Global IP Matrix - Issue 1

Northons1975

The Global IP Matrix is a brand new Intellectual property law magazine with a difference. We have designed a less formal looking, impressive and eye-catching publication with the 'off the shelf' appeal that still holds vital up to date literature and features that will keep you wanting to read more.

We have collaborated with two of the world's leading IP Law firms to bring you an IP magazine designed and overseen by lawyers for lawyers.

After spending many years in IP and attending hundreds of conferences all over the world we are very aware of our audience and their needs so we are confident that this new publication will supply you with the right content and keep you interested.

Regular content will consist of:

• Interview feature or featured articles
• Independent columnists
• Q&A's
• Law firm profiles
• Movers and shakers
+ much more

www.gipmatrix.com

1


CONTENTS

Page 6

Transshipment of goods in Malaysia constitutes

infringing use of a registered trademark.

Clara C.F.Yip, of MarQonsult IP - Malysia

Page 9

The law on ‘grey’ market goods.

Lisa Lovell, CEO of Brand Enforcement UK - South

Shields UK

Page 12

It’s all in the mapping

Gabriela Bobben, Partner at Eproint - Costa Rica

Page 16

Untangle domain name management

Bart Mortelmans, general manager of bNamed.net -

Belgium

Page 21

Injunction questioned and waived

Vladimir Biriulin, Partner at Gorodissky & Partners -

Russia

We are extremely delighted that you have

picked up a copy of our new publication “The

Global IP Matrix”. Thank You.

We are confident that you will enjoy our first

issue, as we are confident you will enjoy the

issues that follow. Great care has been taken

to not limit our topics to just one niche area

of intellectual property, this ensures we have

something interesting for everyone that works

in the area of IP.

Page 24

Renewed patent litigation tips

Irina Ozolina, Senior Partner at A.Zalesov & Partrners

- Russia

Page 28

The art of patent busting

Dean Parry, Technical Director at Patent Seekers Ltd –

Wales, UK

Page 32

Patents in the up and coming technology world

Doris Spielthenner, General Manager at Practice Insight

– Munich, Germany

Page 38

Why you should make your IP registration with ARIPO

Susan Mwiti, Documentations and communications

officer at ARIPO, Zimbabwe

The Global IP Matrix magazine has a generic

outlook on IP as a whole and gives you, the IP

Lawyer and IP business owners a platform to

educate the global IP community on the raw,

uncut, undiluted, educational editorial content

from ground level with expert local knowledge,

by IP experts in this vast field internationally.

Our publication is heavily overseen by some

of the worlds most respected IP law firms,

to give you, the reader confidence that we

are producing the right content to keep you

wanting more.

If you are interested in keeping up to date with

IP news from experts in this field (You the IP

lawyers and IP business owners) then please

be sure to join our mailing list, for the latest

news and updates.

Carlos Northon CEO & Founder

Northon’s Media PR & Marketing Ltd

Carlos Northon

CEO & Founder Northon’s Media PR & Marketing LTD

carlos@northonsprmarketing.com

Elvin Hassan

Copywriter & Editor

Global IP Matrix

Info@northonsprmarketing.com

Craig Barber

Head of design

Global IP Matrix

info@northonsprmarketing.com

EDITORIAL BOARD OF DIRECTORS

Gabriela Bodden

Partner at Eproint

Global IP Matrix editorial board director

Afamefuna Francis Nwokedi

Principle counsel &

Group head Stillwaters

Global IP Matrix editorial board director

2 www.gipmatrix.com www.gipmatrix.com

3


The ECTA Conference will deal with the latest developments in

Trade Mark, Copyright and Design law, and will offer optimal

networking opportunities with friends and colleagues.

www.ecta.eu

4 www.gipmatrix.com www.gipmatrix.com

5


TRANSSHIPMENT OF GOODS IN MALAYSIA CONSTITUTES

INFRINGING USE OF A

REGISTERED MARK!

‘Clara C.F.Yip,

MarQonsult IP

discusses a recently

reported case

A recently reported case of Philip Morris Brand

Sarl v Goodness for Import & Export & Ors

[2018] 7 MLJ 350 (High Court, Kuala Lumpur)

affirms the position that the owner of goods

bearing an infringing trademark, which have

never left a Free Trade Zone in Malaysia (i.e.

the goods have never been put on the local

market), may still be held liable for trademark

infringement under Section 38(1)(a) of the

Trade Marks Act 1976 (“TMA”).

In this case, the 1st defendant shipped 12

containers of goods from Vietnam to Egypt

with transshipment in Malaysia. While the

goods were at Klang Port, the Royal Malaysian

Customs Department (RMCD) seized 10 out

of these 12 containers due to a false customs

declaration that said containers contained

‘Omani Marble’ cigarettes when in fact these

contained MALIMBO brand cigarettes.

Following this seizure, the Plaintiff filed an

action against the defendants for infringement

of their MARLBORO trademarks on the basis

of 13 of their 28 registrations in Class 34 in

Malaysia, and for passing-off MALIMBO

cigarettes as MARLBORO cigarettes.

The learned Judge referred to the case of

Tohtonku Sdn Bhd v Superace (M) Sdn

Bhd [1992] 2 MLJ 63 at p 65, in reiterating

that for a Plaintiff to succeed in a trademark

infringement action, the Plaintiff has to prove

that all 5 elements of infringement under

Section 38(1)(a) have been fulfilled, namely

that:

a) The defendant is neither the registered

proprietor nor the registered user of the

trademark;

b) The defendant used a mark identical

with or so nearly resembling the plaintiff ’s

registered trademarks as is likely to deceive

or cause confusion;

c) The defendant was using the offending

mark in the course of trade;

d) The defendant was using the offending

mark in relation to goods or services within

the scope of the registration; and

e) The defendant used the offending mark in

such a manner as to render the use likely to

be taken either as being used as a

trademark or as importing a reference

to the registered user or to their goods or

services.

Clara C.F.Yip, Founder of MarQonsult IP

www.marqonsult.com

Confusingly similar

trademarks

On the question of whether the trademark

MALIMBO and the 13 MALBORO trademarks

are confusingly similar, the learned Judge had

no difficulty deciding in the affirmative on

account that the trademark MALIMBO had

incorporated the essential features (namely,

roof devices, roof line device and roof device

variations) of the 13 MALBORO trademarks,

and used the same red, white and black colors.

In addition, both words are structurally

identical with the same syllables of ‘MA’ and

‘O’ and both marks shared similar positioning

of words, arrangement and get-up, thereby

giving a similar overall impression.

Defendant argues goods were

not imported into & sold in

Malaysia

A critical issue was whether the 1st defendant’s

transshipment of 10 containers of MALIMBO

cigarettes was tantamount to “use in Malaysia”

and whether such use could be considered as

use “in the course of trade”. The 1st defendant

argued that this was not the case since the

MALIMBO cigarettes were NOT imported

into and sold in Malaysia, the goods having

been kept in said containers and the containers

having remained in a Free Trade Zone up

until the time of seizure. To support their

contention, the 1st defendant had relied on

amongst others, other provisions in Part IVA

of the TMA dealing exclusively with Border

Measures which defined the meaning of ‘goods

in transit’ and which exempted ‘goods in

transit’ from seizure.

The learned Judge disagreed and held that:

firstly, the Border Measures provisions could

not be used to interpret the word ‘use’ in

Section 38(1) since those provisions apply only

to Part IVA of the TMA. Instead ‘use’ had to

be interpreted by reference to Sections 3(2)(a)

and (b) of the TMA as in the case of Doretti

Resources Sdn Bhd v Filters Marketing Sdn

Bhd & Ors [2017] MLJU 836 wherein the

Court had considered the following 4 ways in

which a mark may be ‘used’ in the course of

trade:

1) The mark is represented in print or visual

form [in s.3(2)(a)TMA]

2) The mark is used ‘upon’ goods [s.3(2)(b)

TMA]

3) The mark is used ‘in physical’ relation to

goods [s.3(2)(b) TMA]

4) The mark is used in ‘other relation to’ goods

[s.3(2)(b) TMA]

There was clearly ‘use’ of the trademark

MALIMBO as it is represented in ‘print or

visual form’ on the MALIMBO cigarettes

within the meaning of Section 3(2)(a) and it

is used ‘upon’ MALIMBO cigarettes in the 10

containers, per Section 3(2)(b).

Secondly, the ‘use’ of the trademark

MALIMBO ‘upon’ MALIMBO cigarettes

in the 10 containers is in fact in Malaysian

territory. In arriving at this conclusion, the

learned Judge referred to and clarified Section

4 of the Free Zones Act 1990 (“FZA”) which

provided that subject to the FZA and other

prohibition by law, goods or services may, inter

alia, be brought into or provided in a Free Zone

without payment of any duty or tax. Drawing

parallels from an earlier High Court decision

in Philip Morris Products SA v Ong Kien Hoe

& Ors [2009] 4 MLJ 727, however, the learned

Judge held that Section 4 does not mean that

the Free Zone is a law-less zone, nor that the

10 containers were not actually in Malaysian

territory. The laws of Malaysia including the

TMA and the tort of passing-off would still

apply in the Free Zone and the Enforcement

Agencies continue to hold jurisdiction over

and in these zones.

Thirdly, on whether the trademark MALIMBO

had been used “in the course of trade”, the

TMA defines this phrase only in relation to

the provision of services but not in relation to

goods. The learned Judge thus provided the

following examples where the mark is deemed

to have been used in the course of trade,

namely:

(i) using the design for branding purposes

irrespective of whether any manufacture

or sale of goods has occurred [Mesuma

Sports Sdn Bhd v Majlis Sukan Negara

[2015] 2 MLJ 176 (Court of Appeal)];

(ii) using the mark in respect of a business

conducted for profit, or a business of a

specified nature, or a transaction with

a person for a thing [Mesuma Sports

[2015] 6 MLJ 465 (Federal Court)];

(iii) any dealing with the goods up to the

time of the ultimate sale or delivery to

consumers [Sony Corporation v Olivine

Manufacturing Pte Ltd [1993] AIPR

186];

Based on aforesaid examples, the transshipment

of the 10 containers of the MALIMBO

cigarettes constituted a use in “the course of

trade”. Additionally, the substantial quantity of

the cigarettes indicated that the 1st defendant

had intended to use the mark for the purpose

of trade. As all the remaining elements have

clearly been fulfilled, the transshipment was

held to have infringed the 13 MARLBORO

trademarks under Section 38(1)(a).

