerhouse, Wu explains in the paper that computer makers, after paying licence charges to Intel and Microsoft, only earn "the price of 10 apples" for each computer they make. Wu, like many in China, views this as unsustainable and, as debate over China's indigenous innovation policies heats up, foreign IP owners should bear in mind that it is anecdotes such as this that are driving academics like Wu to help develop policies to encourage domestic innovation.

Academics

How to stop flailing about

Mark Lemley
Stanford Law School, founder of Durie Tangri

Some industries have been quicker to adapt to the digital age than others. The music industry led in finding a suitable business model, followed by the movie industry. Far behind were newspapers, which, as Stanford Law School professor, influential commentator and prolific essayist Mark Lemley sees it, are in the "flailing about" category. "The first stage with new technology always seems to be denial – that 'we'll just prevent this technology from happening', sue to shut it down or do something else that never works," he adds.

Lemley speaks from experience. Not just one to write about IP, he is also a practising attorney at Durie Tangri, a firm he founded with old law school friends. There, he's defending online DVD rental start-up Zediva against major Hollywood studios alleging copyright infringement. He likens it to when the studios tried to keep VCRs and DVRs out of the market.

His commentary also extends to patent reform (on the removal of USPTO fee diversion language: "that just doesn't make any sense to me") and the Protect IP Act ("I'm not sure why we need the Act at all"). Lemley represents Puerto 80, the Spanish company that owns Rojadirecta.com and Rojadirecta.org – domains that were seized amid the Immigration Customs Enforcement's increased IP enforcement strategy. "I think that's an indication we can't just trust the government to do the right thing," says Lemley, who has filed a petition in the Southern District of New York to get those domains back. "I fear what they're looking for is a short cut, and I don't think we should give it to them."

For trade mark owners, social media seems to pose the greatest challenge. "It represents a loss of perceived control over ways in which the brand is used in conversation in public," he says. While it is an opportunity for brand owners to engage customers in new ways, there are risks. They, for example, went from having a New York Times editor review their products to suddenly having anyone on the internet post raves (or rants) on Twitter, Facebook and Yelp. As with copyright owners, the first instinct of brand owners is often to try to keep it from happening. "That's scary, and I understand why that's scary," says Lemley. "But I'm not sure that 'Well, we'll just go to court and get control back' is either feasible or ultimately a good idea."

The companies that will ultimately succeed will be the ones to figure out not only how to reach more people with new technology, but to assess what those people will pay for, Lemley says. In Is the Sky Falling on the Content Industries?, he points to the radio, the MP3 player and cable television as examples of technologies that were met with resistance and became entrenched in the business models of the industries that opposed them. "The key has to be a willingness to accept the world is changing and not try to hold back the tide," Lemley says. "There are silver linings here, and history suggests that as we get new technologies, the silver linings outgrow the cloud."

Defeating gene patents

Luigi Palombi
IP consultant and academic at Australia National University

Gene patents are under attack in Australia. A Federal Court is considering litigation brought by Cancer Voices Australia and Yvonne D'Arcy, a woman from Brisbane with breast cancer, that will look at patents related to the BRCA1 and BRCA2 genes. A bill introduced into the Senate last year would rule out patents on human genes and biological materials.

One of the key individuals behind both the litigation and the Bill is the academic Luigi Palombi. He is very clear in what he believes on the topic of patenting genetic materials. "Fundamentally, a gene and a protein which exists in nature and which is merely extracted from nature can never be an invention."

He is worried that allowing genes to be patented will bring the world back to the 17th century, when monopolies were granted over "virtually everything". "It is important to stick to fundamental principles, and the most fundamental principle is you have to have something capable of being an invention," he adds.

Lots of IP owners in Australia disagree strongly with these views. They argue that the issue of patents on genetic material is more complex than the opponents make out, and point out that banning gene patents would not affect the patents on the BRCA1 and BRCA2 diagnostic tests.

