ip inter action speakers’ notes -...

IP INTERAction Speakers’ Notes

Wednesday, 15 February 2012from 12:30pm - 7:30pm

Skinners’ Hall 8 1/2 Dowgate Hill London EC4R 2SP

Speakers’ Notes

edwardswildman.comWEDNESDAY, 15 FEBRUARY 2012IPInteraction.com

IP INTERActionNEW THREATS & NEW OPPORTUNITIES: WHAT IP OWNERS SHOULD BE DOING NOW

The Third Annual Edwards Wildman IP Conference

PROGRAMME From 12:30pm - 7:30pm

from 12:30 pm REGISTRATION 12:30-1:45 pm LUNCH

1:45-1:55 pm Introduction from the Chair - Ben Goodger 1:55-2:40 pm The five key priorities in 2012 for Trade Mark owners - Nick Bolter 2:40-3:25 pm Commercialising your IP: Are you getting the best from your assets? - Ben Goodger 3:25-4:10 pm Copyrights and Designs: Managing the Unmanageable? - Colin Sawdy 4:10-4:40 pm COFFEE & REFRESHMENTS 4:40-4:50 pm Overview of Patent Session - Akash Sachdeva 4:50-5:35 pm Community Patents: A Dream (about to) come true? - Tony Maschio

5:35-6:20 pm A Unitary Patent Court: what impact will this have on litigation? - Simon Thorley QC, Three New Square

6:20-7:05 pm US Patent Developments: "The biggest changes for 60 years" - What does it mean for potential patentees and others? - Ralph A. Loren 7:05-7:20 pm Q&A - Akash Sachdeva

7:20-7:30 pm Closing Remarks from Chair

7:30-9:00 pm DRINKS RECEPTION

IPInteraction.com edwardswildman.com

©2012 Edwards Wildman Palmer LLP and Edwards Wildman Palmer UK LLPATTORNEY ADVERTISING: Prior results do not guarantee a similar outcome.

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IP INTERActionNEW THREATS & NEW OPPORTUNITIES: WHAT IP OWNERS SHOULD BE DOING NOW

The Third Annual Edwards Wildman Conference

© 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP

Five Key Priorities in 2012 for Trade Mark Owners Nick Bolter15 February 2012

[email protected]

2

Summary

♦ Monitor your competitors

♦ Monitor your business

♦ gTLDs - a game changer?

♦ Be creative

♦ Be reflective……

3

Monitor your competitors

♦ Recent “clarifications” of TM law by the CJEU make it easier for competitors and others to use your trade marks

♦ Traditionally..♦ identical mark + identical goods / services = infringement

♦ Confirmed in L’Oréal SA v Bellure NV, Case C-487/07 - 18 June 2009

♦ But in the online world……

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♦ But in the online world……

♦ Metatags, keywords, AdWords…..

♦ Google AdWords cases

♦ Now well publicised

♦ Competitor can use identical mark for identical goods / services provided no detriment to the “functions” of the trade mark…

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6


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THE COURT OF JUSTICE♦ Google France v Louis Vuitton Malletier, Case C-236/08♦ Google France v Viaticum, Luteciel, Case C-237/08♦ Google France v CNRRH, Case C-238/08

Three references from the Cour de Cassation in France, Judgment, 23 March 2010

♦ Portakabin Ltd v Primakabin BV, Case C-558/08A reference from the Hoge Raad in the Netherlands, Judgment, 8 July 2010

♦ Eis.de GmbH v BBY Vertreibsgesellschaft mbH, Case C-91/09A reference from the Bundesgerichtshof in Germany, Judgment, 26 March 2010

♦ Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH, Case C-278/08A reference from the Oberster Gerichtshof in Austria, Judgment, 25 March 2010

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♦ The Google AdWords cases “clarified” the law where there is “double identity”..

♦ No infringement – even where there’s double identity – unless there is detriment to the “functions” of the trade mark♦ “essential function” – identifying origin of goods / services♦ advertising function♦ investment function

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♦ A sponsored ad will be infringing if it ♦ does not enable an average internet user, or enables that user

only with difficulty, to ascertain whether the goods or servicesreferred to therein originate from the proprietor of the trade mark … or on the contrary, originate from a third party

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♦ What if your mark has reputation?♦ Article 9(1)(c) of the Community Trade Mark Regulation

♦ the proprietor [of a Community trade mark] shall be entitled to prevent all third parties .. from using in the course of trade any sign which is identical with, or similar to, the Community trademark … where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of … the distinctive character or the repute of the Community trade mark

♦ “Free riding”

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♦ Bidding on a competitor’s mark clearly intended to take advantage of that mark

♦ “Free riding”?♦ YES – if the use “without due cause”?

♦ Interflora v Marks & Spencer, C-323/09Reference from English High Court, judgment 22 September 2011

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♦ Interflora v Marks & Spencer, C-323/09Reference from English High Court, judgment 22 September 2011

♦ “without due cause”♦ fair competition – “with due cause” and no infringement♦ unfair competition – “without due cause” and infringement!

♦ Imitations vs. Alternatives♦ If the sponsored ad links to a site offering “alternatives” to the

trade mark owner’s goods/services = “fair competition”

♦ If the sponsored ad links to a site offering “imitations” to the trade mark owner’s goods/services = “unfair competition”

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♦ Monitor your competitor’s use of your trade marks on-line♦ Pay someone to do this for you…. or

♦ Simply search against your trade marks and see what sponsored ads are returned

♦ Assess the ad:♦ What term has the advertiser bid on?

♦ Is your mark used in the ad heading / ad text / URL?♦ Is the ad liable to confuse Internet users?♦ If yes………

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♦ If a competitor’s sponsored ad is liable to confuse Internet users:

♦ If your mark appears in ad heading / ad text / URL:♦ File take down notice with Google

https://services.google.com/inquiry/aw_tmcomplaint♦ Send cease and desist letter explaining why the ad is confusing

♦ If your mark does not appear in ad heading / ad text / URL:♦ Send cease and desist letter explaining why the ad is confusing

♦ If your mark has a “reputation”… consider Interflora …. but you’ll still need to rely on action against advertiser

15

Monitor your business

♦ What is your business doing with your trade marks?

♦ What is your business doing with your competitors’ trade marks?

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What is your business doing with your trade marks?

♦ No requirement in Europe to use your trade marks

♦ However, if a registered trade mark is not used for a continuousperiod of five years it cannot be relied upon in legal proceedings and will be vulnerable to revocation for non-use (use it or lose it!)

♦ Be aware which of your marks is used and how it is used…

♦ Is it worth “saving” vulnerable marks?

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♦ Remember the “rules” of trade mark use:

♦ Use mark as registerednot

♦ Use as adjective not as noun or verb (avoid risk of genericide)♦ Google® search engine ♦ Use Google to search x♦ Googling xx

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♦ Use ® and TM symbols

♦ Require third parties to use TM notices when using your marks

COCA-COLA and COKE are registered trade marks of The Coca-Cola Company

♦ Do not pluralise♦ Toyota® vehicles ♦ Toyotas x

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♦ Do not use in the possessive♦ Sony Bravia gives superior performance ♦ Sony Bravia’s performance is superior x

♦ Do not abbreviate♦ MERCEDES BENZ ♦ MERC x

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What is your business doing with your competitor’s trade marks?