‘Passing-off ’

With regard to passing-off, the 1st defendant

was found to have passed off the MALIMBO

cigarettes in the 10 containers as MARLBORO

cigarettes based on the 3 tests of passing off

laid down in the House of Lords decisions in

Erven Warnink [1979] AC 731 and in Reckitt

& Colman Products Ltd v Borden Inc & Ors

[1990] 1 All ER 873, viz:

(a) That the plaintiff is the owner of the

goodwill and reputation in and to the

MARLBORO get up and trade name;

(b) That the 1st defendant has

misrepresented to the public that the

MALIMBO cigarettes were the plaintiff ’s

cigarettes, and the misrepresentation was

made in the course of trade (pursuant

to aforesaid case-law definitions) to

prospective or ultimate consumers of

cigarettes supplied by the 1st defendant;

and

(c) That the plaintiff has proven that it

has suffered or was likely to suffer

damage by reason of the 1st defendant’s

misrepresentation, amongst others due

to the fact that MALIMBO cigarettes

and MARLBORO cigarettes are in direct

competition with one another. Hence,

the Plaintiff ’s loss of sales will be more

readily inferred.

Noteworthy Conclusion!

It is noteworthy that the High Court did not

need to consider Section 71(1) of the Act

in interpreting the meaning of use “in the

course of trade”. Pursuant to this provision,

an application in Malaysia of a trademark for

goods meant for export from Malaysia would

constitute use of the trademark in Malaysia.

However, in the case of Lim Yew Sing v

Hummel International Sports & Leisure A/S

[1996] 3 MLJ 7 the Court of Appeal held that

for the purpose of determining confusion in

the minds of the Malaysian public, such use

of the trademark in Malaysia i.e. as an export

brand could not be factually equated to the

use of the trademark in the course of trade in

Malaysia because the Malaysian consumers

never saw these goods.

The same principle could have applied in

relation to transshipment of goods since these

goods have not entered the course of trade. In

applying the binding Federal Court decision

in Mesuma Sports on the definition of “in the

course of trade” the High Court has concurred

that the term “in the course of trade” extends

beyond the manufacture of goods in Malaysia,

the import of goods into Malaysia, the offer

to sell and the sale of goods in Malaysia, and

the marketing, promotion or advertisement of

goods in Malaysia.

6 www.gipmatrix.com www.gipmatrix.com

7


Since Grey became

Black and White

Lisa Lovell, CEO of Brand Enforcement UK

www.brandenforcement.co.uk

Lisa Lovell, CEO of Brand

Enforcement UK, delves into

the law on ‘grey’ market goods.

In August 2017, The Supreme Court ruled that

it is a criminal offence to put ‘grey’ market

goods on the market, just as it is for counterfeit

goods. As most of us know, grey or ‘parallel’

goods, refer to the trade of a commodity

through distribution channels that are legal,

but which are unintended by the original

manufacturer or trade mark owner.

Before we look at the impact of the decision

some eight months on from this key decision,

along with our predictions, let’s remind

ourselves of the facts of the case and the law

which the Justices scrutinised.

In a joint appeal from three criminal cases

of R v M, R v C and R v T [2017] UKSC 58,

the Court considered section 92 of the Trade

Marks Act 1994.

The Law

A criminal offence is committed under s92(1)

(b) if with a view to gain for himself or with

intent to cause loss to another, and without the

consent of the trade mark owner, he sells, offers

or exposes for sale goods which bear, or the

packaging of which bears, a sign identical to a

registered trade mark. Section 92 is a remedy

separate from those available for infringement

of the monopoly civil rights that the trade

mark owners have.

The Facts

The defendants were bulk importers and

sellers of goods bearing top fashion brands’

marks, manufactured outside the EU. The

goods were legitimately manufactured with the

marks owners’ permission, but as is the typical

definition of ‘grey’ imports or goods, these

were in excess of the number permitted by the

marks owners, or they were ‘seconds’ or rejects.

The defendants asked the Court to distinguish

grey goods from counterfeit goods. They also

argued that the criminal sanction should

only apply when a mark had been used in

manufacture without the owner’s permission,

unlike here, as all they had done was import

and sell the goods without permission.

8 www.gipmatrix.com

www.gipmatrix.com

9


Evidence

Whatever kind of enforcement a brand owner

is seeking to obtain, it all turns on the evidence.

For any criminal or civil case to stand, the

evidence must be collated correctly. Any

physical evidence obtained must be presented

to the court in the correct manner, along with

the relevant continuity and expert witness

statements. A well evidenced case will make

the prosecution of any civil or criminal matter

easier and will assist in convincing a defendant

to plead guilty in criminal cases or settle in

civil cases.

With this in mind, ideally brand owners

should also seek to show a pattern of behaviour

which is more difficult for a defendant to

“explain away”. In light of this Judgment trade

mark owners should review the agreements

they have in place with their authorised

manufacturers to ensure that they deal with

the issue of grey market” items by having strict

controls over production and explicitly stating

that such goods are not authorised, must not be

sold by the factories and are to be returned to

the brand owner or they should be de-branded

and destroyed.

*BEUK provide a Worldwide Test Purchase

Service covering all evidential needs. See

www.brandenforcement.co.uk

for further information.

The Forecast

We forecast that brands will continue with

their civil enforcement strategies largely the

same as before. However, perhaps reference in

the Cease and Desist letter that under current

UK law the infringer is ‘committing a criminal

offence’ may be a good point to note.

The Future

It’s too early to say what the longer term

impact of the decision is, but our clients are

pleased with the effect of the ruling and brand

owners now have this additional weapon to

apply some further leverage to dealers in their

goods on the grey market. We anticipate that

grey goods will be pursued just as vigorously,

or even more than before. The message is

simple; dealing in grey goods is now as illegal

as dealing in counterfeit goods. It’s as clear as

black and white.

The next question

is; once the UK

leaves the EU, will

we revert to the law

of International

Exhaustion?

The Decision

The Justices disagreed unanimously, rejecting

those arguments, saying that it would be

‘strained and unnatural’ not to extend Section

92(1)(b) to dealing in grey goods. They took

this view because s92(1)(b) concerns situations

where goods, bearing a registered trade mark,

are sold without the owner’s consent, not

just where a registered trade mark is applied

without their permission.

This clarification to the law was of course good

news to trade mark owners since they now

have an additional tool for enforcing their

legitimate rights.

The Impact

Since the decision in August 2017, we have

seen that essentially; not much has changed,

especially with regard to the powers of UK

Border Force which the ruling does not apply

to. Furthermore, since the ruling, albeit UK

Trading Standards could in effect enforce

grey imports in the same way as traditional

counterfeits, the likelihood (and the reality)

is that, without additional manpower or

resources, they are still as under-manned,

under-resourced and have more pressing

priorities than before.

The most successful form of action for

brand owners in such circumstances is

civil enforcement, which is often more

advantageous than criminal enforcement for a

number of reasons;

Criminal Enforcement

- It is unlikely the brand will obtain the

assistance of UK law enforcement and therefore

it will be unlikely a criminal prosecution will

be brought on behalf of the brand owner;

- In successful private criminal prosecutions,

the infringers will receive a criminal conviction

but it may be difficult for brand owners to know

whether the conviction is being or should be

enforced;

- The standard of proof for a criminal action is

higher than it is for civil (beyond all reasonable

doubt v balance of probabilities);

- The brand may have to pay out before being

refunded by Central Funds and if the case fails

will be liable for the cost of the trial.

Civil Enforcement

- Infringers will obtain an injunction against

them which can be easily enforced by the

brand;

- The standard of proof for a civil action is lower

than it is for criminal (beyond all reasonable

doubt v balance of probabilities);

- The Directors of the company can be sued as

well as the company itself;

- Costs and damages will be awarded to the

brand which will reduce the brand owner’s

financial liability;

- Any funds received from civil enforcement

can provide the monetary means for further

action.

10 www.gipmatrix.com www.gipmatrix.com

11


IT´S ALL IN

THE MAPPING

‘Gabriela Bodden

of Eproint

explains the

issues faced by IP

Practitioners in

the Caribbean’

The IP world faces challenges and the

operation of IP infringers is perfected

each day! Anti-counterfeiting is

precisely one of the main obstacles IP

rights owners and practitioners face in

Latin America and the Caribbean.

What makes the

challenges faced,

different to other

regions?

Generally the Caribbean is classified as a

´developing region´ with a unique cultural

diversity, idiosyncrasy and a magnificent

geographical location. It is precisely the history

of its people, in addition to the above factors,

that make IP discussions such a sensitive

matter within this region of the world.

The challenges the Caribbean faces are very

different from those faced by other regions

around the world; however, the solution to

Gabriela Bodden, Partner at Eproint

www.eproint.com

this lies in the adoption of equal or similar

remedies as those applicable in advanced

nations.

Consumers worldwide have become more

sophisticated, demanding and are willing to pay

a higher price for distinctive and specialised

products and services. The Caribbean people

have acquired a taste for excellence and this

in turn provides an important market for

international companies wishing to expand to

the region.

Over 70% of companies’ assets are intangible

making IP rights holders focus on this shift

and in the protection of their IP rights in the

Caribbean.

12 www.gipmatrix.com www.gipmatrix.com

13


Legislation in the

Caribbean

Legislation is not uniform in the Caribbean, and

the Caricom has not focused on creating such,

therefore each country is slowly developing

their legislation, in some, it is taking longer

than anticipated, in others although modern,

it is still not up to international standards.

Sadly, the concept of ´modern IP legislation´

is inexistent in numerous Caribbean islands

and therefore the difference in legislation is

palpable from one jurisdiction to another.

Islands like Jamaica, Trinidad, Dominican

Republic, Cuba, Barbados and St. Lucia in

the past years have enacted new trade mark

legislation and this is definitely an attraction

to foreign investment and in the promotion

of the registration of trademark rights. In

contrast, Guyana is today applying the United

Kingdom Copyright Act of 1956 and since

2003 the Copyright Bill has not been enacted.

Unfortunately in 2013 (thirteen years later)

Facing the odds

Proper protection of IP rights implies a

difference between the failure and success of

a company. IP has become such an important

topic that rights holders are fully aware of

the implications of not having proper legal

representation and this in hand with the influx

of the laws in the Caribbean demands proper

care.

Proper continuous training of the Registry

personnel, who must deliver the service

promised within the legislation, is also

of importance. Sadly, there is still much

needed training and this is where the hiring

of knowledgeable professionals is vital

(professionals with Masters Degrees in

Intellectual Property, with years of expertise,

directly in synch with the IP world and that

are capable of understanding the IP process as

such is vital).

Enforcement of laws &

training for Customs

officials

The enforcement of laws is a major issue, as

Customs personnel require adequate training.

Training is suggested within Government but

also on the part of IP rights holders in order

to grant customs officials the knowledge

to empower them in the recognition and

differentiation of counterfeit goods from their

original and authentic counterparts.

