Given that litigation finance is such a young sector, how do you build trust and understanding with clients?
Track record and a personal approach are key for me. Being authentic comes naturally, when I can share Deminor’s 30-year history and success rate of over 80% while being able to speak from my own in-house experience of bringing disputes to a litigation footing.
What is your proudest professional achievement to date?
I am very proud of my appointment to the council of the Law Society this year. This is a real opportunity to support the strategy of the representative body for all solicitors in England and Wales in improving diversity and social mobility within our profession, as well as helping to ensure that our court system provides access to justice for claimants, defendants, individuals and businesses alike.
How would you characterise the current UK patent litigation scene?
While the UK patent court has maintained its reputation as a high-quality, technically astute forum, it is recovering from a turbulent 2019 to 2020 period. There is a perception from some businesses that higher costs and longer case timetables could undermine the role of UK litigation in multi-jurisdictional campaigns. However, the appointment of Richard Meade and James Mellor as IP-specialist judges in the UK High Court, together with the quality of the IP judges now sitting in the appellate courts, have improved capacity. In addition, the UK government’s 12% boost to the Ministry of Justice’s budget, announced in the October 2021 budget, with £1 billion allocated to boost capacity, will increase efficiency even further.
Following Brexit, and with the United Kingdom no longer participating in the Unitary Patent Court (UPC), it will be interesting to see whether there is an increase in UK patent litigation. Could businesses use UK courts as a testing ground to obtain a respected, well-reasoned judgment while mitigating the risk of Europe-wide invalidity through a UPC route?
You have won acclaim for your work in developing Spectris plc’s global IP management system – what for you are the components that make such a system truly world class?
The right foundations are crucial, with clear and accessible policies to create the framework being key. At Spectris, we
took a business-centric approach to remind our people of their personal responsibility to safeguard Spectris’ intellectual property. The business could then conduct tailored implementation within each of the 100+ subsidiaries. User-friendly policies such as our one-stop information management policy covered all business information from trade secrets and confidential information to cybersecurity and data protection. This holistic policy required integration between teams within the business. Being connected to key teams including HR, tax, R&D, sales and marketing teams is highly effective when it comes to integrating IP management into their projects at the appropriate time.
In a world-class IP management system, all employees are trained to understand their personal responsibility and so are empowered to support the business’s IP management objectives. At Spectris, training included face-to-face sessions, webinars, online training and newsletters. Working at the parent company level, I was lucky enough to be able to support the businesses in their implementation from identifying and managing open source licences, to reviewing trademark strategies, to helping to maintain alignment with brand and business strategies, to identifying and shutting down infringement.
The next phase was a cycle of continuous improvement by training and supporting our internal audit function to assess the strength of IP management within the different businesses and then working with the business to develop stronger processes.
What common mistakes do parties make when embarking on multi-jurisdictional litigation – and how can they avoid them?
Having the right team in place, with proper coordination between groups working in different jurisdictions, is crucial. You need to know the lawyers who work on your case day to day and it is essential to understand their focus, industry knowledge and approach. At Deminor, I see more than 150 disputes each year and I am lucky enough to speak to a lot of different law firms. Finding a firm which can add to your strategy, which understands your business and how to achieve your objectives is crucial. You also need to make sure the law firm fits into your multi-jurisdictional advisory team. Do not assume that the different teams of a particular firm will always coordinate well with each other across jurisdictions.
Dr Emily O’Neill is general counsel UK for Deminor, a leading international litigation funder. She is a strategic litigator experienced in global disputes, having led an in-house team at Spectris plc and in private practice at Bird & Bird, London. Dr O’Neill has broad IP experience, both directing IP policy and strategy and managing IP portfolios, risk and enforcement. Her experience spans jurisdictions from the United Kingdom to Europe to the United States to China.