Meet the new faces in the IP Hall of Fame

The IP Hall of Fame honours the achievements of those people – living and deceased – who have made outstanding and long-lasting contributions to the IP landscape and thereby to society more broadly.

Every year since 2006 IAM has undertaken an extensive research project to identify the individuals most deserving of induction into the guild. Nominations are initially sought from the IP community as a whole. The nominees are then sent to the IP Hall of Fame Academy, which comprises past inductees and other eminent IP figures, who then have the final vote on who should make the cut.

This year, the academy selected five distinguished nominees for induction: Arturo Alessandri Besa, Professor Graeme Dinwoodie, Lord David Kitchin, Louis Pirkey and Teresa Stanek Rea. Reflecting a broad range of IP achievements, this group includes the United Kingdom’s first-ever IP-specialist Supreme Court judge, a former US under secretary of commerce for intellectual property, a world-leading legal scholar, a former Chilean presidential candidate and one of the United States’ most highly respected trademark litigators.

Unfortunately, the covid-19 crisis means that we have been unable to hold our usual in-person induction ceremony for the class of 2020. However, we did catch up with all five inductees to hear about their careers, what they consider the most pressing issues facing the IP community and what advice they would offer to young professionals.

Arturo Alessandri Besa

You are one of five inductees to the IP Hall of Fame this year. How does it feel to be recognised by your peers in this way?

It is very rewarding and a great honour to have been selected as an inductee to the IP Hall of Fame after a lifetime devoted to IP law. Due to our international portfolio of clients I have had a lot of exposure to foreign IP practitioners at international conferences and IP associations, where I have met many lawyers that know about me and my work.

After practising in IP matters for more than six decades, I feel privileged and humbled to have been selected by my peers as a sort of lifetime achievement for my modest contributions to the field of IP law.

What inspired you to pursue a career in intellectual property?

I started my career in IP law around 1945, even before I graduated from law school and obtained my title and licence to practise law in 1949. I used to work with my father at the Alessandri law firm founded in 1893 by my grandfather, Arturo Alessandri Palma; since he did not speak English, he asked me to answer letters sent to him in English, most of which referred to trademark and patent filing instructions. So I personally initiated the appropriate steps for filing applications and oppositions, among other things. This personal exposure to the administrative proceedings proved to be of paramount importance and formed the basis of the systems that I later developed to keep clients informed of the relevant steps in IP proceedings. In those early days I never imagined the importance of intellectual property today, nor the technological revolution that would develop as innovators have become increasingly anxious to protect their inventions and innovations via patents, utility models and industrial designs, among other things.

Given that your IP career has spanned several decades, what have been your proudest achievements in IP law?

My biggest achievement is the firm’s robust track record: from being the sole IP practitioner in the firm in the old days, I became the leader of one of the largest Chilean IP firms with a great professional team. Our good name and reputation is reflected in our large portfolio of international clients developed over time, among which we number some of the largest and best-known multinationals. We are known for vigorously defending our clients with a passion. I remember representing a famous Swiss chocolate company against a local company that was trying to mislead consumers with a similar name, label and design – we went all the way up to the Supreme Court, where we finally won the case.

I actively participated in what was then the US Trademark Association (which later became INTA) and collaborated with the greatest IP leaders in Latin America to give life to ASIPI. In addition to my professional achievements, I have dedicated many years to public service as a member of the Chilean Congress, first as a member of the Chamber of Deputies (1973) and later as a senator (1990 to 1998). I am proud of having participated in the discussion and enactment of the new Industrial Property Law, which came into effect in 1991 and included the patentability of chemical and pharmaceutical products. I also drafted a bill for the protection of plant varieties that became Law 19,342 simultaneously with the approval of the international treaty sponsored by WIPO, the International Convention for the Protection of New Varieties of Plants I.

You have had a distinguished political career. What were some of the highlights and challenges of a life in politics?