It is also important to note that parallel

imports are not illegal in most islands;

therefore, exclusive distributors are faced with

a problematic situation out of which they

find it difficult to recover. This is where IP

rights holders must focus and visit Customs

in different islands and train them as to what

their original goods must look like, sharpening

their knowledge of the products and keeping a

watchful eye against counterfeiting.

DOMAINS

the 2003 Copyright Bill is still not enacted and

by the time it is, it will also be outdated. This

goes hand in hand with adequate trademark

protection as many trademarks are also

protected via copyright.

The Cayman Islands for instance has recently

enacted brand new trademark legislation and

no longer provides for the filing of trademarks

based on registrations successfully completed

in the United Kingdom. This too is the case of

Antigua and BVI.

Although modern laws are not the norm in

the Caribbean it is clear that more and more

islands are recognising the importance of

affording adequate protection to IP rights and

eventually promoting the enacting of similar

legislation in other islands.

In tandem, with proper training of the

IPO personnel, adequate and updated IP

legislation, proper Customs Authorities border

protection (aimed to prevent the importation

of counterfeit goods) and the possibility of

Customs trademark proprietor database

registrations (that will enable Customs to

ascertain the contact details of trademark

rights holders or representatives in a particular

territory), I also strongly suggest the creation

of a specialised Intellectual Property Tribunal

in major jurisdictions where the volume of

cases justifies it. Such a judicial body would in

theory directly resolve on IP related matters.

Planned Mapping as a

solution

Most IP rights holders certainly know the

countries of origin of counterfeit goods.

Planned mapping (as to the origin of such

goods) can be made in advance if coordinated

with Customs authorities in the country of

origin in a way that the goods are ´´tracked´

throughout their entire route and finally

intercepted upon arrival to the destination

country. Such actions should also motivate

legislators to enact modern laws with

severe penal and monetary consequences

for infringers, because counterfeiting is a

crime that originates in the mapping route of

counterfeited goods.

14 www.gipmatrix.com www.gipmatrix.com

15


Untangle domain

name management

As you are probably already

aware, simply registering

your trademark is not

enough to protect it online.

Bart Mortelmans (general

manager of bNamed.

net) discussed with us the

importance of domain name

registrations to protect your

online intellectual property.

He also tells us about what

can be done to get the

maximum out of this.

He has a clear vision on this: “We have seen

domain names become more and more

important over the last decades, turning

into an unignorable part of the protection of

Intellectual Property. Our mission is to provide

the level of support you would be accustomed

to regarding IP-protection, but at domain

name level pricing.”

One of the problems you will certainly be

confronted with while protecting your IP

online is to decide where to protect and

where not. Bart: “A couple of years ago, many

of our clients requested their trademark to

be registered under every single domain

name extension. At that time, that meant all

country code extensions and just a few generic

extensions like .com, .net and .org. Since the

launch of the so called ‘new gTLD’s’, that is no

longer feasible.”

Country Code

extensions

It is not always necessary to register all country

code extensions; however, country code

extensions still play a very important role.

People can be chauvinistic regarding domain

names. The Singaporese assume a domain

name will end in .sg, the Germans assume

.de and the Portugese .pt. In practice, when

Bart Mortelmans, General Manager of Bnamed

www.bnamed.net

someone doesn’t know the exact address of a

website, they will first try to find the website

under their own country code. It is therefore

important to target your customers and

take into account your main market and the

country code extension.

So the first thing to do is to protect your brand

under the extensions of the countries you’re

doing business with, or to which you expect

to expand in the future. If you’re active on the

British, Spanish and German market, register

your brand as a .co.uk, .es and .de domain

name. But if your only focus is the Japanese

and Taiwanese market, then those European

country codes will not be relevant for you and

you should first of all make sure you have your

primary market covered. For example; are

you considering expanding your business to

South America? Then do make sure to already

register your brand under the most important

South American extensions.

gTLD’s as an

alternative

So country codes remain important but the so

called ‘new gTLD’s’ can offer a nice alternative.

These ‘new gTLD’s’ such as .shop, .hosting,

.computer, .london, .paris, .berlin, .bank,

.insurance,... were launched a few years ago

and most have been completely enrolled.

Bart: “We must also be honest that most

gTLD’s have only limited popularity. As said

a .de works best for Germany, but if you are

headquartered in Berlin a domain name under

.berlin can be a nice added extra. The same

goes for .london, .paris, .brussels, .nyc,... Other

new gTLDs have found their way to the general

public. The .shop domain is a good example

of this. The next, possibly popular gTLD that

is being launched is .app. There is already

a healthy amount of interest for this, but of

course it always remains to be seen.

According to Bart the ‘new gTLD’s’ can also be a

way to show your core business. If you’re a bank

or insurance company a .bank or .insurance

domain name is a nice extra. It’s immediately

clear what services you’re offering. Moreover

before you can register your name under .bank

or .insurance, you need to run through a whole

registration process so if you register your

name under those extensions, it also shows

you’re trustworthy. Obviously bNamed can

help and assist you every step of the way.”

Protect yourself,

are you sure you are

secure?

Protecting your IP online is important but are

you sure your protection itself is secure?

This can be done via centralising your domain

names with an independent registrar. The

relationship with a web designer can sometimes

blur or you may receive a better offer from

another webhoster. If your domain names are

managed by an independent party you can

switch quickly and you can even combine

different providers for different services, like

webhosting and e-mail. You’ll never have to

worry that your precious intellectual property

(for that’s what domain names are) is taken

hostage because of a dispute regarding an

invoice for that web design that never got off

the ground.

Centralising domain

names

In many companies domain names are

currently registered here and there. This

easily causes things to go wrong. If you miss

a renewal deadline, your domain name can go

offline or can even be lost completely. In many

cases it’s also not clear who has control over the

domain name and who has the correct login

information when an update is needed. As

seen, way too often, names are even registered

in the name of a branch, a local reseller who

now no longer exists or even an ex-employee.

The centralisation of the domain names

solves those problems and is also financially

interesting, because grouping more names, of

course, also means a bigger discount.

Name Server

diversification

Another way to protect yourself and make sure

your domain names keep functioning is name

server diversification.

Bart: “The name servers are the basis of

your domain name. If they don’t function,

nothing does. In the past some major internet

companies, such as Twitter and Spotify, went

offline for a couple of hours because their very

trustworthy name server provider was attacked

by a so called DDoS. The attack wasn’t aimed

directly against Twitter or Spotify but they

were ‘collateral damage’.”

The conclusion is clear: there’s only one way

to make sure you don’t get hurt if your onlineneighbour

is attacked and that’s by combining

different name server services. Bart: “We for

example offer you the possibility by one simple

click to combine our name servers with the

cloud name servers of Google. If you wish you

can also add special anti-DDoS name servers.

16 www.gipmatrix.com www.gipmatrix.com

17


An SSL certificate for

your website needs

to come from your

marketing budget!

Nowadays security is key. Your clients want

to know both you and your website are

trustworthy. Therefore an SSL certificate has

become a bare necessity, especially when your

clients are able to instantly place an order on

your website. bNamed.net has done some extra

research for SSL certificates and discovered

such certificates also bring along a hidden

extra added value; the publicity and customer

trust you’ll gain by using such a certificate.

Although this might seem surprising, this is

exactly why an SSL certificate is also a great

marketing tool.

For instance, the extra publicity you’ll get via

Google. A while ago Google confirmed they’ll

give a higher ranking in the search results to

a website which is secured with SSL than to

the exact same website without a certificate.

Obviously you don’t automatically end up at

the top of the page but it does give your site a

little extra push in the right direction. A higher

ranking means more visibility, thus a higher

click through ratio, which means more people

will end up on your site. All those people are

potential clients, so the more the better.

Extra sense of security

Equally important is the extra sense of security

and confidence such a certificate generates,

especially if you’re using an Extended

Validation (EV) certificate.

Bart: This certificate makes the address bar of

your browser turn green and is an indication

your website can be trusted. It costs a little

more but it’s definitely worth its price given

the extra trust you’ll gain. The perception of

extra security boosts the confidence of your

visitors and stimulates your clients to actually

buy something on your website. In comparison

with a few years ago, it’s now also easier to

obtain an EV certificate while the validation is

still completely accurate.”

Quick registration & easy domain name

portfolio management

.hosting

.jp

.gr

.se

.li

.cr

.it

.com.au

.sg

.ro

.ie

.company

.com.ar

.sk

.co.nz

.bike

.si

.lv

.ch

.dk

.us

. com. br

Domain name specialist

since 1999

.eu

.de

. com

.bank

.fi

.be .net

.shop

and many more...

.brussels

.nl

.fr

.lu

.no

.hr

.ae

.fi .pt

.es

.cz

.lt

.ru

.pl

. uk

Interesting reseller

conditions

Every possible extension

Excellent support

18 www.gipmatrix.com

T: +44 20 3393 4858 info@bNamed.net www.bNamed.net

www.gipmatrix.com

19


“Herbicide

goes bananas”

Vladimir Biriulin, Partner at Gorodissky & Partners

www.gorodissky.com

‘Vladimir Biriulin, Partner at

Gorodissky & Partners’ discusses

a complicated & lengthy case

PATENTS

Injunction questioned

and waived

From the very start, this case of infringement

followed a very ordinary route: a patent for

a herbicide was infringed while the infringer

retaliated by trying to cancel the patent because

it allegedly did not comply with patentability

criteria.

Simultaneously, the patent owner fell out with

one of his former colleagues who had sued

him and sought injunction for the patent.

The injunction was granted and in turn it

became a major obstacle in examining the

patent cancellation case. The case went to

IP court during which it was explained that

an injunction should not come in the way of

examination of the patentability of a patent.

As a result, a number of claims were excluded

from the patent and the infringement was not

proved.

This was a multifaceted case involving several

persons and several courts dragging on from

2015. The conflict started after the court action

which was initiated by JSC August, owner of

patent No 2488999 for infringement of its

patent for a herbicidal composition (Status

Grand) and a method of fighting weeds

(Case No A40-189533/2014). The court suit

was filed to the Moscow Commercial Court

against Zemlyakoff Ltd and sought to forbid

the respondent to produce and market the

herbicide and also stop the procedure of state

registration of that herbicide.

Chamber

of Patent

Disputes

examines

appeal!

As it often happens, the respondent retaliated

by filing an appeal to the patent office seeking

to cancel the patent because it did not

comply with the patentability requirement

‘inventive level’. In its statement of defense

the patent owner, fearing that his patent

would be cancelled submitted an amended

set of claims; drastically narrowing the scope

of the claims. According to the appellant

(Zemlyakoff), the amended claims halted

grounds from under the infringement claims,

which should have led to renunciation of the

court claims against Zemlyakoff, the alleged

infringer. Coincidentally and unrelated to

the above, before the appeal was examined

20 www.gipmatrix.com

www.gipmatrix.com

21


y the Chamber of Patent Disputes, the

representative (physical person) of the patent

owner (JSC August) sued him for non payment

of remuneration for rendered services in a

district court far away from Moscow where

the infringement case was pending. Within

the framework of that remuneration court

case a certain amount of money was claimed,

as well as a preliminary injunction forbidding

the patent office to take any action in respect of

the patent; this was granted on July 20, 2016.

