Some are saying that  China is considering disallowing patents to inventions made outside China.  What if this were try and it forced other large economies to go down the same route and what about inventions co-invented in two countries?

Setting aside the macro economic and political issues for a moment...

So what can you do about such a change? One suggestion on Danny's bog is to always have a Chinese subsidiary or collaborator involved in your R&D. A bit awkward and expensive, but if you have to do it, so be it.

Perhaps another is to start campaigning or educating to avoid this? What would you add?

One of the interesting aspects of the discussion was the extent to which patents are now being drafted to make them harder to find, by using alternative terminology. Allan Main, a regular reader of the blog, gave the great example of the term 'mammalian maternal excretions' being used instead of 'milk'. I suggested that great patent searchers will thoroughly understand the technology and try alternative descriptors that would include such terms. (Though I hastily added that a search is never 100% guarranteed.)

I also mentioned that such patents are at risk of invalidation if the descriptors don't adequately describe the invention - for lack of enablement / 112 / lack of sufficiency. So this helps the searcher to find them.

If this can be achieved, one of the interesting side benefits of finding alternative, hard to search, terminology is that it makes it harder to find relevant prior art. 'Mammalian maternal excretions' won't get you there because it clearly describes milk. However, what about a patent claim that characterises milk by virtue of some property that has heretofore not been found in the literature? I'm not saying that one can today get a valid claim to milk by this method, but a claim to some novel feature of milk about which there is a risk of an obviousness argument might fit the bill. This technique has, of course, been used for decades in the Pharmaceutical industry.

It's well worth a read - here's a link: Rethinking the 'War for Talent'

In essence (and I hope they forgive me for my overly brief summary), Deepak and Ian argue that a firm's strategy for dealing with exiting employees should depend on the strategic importance of the knowledge (and role) they hold and where they are departing to. So, a less strategic employee going to a collaborator should be given more freedom to leave, whereas the senior executive running your firm's make-or-break project should be seriously dissuaded from joining a competitor.

I think these are great points, and the experience of the law firms they studied must be right more generally - they do better when an employee goes to work for a client or a potential client, than if they go to a competitor.

Interestingly, Zappos seems to take this to another level by offering employees a $1000 bonus if they will quit after the initial training period is over. That way they get to keep only the most committed employees. I guess a difference here is that Zappos is focusing on getting the right people, whereas Deepak and Ian are focusing in this study on when they exit. (I asked Deepak about this and he commented that they decided not to include hiring practices so as not to detract from their main point.)

From all accounts, the 'war for talent' is only going to intensify as the boomers retire, or at least slowly decrease their commitments at work. So, what are the IP implications?

Firstly, I'm sorry to say, that if you think you can keep your intellectual property locked up, away from most employees, so as to minimise risk that it will move with them, then you're sadly mistaken. I'd even go so far as to say that I really don't think that litigating to enforce non-competes is a good idea at all (as advocated in certain circumstances by Deepak and Ian). At best, you create a bad publicity incident, a very disgruntled ex-employee and a hollow, shortlived victory, at worst, well it can be a lot worse than that. So be strategic about your IP and the way you handle it. Create an IP-conscious culture within the firm, have appropriate employment agreements in place, provide strong incentives for employees to create and then disclose new IP developments as soon as possible, protect them properly and so on.

Secondly, to focus only on exiting employees, I think is looking at the wrong end of the equation. (And certainly Deepak and Ian are not advocating such a narrow focus at all.) Instead, focus on hiring the right people, waiting forever to get them, and as Goldman Sachs does, going to extraordinary lengths to attract and retain them. Once you have the right people, you know what? They will do the right thing by you if you do the same. They will. The only trick is to find the right people.

For those interested in Deepak's work - Jo Sinclair and I interviewed him for IP ThinkTank back in October 2007, he is a friend and reader of this blog and, Assistant Professor of Strategy at the Robert H. Smith School of Business at the University of Maryland.

So the question is how often do clever patent attorneys, who ask interesting questions about variations and broadening aspects of the invention disclosed to them, end up accorded inventorship status?

Should they?

Is there an invalidity / unenforceability risk here?

A few key points:

1. not every company should have a CIPO (phew, that makes sense);
2. call them what you want, just make sure the company is adequately thinking about IP;
3. the CIPO (or equivalent) role is a business role, not a legal one;
4. the IP community needs to get a whole lot better at educating the general community about the business end of IP.

