Managing Intellectual Property held
its 4th annual International
Women’s Leadership Forum at the Waldorf in
London this Tuesday. Many in-house and private practice IP
professionals were in attendance ready to discuss hot-topics in
IP and give practical advice on managing portfolios.
After a quick coffee and croissant the morning kicked off
with a subject never too far from mind: Brexit. Lara Elder,
senior associate at Carpmaels & Ransford, led the Brexit
clinic giving an insight into the present situation and the
impact that leaving the EU may have on trade mark rights. A
"wait-and-see" approach was the advice the panel settled on.
They recommended preparing a strategy to protect key marks, but
conceded that it would be a resource burden to re-register
marks preemptively. On a more positive note, Elder pointed out
that the uncertainty is forcing brand owners to audit
portfolios and look at what really matters.
Social media, brands and infringing fans
Following the Brexit talk, Helen Saunders, chief operating
officer at INCOPRO, led a lively panel on social media and
online infringement. She began by examining the history and
development of social media across the world.
Catrin Turner (left), head of
global IP at Dr Martens, then took the podium to review the
practicalities of enforcing IP rights in a global e-commerce
sphere. She cautioned that hurting fans hurts the brand and so
infringement in this context should be handled more personally
instead of jumping to injunctions. She illustrated this point
with an example of a resolution struck with a fan site through
direct communication. She added that different jurisdictions
provide different copyright protections and so it does a brand
"no favours to take an inflexible approach".
After a coffee and networking break, the afternoon continued
with a focus on protecting and defending IP rights. Shaoni
Mitchel, senior counsel at Edwards, led a discussion on
protecting trade secrets. Sarah Wright, partner at CMS,
described trade secrets as an area that often gets forgotten
and advocated training as a way to remind people of the
importance of retaining confidential information and reducing
Petra Simoncic agreed but added that external risks were
more pertinent to her business at austriamicrosystems AG (AMS).
This began a discussion with the audience as to when it is
better to file a patent and make the information public and
when it is best to keep the information internal but
The DSM – a utopian vision?
Lorna Brazell, partner at Osborne Clarke, led a talk on the
Digital Single Market (DSM) and critiqued the "utopian vision"
on which it is being based. She argued that the DSM is trying
to coordinate opposing member state views of
author’s rights under copyright law and added that
the reworking of copyright under the DSM has not progressed
very far because it is "bogged down" in technicalities.
However she did examine one part of
the DSM that has passed, the portability of content regulation.
It comes into effect in April 2018 and will allow access to
online copyrighted content that a resident would have access to
in their member state while they are temporally in another
member state. She was sceptical about how it will be known if
someone is a resident in a particular member state and when
they are only "temporarily" in another member state. The panel
agreed that there was still much work to be done on the DSM and
that it may not be as cohesive the EU initially envisaged.
Career development and work-life balance
To end the day, the panel and audience participated in a
discussion on work-life balance and career management.
The panel discussed different attitudes they have experience
towards part-time workers. Sofia Arenal, partner at Mewburn
Ellis, said: "I think it is really important to decide your
balance and limits ... You have to be realistic.
Don’t be afraid to ask for and use flexibility in
the way you work." She went on to add that, although she had
worked part-time for many years, she never felt this stunted
her career progression.
Ruth Stone, general counsel at SCB, agreed with this and
added that it’s important to not let "self-care"
drop off the bottom of priorities.
The panel went on to discuss developing careers and focused
on "pivoting to happiness". To develop in business you must be
willing to move around if you are not happy and "repackage your
skills", advised Veena Marr, global head of IP at eBay.
Our next event, Managing IP’s International
Patent Forum, will be taking place on March 7-8 at the Waldorf
Hilton Hotel in London. If you would like to attend, please
visit our events page for more
To stay up to date, follow us on Twitter @ManagingIP. You can
also find more information about the network at #ipwomen
and our Women in IP website.
The Forum is a development opportunity for the next
generation of women leaders with the aim of providing an
inclusive debate around building the talent pipeline as well as
discussing the latest developments in IP. If you missed this
year's event, view the key takeaways below.