♦ Comparative advertising?♦ Do you need guidelines for marketeers?

♦ Sponsored Ads?♦ Do you need guidelines?

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gTLDs - a game changer?

♦ What is it?

♦ gTLD “Generic top level domain” (.com / .net etc.)

♦ ccTLD “country code…..” (.fr / .at / .uk / .de)

♦ IDNs “internationalised country code” (.中国 / .рф ( .مصر . /

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♦ What are “new gTLDs”?

♦ First proposed in 2008 – an expansion of existing gTLDs

♦ 20 June 2011 ICANN's board voted to end most restrictions on the generic top-level domain names (gTLD) from the 22 currently available

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♦ How will it work?

♦ Anyone can apply to operate a gTLD

♦ gTLD can be .ANYTHING

♦ US$185,000 application fee

♦ Complicated assessment of technical merit

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♦ May transform the way Internet users think about domain names:

♦ Now: IMPORTANT.unimportant

♦ Soon: unimportant.IMPORTANT

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♦ Possible examples♦ .genuine – operated by luxury brands group to assist Internet

users in avoiding counterfeit sites

♦ burberry.genuine♦ rolex.genuine

♦ .london - for tourist businesses that are “approved”

♦ madametussauds.london♦ mayfairhotel.london

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♦ Likely to be the most contentious:

♦ .BRAND

♦ .ebay – to enable each eBay seller to have their own domain name

♦ Nbolter123.ebay

♦ .facebook

♦ nickbolter.facebook

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♦ But what about ♦ .apple - Apple Inc. vs. Apple Grower’s Association?

♦ .amazon – Amazon.com, Inc. vs. Amazon Conservation Trust?

♦ Starbucks acquiring .coffee?

ARE YOU READY??

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♦ 29 March: Registration Closes♦ 12 April: Application Window Closes♦ 1 May: "Reveal Day"

♦ Application Comment Process♦ Objection Period

♦ 12 June: Initial Evaluation Begins♦ 12 November: Results of Initial Evaluation♦ 29 November: Last day to request Extended Evaluation♦ 30 November: Later phases for complex applications

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♦ End 2012 / 2013 – new gTLDs are "launched“

♦ How many?

♦ Will there be a further application round?

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Be creative

♦ Register your “trade marks”♦ Words♦ Logos♦ Shapes?♦ Colours?♦ Sounds?

♦ Designs v Trade Marks

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Trade Marks v Registered Designs

♦ What is protected?

♦ Trade Marks: words, logos, etc that identify the origin of goods and services. Mark must not be descriptive and must be distinctive.

♦ Designs: outward appearance of “products” .. which can include graphic symbols. Design must be new and have individual character.

CTM No. 8348781 RCD No. 001540931-0001

Be creative

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Scope of Enforcement:

♦ Trade Marks: identical marks and identical goods/servicesidentical/similar marks and identical/similar goods/services where there is a likelihood of confusion

♦ Designs: similar designs creating same overall impressionNo restriction to specified goods/services

Be creative

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Be reflective…

♦ What do you need to give your business an advantage?

♦ Does your portfolio give you sufficient protection?♦ Consider defensive registrations?

♦ What do you have that you do not use / need?♦ Can these rights be exploited (licensed / sold)?

♦ What can trade marks do to provide value to your business?


Five Key Priorities in 2012 for Trade Mark Owners Nick Bolter15 February 2012

[email protected]


Commercialising your IP: Are you getting the best from your assets?

Ben Goodger15 February 2012

[email protected]

1

Overview

1. Developing an IP Strategy2. Licensing3. Buying and selling IP4. Other possibilities5. Conclusions

2

Implementation: Let’s go!

♦Goals: Where do we want to go?

1. Developing an IP Strategy

IP

ReviewPlanning

3


Goals: Where do we want to go?

♦ Review Business Plan♦ Review existing IP Plan (if any)

RESULT…♦ Overview report identifying at what points IP is crucial to

this business

4


IP Review: Where are we? And where is everyone else?

♦ Audit:♦ Legal♦ IP procedures/processes♦ Financial performance & tax efficiency

♦ Landscaping & analytics♦ Market / competitor analysis

RESULT…♦ Detailed report identifying strengths & weaknesses of

business’s IP position in relation to its market(s) -commercially & legally

5


♦ Planning: How do we get where we want to go?

♦ Get the attention / buy-in of key decision makers♦ Workshopping ♦ Budgeting / financial planning♦ Strategy validation/adjustment

RESULT…♦ IP road-map / strategic IP plan

♦ Higher chance of successful buy-in as created through consultation and iteration with key staff

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Better protection

Regular valuation & evaluation

Enforcement

Venturing

Invention spotting / screening

RoyaltyAuditing

Training & awareness

Divestment/Licensing

Out

IP cost efficiency

Acquisition/ Licensing In

Implementation

Implementation: menu of options

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2. Licensing

Why license out?

♦ Multiple revenue streams – non core sectors♦ Grow the market ♦ Speed to market♦ Doesn’t fit your business model / priorities♦ Retain ownership of IPWhy license in?♦ To enable freedom to operate – cross licensing / patent

pools♦ use of third party copyright content – even small parts

– might require a licenceNewspaper Licensing Agency v Meltwater Holding BV

– 27 July 2011♦ To develop your products / business: 1 + 1 = 3

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2. Licensing

Reasons not to license out♦ Delayed revenue stream♦ Do not have resources to manage licence(s) / licensee(s)♦ To avoid threat to brand / reputation♦ To retain control over IP

♦ don’t let your licences and trade mark ownership disintegrate into chaos!Group Lotus plc v 1Malaysia Racing Team – 27 July 2011

Alternatives to licensing ♦ Do it yourself – if keeping your monopoly & exploiting yourself is

an economic option♦ Joint venture♦ Assign the rights

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2. Licensing

♦ What IP to be included in licence? ♦ Patents♦ Know how / confidential information♦ Software♦ Brands♦ Designs

♦ Very important this is spelled out clearly e.g. which patents? Improvements?

♦ Don’t enter into a licence for a stupid product – and if you do, give yourself a clear exit route!