A regular reader of this blog who holds a senior IP-related position at a major Australian entity recently wrote in with the following comment (reproduced with permission):

(This person was responding to a recent post at IPRoo about IP Australia's patent reform suggestions.)

"Duncan

I was interested in IP Australia’s initiative 3.3, especially “raise the level of patentability to international standards”. In working with inventor teams at 'X', I’ve come across at least three situations in which they were able to get patents in Australia and New Zealand, but nowhere else, despite years of trying (and expense). Do you think standards are lower in Australia? If so, is it advisable to try to take advantage of that situation by getting a “local” patent and hoping for the best elsewhere, or would companies be better advised to aim high in the first place (which might require using an overseas patent attorney?)"

Here are some initial thoughts - what would you add?

• The threshhold for patentable subject matter is definitely lower in Australia, see for example my articles in March and May 2007 - Australia's highest court raises the patent invalidity bar; and Australia even more patent-friendly after High Court decision;
  

• The remedy to the situation described probably resides more in doing a good search before filing (even if it is just the PCT international type search after filing a provisional and following up with a 2nd better, provisional soon thereafter or as soon as you have better data...).

• There are definitely some situations where a local patent is all an entity might need. However, there are a lot of missed opportunities with that approach. Even if you take this approach, you should remember that even though the patent was granted by a patent office, it doesn't mean that the local courts would agree. Chances are if other patent offices think not, then the courts would also invalidate the patent.
• I would be pretty wary about the value of a patent family which includes failed applications in some countries, even though it has granted patents in one or more jurisdictions of interest.
  

• My experience is that the top patent drafters in Australia are just as good as elsewhere - there just aren't as many of them, as the profession in Australia is smaller than, say the US or Europe.

It promises to be a great conference, with intellectual property leaders from around the world all attending and a program that focuses on the business end of IP.

I'll be chairing the lifesciences breakout session and encourage any participants to speak up so that we can get a useful and insightful discussion going.

I look forward to catching up with those readers who will be coming along to the conference.

The article is the result of an interview with Ben Whittacker-Cook for CPA's IP Review Magazine.

You can find it in IP Review, Issue 22.

As always, I'm keen to hear (see) your thoughts.

When Google launched its AdWords advertising programme in 2003, keyword-linked advertising seemed to herald the future of online advertising. If only it didn’t infringe brand owners’ IP Rights in the process, says Duncan Bucknell

It all seemed to make perfect sense. Companies looking to ensure their details appeared at the top of a web search results page simply had to purchase ‘pay-per-click’ advertising banners that linked to particular industry-specific search terms. So, for example, if a consumer was looking to find ‘trademark counsel’, the law firm that had sponsored those keywords with a search engine provider, such as Google or Yahoo!, would appear next to the actual search results. It sounds no different from selecting the appropriate keyword terms as website metatags for your own website. That is, after all, how search engines work.

And yet the potential for IP infringement has proved immense, as businesses looking to cash in on their competitors’ goodwill have taken to purchasing trademark-protected terms (for example, the brand or product names of their competitors) as part of their sponsored keyword triggers in order to divert some of the potential customers of their competitors to their own websites. Worse still, say brand owners, Google and its peers have chosen to turn a blind eye.

Trademark owners have started to protest, filing lawsuits claiming trademark infringement, unfair competition, and trademark dilution. To date, Google, AOL’s Netscape search engine, Yahoo! and Excite have all been sued for keyword infringement, with mixed results. Most jurisdictions are clear that trademark infringement exists if a company uses another company’s trademarks as metatags on its own website, but they are divided as to whether the use of trademarks in keyword-linked advertising is trademark infringement or simply a fair means of competition.

France has already ruled that in ‘some’ circumstances it does count as infringement, but UK courts have found the opposite to be true: in their minds the sponsored ads are clearly labelled as such, so the potential for consumer confusion (necessary to prove the common law tort of passing off) has been adequately reduced.
Google, for its part, argues that one of the critical steps in effective advertising is placing the ad where interested consumers may see it. It is not to blame, it suggests, if companies nominate the brand names of their competitors as search terms: ‘As a provider of space for advertisements, we cannot arbitrate trademark disputes between advertisers and trademark owners... We encourage trademark owners to resolve their disputes directly with our advertisers, particularly because the advertisers may have similar advertisements on other sites.’

