The winner of Managing IP’s Life Achievement Award discusses 50 years in IP law and how even he can’t avoid imposter syndrome.

In this episode, editor Max Walters and research editor Kingsley Egbuonu welcome Kevin Mooney to the IP Lounge.

Mooney, a partner at Simmons & Simmons who has worked in intellectual property law for more than 50 years, jointly won the Lifetime Achievement Award during the Managing IP EMEA Awards, which took place in London on April 11.

Mooney discusses his early thoughts on the Unified Patent Court (UPC), which he helped create, how it feels to spend an entire career at one firm, and why, despite his success, he suffers from imposter syndrome.

He also reveals his top unsung heroes behind the UPC project and his most memorable encounters during the setting up of the court. 

To read more about our awards research methodology, along with a list of all those shortlisted, click here. The full list of winners can be found here.

We will be back with a new episode in May. Thank you for listening.

In the latest episode of our monthly podcast, the team discusses AI clarifications from India and the US and previews the upcoming Managing IP Awards for EMEA and the Americas

In this episode, the team unpicks some of the biggest talking points from February and looks ahead to the  Managing IP Awards season.

Deputy editor Max Walters is joined by Rani Mehta, senior reporter for the Americas, and Sukanya Sarkar, our senior reporter in Asia.

Top of the list is artificial intelligence (AI), as there have been some notable clarifications on AI use from the Indian and US governments in recent weeks.

We also take a look at law firm strategies, including a potential acquisition for intellectual property firm Rouse.

Finally,  we preview next month's Managing IP Awards, as we look ahead to two major events.

The EMEA Awards will be held at London Hilton Park Lane on April 11, while the Americas awards will take place on April 25 at the JW Marriott Essex House in New York.

You can view the shortlist for the Americas awards here and for the EMEA awards here.

We will be back with a new episode in April. Thank you for listening.

In the latest episode of our monthly podcast, the team discusses standard-essential patent developments so far this year and delves into law firm hiring strategies.

It’s been a busy start to the year for the Managing IP editorial team. In this episode, the first of 2024, the team looks back over the biggest talking points in January.

Rani Mehta, senior reporter for the Americas, is joined by Sukanya Sarkar, our senior reporter in Asia.

Top of the list is standard-essential patents (SEPs). There have been some notable settlements in the past few weeks. However, the EU’s proposed SEP Regulation is still looming large after a crucial vote in the European Parliament last month and another coming up at the end of the month. Sukanya provides a rundown.

Also in this episode, we take a close look at law firm strategy trends.

Rani delves into how some firms are responding to patenting trends and an expected increase in litigation by making key hires, while Sukanya looks at consolidated firms and tells us why some in-house counsel are wary of using their services.

We will be back with a new episode in March. Thank you for listening.

In the final episode of 2023, the team discusses our Top 50 and the biggest IP events of the year.

It’s been an exciting year for the Managing IP editorial team.

In this episode, senior reporter Rani Mehta is joined by Sukanya Sarkar, our senior reporter in Asia, and Rory O’Neill, our senior reporter based in Europe, to discuss some of the picks from this year's list of the 50 most influential people in IP 2023.

The annual end-of-year list recognises those who had the biggest impact on intellectual property developments over the course of the last 12 months. The 2023 list included film director Greta Gerwig and Sam Altman, the CEO of OpenAI.

Also in this episode, our team members reflect on some of the biggest developments of the year including the formation of the Unified Patent Court and the struggles of foreign law firms in China.

This is our final IP Lounge episode for 2023. We will be back with a new episode in January. Thank you for listening and we wish everyone a happy holiday season and new year. 

Shortly after the first breakthrough on COVID vaccines in 2020, attention quickly turned to whether intellectual property could block access to new lifesaving technologies, especially in developing countries. 

Initially, talks centred around a patent waiver at the World Trade Organization. Patents were just one part of the story. Allowing third parties to manufacture a patented product is one thing, but what about the technical expertise and know-how required to make the product? 

Know-how is often protected in the form of trade secrets. This makes the issue of technology transfer and the sharing of know-how critical to any discussion around vaccine equity and future pandemic responses. 

In this podcast, Managing IP speaks to Olga Gurgula, senior lecturer in IP law at Brunel University in London. Gurgula, who is a frequently cited expert on access to medicines, tells Managing IP about the European Commission’s proposed compulsory licensing rules and the implications for trade secrets and tech transfer.

She reveals why it’s important to compel rights owners to share know-how and how the commission could make its proposal clearer. She also delves into the argument over whether IP blocks equitable access to COVID vaccines and what policymakers should learn from the pandemic.

