22 June 2010

EU Patent and EU Patent Court are Not in the Best Shape

Margot Fröhlinger, Director of Knowledge-Based Economy inside the DG Internal Market of the European Commission, said yesterday at the IP Business Congress in Munich that both the EU patent and the unified patent litigation system in Europe are "not in the best shape" (see also coverage here and here).

She referred to the 35-years-old discussion on a EU-wide (Communitiy) patent as a "history of failure" that was mainly caused by massive lobbying from various sides (e.g. large corporations and patent attorneys), whereas the EU Commission still keeps trying and Europe's SMEs still keep hoping. Ms Fröhlinger considers this project ensuring innovation, growth and competitiveness especialy for SMEs, which is not provided by the current system, whose translation and transaction costs are far to high, even under the London Agreement that still requires claim translations for all member states in which a granted patent is to be validated. She especially demanded the far too expensive (mostly due to attorney's fees for "rubber stamping translations") and complex validation system to be "de-complexed".

She explained that there has been reached an agreement of principle (full document here) by the EU Council on December 4, 2009 regarding technical provissions required for the EU patent in which, however, language issues have been spared out, since the Lisbon Treaty requires unanimity (in the EU Council) for language issues but a qualified majority among EU member states for other issues, such that the language regime has to be governed by a separate legal instrument. The adoption of a proposal for a language regine is planned on June 30, 2010.

According to the proposal, EU patent applications will have to be submitted to the EPO in one of its three official languages (EN, FR, DE) and the patent proprietor would only have to provide claim translations into the two other official languages after grant, while for the remaining EU languages machine translations would be provided for purpose of disclosure and research. The owner would have to make a fully certified translation only in case of an infringement suit for the alleged infringer(s).

According to Ms Fröhlinger, however, this proposal has only very little chances to be adopted by the member states, since there is a strong (presumably southern European) group that will not accept an EU patent based only on claim versions in three predetermined languages.

As a possible way out of this situation, Ms Fröhlinger suggested an enhanced co-operation, which is a EU legislative agreement among a selected group of EU members only, whereas others may join later. Although such a mechanism has been permitted already in the Amsterdam Treaty of 1999, it has not yet been used since it is considered somewhat against the EU philosophy. In fact, the Schengen agreement and the EURO, which also are in force only in certain member states, have not been implemented by an enhaced co-operation but by other legal mechanisms. 

However, there is also an obstacle to this option. While only nine member states have to agree to take part in the enhanced co-operation, it needs to be authorised by a qualified majority of member states, whereas it is unknown if that can be achieved - in fact, Ms Fröhlinger was not overly enthusiastic about the prospect of success of this option.

As an option of "last resort" for the case that an enhanced co-operation cannot be put in place, Ms Fröhlinger considered a regular inter-governmental agreement, which, however, is also a tough way, since a parlamentary ratification is needed in each of the participating states, which may have an outcome as well, as experienced with France's long-lasting opposition against the London Agreement.

 Ms Fröhlinger further explained that the EU Patent Court is to be achieved by an international agreement principally open for third parties an independent of the European Court of Justice (ECJ) and the EPC contracting states. The court system, which would be competent for validity and infringement for both classical EP bundle patents and new EU Community patents, would comprise a Court of First Instance with local/regional and one central division and a Court of Appeal, (see Draft Agreement of March 23, 2009).

This European and European Union Patents Court (EEUPC), however, may also fail due to legal (i.e. political) concernes of some EU member states or of the European Court of Justice as has been expressed in a hearing on May 18, 2010 in Brussels by a number of EU members and ECJ Judges. If the European Court of Justice has to decide on the compatability of the EEUPC system and especially its independence of the EU legal framework, virtually any outcome between a clear yes and raise of fundamental issues due to the EU Patent Court's independence is possible. In any case, according to Ms Fröhlinger's most optimistic scenario, a unified litigation court system in Europe would not be implemented before 2015/2016.