The parties in the conflict also had earlier

signed a security agreement in respect of the

patent. However the owner of the patent did

not register the agreement so it did not come

into effect.

The respondent in the infringement case

(Zemlyakoff) appealed the ruling of the

district court regarding injunctive relief in the

appeal court and managed to obtain a ruling

overriding the ruling of the district court.

The appellant (Zemlyakoff) asked the patent

office to resume consideration of the appeal

concerning cancellation of the patent. However

this did not save the situation, the patent office

did not start examination of the appeal all the

same because neither the law nor regulations

limit the time span during which the appeals

should be examined by the Chamber of Patent

Disputes.

Plaintiff argues that

case wasn’t examined

for long enough!

As a result of that, the patent office suspended

examination of the patent cancellation

case and of amendments to the patent

claims. Furthermore, the respondent in the

infringement case (Zemlyakoff) sued the

patent office (the Chamber of Patent Disputes

is subordinate to it) in the IP court for its

reluctance to consider the patent cancellation

case. Zemlyakoff (the plaintiff in this case)

argued that the patent office did not examine

the patent cancellation case for a long enough

time (about two years) and thus violated his

rights and lawful interests. The patent office

pointed out in its statement of defense that

the ruling on injunction had been issued by

court and it forbade the patent office to take

any action in respect of the patent including

examine cancellation of same. It also ignored

the ruling of the appeal court cancelling the

injunction. The representative of the patent

owner who had previously rendered services to

the patent owner wanted to be engaged in the IP

court procedure as a third person, however the

IP court turned down the petition, explaining

that the conflict concerned observance by the

patent office of the administrative procedure

which relates to the examination of appeals

and was not a case related to the cancellation

of the patent.

The IP Courts take

time limit into

consideration

The IP court pointed out during the hearing

that indeed, the hearing had been scheduled

for October 2015 and since then was put off

multiple times, some of these times on request

of the patent owner. The IP court recognized

that in accordance with the provisions of the

Code of Procedure, interested persons might

apply to court and demand cancellation of

unlawful decisions and actions taken by the

patent office. The IP court referred to the

legal position of the Constitutional Court (No

448-0 of March 10, 2016) according to which

excessive or indefinite terms of examination

of conflicts lead to instability of legal relations

and can create uncertainty. The court rightfully

noted that the absence of time limits set by

law in the administrative proceedings may

endow the patent office with unlimited powers

to decide when a dispute will be considered,

which is inadmissible by virtue of Article 46 of

the Russian Constitution and the Convention

on Human Rights. The Constitutional Court

pointed out in its ruling that other courts had

already pointed out on a number of occasions

that legal regulation was not adequate in that

respect and that performance of functions

of the patent office were not satisfactory.

Following on from that, the time limit was

taken into consideration; consideration of an

administrative case should be determined even

before an appropriate regulation is adopted.

Non-consideration of the dispute within

reasonable time signifies unlawful failure of

the patent office to act. The reasonable term

of consideration of a case should be evaluated

in each particular case from the point of view

of the workload of the patent office and other

objective circumstances. At the time, the

appeal in question had been considered for two

years already. The patent office did not refer to

its workload but stated that an injunction had

been imposed on the patent forbidding the

patent office to take any action in respect of the

patent, including examination of the appeal an

taking a decision on the appeal.

“Injunction

construed too

broadly” says the IP

Court

The IP court confirmed that there was

an injunction imposed on the patent

but Zemlyakoff Ltd appealed the

injunction in the appeal court and

the injunction was cancelled. As

has been mentioned above the

injunction was imposed at the

request of the representative

of the patent owner who did

not pay her and with whom

there was a signed (but not

registered) security interest

agreement in respect of the

patent. The appeal court

noted that the court action,

initiated by the representative

of the patent owner was of proprietary

nature (non-payment of remuneration)

and that application of injunctive relief

could not guarantee fulfilment of monetary

obligation by the patent owner. Besides, the

ban to take any action with regard to the

patent violates the rights of Zemlyakoff Ltd. In

fact, the ban to examine the appeal against the

patent is an additional injunctive measure

and it does not match the purpose of

application of injunctive measures.

Hence, the court came to the conclusion

22 www.gipmatrix.com

that the patent office construed the injunction

too broadly. As a result, the IP court obliged

the patent office to examine the appeal against

the grant of the patent within a reasonable

time period and herewith, the court set the

term of three months to examine the appeal

and report to the court.

Appellant tries to kill

the patent completely!

In pursuance of the IP court judgment,

the patent office (the Chamber of Patent

Disputes) examined the appeal in October

2017. It stated that there were eight claims

in the patent. Inventive level was questioned

by the appellant. The appellant provided 32

sources of information (patents, publications

in magazines, catalogues, even the USSR

inventor’s certificates) to prove that the

invention lacks inventive level. The Chamber

of Patent Disputes stated that the invention

according to Claim 1 may be considered

as evident on the basis of combination of

information from a number of sources. Similar

conclusions were made in respect of some of

the other claims. All in all, there were more

than twenty pages of detailed analysis of the

patent claims and anticipating documents;

this led to the Chamber of Patent Disputes

also concluding that some of the claims of

the invention lacked novelty. The patent

owner tried to acquit himself but failed. He

was compelled to submit amended version of

claims, which satisfied patentability criteria.

The appellant submitted additions to the

appeal trying to kill the patent completely,

however the Chamber of Patent Disputes

preserved the patent with the amended claims.

So, the patent was recognized invalid in part

and a new patent was issued. The appellant

was satisfied because the new claims ruled out

recognition of infringement on his part.

Finally this very long

conflict was brought

to an end!

www.gipmatrix.com

23


RUSSIA:

renewed patent litigation tips

Irina Ozolina, Senior

Partner at A.Zalesov &

Partrners, talks about

renewed patent litigation tips

in Russia and outlines why

you should choose Russian

Courts.

Why choose Russian

courts & what to

consider

Multinational companies more and more often

choose Russian courts to resolve IP disputes.

Here are some statistics: in 2017 the IP

Court as a cassation instance considered

840 infringement cases, 160 of them - with

participation of foreigners; 45 of all the

infringement cases were patent infringement

disputes.

Patent litigation in Russian is fast,

comparatively inexpensive and quite effective.

But there are important particulars to know

before starting a patent litigation in Russia.

First - bifurcated system: infringement and

invalidation grounds are considered separately.

Tips

Still, judges hear reasonable references to prior

art, file prosecution, history argumentation and

position of parties in invalidation procedure.

Second - bad faith behaviour of a patent

owner is put on the judges’ table when judges

consider patent infringement cases; although

courts have never been known to refuse

in patent suits just because patent owners

behaved improperly, recent court decisions

highlight this issue more often as an additional

consideration to other motives of refusal.

Third - courts’ requirements to a claim’s

wording are more formal. Common practice

is now to refuse in a claim aiming to destroy

infringing goods, if there is no evidence, which

goods should be destroyed, where they are and

who is the owner.

Fourth – nobody tried non-infringement suits

to come to the Intellectual Property Court, but

in the first instance they are normally refused.

Last but not the least - compulsory license

claims are intensively discussed, however they

have not come into practice yet. The first case

dates back to 2012 (case No А40-83104/11),

now at least one claim for compulsory license

is pending, but stable court practice is to be

waited for.

Other tips also should not be omitted in patent

strategy.

Patent Litigation

Irina Ozolina, Senior Partner at A.Zalesov & Partrners

www.azalesov.com

Obligatory warning

letter

In July 2017 an obligatory pretrial procedure

was finally set up in case:

- both parties are legal entities or individual

entrepreneurs;

- the dispute is under jurisdiction of

arbitration courts;

- patent owner claims for monetary

compensation or damages.

If the counterparty refused to satisfy claims

amicably or did not respond within 30

days after the letter was sent out, the patent

owner could go to court.

Practice differs, what

exactly should such a

letter comprise

Ruling of the Intellectual Property Court (as

of July 10th, 2017, А41-63873/2016) agreed

with courts of previous instances, that a

suit should strictly stay within the amount

initially indicated in a warning letter. In

another Ruling, (as of August 30th, 2017, A36-

4979/2017), the court said that there is no good

reason to require from a plaintiff to exactly

know the amount of the claim in advance.

The warning letter should point out an

infringement; comprise reference to possibility

of compensation, suggestion to settle the case

and warning that otherwise the sender is going

to court.

Collecting evidence -

to keep the balance

Russia does not have any disclosure. It is not

an omission, it is a principal position: no data

should be easily provided to a competitor

unless required by courts. How to prepare a

case then?

Collecting evidence needs ultimate creativity.

Documents and information may be requested

by an advocate. In the Russian legal system

till now (although it’s going to change in the

near future) any person can represent others

before the courts, with some exceptions. Still,

only advocates have some privileges, and the

privilege to request evidence and information

is one of them.

To compensate for lack of disclosure, the

courts are open to demand evidence from third

parties. Till recently courts demanded evidence

mostly from customs, but hesitated to demand

evidence from other governmental bodies. In

2016 courts started demanding documents

from the registration dossier in the Ministry

of Health (cases А41-22640/2016, А41-

12918/16, А40-197005/16). When demanding

evidence from third parties, courts have to

keep the balance between data protection

rules and patent owner rights. Due to clause

6 article 10 of the Law «On Commercial

Secret», commercial secret regime cannot

be used against protection of other parties’

rights. Additionally, procedural law contains

enough mechanisms to ensure, that sensitive

information of defendants is not disclosed: a

party can file a motion for closing hearings,

as it is done by the defendant in the case А40-

197005/16. Such attitude relies on position of

the Constitutional Court as of March 27, 1996

No 8-П, as of November 11, 2002 No 293-O,

and Plenum of Supreme Arbitration Court as

of October 8, 2012 No 61.

Preliminary

injunctions -

are they real?

Theoretically preliminary injunctions are

available due to part 2 article 1252 of the

Civil Code and article 90 of the Arbitration

Procedural Code, in case of failure to impose

them, it can result in significant losses to the

patent owner or irreparable harm or in the case

of not applying such measures, this can make

the future final court act unenforceable.

To prevent causing irreparable harm to the

plaintiff, the Plenum of the former Supreme

Arbitration Court (Ruling as of October 12,

2006 No 55) says, PI should be targeted to

keep status quo between the parties. Specific

PI should be proportional to the claims

and should ensure the claims. Due to these

requirements preliminary injunctions in

patent cases are in fact not applied by courts.

