What are some of the biggest challenges you have faced in your professional life – and how did you overcome them?
We like to think of intellectual property as an area that is largely harmonised globally, at least in terms of principles, because of the number of overarching international conventions and other agreements such as the Trade-Related Aspects of Intellectual Property Rights Agreement. However, every jurisdiction has its own nuances as to how it orientates itself with respect to intellectual property and intangible assets. In my career, I have worked across many countries; adapting my understanding is almost a daily occurrence! When addressing problems in developing IP markets (which do not have the benefit of decades of settled law), it pays to have an open mind. It is not to say that these jurisdictions cannot learn from more developed systems, but we must also be mindful that they have unique views on the place of intellectual property and its role in their society.
If there was one thing you could change about the international IP procurement landscape what would it be and do you think that it is likely to happen?
I am increasingly seeing the involvement of corporate procurement departments in tendering for major IP services projects. While we welcome the rigour, discipline and structure this can bring to the process, it risks buying decisions being made without a full understanding of the complexities of delivering IP services, particularly when multiple territories are involved. Procurement should sit at the table to inform discussions about price, but buyers of these services (IP teams) and their ultimate clients (commercial stakeholders) are best placed to understand value.
What are some of the most common mistakes that international rights holders make when enforcing their intellectual property in the United Arab Emirates – and how can they best avoid them?
The ecosystem for enforcement in the United Arab Emirates can be complex to navigate. Not only are there seven separate Emirates (four of which have their own courts) with devolved responsibility for some administrative enforcement matters, but there are also a number of free zones with their own authorities and two with their own courts. However, IP rights are federally granted. All of this requires an in-depth view on the nature of infringement and where it is occurring before enforcement can be planned strategically, whether through an administrative, criminal or judicial route, and any other related actions (eg, cancellation of granted rights) can be taken. Failing to take that first step to properly plan can be a costly mistake.
You have wide experience working in New Zealand, China, Indonesia, the Middle East and North Africa – how do client demands differ between jurisdictions and how have you adjusted your practice to meet these?
Client demands vary widely, depending on a client’s own attribution of strategic or commercial importance to a particular market. Understanding the underlying importance of a market through the client lens is crucial to providing agile and commercially relevant services and outcomes – a market that may be key to some clients could be of lower importance to others. Rouse’s approach to bring integration across our services and geographies throughout the IP value chain helps to overcome some of these issues while simultaneously enhancing the value we can deliver.
Trade secrets can be a key part of clients’ innovations but incorporating them into an IP strategy presents various challenges. What can IP professionals do to overcome these?
IP professionals can assist clients with building robust internal systems for identifying and capturing valuable trade secrets and ensuring that they are treated correctly. This involves both a process and an educational component that needs to reach into all critical parts of the business and should not be seen as a legal department responsibility alone. It is often too late by the time that an internal legal department gets involved.
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Sara Holder is responsible for the corporate development strategy in conjunction with CEO Luke Minford and sits on Rouse’s main board. Ms Holder graduated with an LLB and BSc in biochemistry from the University of Canterbury in New Zealand. She has built a broad IP and intellectual asset management capability across a number of developing IP jurisdictions and regularly advises on strategy matters for international and regional clients.