Double G Communications v News Group International –14 April 2011

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2. Licensing

Choosing your licensee ♦ Expertise and experience♦ Resources♦ Market coverage♦ Territory♦ Reputation♦ Cost

♦ Consider contingentrisks: Mini Cooper and German TV Weather sponsorship – Feb 2012

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2. Licensing - fundamentals

♦ What is licensed, and what is not♦ Exclusive / Sole / Non-exclusive♦ Field ♦ Goods / services♦ Territory♦ Warranties - pin down ownership♦ Ownership of future IP:

♦ technology improvements♦ brand extensions / goodwill♦ jointly developed software

♦ Registration of trade marks / domains by licensee?♦ Conduct of IP enforcement♦ Duration & Exit

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2. Licensing - fundamentals

♦ Poor / careless drafting can be extremely expensive♦ Crude use of ‘boilerplate’ clauses will not endear you to

judges!Oxonica Energy Ltd v Neuftec Ltd – 8 July 2009

♦ All about attention to detail …

♦ But do at least put your licence in writing!Jean Christian Perfumes v Thakrar

- 27 May 2011

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2. Licensing - Royalties

♦ Financial deal should be of mutual benefit, to ensure longevity & success

♦ Royalties on what? ♦ Set clear bases for calculating royalties – and allow

for technology changesPink Floyd Music v EMI – 14 Dec 2010

♦ Products within scope of original patent application or patent as granted? Just patents or stand alone know-how as well?Oxonica Energy Ltd v Neuftec Ltd

– 8 July 2009

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What is an appropriate rate?♦ Various approaches:

♦ Comparison with previous similar deals by others♦ Follow ‘normal practice’ in that industry (or internal practice)♦ Mathematical calculation

♦ Setting royalties for copyright licensing: need to consider market comparables

CSC Media Group v Video Performance – 27 May 2011♦ ‘25% rule’? - US litigation royalties - ‘ fundamentally flawed’

Uniloc v Microsoft – 4 Jan 2011♦ Upfront payments v royalty-free periods

♦ Specify when royalties are to start, very clearly

Cambridge Display Technology v Dupont – 17 Jan 2005

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♦ Royalty ‘stacking’♦ Targets? ♦ Ratchets?♦ Include a right to audit – and use it!♦ Sanctions for non-performance? (→non exclusive)♦ What does ‘non-performance’ mean?

Porton Capital Technology Funds v 3M – 7 Nov 2011- ‘diligently’ and ‘actively’- relevance of market conditions changing from what

anticipated.

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2. Licensing

… and when the negotiations are over, don’t forget to do the paperwork:

♦ failure to register an exclusive licence of a patent within 6 months will reduce ability to recover costs even if win Schütz (UK) Ltd v Werit UK Ltd - 22 Nov 2011

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3. Buying and selling IP

Identify the exact IP asset to Buy ♦ Steps before this… landscaping etc ♦ If purchaser intends to use the IP itself…

♦ Is the IP ready for market?♦ Are distribution channels in place?♦ Are additional assets necessary to use the IP itself?

♦ If not…♦ Can IP be asserted against competitor?♦ Can IP aid in cross-licence negotiations?♦ Can IP create barrier of entry against competitors?♦ Would IP “fill gaps” in the IP portfolio?

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3. Buying and selling IP

Identify the exact IP asset to Sell ♦ Regular IP audits to identify under-utilized IP

♦ Examples: IBM, Texas Instruments, DuPont, Dow Chemical♦ “Dormant Brands”

♦ Make sure mark does not become vulnerable to cancellation for non use

♦ Example : Denim after shave♦ Why sell and not license?

♦ often to get accelerated payment now

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3. Buying and selling IP - alone or with the business unit?

Buying ♦ Advantages of buying the IP asset alone

♦ Often easier to incorporate IP into business ♦ Financial concerns – lower transaction cost, no need to support

new business, no resulting overlaps/redundancies♦ Advantages of buying the IP asset with the business unit

♦ Gain institutional framework, e.g. employees, manufacturing capacity, third-party relationships, institutional knowledge

♦ Inclusion of “hard assets” may render the deal easier to value ♦ Reduces risk of disgruntled employees/inventors undermining

value of purchased IP

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3. Buying and selling IP - alone or with the business unit?

Selling ♦ If company is going in another direction, may want to sell business

unit supporting IP♦ Does business unit have value for the seller independent of the IP

asset? ♦ Is it possible to spin-off unit to raise money and keep access to IP?♦ If sell IP alone, chance it could be resold to competitor, but by

selling with the business, it is more likely the asset will stay with original purchaser

♦ May attract higher price for selling business unit

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3. Buying and selling IP - Valuation

The value of IP is highly contextual♦ Not all IP is equal – core IP, incidental IP, family of rights♦ Challenge of separating specific “target” IP from portfolio and

other related business assets♦ Three main valuation methodologies: (1) market value; (2) cost;

(3) income♦ Unpredictable external events can affect valuation (e.g.,

negative court rulings, rapid changes in technology)♦ example: SMIRNOFF in Russia

♦ Trademarks easier to value than patents because they are usually sold with their goodwill (i.e., tied to actual goods)

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3. Buying and selling IP : emergent models

Public Auctions of IP♦ Pros

♦ Access to IP otherwise inaccessible♦ Buyer can remain anonymous & can’t be excluded♦ Buyers have opportunity to “window shop”

♦ Cons♦ Little opportunity for due diligence♦ Decisions must be made quickly, minimal negotiation♦ Many low quality IP on auction bloc, hard to identify IP worth buying

♦ For sellers:♦ Seller usually has the advantage re: terms of the deal♦ Seller can’t exclude potential buyers♦ Risk that competitors will “window shop” or buy up IP

♦ Nortel – was 2011 ‘the year everything changed’?

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3. Buying and selling IP : emergent models

♦ Selling to a Defensive Patent Aggregator - a/k/a “anti-troll collective”♦ Members obtain non-exclusive licence to use the IP sold to the

collective♦ High membership fee♦ Popular in technology field♦ Mainly US so far

AlliedSecurityTrust

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4. Other possibilities

Buying IP assets from distressed companies

♦ Likely to get IP at a discount e.g. life sciences sector ♦ Risky – IP sold “as is”♦ Seller provides no warranties♦ Little time for due diligence♦ Company is most likely in disarray, so may be wise to purchase

IP alone (without business unit)

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4. Other possibilities

Using the value of IP as an asset to cover pension fund deficits

♦ Through a Scottish Limited Partnership, usually♦ Pension scheme trustees effectively buy IP assets off the company♦ Trustees can then receive income from the IP through licensing,

franchising etc.

♦ Examples: ♦ TUI Travel PLC: THOMSON, FIRST CHOICE brands -2011♦ GKN plc: income from UK properties leased to subsidiaries +

royalty income from use of GKN trademarks - 2010

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6. Conclusions

♦ These are exciting times - lots of changes in the way IP is being seen and managed

♦ Role of the Chief IP Officer (CIPO) becoming more mainstream

♦ 2011 saw emergence of a professional association for IP Strategists – INTIPSA

♦ Key question: is your IP strategy aligned with your business strategy?

♦ There are a multitude of innovative ways emerging to unlock the value of IP


THANK YOU!

Ben Goodger

[email protected]


Copyright and Designs:Managing the Unmanageable?

Colin Sawdy15 February 2012

[email protected]

2

Overview of Presentation

♦Protecting your designs:♦ What will copyright and designs law cover?♦ How does the law work?♦ What are the pros and cons of each form of

protection?♦ How can copyright and designs work together?♦ What strategies are there to utilise copyright and

designs to enhance intellectual property portfolios?

