The Next Chapter

of Nordic IPR 1

Maya Fowell

Legal Editor

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Contents

Nordic IPR 2014 Survey Results

The Most Frequently Used IPR Strategy

Using The Current Trends To Your Advantage

The IPR Strategy Corner

How To Make Your IP Go Mobile

Thoughts On Trolls

Patents, Legislation, Infringement!

Your Next Step

The Nordic countries have a strong history in research

and innovation in the IP sphere, this alongside well-

developed traditional and digital infrastructure, places

the region at the forefront of the industry.

This eBook will focus on the most important strategic

challenges facing IP owners and innovators, as well as

those who advise them in 2015. Primarily, such

challenges mentioned will address the best methods to

achieve monetisation, how to move to mobile IP, the

impact of US litigation on the Nordic region, the

challenges of attorney-client privilege and other forms

of IP value creation.

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Nordic IPR 2014 Survey Results

IP should be focused on as a vehicle for

innovation, protection and revenue in the

Nordic region. As the region's IP specialism

continues to transcend past heavy

technology IPR towards consumer IPR,

learning how to operate within the new IP

landscape and how to turn such operations

into a profitable business is integral to 98%

of our industry respondents.

In alignment with the 12th Annual Nordic IPR Summit, Legal IQ conducted an industry-

wide survey to find out the state of the industry in 2014 and the plans you and your peers

have for 2015. Here are the results:

The most common IP challenge to your company in

2014 was 'monetisation of IP.' Building and

maintaining an intellectual property portfolio

requires extensive investment of time and money.

The most successful businesses in the Nordic

region demand a substantial return from

investments of this magnitude. Monetising patents

through assertive licensing or patent sales is one of

the best options available for leveraging IP and

generating such a return. Is this your biggest

challenge too?

One method that proved popular

within 50% of the respondents who

claimed that patent portfolio

management is the most relevant to

their day-to-day work is maximising

your patent portfolio through win-win

licensing agreements.

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Fairly Integral

25.00%

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The Nordic region is considerably ahead of global competitors in IP innovation, but focusing on the

potential of value creation within their IP department usually goes amiss.

The results of the survey convey that 'Automating your work flow' and 'Implementing Patent

Analytics' are the technological areas you want to develop this year. As such IP professionals need

to evaluate the true benefits of IP management. In seeking to improve operational performance, we

find that leading IP professionals are now embracing advanced workflow technology as a key to

their success. Workflow solutions can deliver rapid returns on investment because they improve

resource utilisation, work-cycle times and quality-control costs. In addition to the efficiency and

cost benefits, workflow solutions also benefit users by improving the visibility of and confidence in

the work process. With defined workflows, previous “black box” processes are more open and

accessible to the user, thereby increasing satisfaction and reducing frustration.

Have you began to implement automation or patent analytics into your IP department? If not, it's

certainly time to.

The Most Frequently Used IPR

Strategy

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5

Using The Current Trends To

Your Advantage Why did you choose to work for Electrolux?

We have an outstanding legal team at Electrolux. The complexity of the technology we use along with the

legal issues – specifically IP issues, makes everyday compelling. Electrolux has a successful global

presence whilst still maintaining a strong European perspective matters. The location also helps –

Charlotte, North Carolina, is beautiful.

Why is IP integral to a successful business strategy?

You create a technology and how you protect it is essentially by IP. If your company has not got that

protection it becomes an easy task for someone else to copy your newly developed technology. Unless you

strategise properly and come up with an IP process to protect your technology and implement it in the right

way globally, you really lose the advantage to utilise that technology and bring it to the marketplace.

What is the most successful IP strategy you have seen Electrolux implement across the globe?

For me, the most successful part of our business is strategy. In my opinion the most successful IP

strategy is integrated IP and the product research and development process - where the engineers and

the IP counsels work together from the beginning to create strategic solutions.

When product development starts and the IP counsels are involved from the beginning we can identify the

potential value of the platform and decide on how we want to approach it from a very early stage. It has

become increasingly important to have the IP counsels involved from the initial step so that we can provide

the strategic solutions and recommendations for that platform.

