You are particularly known for your successes in EPO oppositions and appeals. What makes for a winning case before the EPO?
The EPO opposition process is skewed towards a paper-based procedure but culminates with an oral hearing attended by all parties. Although the language of the procedure is that of the patent under challenge, submissions may be made in any EPO language and we frequently see multiple opponents. The constraints imposed at various parts of the process by the substantive law and the increasingly strict EPO procedures can materially affect outcomes. Oppositions and appeals therefore require a range of skills, including meticulous case analysis, strategy, drafting (of submissions and amendments) and oral advocacy. However, the key is to work out the story that will underpin a winning case. This must be framed sensitively during the written procedure, using the best technical evidence available. Only this will ensure that it is compelling when told at the oral proceedings. It is better, where circumstances permit, to have one compelling story and stick to it than to take a shotgun approach. It is pivotal to take the opposition division (or board of appeal) with you on your journey through the story, ensuring that it follows all key signposts along the way. The strategy must establish the true state of the art and convincingly communicate the contribution that the technology makes to the field (or, if you are challenging the patent, why no contribution has been made). The EPO is like any other forum; if it hears a compelling story ending with a good invention, it will need a robust reason to tear up the manuscript.
Which of the cases that you have been involved with have been most memorable – and why?
First was a two-patent case between a US data storage company and a leading Japanese conglomerate. The case was heard in the UK courts and other international courts simultaneously. This case was memorable for the significance of its technology (RAID-based computer storage first implemented at Berkeley University in California in 1987) but equally for the numerous visits to California and Japan in order to build our knowledge of the technical field and perfect our technical arguments. It was an early case in my career and I nostalgically recall technical meetings with R&D engineers all over Japan, as well as burning the midnight oil on expert witness statements with Randy Katz (legendary head of computer science at Berkeley University for more than 20 years). In the end, we succeeded in establishing non-infringement of the first patent and invalidity of the second patent. Whatever else has changed since that case, the one constant seems to be that we are judged by our results.
Second, I would mention a series of related cases before the EPO Opposition Divisions and Boards of Appeal that we have been handling over recent years in the field of medical technology. The inventions are numerous and relate to continuous glucose monitoring. We have defended a number of challenges against leading healthcare providers engaging top-tier European patent firms.
Thanks to our clients’ technology, the multi-billion-dollar industry of diabetes care has witnessed a shift away from inconvenient and painful finger-prick tests for determining blood sugar levels to implanted electrochemical sensors capable of continuously monitoring the amount of glucose in a person’s blood. The technology has been a game changer for diabetes care, allowing for more effective and convenient management of the disease. These important innovations, including smartphone integrations, have enabled doctors to spot physiological trends earlier and alerts to be sent to patients and carers. You have the power to know your glucose number and where it is heading – with no painful calibrations required. Working closely with in-house counsel, we have developed a deep commercial and technical knowledge of the entire product landscape, enabling us to deliver against our clients’ critical commercial objectives.
How do you manage expectations and maintain close working relationships with clients when the stakes are so high?
The answer is close collaboration and a focus on good communication. When stakes are high we must explain our strategy clearly and are relied upon to deliver robust assessments of prospects as early as possible. This enables the C-suite to perform impact assessments and to resource appropriately.
We thoroughly explore underlying commercial imperatives and evaluate the full spectrum of technical positions and evidence available. Good communication and deep integration with clients have the dual benefit of ensuring that our evaluation is based on high-quality information and our approach and strategy are properly communicated and fully transparent. Only proximity to the business and high levels of alignment ensure that client expectations are met or exceeded with the client’s full support and confidence. This involves regular discussions and in-person communication to get a detailed context and explore commercially desired outcomes.
Clients and their representatives must both understand the nuances of the strategy being deployed and be invested in it with complete alignment. There can be no surprises – technical, legal or financial. We move mountains to ensure that client strategies are fully transparent and that our clients are fully abreast of the twists, turns and costs that we expect on the road to success.
What impact do you expect AI to have on the wider IP ecosystem?
Setting aside the inevitable impacts on searching and process automation in the IP industry, we have projects exploring the possibilities of enhancing IP intelligence, situational awareness and risk management. I fully expect future software to be capable of analysing and reporting on the strengths and weaknesses of patent assets, portfolios and the peer group business as a whole with far more detail and insight than is possible today. I am perhaps most fascinated by the impact that AI and its more impressive sibling, quantum computing, will have on innovation strategies in general. These technologies will underpin new heights of machine innovation not possible in the previous era of human innovation. This fact alone means that AI outputs are bound fundamentally to drive future productivity and competition at business, national and regional levels. Access to data and the security of data will increase in strategic importance, with new data licensing models and new data sharing standards. Data exclusivity or exclusive insights derived from data, as well as the tools for achieving this exclusive knowledge, will have an increased strategic value, as Big Data and cloud platforms have had recently. I anticipate that a balance will be struck in IP law that affords protection for innovative tools and processes without necessarily allowing monopolies in the output or products of AI itself.
You play a key role in Seraphim Space Camp – a global accelerator for space tech businesses. What impact do you expect this area to have on the wider tech landscape and how can other companies best prepare?