3

What will copyright and designs law cover?

♦ Copyright:♦ 2-D artistic works: eg design drawings of artistic works,

surface decoration♦ 3-D artistic works: sculptures, works of artistic

craftsmanship

♦ Designs♦ Outward appearance of a product♦ Outward appearance of part of a product♦ 2-D representations if registered: surface decoration,

packaging, computer graphics, logos♦ 3-D only for UK unregistered designs

4

Design Right Protection in the UK

♦Registered Community Design right

♦UK Registered Design

♦Unregistered Community Design Right

♦UK unregistered Design Right

5

What is a design?

♦ Outward appearance of a product or part of it♦ Component parts of products if visible♦ Packaging♦ Get up (trade dress)♦ Graphic symbols♦ Logos / Device marks♦ Computer icons: computer game characters, digital images♦ Typographical typefaces

♦ What is NOT a design: ♦ Features of a product solely dictated by technical function♦ Interconnections♦ Designs which are contrary to public morality

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Examples of Registered Designs

7

Examples of Registered Designs

8

Advantages of Registered Community Design (RCD)

♦ CHEAP – few hundred pounds

♦ FAST – couple of months

♦ BROAD RIGHTS

♦ Stop same designs♦ Stop similar design creating same overall impression♦ Enforce against any type of use♦ Enforce with Customs authorities♦ Enforce across European Union

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RCD registration process

♦ Requirements:♦ Novelty against world♦ Individual character

♦ Time Limits:♦ Grace Period:

♦ 12 months prior to filing♦ Allows the associated product to be test marketed first

♦ Deferred Publication:♦ Up to 30 months♦ Limited information available to 3Ps

♦ Scope of protection:♦ Identical / similar designs creating same overall impression♦ Not limited to classes of goods / services♦ 5 year period extendable up to 25 years

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Watch Out – Limits to Protection

♦ Ownership:♦ No automatic employer ownership of employee designs

♦ Cancellation of design registration is possible:♦ Fails registration criteria♦ Not visible during normal use♦ Owner not entitled to design♦ Conflicts with prior design made available to public♦ Uses a distinctive sign and such use is prohibited by law♦ Infringes copyright♦ Improper use of state emblems

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Rights Conferred by Registered Community Design

♦ Right to use design and prevent third parties

♦ Exclusive rights:

♦ Making♦ Offering♦ Put into market♦ Import♦ Exporting♦ Use a product incorporating design♦ Stock a product for these purposes

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Rights Conferred by Registered Community Design

♦ NB Infringing use can be on a different product

♦ Use of any product in which design is incorporated or applied is infringing use

♦ eg design for car is infringed by a toy car version

♦ eg design for wallpaper is infringed by curtains with same design

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Enforcement

♦ Scope of Enforcement:♦ Any design which does not produce on the informed user a

different overall impression♦ Assess designs from perspective of informed user, ie someone

familiar with designs in question♦ Individual character elements, not functional elements♦ Beware unjustified threats!

♦ Defences:♦ Acts done privately and for non-commercial purposes♦ Acts done for experimental purposes♦ Acts of reproduction for the purpose of making citations or of

teaching♦ Community exhaustion of rights applies

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Limits to designs protection: Functionality and Informed User

Dyson Ltd -v- Vax Ltd [2011] EWCA 1206

Dyson’s design Vax’s design

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Limits to designs protection: Functionality and Informed User

♦ Functionality:♦ Protection does not extend to features of a product’s appearance

which are dictated solely by their technical function♦ A protectable design must be new and have individual character♦ Those design details for which the freedom of the designer is

constrained for technical reasons are not protected

♦ Informed User:♦ Can be expected to look at features of a design with a relatively high

degree of attention.♦ Neither a manufacturer nor a seller of vacuum cleaners but a

"particularly observant" consumer who has some awareness of previous designs.

♦ A notional person who is more than a mere consumer of the goods but does not possess the detailed expertise of the manufacturer

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Limits to designs protection: Informed User

PepsiCo v Grupo Promer Mon Graphic and OHIM Case C-281/10 P, Case C-281/10 2011

Grupo Promer’s design Pepsico’s design

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Limits to designs protection: Informed User

♦ Who is the informed user?

♦ Lies between the average consumer of trade mark matters and a technical expert

♦ Knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, showing a relatively high degree of attention when he uses them

♦ Not a designer or a technical expert

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Limits to designs protection: visible parts

Kwang Yang Motor Co. Ltd v OHIM, (Honda Giken Kogyo Kabushiki Kaisha intervening) Cases T-10/08 and T11/08 2011

Kwang Yang’s design Honda’s design

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Limits to designs protection: Visible Parts

♦ Component parts must remain visible

♦ Visible parts must be new and have individual character

♦ Informed user is user of the complex product in which it would be incorporated, not manufacturer

♦ Visible parts are determined from perspective of the user when using complex product

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Unregistered Designs

♦ Unregistered Community Design (EU):♦ Arises when design made available to public♦ 3 year protection♦ Gives exclusive right against copying

♦ UK Design Right:♦ Arises when design is fixated♦ 15 year protection♦ Gives exclusive right against substantially similar designs♦ Only 3-D aspects of design♦ No surface decoration

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Unregistered Community Design

♦ Requirements:♦ Definitions♦ Novelty♦ Individual character♦ Disclosure♦ No technical function♦ Not contrary to public policy / morality

♦ Arises automatically on design being made available to public within EU

♦ Gives 3 years protection♦ Prevents copying not independent creation

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UK Unregistered Design Right

♦ Design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article

♦ Protection Criteria:♦ (1) There is a design♦ (2) Design falls outside exclusions♦ (3) Design is original♦ (4) Design qualifies for protection in UK

♦ Only 3-D aspects of design are protected♦ Does NOT protect 2-D designs such as surface ornamentation,

patterns – use copyright and Registered Designs

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UK Unregistered Design Right

♦ Exclusions:♦ a method or principle of construction♦ SPARE PARTS: features of shape or configuration of an article which

♦ Must fit♦ Must match

♦ surface decoration

♦ Gives 15 years protection from date design fixated, or♦ 10 years from year first marketed (if marketed within 5 years of creation)

♦ Enforcement: ♦ against identical and substantially similar designs♦ must show causal connection - access

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Copyright protection of Designs

♦ Artistic Works:

♦ Graphic work: ♦ Painting, drawing, diagram, map, chart or plan,

engraving, etching, lithograph, woodcut♦ Design drawing of artistic works: 2-D work and 3-D

reproduction

♦ Sculpture – cast or a model made for purposes of sculpture not industrial production

♦ Work of artistic craftsmanship – artistic quality and skilfully made

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Copyright protection of Designs

♦ Duration: ♦ Artistic works: life in being of author plus 70 years♦ 25 years for mass produced designs

♦ Ownership:♦ Author♦ Employer for employee created works

♦ Enforcement: ♦ Against identical and substantially similar works♦ No registration so must evidence rights♦ No unjustified threats provisions