It has good reason to fight its corner: Google receives the majority of its revenue through pay-per-click keyword advertising. Prior to 2004, it denied advertisers the ability to link their ads to the trademarks of others; however, it modified its ad-linking policy in January 2007 to allow advertisers to bid on the chance to have their ads associated with any keyword, even if those keywords were trademarks owned by a competitor. That is not to say that Google is allowing unbridled use of trademarks, as the company still ‘reviews trademark complaints that relate to the content of the keyword ads, just not the keywords purchased to trigger the ads’. But that is small comfort to brand owners.

Pfizer and Ranbaxy Settle Lipitor Patent Litigation (mostly) Worldwide

Ranbaxy to Receive License in U.S. on November 30, 2011;

NEW YORK--(BUSINESS WIRE)--Pfizer Inc announced today that it has entered into an agreement with generics manufacturer Ranbaxy Laboratories Ltd. of India and certain of its affiliates to settle substantially all their patent litigation worldwide involving Lipitor, the world’s most-prescribed cholesterol-lowering medicine. Under the terms of the agreement, Ranbaxy will have a license to sell generic versions of Lipitor and Caduet in the United States effective November 30, 2011. Caduet is a medicine that combines the active ingredients of Lipitor and Norvasc and treats both high blood pressure and high cholesterol.

The settlement provides shareholders of Pfizer and Ranbaxy, as well as patients, with substantial certainty regarding the potential date – November 30, 2011 – for entry of a generic version of Lipitor in the United States. In addition, the agreement provides a license for Ranbaxy to sell generic versions of Lipitor on varying dates in seven additional countries: Canada, Belgium, Netherlands, Germany, Sweden, Italy and Australia. Pfizer and Ranbaxy have also resolved their disputes regarding Lipitor in Malaysia, Brunei, Peru and Vietnam.

The lawsuits between Pfizer and Ranbaxy regarding Lipitor and Caduet will be dismissed in the specified countries, and Ranbaxy will no longer contest the validity of Pfizer’s patents in the specified countries, including the United States, according to the agreement. The settlement also resolves all patent litigation with Ranbaxy relating to Accupril in the United States and Viagra in Ecuador.

“This agreement is a win-win-win because it is pro-patient, pro-competition and pro-intellectual property,” said Ian Read, president of Worldwide Pharmaceutical Operations for Pfizer. “The agreement provides patients with access to a generic product much earlier than if Ranbaxy were unsuccessful in obtaining approval for its product and overcoming the relevant patents. It provides substantial certainty regarding the timing of the entry of a generic version of Lipitor. Finally, the agreement clearly reaffirms the value and importance of intellectual property and this country’s well-balanced system of creating incentives to develop innovative medicines while at the same time establishing a strong generic drug business.”

“Without patents and rigorous defense of intellectual property rights, innovators would face significant challenges that could inhibit the discovery of new medicines,” Mr. Read added.

The settlement provides Ranbaxy with licenses to all the patents it needs to make the generic product and enables Ranbaxy to manufacture and launch a generic version of Lipitor prior to the expiration of the crystalline and amorphous patents.

The Lipitor patents involved in this agreement are the basic compound patent, which expires in the United States in 2010; the enantiomer patent, which expires in the United States in 2011; as well as various process and crystalline form patents, which expire in 2016 and 2017; and the combination patent for Caduet, which expires in 2018.

The settlement complies with all applicable laws, and does not contain any of the practices – such as “reverse payments” – that have been identified as of concern recently by the U.S. Federal Trade Commission.

Pfizer has been defending Lipitor patent challenges by Ranbaxy throughout the world since 2003. The agreement pertains solely to Ranbaxy and its affiliates and does not cover legal challenges to the Lipitor patents involving other generic manufacturers. However, Ranbaxy was the first generic challenger to the listed Lipitor patents and, as such, holds the rights to 180 days of marketing exclusivity in the United States.

The patent infringement litigation between Pfizer and Ranbaxy relating to Lipitor will continue in five other European countries -- Finland, Spain, Portugal, Denmark and Romania. Court cases involving the enantiomer patents are pending in Spain and Portugal, while an infringement action on the commercial process patent is pending in Finland. Patent cases involving the enantiomer patent are pending in Denmark and Romania.

