MIP podcasts

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. 

Managing IP speaks to David Jones; executive director of the High Tech Inventors Alliance; Brad Watts, minority chief counsel of the Senate judiciary subcommittee on intellectual property; and David Pridham, CEO of non-practising entity Dominion Harbor.

Speakers discussed the fact that Supreme Court chief justice John Roberts has ordered the Judicial Conference of the US to study judicial assignment and venue for patent cases.

Roberts ordered this study after a letter from senators Patrick Leahy and Thom Tillis – the respective chair and ranking member of the senate judiciary subcommittee on IP– who expressed concerns about the rise of patent cases in the Western District of Texas.

This venue was the most popular forum for patent litigation in 2021, with Albright accounting for about 25% of all case filings. 

In the third episode of the three-part podcast series by Adams & Adams on the IP enforcement of pharma in Africa, partners Danie Dohmen and Russell Bagnall, and in-house counsel Natasha Wright, talk to Managing IP about recent trends in pharmaceutical patent litigation in South Africa.

The experts discuss the nuances of the enforcement environment in South Africa amid the COVID-19 pandemic, specific pharma litigation enforcement proceedings, and the impact of the non-examination of patents, while providing examples to assist business leaders, innovators and consumers who work in the South African IP field.

In the second episode of the three-part podcast series by Adams & Adams on the IP enforcement of pharma in Africa, partners Jenny Pienaar and Kareema Shaik talk to Prin Shasiharan of Managing IP about pharmaceutical registration in the larger African markets.

The international registration system counts many African states as members – but its use is patchy. Although the Madrid System is effective globally, there are challenges to its efficiency in Africa. This is mainly due to varying local IP laws and registry systems across the continent. The experts explain how these obstacles can be overcome and how legal avenues are available to effectively address challenges.

The experts discuss the realities of the enforcement environment amid the COVID-19 pandemic, typical roadblocks faced by innovators because of problems attached to registration, while providing country-based examples to assist business leaders and consumers who work in the African IP field.