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Limitations to Copyright protection of designs

♦ Utilitarian Designs made from Documents (Section 51 CDPA): ♦ No copyright infringement by making article from non-artistic

design document♦ Making an industrial product from a blueprint

♦ Mass Produced Designs:♦ 25 year copyright term for artistic works which are basis for

designs that are put into mass production♦ Prevent copyright allowing longer protection than for industrial

designs (25 year registration)♦ Must make more than 50 copies♦ Excluded articles:

♦ works of sculpture, wall plaques, medals, medallions, printed matter of literary / artistic character

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Copyright v Registered Designs

♦ Protected Subject Matter:♦ Copyright: artistic works (graphic work, sculpture, work of artistic

craftsmanship), design drawings♦ Designs: outward appearance of products

♦ Registration Process:♦ Copyright: none♦ Designs: admissibility check only

♦ Scope of Enforcement:♦ Copyright: substantial similarity♦ Designs: similar creating same overall impression

♦ Duration:♦ Copyright: life in being + 70 years♦ Designs: renew every 5 years to total of 25 years

28

Copyright v Registered Designs

Copyright

♦ Registrability standards:♦ No registration process♦ Statutory work♦ Originality♦ Qualifying individual & country

♦ Infringement standards:♦ BROAD!♦ Identity♦ Substantial similarity

♦ Duration:♦ LONG!♦ Life in being + 70 years♦ 25 years for industrial designs

Registered Designs

♦ Registrability standards:♦ Registration required♦ Statutory definition♦ Novel♦ Individual character

♦ Infringement standards:♦ NARROW!♦ Identity♦ same overall impression

♦ Duration:♦ SHORT!♦ 5 years only♦ Renew every 5 years up to a total

of 25 years

29

Unregistered Design Right v Copyright

♦UDR protects 3-D designs ♦Copyright protects 2-D designs, surface decoration, design drawings of artistic works (+ 3-D reproduction)

♦Section 51 CDPA:♦ Making an article from a design document / model is

not copyright infringement♦ Applies to designs that are not artistic works♦ Does not affect 2-D decorative, only 3-D applications

of a blueprint♦UDR stops reproduction of 3-D non-artistic articles

30

The gaps in protection

♦ Designs:♦ no protection for designs that are not novel or have individual

character♦ no protection for functional aspects in design♦ strict rules apply re informed user and visibility♦ time limits – maximum of 25 years

♦ Copyright:♦ no protection for non-artistic works (strictly defined)♦ no protection for articles made from non-artistic design

documents♦ time limits may apply

31

The gaps in protection

Lucasfilm v Ainsworth [2011] UKSC 39

32

When to use what?

♦ Registered Designs:♦ Outward appearance of products ♦ Decoration, packaging and logos♦ Computer graphics and icons♦ BUT all of these must have been on the market for less than one year

and are original♦ Community Design Right:

♦ As above but only for 3 years♦ UK Design Right:

♦ 3-D products up to 15 years♦ Copyright:

♦ Artistic works – consider purpose and creation♦ Creative drawings, design drawings for finished product

33

Conclusion

♦ 1) Golden rule: always consider registered designs protection first but don’t procrastinate

♦ 2) Design registration protects very broad range of products

♦ 3) Copyright is valuable for products with artistic purpose

♦ 4) Unregistered designs protection is valuable but short-lived and narrow

♦ 5) Also consider trade mark protection for graphic symbols, 3-D products

♦ 6) Consider all available protections up front and then focus on which is most relevant for product in question

34

ANY QUESTIONS?


Copyright and Designs:Managing the Unmanageable?

Colin Sawdy15 February 2012

[email protected]


The Unitary European PatentAntonio Maschio15 February 2012

[email protected]

2

Unitary European Patent

3

Harmonisation of European Patent Law

♦ Before 1977:♦ National patents only, in each state

♦ 1977: European Patent Convention♦ Central filing and granting procedure administered by the

European Patent Office♦ results in a “bundle” of national patents♦ EPO has no jurisdiction post-grant

♦ 1977: Euro-PCT route open♦ Allows designation of a “European Patent” as a PCT regional

designation

4

Problem:

EU patent can be up to 10 x more expensive than a US patent. A “unitary EU patent” should reduce cost.

5

EPC 2000: some improvements

♦ Central limitation of European patents post-grant

♦ Central recordal of licensing arrangements, up until expiry of opposition period

6

Classical vs Unitary

‘Classical’ ‘Unitary’

Granted patentGranted patent

Choose in which designated states the

patent is to be granted

“Validation”

Grants in all of Denmark, Estonia, Finland, France,

Germany, Lithuania, Luxembourg, the Netherlands,

Poland, Slovenia, Sweden, United Kingdom, Belgium,

Austria, Ireland, Portugal, Malta, Bulgaria, Romania, the Czech Republic, Slovakia, Hungary, Latvia, Greece and Cyprus

7

The Community Patent Convention (CPC)

♦ 1975: Luxembourg Conference on the Community Patent produced the community patent convention. Signed by 9 EEC member states, but never entered into force.

♦ 1989: The Agreement relating to Community patents attempted to revive the CPC project, but also failed. Produced an amended version of the original Community Patent Convention. Twelve states signed the but only seven ratified it.

♦ A majority of member states of the EEC introduced some harmonising initiatives into their national patent laws.

♦ However, no single community patent ever came to be.

7

8

2000-2010: New Attempts

♦ Several attempts were made, but the problem is translations.

♦ E.g. 2010 proposal for a unitary patent valid in EU, using the language regime of the EPC – patents in English, French or German, and claims translated into all 3 languages.

♦ Rejected by Italy and Spain; required equivalent status for Italian and Spanish

♦ 2010 (ii) proposal: Unitary EU patent, in English only.♦ Rejected by Germany and France, requiring a role for German and

French in the patent system.

8

9

2011: New Proposal

♦ 12 Countries proposed “enhanced cooperation procedure” under which any 9 more more states can agree to cooperate on a legislative initiative

♦ 10 March 2011: Council adopted Decision 2011/167/EU authorisingenhanced cooperation. Procedure now includes Denmark, Estonia, Finland, France, Germany, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden, United Kingdom, Belgium, Austria, Ireland, Portugal, Malta, Bulgaria, Romania, the Czech Republic, Slovakia, Hungary, Latvia, Greece and Cyprus.

♦ Spain & Italy not playing ball.

♦ European Commission’s goal is to begin granting unitary patents from 2013. The unitary patent will run alongside the ‘classical’ system.

10

The Proposal - overview

♦ The unitary patent will be granted by the EPO as a separate designation; it will coexist with current EPO system

♦ The applicant must request a unitary patent before grant♦ Once granted by the EPO, no further translations will be required

other than a translation of the claims into the other two official languages of the EPO.

♦ Further translations will only be required during a transitionalperiod or in case of a dispute.

♦ Transitional period will terminate as soon as ‘high quality’ machine translations are available (Google).

