INTA J. Scott Evans chats with us about his new role as president of the International Trademark Association INTA, we give you background information about the serious unrest at the European Patent Office and we talk about the new dedicated IPR court in Shanghai.
Rolf Claessen and Kenneth Suzan
Episode 20 – January 23, 2015
RC = Rolf Claessen
KS = Kenneth Suzan
JSE = J. Scott Evans
This is Mark Lemley from Stanford Law School and you are listening to IP Fridays.
KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.
RC: Well thank you for tuning in to the 20th edition of IP Fridays. Today we have an interview with the INTA President, J. Scott Evans, we will tell you about the unrest at the European Patent Office and we will talk about the newly established IPR Court in Shanghai. But before that, we want to tease our get together for our listeners during the INTA meeting. We will be meeting on Tuesday, May 5, 2015, at 6:00 p.m. and we will make available a reservation link shortly so, if you are interested in meeting us and meeting your fellow listeners, mark the day, May 5th, Tuesday, during the INTA meeting.
On December 28th, the first standalone Intellectual Property Rights Court in Shanghai was officially unveiled. This follows a 25% increase in IPR cases in Shanghai so just to let you know, in 2013 there were 6,656 cases accepted at the IPR local courts in Shanghai so these cases just mean the IPR cases, so Intellectual Property Rights cases, that was an increase of 25% over the year 2012 and the Shanghai police handled 2,589 cases related to counterfeit and infringement, up almost 77% on 2012. If you want to read the whole story, just point your browser to www.ipfridays.com/shanghai.
So now I am very excited to announce the feature interview of today which is with the INTA President, J. Scott Evans, and Ken had the chance to talk to him.
KEN SUZAN’S INTERVIEW WITH J. SCOTT EVANS:
KS: Thank you Rolf, I am joined today by Mr. J. Scott Evans, who is the President Elect of the International Trademark Association, or otherwise known in the industry as INTA. Mr. Evans currently serves as Associate General Counsel, Trademarks, Copyright, Domains & Marketing at Adobe Systems Incorporated.
Mr. Evans received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. He first served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc.
In November 1996, Mr. Evans joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law.
In November 2007, he joined the legal team at Yahoo! Inc. where he served as a Senior Legal Director – Global Brands and Trademarks. Mr. Evans joined Adobe Systems Incorporated in October 2013 as Associate General Counsel. He is a past president of the Intellectual Property Constituency, the body that participates on behalf of trademark and copyright owners in the ICANN policy process. Mr. Evans has twice been voted as one of the 50 Most Influential People in IP by Managing Intellectual Property magazine.
Welcome Scott to our program.
JSE: Thank you so much Ken.
KS: Scott, when will you take the helm over at INTA?
JSE: The President Elect becomes President on January 1st of the year in which they will serve as President and for me that is January 1, 2015.
KS: So that’s just not too long from now. Are you excited about your upcoming role?
JSE: I am. I am very excited. I am very excited about getting to work with our new Chief Executive Officer, Etienne Sanz de Acedo. He has been with us a little over a year now. He came to us in July of 2013 from OHIM and he has a great vision for the organization and I am very excited about getting to work with him and the other officers and the board of directors of the organization.
KS: Now Scott, you have been practicing for a long time. When did you join INTA and what have been some of the highlights of the membership for you?
JSE: Well, I became a member of INTA through Fruit of the Loom because they were a corporate member so my first INTA meeting was Seattle, 1994 and I initially got involved on the Editorial Board for the Trademark Reporter so you would do various assignments where you edit work that are submitted by writers who want to have their works published in the journal. But I found after a while that that was academics and I wanted something a little more policy oriented so I sought around. I met some people by going to INTA meetings and getting to know them and sort of sought their guidance and I sort of fell into the Internet arena back in like 1994 or 1995 when it was just emerging and I got involved there both through INTA and through my personal life and so I served on that committee for quite a number of years because I helped draft the Uniform Dispute Resolution Policies that is used by ICANN to resolve disputes between domain owners and trademark owners and, you know, worked my way through. INTA had a restructuring of its committee just about eight or nine years ago and I was grandfathered over to serve another term on the Internet Committee so that they wouldn’t lose everyone through the restructuring so I ended up serving for a great many years there and was also chair and vice-chair of that committee.
