It is rare that a counterfeit is manufactured in the same geographical region in which it is sold. Components will often be sourced and assembled across the globe, reason for which brands are increasingly turning to supply chains and Customs to have an overview of the process and track down fake goods before they make it online. Customs and

border control going forward will continue to play a vital role in tracking down and stopping the inflow of counterfeits, but the key for in-house counsel remains to be able to work efficiently both with them and supply chain teams in order to cut off the issue at its root.

• Explore the concept of ‘cradle to grave’ and of potential techniques to track products from its early stages through to delivery in order to reduce the entrance of fake goods in the market
• Assess rules and laws across different geographical locations to better tailor your working strategy with Customs and supply chains
• Discover strategies to efficiently communicate with Customs and supply chains, and initiatives to improve collaboration and slow the generation and dissemination of fake goods early before they hit online marketplaces

The patent and trademark trolls landscape is an increasingly complex and sophisticated one, and one that necessitates a solid strategy to combat. Striking a balance between protection

1:1 BUSINESS MEETINGS

4

Global IP Exchange US 2025

and warding off bad actors is key with respect to two proposed and highly divisive bills, the Patent Eligibility Restoration Act (PERA) and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. While designed to strengthen IP protections, detractors assert that these acts would have the opposite effect by empowering trolls and making it harder to invalidate overly broad patents.

• Discuss the impact of the PERA and PREVAIL Act in order to adjust your protection strategy accordingly
• Explore the possibility of proactive and defensive tactics, including defensive patent filings and pre-emptive legal actions, to stay ahead of the game
• Learn what others have done to defend their business from bad actors

A brand-new format for the 2025 Global IP Exchange US, Focus Rooms aim to offer a more niche, personalised angle to your challenges. Before the Exchange, you can opt to submit a problem you are currently facing that you do not see on the agenda – fellow peers will then be invited to gather around and discuss off-the-cuff solutions, sharing expertise and fresh ideas that have the potential to benefit all.

In the highly competitive and regulated landscape of pharmaceuticals, striking a balance between the regulatory team’s communications with the FDA and the IP team’s filed patent can often lead to tension internally and a risk of non-compliance. This misalignment can also cause delays and missed opportunities, especially in such a fast-paced industry where timing is of the essence. Join this session to unpack this tension between internal teams, and what strategies can be employed to ensure a greater harmonization between IP and regulatory objectives.

• Discover the impact of fostering clear communication and action between teams, such as joint risk assessment, to eliminate any miscommunication and move forward together
• Hone in on the importance of early alignment from a team and business point of view in order to develop integrated strategies that benefit all
• Explore the impact of mutual trainings and workshops to improve understanding of each other’s functions and foster trust and communication

Patents and trademarks are viewed as mere protection, without much capacity for profit. In the current economic climate, this can reflect badly on the IP department, which is seen as a cost department. But increasingly, there have been efforts to monetize IP assets in an effort to bring IP to the forefront as a valuable advantage to the business. However, this strategy can also be challenging – the changing nature of the market means that an asset can quickly have its worth reduced, resulting in further challenges. It is one that requires careful consideration and an understanding of IP-backed financing in order to mitigate risk for the business.

• Explore and contrast the different possible streams through which IP assets can generate revenue, from licensing to creating spin-out companies
• Learn to uncover and understand the value of your portfolio and to prioritise patents according to revenue potential
• Weigh in on the benefits of generating revenue with IP assets to raise awareness around the value of IP and its worth throughout the company

Brienne Terril

Senior Director and Senior Managing Counsel, Co-Head of IP Legal
BNY

See Bio

In-house counsel working in pharmaceuticals and biotech encounter rather unique challenges when it comes to clinical trial disclosures. The question remains as to whether patent applications should be filed before the company starts the trial, or only once the trial has been completed, and results have been received and evaluated. While the former option risks the patent being rejected without the necessary data to support the invention, the latter means details of the trial could enter the public domain or that another company pre-publishes something similar. It is of the upmost importance in this sense to ensure patent strategy is as efficient as possible in order to balance the timing and ensure the patent is granted.

• Discover the worth of filing provisional patent applications early in the development process to establish an early priority date
• Weigh in on the risks and advantages of different times to file, and the importance of assessing each situation on a case by case basis
• Hone in on the importance of a global patent portfolio and of a robust data management system in order to coordinate patent filings based on clinical trial locations, market potential and regulatory timelines