Gurgula recently wrote a blog post for Medicines Law & Policy, which is mentioned during the conversation. 

This podcast focuses on how to develop an internal awareness of intellectual property and the importance of setting aside time to recognise and capture ideas as they happen. The purpose of patent harvesting is to sift through these innovations, to identify which might be possible to protect and explore which might hold commercial value.

The process harnesses the power and creative thought of an organisation’s R&D team and other areas of the business. The results are not just restricted to patents, however, as the benefit of using cross-functional teams means that ideas for advancing business innovation or development can arise as by-products.

The podcast also explores the role of patent attorneys in the future and how it will be affected as AI reshapes the patent landscape.

Tomas Wässingbo, a partner at Zacco responsible for the development of the innovation assets area, and Gunilla Larsson, IP director in automation and digital at Tetra Pak, addressed the following questions in a discussion with Managing IP's commercial editor, Phil Myers: 

• What are the benefits of involving people from different disciplines?
• Is the approach applicable to organisations of all sizes and natures?
• How has the patent harvesting process been received by participants?
• How are Zacco’s Forward Patenting workshops run and who should be involved?
• What will be the primary considerations for patent attorneys in the future?

An active approach to harvesting inventions can form an important part of the IP development and capture process, and contribute to decision making.

Listen to the podcast to learn more about how patent harvesting sessions set the “innovative locomotive” in motion.

In the latest episode of our monthly podcast, the team discusses six months of India’s reformed system for foreign law firms, the latest UPC trends and SEP developments. 

It’s been another busy month for the Managing IP editorial team.

In this episode of The IP Lounge, deputy editor Max Walters and senior reporter Rory O’Neill meet in London to discuss the latest IP news and trends. They are joined by Sukanya Sarkar, Managing IP’s senior reporter for Asia, who dials in from India.

Sukanya reviews the first six months of India’s liberalised rules for foreign law firms and asks whether IP firms are beginning to eye a previously untapped market.

We also discuss the Unified Patent Court, including a first ruling from its Court of Appeal,  and look at whether the forum is doing any more to increase transparency.

Sticking with Europe, there have been plenty of developments on the European Commission’s plans to overhaul the standard-essential patent framework, while the EUIPO’s latest executive director João Negrão has officially taken office.

In the second episode of a two-part podcast series, Adams & Adams partner Jenny Pienaar and senior associate Nicole Haworth analyse South Africa's controversial R3337 food labelling bill, which is set to significantly shake up the way global food producers do business. 

Speaking with Managing IP's Tom Baker, Jenny and Nicole delve into the tumultuous history of the bill, which has been met with vociferous opposition by several interest groups. They further discuss the main aims of the bill in its current form, and the implications it would have on branding and food packaging in South Africa. 

Jenny and Nicole then examine the potential societal impact of the bill, particularly the effect it may have on consumer prices, before considering how South Africa's continental and international trade partners would need to adapt to the new legislation. 

Finally, the guests weigh up the likelihood that this divisive bill will be passed in its current form. 

In this special podcast, Managing IP talks to a charity that is working tirelessly to support mental health initiatives in the IP profession.

“It’s not just about being nice – it’s about business sense,” was one of many themes to emerge from our hour-long discussion with the charity Jonathan’s Voice to mark World Mental Health Day, October 10. 

Jonathan McCartney, after whom the charity is named, was a UK patent attorney who tragically took his own life in 2017 at the age of 35. He was described as loyal, kind, and loving, always doing his best for, and by, everyone.

On the podcast, his father Graham McCartney reveals that Jonathan’s death came as a complete shock after his son “appeared to hit a brick wall, mentally”. The family wanted to pay tribute to Jonathan’s life and create positive change for others, so they created the charity in his name.  

One of the key figures is Penelope Aspinall, who joined Jonathan’s Voice in 2022 as a mental health consultant and lead trainer. She accompanied Graham on the podcast, with the discussion hosted by Managing IP’s editor-in-chief Ed Conlon. 

Jonathan’s Voice spearheads and supports a number of initiatives, both in the UK and internationally, and collaborates with various organisations including IP Inclusive and the UKIPO. Graham describes one of the academics they work with as an “inspiration in the field of suicide research”.

As Graham and Penelope discuss, deadlines are the biggest cause of stress and anxiety in IP. A survey last year showed that around 50% of people were considering leaving their firm or the profession because of stress and anxiety. “It is shocking,” Penelope says. 