KS: I am told that that committee is a popular committee. I know that I have tried to get on it numerous times but there must be many people who are trying to get on that committee.
JSE: Well right now it’s a little over 200 people but at the time I served on it, it was actually a sub-committee of the emerging issues committee. It wasn’t even a full committee. So that didn’t happen until probably 1998 or 1999 that it became a full committee, and then there was only about 30 or 40 people. I think when I was Chair it was probably about 45 people on the committee but it has grown I guess as the importance has grown to everyone’s practices and to their brand protection it is really emerging and has become very large over the last probably five or six years.
KS: Now Scott, what are some of the top items on your agenda once you assume office?
JSE: I would say that my biggest item is to help INTA envision and grow and to change. We have a chief executive officer who is taking different and new tactics to plug into our strategic plan which is something he was hired to do. He was hired to bring in new perspective and new energy into the organization. But I don’t think as an organization we’ve done a very good job of training our leadership on leading through change or into change and so my hope is that we will focus on giving leaders, committee chairs and subcommittee chairs tools so that they can help the membership embrace and work through and perpetuate this change so that we can take INTA to the next level. I think one of the most important things to remember is that everything that got INTA to where it is today is not what is going to get it to the next level. There is going to have to be changes and stretches to get us to the next level. But that can be difficult. It can be a growing pain. You know, it’s not comfortable to do new things and to go outside your comfort zone. So helping people deal with that and work with it. Everyone, at least the corporate members that I know, and I would assume those in private practice as well, you all have growing pains and changes that happen during the course of your business and so these are skills that I think will not only help INTA as it grows and changes and reaches for the stars with regards to its objectives and its strategy, but I think they are also tools that the lawyers and in-house counsel and outside counsel can take back to their own organizations and help them when they deal with change.
KS: Are there any specific tools that you are envisioning?
JSE: I am hoping that when we do our leadership meeting in Panama, that we will actually focus on some of the leadership skills that have traditionally been done on the Wednesday at the leadership meeting, there has been a sort of leadership seminar, and move that more into the mainstream of the education and offer that more as a main stream so that people can plug into it.
KS: Are there any challenges that you are envisioning as you take over the head position over at INTA?
JSE: Well, I mean, I think there are a couple of things that are going to have a lot of focus. One is the European Trademark Directive and that package of changes that are pushing through the European Parliament. I think that is a big challenge that everyone is going to be focused on and working hard to make sure that the correct choices are made and that our members’ voices are heard when the choices are made by the politicians that are writing the statutes. That is one big thing.
Second, as ICANN begins to transition out from the U.S. Government’s oversight and this idea of what is the next, what is ICANN 2.0, I think that whole issue is really important because what accountability does it have and to whom do they have it? What mechanisms for holding ICANN accountable for the decisions they make are there and what role are governments going to play and how does that jive with the private sector. I think that is the second thing.
I think, third, is ICANN is going to start doing start looking at how it handled this first round of expansion and whether it should have a second round or whether it should just be a continuous system and, if so, what should that look like. When those evaluations are done and they begin to look at things, I think it is very important that INTA take a leadership role in making sure that brand owners voices are heard and that they get some real information about how it effects brands and ultimately consumers in consumer protection.
KS: I understand that there is a strategic plan online at the INTA website. Are all of the items on the strategic plan obtainable?
JSE: You know, I do believe they are. I think that they are very practicable and they are obtainable. Are they obtainable today? I mean I think one of the plans is international expansion and we are looking hard at Asia and at Latin America. I’m not so sure that those things that will take place at the flip of a switch. I think we began that in earnest last year by having our first annual meeting in Southeast Asia and it was THE largest attended annual meeting that INTA has ever had outside of North America. It had approximately 8,500 attendees and that was an investment we made into China and Southeast Asia to get those companies and those participants that normally wouldn’t participate to come and I think we had, the demographics show that we had a great amount of participation from that region. Now the question is will that translate to San Diego? Will we see those same folks coming and engaging there? And that is a question that we will, of course, look at. We are committed, I think, to opening an office in Singapore within the next few years. I think that that is something that we are committed to doing and then looking at other regions that we might want to think about opening offices so that we can expand our internationalization around the globe.