♦ In the case of a dispute, the patent proprietor will have to provide a full translation of the patent into an official language of the participating Member State in which either the alleged infringement took place or in which the alleged infringer is domiciled.

10

11

Next steps

♦ Member states to vote on Compromise Proposal on creation of a unitary patent –February 2012?

♦ Separate regulation on translation requirements – needs approval by all 25 participating member states

11

12

A European Patent

♦ Art. 2b: a European patent is a patent granted by the EPO

♦ Art 2c: a European patent with unitary effect is a patent granted by the EPO which has effect in all participating member sates by virtue of this Regulation

♦ Art 3: European patents granted with the same claims in respect of all participating member states shall benefit from unitary effect.

12

13

Unitary Effect

♦ Art 3(2): A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all participating Member States.

♦ A European patent with unitary effect may only be limited, transferred, revoked or lapse in respect of all the participating Member States.

♦ A European patent with unitary effect may be licensed in respect of the whole or part of the territories of the participating memberstates

13

14

Translation provisions

Article 3Translation arrangements for the European patent with unitary effect

1.Without prejudice to Articles 4 and 6 of this Regulation, where the specification of a European patent with unitary effect has been published in accordance with Article 14(6) of the EPC, no further translations are required.

2. A request for unitary effect as referred to in Article 12 of Regulation xx/xx [substantive provisions] shall be submitted in the language of the proceedings.

14

15

Provisions in case of dispute

♦ Article 4(1) In the case of a dispute relating to a European patent with unitary effect, the patent proprietor shall provide at the request and the choice of an alleged infringer, a full translation of the patent into an official language of the participating Member State in which either the alleged infringement took place or in which the alleged infringer is domiciled.

♦ Article 4(2) - same for a request from a court.

♦ Article 4(3) The cost of the translations referred to in paragraphs 1 and 2 shall be borne by the patent proprietor.

♦ Article 4(4) The court hearing the dispute shall take into consideration that the alleged infringer may not have known if infringement before seeing translation

15

16

Transitional Provisions

♦ During a transitional period, the following shall be provided:

♦ (a) where the language of the proceedings is French or German, afull translation of the specification of the European patent into English; or

♦ (b) where the language of the proceedings is English, a full translation of the specification of the European patent into anyofficial language of the participating Member States that is an official language of the Union.

♦ Transitional period ends after 12 years or when high quality machine translations become a reality

16

17

So far, so good…

♦ However, the proposal contains some controversial points

♦ Articles 6-8; infringement

♦ Article 10: residence of Proprietor

17

18

Articles 6-8; infringement

♦ Nothing controversial in the articles per se – direct and indirect infringement, Hatchman Wax provisions, exhaustion of rights (Art. 9).

♦ However, inclusion of infringement provisions in an EU instrument brings the substantive patent law concerning the unitary patent under the jurisdiction of the CJEU.

♦ Polish presidency tried to rush through an agreement in December2011; this faced strong opposition, mostly on the grounds of the inclusion of Art 6-8.

♦ The concern is that the CJEU would bring expense, uncertainty and delay into patent procedure, which is to be avoided

18

19

IP Judges Association

To all concerned with the project for a Unified Patent Court for the EU and Unitary Patent:

At the general meeting of the above association at San Servolo on 28th-29th October the Judges unanimously resolved that:

they were against the proposed inclusion of Arts. 6-8 of the current draft Regulation into the final Regulation and that if they were included the new system would fail to achieve the object of a better system of patent litigation in Europe.

There were 27 Judges present, of whom 24 were from EU member States, namely Austria, Belgium, Denmark, Finalnd, France, Germany, Greece, Italy, the Netherlands, Portugal, Spain and the UK.

Robin JacobPresident of IPJA2nd November 2011

19

20

San Servolo

20

21

Article 10: jurisdiction for property

♦ Concerns relevant jurisdiction for unitary patent as object of property

♦ If Proprietor has business in EU state, that state

♦ If not, Germany

♦ So, transactions on most US, JP unitary patents are conducted inGermany, which benefits form any duties

21

22

Renewal fees

♦ In general, one renewal fee is payable to the EPO; it distributes 50% of this fee to the member states

♦ Art 15(3):

♦ In order to reach these objectives set out in this Chapter, the level of renewal fees shall be set at a level that: is equivalent to the level of renewal fee to be paid for the average geographical coverage of current European patents, reflects the renewal rate of current European patents, and the number of requests for unitary protection.

22

23

Cost of renewal fees

♦ In several EPC contracting states the cost of maintenance fees is high. After the 10th year, it typically exceeds the cost of validation of a patent in that state.

♦ Under the London agreement, no translations are required in the three major markets (DE, FR, UK) and CH, and English is used in NL, DK, SE

♦ A patentee seeking a patent in DE, FR, UK, CH, NL will see no substantial difference between the costs of obtaining a unitary patent and the normal EPC route; under transitional provisions, the cost could be higher.

♦ Renewal fees could also be higher, due to the larger market coverage of a unitary patent

23

24

Is the unitary patent appropriate?

♦ Maybe. The costs will be lower for patent proprietors who seek patents in many member states.

♦ But – costs may be the same or higher for proprietors who ordinarily seek patents in fewer member states. The cost of renewal fees will be important

♦ And – unitary grant also means unitary revocation.

24


The Unitary European PatentAntonio Maschio15 February 2012

[email protected]

1

A Unitary Patents CourtWhat Impact will this have on

Litigation?

Simon Thorley QC

15th February 2012

2

Submissions of The IP Bar Association 1997

“The primary need is for certainty at the earliest possible date. Properly used, the patent

system encourages innovation and rewards innovators but distorts competition only to

the extent necessary to achieve this aim.

If however the system is allowed to develop so as to introduce unnecessary delays or

uncertainties, the system can restrain the proper development both of technology and of

competition. There are numerous examples of companies properly benefitting from the

exploitation of an invention. Equally there are examples of companies having failed

because they have been badly served by the patent system either by being refused the

grant of a patent for a good invention or by being the subject of an injunction in respect

of a patent that subsequently proves to be invalid or even by continued uncertainty as to

the validity of a patent over many years.

One of the primary objectives of any patent system must therefore be achieve certainty”

3

Draft Regulation on the creation of the Unitary Patent System

“Stakeholders expressed an overall support for a unitary

affordable and competitive community patent. This

message was repeated at a public hearing held on the 12th

July 2006 where a large variety of stakeholders stated their

support for a truly unitary high quality patent. They,

however, underlined that political compromises should not

undermine the usefulness of the project. In particular, the

representatives of small and medium size enterprises

highlighted the importance of moderate patenting costs.”

4

Draft Council Regulation

“Those arrangements would ensure that during a

transitional period all European Patents with unitary

effect are made available in English which is the language

customary in the field of international technological

research and publications”.

