Before the UPC opened its doors, many national patent courts made a concerted effort to concentrate patent litigation cases before judges with patent law expertise, as well as addressing litigation tools available within national law and the speed of proceedings. The UPC has been popular as a litigation forum in its first 15 months, with a concomitant and significant decrease in actions being filed at the national courts of UPC countries and a trend for part-time legally qualified judges moving to full-time positions at the court. The judgments from the UPC – both procedural and substantive – have been thorough and well reasoned.

The UPC has not, however, taken full advantage of common law procedures available under the Rules of Procedure, but has established itself as a competent, specialist pan-European forum that combines the speed of proceedings (12 months to trial) and key tools from the national patent courts. This means that the United Kingdom remains a key jurisdiction for disclosure and cross-examination of expert evidence. 

HGF continues to leverage its specialist teams of patent litigators and European patent attorneys to advise and represent clients on their UPC strategy and actions. During the initial stages of the court, while many of the procedural and substantive law aspects were still being developed, HGF also worked closely with its network of European patent litigation firms in a co-counsel capacity.   

What are the key characteristics of a world-class patent portfolio?

A world-class patent portfolio must closely follow the strategy of the company and meet its requirements. The patents must, of course, cover and strongly protect the company’s products and processes, but should also act as a deterrent to any competitors. 

There must always be a balance between the actual size and geographical spread of the portfolio against the total incurred costs over the full patent term. When necessary, companies should adapt their strategy to consider any new competitors or markets. 

Businesses should look to invest a set amount in the protection of their patent portfolio, which may be determined by their turnover or opportunities in the market. This can also depend on the number of competitors operating in the landscape. 

A world-class patent portfolio should not only take into consideration the size of the patent portfolio, but also the quality and enforceability of its patents. 

The portfolio should strongly ring-fence the client’s products and be able to be used offensively, such as in litigation in relevant jurisdictions. 

How does senior leadership manage the firm to ensure that clients receive the highest standard of service while all staff fulfil their potential?

We aim to provide the best possible client service, both in terms of the quality of our advice and delivery. We focus on professional excellence delivered through our technology sector groups, underpinned by our business support and operations teams in IT, HR, business development and learning and development.

HGF is working with its clients to put strategies in place to address Europe’s changing IP landscape, particularly with regard to Brexit. What does this approach look like, and what should rights holders bear in mind?

We are starting to see the impact of the introduction of the unitary patent and UPC, which is fundamentally changing the patent landscape.

With regard to the UPC, we regularly advise clients on their choice of using the court or opt-out process, which we have largely automated for them.

This is a change that impacts the post-grant patent landscape, so the process for obtaining patents is relatively unaffected. However, there are many more choices now for patentees once a European patent has been granted. At this stage, the option of obtaining a European patent with unitary effect for the now18 participating countries allows the grant of a single patent with both central enforceability and the option for a central attack. This is not dissimilar to European trademarks, which have been highly successful since their introduction in 1994. 

On the other hand, for the United Kingdom as a non-EU country, and even for some EU countries like Spain and Poland, there is effectively no change; you can still file with the EPO to obtain protection throughout Europe. A similar route is available for UK trademarks post-Brexit, where the national system has offered cloning of EU trademarks.

Further, we are seeing a resurgence of national patents, in particular where parallel patenting is allowed to potentially give applicants a second bite of the cherry for high-value inventions.

Overall, we help our clients navigate this increasingly complex post-grant landscape to allow informed and strategic decision making.

Last year, you said that you only see the role of the UPC in client strategies increasing in the coming years. How can SEP holders integrate the UPC into their European and global strategies?

The UPC has several SEP actions pending and the industry is watching very carefully to see how the court approaches FRAND determinations, handling of confidential information (especially licences), rate setting and injunctive relief. Judges at the Corporate Finance Institute and the Court of Appeal have significant experience with these issues – especially from the German and Dutch patent courts – and the power of pan-UPC injunctions could be compelling if they can be brought before the UPC. SEP holders must factor in shifting costs if they lose an action, as well as value-based court fees as part of the risk of enforcing or defending patents at the UPC. However, large-scale SEP holders have embraced the unitary patent in their portfolios with its associated cost-saving benefits on renewal fees. 

How does the firm approach recruitment, mentoring and working to retain the next generation of talent?

How is LexOrbis integrating AI tools into its practice, and what advice would you give to other firms considering implementing these? 

At LexOrbis, we are actively using AI tools to enhance our services and keep up with emerging technologies. With its operations across India, our firm leverages paperless, secure document and technology management systems to streamline workflow and ensure timely delivery while maintaining a balance between personalised service and technological efficiency. Ultimately, such integrations have enabled our attorneys to be more efficient, providing a higher level of service to clients while reducing overhead costs.