KS: Excellent. That is great to hear. What would you say are the two top pressing issues for the trademark bar? Is there anything that INTA seeks to get into place in terms of legislation or other regulations that are at the top of your agenda?
JSE: I am not aware of anything legislatively other than, like I said, I think there are some things going on in Europe that will require some watching. I think one of the biggest things is just it’s going to happen to brand owners is 3D printing. I don’t think anyone really knows how it will affect it. I think we all just know that it’s coming, it’s getting cheaper and easier to do, and as a brand attorney I wonder what happens when someone should counterfeit your product but not put your brand on it? How do you protect that? So I think design patents may become more important than they have ever been and I think they always have just been a cast-off for most trademark attorneys or patent attorneys. There are in certain focus industries for which there have always been very important. INTA is holding a seminar on March 10th and11th in New York focusing on 3D printing and alternative design.
KS: Oh that is excellent.
JSE: I think that is something that people should start looking at and thinking about going. I really do believe this is going to be one of the watershed moments in intellectual property protection. Probably as big as the Internet in a sense.
KS: Fascinating. With respect to membership at INTA, are there any particular regions or countries that INTA will be looking hard at to boost its membership? I understand you mentioned Singapore, any other places?
JSE: Well, it’s not necessarily that we are looking at Singapore to boost our membership in Singapore, we are looking to have a hub office where we can reach out to Asia in an effective and cost-efficient manner and Singapore offers that. We do believe, you know we have a lot of associate members from those areas but I don’t believe we have as many corporate members as we would like to have and those are the kind of members we would like to try to get involved more. Or brand owners in those particular regions. The same is to be said about South America and also of Africa. There are a great many small to medium enterprises in Africa that have wonderful local brands and I think being involved in INTA in sort of getting that global view so that we can push for harmonization and some of these developing economies would be very valuable for the organization. But as I said, I don’t think any of this is going to happen overnight. I think it is a long range thought process and they are putting in the foundations that we can all build on going forward.
KS: Scott, for people just getting started with INTA, maybe they have been a member for a few years, what is the best way for those people to get involved with committees? Or maybe people who have been practicing for a long time that might now have some extra time to get on a committee, what is the best way to apply for membership? I understand that it is difficult to get a spot on a committee.
JSE: Well you know we have around 6,500 or so members – that’s associate and regularWe only have about 3,000 spots on committees so there is always going to be that sort of deficit. One of the ways, I think, to get involved is first of all see if there is a particular topic that is going to be covered at a forum or a roundtable or anything like that that you have some interest in and see if you can speak or get involved in planning one of those or planning those forums and host some roundtables so you get down to somebody who is involved, is excited, is energetic and who delivers and then always, whether you have done that or not, every three years we go through a nominating process and applications are available on the Website that you can go out and request a committee assignment, I think you get up to three choices, and you should continually do that. But, in the meantime, find other ways to get involved, speaking opportunities, opportunities to host things like if they want to do a pre-annual meeting cocktail party in your area throw that. You will get to work with the staff, you will get your name known, and people start networking there just like anywhere else. I think that that helps you when you try to raise your visibility to get onto a particular committee that is of interest to you.
KS: That’s excellent Scott. How can people get in contact with you both now and once you take the helm?
JSE: Well, I think the very best thing to do is just try to reach me through the INTA offices. I think they will setup an address for me at INTA so that I can keep that e-mail segregated from everything. They will do an introductory piece on me in the bulletin and we will make sure that any details that go out in that first piece I will make sure that it has information on how to reach out to me. I think it comes out twice per month and the first one will be January 15th.
KS: Excellent. Scott, thanks so much for joining us today. We are all looking forward to seeing you as you take the helm of the position at INTA.
JSE: Well thank you very much for having me today. I think what you are doing with this podcast is innovative, creative and bold thinking and I hope everyone enjoys it as much as we do. Thank you so much.
KS: Thank you Scott.
RC: Thank you for this great interview. Now I promised to tell you more about the unrest at the European Patent Office.