Here are a number of illustrative cases,

when courts refused to suspend supplies of

presumably infringing pharmaceuticals under

governmental contracts: cases N А41-1841/11

Novartis vs. F-Synthez, А40-30124/15 Pfizer

vs. Pharmasynthez, А40-114689/12-5-1062

Novartis vs. F-Synthez. Such suspension, due

to the courts, doesn’t help to keep status quo

between the parties, since the patent owner

may always require reinstatement of damages,

if it appears that the patent was infringed. At

the same time not fulfilling the obligations

under the contract can put the business

reputation of the defendant under threat and

this is much more difficult to restore.

A threat of

infringement?

Article 1252 of the Civil Code says that a claim

can be filed against actions creating a threat of

infringement. This rule was not applied for a

long time, because basically the Russian law

does not know civil liability for preparations

to infringements. A couple of years ago

the concept of a suit against the threat of

infringement was renewed for professional

discussion due to the revival of the concept

of the so called «preventive suits», initially

dating back to eighties. In 2012, the Federal

Programme «Development of the court

system» suggested to develop the concept of

preventive suits and gave rise to a discussion;

whether a claim against actions creating a

threat of infringement can be considered

as a preventive suit? Since preparations to

patent infringements can be easily traced in

the pharma field; where information about

marketing authorisation and price registration

is publicly available, the concept was tried

recently in some pharma cases: for example,

cases А41-46966/15, А41-85807/2016, and

А40-170151/17. It is interesting that the

court accepted such construction of claims

(to prohibit actions creating a threat of

infringement) and satisfied them only in the

second case, though in the last case another

court in similar circumstances considered this

construction as unacceptable and refused the

claims. By the time this article is published

the last two cases should come through the

Intellectual Property Court as a cassation

instance, which should say its respective

opinion, whether this concept is going to

survive or not.

In-court patent

examination - a

«queen of evidence»

Due to the procedural law all evidence has

the same force. Still, in practice an in-court

examination became a «queen of evidence» in

patent disputes.

Particular feature of patent disputes in Russia:

parties can provide opinions of different

experts, but they are not treated as «expert

opinion» in a procedural sense. A truly expert

opinion is one which is made by an expert

nominated by the court. The parties suggest

different candidates, list their credentials,

suggest questions, put money to the deposit

of the court, and after that a judge decides

which expert should be nominated and which

questions should be asked. An expert should

be independent from any of the parties, so

his opinion is paid for by the court for money

previously paid on the deposit, and it should

be very carefully observed, that the expert used

has never provided any payable services to any

of the parties or their representatives. Judges,

who really want to go into case particulars,

nominate a commission of experts: normally

one from each party. Actually, this is the best

way to ensure impartiality and compliance

to adversarial principle, which are the basics

of the Russian procedural law in economical

disputes.

Monetary

compensation

The patentee can claim for damages (and prove

their exact amount) or monetary compensation

(without proving exact amount). Monetary

compensation can be a lump sum (from EURO

140 to EURO 70 000) or a double reasonable

royalty rate. In practice the courts are not too

generous to satisfy monetary claims in large

scales.

Ultimately, there are many other tips and

factors to take into consideration when

starting a patent litigation case in Russia; a

short overview cannot cover them all. What is

important is that Russia is a huge market with

a large capacity; therefore it is very lucrative for

both patentees and their competitors. At the

same time patent litigation in this jurisdiction

has in recent years become very professional

and therefore much more predictable and

is now a proper and balanced tool in the

competition struggle.

24 www.gipmatrix.com www.gipmatrix.com

25


2018 AIPPI World Congress – Cancun

September 23 - 26, 2018

Cancun has so much to offer, from its incredible local cuisine to the natural beauty of

its beaches. It boasts well-preserved archeological history and world-class infrastructure,

along with five-star accommodation and amenities. AIPPI offers you the chance to experience

all this and more at the World Congress from September 23 to 26, 2018. Take advantage

of the Early Bird rate by June 12 to secure a reduced registration rate. We look

forward to joining you where sky meets earth!

The programme boasts a vast range of topics covering the entire field of intellectual property:

PANEL SESSIONS

Pharma Day

• Access to medicines – what’s fair?

• The endgame: patent term extensions and SCPs

• Biosimilar litigation – dissimilar considerations?

• Big Data and Big Pharma

Trademarks/copyright

• Personality rights – it’s all about me ©®

Trademarks

• Use it or lose it – genuine use of trademarks

• Surveying the field – a gold standard for survey evidence

General

• Free Trade Agreements – drivers of IP policy?

• Briefing: hot topics in IP

• Artificial Intelligence – the real IP issues

• Alternatives for enforcement: criminal and administrative proceedings

Patent

• Standard essential patents – maximising value before enforcement

• A means to an end – the doctrine of equivalents

• Harvesting innovation in agriculture – patents and more

• Out of term – provisional and post term enforcement

Copyright

• A balancing act – copyright versus other rights

• Linking into the digital era

LUNCH SESSIONS

Lunch Session 1

• Trademarks, morality and “The Band Who Must Not Be Named”

Lunch Session 2

• Briefing: recent developments in IP5 cooperation

Lunch Session 3

• Blockchain and cryptocurrencies – all you need to know

PLENARY SESSIONS

• Conflicting patent applications

• Partial designs

• Registrability of 3D trademarks

• Joint liability for IP infringement

More information on www.aippi.org

26 www.gipmatrix.com www.gipmatrix.com

27


The Art of

Patent Busting

Specialist global search services for patent attorneys,

universities, technology companies and SME’s

Dean Parry (Technical Director) Patent Seekers Ltd

www.patentseekers.com

“Thousands of patents get

granted every year, but this

doesn’t mean that they all

should have been.”

Mr Dean Parry – Technical Director

at Patent Seekers Ltd for the last 14

years, having been involved in more

than 14,000 searches, for international

patent attorneys both in private

practice, in-house and for major blue

chip companies, discusses the best

approach for breaking patents:

So, what is all this

patent business

about?

Well, a patent in simple terms is an agreement

between governments and inventors (or their

employer). Governments agree to allow

an inventor a monopoly over an invention

(for up to 20 years) in exchange for the full

disclosure of the invention in the form of a

patent application. The scale of the monopoly

is defined by the claims of the patent. If the

patent is given the all clear (granted) by patent

offices, then its owner can licence the invention

or prevent others from manufacturing and

selling it in the countries concerned.

at least reduce its monopoly (if this will allow

the infringement action to be dropped).

Not all patents are

valid

“Thousands of patents get granted every year,

but this doesn’t mean that they all should have

been.” There are many reasons for this:

1) For a patent to be granted, the invention

defined in the claims must be new and

not be obvious to a person skilled in the

technical field. This assessment is made

on a “worldwide” basis. It’s impossible to

check all published data to ascertain this.

2) Patent examiners may have expertise and

excellent search tools to search worldwide

patent and non-patent sources, but they

often have heavy workloads, given the

increasing number of patent applications

each year, and so may have a very limited

time to carry out their searches.

3) Patent examiners primarily tend to search

patents, topping up their searching with

non-patent information. This can leave

a gap in the coverage, as there may be a

lot of potentially relevant information in

technical papers, competitor advertising,

video demos, etc.

4) Patents can be wrongly classified, meaning

that although the patent examiner is

searching in the correct patent classes

there may still be relevant patents that are

missed.

5) Poorly translated patent information can

easily be overlooked.

6) The quality of searching can vary from

one patent examiner to the next and from

one patent office to the next.

Search experts will consider the above in

determining the most effective strategy to use

to attempt to break a patent. The approach

should always be to avoid re-running previous

searches carried out during the prosecution of

the patent (and possibly its family members),

and instead carry out a more focussed search

and/or look in more depth and consider where

better results may be classified.

Where to start when

checking?

The best place to start is to identify if the patent

we are trying to break (known as the “patent in

suit”) has been attacked before and see why the

action failed. This may provide information

on the “new and inventive” element that needs

to be found to break the patent in suit. If the

Patentability/Novelty Search

Infringement/FTO/Clearance

Invalidity/Patent Busting

State of the Art

Patent Mapping/Landscapes

Patent Monitoring

Patent Status

Competitor Analysis

To prevent third parties form manufacturing

and selling an invention a patent infringement

action can be brought about. These are often

seen in the press where one company is

challenging another through the courts, for

example the ongoing legal fight between Apple

and Samsung over patent infringement relating

to their smart phone technologies. This kind

of action can result in damages of millions of

dollars.

This brings us on nicely to the world of patent

busting and why it is needed. When a company

is threatened with patent infringement, the

first course of action should be to question the

validity of the patent being used against them,

to see if the patent can be broken (revoked) or

Tel: +44 (0)1633 816601

Email: mail@patentseekers.com

www.patentseekers.com

28 www.gipmatrix.com www.gipmatrix.com

29


patent hasn’t been attacked before then check

if there are family members which have been,

(patents tend to be in families covering more

than one country).

Also check any correspondence between patent

examiners and the applicant issued during

the examination of the patent in suit from

application to grant. This can give valuable

insight into the patent examiner’s view on

what made the invention new and sufficiently

inventive for a patent to be granted in the first

place, and which would need to be found to

break the patent.

In some instances, it is also possible to look

at the search carried out by patent examiners

to see if there is anything obvious that was

missed, e.g. potentially relevant patent classes

that were not covered for some reason.

Another important check would be to find out

if the patent in suit is entitled to its priority date

as there can be instances where the priority

date is not valid, in which case the filing date

would be the date from which the patent was

valid.

Next consider which of the claims of the patent

in suit appear to relate to the product you are

manufacturing and/or selling, as these will be

the ones that you most likely need to break.

Once the above checks have been made the

next step is to put together a search strategy.

Developing a search

strategy

Patent searching:

A patent search strategy is based around trying

to put together keywords and patent classes

which would most likely find earlier patents

and published patent applications (or “prior

art”) disclosing information that can be used

to challenge the novelty and/or inventiveness

of the patent in suit.

Keywords and patent classes can be identified

by looking at the wording and classes for the

patent in suit and by checking these on its

forward and backward citations (patent in suit

cited against other patents and patents cited

against the patent in suit, respectively).

It’s important to use keywords across various

languages, in particular English, French and

German.

There are various free and commercial patent

databases available to carry out the search.

Many commercial databases now include

machine translations (some good, some bad)

for prior art that was originally published in

Chinese, Japanese, etc.

Non-Patent searching:

There should always be consideration for

non-patent prior art. This may take the form

of searching scientific papers/journals and

looking for products on sale, video demos etc,

depending on the invention covered by the

patent in suit. The big factors to consider for

non-patent prior art is that it must be what

is known as “enabling disclosure” – there

must be enough information to carry out the

invention – and you must be able to determine

the “date of publication”, as it must be proven to

have been published before the effective filing

date of the patent in suit, otherwise it may be

unusable.