In the article, Henkel and Reitzig discuss the serious menace faced by technology firms from 'patent sharks' (which seems to be another term for the garden variety patent troll - but which are distinguished in the article from small time inventors).  These sharks collect patents through bankruptcies, licensing and their own R&D, hide their IP so that they can deliberately trap tech firms into inadvertent patent infringement - then they sue.

Henkel and Reitzig recommend shark-proofing your firm by: making your technology modular (the theory being that you can swap out any infringing modules), collaborating with competitors to spot potential patent problems, streamlining your patent portfolio and recognizing the limits of legal remedies.

Here are some comments:

1 - Considering non-legal remedies is a great idea - please do;

2 - A good freedom to operate strategy should uncover any 'hidden' patents - notwithstanding the large (and ever increasing) number of patent applications filed eached year;

3 - A well drafted patent won't only claim the component (that you would like to swap), but will also cover interoperability with it and surrounding components.  So simply swapping out infringing components isn't going to be as easy as the authors suggest;

4 - Unfortunately, the article is replete with sensationalist and emotive language, a bit  unnecessary for the calibre of these authors and HBR;

5 - I think it is only the US which has archaic damages rules which overly penalise infringers of patents for minor components;

6 - Most industries and their Standards setting organisations are acutely aware of the IP issues surrounding Standards and have a set of well drafted rules in place to cover this.  Rambus is a poor example of this, because the rules were not so good at all.  This is not a new 'tactic' by patent sharks.

7.  I completely agree that a large portfolio of patents will not work on non-practicing entities.  However, I think this is a poor reason (alone) to dramatically reduce the number of patents a company files.  There are other, much better reasons, and sometimes this is simply a bad idea.

8. Collaborating with competitors is a great idea - if they want to do the same and it fits your business model...

9.  I'm not sure that there is a direct correlation between the 'flood' of patent applications and a perceived lowering of the bar to patentability.  As I mentioned in a recent IAM-Magazine interview, I'm not even sure that the bar has actually lowered.

I've just been flicking through Ocean Tomo's Catalogue for the upcoming 2008 European Live IP Auction (which I'm attending as I'm speaking at the concurrent IP Business Congress).

Crazy as it sounds, none of the patents listed in that Catalogue list expiry dates.

Come on guys, how hard can this be?

Here's another nice example of cashing-in on pharmaceutical developments from the generic side of the equation - instead of selling the IP in a product - sell the whole company.

Daiichi Sankyo has recently made a bid for Ranbaxy, and even more interestingly, Pfizer is also rumoured to be making a bid.  The interesting thing about the Pfizer bid is that they have been suing Rambaxy in the global Lipitor dispute. 

So, I wonder to what extent Ranbaxy's role in Lipitor has figured in its attractiveness to Pfizer?  The Lipitor patent monopoly disappears in 2010-2011, and a generic version which can be launched a suitable period before patent expiry (as an authorized generic) will capture most of the generic market and make a big impact on maintaing Pfizer's market share in the product.

Current annual global sales of Lipitor are about $13 Billion and Pfizer iwould presumably have to bid more than Sankyo Daichi's $ 4.6 Billion.

So, let's assume that on generic entry, the global price for Lipitor drops by 50%.  That's a market of $6.5 Billion in annual global sales. 

If by launching before patent expiry with a Rambaxy-made generic, Pfizer can hold on to even 30% market share in the first year, then they will have paid for the entire purchase of Rambaxy within 5 years - from Lipitor sales alone (assuming a lowly 50% profit margin on Lipitor sales).    (There will be  some potential profit loss due to canabilisation of the market by the generic version, but I think this is covered by the low profit margin I've used.)

And that's just Lipitor - Rambaxy obviously have a lot more products on pharmacy shelves and in the pipeline (including a number of completely new chemical entities).

Sounds like a good idea to me - from Pfizer's perspective.

There are mixed views from Ranbaxy's perspective.

We look forward to your comments.

• Be committed in the protection and enforcement of your most valuable property: your intellectual property rights.

• Budget enough financial means to protect and enforce your intellectual property rights.

• Raise the awareness in your whole organisation about the risks of intellectual property infringements in China.

One of the clichés about doing business in China is the importance of guanxi (relationships). Indeed, guanxi are very important in China, however, one should by no means overlook the phase before one enters into a relationship.

