Best Practices in IP Conference 2017

IPR

I had the pleasure of attending the fifth Annual Best Practices in Intellectual Property 2017 conference organized by Kim Lindy of Intellectual Property Forum on behalf of the In House IP Managers and Counsel Forum earlier this week. The Conference is always held in the same venue, but it appeared as though some additional tables were crammed in. Certainly the event is holding its numbers.

Most of the practitioners were in-house counsel, but there was also a sprinkling of sole-practitioners and some senior patent attorneys from larger Israel firms. The majority of the foreign attendees were there as speakers, and these included in-house counsel of some of the largest companies such as Google, Microsoft, Intel and Royal Phillips. But also IP service providers from various US firms such as Mintz Levin, Greenberg Traurig, Dentons, Smith Gabriel and Russel, Finnegan, Greenblum & Bernstein and the like. Micaela Modliano represented European practice with the casual and competent style that only the Italians seem to be able to portray.

There were a number of foreign practitioners that came for the conference, despite not being on any panels. They flew in to learn and to mingle. Amongst these I noted Michael Jaegar and Adrian Tombling from Withers & Rodgers, a firm with offices in London and Munich. Michael has attended this conference in the past and new what to expect. His coming back from the UK specially for the conference is indicative of the general quality of the event.

As always, the food in the Tel Aviv Sheraton is excellent. Due to traffic, I arrived as they were clearing away the breakfast of cheeses, croissants, rolls, vegetables, etc. There was a barrister barista making very good fresh coffee.

After the welcoming remarks by Kim, Daniella Azmony of Syqe Medical and Yoav Alkali of Amdocs all of which I missed, Brain Brian Hinneman from Royal Phillips gave the keynote lecture on Forming and Executing an IP Attorney Strategy.

I note at this stage that I have been working very long hours ovewide awaker the past month, including Fridays and Saturday nights and have been managing on very little sleep. From the photo alongside, generously provided by the organizers, you can see that I had trouble staying awake. Most of the audience were not plagued with this problem, so I don’t think it was a reflection on the speakers. The note pads provided by the Sheraton had a dot matrix printer matrix of dots printed thereon, and I did notice that some participants were playing dots and boxes to pass the time.

first beakThis introductory talk was followed by a first break, where I breakfasted on exotic fresh fruits, fruit shakes and cheese cake and had more coffee.

This was followed by what was billed as the BIG DEBATE. This was entertainingly chaired by Barry Schindler of Greenberg Traurig, and consisted of a panel that included senior in-house IP counsel from Google, Intel, Microsoft and Philips, a licensing executive of a company called LOT Network that seemed to offer licenses to IP portfolios to enable those threatened by trolls NPEs to fight back, the CEO of xNx Partners (a troll), a shareholder of Mintz Levin, and a former chief IP Counsel of Cargill.

voting.jpgBarry Schindler posed a range of questions to different panelists, and these related to the pros and cons of trade-secrets vs. patents, trolls vs. practicing entities, whether to develop or purchase IP, dangers of open source, whether or not to patent.

The organizers clearly put effort into trying to be different, and the participants on the panel and the audience members each received score cards and thumbs up and thumbs down signs. Rather than feeding the speakers to the lions, this device was only used to obtain some feedback from the audience, but it was a well received attempt to involve everyone.

I heard a lot of positive feedback from various members of the audience, so can see that this was successful. On a personal note, I did not like the format, finding the presentation too general and shallow. I told Barry that I would have prepared discussion around specific case-studies and he fairly pointed out that the in-house counsel would not discuss real cases. Nevertheless, I had a problem in that I am not for against patents vs. trade secrets, early or later filing, or filing in one or two jurisdictions or more widely. I try to tailor my advice to the different clients, taking into account their technology, their invention and whether it is retro-engineerable, whether infringers can be identified and a patent would be enforceable, budget, the stage in a product and a company’s life-cycle, etc. In other words, I find discussion of such issues in the abstract, somewhat of a pointless exercise, and try not to be influenced by ‘trends’.

Regardless of how well an NDA is constructed and how well local partners and employees understand their contracts, once a secret is out, it is in the public domain. At best one can sue for damages but recuperation cannot be more than the employee’s net worth. It is not all that clear how the Israel courts will consider contractual obligations created by an unequal employer-worker relationship with basic rights protected by quazi-constitutional basic laws.

Lunch was delicious, with salads followed by salmon / succulent chicken breast and beef, with vegetables, rice, potatoes, and a generous desert bar that I researched in-depth in order to blog it effectively. Participants could register for specific tables with discussions on various issues or simply network on unspecified, general tables.

The afternoon was split into three parallel tracks, focussed on:

  • Global IP Strategies
  • Prosecution Analysis by Country
  • IP Enforcement

Each track consisted of three different sessions. With ecology in mind, and no-doubt so that the organizers could get their money’s worth from invited guests and sponsors could get their money’s worth, many speakers moved from one group to another.

macaroonsThe afternoon coffee break was accompanied by miniature coconut and almond/peanut macaroons which initiated a lively debate about whether, like matzoh (unleavened bread) one should avoid eating these in the 30 day period from Purim to Pesach, or only from the new moon onwards, which was this evening and so started after the session closed.

By the orange squash and cold tea dispensers and the hot water urn for herbal teas and mud coffee, there was a samovar of a foul coffee that was reminiscent of the stuff they serve at IP conferences in the US. Bad move.

Unlike conferences abroad, this one was, of course, Kosher. With local participants not requiring hotels or flights, this was extraordinary value.

What was missing?

If I was organizing this event, I would have taken the opportunity to invite the incoming Israel Commissioner of Patents to explain his vision. I think I would have played off local litigators such as Adi Levit vs. Richard Luthi or Elad Whatstein in a mock Unipharm vs. Drug Developer opposition or cancellation proceeding, since I don’t think Israel based technology developing companies can afford to ignore locally registered IP. It is all very well discussing trade secrets in the abstract, but local companies collaborate with local service providers and universities. Employees leave and set up competing entities. Having in-house counsel of large multinationals discussing trade-secrets vs. patents from a US perspective is all very well, but local firms will have to handle trade-secret breaches in the local courts, and indeed local trade-secret breaches relating to IP of multinationals will have to be handled locally.  Litigation in Israel is not cheap but it is much less expensive than in the US or Europe and may be the best forum for some issues.

Sonia Cooper of Microsoft is UK-based and has a UK accent. In the big debate she did relate to Brexit and the proposed Unified Patent Court. These are new topics that I think should have been handled in-depth. Michael Jaegar is one of the brightest people I know in a profession full of intelligent people. Despite the accent from Ilkey moor bar t’at, he is also an accomplished lecturer. It might have been wise to take advantage of his presence and looked into these topical issues.

I am personally interested in, and would like to present some case-studies on creating patent portfolios, strategies, thickets, and so on. However, I am sure that other practitioners, whether in-house or outside counsel, have insights into this aspect of the profession.

I asked one of the attendees (who is an in-house IP manager who sends me his Israel IP issues) what he thought of the event, and he made the valid point that very few in-house counsel in Israel represent companies with IP portfolios the size of Google, Intel, Microsoft or Philips. Presentations by IP managers who were building up strategic portfolios for successful small and medium-sized tech companies or advanced start-ups would be more useful, since the budget, considerations and just about everything else are different when the IP portfolio consists of hundreds or thousands of families.

Neverthless, the conference is, first and foremost, an annual jamboree for in-house practitioners to network at their companies’ expense and without taking a vacation day. As a committee they develop the program and select presenters. I am also fairly sure that the In-House Forum cover other topics during the year, so my suggestions may be superfluous.

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