Is there a knock-on effect of Nordic strategies and ideals within the American offices?

Definitely, there are always some unintended effects. If we want to be successful we need to actively

engage our counterparts throughout the world and a company should be able to prevent the undesired

outcomes of these unintended effects. A good example would be the loss of attorney client privilege for

the US, it raises the question of how we manage the flow of information so that attorney client privilege is

not lost in the US in the event that there is any IP or any type of litigations in the US.

How does Electrolux protect attorney client privilege?

The simple answer is you have to actively engage your counterpart they need to clearly understand the

complexities of the US IP litigations. They need to identify the employee best practices to preserve attorney

client privilege in the US.

We have a different system than the rest of the world where opposing parties can, through various litigation

tools, get a certain amount of information from the other party. Having the attorney client privilege is a

tool that we utilise to prevent access to that information. If we are not careful with how we treat that

information outside of the US and how it is being communicated globally it may have a major negative

impact on whether we preserve attorney client privilege when we need it or not. It comes down to

identifying, integrating, employing the best practices and understanding the complexity of the US IP

litigation.

Ray Ashburg is the Associate General Counsel-IP at

Electrolux. Electrolux is a global leader in appliances for

household and professional use, selling more than 50 million

products to customers in more than 150 countries every

year. The company focuses on innovations that are

thoughtfully designed based on extensive consumer insights

to meet the real needs of consumers and professionals. In this

article, Ray comments on the impact of Nordic IPR on US

Litigation, shares how to navigate through the complex world

of US Litigation and the best ways to use Attorney-Client

Privilege to your company’s advantage.

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What is the future for Nordic IP and where do you see Electrolux fitting within this?

It is becoming more global than ever before. Most newly developed products are utilised outside the

Scandinavian regions, because of this having a global perspective has become an important aspect of our

business.

Electrolux can play an important role as a role model for an optimised global IP practice generating significant

amount of intangible valuable assets throughout the world. By integrating different perspectives from various

regions and having that optimised global IP practice, Electrolux has a model that could easily fit into any of the

Nordic region technology groups.

In your opinion what are the current trends in the Nordic IPR market? How do these trends impact the

rest of the industry?

Globalisation, globalisation and more globalisation. In order to remain competitive when manufacturing

jobs are going to the east, companies need to focus on the global aspects.

Think of the technology and products that are developed in the Nordic region, they all have a global use. Any

of the major companies in the Nordic region have a global presence, the entrepreneurship mind-set of the

Nordic region may not be the best approach in the global sense, so it is about assessing how the rest of the

industry use that entrepreneurship mind-set and make sure that we do the right things to protect the idea and

the development of our ideas. With regards to the developed products or technology that we come up with,

how we implement and maintain a global IP procurement and enforcement becomes the key differentiator.

Furthermore, figuring out how to preserve and protect that technology has become an important aspect of our

every day business.

The next question to answer is how we protect it globally and enforce it. One way to do it is just diversifying

your global IP leadership from these different regions. Relocating councils from one part of the world to the EP

headquarters so your company has access to the expertise required for implementing a global practice more

effectively.

The main impact is felt on deciding how to protect the technology. Creating the technology is obviously the

number one step in getting to the market and having that entrepreneurship mind-set, but the fast-paced process

to get to the marketplace also requires the protection side of it too. How do we ensure that we have a process

where our products and our technology are protected globally in an effective and efficient manner?

How does Electrolux stay ahead of the current trends?

We are global. We have an active engagement of councils throughout the different regions that identify

processes. There are times when a company has to think of things regionally and there are times that a

company has to think globally… we know the difference.

An example of how we do things in the rest of the world in a way that does not negatively impact our business

is our US IP litigations here in the US. We need to be conscious of the fact that we still want to conduct our

business in the rest of the world and IP litigation in the US is only one of the factors that we have to keep in

mind.