12 June 2010

US Court of Appeals explains how False Patent Marking can be Prevented

According to Forest Group vs. Bob Tool Company of the Court of Appeals for the Federal Circuit (CAFC) earlier this year, false patent marking with an intent to deceive the public into believing that a product is patented when such is not true is punishable by fine up to USD 500 for each falsely marked product (see e.g. here). A product is falsely marked if it identifies a patent ostensibly covering the product where (i) no such patent exists; (ii) the patent is expired; or (iii) the patent listed does not cover the product.

Now the CAFC has ruled in Pequignot v. Solo Cup  (No. 2009-1547, Fed. Cir. June 9, 2010) that:
  • intent to deceive the public must be proven by a "preponderance of the evidence";
  • marking with an expired patent is false marking, just as marking with a patent that does not exist or which does not cover the product;
  • false marking raises a rebuttable presumption of intent to deceive;
  • the presumption is rebuttable if the manufacturer proves good faith underlying the false marking, e.g. by relying on advice of counsel, delaying the removal of the patent number to avoid costs and business disruption, taking steps to mitigate the false marking.
In the case, as reported here, the defendant’s products were marked with expired patent numbers.  However, before the patents expired, Solo Cup consulted with its patent counsel.  Because the products were produced and labeled with molds with molds that would be expensive to replace, the counsel advised Solo Cup that it would not need to engage in wholesale replacement of the molds immediately upon patent expiration.  Instead, the attorneys advised Solo Cup that it could simply replace the molds (with proper patent markings) as they wore out or became damaged in the ordinary course of business.  The CAFC found this fact to be “credible evidence that [Solo Cup's] purpose was not to deceive the public.” 

The court also ruled that a marking stating that "this product may be covered by one or more U.S. or foreign pending or issued patents" combined with a further indication such as "for details, contact [company]" is not a false marking that would reflect an intention to deceive the public if the statement is true, even if all the products so marked were not covered by a listed patent. The court accepted the evidence that such marking is not deceitful, especially where the alternative is inconvenient from a logistical and financial perspective.

The decision clarifies that if products are marked by a phrase such as "may be covered by the following patents [patent nos.]", it is well advisable to add "for details, contact ... [company name, address and or web site]".

11 June 2010

Trademark protection of File Extensions in Europe

US CAD company Autodesk's efforts to monopolise the ".dwg" file extension via a pending US “DWG” word mark application (No. 78 852 798) claiming all kinds of "computer software", have, even though the USPTO has not yet issued a final refusal to register the mark, meanwhile led to the satisfactory result that file extentions cannot be trademark protected in the US (see, e.g., here, here, or my earlier post).

Even though Autodesk had to disavow the US lawsuit Autodesk vs DS SolidWorks that, as fas as Autodesk is concerned, anyone in the world is free to use “.dwg” as a file extension (cf. doc 241, filed on December 31, 2009; see also here), a file extension is in fact to be considered descriptive and/or generic due to its functional use, while it is a fundamental rule of US trademark law that trademark protection is not issued on symbols or marks that are entirely functional.

In Europe, Autodesk applied for a Community Trademark "DWG" (No. 004703641) claiming, inter alia, "Computer software; computer aided design software; software developer tools; software for sharing information in a secure environment; downloadable software", which meanwhile has been withdrawn after two oppositions filed by opponents "Knowledge Base Software (Pty) Ltd" and "DS SolidWorks Corporation" and a subsequent appeal.

In Germany, two parallel “DWG” word marks are currently pending - No. 3020090602751 and No. 3020090276943 - the latter being a conversion of the withdrawn CTM registration -, both claiming computer software, CAD software or the like, which may, if granted, potentially be used to prohibit usage of the “.dwg” file extension in Germany.

However, even though Autodesk's respective disavowal in the US lawsuit is irelevant in Germany, Autodesk's German trademarks most likely cannot be used to obstruct using “.dwg” file extensions, since appropriate legal measures and arguments exist to both attack a potentially granted mark and, if necessary, defend against an infringement threat.

File extensions are technical indications of a file's format and, as such, cannot be registered due to absolute grounds for refusal according to § 8 II MarkenG (German Trademark Act), since, in my opinion, such signs are devoid of any distinctive character (§ 8 II, 1) and/or consist exclusively of indications which may serve to designate the kind, intended purpose or other characteristics of the claimed goods or services (§ 8 II, 2), in analogy to the related US doctrine.