5

Swedish Federation of Business Owners and the Confederation of Swedish

Enterprise

“Unfortunately it is now clear that the Association’s

main comments have not gained a hearing in the final

proposal. This is the case as regard the basic pre-

condition that substantive patent law should not

become part of the EU Law to a greater extent than it

is today, and that the EU Court of Justice should not

have a wider role in this field of law.”

6

Intellectual Property Judges Association

“They were against the proposed inclusion of Articles

6-8 of the current draft regulation into the final

regulation and if they were included the new system

would fail to achieve the objective of a better system

of Patent Litigation in Europe.”

7

Rule 114

“Without prejudice to the principle proportionality,

the presiding Judge shall endeavour to complete the

oral hearing within one day”.

8

Article 28 (5) of the Unified Patent Court Agreement

“Representatives of the parties shall be obliged

not to misrepresent cases or facts before the

Court either knowingly or with good reasons to

know.”


America Invents Act

Ralph Loren15 February 2012

[email protected]

1

Why the AIA?

♦ Harmonization with rest of world♦ Establish First-to-file system♦ Establish an Absolute Novelty system♦ Set up new Post Grant Procedures

♦ Post Grant Review♦ Inter Partes Review♦ Covered Business Methods♦ Derivation♦ Supplemental Examination

♦ Protect Prior Users with a new defense

2

First-to-file

♦ US to become a First-to-file country - almost

♦ First-to-file applies to applications that:♦ Have an effective filing date on or after 16 March, 2013♦ US applications claiming priority to any application filed

before 16 March, 2013 are First-To-Invent, not First-To-File

♦ Trade off of patent term versus First-to-Invent♦ Changes the strategy of when (and possibly what) to file

3

Novelty: Public Use and On Sale Bars

Old § 102(b):

the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

New § 102(a)(1):

the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwiseavailable to the public before the effective filing date of the claimed invention

4

Novelty: Public Use and On Sale Bars (cont.)

Publicly available approach♦ No more ‘in this country’ limitation as it applies to

‘public use’ and ‘on sale’ bars♦ Critical date is effective filing date instead of one year

before the date of application in the U.S.♦ “Effective Filing Date” is date of earliest priority claimed

application anywhere in world

♦ If pre-AIA priority is claimed, AIA does not apply

5

Novelty: Prior Patents and Applications

Old § 102(e):the invention was described in a published U.S. patent application or patent by another filed in the United States before the invention by the applicant♦ includes PCT application only it designated the United

States and was published in the English language

New § 102(a)(2):the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b),which was effectively filed before the effective filing date

6

Novelty: Prior Patents and Applications (cont.)

♦ Date that matters is the effective filing date, NOT the date of invention

♦ Earlier patent filings of others that later become public are prior art as of their effective filing date

♦ Not limited to novelty destroying art but also art that destroys inventive step

♦ Includes PCT application even if it was not was published in the English language

♦ Not limited to US filings if there is a corresponding US application

7

Prior Art Exceptions

♦ US will become an Absolute Novelty country – almost

♦ Different Results apply to own prior disclosures and prior disclosures or patent filings of others

♦ First disclosure by another bars a patent♦ However, a disclosure made 1 year or less before the

effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if it is:♦ Inventor’s own disclosure or

♦ Derived from inventor

8

Novelty Exceptions

♦ Derivation

♦ The subject matter disclosed had, before such application matter was filed, been disclosed by the inventor to the party filing, or the information filed upon was obtained from another who obtained the subject matter from the inventor

♦ Excluded Art

♦ Subject matter of the claimed invention and the prior art were commonly owned or subject to assignment to the same person at the time the invention was made

♦ The joint research agreement exception (CREATE Act) applies as well

9

Grace Periods

♦ One-Year Grace Period

♦ Applies to inventor’s own work, not work of another♦ Exception to First-To-File and Absolute Novelty

♦ First to disclose but second to file wins if he files within a year of his earliest disclosure

♦ Opposite to the rule in most jurisdictions with a grace period

♦ Opposite the result in absolute novelty jurisdictions like Europe

♦ Advice – do not rely on the one year period – make sure to have the company file first

10

Examples: First to File Wins

A invents first

A can no longer swear behind. A is out of luck.

B files first

A Loses

B Wins

11

Examples: New Grace Period

B invents B files first B loses

A invents first A publishes first,triggering FTP Grace

A files A Wins

A’s FTP Grace Period Exempts B’s filing, even though B filed before A.

12

Best Mode

♦ One is still required to disclose the best mode of contemplated by the inventor for carrying out the claimed invention at the time of filing but

♦ Failure to comply cannot be used as a basis on which a claim may be canceled, held invalid or held unenforceable

♦ Examiners in PTO are supposed to be looking at best mode – no real basis in practice

♦ Clients hated the old rule – trade secrets had to be disclosed

13

New Post-Issuance Proceedings

♦ Post Grant Review

♦ Inter Partes Review

♦ Ex Parte Reexamination

♦ Supplemental Examination

♦ Derivation Proceedings

♦ Covered Business Methods

14

Post Grant Review

Similar to the EPO Opposition Third party challenge within 9 months after patent issuance Any ground of invalidity may be raised Standard to initiate: more likely than not that requestor

would prevail as to at least one challenged claim May provide a relatively cheaper (high PTO cost) and faster

(12 months) challenge but there is an estoppel issue Estoppel – One cannot raise any ground of unpatentability in

a subsequent litigation that the same person raised orreasonably could have been raised during the review Effective 16 September 2012 but only for New Act patents

15

Inter Partes Review

♦ Replaces Inter Partes reexamination ♦ Third party challenge – cannot be filed until later of:

♦ 9 months after patent or reissue, or♦ Date of termination of Post Grant Review

♦ Can only be based on patents or printed publications

♦ Preponderance of the evidence, not clear and convincing standard of the Courts (same in all post grant PTO actions)

♦ May be terminated/settled

♦ Same Estoppel issue as PGR♦ Effective Date –16 September 2012 but covers all patents

16

Ex Parte Reexamination

♦ Existing proceeding, relatively unchanged♦ Any party may challenge during the life of the patent♦ Director determines whether there is a “substantial new

question” (SNQ) of patentability♦ Patents♦ Printed publications♦ In all post grant reviews, one can use any statements

about scope of claim made by patent owner before a Federal court or USPTO

17

Supplemental Examination

♦ New proceeding♦ Limited to patent owner request ♦ Consider or correct any information “believed to be relevant

to the patent”♦ Director determines if the request raises at least one SNQ♦ Can be used to correct unenforceability of patent♦ If based on prior art, converted to ex parte reexamination♦ May be important on licensed in inventions

18

Derivation Proceeding

♦ Interferences (determination of priority of invention) will be phased out but it may take 10-20 years

♦ New derivation proceeding in PTO or in federal court

♦ Inventor named in earlier application (or patent) derived the invention from the inventor in a later application

♦ Must be brought not later than 1 year after earlier patent issuance (for civil action) or 1 year after publication of later case (for PTO action)

19

Covered Business Method Review

♦ Similar to Post Grant Review – any basis for invalidity

♦ Limited to patents that claim a method or apparatus for performing data processing or other operations used in the practice, administration of a financial product or service