What lessons can the global IPR industry learn from the Nordic region?

I think the expedited developmental process and the entrepreneurship mind-set with regard to introduction of

products to the marketplace while ensuring its protection could be a lesson to be learnt by other parts of the

world.

What are the best tips you could offer Nordic companies when litigating in the US? How do you keep

costs down?

First, identify and integrate the appropriate US counsel into your IP headquarters as resident experts, just

having US counsel is sometimes is not enough. To have them at your disposal where you are essentially

implementing global practices, to have that resident expert at the IP headquarters, could provide a significant

positive impact. Secondly, I would definitely recommend using your best efforts to understand the complexity

of the US IP litigations. Just knowing that the US IP litigation is complex and going on to complain about it is

not going to do us any good, it would be far better to understand it and identify the best practices.

Third and last, identify employees’ best practices through preserved attorney client privilege in the US.

Even if your communications are outside the US, how those communications are going to affect your litigations

in the US is important to know. If you think of litigation, the US remains the most litigious country in the world

and the values of those IP litigations are significantly high. This is one of the biggest markets for any of these

technology regions, whether it is Nordic regions or Pacific. We need to keep in mind that understanding the

complexity of US litigations and preserving attorney client privilege is an important task.

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8 ways to protect your

brand online: How can you bring IP into

the Boardroom?

Is your patent intelligent?

The IPR Strategy Corner

Lock your domain - Ensure the security level

for every aspect of your company's online

presence - whether that be having a social

media account or your own blog - is at the

highest level. Allow your domain registrar to

lock your domain and block unauthorised

requests. Frequently making sure your

accounts are secure will deter hackers.

Brand your domain - Your domain name and

brand name should be the same, when they

are not your company loses the benefit of

your existing brand awareness. Limit

imposter sites by purchasing all the main

relevant domains.

Trademark your brand - In most countries

trademarked items are protected online

under law.

Take ownership of your brand - Every page

on your company website and every

downloadable documents should include

your brand name and logo.

Protect your brand - Put a clear and visible

copyright notice on every page of your

company's website and in any documents

you publish online.

Monitor your brand – Focus on the

information consumers are sharing about

your brand online, search for social media

posts, tags or images that include your

brand and where possible use them to your

advantage

Position your company at the top - Aim to

appear first on Google in any search about

your brand.

Develop a digital strategy – Make sure it

boosts your company's digital presence and

protects its reputation.

References:

http://www.marketingdonut.co.uk/marketing/marketing-strategy/branding/protect-your-brand-online

http://theundercoverrecruiter.com/infographic-how-protect-your-online-personal-brand-and-reputation/

http://newlegalreview.cpaglobal.com/bringing-ideas-table-ip-boardroom/

https://www.iprhelpdesk.eu/node/975

Build a bridge between research

and development, this is the best

way to share ideas from across

the company.

In-house lawyers should increase

the level of their involvement in

devising corporate IP strategies.

Lawyers offer more than

mitigating risks and should be

present in the boardroom.

The more you share IP the bigger

the increase in value. If you work

collaboratively with IP

Professionals and allow them to

bring their innovation into the

boardroom you can find new ways

to monetise effectively.

Patent intelligence is the

transformation of patent data into

technical, business and legal

knowledge. It can significantly help

companies analyse the competitive

landscape and uncover new

technological trends and is

increasingly becoming a key

element in the development of a

company’s business and patent

strategy.

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How To Make Your IP Mobile

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Mobile IP is set to take the industry by storm in 2015. People

are no longer sitting at their desks all day with access to a

computer and as the behaviour of IP professionals changes,

so must IP. Nokia will be one of the first to embark on the

Mobile IP trend. In an exclusive interview, Legal IQ speaks to

Harri Honkasalo, Director of Patenting at Nokia

Technologies, ahead of their launch to find out how Nokia

have dealt with the security requirements, pros and cons of

installation and the impact Mobile IP is having on the rest of

the business.

What does it mean to make your IP go mobile?