Autodesk may still argue that, according to § 8 III MarkenG, “DWG” has established itself in affected trade circles as distinguishing sign such that possible absolute grounds for refusal have been overcome. In fact, Autodesk has already argued along this line in the above-mentioned US lawsuit Autodesk vs DS SolidWorks (cf. doc 1, Complaint, filed on September 19, 2008; see also here) by asserting that design professionals would recognize “DWG” as the name of Autodesk's proprietary technology and file format (doc 1, §§ 9, 10).

But Autodesk has also acknowledged the importance of interoperability between AutoCAD and third-party programs, for which reason technology transfer and licensing programs have been set up (doc 1, §§ 14, 15) by Autodesk, such as the “Autodesk Developer Network” or the RealDWG” licensing program. Autodesk further acknowledges that “competitors also have incorporated a reverse-engineered forms of Autodesk's proprietory DWG file format into their software” and that “limited use of .dwg solely as a filename extension may be necessary to achieve a level of interoperability of Autodesk programs” (doc 1, § 17).

However, design experts and CAD users certainly got used to the fact that file extensions generally are not primarily associated with a file's or a software's origin but rather with its technical format. It is, for instance, well known that even though formats like “.doc” or “.pdf” may originally have been developed by Microsoft or Adobe Systems, files carrying such extensions do not necessarily have to be generated by software products of these firms, even though at least the “.doc” format is still proprietary. Computer users would consider a file extension to have no origin-designating function, but rather regard it as a link to technical properties of the file in a merely descriptive and functional way. And in fact, besides the authorised and/or licensed usage of “.dwg” files, there exist many more software products from numerous origins not authorised or controlled by Autodesk for converting or otherwise manipulating “.dwg” files.

For these reasons and when considering the extensive evidence filed with the letter of protest of March 16, 2010 in the parallel US registration proceedings, it appears highly doubtful whether (i.) “DWG” really has established itself in affected trade circles as distinguishing sign for Autodesk's products and technology and whether (ii.) using the file extension “.dwg” represents a relevant use of Autodesk's trademark at all.

As a counter measure a request for cancellation because of absolute grounds for refusal (§ 8 and § 50 MarkenG) according to § 54 MarkenG may be filed with the GPTO within a period of 10 years from the date of registration (§ 50 II MarkenG). Alternatively, an  immediate third party submission could also be considered.

For the same reasons, as a defensive measure, the prospect of success of a trademark infringement action against usage of the “.dwg” file extension based Autodesk's potential German “DWG” trademarks would also be rather limited, since such claims may be tackled based on § 23 MarkenG, which limits the scope of a registered trademark in that (i.) signs identical with or similar to the registered trade mark may be used as indications concerning characteristics or properties of the claimed goods or services (§ 23, No 2), in particular its kind, quality, intended purpose, value or the like, and (ii.) the trademark may be used where it is necessary to indicate the intended purpose of a product or service (§ 23, No 3), provided such use is not contrary to accepted principles of morality.

10 June 2010

The Influence of the Internet Community on the Election of the German President

As you may know, on May 31, 2010 German Federal President (Bundespräsident) Horst Köhler surprisingly resigned from office with immediate effect. His successor has to be elected by the Federal Convention (Bundesversammlung) within 30 days, and the political class in Germany has meanwhile nominated two candidates for the highest office in Germany, whereas the traditional opposition between the center-right candidate, the Prime Minister of Lower Saxony, Mr Christian Wulff (Christian Democrat), and the center-left candidate, former anti-communist human rights activist, co-founder of the New Forum opposition movement in the GDR and first Federal Commissioner for the Stasi Archives, Mr Joachim Gauck (imparially), appears somewhat blurred this time, so that the usual rather formal, predetermined and boring election of the Bundespräsident has gained some tension.

It is probably one of the first nationwide top priority political issues in which the organised part of the internet community plays quite a prominent role which might serve as a lookout on future political opinion-forming processes in digital societies significantly influenced by young well-informed social media and internet activists. The future influence of such politically interested individuals and their campaigning skills on modern democracies can hardly be underestimated.

