Change Of Year Brings Changes In IP CommunityPublished on 16 January 2012 @ 4:36 pm
By William New, Intellectual Property Watch
The turning of a new year offers the opportunity to catch up on a range of recent personnel changes in the international IP policy and legal communities.
US Patent Commissioner Robert Stoll has become a partner at the Washington, DC law firm of Drinker Biddle. He retired from the US Patent and Trademark Office at the end of 2011 after a 34 year career. His new bio is here.
Effective 9 January, Shira Perlmutter took over as the United States Patent and Trademark Office’s Acting Administrator for Policy and External Affairs. She replaced Albert Tramposch, who returns to his previous position as Deputy Executive Director International and Regulatory Affairs at the American Intellectual Property Law Association (AIPLA), starting 16 January. Perlmutter comes from the International Federation of the Phonographic Industry (IFPI) and previously the US Copyright Office. For more on this, see IP-Watch coverage here.
The United Kingdom government in December appointed its first-ever intellectual property attaché, and made China the first place of its focus. Tom Duke, the former head of the IP Centre at the European Union Chamber of Commerce in South Korea, was to take office in Beijing on 14 December. Duke is based at the British Embassy, and provides support and advice to industry on enforcement of IP rights. The position is part of the UK IP Office, within the Department for Business, Innovation and Skills (BIS). Duke is fluent in Mandarin Chinese, and has a background in economics and Chinese industry analysis. Minister for Intellectual Property Baroness Wilcox announced the appointment at the first UK-China Symposium in London, noting the opportunity the Chinese market represents if UK businesses have greater confidence in the enforcement of their IP rights. The two governments agreed to hold an annual meeting between all relevant IP authorities to share information and support businesses.
The Administrative Council of the European Patent Organisation appointed Wim Van der Eijk to the position of vice-president of the European Patent Office (EPO) in November. The 54-year-old Netherlands citizen is in charge of the EPO’s Directorate-General Appeals. He succeeded Peter Messerli of Switzerland, who retired at the end of November. The appointment is for five years from 1 December 2011. Van der Eijk was principal director of patent law and multilateral affairs at the EPO since 2005, and served as vice-president of Directorate-General Legal and International Affairs in 2009-2010. Previously, he was chief legal officer of the Netherlands Patent Office and manager of its Patent Division. He also worked in the Ministry of Economic Affairs of the Netherlands, as well as serving as an honorary judge at the District Court of The Hague, which is responsible for patent litigation. Van der Eijk has chaired both the Patent Law Committee of the European Patent Organisation and the working party that drafted the European Patent Litigation Agreement. Messerli was one of the longest-serving vice-presidents in the history of the EPO, having been at the helm of DG Appeals for 15 years. During his time, the EPO boards of appeal took an active role in shaping law and practice in numerous areas of the European patent system, including biotechnology and computer-implemented inventions.
The EPO also announced the setting up of an Economic and Scientific Advisory Board of experts “to address important patent-related economic and social issues” with an eye on the impact of the patent system on innovation and economic growth. The board will hold its inaugural meeting on 23 January in Munich.
The advisory board (three year terms) is:
Prof. Dr Dietmar Harhoff, Ludwig Maximilian University, Munich
Prof. Bronwyn Hall, University of California, Berkeley
Prof. Dr Geertrui van Overwalle, University of Leuven
The Rt. Hon. Prof. Sir Robin Jacob, University College London, Faculty of Laws
Dr Mariagrazia Squicciarini, OECD
Prof. Sadao Nagaoka, Hitotsubashi University, Tokyo
Prof. Dr Mu Rongping, Chinese Academy of Sciences, Institute of Policy and Management, Beijing
Béatrix de Russé, Technicolor SA, Paris
Ruud Peters, Philips, Eindhoven
István Molnár, Biopolisz, Szeged
Prof. Dr N. Ayşe Odman Boztosun, Akdeniz University, Antalya
Separately, Jennifer Rankin Byrne became senior director for media relations at the Public Broadcasting System (PBS) in Washington, DC. She left her post as deputy chief communications officer at the USPTO. She previously was director of corporate communications at AOL, LLC, and a senior publicist at CNN/Turner Broadcasting.
Academic, Private Sector
Meanwhile on the academic side, John Palfrey, a highly regarded scholar and professor at the Harvard Law School and a faculty co-director of the Harvard Berkman Center for Internet and Society, will become the head of school at the esteemed Phillips Academy in Andover, Massachusetts, starting 1 July of this year. Palfrey recently published a book entitled, “Intellectual Property Strategy“, that “argues for strategies that go beyond the traditional highly restrictive ‘sword and shield’ approach, suggesting that flexibility and creativity are essential to a profitable long-term intellectual property strategy – especially in an era of changing attitudes about media.” He was a co-author of the book “Born Digital: Understanding the First Generation of Digital Natives.” “I remain deeply interested in issues of intellectual property and the Internet and look forward to continuing to be involved in the field from this new day-job,” Palfrey told Intellectual Property Watch.
