IP SOLUTIONS BLOG

Icelandic ash clouds, British Airways and French general strikes notwithstanding, Thomson Reuters IP Solutions staff, invited speakers and guests gathered together last month at the Hotel Scribe in the Opera district of Paris to conduct the fourth in this year’s series of Global IP Leader Exchanges.  This seminar series provides valuable, strategic insight for professionals in charge of IP operations at their organization through presentations and discussion with industry thought leaders on today’s major IP issues.

The day began with an overview of some market dynamics impacting Intellectual Property including monetization and valuation of IP assets, the demands of increased collaboration through open innovation and the continuing seismic shift in patent filings towards Asia.  This was followed by a presentation of the key findings of a benchmark survey, “The State of Global IP”, conducted last year jointly by Thomson Reuters and IAM Magazine and now published in the July/August 2010 issue of IAM Magazine.

One of the key themes of the day was the level of engagement of executive management in IP strategy development.   Jeroen Gaasbeek, Senior IP Counsel for Shell, described how at Shell the executive committee now has direct involvement with the IP strategies of different businesses of Shell with the Head of IP reporting to the Legal Director who is part of the executive committee.  Maria Thompson, Director of Intellectual Asset Management Process and Tools at Motorola, talked about the IP Policy Creation initiative at Motorola which established management’s commitment to and involvement in IP management statement of policy. This was instrumental in the successful implementation of the IP strategy at Motorola. A workshop in the afternoon considered a case study of a commodities business looking to introduce a new specialty product and how best to engage R&D and business managers in developing the IP strategy to support this development.  Discussion topics included securing engagement of R&D by getting their ideas for how their research planning can contribute to and align with the IP strategy for the new product; and the thought that having an IP strategy in place is meaningless unless you have the right people and the right skill sets in place to deliver on that strategy. As important as the IP audit is a personnel and skills audit to ensure these are aligned.

The final presentation of the day by Jean-Yves Legendre, Licensing & Business Development Manager at L’Oreal, addressed a further key theme – the question of patent quality.  This means different things to different people.  To a company, the quality should be sufficient to deter competitors; to the patent office, applications should be of sufficient quality to allow delivery of granted patents; and to the investor the quality should be sufficient to allow comparison and relative valuation against other companies’ holdings. He then went on to review existing measures for evaluating both individual patents and patent portfolios.

All in all, this was a stimulating and rewarding day for all who participated.  The last two in this series of Global IP Leader Exchanges is scheduled to take place in London (focused on trademark issues) and Tokyo this Fall, so get ready to book your place at this event soon. Further information is available at ip.thomsonreuters.com/ipleader/.

Bob Stembridge, Customer Relations Manager, Thomson Reuters Events, Global IP, IP strategy Events, Global IP, IP strategy

A recent Chronicle of Higher Education posting describes an amusing deception carried out by a researcher in response to receiving numerous “aggressive” unsolicited e-mail messages from an open access publisher which finances its scientific journals by charging authors a publication fee.

Philip M. Davis, a doctoral student in communication at Cornell University, submitted a fake computer-generated research paper from a fake institution. The paper – “a nonsensical five-page report with footnotes and graphical charts” – was accepted after the publisher said it had been peer-reviewed (along with an invoice for $800.)

This made me wonder what happened to the United States Patent and Trademark Office (USPTO) conducted “Peer-to-Patent” experiment. The answer is that, as of June 15, 2009, the pilot is now closed to new applications, but the pipeline of existing applications will continue to be processed until they have all completed the normal peer review cycle (estimated to be mid-October).

The pilot was set-up to determine if peer review can support, in a cost effective manner, timely, accurate decisions about what inventions merit a U.S. patent.  Certainly in terms of participation the pilot can be judged a success.  A recent update recorded that since Peer-to-Patent launched, there have been 370,011 page views from 67,188 absolute unique visitors in 152 countries/territories with 2,501 registered users of the site and nearly 350 prior art uploads by volunteer experts since the project’s launch.  121 applications have completed or are currently participating in the program.  There are currently 27 patent applications available for review.

The decision to discontinue the program was made by the USPTO on the heels of the recent recognition of Peer-to-Patent by the White House Open Government Initiative.  The USPTO has requested a period of time in which to evaluate the program before making a decision on whether and how to proceed further.

We’d be interested here in your views of the program.

Bob Stembridge, Customer Relations Manager, Thomson Reuters Patent Law, Patent Reform, Patents Patents, Peer-to-Patent, USPTO

Joff Wild of IAM Magazine reports in his blog that during IP Business Congress 2009, Ian Harvey, UK Intellectual Property Institute chairman, observed that a recent Chinese government delegation to the UK came in the hope of getting comments from British businesses about proposed amendments to the Chinese Patent Act (due to come into force October 1 2009). The delegation received no feedback, which indicates either a complete lack of awareness or complete disinterest in changes due to hit 3 months from today.

It struck me that despite the availability of much comment about the proposed amendments, I hadn’t seen the actual text of the amendments anywhere. No wonder – it appears to be copyright-protected material and available only on payment of a subscription at the Lawinfochina.com website .

While limiting availability of the text through a single channel may be sufficient to deter casual enquirers, those companies that have business in China and are subject to IP considerations should really act now (if it’s not already too late) to obtain the original text of the proposed amendments and begin to assess and plan for the potential impact on their future business in that country.

Anyone disagree?

Bob Stembridge, Customer Relations Manager, Thomson Reuters Patent Law, Patent Reform, Patents Asia-Pacific, Chinese Patent Law, patent, Patent Reform