On the podcast, Graham and Penelope cover a wide range of important topics, including:

·       The themes their work has identified; 

·       How senior IP leaders can set the right culture in their firms;

·       What attorneys should be offered when they are promoted;

·       What Jonathan’s Voice’s ultimate goals are;

·       How people can support the charity; and

·       Their key message for anyone, including anyone in IP, who is struggling with mental health

If you’d like to learn more about Jonathan’s Voice, please visit the website jonathansvoice.org.uk or contact Graham directly at graham@jonathansvoice.org.uk.

Managing IP would like to thank Graham and Penelope for their time and to wish them all the best in their important endeavours.

The monthly IP Lounge podcast will return next month. 

In the first episode of a two-part podcast series, Adams & Adams partner Mandy Swanepoel and senior associate Lisa van Zuydam discuss the complex topic of trade dress and its unique application in the African continent. 

Talking to Managing IP's Tom Baker, Mandy and Lisa provide practical examples of distinctive uses of trade dress to protect a product's brand, and consider both the trademark and non-trademark tools used to prevent infringement and imitation. 

In the latest episode of our monthly podcast, the team discusses law firm merger strategies, a high-profile break-up, and the latest 5G patent developments.

It’s been another busy month for the Managing IP editorial team.

In this episode of The IP Lounge, deputy editor Max Walters is joined by Sukanya Sarkar, our senior reporter in Asia, and Rory O’Neill, our senior reporter based in Europe.

We discuss how law firms find their perfect matches and what they consider before entering into mergers. As it happens, firms are not so different to us humans when it comes to picking partners.

Sadly, though, where there are unions there are also splits, and we review the high-profile break-up between Dentons and Dacheng Law Offices in China and ask if it may prompt future separations. 

Elsewhere, we cover the long-awaited launch of Avanci’s 5G patent pool and a 5G licensing deal between Huawei and Ericsson.

In the latest episode of our monthly podcast, the team discusses their early memories of covering IP before delving into the latest on the UPC and whether a proposed US study could threaten the future of pharma patents

It’s been another busy month for the Managing IP editorial team. 

In this episode of The IP Lounge, we are joined by our newest recruit, Sam Sholli. To welcome Sam, our reporters discuss how they got to grips with the intellectual property when they were in their first weeks of the job. 

We also discuss the Unified Patent Court (UPC), including the extent to which national courts will still play a role if the UPC becomes a dominant force. 

Over in the US, lawmakers are considering a study that would determine the merits of phasing out patents and monopoly-based incentives for drugmakers and replacing them with a prize system that would reward the development of successful drugs.

Finally, we discuss the reaction to the latest draft text of the World Health Organization’s pandemic treaty.

It’s been another busy month for the Managing IP editorial team. Now that the Unified Patent Court is firmly on the scene companies are beginning to decide their strategies. 

In this episode of The IP Lounge, our reporters in India and the US provide special insight into how Asian and US companies are approaching Europe’s new patent litigation system.

We also discuss industry reaction to trademark reform in Japan and China, whether the troubled relationship between the US and China is affecting legal practices, and dissect two US Supreme Court rulings.

Finally, we delve into the latest attempt at US patent reform and ask whether recent proposals are likely to succeed or fail.

In the latest episode of our monthly podcast, the team joins you live from the Managing IP Intellectual Property & Innovation Summit in London, where SEPs and the UPC were both top of mind.

It’s been another busy month for the Managing IP editorial team with the build-up to the Unified Patent Court and subsequent launch, on June 1, taking centre stage.

In this episode of The IP Lounge podcast, which we recorded from the IP & Innovation Summit held in London last week, we discuss industry reaction to the UPC as well as the latest on the European Commission’s plans to overhaul the EU’s standard-essential patent framework.

We also delve into the race for the EUIPO leadership, which has taken a major step towards completion, while our team members share their views on other hot topics discussed during the conference and what’s been happening elsewhere.

In the third episode of our monthly podcast, the Managing IP editorial team unpacks standard essential patent news, the probe into Judge Pauline Newman, and the biggest stories elsewhere.

April was a big month for SEP stakeholders, especially after the European Commission released plans to stamp out excessive royalty demands and put the EUIPO in charge of setting fair terms.

In this episode, our team analyses the latest SEP news in Europe and India and considers what’s to come.

We also delve into the USPTO’s Advance Notice of Proposed Rulemaking related to the Patent Trial and Appeal Board, Ed Sheeran copyright litigation and trends at China’s Supreme People’s Court.

Elsewhere, our team shares their views on the investigation into Judge Newman at the Court of Appeals for the Federal Circuit.

In the second episode of our monthly podcast, the Managing IP editorial team unpacks a busy month at SCOTUS, the EU’s solution to the FRAND conundrum, and the biggest stories elsewhere.