In 2018 we embarked on a groundbreaking partnership with Seraphim Space Camp, the United Kingdom’s first dedicated accelerator for start-ups in the space tech industry. At the time, Seraphim was the world’s only venture capital fund focused exclusively on space technology investments. Backed by the likes of Dentons, Airbus, Rolls-Royce, Cyient and the UK and European Space Agencies, the programme was intended to commercially accelerate the top 2% of deep tech businesses in the rapidly growing $250 billion space sector. This has an impressive heritage of developing cutting-edge technologies that are deployed later in other sectors.
As such, this initiative has the perfect mix of deep tech IP challenges and critical legal issues, as well as downstream value creation opportunities across a wide range of applications. We have launched a tech concierge legal service in support of these types of business. Under this offering, a business can expect to get a holistic IP legal strategy enabling it to lay the critical foundations required to support long-term leadership among its peers in the sector.
The commercialisation of space and, in particular, low Earth orbit is leading to a data and connectivity tsunami that is about to transform our world. Non-space companies should therefore begin engaging with the sector to assess the opportunities and risks. Sectors including finance, agriculture, energy and natural resources, logistics, telecommunications, government, data and insurance are already being materially affected by the increased resolutions and actionable intelligence from the space sector. Innovative new space companies such as Space X, AST, Iceye and Spire offer a raft of highly disruptive technologies and services that can have an impact on the competitiveness and strategies of terrestrial businesses and infrastructures.
You have a reputation for building IP portfolios of significant value. How should companies or specific business units go about this?
When it comes to building portfolios, specifically patent portfolios, invention quality and situational awareness are paramount. Management and stakeholders should share a vision on what the patent portfolio is intended to achieve for the business. Gaining consensus on this often requires education and strategy sessions with the C-suite to ensure that it understands the potential of patents when used as commercial tools to achieve business objectives and the processes and tools used to develop sector-leading programmes. All stakeholders should agree on what the portfolio is intended to deliver for the business, its partners in the value chain and, ultimately, customers. The specific approach and level of investment should then be set accordingly; these aspects are definable using benchmarks based on experience.
The IP strategy will need to define policies and plans for the procurement (whether internal or external), protection and exploitation of IP rights. It will also need to use IP intelligence to build situational awareness and deploy robust third-party risk management. Strategies delivering secure leading positions in a sector take years, not months, to execute. They require an integrated approach across all types of intellectual property. As the business grows, the risk exposures become higher and the IP processes and decision-making infrastructures in place become more business critical. A strategy like this touches everything from sales and R&D to the legal and contracting functions dealing with IP-related agreements. If the IP procurement function is performing well, every interaction that the business has with third parties has the potential to dilute or improve the IP position. Therefore, IP-related agreements and third-party contracting are vital to building opportunities and leveraging the value chain. The key is to use creative approaches to ensure that intellectual property is an enabler to doing business.
What is the secret source for optimised patent portfolio management?
Taking invention quality and decision making as a given, much can be gained from coordination and efficient international arrangements. This starts with a suitable IP holding structure based on the commercialisation plan. In practice, the cost of owning and operating large patent portfolios depends on many factors, not least the number of inventions and the number of territories pursued. There are various other controllable factors influencing the total cost of running an international patent portfolio with, for example, monitoring and reporting measures, software and IP intelligence, decision-making infrastructure, process flows, choice of international filing pathways and instruction chains, attorney fee agreements and translation costs all contributing to overall portfolio costs. Businesses should focus on the level of individual patent families and should be aware of industry benchmarks to ensure that they are managing towards a best-of-breed approach.
We frequently find coordination lacking and invention families relatively unmanaged across international jurisdictions. Many portfolios are disjointed and do not maintain proper engagement with the businesses that they serve. Good portfolio management addresses all of this and leaves suitable time for monitoring (and mitigating) the risks from competitive portfolios. In high-value, fast-moving sectors, the latter is business critical.
I am enthusiastic about the future of portfolio management. For years, the cost and burden of legal analysis have prevented patent owners and portfolio managers from achieving anything like near real-time understanding of the strengths and weaknesses of their portfolios. They were forced interactions.
Imagine a software tool than can process portfolios and output key patents and portfolio strengths, weaknesses and opportunities. Many important questions have gone unanswered because it was felt that the time or cost of a whole portfolio analysis did not justify the project. With today’s available technologies and information, we are witnessing a leap forward in portfolio intelligence and management capability. These new capabilities and visualisations will deliver much higher levels of portfolio understanding, as well as better integration with commercial teams. Such tools have the potential to drive a step change in return on investment from patents.
Justin Hill is the founding partner of the Dentons European patent team. He graduated with first class honours and obtained a PhD at Imperial College. He received his LLM from Nottingham Law School, United Kingdom. Dr Hill is a European patent attorney and a patent attorney litigator. He is known for generating and managing high-value patent assets. His dual patent prosecution and litigation experience gives him the edge as a strategist operating across 181 offices globally.
Click here to see his IAM 300 2020 profile.