You are known for providing advice to clients regarding their participation in standards development organisations, such as ETSI and IEEE. How would you characterise the global standards landscape at present?
In my experience of international standards, when short-term political or company-specific interests begin to interfere with long-term investment and innovation strategies, issues can and do arise. Unfortunately, many international standards bodies (ISBs) currently appear to be the target for political pursuits.
The decision to participate in and contribute to standards development should account for all types of intellectual property and the business models that are required to build a healthy innovation ecosystem. There are ISBs and some standards bodies that do not apply the World Trade Organisation’s Technical Barriers to Trade principles and F/RAND licensing. Like any R&D, ongoing monitoring and management is required in any decision to participate and contribute to standards development, to ensure that it remains aligned with an open ecosystem where FRAND licencing enables a return on innovation investments.
You are based in Germany and are a qualified solicitor in Australia, England, Wales and Ireland. What are the key considerations to keep in mind when commencing multi-jurisdictional patent litigation?
Commencing litigation is not a decision taken lightly. Progress of the litigation should be reviewed regularly, particularly when critical events occur (eg, the handing down of a decision on patent validity or infringement). There are numerous factors that should be considered, such as:
- the patent strengths and risks;
- the patent’s relevance in the market;
- the party against whom litigation action will be taken;
- why litigation is the preferred course of action, taking into account other options (eg, negotiation, or alternate dispute resolution);
- which jurisdictions to select for litigation, in what order and why;
- the cost and exposure of litigation;
- the composition of the core team and further resourcing;
- exposure to discovery and/or depositions;
- the company board and executive management time; and
- the impact on business reputation.
As an advisor on IP strategy, what key changes in global and European markets are affecting the decision of where to seek patent protection, and why?
Through its Department for Growth, the European Commission is promoting a new regime of compulsory licencing in Europe, as well as another initiative, which appears to have the department regulating all aspects of certain patents (ie, those essential to standardised technology developed in an ISB for which a voluntary FRAND licensing commitment is provided and licence fees are payable).
Having the rule of law and a robust patent protection system is crucial for sustainable innovation. Companies' finances, the commercialisation of their technologies and their competitiveness depends on it. These factors affect decisions about where to seek patent protection. Other factors include movement in trends regarding manufacturing locations, the opening of new markets, the ease of navigating local regulation and whether that amounts to a barrier to obtaining or exercising rights in relation to patents.
Now that the UPC is officially up and running, what effect, if any, is its launch having on clients’ strategies so far?
Prior to the agreement coming into effect, decisions will have already been made in relation to the option to opt out from the UPC’s competence. Decisions since the UPC’s launch will take into account a variety of factors: efficiency, patent strength, exposure to infringement, business strategy and risk appetite.
What are your predictions for the future of the German licensing landscape, and how are you helping clients prepare?
The German innovation ecosystem includes many actors, often organised in innovation clusters or hubs that focus on an area of specialisation. The German High-Tech Strategy 2025 reflects that a robust patent protection system is crucial for sustainable innovation.
I help clients stay informed about potential changes to the German, European and international licencing landscape, and to consider potential impact on different revenue streams going forward. I also help to educate clients on sustainable innovation from different perspectives and bring in subject matter experts from various jurisdictions. The key message is that, as in science, the fundamentals of our laws and the rule of law must remain the stable foundation for IP-based trade.
It is a challenging time to assess future investments in science and technology in the European Union more broadly. This is because the fundamentals of IP-based trade have landed in a vortex of muddied water. During such times, risks can arise more frequently: incentives to invest in innovation decrease, global markets fragment and there are fewer opportunities to achieve global solutions to global challenges.
In 2014, Elisabeth Opie opened a boutique law firm focusing on international technology in Munich, Germany. With over 20 years’ international experience in innovation ecosystems, she specialises in technology across various sectors: international trade law, technology transfer and commercialisation (including structuring and negotiation strategies), competition law and dispute resolution. Standardised technology is a particular focus. Ms Opie is registered with the Rechtsanwaltskammer München and practises German, English and Australian law.