Author Donal O’Connell

File INTIPSA Tips – The role of the CIPO

About me:

My career in IP began with Lovell White Durrant (now Lovells) in 1983.  My practice experience in the UK up to late 1987 was exclusively in Litigation.  Then moved out to Asia to join Baker & McKenzie in Hong Kong and then Singapore where I learnt about international enforcement programmes and local campaigns in the South East Asia region.  Returned to the UK in 1990 and established the Rouse firm in July of that year.

Built up an international enforcement practice based on my Asian know-how, which quickly expanded into Central & Eastern Europe and the Middle East.  My primary focus was on emerging markets with underdeveloped enforcement infrastructure, building expertise in territories others feared to tread.   Industry knowledge Personally assisted major corporations with anti-counterfeiting and infringement issues in the following sectors: clothing & footwear; confectionary & foods; personal care; luxury goods; tobacco and automotive.  Dealt with commercial people at all levels and maintained good relations based on trust and results.    Information and investigation Considerable experience of working with investigators and the practical constraints involved in obtaining and using information.   Public sector relations Dealt with Police, Customs, and Administrative authorities directly, as well and Criminal and Civil courts through local Counsel, in numerous countries.  Undertaken fact-finding missions for the EPO in several CIS countries and contributed to WIPO Conferences and other educational activities for that region and in Asia.  Contributed to the work of the WCO, principally driven by experience of the workings of the EU Counterfeit Goods Regulations throughout Europe.  Assisted in the drafting of the mandate for the UNECE Advisory Group on IP and was a founder member of its Steering Committee.  Participated in a UK Patent Office committee looking at enforcement of patents owned by SMEs.

Private sector organisations Contributed to conferences and seminars organised by the ACG, PTMG and INTA.  Been Vice-Chair and Chairman of the INTA Anti-Counterfeiting Committee and was responsible for the drafting and promotion of the only two INTA resolutions relating to anti-counterfeiting (covering the WCO Model Legislation implementing the border control measures of TRIPs and the WIPO Model Provisions on Counterfeiting and Piracy of 1988).  Drafted the INTA response to the EU Green Paper on Counterfeiting and a composite set of model provisions covering counterfeiting and border control measures for use by INTA in training and lobbying.

I am available for consulting work in relation to international enforcement strategy and programme implementation.

Business email: peter.rouse@gotocaserecord.com
Websites: www.gotocaserecord.com; www.woobiz.co.uk www.hlpintegration.com/hlp3.html
LinkedIn Profile: www.linkedin.com/in/peterrouse

Webinar held on 20 November 2012

In the webinar held on 20^th November 2012, the topic of discussion was a device which has gone from zero users in 2006 to 1 billion users today, ie 1/7 of the total world population are users!  424 million smart phone units are expected to be sold in the 3 months up to 25^th December 2012.  (Recent launches have included: Samsung Galaxy SIII, Nokia Lumia, Apple iPhone 5,  Sony Xperia TL, the LG Optimus G quad-core and the LTE smartphone.)

Who will be the winners and losers in this battle?

With vast numbers of dollars at play, intellectual property has become a weapon in the battle for smart phone supremacy. Just read the headlines in the last few days:-

• 11 Nov: Apple Settles With HTC. But Why?
• 16 Nov: Apple granted 38 patents including a design patent D670,713 for turning the page in an e-reader!
• Apple Seeks To Revive Tossed Motorola Patent License Suit
• Kodak Scores New $793M Deal To Grease Bankruptcy Wheels (patent buyers likely to be Apple, Samsung and Google)
• 20 Nov: Samsung Wins Review Of Apple Win In ITC PatentBattle
• 20 Nov: Intel CEO resigns
• 20 Nov: Nokia lifted by Windows 8 phone demand

But the IP battle is not just restricted to patents as the discussion showed …

The discussion was chaired by INTIPSA board member, John Pryor, and we were very privileged to have three experts on the panel who collectively have several decades of experience in the wireless communications business in R&D, innovation, patenting, operations, M&A and strategic advisory.