March was a busy month at the US Supreme Court, which heard oral arguments in Amgen v Sanofi and Jack Daniel's v VIP Products. In the second episode of The IP Lounge podcast, our team runs through the arguments and shares practitioners’ insights on what might come next.

We also discuss this month’s surprising news from the EU, which is lining up the EUIPO – the trademark office – to determine fair, reasonable, and non-discriminatory rates for standard essential patents. 

Elsewhere, we look ahead to April’s likely talking points – including the one-year anniversary of Kathi Vidal’s tenure as USPTO director and World IP Day, which takes place on April 26.

In the first of a new monthly podcast, the Managing IP editorial team unpack the race for the top job at the EUIPO, the key UPC trends to watch, and the biggest stories in Asian IP.

The search for a new EUIPO executive director is on and competition is fierce. There are three candidates already in the public domain, each with significant ties to the office. In the first episode of The IP Lounge podcast, our team runs through the contenders and explains how we got here. We also discuss the official start of the Unified Patent Court and what to watch from now until the end of the sunrise period on June 1. Finally, we look at the proposed overhaul of China’s trademark laws and India’s possible abandonment of more than 180,000 trademark filings.

In the third episode of a three-part podcast series by Adams & Adams on doing business within the dynamic intellectual property world of Africa, the firm’s partner Wilhelm Prozesky and Adv Rory Voller, Commissioner of the Companies and Intellectual Property Commission (CIPC), explore the latest trends surrounding patents in South Africa.

Adv Voller provides a status update on the CIPC’s move from a formal examination system towards a substantive search and examination (SSE) system for patent applications in South Africa, after a decade-long consultation. He discusses the progress of actions taken so far, looks ahead at the challenges of implementation, and explains how Adams & Adams have been involved in the transformation.

In a chat with Managing IP’s Rani Mehta, Prozesky and Adv Voller discuss the benefits for patentees once SSE has been implemented, while also considering the changes in assignment requirements and other notable procedural changes at the Patent Office that patentees and businesses need to be aware of.

In the second episode of a three-part podcast series by Adams & Adams on doing business within the dynamic IP world of Africa, the firm’s anti-counterfeiting head, Godfrey Budeli, talks to Managing IP about new rules for IP rights owners operating in Kenya that are designed to combat counterfeit goods.

As the country seeks to promote and facilitate legitimate trade, Kenya’s Anti-Counterfeiting Authority (ACA) have amended the Anti-Counterfeit Act to include a mandatory recordation process of IP rights. Among other changes, the new legislation states that a record of IP rights that pertain to products being imported into Kenya must be provided to the ACA, irrespective of the place of registration. The new legislation will take effect on January 1 2023.

In a chat with Managing IP’s Rani Mehta, Budeli discusses the legal basis and purpose for the recordal, the wider impact of the amendments to the Anti-Counterfeit Act and provides practical examples of how global businesses can react to the changes in Kenya.

In the first of a three-part podcast series by Adams & Adams on doing business within the dynamic IP world of Africa, experts Alissa Naran and Nicole Smalberger talk to Managing IP about oppositions based on well-known rights in the continent.

Encompassing 54 countries, Africa is the world’s second-most populous continent. Remarkably, 60% of this population is under the age of 25, presenting the opportunity for a new generation of increasingly-educated business leaders to shape financial development and economics. As opportunities and resources become widely available across the region, trademark applicants wishing to protect their intellectual property will have more questions.

The experts discuss the challenges of relying on well-known marks in the continent, explore the pan-African legal developments that companies should be aware of, and consider the common mistakes that trademark owners may encounter.

Senior reporter Max Walters is joined by Anders Fredriksson and Elmin Tutkur of IP firm Zacco to tackle the controversial topic of software patents.

Phyllis Turner-Brim has had a varied career, having worked as an intellectual property lawyer for a lot of different companies over the past 30 years, including BP, Walmart, Intellectual Ventures, Starbucks, and now HP.  

In Managing IP’s newest Corner office podcast, the Texas-based deputy general counsel and chief IP counsel at the US computer and printer maker says one of the main things she has learned from her different experiences is it’s important to maintain a balanced IP ecosystem.

“I’m a big fan of balance,” she says. “In my career, I’ve been on every side of the IP rubric, so to speak. I’ve been a licensor and a licensee, a buyer and a seller, an acquirer and a divestor, and an enforcer and enforced against.

“Any system that stacks the deck too much in any one favour is not good – we need balance across the board.

“Why? Because most companies, including HP, play across the entire ecosystem. For me to say we should 100% do away with non-practising entities – and I was at Intellectual Ventures for a long time – is not a valid business model,” she adds.

