What led you to a career in intellectual property and do you have any advice for anyone considering a similar career path?
I always thought of going into a science or medical field, and like many other science students I envisioned a straightforward career path: a graduate degree and then, if all went well, a permanent position as a researcher at the local university. However, I quickly realised that working as a researcher is like being on a rollercoaster ride. It is amazing when you are on top of the world with the wind rushing through your hair and you are full of energy, but it is also difficult when nothing goes as expected despite all of your hard work.
In the search for career alternatives in science I decided to apply for a position as a patent examiner. I was trained in patent law and was interested to learn about new areas of science and technology. As an examiner you also communicate with local IP law firms, which is a great opportunity to demonstrate your skills to potential future employers.
After some years at the Norwegian Industrial Property Office I was recruited by one of the local IP firms. I was trained in practising IP law from an industrial perspective and was soon fascinated by the amount of advanced technology that goes into even seemingly simple products to improve them. I also truly enjoyed the process of taking complex information, extracting the key elements and defining a scope of protection that is of commercial interest to my clients.
It has been an amazing journey, and I am very grateful for being allowed to work with creative people who push technology forward every day.
Which of your cases or matters has been the most memorable and why?
The most memorable case was the first application that I drafted, which matured into a granted patent, and that covered a product that was put on the market shortly after grant. The first experience of following a product from the lab to a product that is offered for sale was truly amazing. Without the intellectual property in place, it is unlikely that this small company would have been able to raise sufficient funds to bring the product to market and I feel so grateful for the opportunity to have been part of this journey.
How do you build trust and understanding with clients to ensure that they make the most informed IP decisions?
I put myself in my clients’ shoes and envision the services that I would want to receive. This exercise quickly teaches me that it is of the highest importance that I truly understand my clients’ business. A business may change over time, which makes it a high priority to keep in contact on a regular basis. There may also be incidents that require my immediate attention and availability is therefore key. Further, when communicating with service users, I always take a proactive role to ensure that they do not miss a potential IP opportunity (it is not always the case that my clients know what they need) or waste resources on intellectual property that is no longer of any commercial interest. I always have my clients’ interests in mind when participating in conferences and reading technical literature, and proactively send them my comments if I come across any matters that may be of interest to them.
What are the key characteristics of a truly watertight IP protection strategy?
An IP strategy helps entities to manage their intangible assets in a way that aligns with their overall business strategy and goals. A business is not a static entity and the IP protection strategy should therefore be dynamic in order to serve its purpose. It is all about linking intellectual property to business.
Some crucial keywords in this regard are intellectual assets, core technology, return on investment, ownership, protection, risks and enforcement.
What common mistakes do you see from foreign rights holders enforcing their patents in Norway – and what advice do you have for them?
Some aspects of European IP practice are quite different from US practice, and these differences may have unfortunate consequences from time to time. Norway has harmonised its patent legislation with the European Patent Convention, but US rights holders in particular should consider involving a European patent attorney when the priority application is filed.
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Kim Livgard is a European patent attorney with more than 20 years’ experience of IP rights in the life sciences/pharmaceutical sector, including five years at the Norwegian Industrial Property Office as an examiner. His opinion and counselling practice comprises infringement, validity, freedom-to-operate advice and patent term extension, among other things. Mr Livgard is experienced in evaluating and responding to infringement allegations, as well as providing design-around advice and risk analysis. In the field of patents, he handles the preparation, prosecution, opposition and appeal of Norwegian and European patents.