Koehler's resignation: President Koehler was on his way back from visiting German troops in Afghanistan when he gave an interview to German radio station Deutschlandfunk, in which he expressed his oppinion that a “country of our size with its [...] export dependency should also know that, if in doubt, in an emergency, a military engagement is also necessary to defend our interests, for example free trade routes".

The interview and the cited passage had initially been ignored by the mainstream media but was picked-up by a few bloggers, including 20-year-old Jonas Schaible on his blog "Beim Wort Genommen" and Stefan Graunke on "Unpolitik". Once established newspapers and magazines jumped on the bandwagon, Koehler was heavily critisised and accused of “gunboat diplomacy”. One week later Koehler quit his office since, in his somewhat egocentric opinion, the criticism showed a lack of respect for the president's office, while a majority of Germany's political commentators couldn't quite belive Koehlers thin-skinned reaction and British Daily Telegraph wondered that only in Germany "such an obvious statement could cause such a furore".

While Schaible and Graunke still don't believe that they were at the start of something big, it became evident that the blogosphere has become part of public opinion-formig process and that there is a regular exchange between blogs and established media. In the eye of the bloggers, blogs are increasingly important because classic journalism is less and less capable of achieving its mission alone.

Ursula von der Leyen: After the German political class began to hectically look for appropriate successors for Mr Koehler, German Chancellor Angela Merkel originally favoured current Federal Minister of Labour and Social Affairs, Ms Ursula von der Leyen, as Candidate for President of the governing christian-liberal coalition. Immediately a strong Internet-based campaign against her candidature emerged, e.g. on Twitter, Facebook and the blogosphere, since Ms von der Leyen, decried as 'Zensursula' by internet freedom activists around the German Pirate Party (see this earlier post), was responsible for a law fighting dissemination of child pornography by mandatory internet filtering, which after strong protests in 2009 has been blocked by the new christian-liberal Government.

On June 3, 2010 Mr Christian Wulff, Prime Minister of Lower Saxony, was instead announced to be the Government's official Candiate for President, while some internet activists already celebrated their anticipated great victory, even though it is rather unlikely that Ms Merkel has withdrawn her support for Ms von der Leyen mainly because of the Internet campaign and it is speculated in this post on the IPJur blog that
the reality might be that conservative catholic circles within the Christian Democratic Union were uneasy to see not only two women occupying the topmost offices in Germany but also two protestants. The candidature of Ms von der Leyen would have disturbed delicate confessional and gender balances.
Christian Wulff vs. Joachim Gauck: Since the German President is not elected in general elections but by the Federal Convention including the entire membership of the German Parliament (Bundestag), and an equal number of state delegates selected by the state parliaments specifically for this purpose, proportional to their population, there appears to be not much sense in a political campaign for or against one of the two candidates. However, this time, nevertheless, the Internet and social medial community is enthusiastically supporting their candiates, e.g. by Facebook campaigns "Joachim Gauck als Bundespräsident" (10.027 fans on evening of 07.06.2010) and "Christian Wulff - Unser Bundespräsident!" (464 fans) or creative initiatives such as "mygauck", which show that Joachim Gauck is the darling of the net community. And, this time the important difference over the 'Zensursular' capaign is that it is not against a person, but is in favor of someone. It just remains to be seen if the digital campaigns really can influence the political majority in the Federal Convention.

It is also interesting to note that by far the most pro-Gauck initiators are not more or less party political campaigners but are rarther independent politically thinking individuals. However, often, they are opinion leaders on the web and understand the campaigning business quite well, just as Nico Lumma of well-known advertising agency Scholz & Friends, who initiated the much-supported "Wir für Gauck" ("we are for Gauck") online petition. There also is another petition that directly addresses the members of the Bundestag who are entitled to vote the President. 