Michael Ryan has taken his work across town in Washington, DC, to the Georgetown University McDonough School of Business, where he said in an email he has re-joined the business school faculty. Since 2006, Ryan has been associated with the George Washington University law school. Ryan’s past view on development was detailed in Intellectual Property Watch here and here. His work has aimed to promote innovation in key developing countries with an eye toward opportunities for multinational corporations.
In the private sector, Jon Santamauro has become senior director for global government affairs at pharmaceutical company Abbott Laboratories in Washington, DC. Santamauro was counsel at law firm Sidley Austin, and previously was a patent attorney at the USPTO and the intellectual property attaché at the US mission in Geneva. He attended the George Washington University Law School and University of Massachusetts, Amherst.
Richard F. Phillips of Houston, Texas, was elected president of the Washington, DC-based Intellectual Property Owners Association, for two years starting 1 January. He is chief attorney for technology at ExxonMobil Chemical Co. He served as IPO vice president for the past two years, and first joined the IPO Board of Directors in 1999, followed by roles in numerous committees. The IPO president is the highest ranking officer of IPO and serves as chairman of the Board of Directors. Phillips succeeds Douglas K. Norman of Eli Lilly & Co.
There also are several new officers at the Washington, DC-based AIPLA. William G. Barber is the new president. He is founding partner with PirkeyBarber, LLC, and has been active in the organisation for over 20 years. Barber also will serve as chair of the Executive Committee, consisting of the other officers of the association. Committee members include: Jeffrey I.D. Lewis, partner with Patterson Belknap Webb & Tyler, LLP in New York, as AIPLA’s president-elect; Wayne P. Sobon, IP counsel for Rambus, Inc. in Sunnyvale, California, as first vice president; Sharon Israel, partner with Mayer Brown, LLP in Houston, as second vice president; David W. Hill, partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC as immediate past president. Also elected during the 2011 AIPLA annual meeting in November were: Secretary Elizabeth Ann “Betty” Morgan of the Morgan Law Firm, Atlanta, Georgia; Treasurer Georgann Grunebach, vice president for intellectual property at the Fox Legal Group; and board members Barbara Fiacco of Foley Hoag, LLP in Boston; Kevin Tottis of the Law Offices of Kevin Tottis in Chicago; Chen Wang, deputy chief IP counsel for DuPont in Wilmington, Delaware; and J. Michael Martinez de Andino of Hunton & Williams, LLP in Richmond, Virginia. Mark Whitaker of Baker Botts in Washington, DC was appointed general counsel.
Separately, former European Commissioner for Justice and Home Affairs Antonio Vitorino was named mediator in the dialogue on private copying remuneration in Europe in November. The appointment was welcomed by European rightholders groups, who said that “according to the Copyright Directive (Directive 2001/29/EC), the exclusive right to reproduce sound, visual or audiovisual material belongs to authors, performers and producers. However, Member States may authorise private copying on condition that the rightholders receive ‘fair compensation’. Such fair compensation must help to ensure that rightholders receive appropriate remuneration for the use of their works or other protected subject-matter.” The remuneration is “the sum paid on different types of devices and media which is supposed to provide compensation to creators and rightholders for the private copying of their works for personal use. The European Court of Justice has recently clarified provisions of national private copying legislation and it underlined that the right holders have a right to be fairly compensated for such reproductions,” they said.
Elsewhere, the Motion Picture Association of America (MPAA) appointed Cybele Daley as senior vice president, government affairs and Anna Soellner as vice president, corporate communications. Daley reports to Michael O’Leary, senior executive vice president for global policy and external affairs, and is responsible for development of the MPAA’s federal agenda, its strategy and implementation. She manages and supervises MPAA activities before all federal entities including Congress, agencies and regulators, and serves as primary liaison to member companies and their federal advocacy. Daley came to MPAA from Van Scoyoc Associates working on behalf of private sector and non-profit clients, including the MPAA. Previously, she served as Principal Deputy Assistant Attorney General and acting Assistant Attorney General at the Department of Justice (2005-2008). Soellner oversees message strategy and public programming, and reports to Laura Nichols, executive vice president for global communications. She was previously vice president for communications among other positions at the Center for American Progress, the progressive think tank. Soellner served as a Luce Scholar and Assistant to the Legislator at the Office of Martin Lee, chairman of the Hong Kong, Democratic Party. She also held positions at the Treasury Department in the office of Legislative Affairs and Public Liaison and with Democratic Senator Dianne Feinstein (California).
Patricia Akester has joined Sérvulo & Associados, a Lisbon-based law firm, where she is available for consultancy. Akester remains a member of the Centre for Intellectual Property and Information Law at the University of Cambridge (UK), where she has been conducting research and teaching for the past nine years, specialising in intellectual property, information technology and media and entertainment law. Sérvulo & Associados has links with Brazil and Angola.
