What led you to pursue a career in intellectual property?
I discovered intellectual property while working in a healthcare R&D after leaving research at Imperial College, London. As a multidisciplinary scientist working in a global healthcare business, I was fascinated by the relationship between innovation processes, the patent system and the various models for the commercialisation of knowledge and technology. There seemed so much to do to ensure that intellectual property was properly understood and put to work for businesses; and there appeared to be so much that businesses could gain from getting all of that right. It was immediately clear that intellectual property was under-recognised and under-used. Flawed IP strategies meant that many businesses were failing to optimise the use of their intellectual property as a tool for securing business objectives and managing risk.
How are client demands changing – especially given the disruption of the past 18 months – and how has this affected the way that you manage your practice?
The world has gone virtual. New parameters apply to communication with clients and colleagues alike, and different tools are available to enhance effectiveness. More conscious thought and preparation go into making connections feel real and ensuring that messages are clear and impactful. These adjustments will remain in play, even as businesses return to their premises more often. Depending on how individual clients are affected and where they are in their cycle of disruption, we have focused on tailoring advice and price to meet their challenges. Climate change has seen the importance of Environmental, Social and Governance (ESG) initiatives rise quickly up the corporate agenda. We are regularly advising clients on these matters, as well as on the technologies and opportunities for innovation that these challenges present.
What major trends do you expect to see shaping the high-tech industry in the next couple of years?
In general, I expect a continuing reliance on AI-enabled technologies across all sectors and an increased deployment of quantum technologies. While quantum phenomena have been known and applied in technologies for many years, the advent of quantum computing, coupled with our current depth of understanding, is driving an explosion of opportunities and international investment. For example, we are seeing seismic advances in quantum computing capability (for some applications), quantum communication, quantum sensing and quantum metrology. Governments have already invested billions in quantum technology and the private sector has a significant appetite for supporting the development of these technologies in the near term.
Within our patent team, we are building software robots capable of devising reports for our clients. These are in beta testing now, but they deliver real-time reporting and snapshots that are highly insightful and much too labourious (ie, costly) to generate by human endeavour. We are also exploring the possibilities of enhancing IP security, automation, situational awareness and risk management through AI and quantum technologies. I fully expect future IP software to be capable of analysing and reporting on strengths and weaknesses of patent portfolios, as well as comparing across peer group businesses.
How do you stay abreast of the latest industry developments both in the United Kingdom and internationally?
The most effective means is to keep busy with a mixture of matters in a range of countries. In this field, nothing beats hands-on experience working with clients and colleagues in court and before patent offices. Conferencing and speaking regularly with clients, peers and industry leaders such as fellow IAM Strategy 300 members is also beneficial. Within Dentons, our real-time knowledge-sharing and international events are available to all. I am also an incessant reader of case law, amicus briefs, consultations, international IP news flows and discussion forums.
What is the biggest career challenge that you have faced, and what can others learn from how you overcame it?
A significant career challenge for me was accepting and implementing delegation. As my early practice grew and increased responsibilities made my time a rare commodity, the scientist in me struggled to control and micromanage everything. As I invested more time and trust in my colleagues and embraced collaborative working practices, I discovered that I had superb people all around me. Without initially appreciating it, I had an uncanny ability to recognise and attract top talent. I learned how to rely on people much smarter than myself to drive lateral thinking and deliver success as a team. To this day, I thoroughly enjoy interviewing and meeting every single person that joins our practice. Once they start, we all work tirelessly to support what they need to be the best attorneys they can be.
What key skills does a world-class patent litigator need to succeed in oppositions and the UK courts?
The courts are well-placed to hear evidence as to the facts and common general knowledge of a skilled person. The English legal system is pragmatic and flexible. It gives a court the necessary powers to adjust the process in the interests of efficiency and expediency. The EPO opposition process is quite different and is skewed towards paper-based procedures, with an oral hearing attended by all parties at the end. At the EPO, the procedural constraints imposed at various stages of the process are strict and procedural outcomes can materially affect results. While it is critical to appreciate the differences, both litigation and oppositions require key overlapping skills, including meticulous case analysis, creative thinking, a commercial mindset, drafting skills (for submissions and amendments) and oral advocacy. The individual, or more likely, the team responsible for litigation must possess all of these skills. The key is to find the winning case on the merits and to communicate with clients early about any specific risks.