For other firms considering implementing such tools, it is advisable to start with identifying areas where AI can make the most impact, mostly in automating repetitive tasks and analysing large datasets. Choosing the right tools is crucial as not all AI solutions are tailored for legal practices. A phased adoption approach is often best, ensuring that staff can adjust to new technologies without disrupting existing workflow. Further, firms should invest in the right data protection measures and tools to maintain a balance between leveraging technology and protecting sensitive client data, which remains invaluable in the legal profession.

What are the pros and cons of using arbitration to resolve trade secret disputes? 

Arbitration allows parties to resolve trade secret disputes in a joint process to avoid the complexities and costs of multi-jurisdictional litigation. This is particularly advantageous in international IP disputes where different jurisdictions might otherwise produce inconsistent results. It also offers significant control over the dispute resolution process. The private nature of arbitration also ensures that proceedings and outcomes remain confidential. This is crucial in trade secret disputes, in which the protection of sensitive information is paramount. Confidentiality helps parties to focus on resolving the dispute without concern for public exposure or reputational damage.

However, arbitration also has its drawbacks. One significant disadvantage is that such decisions are typically final and binding, with very limited grounds for appeal. If a party believes there was an error in the arbitrator’s judgment, they have little recourse to challenge it. Another concern is that arbitration can sometimes be as costly as litigation, especially if the dispute is complex or the process drags on. 

Because arbitration is private and lacks a formal court structure, it may not always provide the same level of procedural safeguards as a public court, such as the opportunity for full discovery. Additionally, arbitration does not produce decisions that set public legal precedents. Suppose a party seeks a decision with broader implications, such as the validity of a patent or a general ruling that impacts the industry, this will require a court judgment rather than an arbitral award. These factors need to be carefully considered when deciding whether arbitration is the best route for resolving trade secret disputes.

Last year you told IAM that the greatest pressure on your clients was obtaining the earliest possible acceptance of patent applications. Twelve months on, is this still a prevalent issue, and what do you expect to be the biggest challenge will be for clients over the next year? 

While the urgency for obtaining early acceptance of patent applications remains critical for our clients, a fresh challenge has emerged in the form of complying with the new Form 27 requirements. Recent amendments to the Indian Patent Rules in 2024 now require patent holders to adhere to a new timeline and format for filing their working statements for patents in India. Navigating this regulatory obligation while ensuring timely filings poses challenges without reliable guidance, particularly as businesses are under increasing pressure to manage their patent portfolios effectively across jurisdictions.

As the regulatory landscape evolves, ensuring that clients are well equipped to meet these requirements will be critical in the coming year, as will managing the interplay between compliance and strategic IP enforcement. On a positive note, the backlog in patent applications has seen significant improvement, with more than 100,000 patents granted last year alone. This surge is a result of concerted efforts by the Indian Patent Office to streamline processes and expedite examinations. 

How does the firm measure a successful IP monetisation strategy?

At our firm, a successful IP monetisation strategy is measured by how effectively it aligns with our clients’ business goals and maximises the value of their intellectual property. The first key indicator of success is the financial return generated from the assets, whether through licensing agreements, strategic partnerships or sales. A well-executed monetisation strategy should not only cover the costs of protection, but also generate significant revenue streams and contribute to the company’s bottom line. 

Beyond financial metrics, we consider the strategic impact of IP monetisation. This includes how well the strategy strengthens the client’s market position, enhances competitive advantage and supports overall innovation efforts. A successful strategy should allow clients to leverage their IP assets to enter new markets, block competitors or secure valuable collaborations. Additionally, the ability to effectively manage risks associated with IP enforcement and litigation while minimising the threat of infringement also factors into how we measure success. 

Ultimately, the goal is to create immediate value and establish a long-term framework for clients to continue benefitting from their intellectual property. In short, a successful IP monetisation strategy is measured through detailed review of financial outcomes, strategic alignment, market impact and qualitative results, helping the firm to refine its approach and make informed future decisions.

With DEI gaining traction in the patent sphere, what is LexOrbis doing to embed these principles into its hiring practices? 

LexOrbis is committed to deeply embedding DEI principles into its hiring practices. Our approach includes actively promoting equal opportunities, with approximately 65% of our professionals and staff being women. We offer various benefits designed to support work-life balance, such as work-from-home options, six months of maternity leave, sabbaticals, crèche facilities, flexible working hours and a safe work environment. These initiatives help to empower diverse groups and ensure that they have the resources and opportunities to excel.