First, I want to give you some background information that might be helpful. The examiners at the European Patent Office enjoy a couple of advantages over employees. For example, at the German Patent and Trademark Office, in addition to a very good salary, they basically don’t pay any taxes and, for example, the children are allowed to go to an international school and they enjoy a couple of other benefits. Basically, they are handled very similarly to the civil servants of the European Commission. The European Commission, the EU Commission, had a reform of the salary for their employees and basically the employees of the EU are now supposed to work 40 instead of 37 hours per week and they also have to work until their 67th year and not only until they are 63. It might be possible that the EU countries had urged the European Patent Office to also work on a similar reform. In addition to that, the President Benoît Battistelli expressed his goal early on to improve the quality, the output of the European Patent Office as well as the quantity and he communicated sometime early last year that he wanted to pay the employees only based on the quality and the quantity of their work and not anymore based on their seniority or basically the number of years that they have worked for the European Patent Office. In this context, it might be interesting to know that the European Patent Office made a press release on the 9th of December, 2014, that they are now certified based on ISO 9001, so this was a first step probably to achieve the goal of the President for better quality. The President obviously has the full support of the administrative counsel of the European Patent Office. His contract was extended by three years on the 25th of June, 2014 so it will now end on the 30th of June, 2018 and this was probably done by the administration counsel so that the President can finish the reforms that he started.
Another really important piece of information might be about the leadership style of the President. The leadership style is frequently criticized not only by employees but also by users of the European Patent Office. Employees frequently say that his leadership style is autocratic and single-sided and one event really heated up the emotions recently on the 3rd of December, 2014, a member of the Board of Appeal was escorted from his office by police at the behest of the President. Only later, on the 10th of December, 2014, the Administrative Counsel suspended this member of the Board of Appeal until the 31st of March, 2015, and not only the employees but also the patent attorneys in Europe objected to this move. There were, for example, open letters by patent attorneys, namely one letter by the colleague Dr. Tilman Müller-Stoy of the law firm Bardehle saying that the actions of the President removing the member of the Board of Appeal from his office were not really covered by the European Patent Convention. The same view was taken by senior members of the large boards of appeal and a couple of important judges from European Civil Courts dealing with patent litigation. In general, the situation is really escalating since the beginning of last year. There is basically no month where employees are striking and not only one or two days but usually like five to ten days per month, or even more and this happens since about March of last year that the employees are striking. It is not only very few employees but usually between 3% and 10% and sometimes even nearly 30% of people striking. Just for your information, there are about 7,000 employees so that is quite a few people that are striking against the actions of the President.
Then there were some actions by the President that were also, let’s say, fueling the discussion. The President introduced a new rule that employees cannot send e-mails to more than 50 other employees and he also changed the rules for voting about strikes so now 40% of the employees have to be present when voting and at least 50% of these 40% need to vote for the strike so that the strike is legitimate. But these new obstacles seem to be easy to overcome. Some of the votes were like 90% for the strike. Later in December, the President, together with the chairman of the Administrative Counsel of the European Patent Office gave an interview to the magazine Managing Intellectual Property and the President was asked whether he was talking directly to the employees and he replied that his door would be open at all times for talks and, of course, he would be talking to employees where in fact there does not seem to be much evidence that the President is actually talking to the representatives of the employees in these particular matters.
If you want to read the full interview, head over to www.ipfridays.com/battistelli.
In summary, of course, you can expect opposition by employees if the privileges or the salary is cut or somehow diminished, but this is a completely different quality in my opinion. The strikes have been going on now for nearly a year and there is no real solution in sight. There is no open dialogue between the representatives of the employees and the President. That would be really helpful I think. The applicants and the European Patent attorneys are a little bit irritated about this situation and it would be really helpful if the parties would find a constructive form of dialogue and find a solution to this problem.
KS: That’s it for this episode. If you liked what you heard, please show us your love by visiting http://ipfridays.com/love and tweet a link to this show. We would be so grateful if you would do that. It would help us out to get the word out. Also, please subscribe to our podcast at ipfridays.com or on iTunes or Stitcher.com. If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at http://ipfridays.com/feedback. Also, please leave us a review on iTunes. You can go to http://ipfridays.com/itunes and it will take you right to the correct page on iTunes. If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at http://ipfridays.com/voicemail .
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