The Managing IP Corporate
Strategy Summit took place on September 12 in London and
covered a broad range of issues, including AI, the automotive
sector and IP as a cost centre or revenue stream.
Strategies to minimise IP risk
The keynote address, delivered by Neal Rubin, senior
vice-president of operations at RPX, focused on how to minimise
IP risk. One of the first points made by Rubin is that the best
IP lawyers always understand the fact that IP risk is married
to PR risk. When companies embark on litigation, they need to
be mindful of how the case will be reported in the press and
the ramifications of this reporting on the company's
Another consideration Rubin mentioned is that the way
"companies take on risk and resolve risk is based, at least in
part, on accounting principles." He went on to say that when
assessing the financial impact of a patent infringement claim,
a company has to ask whether the expense will come out of the
overall accounting of the treasury or whether it will come out
of the particular department accused of taking the risk. If the
expense is going to be assigned to one particular business
unit, it is important to have conversations with the manager of
the area, who might ask you to explain the situation to their
CEO. Rubin noted that this approach often "drives results".
A particular area of focus in Rubin's address was how
companies can use data to make decisions about IP. By assessing
data from previous years relating to the number of litigations
and costs, in-house lawyers can reach a verdict on whether the
company's risk is manageable and whether they need to seek
insurance or not. Rubin noted that if companies "scrupulously
keep all data, they can build an actuarial model around it." He
also observed that, by analysing data, companies can obtain a
sense of how litigation is likely to play out. He stated that,
while figures concerning litigation were previously more
shrouded in China, there is now available data from the
Managing business risk
The first panel discussion was about the management of
Panel member Mario Bitter, head of IP at Siemens, asserted
that installing risk and control systems can help manage IP
risk. He also noted that in a big organisation it is essential
that everyone in the company knows about the IP department. He
stressed that it is imperative that all IP questions end up
with the correct people and that all the relevant parties are
aware of the rules and procedures that have been set up for
The panellists mostly worked for companies where IP
insurance had not been taken out from external companies,
though a few members of the panel stated that their
organisations had discussions about this topic and reviewed the
issue at intervals. Another point raised during the
conversation was ensuring that when engaging with suppliers,
designers and other parties, it is clear who owns IP.
Prioritising policy and regulation updates
The final panel discussion before the morning coffee break
was about prioritising policy and regulation updates for the
management of your business.
Emma Stopford, trade mark counsel, legal and external
affairs, at British American Tobacco, commented on the
widespread changes affecting branding in the tobacco field.
However, she noted that similar rules could start applying to
other areas, saying: "The health agenda is making its way into
other fields which will have an effect on IP." Some of these
potential areas are sugar and alcohol and she therefore
commented that those concerned about how these changes could
affect IP rights should become involved in lobbying.
Adam Williams, director at the International Policy
Directorate, UK Intellectual Property Office, shared some tips
for practitioners on how to affect the direction and shape of
policy and regulation. One key point he made is that "economic
evidence plays an important role when it comes to policy." He
added that politicians and policy makers take such evidence
Some of the advice he shared included the following:
- Ensure you know your counterparts in
government – in this case, the relevant minister and
- Think about the best people to do the
lobbying. Use senior people when necessary so that they are
taken seriously/can give a strategic view.
He imparted particular advice for SMEs, encouraging them to
use industry associations to help them convey their message and
access industry associations' government relations
What are the likely sources of disruption in the markets
that you operate in?
Dispute resolution, M&A and due diligence
After the break, a panel discussed dispute resolution,
M&A and due diligence.
Mark Hodgin, chief counsel, trade marks at Mondelez
International, mentioned the importance during transactions of
the IP team being aligned with the deal team. In acquisitions,
IP lawyers can play a vital role in a number of different ways.
For example, they need to consider the value drivers. Hodgin
noted the importance of analysing the strength of brands and
their enforceability as well as what activity the company has
been taking to protect assets and the prosecution history of
the brands. This is an effort to assess the value of the brand
before it is acquired. He also observed that in divestitures,
companies need to understand how their IP rights are used
across brands and products to fully manage the sale
Richard Vary from Bird & Bird discussed litigation,
offering some tips. These included:
- When companies sue large organisations for
patent infringement, they have to make sure that their
assertion stands out and will capture the attention of the
- Vary also said: "For every four or five
patents you assert you are going to lose on most of them." In
order to increase success, he suggested being exceptionally
careful on the patents chosen in a patent litigation. He
advised counsel to ask patent agents to conduct prior art
searches. He also recommended checking that all the
formalities for rights have been fulfilled.
- Counsel should limit patents upfront
rather than later on, during proceedings.
- Companies should select the court
carefully according to what they want, for example, to reach
trial before your counterparty if they are likely to sue you
- Choose external counsel wisely and then
trust them to run the case in the best way for their local
court. Do not assume your way of presenting a case will work
in a foreign court.