• Chairman: John Pryor, Managing Director Europe of ICAP Patent Brokerage
• Donal O’Connell, MD, Chawton Innovation Services and former Head of R&D and Director of IP at Nokia
• Andrew Watson, CEO and co-Founder of IP Value Added. Former M&A lawyer and GC
• Dave Thomas, MD, IP Analytics and a former Senior Manager at Texas Instruments

Use the links below to download the presentations or replay the whole session:

• To listen again, you can access the recording online (Requires registration at Citrix GoToWebinar)
• Download presentation by Andrew Watson (pdf)
• Download poll results (pdf)

About me:

I am an Intellectual Property Specialist law  practitioner in Singapore.  I am qualified as a Barrister-at-Law in England and Wales and also called to the Malaysian Bar.  I founded Alpha & Omega (a specialist IP firm) in 2003.  90% of our clients are Singapore SMEs and I have been trying for about 3 years now to convince my clients to undertake an IP Strategy.  Over the years it has been exciting and encouraging to see Singapore SMEs understanding the value of IP.  10 years ago many did not even understand the importance of IP.  Today , Singapore companies are taking each other to court to enforce and claim ownership of their IP.  In recent times I have seen more clients who understand the need for an IP Strategy and are keen to undertake this.  The usual limitations of lack of resources and knowledge prevents them.  I will most likely be embarking on an IP Strategy for a client this year . Prior to this Ii have conducted more than 40 IP consultancy projects and basic IP audit taking for Singapore SMEs. I am a member of INTA, APAA, ECTA and AIPPI. I am also a certified consultant of our national trade mark registry (Intellectual Property Office of Singapore) and SPRING Singapore (a statutory agency under the Ministry of Trade and Industry responsible for helping Singapore enterprises grow).  I believe strongly in the need for companies to have an IP Stragegy that is aligned to their business strategy to achieve the Corporate Strategy.   I have joined INTIPSA as an associate to belong to a community of like-minded and focused people and to exchange ideas and contribute.

Business email: rxavier@alphaandomega.com.sg Website: www.alphaandomega.com.sg Professional Area of Practice: IP Professional

About me:

My role involves responsibility for strategic intellectual property management across all science portfolios in Plant & Food Research. I manage all aspects of intellectual asset protection (including patents, trade marks, copyright, trade secrets) for a broad range of technologies across numerous jurisdictions. I have over 20 years’ involvement in a broad range of technology transfer activities, and have negotiated licensing and sale of intellectual property across a range of technology areas both in NZ and overseas.

Business email: sue.muggleston@plantandfood.co.nz Website: www.plantandfood.co.nz Professional Area of Practice: IP Professional

Professor 1 starting salary from £55,908 – £63,234 per annum with further progression opportunities to £68,076

BU’s VISION is to CREATE a stimulating, challenging and rewarding University experience in a world class learning community, through sharing a unique fusion of education, research and professional practice and inspiring our students and staff TO ENRICH THE WORLD.

The Business School (which includes the Law Department), under the leadership of Professor Roger Palmer, has a strong vision for the future. Under a new management structure and with a focused recruitment strategy, the School is at an exciting period of development and expansion which you could be part of.

CIPPM has an international reputation for its policy research and a successful track record of research funding. You will bring your own particular field of intellectual property specialism to the centre and engage in original research of international excellence. You will be able to offer academic leadership, working with other CIPPM members, to obtain external research grants. Other duties will include teaching contributions particularly on the externally accredited PG Cert Intellectual Property course and to work with the rest of the School and other academic communities within the University. In addition to excelling in research the role also gives an opportunity to display entrepreneurial leadership to engage with fellow members of CIPPM to identify opportunities and synergies across and beyond the University.

Qualified to Doctoral level, with an excellent publication track record, you will be able to demonstrate strategic academic leadership and expertise in research, education and/ or professional practice. With highly developed interpersonal and communication skills, you will be able to interact effectively with a range of stakeholders including staff at all levels, students and external organisations.

Applications from those holding academic positions are welcome as are applications from those currently involved at a senior level in practice that have the potential and interest to move into an academic role.