Turning to the topic of diversity and inclusion, Turner-Brim says that if she had to grade the IP community, she’d give it a D minus.

“Of course, we’re doing a podcast and what the people listening to this may not be aware of is that I’m an African American woman,” she says. “That means I’m the rarest of birds in the aviary of IP.

“There are very few – if any – black women, other than myself, who are chief IP counsel at Fortune 50 or 100 companies, and very few at tech companies.

“African American attorneys make up about 1% of patent attorneys, which is far below the representation in the population and even among those with STEM backgrounds.”

She continues, however: “The community doesn’t get an F, because it’s made a lot of progress with women. I have more and more female colleagues and those who identify as women every day.”

Turner-Brim also spoke about her responsibilities at HP, her views on standard essential patents and what could be done to enable further progress on diversity and inclusion in the IP space.

It’s fair to say the NFT market is booming.

Sales of NFTs have seen an incredible growth over the past couple of years – from $95 million in 2020 to almost $25 billion the following year.

But, despite this huge growth, it’s still very much a ‘wild west’ at the moment.

In this podcast Managing IP is joined by resident experts from IP firm Zacco who delve into some of the biggest intellectual property issues that we know about, and also consider those we don’t. 

Which companies might best benefit from NFTs? What enforcement options are available? How do NFTS tie in with the metaverse? Is legislation keeping up to speed with these unprecedented changes? 

The US doesn’t have intellectual property specialist judges as such, but some are more patent-focused than others.

One of those judges is Derek Gilliland, a former patent litigator turned magistrate judge for the District Court for the Western District of Texas, the US’s busiest forum for patent litigation.

Gilliland was tapped for the job by the court’s de-facto patent judge Alan Albright in November 2021, and he started at the court this month. He was brought on to help Albright with Markman hearings, motions for summary judgment or transfer and, most importantly, discovery motions.

In a new and exclusive podcast, Gilliland tells Managing IP that he’s found the work to be fascinating.

“Right now, one of the most interesting parts of the job is the variety of technical subject matters involved – everything from lightbulbs to computer software and hardware. That’s a lot of fun.

“Another that’s struck me has been that the discovery disputes have all involved things I’ve dealt with as a lawyer on one side or the other in the exact same argument. It’s been interesting to see that from the judge’s perspective.”

Gilliland adds that it’s also been great working with Albright over the past month.

“Anyone that knows [Albright] would expect that his management style is very high level. When he refers a case to me, that’s my case – he’s not asking me questions about it or telling me how to do it.

“But we spend a fair amount of time together chatting and going for walks. I need to get my bike over there so we can go for rides together.

“It’s like working for a friend and mentor, but also someone who isn’t going to micromanage everything.”

Turning to the point of how he would like to expand his role at the court, Gilliland says he’s hoping to get the green light to try some cases in the near future.

“The parties have to agree to let me be the trial judge – I can currently do everything except that. I’m really hoping to get some consent because I’d love to try some cases.”

The magistrate judge also shares his thoughts on the ‘controversial’ reputation of the court, helping to manage around 1,000 patent cases a year, and how litigants should conduct themselves.

Kirupa Pushparaj made the leap to general counsel last August, having previously worked as deputy general counsel and intellectual property lead at the Jack Dorsey-owned fintech firm Square in San Francisco. 

In Managing IP’s latest IP Corner Office Podcast, the now Palo Alto-based general counsel and corporate secretary for Step – a fintech start-up focussed on developing tools to help young people attain financial independence – says the move turned out to be an interesting career shift. 

“In a more IP-focused role, you are the subject matter expert and point of contact for anything on that specific topic. But in a general counsel role, you’re obviously taking on many more legal functions.

“You have to go in with humility, knowing there are a lot of topics you’ll be new to. Anyone who thinks they’re an expert in every legal topic there is either lying to themselves or is a superhero.”

Pushparaj adds that the best advice he could give to IP counsel looking to set themselves up for a similar move is to make to known that that’s what they want to do.

“No one is going to find you any less of an amazing IP counsel because you’ve expressed an interest in wanting to do more. Talk to whoever you work with and allocate some time to take on new things.

“You want to take on privacy or tech transactions? Do that, while making sure you’re still dedicating most of your time to your current role.”

Moving on to the subject of start-up IP needs, Pushparaj points out that Step is very much in the start-up stage and much smaller than Square, employing around 130 people. As general counsel, he says, he is much more involved with product design and IP. 

“IP protection is commensurate to and parallel to the design of the product in a start-up like ours,” he says. 

He adds that start-up counsel have to be very tied into their organisations to make sure they’re validly protecting IP.