♦ Excludes patents for Technological Inventions♦ Does the claimed subject matter as a whole (1) recite a

technological feature that is novel and unobvious; and (2) solves a technical problem using a technical solution

♦ Effective 16 September 2012 – 16 September 2020 to any covered patent without regard to when it was filed

20

Prior User Defense

♦ Commercial use more than 1 year before effective date

♦ Includes pre-market regulatory approval activities♦ Includes non-profit research laboratory or other non-profit

use♦ Personal defense that cannot be transferred or assigned

except with the business♦ Limited to the site where previously practiced

♦ If patent belongs to a US institute of higher learning, and work could have been made using Federal funds, defense does not apply – not other non-profits

21

Other AIA Highlights

♦ “Deceptive Intent” removed from Title 35♦ Inventorship correction possible—No longer requires a

showing of lack of deceptive intent ♦ Assignment may substitute for Oath/Declaration

♦ Assignee can file as the patent applicant♦ “Inventor” = inventive entity

♦ “Micro Entity” includes US institutes of higher learning

22

Take Away Points

♦ First-to-File may make changes on when and what to file

♦ Due diligence is harder to carry out

♦ New post grant proceedings may change the value of patents and change patent litigation

♦ First-to-Invent (and interferences) will be here for a while

♦ Prior User defense may still make records important

♦ University patents may be more valuable if properly filed


America Invents Act

Ralph LorenPartner, Boston15 February 2012

[email protected]

Called to the Bar 1972 Took silk in 1989

Simon Thorley has an extensive intellectual property practice, particularly in the field of chemical and biotechnology patents but extending to cover all other patent matters, passing off, infringement of trade marks, copyright and designs and breach of confidence. He also advises on EEC law relating to intellectual property and in technical commercial disputes. He has appeared regularly in the European Court of Justice, the European Patent Office and in Hong Kong.

Simon Thorley QCThree New Square

The Third Annual Edwards Wildman IP INTERAction Conference: New Threats and New Opportunities: What IP Owners Should Be Doing Now

IP INTERAction

Speakers’ Biographies

Ben has over 20 years experience in advising companies on the strategic management, commercialisation and protection of their valuable intellectual property. He specialises in high technology, and has worked with clients in a number of industries, including bio-pharma, ICT, food and drink, energy, and university technology transfer. He has advised many different types of client, including multinational corporations, SMEs, lenders, and academic institutions on issues relating to the commercialisation and licensing of IP. Ben spent two years in Shanghai, where he managed his previous firm’s China business and Asia commercial IP groups, and has internationally-recognised expertise in advising on strategies for the protection, commercialisation and management of IP assets in China and Asia.

Ben is widely recognised as a leading IP practitioner. Intellectual Asset Management magazine listed him in its “IAM Strategy 250” in 2010 and its “IP Top 250” in 2009 and 2010. He is ranked in the UK guide for Chambers, and Legal Business cited him as an expert in IP and IT in its “Legal Experts 2010.” In addition he is listed in “The World’s Leading Patent and Technology Licensing Practitioners” 2010.

Ben Goodger (Chair)Partner, Intellectual Property GroupEdwards Wildman Palmer UK LLPe: [email protected]

Nick Bolter is a partner in the International Trademark and Copyright Protection Group. Nick has experience in all areas of intellectual property with a particular focus on trade marks and designs. Nick advises clients on all aspects of the selection, prosecution, protection and enforcement of trade marks, brands and designs. Nick also advises clients in relation to data protection and privacy issues, in particular in relation to the acquisition and use of customer data. His practice also focuses on the use and misuse of trade marks on the Internet, including domain name disputes.

Nick acts for some of the world’s most well known brands including leading luxury brands, apparel brands and the world’s leading on-line retailer. Nick also assists the pro-bono organisation Own-It which provides advice to individuals within the creative industries who would otherwise not have access to legal advice.

Nicholas BolterPartner, International Trademark and Copyright Protection GroupEdwards Wildman Palmer UK LLPe: [email protected]

Ralph has practiced in all phases of intellectual property for over 30 years, with an emphasis on litigation, licensing, and patent prosecution in the life sciences, including inter-party proceedings such as interference practice. He has litigated numerous patent infringement actions in diverse fields including biotechnology, chemical analyzers, computers and electronic equipment, and mechanical devices. He has also been involved in a number of interferences in the biotechnology and chemical/mechanical field. In the patent area, he is involved in prosecuting patents in the areas of biochemistry, biotechnology, nutrition, immunology, medical instrumentation, mechanical apparatus, and liposomes. He also has prosecuted and litigated trademark and copyright matters.

Ralph A. LorenPartner, Intellectual Property GroupEdwards Wildman Palmer LLPe: [email protected]

Dr. Tony Maschio is a part of Edwards Wildman Innovations LLP, a team of European patent attorneys qualified to act before the European Patent Office, the UK Intellectual Property Office and the International Bureau of the World Intellectual Property Organization. He is a Life Sciences specialist whose success in the patent profession has been individually recognised in the Legal 500 and by Chambers & Partners who said “Tony Maschio is renowned for his biotech work.” He has extensive experience in all areas of Life Sciences patenting, including complex Opposition and Appeal proceedings before the European Patent Office. Tony specializes in immunology and biotechnology, including RNAi technology.

Tony MaschioPartner, Intellectual Property GroupEdwards Wildman Innovations LLPe: [email protected]

Akash Sachdeva joined Edwards Wildman in 2011 as a Partner. He is a qualified barrister, having trained in the IP specialist Chambers of Christopher Floyd QC. He has over 13 years of experience in intellectual property litigation including acting for Research In Motion on patent litigation matters in the English High Court, acting for BSkyB in a case involving the importation of foreign decoder cards, acting for a major defense contractor in an arbitration involving confidential information and acting for a major Chinese telecoms company in proceedings in Hong Kong and China.

He also has had significant experience in international arbitration having acted in ICC, AAA and LCIA arbitration disputes.

Akash SachdevaPartner, Intellectual Property GroupEdwards Wildman Palmer UK LLPe: [email protected]

Colin is an associate in the firm’s Intellectual Property department, specialising in trade marks, copyright and designs. As a dual-qualified US/UK lawyer, he advises clients on the clearance, prosecution and enforcement of trade marks and designs, as well as the protection and enforcement of copyright.

Colin also advises clients on negotiating and drafting agreements to commercialise all aspects of intellectual property, and has extensive experience in anti-counterfeiting matters throughout the European Union as well as in handling the intellectual property aspects of corporate transactions.

Colin speaks, reads and writes Japanese fluently, having majored in Japanese at university and also having lived in Japan for over four years. He routinely advises clients in both written and spoken Japanese on a wide range of intellectual property matters, and also gives presentations in Japanese.

Colin SawdyAssociate, International Trademark and Copyright Protection GroupEdwards Wildman Palmer UK LLPe: [email protected]

IP Interaction.com edwards wildman.co m

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