For an informal discussion please contact Sally Weston on 01202 961850 or Professor Roger Palmer on 01202 968701.

For more information and job specification click here.

BU’s VISION is to CREATE a stimulating, challenging and rewarding University experience in a world class learning community, through sharing a unique fusion of education, research and professional practice and inspiring our students and staff TO ENRICH THE WORLD.

The Business School (which includes the Law Department), under the leadership of Professor Roger Palmer, has a strong vision for the future. Under a new management structure and with a focused recruitment strategy, the School is at an exciting period of development and expansion which you could be part of.

CIPPM (Centre for Intellectual Property Policy and Management) has an international reputation for its policy research and a successful track record of research funding. You will bring your own particular field of intellectual property specialism to the centre and engage in original research of international excellence, As Associate Professor you will contribute to the leadership of CIPPM, be able to offer academic leadership, working with other CIPPM members, to obtain external research grants. Other duties will include teaching contributions particularly on the externally accredited PG Cert Intellectual Property course and to work with the rest of the School and other academic communities within the University. In addition to excelling in research the role also gives an opportunity to display entrepreneurial leadership to engage with fellow members of CIPPM to identify opportunities and synergies across and beyond the University.

Qualified to Doctoral level, with an excellent publication track record, you will be able to demonstrate strategic academic leadership and expertise in research, education and/ or professional practice. With highly developed interpersonal and communication skills, you will be able to interact effectively with a range of stakeholders including staff at all levels, students and external organisations.

Applications from those holding academic positions are welcome as are applications from those currently involved at a senior level in practice who have the potential and interest to move into an academic role. Ideally you will already be working at Associate Professorial level but applications from outstanding candidates initially at Senior Lecturer level will be considered.

For an informal discussion please contact Sally Weston on 01202 961850 or Professor Roger Palmer on 01202 968701.

For more information and job specification click here

Lecturer starting salary from £31,020 – £35,938 per annum with further progression opportunities to £39,257

BU’s VISION is to CREATE a stimulating, challenging and rewarding University experience in a world class learning community, through sharing a unique fusion of education, research and professional practice and inspiring our students and staff TO ENRICH THE WORLD.

The Business School (which includes the Law Department), under the leadership of Professor Roger Palmer has a strong vision for the future. Under a new management structure and with a focused recruitment strategy, the School is at an exciting period of development and expansion of which you could be part.

The Department of Law is central to this vision, offering a full range of undergraduate and postgraduate courses, it has been ranked in the top third of UK Law Schools (Guardian 2011). Research in the department has an interdisciplinary orientation, reflecting its location in a leading Business School. The department also hosts the Centre for Intellectual Property Policy & Management (www.cippm.org.uk) one of Europe’s foremost, innovation oriented research centres in this area. Other research groups include public law, criminal law and corporate law.

As Senior Lecturer/Lecturer in Law you will deliver high academic standards through a fusion of excellent education informed by a credible research profile and significant levels of professional engagement. You will be qualified to Doctorate level or, alternatively be able to demonstrate the ability to create and disseminate knowledge through evidence of the development of professional practice at a senior level and the capability to convert this knowledge into a doctorate in a maximum of 5 years from the date to appointment.

Candidates are sought who have an outstanding record of, or potential for, excellence in research and teaching who can contribute to teaching in contract law and one or more of the other law foundation subjects.

For an informal discussion please contact Sally Weston on 01202 961850 or Professor Roger Palmer on 01202 968701.

For more information and job specification click here

IP Strategist and Chief Intellectual Property Officer posts are now being established within many global companies.  Advertise your current positions  here for the attention of our fellows and members.

Stanford Technology Law Review has produced an article by Tom Ewing and Robin Feldman about Intellectual Ventures, entitled “The Giants Among Us”. It’s about patent aggregators, of which IV is the prime example, and the risks and benefits they bring.

A synopsis and the full article is available here.

