7th annual INTERNATIONAL PATENT · national frameworks such as the patent prosecution highway, ......
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7 th annual INTERNATIONAL PATENT FORUM 2017 MARCH 8-9, LONDON, THE WALDORF HILTON HOTEL WWW.MANAGINGIP.COM/PATENTFORUM2017 ASSOCIATION PARTNER Registrations [email protected] +44 (0) 207 779 8334 Speaking opportunities [email protected] +44 (0) 207 779 8730 Sponsorship [email protected] +44 (0) 207 779 8673
Transcript of 7th annual INTERNATIONAL PATENT · national frameworks such as the patent prosecution highway, ......
7th annual
INTERNATIONAL
PATENTFORUM 2017
M A R C H 8 - 9 , L O N D O N , T H E WA L D O R F H I L T O N H O T E L
W W W. M A N A G I N G I P. C O M / PAT E N T F O R U M 2 0 1 7
ASSOCIAT ION PARTNER
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MARCH 8 - 9 2 0 1 7TH E WA LDOR F H I LTON HO T E L
INTERNATIONAL
PATENTFORUM 2017
LICENSING IN TMTEarl Nied of Intel predicted the internetof things (IoT) will have a big impact:small companies will come up withinnovative successful products. KerryMiller of Nokia said after the Huaweidecision there will be more focus on theimplementers of standards and how theyhave to behave. Dan Hermele ofQualcomm described the debates overstandard-essential patent as critical for IPas a whole, and for technologydevelopment. IoT will require platformsand open standards and need forinvestment in those technologies, he said,and standards is the way to do that.
Thanks to several key decisions sinceHuawei v ZTE, including in the much-anticipated Unwired Planet cases, wemay be getting closer to a definition ofFRAND. But are the courts keeping upwith technology?
THE IP-TAXROLLERCOASTER The UK's Patent Box attracted 639 UKcompanies up to the end of 2015, butwas criticised by politicians includingGerman Finance Minister WolfgangSchäuble. Now it's being changed,and the changes come into effect onJuly 1 this year: the key point toremember is The Nexus Principle,which sounds like a Hollywood thrillerbut is actually a formula based R&D,acquisition costs and expenditure(AKA "track and trace", see image).There are various other complicatedprovisions, including a 15-yearexpenditure rule. As moderator Andrew Hammond said:"You say this is designed to attractcompanies to come to the UK. Is thataccounting companies?"
Given the limited take up of the PatentBox, and the changes now in place, arethere better options for companies?Should advisers now be thinkingOutside the (Patent) Box?
After a hugely successful event in 2016 which saw 300+ patent and IP profession-als register to attend, the seventh annual MIP International Patent Forum will returnin March 2017. With a swathe of IP developments on the horizon, spurred on inno small part by the UK’s decision to leave the European Union, IP experts willinevitably face numerous challenges and changes in the coming months. As ever,the Forum will address these issues and provide practical insights on how to bestmanage your patent portfolio. Read on for key topics which were raised at the2016 Forum and gain an idea of the concerns which will be addressed in 2017:
MIP INTERNATIONAL PATENT FORUM 2016 – KEY TAKEAWAYSKEYNOTE SPEECH:ROSA WILKINSON OF THE UK IPOFormer director of innovation at the UK Intellectual Property Office, RosaWilkinson, provided keen sights into why governments are interested in IP: theywant to see robust, sustainable economic growth, and that means thinking abouthow well IP systems support innovators. She called it “the birth of an age whenIP began to enjoy a stronger spotlight within government policy”.
Wilkinson mentioned Canada, China, Brunei (which has set up its own IPO) and inter-national frameworks such as the patent prosecution highway, patent harmonisation andcross-border intelligence sharing. “The pace of change shows no sign of slowing.”
With the triggering of Article 50 now due by March 2017, what will IP protectionin the UK look like post-Brexit? And how will other jurisdictions be affected?
SOFTWARE PATENTS - EUROPE VERSUS USAWe're starting off talking about Alice with Alice (Hume, of Qlik) who says thatapplicants have to work a lot harder before the USPTO since the Supreme Court'sdecision. Rosie Stoakes of Glory Global Solutions agrees that life is tougher, andthere is a bit more uncertainty now in the US, but says a US patent is still worththe effort - even if cuts have to be made elsewhere. Kevin Fournier of IBM says:Expect an Alice attack every time you file an application or assert a patent: "Thefirst thing you think about is no longer the prior art, it's Alice."
Are things more settled in Europe? Yes, says Rosie Stoakes of Glory Global Solutions,but there is uncertainty around enforcement in the UPC: will UPC judges follow thesettled EPO Boards of Appeal case law? The predictability at the EPO means youcan pick your battles, and decide where to invest, says Fournier. In summary, there'sbroad support from this panel for the EPO approach to software patents.
Life for software and business method patent applicants in the US is not getting anyeasier. How will this affect filing and enforcement strategies in major markets?
MARCH 8 - 9 2 0 1 7TH E WA LDOR F H I LTON HO T E L
INTERNATIONAL
PATENTFORUM 2017
KEYNOTE: PATRICK KILBRIDE, US CHAMBER OF COMMERCEPatrick Kilbride introduced the 2016 GIPC Index, saying: “We all benefit from anIP system that users have confidence in”
But he adds: “There is no one model. Every country is making its own decisions.India seems to have made a conscious choice to downgrade IP.” By contrast,Malaysia is the top-ranked emerging market and is taking steps to encourage IPinvestment.
What will be the impact of BRICS countries on IP?
INFRINGEMENT OF SECOND MEDICALUSE CLAIMSSummary: this topic is a mess and is the pharmaceutical industry's equivalent ofAlice (as one speaker implied). Marianne Schaffner of Dechert discusses somemeans of tidying it up, spanning labelling, prescription behaviour and changes tothe reimbursement system. "There are some solutions but no perfect solutions," shesays.
There have now been many decisions on second medical use claims, from courtsin various countries. Are the issues slowly being worked out?
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CHINAThe annual China panel is alwaysgood for striking charts, and this year'srevelation is that invention patent appli-cations hit 1.1 million in 2015 with asimilar number of utility model applica-tions. Lulin Gao of Beijing East IP has simpleadvice for all investors in the country:"Build up a strong patent portfolio inChina ... You will meet strong competi-tion in China."
Two years on, what impact have thespecialist IP courts had on Chinese liti-gation, and is the country now a safeenvironment for IP owners?
TRADE SECRETSWhat do Coca-Cola and WD40 havein common? Answer: the recipes forboth are trade secrets. 2016’s finalsession focused on this topic, aheadof the EU Trade Secrets Directive,which was approved shortly after theForum in April 2016.In trade secrets litigation, one of thechallenges is: how to maintain theconfidentiality? Thomas Farkas ofGowling WLG in Germany discussespossible solutions: the DüsseldorfPrinciple, staged proceedings, theblack box procedure and deemingthe trade secret not to be disclosed ifrevealed to an opposing partiesduring proceedings. It's not clearwhich if any of these align with theproposed Directive, and will perhapsbe a point of discussion for 2017.
As EU member states take steps totranspose the EU Trade SecretsDirective, what lessons can be learnedfrom the first cases heard under theDTSA in the United States?
MARCH 8 - 9 2 0 1 7TH E WA LDOR F H I LTON HO T E L
INTERNATIONAL
PATENTFORUM 2017
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SPONSORSHIP OPTIONSLimited positions are available for firms to come on board as the sponsor for their chosen topic or jurisdiction. Please contact Amir Hezareh at [email protected] or +44 (0) 207 779 8673 for details on a provisional agenda.
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