Given current global volatility, what steps can rights holders take to future proof their IP strategies?
The world has become a less certain place for intellectual property. Russia, for example, has unilaterally imposed a zero-royalty compulsory licence on IP rights from most developed countries – there was no realistic way to foresee and manage that. We have also entered a period where there is significant pushback against globalisation and the international order that has facilitated the gradual and beneficial harmonisation of IP systems internationally.
IP holders need to take a long view. Patents last for 20 years, trademarks potentially forever. The selection of what to protect and where to file needs to be strategic and realistic. Short-term issues and shallow analysis should not be used as a basis for abandoning rights, but the mode of exploitation and management may need to recognise a risk of short-term pain for long-term value.
The key question is really: where do we think we will generate revenue in five to 10 years?
Your patent practice has encompassed a wide range of technologies and industries. How do you stay abreast of the latest technological developments?
I have always had a wide interest in a broad swath of technology, and this has often been very beneficial to my work. For example, active implantable devices often include mechanical inventions, communications features, power systems, software controls and aspects of physiological response. If these are segmented into different areas of attorney practice, many potential inventions can be lost. The role of a patent attorney is to be able to quickly grasp all of this – new developments are rarely confined to an extension of what is already there, and often bring in aspects from other fields.
I think my clients are where I learn the most about emerging technology. I also read widely.
What are your top tips for building trust and understanding with clients?
It has become a cliché, but the best role to reach with a client is that of trusted adviser, who is able to contribute not just in the narrow space of intellectual property, but more generally. I think one key is to encourage broader conversations about the client’s business, projects and their journey. This provides the basis for a better mutual understanding, as well as an essential underpinning for quality pragmatic advice.
Of course, this needs to come from a place of genuine interest – clients can spot a fake a mile away!
Another important aspect is developing the ability to deliver bad news in a palatable way, as there is no trust where you cannot firmly advise away from a disastrous course of action. On the other hand, it is important to remember that it is our job to try and find a way for a client to proceed, not to just tell them no at every turn.
The various Thaler-Dabus cases have determined that an AI, under present laws in many countries, cannot be an inventor. Where does that leave industries where AI-driven developments are increasingly important?
Much commentary has centred on the narrow point of whether an AI can be named as an AI and an inventor. As a result, the issues around who owns the output of an AI − how do you assign its rights, how can the required forms and oaths be executed for a non-person such as an AI − are no longer important.
The critical issue is to ensure that a natural person exists who can be treated as the, or one of the, inventors. We are all very familiar with situations where there are multiple inventors – statistically it is the norm. They do not all make equal contributions and they have not all come up with the basic conception of the invention. It is well understood that contribution to reduction to practice can qualify one as an inventor.
Hence, for a research programme where AI is critical, it is important to think through the processes used and ensure there is human decision making, scrutiny and input, even if the basic concept comes from an AI. In many cases, the AI is a tool used for part of the research. One positive aspect of the Thaler decisions is that there is no need to be concerned about whether the AI is, or could be, an inventor.
Peter Franke is a principal of the firm and holds a BSc in physics and computer science and an LLB from the University of Melbourne. He practises as an IP attorney in Australia and New Zealand. Mr Franke’s practice covers filings, oppositions and other matters at IP Australia and IPONZ. However, his focus is on developing international IP protection strategies for technology developers, particularly in the deeptech, medtech and AI spaces.