• Do a due diligence research of your potential business partners. Were they in any way involved in an intellectual property infringement before?

• Demand that potential business partners sign an confidentiality agreement before you hand over any sensitive business information.

• Set up a contract that includes all aspects of intellectual property rights. Who owns what intellectual property right? In what way can the business partner use the intellectual property rights? What is the time frame he can use these? Spell out that you can visit the plant unexpectedly to control how your intellectual property is used. If a potential business partner refuses to sign the contract, find another business partner.

No registration equals no right

If you do not register your intellectual property rights (with the exception of copyrights) in China, you are unprotected and it makes it near impossible to stop counterfeiters. 

• Although with copyright there is no registration needed, according to the 'no formalities provision' of the Berne Convention to which China is a signatory, it can be very helpful to establish prima face evidence, for example ownership. So do register your copyright at the National Copyright Authority of China.

• Register your trade marks in Chinese characters too. If you want to register the phonetic equivalence of your Western name, it is possible you need different sets of Chinese characters, because Chinese characters are pronounced differently in different Chinese dialects, such as Cantonese. Make sure the Chinese characters have a laudatory meaning appropriate for your brand.

• Register your patents, utility models and design rights. In China designs are, together with inventions and utility models, part of the so called inventions-creations, which are protected by the Patent Law of China..

• Know who has access to your plant, to your intellectual property rights.

• Use and combine several anti-counterfeit technologies.

• If there are counterfeit products, track the origin, gather the evidence.

In case of an intellectual property infringement act in an optimal way. Different situations ask for different enforcement routes. Timing is important too. Strike the infringers at a moment when they have added maximum value to their infringed products, because of packaging and transport, in order to hit them hardest financially. 

• In China the administrative enforcement route is the most commonly used. The Administration for Industry and Commerce (AIC) enforces trade marks, the State Intellectual property Organisation (SIPO) enforces patents, utility models and design rights and the National Copyright Administration of China (NCAC) enforces copyrights. Apart from the enforcement of patents, SIPO is responsible for the patent work throughout the country. At the national level SIPO is also responsible for the examination of foreign and domestic patents (Patent Re-examination Board). The Trademark Office (TMO) is responsible for the registration of trade marks and the Trademark Review and Adjudication Board (TRAB), which deals with trade mark disputes, are both under the control of AIC.

• The advantage of the administrative enforcement route is that it is an easy and a cost efficient way. The disadvantage is that no damages are awarded and that the punishment is often limited to the confiscation of the infringing goods and/or a fine for the infringers. And often the infringers use another company as vehicle to continue their infringements.

• Customs is one of the underestimated routes of enforcement. The Chinese customs authorities are willing and able to cooperate with intellectual property right holders. So instruct them on how to recognise genuine from infringing goods and how to track down infringing cargo.

• A lesser known way for trade mark and design rights holders is to base their case on infringements of the Product Quality Law at the Administration of Quality Supervision Inspection and Quarantine.

Civil enforcement route

• If the complexity of the infringement is high and the scale serious, then going to the People’s courts is the preferred route of enforcement.

• The advantage is that the People’s courts can award damages. Disadvantage is that this route is often time-consuming and costly.

• Legal protectionism can be a problem outside the big cities, such as Beijing, Shanghai and Shenzhen, which makes forum shopping of crucial importance.

• Alot is expected from the criminal enforcement route in China, because of the alleged deterrent effect.

• The advantage is that you can harm infringers by locking them up or punish them with serious fines. However, the disadvantage is that there are relatively high evidentiary thresholds before alleged criminal infringers are prosecuted.

• Quality Brands Protection Committee (QBPC) http://www.qbpc.org.cn/, lobby group of 180 multinational companies that want to improve the protection and enforcement of intellectual property in China.

• Business Action to Stop Counterfeiting and Piracy (BASCP) http://www.iccwbo.org/bascap/id1127/index.html address intellectual property rights issues and petition for greater commitments by local, national and international officials in the enforcement and protection of intellectual property rights.

• Intellectual Property Owners Association http://www.ipo.org//AM/Template.cfm?Section=Home trade association for owners of patents, trademarks, copyrights and trade secrets.

• International Trademark Association http://www.inta.org/ association of more than 5,500 trade mark owners.

• American Chamber of Commerce in China http://www.amcham-china.org.cn/amcham/home/index.php.