The European Union Chamber of Commerce in China’s new study, “Dulling the Cutting Edge: How Patent-Related Policies and Practices Hamper Innovation”, looks at the current state and quality of China’s patent applications, and how policies such as quantitative targets are hindering the development of genuine innovation.

Full version including Executive Summary

Executive Summary only

Financier Worldwide Guide 2012

The following report recently published by Financier Worldwide contains a range of articles on issues affecting North America, Argentina, Europe, China, Japan, Africa and the Middle East.  The articles discuss Patenting Systems, Valuation, Piracy, Dispute Resolution and Litigation, all important considerations in developing an IP Strategy.

Financier Worldwide have provided INTIPSA with access to download a copy of the report here.

Position: Group General Counsel & Company Secretary
Organisation: Unitised Building group
Location: Melbourne, Australia
Category: Fellow

About me:

Marnie is Group General Counsel & Company Secretary for Unitised Building, an innovative Australian based construction group.  She is also a Consultant to leading Australian IP firm, Watermark Intellectual Asset Management.  She previously held the appointment of Group Corporate Counsel Asia Pacific for Associated British Foods plc and Senior Associate at another leading IP firm.  She has extensive experience in all areas of IP law, IP strategy and business development strategy. She is also a Non-Executive Director of a marine research charity.  She currently holds the elected appointments of Chair of the Intellectual Property/Information Technology Committee and Committee Member of the Commercial Law Executive of the Law Institute of Victoria, the peak professional association for lawyers in Victoria, Australia.

Business email: marniewilliams1@gmail.com
Website: www.unitisedbuilding.com
Linkedin Profile: www.linkedin.com/profile/edit?trk=hb_tab_pro_top

Website:

ClearViewIP is an Intellectual Property consultancy. Using our proven commercial experience, we help our clients develop their IP strategy, establish effective processes and realise value.

Experience

Our background in product development gives us first hand experience of creating, implementing and managing IP. We know the problem of balancing time and resource for doing this vital work alongside the pressure of meeting project deadlines and budgets while reducing risks.

Skills

Our combined IP, engineering and business expertise can help you get the balance right without reducing your focus on running the business. We are an approachable and flexible company, partnering with legal and other services to provide all your IP needs.

Featured services

Investment Due Diligence

Website:

About Us:

Website:

Edwards Wildman lawyers are known internationally for their work in private equity, venture capital, corporate and finance transactions, complex litigation, insurance and reinsurance and intellectual property.

Our clients know us as their trusted legal and business adviser—providing the strategic, collaborative and client-focused counsel that helps protect and advance their business goals.

Creative yet pragmatic, we bring deep industry knowledge and take the time to develop an intimate understanding of our clients’ businesses, to help them effectively navigate risk, regulatory issues and the diverse challenges of a competitive marketplace—in the boardroom or the courtroom.

With more than a century of experience, working with Fortune 500 and FTSE 250 clients and start-up companies alike, throughout a range of industries and across three continents, we are a forceful advocate for our clients’ businesses.

The business of Edwards Wildman…

• The result of a merger between legacy firms Edwards Angell Palmer & Dodge LLP and Wildman, Harrold, Allen & Dixon LLP
• 625 attorneys spanning 14 offices in the US, UK and Asia.

For years, our lawyers have been recognized by:

• Chambers USA, Chambers UK and Chambers Asia-Pacific: excellence in 42 categories
• Honored by BTI Survey of Fortune 1000 Companies as a Law Firm Client Service A-Team, with recognition in six competitive categories:
• Client Focus
• Anticipates the Client’s Needs
• Understands the Client’s Business
• Quality Products
• Regional Reputation
• Helps Advise on Business