Bringing it all

together

Once the search is finished, if you have

found new prior art that discloses all the

technical features of the patent in suit, i.e. it

is “novelty destroying”, there is a good chance

of breaking the patent, or at least limiting

its claims. However, even without novelty

destroying prior art, the patent in suit may still

be vulnerable to an attack on the basis that is

not sufficiently inventive. When challenging

inventiveness, it is possible to combine two or

more prior art documents together if they are

in the same or neighbouring technical fields.

The argument is normally that it would have

been obvious to the skilled person to combine

the documents to arrive at the invention in the

patent in-suit without any inventive activity.

It’s important to check all family members of

patents cited on the patent in suit, in case they

can be combined with the results of the search

to form inventive step arguments. Likewise,

check the citations on any good results found

during the search as these can lead to even

better results.

Also, check the assignee and inventors on any

good results found to see if they have filed any

other patents that may be closer.

Novelty destroying prior art will always be the

strongest attack because it is seen as absolute

(either the invention was new, or it wasn’t). On

the other hand, inventive step arguments can

be subjective (was it obvious to combine prior

inventions or not…?)

To conclude;

Companies need to be aware of the power of

patent busting because not only can it be used

to effectively defend against an infringement

action, it can also be used to end a monopoly

that prevents a company from entering a

market or even to help to determine the

strength/value of your own patents.

When considering carrying out a patent busting

search, it’s important to use a specialist to check

prior prosecutions and statutory searches and

examinations to determine the scope of the

search, the appropriate sources to search and

the best strategy to maximise the chances of

finding key prior art. This process is improved

by maintaining good communication between

the searcher and the attorney, with input from

the end client to agree the best way forward.

30 www.gipmatrix.com www.gipmatrix.com

31


Haptic Feedback –

making digital more physical

Ms Doris Spielthenner, General Manager, Practice Insight

www.practiceinsight.io

Immersion Corp’s

Patents

Coming back to the licensing agreement

between Immersion Corp and Bosch, the

origins of their licensing deal can be seen

through the citation connections between

Bosch’s and Immersion Corp’s patents. Using

Citation Eagle, in 2015-16 we can see three

patent applications from Bosch citing four

patents assigned to Immersion Corp. These

three patent applications were for ‘Control and

Regulation Device’, ‘Layer Arrangement and

Input / Output Device’, and ‘Touch screen with

a haptic detectable orientation element and the

method of manufacturing the same’.

i - Citation connections between Immersion

Corp and Bosch. Source: Citation Eagle

I t

appears, though, that Bosch is not the only

automotive player interested in Immersion

Corp’s technology. The citation connections

between Immersion Corp’s patents and patents

from other automotive players sheds light on

which other automotive players are interested

in Immersion Corp’s patents.

ii - Forward Citations for Immersion Corp’s

patents for past 3 years. Source: Citation Eagle

These automotive companies include Audi,

Honda Motor, Harman International and

Continental Automotive, all of whom have

patents citing Immersion Corp’s patents.

Harman International though, have the

highest amount of citation connections that

cover all Haptic related technologies e.g Haptic

notification systems, Haptic audio delivery

mechanism etc.

Given that the technology can be used in so

many other areas – ideally any application

with a touch interface – the citing companies

for Immersion Corp’s patents are also varied in

terms of industries.

1. Smartphone & Mobile Devices – Apple,

Microsoft, Sony, Koninklijke Philips,

Samsung, Motorola, Panasonic, and LG

Electronics

2. Medical and Healthcare Devices

– Ethicon, Alliqua Biomedical, and

Intuitive Surgical Operations

3. Appliances – BOE Technology and

Electrolux

4. Virtual Reality and Gaming (Display

& Audio) – Oculus, SonicSensory, and

SubPac

5. Semiconductors – Intel

6. Retail – Walmart Stores

Ms Doris Spielthenner,

General Manager of Practice

Insight talks about patents

in the up and coming

technology world.

Haptic feedback,

explained…

Last month, Immersion Corp, a US based

Technology Company that develops touch

feedback technology for mobile, virtual reality,

wearable and gaming applications entered into

a multi-year license agreement with Robert

Bosch GmbH. The license agreement provides

Bosch with access to its patented haptic and

touch feedback technology for automotive

applications. Anyone who follows Bosch’s

R&D would understand their interest in haptic

interfaces, i.e. interfaces with a haptic (pressure

or touch) feedback for touch screens. In the

last few years, Bosch has used this technology

in their product ‘neoSense’. They have also

showcased their new developments at various

trade events stating that this is their vision

of how touch screen interfaces should be in

cars. They are also stating how important it

is to make the touch screen experience as

unobtrusive for drivers as possible.

A few years back, there were many different

visions for how the automobile of the future

would be. Slowly but steadily, these visions

seem to be converging to autonomous and

electric, with some variations in electric such

as hybrid, fuel cell, still being pursued. Overall

it seems that the common agreement is that

the cars of the future will be autonomous. One

other vision that has quickly become visible

in many cars now is a digital control system

interface. Cars have already begun to be built

with control interfaces similar to tablets and

smartphones rather than an interface of analog

controls.

However, a shortcoming of the traditional

touch screens is the lack of touch confirmation

that humans are used to. For example, with

an analog control, your fingers get a sensory

confirmation of a button being pressed or a

dial being turned, whereas with traditional

touch screens work quite differently. However,

Haptic touch screens have been built to give

the user a physical confirmation of an action

being performed on the touch screen. This is

a feature that Bosch has been focussing on for

sometime.

i - Citation connections between Immersion Corp and Bosch. Source: Citation Eagle

ii - Forward Citations for Immersion Corp’s patents for past 3 years. Source: Citation Eagle

32 www.gipmatrix.com www.gipmatrix.com

33


PATENTS | TRADEMARKS | COPYRIGHTS | TRADE SECRETS

With Immersion Corp’s many citations and

the interest from other companies, you can

be sure that the company is actively filing and

monetizing patents (Immersion Corp has been

in the news for quite a few times because of

their infringement lawsuits against Apple,

Fitbit, and others). Immersion Corp is a great

example of a company that a law firm would

want to work with due to their patent activities.

Given the application potential of their

innovation and its future demand, this should

bring with it the opportunity to upsell licensing

deals and increase the monetization of their

patents.

Their US representation is comparatively much

more competitive with three firms fighting for

the top spot, while their Korean representation

shows than more than 96% of their work is

handled by a single law firm.

Filing Analytics shows that ‘Law Firm B’

handles the most of Immersion Corp’s EP

work. When we drill down to see the US case

flow exchange ‘Law Firm B’, we see that there

are three US Law firms working mostly with

‘Law Firm B’.

From these three US law firms, ‘Law Firm 2’

and ‘Law Firm 3’ are the top two law firms that

are representing Immersion Corp in the US.

It is quite probable that Law Firm B is the end

clients ‘Immersion Corp‘, preferred choice for

their EP representation.

This as an example shows that a detailed

analysis of the case flow exchange, such

dependencies and preferences can be clearly

seen when doing a thorough competitive

analysis for a company like Immersion Corp.

46th

Annual Meeting

23-25 September 2018 | Hyatt Regency Hotel | chicago, il

How to target

a company like

Immersion Corp

To target a company like Immersion Corp, it is

important to know which law firms you would

be competing against and where you might

have lesser competition.

As a first step, it’s interesting to see how the case

flows for a company which is being handled.

You can also see in which jurisdictions a

company is more likely to work with new law

firms, and in which jurisdictions a specific law

firm is doing the majority of their patent work.

For example in Filing Analytics, we can see

that the EP representation for Immersion Corp

is mostly done by a German law firm, but that

they also use a few other law firms.

iv - International exchange for ‘Law Firm B’ (EP-US). Source: Filing Analytics

ADVOCATING EFFECTIVE IP RIGHTS | #IPOAM18

REGISTRATION OPENING JUNE 2018 AT WWW.IPO.ORG/AM2018

iii- EP patent application representation for Immersion Corp. Source: Filing Analytics

JOIN YOUR IP COLLEAGUES AT THIS PREMIER EVENT

To start your competitive

or citation analysis, visit

filinganalytics.io

or citationeagle.com

The IPO Annual Meeting offers a mix of educational programs led by

distinguished presenters, as well as committee meetings, exhibit hall,

34

and networking functions.

FOLLOW US!

www.gipmatrix.com www.gipmatrix.com

35


The firm was founded by Joseph Antoine Onambele,

30 years ago, he was later joined by Mary Concilia

Anchang. As Founding and managing

partners they have through their dedication and

hard work built an international bilingual and bi-jurial

Full service law firm, based in Yaoundé Cameroon.

OAA law is proud to be the first Bilingual Law firm in the

Country practicing in both, Civil Law and Common Law jurisdictions.

A full-service corporate law firm, OAA law

serves clients in a diverse range of industries, and has

over the years grown to include coverage of the CEMAC

region and globally. Due to her broad based corporate capabilities,

she represents and assists clients in matters that

include intellectual property filings and litigation, mergers

and acquisitions, telecommunication, mining, real estate,

finance, corporate Law, project finance and joint ventures

in infrastructure. OAA Law delivers high quality and highly

efficient services to its clients. OAA Law is a pioneer Law

firm in Intellectual Property, Corporate Law and Mining Law

in the Region

The firms practice over the years has grown to include coverage

of the CEMAC region and globally. Senior partner

Joseph Antoine Onambele is the past president of the Cameroon

National committee of The International Chamber

of Commerce.(ICC)

Mary Concilia Anchang is the pioneer IP lawyer in the

OAPI region. She is also the pioneer t African female court

member of the International Court of Arbitration, ICC Paris.

She represented her country, Cameroon in this capacity

from 2006-2010. She is the current founding chair of the

African Chamber of Trade & Commerce. (ACC)

OAA Law offers experienced and well travelled attorneys.

Their maturity in legal services has been achieved through

innovation, resilience, research and hard work for clients

across the globe.

Address: Opposite United States & Saudie Arabia Embassies Rosa

Park Avenue-Golf Ntougnou

P.O Box 662 Yaounde-Cameroon.

Tel: +237 222 209 776 / +237 677 581 551

Email: oaalawpartners2@gmail.com / info@oaalaw.cm

website. : www.oaalaw.cm,

Our Partners

The African Chamber of Trade & Commerce (ACC) is an African

based initiative, headquartered in Yaounde-Cameroon, created to

facilitate trade between Africa and her partners around the globe.

