New ways of working; budget pressures; and legal precedents: all these trends are likely to change IP strategies in 2021. Indeed, some of them are already doing so.
IP strategies are always evolving, reflecting developments in technology, new business models and changes in society. The COVID-19 pandemic, which is disruptive in many respects, is likely to turbocharge many of these changes.
For example, budget pressures and the need for business certainty may have an impact on patent filing strategy. “We see many companies that want early feedback and clarity from patent offices on patentability so that they can make commercial decisions about pursuing patents,” reveals Kilburn & Strode partner Marco Morbidini, who adds: “Increasingly, investors want the certainty of granted (rather than pending) patents.”
Where this is the case, applicants might focus on certain key jurisdictions to maximise value for money. Alternatively, they might seek to make patent claims more focused and try to refine the text at an early stage rather than waiting for feedback from patent offices.
Following the courts
Strategies are also affected by industry-specific trends. In the high-tech sector, for example, Gwilym Roberts says attention on FRAND licensing is increasingly important when planning patent portfolios: “Many businesses want to build a portfolio around a core of standard-essential patents.” Such approaches are encouraged by court decisions to uphold SEPs, and to impose FRAND licences, as in the Unwired Planet and Conversant cases decided by the UK Supreme Court in 2020.
Other court decisions that continue to reverberate include the UK Supreme Court’s 2017 ruling in Actavis, which set out a doctrine of equivalents. While the patent in that case concerned a pharmaceutical product, Gwilym says it is affecting various sectors: “Actavis is having a big impact on patent coverage, due diligence and clearance; we wait to see just how patentee friendly the new doctrine really is.”
Getting the brand together
Given the uncertainty we are living through, general strategic advice on IP portfolios is more important than ever – and Iain Stewart points out that this is particularly evident in trade mark work: “We are seeing lots of new requests for advisory and strategic work on a global basis.” This may indicate that companies are taking a more holistic and value-based approach to trade mark protection and enforcement.
Managing a brand today means securing trade mark and design protection in many jurisdictions, including for slogans and non-traditional marks where available, and being ready to enforce your rights using civil, administrative and even criminal procedures. Depending on the company and industry, it may also be necessary to resolve domain name disputes and use the tools available on some e-commerce and social media sites (such as eBay’s VeRO) to deal with counterfeits or other unauthorised sales. With all these different balls to juggle, protecting and managing a portfolio of brands is much more complex and multi-faceted than it was even a decade ago.
However, the lack of harmonised rules on many issues increases complexity. For example, says Iain: “There remain different approaches to the treatment of allusive marks” – words or phrases that are not descriptive per se but may come close. Whether they are accepted or refused may depend on the language knowledge of the individual examiner – and it can be a challenge for non-native speakers to grasp nuances of meaning, particularly when language is always evolving. “We have seen several English-language marks accepted in the US and UK but refused in the EU,” Iain reports. “This suggests that the registrability threshold needs to be more consistent.”
Contact Gwilym if you would like to have a word him about his writing, IP or the Welsh country side.
Read article four ►