MOVERS & SHAKERS
Who's hiring and who's moving
INTA elects new president and officers
The International Trademark Association (INTA) has elected Jomarie Fredericks as its 2023 president and chair of its board of directors.
Fredericks will assume her one-year term on January 1, 2023, succeeding Zeeger Vink, intellectual property director at MF Brands Group, based in Geneva, Switzerland.
Vink convened a presidential task force on IP reporting for brands, oversaw the publication INTA’s report on the “Taxation of Trademarks and Complementary Rights” in Europe, and led the association as it hosted the first in-person annual meeting in two years, in Washington, DC, in May 2022.
Commenting on her appointment, Fredericks said that she is looking forward to more opportunities for collaboration in the new year, and expressed her admiration for the “rich talent pool at INTA”.
She attended her first INTA annual meeting in 1997 in San Antonio, Texas, USA, and has been a member of the INTA Board of Directors since January 2014,
She said: “Time volunteered to INTA will come back to you tenfold. It’s a great organisation and I am honoured to serve as the 2023 president.”
INTA chief executive Etienne Sanz de Acedo emphasised his gratitude for Frederick’s contributions to the association, noting that: “Jomarie’s commitment to INTA has been demonstrated many times over and she has been a great advocate for international cooperation in intellectual property for more than two decades.”
Fredericks is deputy general counsel, chief IP and brand counsel at Rotary International, a global charitable association.
“Time volunteered to INTA will come back to you tenfold. It’s a great organisation and I am honoured to serve as the 2023 president.”
Jomarie Fredericks, Rotary International
In this role, Fredericks leads a team of experienced professionals who are responsible for all trademark, copyright, licensing, and domain name work for Rotary International, globally. She is based in Evanston, Illinois.
With INTA, she serves on the executive committee of the board and is chair of the planning committee. During her tenure as an association volunteer, she has also served on the In-House Practitioners Committee, Legislation and Regulations Committee, and the Public and Media Relations Committee.
The board elected Fredericks and the 2023 INTA officers during its quarterly board meeting, held on November 15, during the association’s 2022 leadership meeting in Miami, Florida. With more than 1,600 registrants, this is the largest leadership meeting in the association’s history. The meeting concluded on November 18.
The 2023 officers are:
- President: Jomarie Fredericks (Rotary International, US)
- President elect: Dana Northcott (Amazon.com, US)
- Vice president: Elisabeth Bradley (Bristol-Myers Squibb Company, US)
- Vice president: Deborah Hampton (The Chemours Company FC, US)
- Treasurer: Louis Chan (UL International, Singapore)
- Secretary: Daniel Zohny (Fédération Internationale de Football Association (FIFA), Switzerland)
CIPA elects first Asian president
UK and European patent attorney Daniel Chew has been elected as the first Asian president of the Chartered Institute of Patent Attorneys (CIPA).
The mobile and telecoms expert was elected at CIPA’s 140th annual general meeting on November 2 and will begin his term on January 1, 2023.
Chew, who is also partner and head of the Asia Group at Haseltine Lake Kempner (HLK), will succeed current CIPA president Alasdair Poore. Council member Matt Dixon was elected as vice-president.
Chew called his appointment a “historic step forward” for CIPA.
“I am very proud to become the institute’s first Asian president. As CIPA president I will promote the excellence of the UK IP professions as well as our highly-developed and sophisticated IP ecosystem and litigation fora.
“I’ve been lucky enough to travel the world whilst working in IP, and will be talking to my extensive network about the values of the UK’s IP system,” said Chew, who is also a leading member of CIPA’s International Liaison Committee (ILC) and member of the CIPA Council.
UPC ‘top priority’
His top priority as president will be to promote UK patent attorneys’ rights of representation at the Unified Patent Court, scheduled for launch on April 1 next year.
His other priorities will be continuing to support the ILC, strengthening bonds with global IP organisations, and conveying the institute’s positions on new free trade agreements and their effect on IP.