For more information on the MIP Women in IP Global
Network, email email@example.com.
Brexit and the short-to-medium implications on your
panel discussed the potential transfer of EUTM to
Panellists speculated that businesses should adopt a "wait and
see" approach unless it is a key mark as there could be some
"auto-transfer" or "opt-in" system put in place.
They recommended doing an audit to see how affected the
business will be in any eventuality as presently it is hard to
Social media, brands and trade mark
question the panel discussed was whether social media platforms
could or should be liable for user infringement.
Recent cases around this issue came up including
Ziggo, L’Oréal v eBay and
Rachek Alexander (partner at Wiggin) propositioned that the
"safe harbour" defence could breed hosting sites that are
inactive in infringement prevention through fear of losing
their "safe harbour".
Catrin Turner (head of global IP at Dr Martens) gave a talk on
infringement strategy and advised that businesses should be
flexible in the e-commerce sphere.
recommended use of the take-down methods provided by sites and
direct contact with infringing fans as a way to resolve issues
without hurting the brands reputation.
also suggested that businesses should pick and choose where to
take action based on the copyright protection provided in that
Strategically managing your trade mark and design
This panel spoke about changes to the EUTM regulations.
Since October 2017 "graphical representation" is no longer a
requirement and five new types of trade mark have been added as
Elizabeth May (lead IP counsel at Richemont International)
provided some key points for protecting brands, which included
using the double filing strategy to cover trade mark and
copyright protections if a business budget permits.
also recommended building up a bank of evidence to prove use of
designs and trade marks.
Industry 4.0 and the digital revolution of
panel discussed what IP rights can safeguard big data.
Emily O’Neil (IP and litigation counsel at
Spectris) advised that, although copyright cannot be used to
protect individual data, it can be used to protect a larger
base of data, thus companies should go through the individual
factors needed for protection and establish whether it is
likely to warrant protection.
Cordula Schumacher (partner at Arnold Ruess) then spoke about
IP litigation and FRAND licencing post Huawei v
examined the case studies that have followed and suggested that
there are still open questions that will be considered as more
industries create a standard-essential patents (SEPs).
Protecting your software patents in EU and US
panel discussed Alice and other cases surrounding
Panellists went on to examine the 2018 case of Finjan v
Blue Coat where the software constituted an "improvement
in computer functionality" that provides more than a "mere
result" differentiating it from the abstract idea of virus
screening and making it patentable.
They then reviewed the 2018 case of Core Wireless
Licensing where again the software was particular and
improved efficiency enough to be more than an abstract
panel also discussed the European view of software patents.
Hellen Wallis (partner at CMS) reiterated that due to the
"inventive step", as clarified in Comvik, software
must solve a problem and so the technical benefits and effects
need to be described clearly for software to be patentable.
Identifying, protecting and defending your trade
panel strongly advocated companies providing training on trade
secrets as these are often a big asset.
Petra Simoncic (IP manager at AMS) added that external risks
were an issue and businesses should have a plan in place for if
a secret is about to or does get out.
audience also participated in a discussion about when it is
better to keep a trade secret internal and unpatented and when
it’s best to file a patent and make it public.
Copyright protection and Digital Single
Lora Brazell (partner at Osborne Clarke) critiqued the Digital
Single Market (DSM) and commented that it has not yet
progressed very far.
evaluated one part of the DSM that has passed, the portability
of content regulation.
panel commented that the regulation is not necessarily
well-defined enough to police as it does not define when
someone is only "temporarily" in another member state.
They agreed that the DSM still has a long way to go and may not
be the "utopian vision" the EU had hoped for.
Leadership through the keyhole
end the day, Emma Graham (partner at Mewburn Ellis) led a
discussion on career development and attitudes towards
audience and panel spoke about management attitudes towards
part-time workers and working overtime and how this impacts
career development Veena Marr (global head of IP at eBay)
suggested that if you are unhappy in a job then
it’s time to move on and progress your career. She
remarked that you have to "repackage your skills" and "pivot to
For more information on the MIP Women in IP Global
Network, email firstname.lastname@example.org.