- Ensure that multiple press releases are
prepared for the possible different outcomes of
Cost centre or revenue stream?
The following session debated whether IP is a cost centre or
Josue Ortiz, director of ClearViewIP, noted that even if IP
is a cost centre, it does not necessarily mean it is a burden
for an organisation because some cost centres are indispensable
and valuable to companies.
Mairi Gibbs, head of operations at Oxford University
Innovation, observed that licensing commercialises a
university's protected intellectual property. She said that IP
transactions are a mechanism to enable university research
outputs to have a greater societal impact and have the capacity
in some cases to generate significant financial returns.
Furthermore, the university is able to use the money from IP
transactions as it wishes. She also noted that IP
commercialisation can enhance the university's reputation and
thus help to attract worldwide talent.
The panellists also talked about formal valuation of IP.
Charles Clark, director of intellectual property at Centrica,
said that valuing IP is very difficult as it changes with
business sectors and with time. However, he has been involved
in the valuation of IP during the course of his career. He
mentioned methods for valuing IP: "If we didn't own the patents
that we do own and they belonged to somebody else, how much is
that going to cost us to license that technology –
that's one way of doing it, but there are so many other ways.
There needs to be a consistent way of valuing intangibles but
at the moment I can't see it." Other panellists were not
convinced that formal IP valuation was effective.
Impact of artificial intelligence on IP strategy
The talk after lunch was about the impact of artificial
intelligence (AI) on IP strategy.
Steve Harris, CTO at Aistemos, talked about how AI can help
in the IP world. He said: "AI is particularly suited to making
very complex but not strategic decisions." As a result, it can
provide answers about, for example, what patents relate to.
Erich Spangenberg CEO of IPwe, said that AI tools can reveal
who owns a patent, regardless of the name of the subsidiary on
the cover of the patent. He stated that prices will fall and
everyone will be using this technology in the next few years.
He added that this will "massively increase productivity" and
informed the audience that the result will be that "people
other than IP experts will begin asking about metrics". He
later observed that AI will lead to transparency as there will
be "so much information sitting on the cover of a patent".
Nigel Swycher, CEO of Aistemos, who was moderating the panel
stressed the importance of transparency. He said it was
essential that the wider world understood this asset class. He
also suggested that members of the audience read a paper
published by WIPO encompassing the views of various national
offices about what AI could do for them.
Aistemos recently published an
IP Strategy Report, which offered insights into factors
that could disrupt IP in a range of industry sectors. Its
survey asked about technologies that will cause disruption,
with a broad range of technologies given. AI (75.8%) leads,
then the Internet of Things (IoT) (44.2%), closely followed by
The report explained: "What is reinforced by the sector
studies is how universally applicable these technologies will
be. Using AI and machine learning as an example, it has a broad
application. For example in fintech, it is being deployed in
the back-office (risk assessment) and on the front line
interacting with customers. Both automotive and A&D are
investing in AI for autonomy on land, air and sea. Other
sectors embracing AI include healthcare (the primary focus for
IBM Watson), retail (recommendation engine) and social media
New ways to exploit your IP assets
The talk before the final coffee break was about new ways to
exploit IP assets.
Gibbs of Oxford University Innovation noted that
establishing new companies is an important strategy for the
university, in situations where perhaps such a method is the
best opportunity to take a technology to many different
marketplaces. She said that such companies operate as licensees
and their financial performance is monitored as licensees.
Kate Reid, design and engineering legal team head at BBC,
talked about the challenges faced by the organisation, such as
the ownership of IP in supplier agreements for digital
IP, IoT and the automotive sector
The penultimate panel discussion covered IP, IoT and the
Matt Hervey, director of Gowling, raised some interesting
points. He observed that it is not only automotive companies
that are players in the automotive field. There are a number of
new entrants, such as tech companies. He also noted that there
is a growing emphasis on copyright in this sphere, which can
protect computer programs and AI. Trade secrets are another way
to shield AI and have already been litigated in the US. He
mentioned the importance of designs and branding in this sector
and talked about IP in the context of commercial realities,
noting that interoperability is a consideration. He used the
example of Tesla, which allowed anyone to use its patents
because it wanted to grow the infrastructure of charging
stations. He referred to the fact that litigation in the
automotive space is expected to rise.
Building the IP department of the future
The day ended with a panel conversation about building the
IP department of the future.
One issue raised by the panel was recruitment. Lucy Wojcik
from Ocado Group observed that recruitment is a challenge.
Calum Smyth, global head of intellectual property at Barclays,
commented that upcoming generations are facing a world where
they may not earn as much as their parents and so it is
possible they feel forced to take a pragmatic view, perhaps
considering remuneration a higher priority than before. If
true, it will be a continuing challenge for in-house IP counsel
to both recruit and retain talent in such an environment.
Wojcik stressed the importance of having an integrated
culture, where IP is not partitioned off from the rest of the