My first political venture was short: I was elected a member of the House of Representatives, representing the then province of Antofagasta in northern Chile, home of the country’s largest copper mines, in March of 1973, but only lasted until September 1973, when the Chilean Congress was closed by the new military government. In 1989, when elections were called back, I ran and was elected senator for eight years representing the Antofagasta region. The period of 1990 to 1998, during which the military regime transitioned to a democratic government, was a fertile one in terms of political agreements and involved the passing of several reforms and the welcoming of foreign investments, all of which resulted in high economic growth and stability. But the highlight and major challenge in my political life was running for president of Chile in 1993. The centre-right coalition offered me the candidacy, albeit with a slim chance of winning. Among other reasons, I was independent and the political parties wanted to strengthen the coalition and take advantage of my family name since my grandfather had served as president twice from 1920 to 1925 and from 1932 to 1938, and my uncle, Jorge Alessandri Rodriguez, had served as president from 1958 to 1964. The campaign was short but intense, with much help from my family and a small group of friends and – as predicted – Senator Eduardo Frei, a good friend to this day, was elected as the new president. The effort was worthwhile, though, and I thoroughly enjoyed the campaign.

What is your advice to young or aspiring IP professionals?

It is important to have a good command of languages, especially English, and to organise your work in a tidy and proper way. IP work entails knowledge and strategy, but also processes and proceedings, so clients expect plenty of feedback and prompt responses. Ideally, try to get to know your clients better through personal contacts and, if possible, attend international and regional conferences. Be prepared to study and constantly keep up to date in this ever-changing world. But above all, be and act ethically; be transparent and let your clients know as soon as possible if you have or believe you have a conflict of interest and let them decide what to do. An ethical approach to your IP practice pays off over time and helps build your prestige based on trust, which is of the essence in a client-attorney relationship. That is my main advice to young practitioners and what I have taught our associates and new partners during my lifetime at the firm. So I am very proud to see how the organisation has grown, based on the same values and principles, that now inspire the fifth generation of attorneys in the leadership of Alessandri Attorneys at Law.

Who are your IP heroes and why?

Alberto Elzaburu, Allan Pilson, Ernesto Barreda, Ron Lehrman, Dan Bereskin and Peter Siemsen are my IP heroes. All of them were and are superb human beings and professionals of excellence. They were and are outstanding IP lawyers, highly respected in their own jurisdictions and internationally. I have had the privilege of being their friend and I have learned a lot from their respective IP practices and wisdom.

Professor Graeme Dinwoodie

How does it feel to be honoured in this way?

It is humbling, but also tremendously gratifying to join such an eminent group in the IP Hall of Fame. Many of the prior inductees are people whose work has informed and inspired my research. One of the most wonderful things about our field is that, in my experience, the top people have always been accessible and welcoming to newcomers. Some of these folks were so supportive when I was starting out as an IP lawyer and an IP academic and have become great friends over the years. I hope that feature of the IP community never changes, even as intellectual property becomes a more contested part of our economy and society generally.

What inspired you to pursue a career in intellectual property, and why did you choose to focus on the academic side of law?

During my honours studies in private law at Glasgow University, the professor lecturing each term would announce the subject of the lectures on the first day of term – you didn’t have a choice in those days. In 1986 Professor David Walker announced that we would be studying copyright law. I had no clue what copyright law was about, but within three weeks we had been alerted to the House of Lords case British Leyland v Armstrong and I was hooked by that case and the (slightly odd) basis for the decision. I was fascinated both by the abstraction of the legal principles and by the colourful nature of so many IP cases.

I always had an interest in the academic side of the law, but it really became more intense during my studies at Harvard and Columbia. Classroom discussions in the United States tend to be more interactive, more critical and more policy-oriented than one finds in the United Kingdom, and all of that excited me. Unlike some academics, I actually enjoyed practice and I am sure it helped my understanding of the law. But clients understandably don’t want to pay for lawyers researching fascinating niceties unless they are of help to them, so an academic career was always going to allow me to think more deeply about issues that mattered to me than a career in practice could.

What has been your proudest achievement in your career?

There are a number of distinct pieces of scholarship of which I am proud, particularly when they have taken on conventional wisdom. But scholarship tends to have an impact on the world quite slowly, as courts or other scholars find your work illuminating or useful or persuasive over time. The most immediate satisfaction I get from my work is from teaching, as you see students developing an understanding or passion for intellectual property on the spot.

I am also pleased with the contribution made by the casebooks that I have developed. Many academics would not regard casebooks as scholarship (they combine some of our teaching duties with our scholarly ones). But the trademarks book that I wrote with Mark Janis offered a more conceptual approach to teaching and thinking about the subject, and that conceptual structure has – I think – not only shaped the way that many students have learned the subject but also how many other academics have approached teaching it (and have put together their own materials). Likewise, the International IP book that I co-authored 20 years ago was one of the first published efforts in the United States to organise international intellectual property as a teachable field and I think that organisation stands up well today.