A case must be framed sensitively and consistently throughout the procedure and be underpinned by factual and expert evidence. Patents that are important enough to be litigated are often in dispute across multiple territories at the same time, and opposition disputes all run simultaneously. Such a strategy requires exemplary coordination and a consistent position on substantive points in all parallel proceedings. The coordinator should ensure that setbacks or concessions in one jurisdiction do not adversely affect another. Finally, in patent proceedings, the credibility and integrity of the expert are pivotal. Expert witnesses should be identified early on, and their suitability as a witness should be rigorously evaluated. Many patent judgments include words to the effect of “on balance, I preferred the evidence of X’s expert over that of Y’s expert”. What results in a win may evolve as the client endures inherent uncertainties and costs of the litigation process. Creative thinking can often generate opportunities and incentives for parties to come together.
You are known for your keen support of early-stage and exponential technology companies – why is it so important to nurture these?
High-growth tech businesses are the engine of our economy, driving growth and creating new technology jobs and opportunities. Unconstrained by legacy infrastructure and processes, these businesses tend to be highly innovative, and this tends to apply irrespective of the sector. By their nature, early-stage businesses are usually organised to address new and pressing problems (eg, the development of cleantech in response to the climate crisis). Technology and associated efficiency advantages can also contribute to social wellbeing and economic security. Internationally ambitious high-growth businesses provide us with opportunities to partner and share expertise as we go about doing business and improving our lives. Some of these companies have become technology partners, and many have grown into long-term global clients of our practice. Our TechConcierge programme seeks to unearth world-class high-growth businesses and ensure that they receive the same resources and levels of service as our marquee clients, which is a testament to our commitment to this sector.
What changes have you observed to your European practice now that the United Kingdom is no longer a member of the European Union?
Keep in mind that the EPO is not an EU institution. Our rights to represent global clients before the EPO and advocate before our national courts remain unchanged, so leaving the European Union has not affected the patent practice in any way. I manage our European patent attorney businesses across Europe, and one benefit has been the continued close collaboration with Germany and other mainland jurisdictions to provide clients with a seamless cross-jurisdictional service, including for patent design trademark applications and advice. Our project disaggregation process and global footprint enable us to move project tasks and operations around our network to deliver services of the highest quality in a cost-effective and timely manner.
What is the secret to a successful cross-border patent strategy?
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 commercial plan. In practice, the cost of owning and operating large patent portfolios depends on many factors, not least of which is the number of inventions and territories pursued. Many other controllable cost factors influence the total cost of running an international patent portfolio (eg, 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 of which contribute to overall portfolio costs. Businesses should focus on the level of individual patent families and ought to be aware of industry benchmarks to ensure that they are taking a best-in-class approach.
We frequently find coordination lacking – invention families are relatively unmanaged across international jurisdictions. Many portfolios are disjointed and do not properly engage with the businesses that they serve. Good portfolio management addresses all of these and leaves suitable time for monitoring and mitigating risks from competitive portfolios. In high-value, fast-moving sectors, the latter is business critical.
Many important questions have gone unanswered because it was felt that the time or cost of a portfolio analysis did not justify the project. With today’s technologies and data availability, we are witnessing a leap in portfolio management capability. These new capabilities and visualisations will deliver much higher levels of commercial integration for portfolio managers.
You have won acclaim for your strategic mindset and for working with clients to optimise their portfolios: how has this changed your understanding of the different forms that a “win” can take?
A “win” for some might mean leveraging technology innovation to attract investment or to secure a relationship with a key stakeholder. As a destination practice for world-class technologies, we often begin supporting high-growth businesses early on in their journey towards becoming unicorns with IP policy and strategy. A “win” for others may be to consolidate first-mover advantages among a group of companies. Intellectual property can help to deliver commercial goals. If not immediately, then over a period of time spent doing the right things. For some clients, a ‘win’ is increasing invention quality or saving 15% on portfolio costs. For others, it is managing a risk that threatens to materialise imminently or in the future. Where businesses see freedom-to-operate challenges ahead, then a sophisticated response is required to mitigate risk and shine a light on the best path forward. Other clients give us a mandate to help them identify IP opportunities or targets for M&A activities.
Justin Hill is a patent attorney and patent attorney litigator. He heads Dentons’ patent prosecution and opposition practices across Europe. All leading independent legal directories have recognised his leadership in intellectual property. Dr Hill provides global IP and portfolio management services, with a platform covering 181 Dentons offices in 80 countries. He has a track record of working with world-class technologies and generating portfolios of strategic importance, alongside his successes in EPO oppositions and appeals.