But Palombi and his views are proving influential. In 2008 Bill Heffernan, a Liberal Senator from New South Wales set up an enquiry into gene patenting in Australia after Palombi alerted him to the issue. After multiple delays, that enquiry did not recommend an outright ban on gene patents, but the Committee did say that it "strongly rejects" the approach of IP Australia that genetic information that is isolated from its naturally occurring state can be classified as an invention and be patentable.

Palombi was a partner in the 1980s at what is now Davies Collision Cave and has also worked for some of Australia's other leading IP firms. "It's very easy for people to try to pigeon-hole me as anti-patent and that's not true," he says. But during his time in private practice he developed concerns about the patent system, especially concerning a case on the Hepatitis C virus in the 1990s. After spending time outside Australia he returned in 2001 to complete a doctorate and to bring his concerns to the attention of policy makers.

The eyes of Australian IP lawyers are now on the Patent Amendment (Human Genes and Biological Materials) Bill 2010, which was introduced by four senators, including Heffernan.

Industry associations

Come to me

Jack Chang
QBPC and GE

In all his years promoting IP, Jack Chang has come to realise that working with the Chinese government is not necessarily a difficult task. It merely requires understanding and trust – a relationship that takes time to build. A relationship that the Quality Brands Protection Committee, which he is chairman of, has worked hard to develop.

Chang foresaw that China would transform from being a "made in China" to "created in China" economy. He set up a patent committee within QBPC in 2005, which has often been enlisted for input regarding new legislation. The group's advice was adopted in implementing regulations for the Patent Law amendments.

When China announced its six-month anti-counterfeiting campaign last October, Chang and his team at the QBPC were called on to provide advice to senior law enforcement. QBPC members shared their experiences to help come up with a master plan. More than 3,000 people were arrested and nearly 300 websites were shut down as a result of the nationwide enforcement operation.

More recently, Chang was invited to a meeting by the Ministry of Commerce (Mofcom). Representatives from nine ministries and eight Chinese trade associations gathered together to discuss the fight against counterfeiting exports to Africa. Effective criminal investigations have led to the arrests of operators servicing more than 50 suppliers. Police from respective provinces have started investigating those suppliers, but Chang stresses more needs to be done. "We're still on the learning curve, but the good thing is the Chinese government ranks this issue as high priority."

In the last year, Jack and his team at QBPC have also provided constructive feedback on China's controversial indigenous innovation policies, which seek to promote Chinese home-grown technology by making it more difficult for companies with IP outside China to secure government contracts. A US International Trade Commission Report that attacked China's indigenous innovation policies was criticised by IP practitioners in the country. The near 200-page document revealed that foreign companies felt the laws were "potentially reducing business opportunities in China's fast-growing economy". As of July 1, however, the government has discarded these rules, and QBPC is helping the government work out the next step.

For Chang, his role is to help build an effective communication platform between the Chinese government and industry. He encourages local companies to go to the QBPC instead of relying too much on the government for help supporting innovation.

Chris Dodd
MPAA chairman and CEO

By the time Chris Dodd became chairman and CEO of the Motion Picture Association of America earlier this year, he had had an illustrious career in Congress. The Dodd-Frank financial services reform bill bears his name, and he played a significant role in the passage of healthcare reform. As Connecticut's longest serving member in Congress, Dodd was popularly elected eight times. He was also the state's youngest person elected to the Senate. In an unsuccessful presidential bid in 2008, Dodd had counted Alec Baldwin and Barbra Streisand among his allies in Hollywood.

Though his MPAA appointment seems to have received favourable reviews from the industry, it remains to be seen how he will handle some of the its longstanding battles. The organisation has lobbied for the Anti-Counterfeiting Trade Agreement, has sued search engines TorrentSpy and Kazaa, and advocates the elimination of sites that allegedly host infringing material. Upon assuming his role at MPAA, Dodd addressed piracy, saying in a statement: "Protecting this great American export will be my highest priority."