From the perspective of an inventor, it means whenever you have an idea you can always share or submit it to

your invention team or your employer. It means having easy access to the analytics, statistics and reports related

to your portfolio, which is imperative. It also means having the entire process that is available through different

platforms available on your mobile, whilst still being able to access all the prosecution documents you normally

can.

Why is Nokia trying to make IP mobile?

We want to provide access to all the team regardless of their location. We are a global organisation with our own

people in different parts of the world, from China to the US and of course Europe, we deal with Nokia inventors as

well as external inventors who can be located in places where Nokia is not present, and we have to be able to give

them access to the right systems at all times in order to sustain our current position in the market.

We want to advance our software to provide fast and easy access to people anywhere in the world to our

system. We understand that performance should not be dependant on where you are and the ability to get onto

the system not only through the company VPN but also without a VPN connection has to be independent of

location.

We want to provide a high quality connection to all our people. We believe everyone should have the same quality

of service and should be able to access the same information no matter where they are.

How does Nokia hope that providing easier accessibility will improve the quality of IP?

We want the quality and quantity of our IP to improve. When people have an idea about work on their mind,

whether it is to do with an invention or something else, easy accessibility provides the opportunity to access the

system when the thought in fresh in your mind and store it before the idea slips away. We feel providing that

access in a simple way will lead to better results for us.

Nokia is currently in the process of making IP mobile, how are you doing this?

We are getting our external inventors to be mobile. We are moving towards being global internally – it is still very

early in our journey but since October 20th 2014, our internal IP team has been able to mobile application and we

are very optimistic about the progress. We also have our own cloud-based solution built and configured to only

deal with the needs of Nokia and the path that we are moving down.

What are the key challenges Nokia has faced trying to make your IP go mobile and how did you overcome

them?

We have experiences the typical obstacles a company would expect when embarking on a whole new aspect of IP.

In order to ensure that all the security and other requirements are taken into account, the whole process of getting

the IP mobile has involved a lot of people, both from the IP organisation and from the IT side in Nokia. Managing

all those people and making sure the vision remains the same and the goal is centralised across the board can be

tricky. There are also the obvious compliance related requirements and trade compliance issues that we all face.

What security requirements does Nokia take into account?

Ensuring the safety of our data is the biggest security requirement right now. We want to ensure that the

security on our mobile application is at the same level as it is when we have data on our own premises.

Furthermore, when the data is outside Nokia, we need to ensure that it is as safe as it is inside Nokia.

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Why does Nokia think it is important to make IP mobile?

Quality and quantity of IP is very important to us. We want to make sure people are able to access

our IP wherever they are, and whenever they want to do so. Consumers themselves are becoming

more mobile and it is important for us to keep up with the changes in the market. Nokia is innovative

and this is the next logical step for us.

There are less people sitting at their desks these days and in my opinion it is important to give them

access when they are on the road.

Nokia is just starting its journey to provide Mobile IP, but do you have any advice for other

companies considering the same path?

Mobile IP is something that should be important to most companies. A big company like Nokia has

certain capabilities inside the company to ensure that the introduction goes well. Even though all

companies should be making that shift if your company has not got those capabilities in-house, it

can be extremely difficult. You need to ensure you have the needed competences in place when

your company makes the decision to go mobile.

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Thoughts on Trolls Two anonymous professionals reveal their opinions on IP Trolls and the impact

they believe them to have…

“In general the main

impact IP Trolls have

had on us is the

impact to our

workload. We have

had laws litigating the

evidence against us

and with that comes a

significant, and in my

opinion unnecessary

workload. As a

company we have not

suffered too much due

to trolls, I think smaller

companies are bigger

targets because they

may not have the

money to fight back.

Trolls can have an

impact in the finance

and can really make

the lives of employees

difficult.”

“They are out there.

Your company will be

targeted a number of

times and you need to

be prepared for them.

A number of times

you’re going to be

targeted for those and

you need to be

prepared for them. You

need to identify a

process how to deal

with these IP trolls,

just waiting for them to

come knocking on

your door is not the

best approach. You

have to be proactive in

having a process in

mind being in a

position where you can

deal with them.”