• European Union Chamber of Commerce in China http://www.euccc.com.cn.

• British Chamber of Commerce in China http://www.britcham.org/index.php.

• Australian Chamber of Commerce in China http://austcham.org/index.html.

• Intellectual Property Protection in China http://english.ipr.gov.cn/en/index.shtml, official website about the activities of the Chinese government to improve protection and enforcement of intellectual property in China.
  

• IP Dragon http://ipdragon.blogspot.com, weblog by Danny Friedmann. Gathering, commenting on and sharing information about intellectual property to make it more transparent, since 2005.
  

• China Law Blog http://www.chinalawblog.com weblog by Daniel Harris has often interesting articles about IPR in China.
  

• China Hearsay http://www.chinahearsay.com weblog by Stan Abrams, has often interesting posts about IPR in China.

Prevent as much infringement as possible, protect your intellectual property rights assertive, anticipate that infringements will still happen, enforce your rights aggressively. In other words build a fierce reputation that no one can infringe the intellectual property rights of your company without feeling the consequences.

What's astounding to me is that there is less than 100% uptake of the US provisional - the main reason being that it gives an extra 12 months 'grace period' under 35 USC 102(b) [that's before you filed the application] in one of the world's largest markets.

Why wouldn't you file a US provisional?  Let me know what you think I'm missing.

We've started a new scorecard to track the dispute and its implications for harmonisation of European patent law.

Stay tuned - hearings are due in Spain and Austria over the next few months, and in Luxembourg and Belgium towards the end of the year and early in 2009.

As always, please do come and add your comments and any updates you become aware of.

The case is often vitally important to brand owners globally, and will be watched keenly - we're looking forward to adding it to our scorecard on paid keywords.

Unfortunately, the Court is not being asked about the liability of the entity who paid for the sponsored link.  (Which makes sense as this is already held to be an infringement under French law, at least.)

Here is a summary of Frederic's translation of the questions referred:

1) Do providers of sponsored links services  make use of these trade marks which the trade mark owner is entitled to prohibit?

2) In case the trade marks are famous, could their owner prohibit such use?

3) In case such use would not constitute a use that might be prohibited by the trade mark owner, could the sponsored links provider be considered as a hosting service provider, so that its responsibility might not be questionned before it is informed by the trade mark owner of the illicit use of the sign by the advertiser?

Why don't patent specifications quote the patent's expiry date on their front cover? This is one of the most important facts about a patent, yet no patent office publishes this on the document.

Why not?

• If the patent office is concerned about getting it wrong, then there's an even bigger issue at stake;
• If its because the expiry date is simple to work out - then that's probably not so simple. Many North American patents are still under the old 17 years from grant system, and Divisionals / Continuations etc take their term from the date of filing the original parent - which is not always evident from the specification (and nor is the priority date always available on the front page).

The data comes from Judge Paul R. Michel and clearly sends a message to would-be appellants about whether to trouble the courts with what might be said to be appeals with little merit.

The very low success rates reinforce the notion that the US Court of Appeal for the Federal Circuit - the CAFC, is in reality often the court of final appeal in the US. So, you'd better give it your best shot.

Here are the en banc CAFC success rates.

And here are the Supreme Court success rates:

The call will be held at 8pm ET in the US, (11pm GMT) on 30 July 2008. That's 10 am on 31 July in Eastern Australia (9am in Tokyo, 8am in Singapore).

In William's post, he explained how by copying a public domain work which is a derivative work, you may still infringe copyright in the original work (if copyright still exists).  (William also explains some US-specific issues relating to registration of copyright , which are worth a read.)

The point is that each work has its own copyright protection, regardless of who made it, where or when, etc,   So, how to avoid copyright infringement?

Don't copy, get a licence, or work your way through the quagmire to sort out what copyright, if any still exists, and what it extends to.

Some interesting findings:

• Top tier countries were the USA, UK and Germany
• Second tier was: Netherlands, Australia, Canada, New Zealand, Singapore, France
• Lowest tier (tier 5): The BRIC Countries - Brazil, Russia, India, and China.