Our team is intentionally diverse, comprising individuals from across India and representing various ages, backgrounds, ethnicities, physical abilities, political and religious beliefs and genders. We focus on nurturing young talent and preparing them for leadership roles to emphasise, reflect and embrace the diverse cultures and values within our workforce.

How does LexOrbis go about building a world-class patent team? 

At LexOrbis, building a world-class patent team begins with a focus on attracting top-tier talent with deep technical expertise and legal acumen. We understand that patent law requires a unique combination of scientific knowledge and legal proficiency, and we thus prioritise hiring professionals with advanced degrees in diverse fields, such as engineering, biotechnology, pharmaceuticals and computer science. Additionally, we invest heavily in ongoing professional development, encouraging our team to stay up to date with the latest changes in global patent law, technology trends and industry best practices.

We encourage cross-disciplinary teamwork, where patent attorneys, agents and technical specialists work closely together to develop comprehensive strategies for our clients. This collaborative approach ensures that each client benefits from the entire team’s collective expertise rather than just one individual. We also emphasise mentorship and leadership development, empowering our attorneys to grow into industry thought leaders who can guide clients through the complexities of patent prosecution, enforcement and monetisation on a global scale. 

What has been the biggest challenge for the firm in the past year, and how did you overcome it?

Over the past year, one of the biggest challenges has been dealing with emerging IP-related issues, especially as innovation continues to surge in developing fields such as AI, biotechnology and blockchain. These emerging industries have introduced new complexities in IP law and require us to adapt quickly to the unique technical and legal challenges they pose. Simultaneously, our clients in these sectors are moving at an accelerated pace, pushing us to expedite patent filings and strategies while keeping up with the constant advancements in these industries.

In addition, law firms are facing significant cybersecurity challenges. As the importance of data privacy and security grows in the IP sector, protecting sensitive client information has become paramount. With the increase in cyber threats, we have invested heavily in strengthening our IT infrastructure, enhancing encryption and implementing stricter data protection protocols to ensure that our clients’ confidential information remains secure.

Another key challenge has been finding the right talent to manage this influx of work and navigate the complexities of emerging fields. Recruiting individuals with both technical expertise and legal skills in specialised areas like AI and biotech has proven to be difficult as the demand for such professionals has skyrocketed around the world. To address this, we have intensified our talent acquisition efforts by expanding our recruitment networks and offering comprehensive training programmes for new hires. We are also focused on building an environment that fosters innovation, collaboration and continuous learning to retain and nurture top talent. 

What are three key considerations that rights holders should bear in mind before commencing patent litigation in India, and why are these so important?

Rights holders should carefully consider factors such as jurisdiction, patent strength and cost effectiveness before commencing patent litigation in India. 

First, choosing the right jurisdiction is crucial as understanding regional differences in interpretations of patent law and court procedures can significantly impact litigation strategy and outcome.

Second, rights holders must thoroughly assess the strength of their patent before pursuing litigation. This involves ensuring that the claims are robust and clearly defined, as Indian courts are known for their rigorous scrutiny of validity. A strong patent that is supported by comprehensive documentation and expert analysis greatly increases the chances of a favourable ruling.

Finally, while India is often seen as a cost-effective jurisdiction compared to other countries, patent litigation can still be expensive and time consuming, especially if the case is prolonged through multiple appeals. Rights holders should weigh the potential financial benefits of enforcing their patent against the costs and time involved. 

LexOrbis works with a range of clients in many different industries, from pharmaceuticals to luxury consumer goods. How does the firm tailor its strategy to fit each client’s needs?

At LexOrbis, we recognise that each client’s IP needs are unique because of their distinct industry, business objectives and competitive landscape. To tailor our approach, we begin by conducting in-depth discussions with clients to thoroughly understand their business goals, IP portfolio and challenges. We then assemble a team with relevant industry expertise, ensuring a deep understanding of the client’s sector and IP complexities. 

This enables us to develop a customised IP strategy aligned with the client’s goals, considering factors like patent landscape, competition and market trends. By adopting a client-centric and industry-focused approach, we deliver effective IP solutions that drive business success and protect our clients’ valuable assets.

What are the key characteristics of a strong intangible asset valuation strategy?

A strong intangible asset valuation strategy should integrate several key characteristics to ensure accuracy and reliability. First, it involves a comprehensive assessment of the asset’s nature, purpose and impact on the business. Employing a market approach by comparing the asset to others that are similar helps to establish a benchmark value. Understanding legal and regulatory aspects of the asset, assessing associated risks and consulting with valuation experts ensures that the valuation reflects industry standards and best practices. Additionally, evaluating past performance and prospects, maintaining thorough documentation and regularly updating the valuation in response to market changes are crucial for maintaining the accuracy and relevance of the valuation.