2023 // FICPI 21st Open Forum - London - Presentations

How to deal with the interface between intellectual property (IP) and traditional knowledge (TK), traditional cultural expressions (TCEs), and genetic resources (GRs)?

What are the most important questions that arise when considering the role of IP principles and systems vis-a-vis protecting TK and TCEs from misappropriation, generating and equitably sharing benefits from their commercialisation, and the role of IP in access to and benefit sharing in GRs?

What about ethical concerns where cultural communities wished to benefit from the economic advantage attached to treating their expressions of folklore (TCE) as a commodity or when they wished to protect their folklore so that its evolution faithfully respected their traditions and modes of life.

Which system(s) is/are more appealing: defensive protection of traditional knowledge such as improvement in the availability, searchability and exchangeability of TK as prior art, or affirmative protection of TK such as use of existing intellectual property or contractual rights or the development of sui generis rights or is it a mix and match of both?

What about the role of TK databases that may be used as evidence of prior art to defeat a claim to a patent on such TK.

Intellectual property protection for developers of inventions in the maritime, aeronautical and space industries is extremely important, however does the current patent system adequately serve the interests of these industries?

Since IP rights are inherently territorial, how do holders of IP rights in these industries enforce their patents when much of the use of these inventions is in space or international waters?

Also, what happens if a ship or aircraft utilising such an invention finds itself temporarily within the jurisdiction of a patent, for example while at an international port or airport?

To what extent can the use of patented inventions on board ships, aircraft, spacecraft or oil rigs constitute patent infringement?

Product configuration trade marks are of significant importance to companies who made and sell goods. It potentially provides meaningful protection for the product design and/or its packaging against a likelihood of confusion in the marketplace.

This is a valuable right for many companies as it is sometimes the only IP right that might be applicable to prevent knockoffs and counterfeit goods.

The session will also focus on differences between jurisdictions in procuring such rights, identifying regions where rights may be easier or harder to establish, and also in addressing recent updates in the law.

This session focuses on how to organise and lead a firm.

What is leadership, what decisions need to be made, and how do you make them?

The presenters will also talk about the different ways in which decisions are prepared and made in smaller versus bigger firms.

What are the differences between making decisions by the entire partnership, in dedicated sub-committees, by a managing partner or a managing director?

How can you concurrently work on legal cases, manage a team and also manage your firm?

In 2017 the EU Commission provided suggestions for a "balanced, smooth and predictable framework for SEPs" based on:

1. incentivising the development and inclusion of top technologies in standards, by preserving fair and adequate return for these contributions, and
2. ensuring smooth and wide dissemination of standardised technologies based on fair access conditions.

There is little harmonisation within and between EU member states, and international ramifications (theoretically, FRAND must be worldwide).

SEP litigation is breaking out of the closed telecom space into other areas and, with increasing use of telecommunications in other industries, there will be very few industries spared.

How many children have to die from counterfeit goods, or how many accidents will befall people because a counterfeit product fails?

This session will highlight recent developments in the battle against these products.

This session introduces concepts, tools, and methods for sustainable profitability in fast-changing and disruptive legal markets, specifically relating to their applicability in intellectual property practice.

This includes an examination of how the economic forces and profitability drivers can vary significantly among intellectual property subspecialties within the same firm or practice group, with special impacts on pricing levels, structures, and strategies.

We also investigate together a case study to demonstrate how to diagnose profitability issues and develop sustainable improvements in an intellectual property practice.

The Unified Patent Court (UPC) opened its doors on 1 June 2023 and is a very interesting new forum in Europe for deciding patent disputes in at least 17 of the 27 EU Member States.

The UPC has the power to decide questions of both patent validity and infringement for the newly established "European Patents with Unitary Effect" (“Unitary Patents”; “UPs”) as well as for "classical" European Patents (unless actively "opted out" from the UPC competence). It is therefore the first multi-national court in the European Union to act and decide in civil law matters between private parties.

The UPC can overcome the European challenge in patent litigation to be faced with multiple fora in many EU Member States by a single decision in a single court for all UPC Member States. This could offer opportunities for small and medium-sized enterprises (SMEs) to enforce their patents more efficiently but also creates exposure to a single invalidity request in these Member States (similar to the current EPO opposition proceedings).

Session moderator, Daniel Alge, President of FICPI's EUCOF Committee and owner of Sonn Patentanwälte in Austria, explains how an upcoming panel session will report on the "first 100 days" of the UPC in power and the UP being a new strategic option to obtain patent protection within the EU, and share with attendees the first practical experiences of this new patent form and the new transnational patent court.

You can watch the session "The Unified Patent Court (UPC) – what has been the experience 100 days in?" at the 2023 FICPI Open Forum in London from 4-7 October.

Who's on the panel?

We are privileged to have people extremely close to the UPC on the panel, the very definition of UPC experts! The panel includes the President of the Court of Appeal of the UPC, a leading member of the EPO administering the UP, and a litigator qualified at the UPC.