“I’ve been lucky enough to travel the world whilst working in IP, and will be talking to my extensive network about the values of the UK’s IP system.”
Daniel Chew, Haseltine Lake Kempner
The incoming president encouraged more members, particularly younger members and members in industry, to get involved in CIPA’s committees and to support regional meetings.
He said: “CIPA is building on events and socials across the UK to ensure members can connect and collaborate outside of London. There is a new social event in Cambridge taking place on November 9, 2022, and we hope those nearby will join us for networking and a drink or two.”
Diversity up for discussion
Chew also said diversity and inclusion (D&I) was a priority “close to his heart”.
“Representation matters,” he said. “CIPA has made good progress in recent times on diversity and inclusion, both through its support of IP Inclusive and the work of its new D&I Committee. But there is a lot of work still to be done to attract women and people from ethnic minority groups into the profession.
“As part of my role, I will be discussing this issue with members to ensure that they understand CIPA’s commitment to driving equality, diversity and inclusivity.”
Baker McKenzie appoints Asia Pacific chair
Baker McKenzie has appointed Hong Kong-based IP partner Shih Yann Loo to the role of Asia Pacific chair, in addition to his continuing role as global executive committee member.
Shih Yann, who took up the new position on October 21 at the conclusion of the firm’s annual meeting in Singapore, succeeded Michael Wong, who has returned to practice in Taipei.
Shih Yann joined the firm’s Hong Kong office in 1993 and has served in several leadership positions in the firm.
This has included being part of the management team that led the establishment of Baker McKenzie’s office in Shanghai.
He also served on the committee that oversees Baker McKenzie’s offices and businesses across eight jurisdictions in the Asia Pacific region.
During his career, Shih Yann has led the firm’s IP group in cross-border litigation and enforcement in Hong Kong and mainland China.
Commenting on Shih Yann’s appointment, Milton Cheng, Baker McKenzie’s global chair, said: “I am delighted to welcome Shih Yann to his new role as Asia Pacific chair. Over the past two years, Shih Yann has contributed significantly towards advancing our firm’s strategy as a global executive committee member.
“Baker McKenzie has supported our clients through many economic cycles and supported them in capitalising on the opportunities that this region offers.”
Shih Yann Loo, Baker McKenzie
“I am confident that Shih Yann will continue to drive our firm’s growth in Asia Pacific and collaborate with other executive committee members to address the needs of our clients and our people around the world.
“I would also like to thank Michael for his leadership and contributions to our executive committee over the past four years as we successfully navigated through a period that has seen much uncertainty, challenge and change.“
Commenting on the new role, Shih Yann said that the appointment was a great privilege.
“As businesses ride through this period of economic uncertainty, they will be re-evaluating their plans in strategic areas such as digital transformation, supply chains, energy transition, sustainability, workforce redesign, and strategic investments to ensure they can adapt to the new macroeconomic landscape,” he said.
He added: “Having served our clients in the region for 60 years since we opened our first office in Manila, Baker McKenzie has supported our clients through many economic cycles and supported them in capitalising on the opportunities that this region offers.”
Norton Rose Fulbright appoints US head of IP deals
Norton Rose Fulbright has announced that partner Eagle Robinson will become its US head of IP transactions and patent prosecution.
Robinson succeeds Mark Wilson, who had served in this leadership role for more than six years and will be based in the firm’s Austin office.
Jeff Cody, Norton Rose Fulbright’s US managing partner, said: “Eagle has been outstanding in guiding our innovation committee, so we wanted to expand his leadership responsibilities within the firm.
“We believe that Eagle’s emphasis on innovative solutions and superior service will benefit our IP transactions and patent prosecution team and its clients.”
Robinson’s practice covers both patent portfolio development and post-issuance patent validity trials before the Patent Trial and Appeal Board (PTAB) on behalf of both patent owners and petitioners.
His transactional work includes negotiating joint-development agreements and patent licences, as well as conducting IP due diligence in connection with business investments and acquisitions.