Nunzia Varricchio
Chair, MARQUES

What a time to be leading an organisation focusing on trade marks in Europe. Nunzia Varricchio, whose day job involves managing nutrition trade marks for Dutch company DSM, took over as MARQUES chair in February for a two-year term. That period will see the European Commission propose reforms to the Trade Marks Directive and Trade Mark Regulation (expected later this year) and the beginning of António Campinos's strategic plan for OHIM.

MARQUES is at the centre of these developments: its members are frequently consulted in Brussels and it has initiated regular meetings of Europe's trade mark offices. Volunteers are also active in debates over trade mark, design and GI harmonisation at WIPO and in addressing trade mark issues in the new gTLDs.

Varricchio has said that she sees her role as a "facilitator and a spokesperson", coordinating the work of the association's growing number of teams, as well as its various communication channels and events. Expect to see a lot more of her over the next 12 months as the various European initiatives take shape.

IP is at a tipping point

Q Todd Dickinson
Executive director, AIPLA

Q Todd Dickinson has been among Managing IP's top 50 most influential people in IP for five of the nine years the feature has run. Having served as USPTO director, in-house counsel and private practitioner, Dickinson has a particularly well-rounded perspective on IP. Now, as executive director of the American Intellectual Property Law Association (AIPLA), he remains as influential as ever.

With Dickinson at the helm, AIPLA has been intensely involved in key policy issues such as patent reform. Dickinson dubs the patent reform bill that recently passed the House of Representatives "half a loaf", due to its removal of language that would have eliminated the diversion of user fees from the USPTO, but is hopeful that a solution can be reached before the bill is signed into law by President Obama. He says that AIPLA will not take a position on the bill until it is final – but when and if it is passed, he will be busier than ever. As a former director of the USPTO, Dickinson knows that the new law will generate at least four separate rules packages for public comment at the USPTO, about which AIPLA will have plenty to say. "We're eager to see if [the USPTO] will engage with stakeholders," says Dickinson. But considering the Office's track record so far, Dickinson isn't too worried. "We've probably never had a better working relationship with the USPTO," he says.

With respect to litigation, the courts have also been keeping Dickinson on his toes. One of AIPLA's top tasks is to comment on Supreme Court and Federal Circuit cases as a friend of the court. And with three patent cases already on the High Court's docket for next term, there is no shortage of such opportunities. "By next year we will have doubled the number of amicus briefs we've done in the past," says Dickinson. At the top of AIPLA's list to weigh in on is Prometheus v Mayo, which the Supreme Court granted certiorari in June. Dickinson is also happy about the outcome of Microsoft v i4i, which he says aligned fairly well with AIPLA's amicus brief. Although the decision maintained the clear and convincing standard for finding patents invalid, Dickinson says its impact is likely to be felt in the way judges view prior art not reviewed by the USPTO. "It's the rare Supreme Court case that wouldn't change something," he says.

While there is clearly plenty to keep him busy at home, Dickinson points out that the Association's priorities extend internationally as well. AIPLA has made it a point lately to comment on international IP rules, including New Zealand's proposal to ban software patents and China's patent law changes. The Association is also closely monitoring the EU patent proposal. But Dickinson knows that change does not start at the policy level, and says that one of his key goals for the immediate future is developing public education programmes on the benefits and importance of IP. "We're at the tipping point right now with respect to how IP is viewed," he says. "We want to educate opinion leaders as well as school kids."

Brian Pomper
Executive director, the Innovation Alliance

Brian Pomper has been one of the loudest voices in the US patent reform debate over the past year. As head of the Innovation Alliance, which represents such companies as Qualcomm and Tessera, Pomper has been active in Congress, and most recently announced his organisation's vigorous opposition to the House of Representatives' patent reform bill, which was passed in June. Unlike some other stakeholders, who have continued to support patent reform despite the House's removal of language that would end the diversion of user fees from the USPTO, Pomper has been adamant that an end to fee diversion is the only way patent reform will work. Although the House bill claims to ensure that fees will not be used for purposes other than USPTO funding, Pomper says it falls far short. "The compromise language...does not end fee diversion permanently and enable USPTO to plan predictably and on a sustainable basis," said Pomper in a recent statement. The inability to plan in advance will make it "difficult, if not impossible" for the USPTO to hire more examiners and improve infrastructure, he added.

