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Things have changed since 1558,
but by how much ...? |
Just over a fortnight ago, the long-awaited and much-discussed (here, here and here) International Women’s Leadership Forum took place in London under the Chatham House Rule. While Managing Intellectual Property magazine provided a comprehensive list of the ‘key takeaways’ from the conference (here and via #ipwomen), this weblog can add the following account by Catherine Pocock (Research Assistant, Queen Mary University of London), who explores some of the main issues in greater detail. This is what she writes:The first London edition of the International Women’s Leadership Forum, which took place on Monday 23 February, saw the gathering together of over 180 IP experts from diverse backgrounds. The conference offered insightful discussions focusing on issues at the heart of industry concerns. Here we will explore in greater depth three of the issues addressed at the Forum:
* Strategies (anti-counterfeiting measures and litigation)
* The Unitary Patent Court
* Evolving trade mark protection.
Unitary Patent Court a good thing? Yes, if …
The opening panel addressed the uncertainties around the forthcoming Unitary Patent Court, its administration and judicial process. The aim of this discussion was to identify the key areas of concern and to discuss the practicalities of referring cases to the UPC once it has been formally constituted.
For practitioners, the main concerns regarding the UPC and its administrative framework were
* The harmonious implementation and policing of the rules of procedure generally;
* The harmonisation of procedural formalities in terms of the length of procedure;
* Court fees and renewal fees -- and whether they will be calculated only to cover administrative costs;
* The identity of the judges and what training they would undergo to ensure the fair and consistent application of the rules of procedure throughout the 25 Member States;
* Achieving a uniform system which takes the best of the 25 systems without dissenting voices from local branches, and while maintaining a team of multinational judges with expected independence;
* The internal administration of hearings in cases where validity and infringement claims are heard separately. Concerns were raised as to effective hearing of the validity claim by the Central Division before the infringement claims;
* The avoidance of forum shopping, which was a clear concern in the 17th Draft of the Rules of Procedure;
* The question of the language barrier in some jurisdictions.
The assessment of fees was central to audience concerns. An economic exposé was given to highlight the complexity of this assessment since this scenario offers three possible ways in which calculations can be made:
* An income-based analysis which would achieve sustainability of the system by relying on revenue-neutral assessments;
* A market-based analysis which would calculate a cost baseline which, in light of the lack of market comparables for this system, would prove a difficult assessment; and
* A costs-based analysis which would compare the existing framework and compare it to the prospective one. This again is difficult, given the lack of existing reference framework.
It was also suggested that a comparison could be made by calculating the average fees in 25 countries, the total fees of registration and court proceedings in the 25 jurisdictions, or by making a comparison with the UP/EPO. However the latter does not cover the same member states, and the first two imply the estimation of ‘an average patent’ which will vary in scope depending on the jurisdiction and sector.
While the potential benefits of such a system for SMEs were addressed at length (innovation, competition, etc) the most keenly-awaited feature seems to be the ability to issue an injunction against an infringer across 25 member states in one ruling. However doubts were expressed over whether in practice this forum will be integrated into business strategies.
It will be interesting to see whether this sentiment has changed recently, following the publication of the European Patent Office's Boards of Appeal reform plan.
Strategies for IP litigation: (i) anti-counterfeiting strategies
This session provided a very interesting comparison between the strategies employed in tackling the problems of tangible and intangible counterfeit goods. Both worlds have been turned upside down by the emergence of the internet and e-commerce, but enforcement and protection strategies vary enormously, both from each other, and from their former strategies.
Finally, a compelling case was made regarding the losses generated by counterfeit goods [material and immaterial alike]. Indeed, ‘counterfeiting is not a victimless crime’ and any profit created by illegal trade comes at a very high cost borne by the industries and ultimately by the end-user/consumer.
Strategies for IP litigation: (ii) patents
Generally, the main question in terms of patent litigation strategy is to ensure litigation is avoided. This panel focused on ways to achieve this as, although litigation can be a strategy in and of itself, it is mostly a drain on company resources, be they financial or otherwise.
To avoid litigation therefore it is important to optimise the presence of IP considerations in the company ethos. This is mostly achieved by engaging with employees through different strategies and by ensuring that interest is maintained. Ideally such engagement would happen at the development stage of the process where an assessment is made of the potential for protection of the invention, any prior art and the risks related to its marketing.
It was emphasised that all types of incentives and rewards should be employed to engage with the community, not only financial rewards, to allow for the growth of the community profile as a whole and to foster a positive creative environment.
A more detailed account of this session has been recorded by Managing IP here.
Trade marks: use in the relevant territory
The discussion here addressed the differing national systems for protection across Europe and the parallel Community trade mark (CTM) system. A significant strategy point was raised regarding substitution of national registrations by the CTM but it was mostly agreed that a dual system should still be maintained since some national authorities offer faster and more efficient protection than the CTM. It was also pointed out that national registration remains important in key markets. Despite this, prevailing discussions about CTM registration will revolve around registration and renewals costs, which are substantially cheaper than the cumulative fees of the respective national trade marks.
Trade marks: use of a sign
A notable point touched upon here was the changing nature of trade marks with the registration of unconventional trade marks. Examples given included a green strip for BP [which only effectively works as a trade mark at night when the strip on gas stations is lit up]. The conversation also raised the question of dynamic and fluid trade marks, which were generally described as animated trade marks or trade marks which could change appearance for example to reflect special occasions.
These trends have attracted increasing concern in terms of the validity of such signs, the necessity of registering each variation of the trade mark, and ultimately in terms of their enforceability.
Trade marks: where use affects one of the functions of a registered trade mark
Dilution was flagged as a key issue facing trade mark enforcement today. While, with the advent of social media, brand-building has become a somewhat more cost-effective marketing tool, this has simultaneously seen the appearance of hoax accounts which sometimes contain damaging and falsified information. Trade mark enforcement and monitoring strategies have had to evolve respectively to ensure a pragmatic policing policy, meanwhile guaranteeing respect for the trade mark. These situations still remain delicate and are usually addressed on a case-by-case basis by organisations.
Last word
Overall, this first London edition of the International Women’s Leadership Forum provided accurate, detailed and personal accounts of IP issues globally. Most importantly, the day ended on a high, having provided its audience with an ‘inclusive debate around [and tools for] building the talent pipeline’, therefore personifying what good leadership should look like.
A word about the women ...
This was not an event about "Women in IP" but an event about IP that was run by and for women.
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| Time to be banished |
The day's proceedings opened with an introduction to the Women in IP Network, its nature and values, in the humorous context of the publicity it received on this weblog and in the light of some comments regarding silver spoons and sugar daddies -- comments which sounded pretty empty to an audience of women from all levels of the legal profession, whose common denominator was the hard work and personal investment which led to their respective achievements. While the day highlighted the fact that different approaches can be taken to assert gender equality, most will agree that generalisations that individuals can only develop professionally by relying on sugar daddies, instead of personal and professional merit, should be eliminated from the community of IP professionals.
See also Managing Intellectual Property's IP Clinic: Women in IP here.