You have won a number of teaching awards during your career. What do you think makes a good university law teacher?

First, most good teachers give a lot of thought to the particularities of the student audience – their prior knowledge, their background, what they are likely to want out of the course and the like. Teaching undergraduate students requires a different approach (even to the same or similar subject matter) to teaching graduate students. Teaching to a class of mixed levels or aptitudes is more challenging still. Second, the class has to be awake to learn! I like to think that I am a lively teacher (maybe too lively for those who prefer slower speakers).

What are the most important legal or academic questions relating to trademarks today and how do you expect trademark practice to change in the years to come?

As trademark protection becomes more expansive and trademarks are used by third parties for more diverse purposes, I think we are going to see even greater attention paid to exceptions and limitations. This is already happening – on both sides of the Atlantic. In the United States, the number of cases applying defensive doctrines has mushroomed in recent years and there are clear efforts in ongoing litigation and in academic scholarship to bring those various doctrines together as a coherent set of defences. There is a lot of room to do that in the United States because trademark law is heavily dependent on judicial decisions. Although there is less room in the European Union for this type of judicial innovation, the 2015 reforms contained some seeds (mostly, but not entirely, in recitals) that I expect to flower in the next few years. And this is important, because we need greater certainty around the legitimate third-party uses of marks given the range of uses of these that we see now.

Who are your IP heroes and why?

As an academic hero, Professor Jerry Reichman of Duke Law School. When I was conducting my doctoral research on design protection, I came across Jerry’s classic writings on international and comparative design law. I was probably already inclined to view IP law through an international and comparative lens, but Jerry’s work was so brilliant that it convinced me that this was the scholarly model to follow. His work combined rigorous attention to detail with critical insights about the bigger picture, and he was always sensitive to juridical and cultural differences in making comparative assessments.

Beyond the Ivory Tower, I would say Hugh Laddie. I first met Hugh at the Fordham conferences in the 1990s. He was of course hugely personable and engaging. But I was immediately struck by how he was able to straddle the practical and the academic worlds so effortlessly in our discussions, and thus it was perfectly fitting that he ultimately decided to become an academic. He expressed innovative and sometimes difficult legal arguments in direct, straightforward language. Reading his judgments always brought some new understanding about IP law.

Lord David Kitchin

You are one of five inductees to the IP Hall of Fame this year. How does it feel to be recognised by your peers in this way?

I feel very honoured. I know a number of your previous inductees very well and I have great respect for them. Each has made a great contribution to IP law and practice.

What inspired you to pursue a career in IP law?

I have always been fascinated by science and technology of all kinds. I went to Cambridge to study natural sciences, which I very much enjoyed. But I have wider interests too and I was allowed to switch to law in my third year. I was also very attracted by the Bar.

In the course of my studies I came to hear about the Patent Bar, as it was called then. It seemed a very interesting area in which to work and so I came down to London to look at various sets of Chambers. I was put in touch with Robin Jacob at what was then Francis Taylor Building and is now 8 New Square in Lincoln’s Inn. I went to see him and it didn’t take me long to realise that this was a set of Chambers which had a terrific working atmosphere and was very busy.

After my pupillage I was invited to join them. I was very fortunate. Robin Jacob was the treasury junior at the time and he had many interesting cases. He is also an inspirational character and a great teacher. He has been a close friend ever since.

What is the most important patent case that you have judged and why?

I have had the privilege of judging a large number of cases in the IP field, but it is not easy to pick the most important. Certainly, one important patent case that I had to decide in the Court of Appeal was Unwired Planet v Huawei. A major issue was whether a global licence between the owner of an SEP and a potential licensee could be FRAND. We decided that it could be. One of the matters that we found particularly persuasive was that it would be wholly impracticable for an SEP owner to bring proceedings in every jurisdiction where the invention is being used. This decision is the subject of an appeal to the Supreme Court and judgment is awaited.