Sara-Jayne interviewed the following people for the article:

• Jonathan Barney, Managing Director of Ocean Tomo
• Alison Brimelow, President of the European Patent Office
• John Dudas, UNder Secretary of Commerce for Intellectual Property and Director of the USPTO
• Douglas Clark, Managing Partner, Lovells, Shanghai, China
• Carl Horton, Chief IP Counse, General Electric Co
• Tom Ewing, IP Value Added Consultant
• Horacio Gutuerrez, Vice President & Deputy General Counsel, IP & Licensing, Microsoft
• Masanobu Katoh, Corporate VP and President, Law & IP, Fujitsu
• Lisa Kellberg, Corporate VP and Head of Corporate Patents, Novo Nordisk
• Judge Pauline Newman, Judge of the United States Court of Appeals of the Federal Circuit
• Sherry Knowles, Senior VP, Corpoate IP, GlaxoSmithKline
• Chris Mercer, Presidento of the EPI
• Stephen Potter, Director and immediate past chair of the R&D Society (UK)
• Manny Schecter, Associate General Counsel, IP Law IBM
• Peter Spours, Director IP Transactions & Strategy, TomTom
• Marian Underweiser, IP Law Counsel, IP Law Strategy & Policy, IBM
  
• Margareta Ydreskog, Group Patent Manager, Corporate Strategy & Business Development, Saab

Here is a great article on patent quality from Sara-Jayne Adams at IAM-Magazine - Quality is the key to a bright patent future.

Sara-Jayne interviewed the following people for the article:

• Jonathan Barney, Managing Director of Ocean Tomo
• Alison Brimelow, President of the European Patent Office
• John Dudas, UNder Secretary of Commerce for Intellectual Property and Director of the USPTO
• Douglas Clark, Managing Partner, Lovells, Shanghai, China
• Carl Horton, Chief IP Counse, General Electric Co
• Tom Ewing, IP Value Added Consultant
• Horacio Gutuerrez, Vice President & Deputy General Counsel, IP & Licensing, Microsoft
• Masanobu Katoh, Corporate VP and President, Law & IP, Fujitsu
• Lisa Kellberg, Corporate VP and Head of Corporate Patents, Novo Nordisk
• Judge Pauline Newman, Judge of the United States Court of Appeals of the Federal Circuit
• Sherry Knowles, Senior VP, Corpoate IP, GlaxoSmithKline
• Chris Mercer, Presidento of the EPI
• Stephen Potter, Director and immediate past chair of the R&D Society (UK)
• Manny Schecter, Associate General Counsel, IP Law IBM
• Peter Spours, Director IP Transactions & Strategy, TomTom
• Marian Underweiser, IP Law Counsel, IP Law Strategy & Policy, IBM
  
• Margareta Ydreskog, Group Patent Manager, Corporate Strategy & Business Development, Saab

Ok, so firstly, thanks to Securing Innovation and Patent Baristas who mentioned IP Think Tank in their appreciation posts - thanks guys.

Also - thanks so much to those blogs that have recently been linking back here:

Firstly, its quite interesting to watch the evolution of these companies away from innovating, manufacturing, distributing to brand building and licensing.  Here's another nice example of the incredible value of intellectual assets.

Also, so we all know that outsourcing is big, has been big for years.  But design?  So, now the brand owners are even outsourcing their innovation programs.

I suspect that one driver for all of this is the network of cross-licensed technology that is required to operate in this space and the resulting convergence in technology offerings that this has caused. 

It's interesting to hypothesize about the evolutionary pathway for companies along the intellectual asset route.  Interestingly, as Gino's article points out, even the outsourcers are now producing their own (non-competing) branded products...

2 - Thoroughly understand your soon-to-be opponent;

3 - Exhaustively prepare;

4 - Think hard about ways to maximise pressure on the opponent - success comes from concentrating force at the most decisive point;

5 - Prepare the organisation for the ups and downs to come.

The website has been updated to reflect the new entity and in response to feedback from various readers.  Most importantly, there's a new section for the IP Think tank content -  the blog and scorecards (podcasts to come as soon as we can - stay tuned).  Some other useful amendments have been to truncate the text on the front page of the blog to increase readability and categorize the scorecards to make them easier to browse.

Please do come and check out the changes, and as always, let me know what you think.

(Hat tip yet again to the incredible team at StressLimitDesign).

1 - it is extremely important to the target audience;

2 - your organization is uniquely suited to delivering it; and 

3 - competitors are not currently addressing it (nor is it easy for them to address it in the future).