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Patents, Legislation,

Infringement!

Stephanie Kennedy is the author of the blog IP Troll

Tracker. For the last 5 years she has optimised large data

sets and developed custom software for clients to track their

information to help them make insightful business

decisions. She has over 20 years experience dealing with

patent assertion and litigation consulting. Since 2001,

Stephanie has made it her mission to track and take down

IP Trolls. Ahead of her talk at the Nordic IPR Summit in

2015, Stephanie exclusively interviews an inventor to

discuss the process of patenting, approaching big players in

the industry, trolls and US legislation.

How long did it take you to get a patent on your idea, from the time you originally thought up the

idea, to when your patent was issued?

I have quite a few patents, but I will give an example of just one, namely US Patent No. 6,782,510 which

deals with content filtering, a feature which is found in many corporate email systems. It has been cited 85

times by the PTO so I am fairly proud of it. The invention allows an administrator to control what kind of

content can be distributed, on a recipient basis, so that different policies can be used for different

audiences.

I thought of the idea in late 1997, and filed January 1998. It took more than 6 years to get it issued, which

is not atypical unfortunately in this business. There is a serious problem with the PTO not performing their

review fairly and timely, which costs inventors because by the time you get your patent, the technology

may now be obsolete, or the market may have changed. A perfect example is US Patent No. 8700538,

which deals with letting members in a community exchange playable media, such as DVDs. I filed for this

in 2004, yet the patent took 10+ years to issue. There were a number of companies that came and went in

this interval that I could have licensed and helped improve their offerings to make them more commercially

viable. The PTO delays pretty much killed the entire economic opportunity there.

What items have you commercially produced using your patented invention? If your invention is

technology-based rather than product-based, what products have you brought to market using

your patented technology?

I do not try to commercialize all my inventions because sometimes it is just a matter of economics,

meaning I don’t have access to capital that can help me hire a developer or market it in an

effective/competitive way against established large companies. Even if I had a perfect email filtering

program for example, there is no way I could compete against a Symantec, McAfee, Google, etc.

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In other instances I *have* invested gigantic sums of my own money to commercialize inventions where

the big companies are not yet present. If you look under the company name “Patent Savant” for example

you will see a number of filings made by us covering patent data acquisition systems. We spent several

man-years and $$ trying to bring this to fruition but have had limited success because the law changed

(which reduced the value of the product) and the market became very crowded just as we were

entering. We still have all the underlying code, tools, etc., however, and may pivot to implement a different

variant in the near future.

How have you approached the “big players” in your industry to attempt to get them to license your

patent? What resistance were you met with, and how have you overcome it?

I have had extensive engagements with big companies, about a number of my patents, most of it negative

unfortunately. Despite the fact that I have extensive technical educational background (a BS in EE from

Caltech) and industry experience (I worked at IBM and two startups) one still universally gets the

undesired response from companies.

Let me give you an example. In one instance a friend of mine knew the founder of the company. He got

us in touch with inhouse counsel, who proceeded to tell us he did not want to see any due diligence or

evidence materials that would explain the utility of the patents, either by way of their current or future

business. This was rather amazing to me, since I asked them how I was going to demonstrate the value

of the patents if they were not going to consider what materials we had prepared to show …exactly

that. This is an example of the corporate “blinders” I mentioned before. Inhouse attorneys are taught to

avoid looking at anything, or commenting on anything that relates to third party patents. This pretty much

means there is no opportunity for a reasoned discussion.

Finally we reached a compromise where we agreed we would at least TALK to outside counsel on the

phone to explain the relevance of the patents. This of course was rather inefficient, awkward, etc., and

prevented any meaningful assessment on their part. We also agreed not to initiate any lawsuit during a

limited grace period, all of which was fine by us.