Another interesting Court of Appeal case in the wider IP field was Cartier v BskyB. We decided that the court had jurisdiction to make an injunction requiring internet service providers (ISPs) to block access to certain websites selling counterfeit goods. I know this is a very topical subject. One of the striking features of the case was that the ISPs were not wrongdoers but, in our view, they were inevitable and essential actors in the infringing activities of the website owners. In those circumstances, the court had jurisdiction to grant an injunction against them.

These are also good examples of the developing role of IP law and its flexibility in dealing with new technologies.

In 2018 you became the first specialist IP judge appointed to the UK Supreme Court. What has been your experience so far, and how does it compare to your previous roles?

I have found Supreme Court cases to be consistently interesting, challenging and extremely varied. In the Supreme Court, we only hear appeals on a point of law of general public importance. We may express our conclusions in rather definite terms in our judgments, but that does not mean that we have found the appeals easy to decide. There are only 12 justices and we sit in panels of five or sometimes more if the nature of the appeal demands it. So the atmosphere of the court is very different from that of the Court of Appeal.

As for deliberation, there are differences here too. In the Court of Appeal, the lead judgments are often allocated in advance. In the Supreme Court, there is no pre-allocation, which means that everyone grapples with every appeal in the same way. As individual justices, we have little or no knowledge before the appeal starts as to who will write the lead judgment.

I am also very conscious that the Supreme Court is the end of the road for litigants, so all appeals receive a great deal of scrutiny, both in terms of the hearings and of our judgments. I should say that the same applies to a considerable extent in the Court of Appeal, because for many litigants that is the final stage of the proceedings.

What are the biggest challenges facing the UK legal system at present?

Covid-19 is one of them. This has put a great deal of pressure on the courts, contributing to a backlog of cases at some levels. Proposals are being discussed to deal with this, one of which is to make more use of technology. In the Supreme Court, we moved very quickly to remote hearings using Webex. We are very pleased that no hearing has had to be adjourned at the request of the court.

The lockdown has also placed pressure on practitioners – for example, those working in the criminal justice system. I know that the Bar Council and the Law Society, among others, are working hard to address this.

More widely, attracting and retaining diverse talent remains a priority for all branches of the profession and judiciary. Another challenge for the civil courts is the potentially very large volume of disclosure in some cases and the costs that result from this. That has been the subject of some changes in procedural rules and will no doubt lead to further technical innovation.

Overall, though, the United Kingdom is still seen as one of the world’s top resolution centres. I am hopeful that we will rise to meet all of the challenges which face us and that this jurisdiction will continue to be seen as a leading global centre for legal services of all kinds.

What is the most important question facing the UK IP system at present?

The UK IP system faces a number of challenges: 70% of counterfeits are sold online; the websites are often run from abroad; and the counterfeits are often supplied from abroad, so shutting them down presents real practical difficulties. Even when a supply chain is disrupted, the manufacturer can easily set up another one.

AI is also attracting a great deal of interest. Here we may have to consider whether human authorship or creative effort is necessary for the creation of IP rights. To what extent do traditional incentives apply when one is dealing with these new technologies?

On the patent front, life sciences will raise more important issues regarding ethics and scope of protection. We are also going to hear a good deal more about FRAND.

As for the UK patent system, we must continue to improve our processes to ensure that we deliver what society and businesses need from us. That means dealing with cases justly, as fast as possible and at proportionate cost. We must carry on producing well-reasoned judgments, particularly now that we have left the European Union and will not be participating in the UPC system. I am confident this will continue to be an important jurisdiction and I believe we have much to be optimistic about.

Who are your legal heroes and why?

One of my legal heroes is Lord Tom Bingham. He held office successively as master of the rolls, lord chief justice of England and Wales and senior law lord of the United Kingdom. He was the first person ever to do so.

He had a brilliant legal mind and enormous humanity. No one has better understood the core elements of the rule of law: that it must be accessible and clear and practical; that questions of rights and legal liability should be decided by applying the law; that there should be equality before the law; that all branches of the executive must comply with the law; that the law must provide adequate protection for fundamental human rights; and that in what he called this sub-utopian world, everyone should have access to the courts.

Not surprisingly, he was unfailingly respectful to everyone who appeared before him and he showed remarkable humility.

What advice would you give to young or aspiring lawyers?

Work hard (that is the advice that Lord Bingham gave too) but retain a work-life balance and take exercise. I think these are very important. They help you to stay healthy and enthusiastic. Enjoy your triumphs but do not let your setbacks deter you. We all have them. They provide opportunities to learn and improve.