Taking a step back for a minute, these are some pretty fundamental points.  If you are clever enough to actually achieve this, from a business strategy perspective, you're really going to succeed.

From an IP perspective - sure - you had better protect those brands with a registered trade marks and appropriate use, etc.  Also, though even though this derives from a discussion about branding, it's pretty easy to see how you can use intellectual property rights.  So for example, the core elements of this strategy - your unique ability to deliver something of extreme importance to yoru target audience (customers) - should be covered by patents and possibly registered designs, where appropriate.  As always, don't stop there though.  Keep thinking deeply about, developing and improving this core (you will inevitably have to anyway, just to keep up with the market) - and keep filing new, relevant and robust IP rights to cover it.

First up, I'll participate in a panel discussion entitled "Patents vs. patients: examining the effect of patent legislation on the pharmaceutical industry".

In a subsequent session, I will take the audience through what has been happening in India (and other countries) over the patentability of Glivec (Gleevec) crystalline forms and what it might mean for the future.

For those of you interested in the Australian pharmaceutical scene - I hope to see you there.

Often a global brand will have local versions in some countries where the original doesn't quite work (for a whole host of reasons).

Another strategy is to use a derivative of the brand either with the parent brand or instead of it. But how do yoiu choose country-specific, meaningful derivatives?

Well one way is to let the market do it for you. Many times a brand or associated products will be referred to in each country with some alternative, and sometimes colloquial word or phrase.

So, for instance McDonalds is often called 'Macka's' or "Mackers" in Australia - a typical Australian abbreviation. McDonalds has registered both as Australian trade marks, but has not bothered in the USA.

There are only 450 delegate places, and 250 are already taken.

I will be chairing the "IP in the lifesciences" breakout session on day 1. We're putting together some global and strategic issues for discussion, and it will be a lot of fun.

Please do take a look at the programme and the speakers - and I hope to see you there.

"It is rare that a new development in IP strategy has me scratching my head as much as did the recent announcement (see for example http://www.greenbiz.com/news/reviews_third.cfm?NewsID=36540) of the Eco-patent Commons administered by the World Business Council for Sustainable Development. I generally pride myself on having a fairly strong strategic head on my shoulders, but this one has me beat as to the benefit to members, except (maybe) that it might provide a clumsy “green” PR benefit for the patent donors.

The system was explained by an IBM Exec thus:

“Balta explained that businesses may hold patents that do not serve as an essential source of income to them, and that by sharing them with others on a global basis, these patents can help people develop in a more sustainable way.


Additionally, for those companies pledging their patents, this information-sharing might have additional business benefits”

Separately, I have read that it is intended that the patents will be made available to anybody at no charge. That’s the bit I don’t get. Why would a patent owner contribute a patent, continue to sustain the maintenance costs, yet have the patent commonly available to all having undertaken to not enforce the patent? Why not just allow the patent to lapse (telling the world that you’re doing that to free-up availability of the technology for the greater good to bank the PR benefit). The only way I can see this having a benefit for the patent contributor is if the commons operates as a closed club for cross-licensing the patent pool to members, but only members. But everything I read leads me to believe this is not the intention.

What have I missed? Maybe a tax-benefit to the donor? But I would have thought that as soon as the patent is donated to the public, its value is annihilated, and so a zero-value asset is donated!??!"

Here are some of my thoughts on this:

1. IBM are donating 27 patents to the Eco-patent Commons - this is a tiny fraction of their overall portfolio;
2. IBM have repeatedly stated (and I'm sure the other participants agree) that they will only donate patens which don't 'represent material top line or bottom line financial aspects for your business'
3. There are certainly tax benefits which can be gained from donating IP - though the various tax authorities have been much more strigent in recent years on the valuation accorded to the IP.
4. I think the PR angle is a very important part of this.
5. I think the companies genuinely do want to stimulate creativity and innovation and are willing to sacrifice less important patents to this end.
6. The current participants are sufficiently big and specialised, that they are probably assuming that by having open access to new ideas and IP, they can get a reasonable jump on competitors in their inventive activity, simply because of their size.
7. Wholesale donation of patents which you're not really obtaining much commercial benefit from is nice, but it would really signal a sea change if they were to agree to an open innovation model in which no one was able to individually own IP generated from the group's collaboration. That would, I suspect require that the group become 'closed' in some way, but most likely generate much greater creativity.