ACC provides a platform to visionaries, institutions and investors

within the continent and the Diaspora to better utilize and exploit

Africa’s unqualified socio-cultural and economic potential for

Africa's development and emergence. Our goal is to meet the challenges

exposed to the world by globalization. Today doing business

requires bringing together people from different backgrounds for a

more diversified and dynamic business culture and environment.

« ACC is an innovative private sector business vector, working

through a Federated Network of activities, wherein ; stakeholders,

businesses and institutions trading and investing across Africa are

able to make conscious business decisions based on where, how

and when to undertake competitive business opportunities around

the world, relying on unequivocal information »

ACC works with Commissions : Intellectual Property (IPR & Business

partnerships, Diapora and ICT, Finance and Investment, International

Trade, Commerce, Energy and Environment, Maritime

Security and Trade, Communication, Culture and Ecotourisme,

Education and Welfare, Agriculture,

The ACC platform seeks to consolidate existing and new businesses

through reliable and federated networks to promote inclusive

investment opportunities and competiveness for startups and

SME’s to guarantee that, the UN Sustainable Development Goals

(SDGs) for Africa are met, considering that Structural adjustment

economic and financial reforms remain a threat to the region’s

economic emergence.

ACC works with financial institutions to enhance efforts to seek

funding and build sustainable platforms for financial integration and

autonomy of SME businesses, faced with credit and funding difficulties.

ACC proposes an experience sharing encounter with major local

players and financial international financial institutions other partners

capable of funding businesses. The purpose is to encourage

starts-ups and others on how to be resistant and resilient in their

business endeavors, irrespective of inherent difficulties. ACC believes

good governance practices oblige and lead to good results

in all fields, in the spirit of strengthening public-private partnerships

and facilitating the success of North-South entrepreneurship for

increase productivity and competiveness for SME’s.

ACC’s partners and members: Chambers of Commerce,

Businesses, Law firms, NGO’s, Institutions…

Adress : The African Chamber of Trade & Commerce (ACC)

P.O Box 35040, Bastos Yaounde-Cameroon.

Tel: +237 695 228 348 / +237 677 581 551 / + 242 640 074.

International contact : Washington DC Telephone. : +202 460 074

Website : www.africanchamber-abo.org,

Email : africanchambernetwork@gmail.com, info@africanchamber-abo.org

facebook. : africanchambernetwork

36 www.gipmatrix.com www.gipmatrix.com

37


IP ARIPO

African Regional Intellectual

Property Organization

ARIPO

explains WHY?

Susan Mwiti, Documentations and Communications Officer at ARIPO

www.aripo.org

‘Susan Mwiti,

Documentations and

Communications Officer’

at ARIPO explains why

you should make your IP

registration with them.

Why you should make

your Trademark

application with

ARIPO

Throughout the world, an efficient

and equitable Intellectual Property

system is a powerful tool for economic

development and social and cultural

wellbeing as it rewards creativity

and human endeavour by providing

an environment for creativity and

invention to flourish, to the benefit of

national economies and individuals

alike.

At the African Regional Intellectual Property

Organization (ARIPO), awareness creation on

IP in Africa has been one of its key activities in

line with its Value and Growth Transformation

Strategic Plan running from 2016 to 2020.

According to the ARIPO Director General, Mr.

Fernando dos Santos, ARIPO’s current vision

is to be pan-African and the leading IP hub in

Africa. He says,

Having grown from humble beginnings from

its birth in 1976, ARIPO has matured into an

IP giant today. “ARIPO adopted the current

vision to foster creativity and innovation for

economic growth and development on the

continent.”Membership to ARIPO is open

to all African states who are members of the

African Union or the United Nations Economic

Commission for Africa (ECA). Currently,

ARIPO has 19 Member States being; Botswana,

The Gambia, Ghana, Kenya, Lesotho, Liberia,

Malawi, Mozambique, Namibia, Rwanda, São

Tomé and Príncipe, Sierra Leone, Somalia,

Sudan, Swaziland, Tanzania, Uganda, Zambia

and Zimbabwe.

The firm was founded by Joseph Antoine Onambele,

The

30

firm

years

was

ago,

founded

he was

by

later

Joseph

joined

Antoine

by Mary

Onambele,

Concilia

30

Anchang.

years ago,

As

he

Founding

was later

and

joined

managing

by Mary Concilia

Anchang.

partners

As

they

Founding

have through

and managing

their dedication and

partners

hard work

they

built

have

an

through

international

their

bilingual

dedication

and

and

bi-jurial

hard

Full

work

service

built

law

an

firm,

international

based in

bilingual

Yaoundé

and

Cameroon.

bi-jurial

Full service law firm, based in Yaoundé Cameroon.

OAA law is proud to be the first Bilingual Law firm in the

OAA

Country

law is

practicing

proud to

in

be

both,

the

Civil

first Bilingual

Law and Common

Law firm in

Law

the

jurisdictions.

Country practicing

A full-service

in both, Civil

corporate

Law and

law

Common

firm, OAA

Law jurisdictions.

law

serves clients

A full-service

in a diverse

corporate

range of

law

industries,

firm, OAA

and

law

has

serves

over the

clients

years

in

grown

a diverse

to include

range

coverage

of industries,

of the

and

CEMAC

has

over

region

the

and

years

globally.

grown

Due

to include

to her

coverage

broad based

of the

corporate

CEMAC

capabilities,

region and globally.

she represents

Due to

and

her

assists

broad based

clients

corporate

in matters

capabilities,

that

include intellectual

she represents

property

and assists

filings

clients

and litigation,

in matters

mergers

that

include

and acquisitions,

intellectual property

telecommunication,

filings and litigation,

mining, real

mergers

estate,

and

finance,

acquisitions,

corporate

telecommunication,

Law, project finance

mining,

and joint

real

ventures

estate,

finance,

in infrastructure.

corporate

OAA

Law,

Law

project

delivers

finance

high

and

quality

joint ventures

and highly

in

efficient

infrastructure.

services

OAA

to its

Law

clients.

delivers

OAA

high

Law

quality

is a pioneer

and highly

Law

efficient

firm in Intellectual

services to

Property,

its clients.

Corporate

OAA Law

Law

is a

and

pioneer

Mining

Law

Law

firm

in the

in Intellectual

Region

Property, Corporate Law and Mining Law

in

The

the

firms

Region

practice over the years has grown to include coverage

The firms

of

practice

the CEMAC

over the

region

years

and

has

globally.

grown to

Senior

include

partner

coverage

Joseph

of

Antoine

the CEMAC

Onambele

region

is

and

the

globally.

past president

Senior

of

partner

the Cameroon

Joseph Antoine

National

Onambele

committee

is the

of The

past

International

president of

Chamber

the Cameroon

of Commerce.(ICC)

National committee of The International Chamber

of

Mary

Commerce.(ICC)

Concilia Anchang is the pioneer IP lawyer in the

Mary

OAPI

Concilia

region. She

Anchang

is also

is

the

the

pioneer

pioneer

t African

IP lawyer

female

in

court

the

OAPI

member

region.

of the

She

International

is also the pioneer

Court of

t African

Arbitration,

female

ICC

court

Paris.

member

She represented

of the International

her country,

Court

Cameroon

of Arbitration,

in this

ICC

capacity

Paris.

She

from

represented

2006-2010.

her

She

country,

is the current

Cameroon

founding

in this

chair

capacity

of the

from

African

2006-2010.

Chamber

She

of Trade

is the

&

current

Commerce.

founding

(ACC)

chair of the

African

OAA Law

Chamber

offers

of

experienced

Trade & Commerce.

and well travelled

(ACC)

attorneys.

OAA

Their

Law

maturity

offers

in

experienced

legal services

and

has

well

been

travelled

achieved

attorneys.

through

Their

innovation,

maturity

resilience,

in legal services

research

has

and

been

hard

achieved

work for

through

clients

innovation,

across the

resilience,

globe.

research and hard work for clients

across the globe.

Address: Opposite United States & Saudie Arabia Embassies Rosa

Address: Park Avenue-Golf Opposite United Ntougnou States & Saudie Arabia Embassies Rosa

Park P.O Avenue-Golf Box 662 Yaounde-Cameroon.

Ntougnou

P.O Tel: Box +237 662222 Yaounde-Cameroon.

209 776 / +237 677 581 551

Tel: Email: +237 oaalawpartners2@gmail.com 222 209 776 / +237 677 581 551 / info@oaalaw.cm

Email: website. oaalawpartners2@gmail.com : www.oaalaw.cm, / info@oaalaw.cm

website. : www.oaalaw.cm,

Our Partners

Our Partners

The African Chamber of Trade & Commerce (ACC) is an African

The based African initiative, Chamber headquartered of Trade & in Commerce Yaounde-Cameroon, (ACC) is an created Africanto

based facilitate initiative, trade headquartered between Africa in and Yaounde-Cameroon, her partners around created the globe. to

facilitate ACC provides trade between a platform Africa to visionaries, and her partners institutions around and the investors globe.

ACC within provides the continent a platform and to the visionaries, Diaspora institutions to better utilize and and investors exploit

within Africa’s the continent unqualified and socio-cultural the Diaspora and to better economic utilize and potential exploit for

Africa’s Africa's unqualified development socio-cultural and emergence. and Our economic goal is to potential meet the challenges

development exposed to the and world emergence. by globalization. Our goal Today is to meet doing the business chal-

for

Africa's

lenges requires exposed bringing to the together world by people globalization. from different Today backgrounds doing business for a

requires more diversified bringing together and dynamic people business from different culture backgrounds and environment. for a

more diversified and dynamic business culture and environment.

« ACC is an innovative private sector business vector, working

« through ACC is an a Federated innovative Network private of sector activities, business wherein vector, ; stakeholders, working

through businesses a Federated and institutions Network trading of activities, and investing wherein across ; stakeholders, Africa are

businesses able to make and conscious institutions business trading and decisions investing based across on where, Africa are how

able and to when make to conscious undertake business competitive decisions business based opportunities on where, around how

and the when world, to relying undertake on unequivocal competitive business information opportunities » around

the ACC world, works relying with on Commissions unequivocal : information Intellectual » Property (IPR & Business

works partnerships, with Commissions Diapora and : Intellectual ICT, Finance Property and Investment, (IPR & Busi-Innesternational

partnerships, Trade, Diapora Commerce, and ICT, Energy Finance and Environment, and Investment, Maritime In-

ACC

ternational Security Trade, and Trade, Commerce, Communication, Energy and Culture Environment, and Ecotourisme, Maritime

Security Education and and Trade, Welfare, Communication, Agriculture, Culture and Ecotourisme,

Education The ACC and platform Welfare, seeks Agriculture, to consolidate existing and new businesses

ACC through platform reliable seeks and to consolidate federated networks existing to and promote new busi-

inclu-

The

nesses sive investment through reliable opportunities and federated and competiveness networks to promote for startups inclusive

SME’s investment to guarantee opportunities that, the and UN competiveness Sustainable Development for startups Goals and

and

SME’s (SDGs) to guarantee for Africa are that, met, the considering UN Sustainable that Development Structural adjustment Goals

(SDGs) economic for Africa and financial are met, reforms considering remain that a threat Structural to the adjustment region’s

economic economic and emergence. financial reforms remain a threat to the region’s

economic emergence.