Despite all these handicaps this company did in fact make an offer on my portfolio. For reasons that are

too numerous to list here (but I posted about it online) negotiations broke down. Sometime after the grace

period expired, I sent them a polite letter explaining to them in detail now why the patents had value – an

opportunity they prevented me from doing before. They then proceeded to try and kill my patent filings in

the PTO as some kind of preemptive strike or payback. Unbelievably they “manufactured” prior art to

make it look to the PTO that they had already come up with my idea before me. This was pointed out to

the PTO after I discovered it but it was not until years later that they admitted the charade. The whole

affair was just appalling to me to see what lengths they would go to not only denigrate my work.

This is why so many small inventors seek other channels, such as through brokers, to help

monetize their assets. They have neither the connections nor the muscle to get the attention of large

players, who can simply ignore you until you find someone willing to represent you in a lawsuit.

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What is the biggest barrier for small inventors to overcome when trying to approach the “big

players” in their market?

Access. It is almost impossible, unless you know someone in the company with authority directly, to get

any attention whatsoever. If you send them a letter inviting discussions it will be ignored 99% of the

time. To some extent this behavior is a legacy of older, now defunct case law which made it prohibitive to

talk to inventors, because that could expose the company potentially to a charge of “wilfull” infringement

later. This created a corporate mindset that pretty much shut down any exposure to third party ideas, no

matter how useful they might be, out of fear of being called out later for having “infected” the company with

an outside “virus” if you will. Engineers in fact were routinely told (in earlier days at least) NOT to read

patents of any kind, again out of fear of being “contaminated” with third party ideas.

Do you acknowledge the existence of Patent Trolls? If so, which company would you name as an

example?

What I do acknowledge is that like a lot of different businesses, there are a small number of folks who

operate on the margins and try to exploit small businesses by confusing them as to their coverage of the

patent, don’t do any real due diligence to see if the company is using the technology, make unrealistic

royalty demands, etc., with no real intention of ever enforcing the patent because it would be economically

unproductive. The only company that I know of that *might* fit that bill is MPHJ, but even there I am not

sure what option they have to try and monetize their invention other than mass mailing, because there are

so many potential infringers of their system(s). The reality is that sometimes the nature of your invention

is such that the value lies in its use by small users; if there are a million small users, how do you go about

collecting a $1 from each? When you embark on that campaign it causes a visceral reaction because you

are targeting the little guy, and you are perceived worse than if you had asked for $1m from one large

company.

Outside of legislation, what do you think can be done to update the patent system so that it is

more inventor-friendly? This can include adjustments at the Federal level to do with the USPTO, or

things at the local level, like educational events for kids.

The most recent “improvements” to the USPTO site, again, are very one-dimensional and biased. It is full

of “helpful” information on how to respond to patent owners who ask to be compensated for use of their

inventions. Yet there is nothing there that helps patent owners find out how to see if their invention is

being used in the first place. Again there is no balance in the current IP rights environment: everything is

being rigged in a way to make it easier and easier for big companies to take inventions.

At the same time I think patent attorneys *could* do a lot more to educate the public and especially young

people on the nature and merits of patents. When I was a big firm years ago we did exactly that: I would

visit high schools and give short talks on IP rights, and help kids see that their ideas could be valuable and

protectable.

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15

This eBook was written in conjunction with Nordic IPR

Summit (Stockholm, 24 – 26 March 2015) where all of

the contributors will be sharing more strategies on how to

build a robust and profitable patent portfolio.

Whether your industry is pharmaceuticals, software,

technology, telecoms, automobiles or aviation, this forum

will cater to your needs and concerns.

Join us in Stockholm in March and be a part of a

community of peers with the goal of protecting and

maximising your Nordic IPR. Download the agenda and

take the first step in learning how to:

• Transform Your IP Function to a Profit Centre

• Build a World-Class IP Portfolio

• IPR Strategies for Cross-Border M&A Transactions

• Best Practices for Brand Protection

• And so much more!!!

For additional information on all these sessions and

more, please call us on +44 (0) 20 7 036 1300 or email

enquire@iqpc.com