“With complementary experience in patent prosecution, patent validity proceedings and IP transactions, this team is uniquely positioned to obtain, defend and leverage IP assets in service of our clients’ business needs.”
Eagle Robinson, Norton Rose Fulbright
Tim Kenny, US co-head of IP, alongside Jim Repass, said: “Eagle uses his legal insights and technology experience to secure and defend IP assets for clients ranging from leading corporations to aspiring startups.
“His experience and collaborative leadership style will allow for a smooth transition from Mark, who served the team well over many years and strengthened the team during his tenure.”
Felicia Boyd, US head of IP brands, said: “I look forward to working with Eagle as a fellow IP team leader, as I have appreciated his business solution-focused approach to client service and have valued his contributions in our collaboration.”
Commenting on his appointment, Robinson said: “I am honoured and excited to lead our IP transactions and patent prosecution team.
“With complementary experience in patent prosecution, patent validity proceedings and IP transactions, this team is uniquely positioned to obtain, defend and leverage IP assets in service of our clients’ business needs.”
Morrison Foerster signs up 36-lawyer litigation boutique
California-based litigation firm Durie Tangri is to join Morrison Foerster, strengthening Morrison Foerster’s technology and life sciences practices.
The agreement, effective January 1, 2023, will see an anticipated 36 lawyers, including 12 partners, leave Durie Tangri to join the global firm.
Durie Tangri’s specialist trial practices represent clients in diverse areas of complex litigation, including IP (patent, trademark, and copyright), professional liability, privacy, white-collar crime and investigations, contract and commercial matters, and class actions, as well as appellate matters.
Recent notable representations over 2021 to 2022 include a defence verdict for Activision Blizzard in a copyright case over its blockbuster game “Call of Duty Black Ops 4”; a defence verdict for Redbubble in a copyright and trademark infringement case brought by Atari; and a defence verdict in a patent case for Aptiv over USB technology.
“We are thrilled to welcome the Durie Tangri team to Morrison Foerster,” said Eric McCrath, chair of Morrison Foerster. “Their stellar IP, complex civil litigation and trial law capabilities will add significant strength and talent to our ranks on the West Coast. Our shared commitment to serving clients on the forefront of technology and life sciences, while staying true to our values, in particular our commitment to diversity and inclusion, make this the perfect match for our firm.”
Durie Tangri was co-founded in San Francisco in 2009 by Daralyn Durie, Ragesh Tangri, Mark Lemley, and Joseph Gratz, among others. In just over a decade, Durie Tangri has seen significant growth and expanded its client base and capabilities, opening a second office in Los Angeles in 2018.
“Their stellar IP, complex civil litigation and trial law capabilities will add significant strength and talent to our ranks on the West Coast.”
Eric McCrath, Morrison Foerster
“Providing access to Morrison Foerster’s global platform will be transformational for our lawyers’ ability to grow their practices and is a natural next step in our evolution,” said Durie.
“Morrison Foerster’s deep roots in the Bay Area, continued tradition of leadership in the tech and life sciences sectors, coupled with its well-respected bench of IP lawyers, and premier litigation department all make MoFo the ideal fit for us. We look forward to carrying on its tradition of trial excellence.”
Tangri added: “We are proud of what we have built and achieved in the last several years at Durie Tangri. We look forward to bringing our next generation of diverse trial talent and shared values to the firm, and focusing on developing the best trial teams for clients across MoFo’s global platform and scale.”
In the last five years, Morrison Foerster lawyers have litigated more than 300 patent disputes in the most active district courts in the US, including the Eastern and Western Districts of Texas, the District of Delaware, and the Northern and Central Districts of California.
In 2019, Morrison Foerster opened an office in Boston, significantly strengthening its IP capabilities on the East Coast. Earlier this year, the firm opened an office in Austin with an initial focus on advising companies, including emerging growth companies, and investors in the technology, life sciences, and healthcare sectors, on IP litigation and transactional matters.
As part of the opening, IP practitioners Brian Nash and Aaron Fountain joined the firm’s IP Litigation Group.