Just like the #notmypresident campaign against Ms von der Leyen, there soon emerged the #mygauck inititive on twitter. Anyone who sends a tweet with this descriptor appears with his twitter avatar in this mosaic picture forming a portrait of Joachim Gauck. The mood for Gauck and against Wulff among the internet activists is so strong that bloggers of left-winged and cooperatively owned daily German newspaper Taz (Die Tageszeitung) already dream of a Sommermärchen ("summer fairytale") in which the established but rather pale candidate of the political majority can be defeated by the independent and more intellectual candidate of the digital majority. To achieve this, however, the campaingn will have to leave the internet at some point.  

In this connection, well-established journalist and jurist Heribert Prantl, current head of the domestic policy department of nationwide liberal newspaper Süddeutsche Zeitung, published the article "Das tägliche Brot der Demokratie" ("the daily staff of democracy") in the July edition of influential monthly political magazine “Blätter für deutsche und internationale Politik” (editors Jürgen Habermas et al.), in which he observed the role of blogging in today's journalism in a wider political and historical context:
We are experiencing another communications revolution, just as in 1848/49. The bloggers of today remind me of the politicized citizens of 1848/49 – Blogs mean more democracy. There’s no reason for the established professional journalism to wrinkle the nose, as did the established nobilities and monarchy potentates 160 years ago. However, the new communications revolution needs professional assistance, it needs a journalistically educated core. In any case, there is a new, completely different professors Parliament which is called the Internet. This digital Parliament need leadership and expertise, just like the famous Frankfurt St. Paul's Church Parliament when drafting its Constitution of St. Paul's Church in 1849.

06 June 2010

File Extensions cannot be Trademark Protected in the US

Well-known US CAD company Autodesk Inc. holds, inter alia, pending “DWG” word mark application (No. 78 852 798) claiming “computer software for [...] creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications [...]; CAD software; computer software for animation, graphics and design modelling applications”. "DWG" is an acronym of the term “drawing” and used as a generic and merely descriptive term for Autodesk's CAD file format. 

As of June 22, 2008, this registration proceedings as well as a number of parallel DWG-related trademark applications of Autodesk were suspended by the USPTO due to the pending trademark cancellation petitions Autodesk had filed against Open Design Alliance (No. 92 047 002) and Dassault Systemes SolidWorks Corporation (No. 91 170 857), to confront the fact that Autodesk's competitors have increasingly used "DWG" in various forms for their own software product names, and in marketing campaigns aimed at Autodesk customers, whereas the final disposition of these proceedings could affect the registrability of Autodesk's DWG trademark. In the notice of suspension the USPTO notified Autodesk about the following concers that may oppose to the registration of the DWG word mark:
  1. DWG is a file format;
  2. Applicant is not the exclusive source of files with the format name DWG;
  3. Applicant does not control the use of DWG by others, either as a trademark or as a file format name;
  4. The submitted survey does not reflect recognition of DWG as a trademark, since no distinction was made between use as a trademark and use as the name of a file format.
Later, on March 16, 2010 and May 21, 2010 two Letters of Protest were filed, both from the Office of the Deputy Commissioner for Trademark Examination Policy. Both protests have been found
relevant and supporting a reasonable ground for refusal according to 15 U.S.C. § 1052 (e) (1), requiring that “merely descriptive or deceptively misdescriptive” trademarks shall be refused. 

With the letter of protest of March 16, 2010, extensive evidence (140 pages) has been submitted as to possible descriptiveness and/or genericness of the acronym “DWG” due to its functional use as file extension, based on the fact that file extensions are functional and that computers use them to identify formats, and associate them with application programs. It is a fundamental rule of trademarks that they are not issued on symbols or marks that are entirely functional.

The letter of protest of May 21, 2010 relates to US case 3:08-cs-04397 (Autodesk vs DS SolidWorks) pending in the Northern District of California, in which Autodesk sued SolidWorks for acts of unfair competition including alleged infringement of Autodesk's “DWG” trademark due to SolidWorks' usage of the characters “DWG” as part of software product names, domain names and the like (cf. Document 1, Complaint, of Autodesk vs DS Solid Works, filed on September 19, 2008). To resolve the matter, Autodesk and SolidWorks have meanwhile each agreed to dismiss all claims and have entered into a confidential settlement agreement (see here).