Judge Klaus Grabinski is the President of the Court of Appeal who represents the Unified Patent Court. He is therefore the key person in this project, having the deepest legal and practical knowledge of the status of the UPC project.

Stefan Luginbühl leads the Patent Law Policy and Harmonisation Department at the European Patent Office (EPO) and is an expert in the Unitary Patent System. He will give us background information about the role of the EPO in the unitary patent system and provide us with the latest news about how this new instrument is appreciated by the users of the EPO.

Silvia Dondi is a European Patent Litigator and will describe her impressions of the start of the UP/UPC system from the perspective of a user of the system, especially her experience with the Case Management System in the "sunrise period" from 1 March to 31 May 2023 and with the requests for unitary protection at the EPO.

In 2023 have multilateral IP treaties become a thing of the past?  

This session of diverse global IP experts looks at the the current state of affairs surrounding IPRs as a continuing focus of national, regional and global trade-related treaty negotiations in the first quarter of this century.

Concurrently, we look at the growing tendency over that same time period for countries and intergovernmental organizations to negotiate and enter into bilateral over multilateral trade agreements.

Finally, we examine the growing disenchantment with the WTO over the same time period from numerous quarters, including the EU and the US fuelling the tendency towards bilateral treaties, isolationism and an existentialist crisis at the WTO. However, seemingly bucking that bilateral treaty trend is WIPO, whose members have successfully negotiated numerous multilateral treaties during the same time period.  

WHY?  

HOW?  

And … what can we expect in the next quarter of a century?

Alternative legal service providers provide technical solutions for many of our day-to-day tasks as IP firms and propose new ways to serve clients.

They sometimes offer “basic” services (such as annuity payments) and may also offer more elaborate services up to and including drafting applications and office action responses.

While some IP firms see these ALSPs as complimentary to their practice, others may see these ALSPs as a threat to their traditional business.

Can these ALSPs open new directions where IP firms with competent teams and organisations can be very relevant and bring enhanced benefits to clients?

In whatever way you perceive them, ALSPs are changing the IP game and this session will explore their interaction (good and bad) with IP firms and risks or opportunities they continue to create.

An IP firm gathers various talents and specificities of its own.

At a certain point of its life, or for legal or strategic reasons, an IP firm might look abroad to build a partnership and secure its growth or open up to new markets.

This session will provide an opportunity to discuss various types of cross-border partnership systems, their motivations and their main features. Aspects, such as the reasons leading to international partnership, and tips and tricks to be considered in such cases will be addressed by professionals having experienced these situations.

During patent prosecution and invalidity proceedings, it is a common to allow post filing data and evidence to demonstrate the unexpected advantage or inventiveness of a patent.

While acceptance of such evidence might be allowed in several jurisdictions for establishing inventiveness, it may not be the same for sufficiency.

Plausibility seems to be emerging as the fourth pillar of patentability in several jurisdictions in addition to novelty, inventive step and utility. While several jurisdictions have provisions for “best mode and enablement”, the main issue emerging is whether post filing evidence/ data can be used for inventive step and plausibility.

This session examines the standard for admissibility of post filing evidence for overcoming inventive step and plausibility challenges.

When are Courts justified in interfering in administrative decisions?

To what extent are courts bound by IPO Guidelines or take these into account?

Do the standards of review vary across jurisdictions?

Business Development is not the exclusive purview of a select few Partners.

This session will outline how a robust Business Development strategy can be implemented throughout a firm, from the clerks and assistants to the senior Partners.

Each touch point between a member of the firm and a client (or prospective client) is an opportunity for Business Development, and employees and Partners alike can reinforce a relationship through every correspondence and phone call. Integration of BD and marketing functions at all levels ensure that the messaging is consistent and can help address issues quickly when they arise.

Since considerable time can elapse between grant of a patent and litigation to enforce it, it may be desirable to amend the patent before litigation, due to new developments in case law, prior art that has come to light since grant, or possibly decisions issued on corresponding patents in other jurisdictions.

• Under what circumstances is it possible to make such amendments, and are there any risks?
• What if there is insufficient time to make amendments prior to initiating the litigation – is it possible to amend the patent after litigation has commenced?
• What prosecution strategies should be employed where post grant amendment is not permitted?

This session will explore the various factors to be taken into account when preparing a patent for litigation.

Sales of digital goods are exploding. Digital goods are sold by themselves, are sold in video games and applications, and are important part of the metaverse.

This session will how to best protect digital goods by strategically using IP rights – mainly focusing on design and trademark strategies. The session will also focus on limitations in the IP laws and identifying gaps in coverage in specific regions.

This session is a follow-up of the work initiated at the Congress in Cannes.

A few people who have something specific that they want to implement or achieve with a variety of different goals have been working for one year to implement their predefined goal.

They will report about their success or failure, their experience and difficulties, the challenges they have been facing, etc.