Individual litigants

Challenging gene patents

Timothy O’Leary
President, the Association for Molecular Pathology

As the president of the Association for Molecular Pathology, a not-for-profit scientific society dedicated to the advancement of clinical molecular diagnostic and prognostic medicine, Timothy O'Leary is at the helm of an organisation embroiled in a patent case that could drastically change 35 years of USPTO practice concerning patents on isolated DNA sequences. When AMP brought its now famous case against Myriad Genetics along with 19 other plaintiffs in May of 2009, the association embarked upon a mission to allow easier and less expensive access to genetic testing. "Our intent is that joining this suit as a plaintiff will prompt changes in the patent system that will resolve what we see as increasingly narrowing options for manufacturers and laboratories to access gene sequence data to develop the tests needed to make molecular medicine a reality," said O'Leary's predecessor, Jan Nowak.

Since then, a district court has found in favour of AMP and its fellow plaintiffs, and the US Department of Justice has backed its position in the case. Judge Robert Sweet of the US District Court for the Southern District of New York said in a 152-page decision last year that the differences between the native and isolated versions of the BRCA1 and BRCA2 breast cancer genes were not "markedly different" enough to make them patent eligible, as required by US law. The case is now at the Federal Circuit, where oral arguments were held in April this year. The judges there seemed concerned with the split between the USPTO – which has been granting patents on isolated DNA sequences for years – and the DOJ. They also spent considerable time pondering whether the plaintiffs had standing to sue in the first place, since Myriad's threats to sue the plaintiffs occurred more than 10 years ago. If they decide in favour of Myriad on that issue, the subject of gene patents may be left for another day.

AMP has also been busy commenting on patent reform legislation, and sent a letter to Congress opposing two amendments by Debbie Wasserman Schultz meant to allow easier access to second opinion genetic testing on patented genes. AMP said that, while the amendments were well-intentioned, they did not go far enough. With respect to Wasserman's proposal that the USPTO conduct a study on genetic testing within the environment of exclusive patents, AMP said that such a suggestion "does not address the broad harms of patent claims to genes and genetic associations, and could be construed as tacit Congressional endorsement of existing USPTO policies that are at the root of the problem for patients and innovators alike". However, the amendment was passed by the House, and would require the USPTO to produce a report on "effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist" within nine months of the bill becoming law.

A clear and convincing victory

Loudon Owen
i4i chairman

i4i chair Loudon Owen says that his company's June win against Microsoft in one of the biggest patent cases ever came at a cost. "It has drained time and resources," Owen told Managing IP in an interview following the June 9 decision. "Microsoft said it was 'disappointed in the ruling', but i4i is the company that lost years of far higher potential growth."

Owen and Michael Vulpe, founder of Canadian software company i4i, originally sued Microsoft in a Texas district court in 2007, alleging that Microsoft's extensible markup language (XML) custom formatting function infringed one of i4i's US patents. In August 2009, a judge in the Eastern District of Texas ordered Microsoft to pay i4i more than $290 million – now the largest patent infringement verdict ever to be affirmed on appeal. The Federal Circuit and then the Supreme Court upheld the district court's decision, denying Microsoft's contention that missing source code that could have proven i4i's patented invention was on sale more than one year before it filed its patent application should be considered under a preponderance of the evidence standard, rather than the traditional clear and convincing standard. Microsoft said that, because i4i had not disclosed the product as prior art to the USPTO, the burden of proof for proving invalidity should be lower.