In that case, Autodesk especially complained about SolidWorks' use of the “.dwg” file extension without being authorised and/or enabled to do so as a member of the “Autodesk Developer Network” or under the “RealDWG” licensing program. Autodesk respectively argues that any usage of the “.dwg” file extension not being under their control would impair Autodesk's reputation for its DWG technology, since unauthorised usage of the DWG file format would not guarantee full interoperability with Autodesk's flagship software AutoCAD.

Supplementary to this competition law related argumentation, Autodesk took the view that the “.dwg” file extension is recognised by design professionals as the name of Autodesk's proprietary DWG technology and thus is primarily associated with Autodesk and AutoCAD. As a result, Autodesk claimed that its pending DWG trademark also covers the usage of the “.dwg” file extension since “DWG” allegedly is so well-known as identification of Autodesk's products and technology, that design experts do not recognise a functional or descriptive meaning of “.dwg” but instead associate the file extension with Autodesk.

Document 241 of Autodesk vs DS SolidWorks, filed on December 31, 2009, has been attached to the letter of protest of May 21, 2010 since it not only summarises SolidWorks' counter arguments, according to which using the “.dwg” file extension is totally functional and Autodesk thus cannot have the rights to a functional “DWG” trademark (doc 241, p. 2, lns. 12-22), but also clarifies the view of competent US Judge William Alsup on these issues. In support of SolidWorks' view, Judge Alsup took the positition that 
ownership of file extension designations cannot be appropriated under US Trademark Law (i.e. the Lanham Act), since file extensions are inherently functional, and functional uses cannot be trade-marked. It is stated that computer programmers and computer users should be free to designate file extensions as they see fit, without the fear of infringing trade-marks. 
Since Autodesk thus has no trademark rights covering a “.dwg” file extension, Judge Alsup suggested that Autodesk should disavowe any use of the mark in functional areas, but had limited it to just product names as such that he ordered that Autodesk expressly disavows
any even arguably functional use of DWG, including the use of DWG as a file extension, [i.e.] anyone in the world is free to use “.dwg” as a file extension as far as Autodesk is concerned [such that] there is no concern that [Autodesk] will obtain a monopoly over the .dwg file extension and prevent its use in the industry (doc 241, p. 5, lns. 14-17).
and further emphasised that 
Autodesk disavowed any and all ownership of its putative [US] word mark DWG with respect to its use by anyone as a computer file extension, regardless of the format of the file in question (doc 241, p. 6, lns. 18-26).
The following quite remarkable conversation finally lead to this disavowal (doc 241, p. 3):
JUDGE ALSUP: I want -- you're skating by something that's very important to me. So I want to get a clear answer. All right? Will you disavow, from here to eternity and for the rest of the universe, that the world has a right to use .dwg as a file extension, and you're not going to try to assert, here or anywhere else, that that use as a file extension violates any law? 

MR SABRI (Autodesk Represenmtative): Your Honor, it may be the case it violates patent law. We're not addressing that today. I will state --

JUDGE ALSUP: You will be in trouble if you don't give me -- listen. If you are trying to monopolize .dwg, you and your company are in big trouble.

MR SABRI: We absolutely are not, your Honor.

JUDGE ALSUP: Well, then disavow it.

MR SABRI: Autodesk cannot --

JUDGE ALSUP: You're not disavowing it?

MR SABRI: I am disavowing it, your Honor. Autodesk cannot state claims against functional uses of .dwg, and the distinction between a word mark DWG and the functional uses I believe will be very clear by this presentation.

JUDGE ALSUP: I want to hear you say we disavow it.

MR SABRI: We disavow any claims against functional uses of the .dwg, your Honor.

