‘As an ever-more technology dependent society, we should strive to make processes for obtaining IP smoother and faster and find more ways to support (suitably deserving, of course) fledgling companies in protecting their IP’ – this is the opinion of Ilya Kazi, one of the Senior Partners at Mathys & Squire LLP in the UK. Here Ilya provides an outlook on his thought leadership in the UK-European IP landscape, and touches on some of the changes he would like to see facilitate his clients.
What are the most common types of IP matters you work around in the UK?
My personal practice now mainly consists of conducting European Patent Office (EPO) Oppositions and Appeals and giving related strategic advice to help position clients with respect to their competitors’ IP, or to prepare for an exit, although last year a major litigation took up much of my time. I also supervise some large client patent prosecution portfolios of hundreds of patents, although my team mainly does the day to day hard work and I mainly finesse the overall direction or get stuck into difficult cases.
What particular challenges are encountered therein and how do you help resolve them alongside your clients, both domestic and international?
In the EPO and UKIPO, we are generally dealing with a reasonably competent tribunal, I have a good understanding with my clients as to what a realistic outcome might be (even though we may aim more ambitiously) and we tend to achieve or exceed expectations. However, occasionally we face a struggle, and consequent expense, caused by the failure of a tribunal (often examiners in certain overseas patent offices) to appreciate technology or a nuance of a case and this can be particularly frustrating for smaller clients for whom getting appropriate protection is both of significant importance and who have limited resources. The only resolution is merely to be very open with clients about what to expect, and to assist in determining, commercially, how far it is worth fighting or what alternatives to what might be academically the “right” answer we can live with.
How do you feel the UK and international IP landscape has evolved to become what it is today in terms of legislation and goals still to come? What’s next on the IP agenda?
I think the greater harmonisation and streamlining over the couple of decades I have seen has all generally been a good thing. In terms of Brexit, I recently hosted a discussion with senior representatives of about 15 major household names brand owners, the UKIPO and representatives of INTA who between them had over a trillion of market cap, a million employees and hundreds of thousands of marks and patents between them, and nobody could see anything positive in Brexit. A simple short term goal that came out of that discussion is a desire that there will be at least an inexpensive simple transition from existing community IP rights to national rights.
You have worked on patents and IP in several sectors; which do you find to cause the most complications? Why do you think this is?
Two areas I work in a lot jump out; the first is software. Here one is often working at the borderline of what is patentable and the border shifts from time to time, and the practices of individual offices diverge from each other, and moreover the approach taken by individual examiners or even Boards of Appeal within a given office also varies. This makes it hard to give clients certainty about expected outcomes.
The second is medical devices. Often there is a great innovation but the devices are not drastically different from old devices used in a different way. The US allows methods to be protected but Europe does not.
The plus side in both is it is often very satisfying to get clients protection which was by no means guaranteed by adopting a little creativity.
Are there further developments you would like to see facilitate your work in IP and as a thought leader, how are you working towards developing said change?
I would love to see IP processes speed up and focus so that, at least for clients for whom timing is important, we can get to what is an objectively reasonable conclusion in a shorter timescale.
As to what I have done, I have given direct feedback in informal meetings with offices such as the UKIPO concerns and suggestions and to their great credit they are receptive to them but I confess I have not done much to tackle the wider issue.
I worry that as the economy is squeezed as a result of Brexit, this is not going to be top of the agenda.