Louis Pirkey

You are one of five inductees to the IP Hall of Fame this year. How does it feel to be recognised by your peers in this way?

It is a huge honour. I happen to know many of the people who are in there already. I consider them all to be friends and mentors and excellent IP lawyers. I have been very fortunate to have great colleagues and great clients.

What inspired you to pursue a career in intellectual property?

I was the first person in my family to go into law. I really wanted to be a patent lawyer, even though I ended up specialising in trademark law. My undergraduate degree was in chemical engineering, so I thought I would leverage that degree into a patent law career. I went to law school in Washington, DC, before working as a patent examiner at the USPTO while paying my way through law school. I took a job as a patent lawyer at a small firm in Houston and my first two cases were patent cases. But it was a very small firm and I was the least senior of the lawyers. My colleagues wanted to do the patent work and passed the trademark work to me.

I actually liked it. I did well. Clients started hiring us more and more.

When I joined the firm, which was called Arnold White & Durkee, there were four lawyers. Then the firm grew very fast, reaching 140 lawyers within a few years and we developed a sizeable IP department.

What were the challenges of founding the Pirkey Barber law firm?

In 2006, because of conflict issues, Bill Barber, Steve Meleen and I formed our own firm. Founding a law firm is not an easy thing to do. It was a blessing to have partners who could handle the financial and IT side of things! We also had the advantage that many of our big clients had been with us for years and came with us to the new firm. We got off to a good start with a big client base and almost immediately we needed help to satisfy client demands. Texas was also booming at the time.

You have had a career spanning several decades. What have been your proudest achievements in IP law?

The thing that I am most proud of is that we have built one of the premier trademark firms in the world. We have 33 or 34 lawyers now who do only trademark law and a bit of copyright. These are really some of the best lawyers there are. They are all just really good. But obviously I didn’t achieve this by myself.

Being president of the AIPLA was certainly a major thing for me too. That remains a great association. I have had some very interesting cases throughout my career, most of which I am very proud of, despite a few blips along the way!

What is the most important or interesting case that you have worked on?

There have been a lot of very interesting cases. It is too hard to pick one.

One case that wasn’t as difficult as some but was very interesting related to the ESSO mark. Since 1937, Exxon Mobile had been enjoined from using that mark in several US states and prevented from using the mark in other states by a 1967 injunction. All in all, it couldn’t use its mark in 15 states. We were able to get both injunctions modified or lifted, so that Exxon Mobile could use the mark throughout the United States. I thought it was quite an accomplishment to get those injunctions lifted.

I have been involved in a number of jury trials, but it is becoming more and more difficult to get a case to trial these days. The huge majority of cases are settled. Clients used to be a lot more willing to let a jury decide their case and the cost of litigation has increased.

What is the most important thing that you have learned in your career?

I have learned something from every case. Even in cases where you win, you think “I will never do that again!” about something you did.

One story that leaps to mind is that I had a witness from Arizona come to Texas to testify at a trial in Houston. I met him at the airport gate. He was wearing a Hawaiian shirt and khakis and had not brought a suit to change into. I told him that the judge would not allow him to testify in those clothes in a federal courthouse. He apologised, but I said: “Don’t apologise, I should have told you.” Fortunately, he was my size and I lent him my suit. When I saw him on the witness stand dressed in my clothes I nearly started laughing.

That’s just one of many lessons I learned!

What are the biggest issues facing the US trademark system today?

We always worry about generic products and how important brands will be in the future. Up to this point in time, we have seen an increasing importance in brands. During my career, the recognition of the value of brands has skyrocketed. Companies are therefore more willing to police their brands.

There has been some pressure in parts of the world to devalue brands through plain wrappers, among other things. That is an existential issue for brands, I think.

I am optimistic about the trademark system in the United States. There are fewer threats on the trademark side than on the patent side.

What is your advice to young or aspiring IP professionals?

I would advise them to invest in themselves and to go beyond just their everyday work and do some outside work and reading – not just in trademark law, but in other things as well. We can focus too narrowly, especially in a specialist firm, where people tend even to sub-specialise. You can get so wrapped up in the details that you lose sight of the big picture. Clients appreciate lawyers who have a greater breadth of knowledge and interests.

Who are your IP heroes and why?