JUDGE ALSUP: Thank you.
Regardless of whether or not Autodesk's DWG trademark application will be rejected in the end, any competitor (in the US) is thus expressly allowed to use “.dwg” as file extension regardless of the level of compatibility of such files with those “.dwg” files generated by Autodesk's or their licensee's software products. But this would have been the case anyway, even without Autodesk's disavowal, which may turn out to be the only way to save the trademark application from refusal due to its "merely descriptive or deceptively misdescriptive” character according to 15 U.S.C. § 1052 (e) (1)

Consequently, independent of any such disavowal, the evidence and arguments brought forward in the two letters of protest (dated March 16, 2010 and May 21, 2010) filed in the registration proceedings at least demonstrate or even substantiate that no trademark may cover use of any arbitrary sequence of characters as file extension whatsoever (at least in the US), since 
file extensions are functional [since their primary purpose is to tell the computer the type of the file it is handling], and functional uses cannot be trademarked. To rule otherwise would invite a clog on commerce, given the millions of software applications. The limited universe of extension permutations would soon be encumbered with claimants and squatters purporting to own exclusive rights to file extensions.

01 June 2010

The International IP Strategist's Association

In recent weeks, the iam magazine, which is dedicated to intellectual asset management, reported on a newly founded group of IP strategists, that aim at nothing less than helping to "transform the position of IP within the business world".

Over the last few months a group of IP strategists have held a series of meetings in London and Oxford in which plans were made and a constitution was drafted to establish the International Intellectual Property Strategist's Association (INTIPSA) around Mr Mark Thomson and some other core members mentioned in the IAM Strategy 250 directory, the new association now being ready to recruit new members that have a demonstrable expertise in IP strategy. 

It appears to be the motivation and founding mission of the new group that IP should be at the heart of strategic corporate decision making but, in too many cases, currently is not, such that an association of IP strategists, who are experienced in bridging the gap between the IP legal activities of a business and the core activities and strategic direction of a business, could make the considerable task of persuading CEO's to take intellectual property and intellectual asset management strategy more seriously.

Concretely, INTIPSA's agenda comprises:
  • Establish and integrate the role and function of IP strategy within business, education and government;
  • Promote excellence in the provision of strategic IP business advice;
  • Serve as a means for business to locate qualified IP strategists;
  • Promote best practice and act as a mechanism to share this;
  • Act as a focal point for enhancing the IP capabilities of the UK economy and UK businesses;
  • Share market knowledge and act as a network to members of INTIPSA;
  • Provide long term IP strategic perspective;
  • Provide opinion in relation to national policy.
To read more on INTIPSA and gain some insight into the new group, you may refer to the article "Strategists of the World Unite" by iam editor Joff Wild. While the group not yet has a website, a LinkedIn group has been established for promotion and information purposes.

As far as I am concerned, a group like INTIPSA is much needed and highly appreciated, since intellectual property services and strategic business consultancy usually are two entirely separated issues that are handled by two entirely separated groups of professionals in both corporations and practices, which in many cases cannot even really talk to each other on a professional level.

From a patent attorney's point of view, it is a general deficiency of both general practice and IP boutique firms that their IP practice is far too much focussed on drafting, prosecuting, litigating and licensing of isolated IP rights, while the strategic dimension of such assets is almost entirely left aside. This situation, however, lies not fully withing the liability of patent attorneys and IP lawyers, since their clients often are not prepared to allow reasonable insight into their business strategies to enable their IP consultants to consider strategic thoughts in their daily parctice.

To change this situation for the benefit of not only the large corporation but also medium-sized companies, basically two measures have to be taken. Firstly, patent attorneys and IP lawyers have to learn how strategic and business related issues can be considered in IP practice (they thus have to become a little bit more consultants and a little bit less lawyers), while the corporations have to become aware of the fact that IP is an important part of business strategy and that business-oriented IP services could be of great benefit for their competetive position.

If these two issues are really tackled by organisations like INTIPSA, this could lead to a fruitful cooperation between patent attorneys and business strategists for the benefit of both corporations and IP professionals. If one wants to get declamatory on this point, one could well proclaim this as the future of IP.

Myself I hope to learn more about this issue on the the 3rd IP Business Congress (IPBC) which will be held from 20 to 22 June 2010 in Munich, which has established itself as one of the world's leading business-related IP conferences (see this earlier posting).

UPDATE: The confirmed full programme of the IPBC '10 and the speaking faculty with just over 70 IP thought-leaders hav now been published here.