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MIP International Women's Leadership Forum 2015 - Overview

December 11, Fairmont San Jose Hotel





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The MIP International Women's Leadership Forum returned to San Jose on December 11, 2015.

The event has become a popular gathering for women in-house and IP counsel in San Jose, New York and London and registration to the event once again reached over 240 delegates wanting to come together for a one-day overview of the latest topics in IP and how women in this space can develop their personal brand and further their career.

The delegation in attendance:

  • Heard from leading general counsel and IP counsel on how they progressed their careers
  • Found out about challenges to online enforcement
  • Looked at pros and cons of IP arbitration over litigation
  • Engaged in an update on global IP developments
  • Evaluated trade mark and copyright issues from recent cases
  • Discovered changes and key issues in post-grant proceedings
  • Discussed the importance of leadership and building your network with leading general counsel

The event welcomed associates, senior associates and partners in private practice; as well as legal counsel, senior legal counsel and general counsel. The aim is to provide an inclusive debate around building the talent pipeline as well as discussing the latest developments in IP.

Read the key takeaways below to see what was discussed during the Forum.

Key takeaways

The Alice Corp v CLS Bank decision

  • In-house practitioners identify an increase in time and money spent on rejections
  • Advice for defendants: get in-house counsel to evaluate for claim construction
  • Strong focus on securing claims that are patent eligible on examination
  • Congress making efforts to combat abusive patent practice, targeting those creating bad patents and using them to make money

Practical advice for handling post-grant challenges: Lessons learned from PTAB

  • Considerations for whether a patent is for a technological invention, decided on a case-by-case basis include: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; AND (2) solves a technical problem using a technical solution
  • Some statistics: in IPR proceedings, 83.2 % of all instituted claims cancelled
  • In CBM proceedings, 96.1 % of all instituted claims cancelled

IP in arbitration

  • Arbitrators decide both on the factual and legal factors submitted. 
  • If arbitrators issue a final award, assume limited discovery and ability to appeal  
  • IP arbitration can involve multiple forms of IP and IP from multiple jurisdictions 
  • Mediation is good way to get to the core issues and move on. 
  • Arbitration an alternative to litigation. Under the right condition, arbitration can be faster and more flexible option particularly if awards are readily enforceable in most countries

Challenges to online enforcement and potential pitfalls

  • Increased invention in wearable technology and online content means copies will be more difficult to identify
  • Tips to avoid online advertising pitfalls: guide clients to make intention obvious and follow advertising regulations closely
  • When enforcing, ask: if the claim is valid, if you truly own the content, if indemnification is available
  • During the transitional period (currently set at 7 years), they will be the option to opt out of “classic” European patents or back in to enforce. Plan ahead!

Trends in licensing

  • Consider the objectives of your party and adversary, possible tactics of the opposition and your reactions, timing and cost constraints
  • Patent portfolio owners advised to work closely with litigation team to prepare claims
  • Be accurate, know the rules

From pay-for-delay to SEPs – Where does Canada stand on IP and competition law?

  • Not considered an anti-competitive act: Copyright Act, Industrial Design Act, Integrated Circuit Topography Act, Patent Act, Trade-marks Act nor any other Act of Parliament pertaining to intellectual or industrial property
  • Subsequent entry manufacturer (SEM) must address patents listed on Patent Register in order to obtain Health Canada regulatory approval
  • If innovator unsuccessful, may be liable to SEM for damages resulting from the patent hold
  • Patented Medicine Prices Review Board (PMPRB) monitors which patented medicines are sold in Canada

Patent reform in Europe

  • Implementation of the UPC due to occur following ratification of 13 signatories (must include France, Germany and UK)
  • To obtain the unitary patent, apply to the EPO for within a month of applying for European patent
  • Each division in the UPC will have combination of legal and technically qualified judges, originating from various locations across the EU
  • Fee adjustments available: 25% (fixed + value-based) fees reimbursed if action heard by single judge and if fees are likely to threaten economic existence (special measures applicable for SMEs, NPOs and universities)

Recent developments in copyright and trademark law

  • As seen in Intel v CPM, Case 252/07, ECJ considers the status of an existing trademark based in terms of risk presented to the reputation of another trademark and evidence of taking unfair advantage of the distinctive character or the repute of the earlier trade mark.
  • Evidence of the above is sufficient – actual harm need not be demonstrated
  • Trade dress can be registered if it is distinctive and not functional

The importance of leadership in developing your career

  • Panel on what makes a good leader: confidence, endurance, embracing and learning from your mistakes, authenticity
  • Contrary to common perception: a leader does not have to be bullish, loud or male
  • Develop leadership skills around your best attributes. Embrace your individuality
  • You could be hurting your career by shutting yourself off from your professional surrounding and becoming the “faceless person on email”.
  • Make time to network and build relationships in the field.
  • Learn to give yourself a break!




Finnegan        Greenberg Traurig 

King & Spalding
Marshall Gerstein & Borun      Powell Gilbert


Veron          Withers & Rogers

Cocktail Sponsor


Supported by

San Mateo County Bar Association 


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