The man who hired me out of school, Tom Arnold, has been a great influence. Bill Barber and Steve Meleen have made a huge difference in my life and have been great mentors.

One of the great things about trademark law is that you can learn something new every day, no matter how long you have been doing it. Very often the younger lawyers teach me new things. I have no shortage of mentors in this profession.

Teresa Stanek Rea

How does it feel to be recognised by your peers in this way?

It is so incredibly humbling and it makes me think that what we do in this profession is noticed by others. We all work long hours on behalf of our clients and sometimes we think nobody is actually paying attention to what we do.

Humbling is the key word, because I feel like I am just one of many hard-working people who equally deserve the award.

What inspired you to pursue a career in intellectual property?

In high school I always liked English, so I thought about doing law at that time. I initially went into pharmacy, but when I was at pharmacy school, we took courses in bioequivalence and bioavailability – concepts which were becoming important in connection with the Hatch-Waxman Act.

The idea that lawyers were actually going to be spearheading the changes brought about by Hatch-Waxman was intriguing. So, while working at a pharmacy during the day, I went to law school at night and the legal side of things ended up becoming my destiny.

I had no life (while at law school), but since I was relatively new to the pharmaceutical profession, my day job was very interesting because I worked in a hospital. Law school was also interesting because it was very different and I did not have a difficult time motivating myself to engage in both activities with complete focus.

What has been your proudest achievement in IP law?

What I have enjoyed most was my work at the USPTO. I already had a great deal of experience in private practice. The USPTO position was very different from anything I had done before, so I had to retool my skill set. It was interesting; it was a whole new set of issues. I had to advise the administration on IP policy, which came with a strong sense of responsibility. That was both scary and empowering.

But my proudest achievement has been helping to advance women in IP law. When I was the membership chair of the AIPLA, years before I became the president, I created a subcommittee called women in IP law. That was the very first group for women in IP law to be created anywhere, in the United States or in the world. That motivated me to keep pushing and recommending female practitioners to enter IP law, but also to let them know that advancement was possible. I have three daughters; all three are engineers and two went to law school and are now patent attorneys. The third is a medical doctor. The sky is the limit for women with an interest in IP law, if they are willing to put in the time and effort. I think that the glass ceiling that may have existed years ago is really starting to fracture. I think that women in general are well received in the profession.

The primary area where I have a concern is that the number of female IP equity partners in law firms is perhaps lower than it should be. The corporate world has fairly good female representation and they are working on increasing that, but more women still need to be advanced into the ranks of law firm equity partners. The way that is done is to bring in clients. I encourage my corporate colleagues to send work to female lawyers whenever possible.

What is the most pressing issue for the US system, and how would you like to see it addressed in future?

Resolving questions around patent eligibility under Section 101. It should be clear what subject matter warrants patent protection, but it is not as clear as we would like at present. Proposals are being developed in Congress and elsewhere and hopefully a consensus will develop, so that we can provide more predictability to users.

What has been the greatest challenge of your career?

I’m the sort of person that, if I see a challenge, I continue working to overcome it. Although I started in 1980, when there were very few women IP professionals, I believed that my career was in my control. I did not feel like there was a glass ceiling. I was able to advance, move up, get clients and become active in associations.

The negatives that I experienced were the same ones that anyone would experience, irrespective of their gender. This is very hard work and detailed work. You cannot be only a big thinker; you have to get in the weeds. But that actually appeals to me.

Who are your IP heroes and why?

There are too many to mention. My top tier of IP heroes are people who are not only talented as lawyers but have a vision of what they want the profession to be. There are many such people who reached out to me because of my gender and helped me either directly or without my knowledge. I tremendously respect them.

One of those people is Robert Armitage, the former general counsel of Eli Lilly. Bob gave me a wonderful opportunity to chair the biotechnology committee of the AIPLA – that gave me tremendous visibility in the profession. Another is Don Martens of Knobbe Martens, who constantly encouraged me. He was a very positive, upbeat thinker and would look out for other people. To some extent, I think it is because he had two very talented daughters.

What piece of advice would you pass on to aspiring IP professionals?

If you are willing to work hard and seek as much legal and technological knowledge as possible, and if you enjoy learning, then patent law is the profession for you. You continue learning science throughout your career, and the overlay with the law makes it even more interesting.