DLA Piper announced that a team of five Silicon Valley lawyers have joined the firm as partners. Rich Scudellari, Armando Castro and Matt Oshinsky join the Corporate and Securities Group, while David M. Lisi joins the Litigation practice and Craig P. Opperman joined the Intellectual Property Group, effective 11 January. Opperman brings more than 25 years of legal, international corporate-executive, and engineering experience to his practice and has been recognized as one of the world’s leading intellectual property strategists, the firm said. Opperman moved to Silicon Valley from South Africa in 1991 and was formerly a partner at Morgan Lewis and Cooley Godward. Previously, he served as general counsel and senior vice president for strategy of Health Hero Network, and was chief IP officer of OpenTV and its controlling shareholder, Dutch-based MIH. When he joined OpenTV, he was the first ever chief IP officer in any publicly traded company, the firm said.
Major, Lindsey & Africa announced the addition of Nancy B. Reiner as a managing director in its Boston office. Reiner, an experienced legal recruiter and former practicing attorney, joins the In-House Practice Group. Reiner will focus on permanent in-house placements for corporate legal departments and through MLA’s affiliate, Inside Edge Legal, provide interim help with experienced and sophisticated contract attorneys. Reiner joins MLA following an accomplished legal career. Reiner was a partner (and associate) at Brown Rudnick in Boston for eighteen years and an associate at Goodwin Procter and the former DiCara, Selig, Sawyer & Holt for six years.
McCarter & English LLP has added Deborah M. Vernon, Ph.D. as a partner in its Intellectual Property/Information Technology group in the firm’s Boston office. Her practice focuses on obtaining and enforcing intellectual property rights for clients in both the US and abroad. She has a particular expertise in the technology fields of metallurgy, superconductors, semiconductors, photovoltatics, plasma science, ceramics, thin film technology, nanophase and composite materials, spectroscopy, analytical chemistry, medical devices and instrumentation, and mechanical engineering. Vernon also conducts intellectual property due diligence in connection with corporate transactions and drafts technology licenses and agreements to further clients’ intellectual property holdings. She is the 11th partner to join McCarter’s IP/IT group in New England since 2009.
Oblon, Spivak, McClelland, Maier & Neustadt LLP announced that Tia Fenton, Kurt Berger and Zachary Stern were elected partners and former senior associate Joseph Wrkich was elevated to senior attorney. In addition, Brian Epstein and Soumya Panda were elevated to senior associates. Fenton is a patent litigation lawyer in the firm’s Litigation and ITC Litigation practice groups, and has a background in chemistry, biochemistry and genetics. Berger, a PhD, is a patent attorney in the firm’s Electrical Patent Prosecution practice group in the fields of electronics, computers, software, networks, telecommunications, optical disc systems, medical imaging devices, and communications systems and standards. Stern is a patent attorney in the Electrical Patent Prosecution group, and counsels on regarding International Trade Commission (ITC) litigation strategy and product design alternatives, among other things. Wrkich is an electrical patent lawyer, also is an attorney in the Electrical Patent Prosecution practice group.
Intellectual property firm Wolf Greenfield in Boston welcomed 2012 with the promotion of seven lawyers, representing a range of practice areas from biotechnology, chemical and materials technologies, electrical and computer technologies, and pharmaceuticals. C. Hunter Baker, Melissa Beede, Roque El-Hayek, Marc Johannes and Janice Vatland were named shareholders. Promoted to counsel were Tani Chen and John Strand.
Baker focuses his practice on patent prosecution and strategic counselling in the areas of pharmaceuticals, biotechnology, chemistry, materials, and medical devices. Beede has over 10 years of experience in patent prosecution and counselling in the areas of electronics, software, medical devices and consumer products. She counsels clients on matters such as product clearance, patentability, and utility and design patent filing strategies. Roque is involved in the preparation and prosecution of patent applications focusing in the areas of biotechnology, cellular and molecular biology, drug delivery, medical therapeutics, and pharmaceuticals. He has experience defending oppositions to US and European patents. Johannes has over 10 years of experience in all aspects of patent prosecution and client counselling, spanning technologies such as electrical and optical devices, semiconductor devices, medical imaging and equipment, computer vision and image processing, pattern recognition, speech recognition and speech synthesis, networking, MEMS devices and all aspects of software. Vatland is involved in the preparation and prosecution of patent applications focusing in the areas of biotechnology and pharmaceuticals. She works with inventors and research scientists in preparing office action responses and with investors, professors, and research scientists in reviewing invention disclosures. Chen counsels clients, particularly in the startup area, in patent prosecution in a wide variety of areas, including biomolecular engineering, nanotechnology, tissue engineering, drug delivery, fuel cells, chemical processes, and analytical devices. Strand focuses his practice on the enforcement and defence of intellectual property rights in patents, trademarks, and domain names.
Also at the Wolf Greenfield firm, Neil Ferraro was named the 2012 president of the Boston Patent Law Association. Ferraro is chair of the Wolf Greenfield Mechanical Technologies Group.
William New may be reached at email@example.com.