While the Supreme Court rejected that argument, it did take pains to point out that juries should be instructed to consider the fact that the USPTO did not examine certain prior art. "Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force," wrote the majority in its opinion. Those who were backing Microsoft see this aspect of the ruling as a ray of light in an otherwise disappointing decision. And Owen agrees. "I think the decision will result in more attention being given to jury instructions, and that's appropriate. This case will have generated a heightened awareness among practitioners, and defendants will be more likely to ask for such instructions now," he says.

The case also had the strange effect of putting stakeholders who traditionally have been critical of the litigious approach of companies such as i4i on the same side as so-called patent trolls. But according to Owen – who has said that "the rhetoric about bad patents is gratuitous and unfair" – i4i has always been on the right side of this patent battle. "It's amazing that people continue to try and put us on the defensive when the court found that Microsoft willfully infringed our patent," says Owen. "Microsoft has vast resources and can fire off press releases, but it's been proven throughout this case that we're the good guys here."

Karen Murphy
The Red White and Blue

Karen Murphy, a pub landlord from Portsmouth, south England, is a typical individual litigant. Indeed, you feel she's the kind of litigant that the IP industry needs to keep it on the straight and narrow.

She was prosecuted by Sky Sports for showing football matches in her pub that were not licensed through Sky – which controls all broadcast rights in the UK – but decoded from Greek broadcasts. She had bought the decoder system after being told by a salesperson that it was legal. But having been convicted of breaking UK copyright law (and paying £8,000 in fees and costs), she appealed all the way to the Court of Justice of the EU.

"I think it's unjust. I think it's a greedy private company trying to dictate to the small people what they can and cannot do, purely for profit," Murphy told radio programme 5 Live Investigates. "The law needs changing. If I don't fight who is going to fight?"

The determination is admirable, though some of her arguments were a little naïve – by comparing the system with buying a car, she suggested any monopoly licence should be illegal, no matter how much money it feeds back to the local football team.

Murphy received a favourable opinion from the Advocate General in February, who said the licence system was contrary to free trade in the EU. If this opinion is followed by the Court in the next few months, one angry pub owner could overhaul all football broadcasting in Europe.

Lalit Mahajan
Inventor and litigator, India

India needs more Lalit Mahajans. Mahajan, who is 65 and runs medical diagnostic firm J Mitra & Co, was awarded a prize in April from the Confederation of Indian Industry as the top individual patent recipient of the last five years. Only 23 patents was enough to win the prize – a reflection of the low level of patenting in Indian companies. The prize was awarded to Mitra as part of an awards ceremony backed by the Confederation of Indian Industry and is part of an attempt to encourage more innovation. The government is also considering introducing a utility model patent system in the country to encourage more Indians to protect their innovation.

But more important than the patents is the fact that Mahajan has successfully used India's courts to enforce his rights. He won one of the first patent cases to be decided after India's patent reforms came into effect in 2005 and later obtained a rare interim injunction in a patent case against Span Diagnostics. Last year, Mahajan was involved in Snehlata Gupte vs Union Of India & Ors – a case that helped to clamp down on the practice of serial filing of pre-grant oppositions.

Nadia Plesner
Artist

Nadia Plesner is a controversial Danish artist whose work regularly focuses on political issues and seeks to promote human rights. She believes the media increasingly skews reporting towards commerce and celebrity, and neglects the most pressing issues around the world.

In her notorious 2011 Darfurnica drawing, in which she laments the tragedies of the Darfur genocide in Sudan, Plesner incorporated a Louis Vuitton bag including its famous logo. The company sued Plesner for design infringement at a Dutch court in The Hague but was met by a counter lawsuit from the artist.

She believed she had a right to freedom of expression under the European Convention on Human Rights; Louis Vuitton initially obtained injunctive relief, but Plesner prevailed in full proceedings in The Hague District Court.

The material on this site is for law firms, companies and other IP specialists. It is for information only. Please read our Terms and Conditions and Privacy Notice before using the site. All material subject to strictly enforced copyright laws.

© 2020 Euromoney Institutional Investor PLC. For help please see our FAQs.

Instant access to all of our content. Membership Options | One Week Trial

Related