ACC works with financial institutions to enhance efforts to seek

ACC funding works and with build financial sustainable institutions platforms to for enhance financial efforts integration to seek and

funding autonomy and build of SME sustainable businesses, platforms faced for with financial credit and integration funding and difficulties.

of SME businesses, faced with credit and funding diffi-

autonomy

culties.

ACC proposes an experience sharing encounter with major local

ACC players proposes and financial experience international sharing financial encounter institutions with major other local partners

capable and financial of funding international businesses. financial The purpose institutions is to other encourage part-

players

ners starts-ups capable and of funding others businesses. on how to be The resistant purpose and is resilient to encourage in their

starts-ups business and endeavors, others on irrespective how to be of resistant inherent and difficulties. resilient in ACC their believes

good endeavors, governance irrespective practices of oblige inherent and difficulties. lead to good ACC results be-

business

lieves in all good fields, governance in the spirit of practices strengthening oblige public-private and lead to good partnerships results

in and all fields, facilitating in the the spirit success of strengthening of North-South public-private entrepreneurship partnerships for

and increase facilitating productivity the success and competiveness of North-South entrepreneurship for SME’s. for

increase productivity and competiveness for SME’s.

ACC’s partners and members: Chambers of Commerce,

ACC’s Businesses, partners Law and firms, members: NGO’s, Chambers Institutions… of Commerce,

Businesses, Law firms, NGO’s, Institutions…

Adress : The African Chamber of Trade & Commerce (ACC)

Adress P.O Box : The 35040, African Bastos Chamber Yaounde-Cameroon.

of Trade & Commerce (ACC)

P.O Tel: Box +237 35040, 695 Bastos 228 348 Yaounde-Cameroon.

/ +237 677 581 551 / + 242 640 074.

Tel: International +237 695 228 contact 348 / +237 : Washington 677 581 DC 551 Telephone. / + 242 640 : 074. +202 460 074

International Website : www.africanchamber-abo.org,

contact : Washington DC Telephone. : +202 460 074

Website Email : africanchambernetwork@gmail.com, www.africanchamber-abo.org, info@africanchamber-abo.org

Email facebook. : africanchambernetwork@gmail.com, : info@africanchamber-abo.org

facebook. : africanchambernetwork

38 www.gipmatrix.com www.gipmatrix.com

39


Creating incentives

to solve problems

innovatively

ARIPO has been key to protecting Africa’s

intellectual property rights through patents,

trademarks, utility models, industrial designs,

traditional knowledge and expressions

of folklore and is endeavoring to protect

copyrights, plant varieties and geographical

indications in the same manner as well as

contributing towards the shaping of the African

and global intellectual property landscape. In

fact, when you apply for registration/grant of

a trademark, patent, utility model or industrial

design with ARIPO you have a choice of all or

some contracting states to a protocol in a single

registration.

According to the ARIPO Director General,

Fernando dos Santos, “The IP system creates

incentives for people who come out with

innovative ideas to solve problems facing

society.” It does so by protecting their rights

so that they are not robbed of the products of

their minds.

Thus, efficient IP systems have become even

more critical today, as “the world has shifted

to the knowledge economy of which IP is the

main driving force,” says Mr. Dos Santos.

Filing trademarks

with ARIPO

The Banjul Protocol, adopted in 1993, entrusts

ARIPO with the function of registration of

marks and administration of such registered

marks on behalf of the contracting states

in accordance with the provisions of this

protocol. Ten states are currently party to the

protocol and these are Botswana, Lesotho,

Liberia, Malawi, Namibia, São Tomé and

Príncipe, Swaziland, Tanzania, Uganda and

Zimbabwe. In addition, strong intentions by

two member states to be party to the system

have been shown recently.

The ARIPO route for

the registration of

marks is very easy!

It has become even smoother with the use

of new technology especially the availability

of the ARIPO e-services of online filing. The

online services allow applicants, attorneys,

agents and other users to conduct their ARIPO

business electronically in a secure state of

the art environment. This facility allows for

online filing of IP files, online payment of fees,

sending and receiving notifications and general

tracking of filed applications. Currently on

average, 60% of the applications are now being

filed online. By filing online, one also gets a

20% discount on the application fee. It is also

easier to process the applications internally.

Since December 2015 ARIPO has made its

published Trademarks information available

on the TMView platform and in April 2018,

ARIPO was integrated to the TMClass that

offers users the opportunity to search and

translate goods and services to and from many

languages available.

ARIPO has developed a pilot database with

more than 350,000 Trademarks from ARIPO

and its member states which include; Botswana,

Gambia, Ghana, Kenya, Malawi, Mozambique,

Namibia, Rwanda, Tanzania, Uganda, Zambia

and Zimbabwe. The objective is to create a

centralized database for its published IP titles

and those of its Member States.

Enforceability of

ARIPO Registrations

As to the enforceability of ARIPO

registrations, it is important to note that, many

of the Contracting States are adopting new

legislations on Trademarks and, importantly,

they are formally domesticating the Banjul

Protocol on marks in the framework of ARIPO.

The most recent is Malawi that dedicated a

schedule in its new Act on the procedures

applicable to ARIPO registrations. There

are also other contracting States that do not

even need to formally domesticate the Banjul

Protocol or any other international treaty they

ratify or accede to simply because of their legal

tradition that recognizes any international

treaty duly ratified as part of the legal arsenal.

This is the case for Namibia and São Tomé and

Príncipe.

There are also countries that, though not yet

contracting parties to the Banjul Protocol,

have already enacted provisions in their

domestic laws that pave way to the immediate

implementation of the Banjul Protocol if these

countries became party. This is the case of

Kenya and Mozambique.

Additional services

ARIPO also offers other services to promote

the use of the IP system by its Member States

and Africa as a whole. ARIPO carries out

substantive examination of patent applications,

grants patents, registers trademarks, industrial

designs and utility models and administers the

same on behalf of the Member States.

40 www.gipmatrix.com

The office also conducts several search services

for the public (in most instances for free to

citizens of the member states). Some of these

are; state-of-the-art searches, novelty searches,

validity searches, bibliographic searches,

infringement (Freedom to Operate) searches,

patent family searches, copy searches, as well

as trademark searches.

Supporting training

& helping to build the

future

As part of its mandate, ARIPO also trains staff

of industrial property offices from its member

states in proper administration and processing

of intellectual property under the ARIPO

treaties. The Organization also assists member

states nationals and institutions to acquire and

utilise foreign appropriate technologies and

encouraging indigenous inventors to utilise

available patent information and technologies

to start their small business enterprises.

ARIPO has also been creating a critical

mass of IP experts on the continent, in

partnership with the World Intellectual

Property Organisation (WIPO) and the Africa

University in Mutare, Zimbabwe. Together

with these partners, ARIPO has supported

a Masters in Intellectual Property (MIP)

programme at the Africa University, which

has so far produced 252 graduates drawn from

over 25 African countries. In furtherance of

the programme, ARIPO, in partnership with

the Kwame Nkrumah University of Science

and Technology (KNUST) in Kumasi, Ghana,

and the Intellectual Property Office of Ghana,

enrolled the first intake of MIP students

at the KNUST in February 2018. Another

programme targeting East Africa is in the

pipeline, to be hosted by the University of Dar

es Salaam in Tanzania.

Fingers on the pulse of global IP

• Interviews & featured articles

• Independent columnists

• Q&A's

• Law firm profiles

• Movers and shakers

• 15,000 database of IP Professionals

+ much more

For more information contact us at:

info@gipmatrix.com

www.gipmatrix.com

www.gipmatrix.com

41


NOTES....................................

....................................................................................................................................................................................

....................................................................................................................................................................................

...................................................................................................................................................................................

...............................................................................................................................................................................

...............................................................................................................................................................................

..................................................................................................................................................................................

....................................................................................................................................................................................

....................................................................................................................................................................................

................................................................................................................................................................................

...............................................................................................................................................................................

................................................................................................................................................................................

....................................................................................................................................................................................

...........................................................................................

...................................................................................

.....................................................................................

........................................................................................

.................................................................................

..........................................................................................

....................................................................................

....................................................................................

.........................................................................................

.................................................................................

.........................................................................................

.....................................................................................

...................................................................................

..........................................................................................

Over 30 years of searching excellence

....................................................................................................................................................................................

..................................................................................................................................................................................

...............................................................................................................................................................................

.................................................................................

........................................................................................

......................................................................................

Meticulous

Resourceful

Cost-effective

...............................................................................................................................................................................

..................................................................................

...................................................................................................................................................................................

...........................................................................................

....................................................................................................................................................................................

.................................................................................

....................................................................................................................................................................................

.......................................................................................

...............................................................................................................................................................................

...............................................................................................................................................................................

.................................................................................................................................................................................

....................................................................................................................................................................................

....................................................................................................................................................................................

.................................................................................................................................................................................

...............................................................................................................................................................................

...............................................................................................................................................................................

....................................................................................................................................................................................

....................................................................................................................................................................................

...................................................................................................................................................................................

...............................................................................................................................................................................

.......................................................................................

.................................................................................

...........................................................................................

..................................................................................

......................................................................................

........................................................................................

.................................................................................

...........................................................................................

...................................................................................

.....................................................................................

.........................................................................................

.................................................................................

- Founded in 1986

- Full range of patent, design and literature searches

- Staff skilled in all fields of science and technology

- Meticulous, resourceful, cost-effective

Searching the world’s IP by class, code, keyword,

structure, sequence, image and interview.

...............................................................................................................................................................................

..................................................................................................................................................................................

..........................................................................................

....................................................................................

request@victorgreen.co.uk

www.victorgreen.co.uk

....................................................................................................................................................................................

....................................................................................................................................................................................

....................................................................................

..........................................................................................

+44-(0)20-7269-9200

Victor Green & Company

................................................................................................................................................................................

.................................................................................

...............................................................................................................................................................................

.........................................................................................

+44-(0)20-7269-9210

Victor Green & Company

................................................................................................................................................................................

....................................................................................................................................................................................

....................................................................................................................................................................................

.....................................................................................

...................................................................................

..........................................................................................

Victor Green & Company

First Floor, 25 Angel Gate, City Road, London, EC1V 2PT, England

42 www.gipmatrix.com www.gipmatrix.com

43


44 www.gipmatrix.com

More magazines by this user
Similar magazines