• For the fourth consecutive year, received a rating of 100% in the Human Rights Campaign’s annual Corporate Equality Index, which ranks corporations based on their treatment of lesbian, gay, bisexual and transgender employees and consumers
• Named as the fourth most ethnically diverse firm in the UK by the Black Solicitors Network (BSN) in its 2010 annual Diversity League Table (DLT)
• Named a “Go To Law Firm” for Litigation by Corporate Counsel magazine for the past five years
• The Lawyer, the respected UK legal publication: A Top International Law Firm on its list of top 30 (by revenue)
• Dow Jones Private Equity Analyst: Ranked 9th overall based on the number of private equity and venture capital deals closed in 2011, according to its ranking of the “Most Active Law Firms”
• Prequin Global Private Equity Report: one of the top 25 leading law firms in fund formation
• Reactions Magazine, a leading insurance publication: ranked first in the US in the areas of insolvency, corporate contracts and policy drafting
• Global Broker Magazine: ranked one of the top four firms globally for representation of clients in the insurance and reinsurance industries
• Bond Buyer: ranked #1 nationally in the category of “Top Bond Counsel (Competitive)” and #9 in “Top Bond Counsel”
• World Trademark Review, first guide of its kind to rank and provide editorial commentary on trademark experts in more than 50 countries: ranked among the Top 25 firms in its inaugural World Trademark Review 1000

Website: www.hgf.com

From the inception of ideas to the enforcement of Intellectual Property rights, HGF and HGF Law can provide the service and advice you need.

Together, HGF Patent and Trade Mark Attorneys and HGF Law form one of the fastest growing, full-service  intellectual property firms in the UK. From launch with a single attorney in 1995, the firm now boasts more than 60 attorneys and solicitors in a total staff in excess of 100, making HGF one of the top five patent firms in the country. Growth has been secured  organically and through a combination of acquisition and strategic lateral hires, from both private practice and in-house counsel.

The firm’s professional team is distributed through its seven UK offices in Aberdeen, Glasgow, Leeds, London, Manchester, Sheffield and York, serving our national and international client base.

We provide the full range of services expected from a leading patent and trade mark firm, however it is our dynamic approach to oppositions and appeals, strategic portfolio development and acquisition due diligence that distinguishes HGF within the IP market place. The firm’s reputation has grown by providing clients with a combination of exceptional levels of service, commercial acumen and technical understanding.

The firm specialises in protecting and exploiting intellectual property for research institutions, such as universities, and businesses ranging from SMEs to multinationals. HGF also has a significant practice assisting overseas attorneys to protect and exploit their clients’ intellectual property rights in Europe. The firm’s business teams assist clients in the specialist areas of chemistry, electronics and software, engineering, life sciences, IP enforcement and exploitation, nanotechnology, pharmaceuticals and trade marks.

Website:

About Us:

ICAP Patent Brokerage is the global leader in intellectual property brokerage and a division of ICAP, the world’s leading interdealer broker and provider of post trade services. We leverage the talents of experienced intellectual property monetization professionals to match buyers and sellers for the sale of patents and other intellectual property assets. With multiple transaction platforms and unparalleled industry knowledge and experience, no other patent brokerage firm has the proven track record of ICAP Patent Brokerage.

We Know Our Clients We take pride in our client-driven approach. By offering a broad range of brokerage platforms and unparalleled expertise and industry knowledge, we build value for our clients.

Market Guidance – In today’s volatile markets, older models of intellectual property monetization do not work. We specialize in adapting to ever-changing market conditions in order to achieve profitable results for our clients.

Industry Expertise – Intellectual property portfolios are more important than ever. It is not enough to understand patent law alone. Our brokers bring a deep understanding of industry makeup, technology trends, and patterns of buying preferences.

Targeted Marketing & Outreach – Buyers view intellectual property portfolios in drastically different lights. Today’s market requires a substantial level of due diligence, analysis, and development of sophisticated business cases to achieve successful results for clients. Our team works hard to target the right potential buyers and provide them will all necessary information and service needed to close a deal.

Transaction Structuring – We approach each engagement as a new and unique opportunity to exceed the expectations of our clients. No two transactions are identical so we provide our clients with strategic options that weigh the benefits and disadvantages of each at every stage of the sales cycle.

We Know the Industry Our veteran brokers have decades of experience in intellectual property revenue generation on behalf of large corporations, small businesses, universities, federal laboratories, and individual inventors. We leverage our unmatched knowledge and client-driven approach to successfully transact patents and other intellectual property assets.