Global IP Matrix - Issue 3 - Jan 2019

Northons1975

Hello & welcome to the third issue of our publication. What a fantastic year it has been for us here at The Global IP Matrix! Firstly, we would like to thank all our clients that have taken the time out of their busy schedules to participate in our magazine this year & more importantly YOU the reader for picking up a copy at the international conferences we have had the pleasure of attending during 2018. We launched The Global IP Matrix at INTA in Seattle, earlier this year and our publication has been going from strength to strength thanks to YOU, our global audience and all our contributors. We have strived to give our readers up to date knowledge on IP issues globally, without pigeonholing our editorial content & focusing on one particular area of intellectual property law. We have persisted with our itinerary & produced some fantastic issues this year that we hope you have enjoyed and will continue to enjoy. We look forward to future issues! Happy New Year, may 2019 be a prosperous new year for you all, From everyone at, Northon’s Media & The Global IP Matrix team.

www.gipmatrix.com

1


CONTENTS

Page 4

The Knowledge economy:

The future of intellectual property law

Amaka Okafor - Associate (IP &

Corporate-Commercial) Stillwaters law firm.

Page 7

Domain names: the difficult combination of IP and IT

Bart Mortelmans, from bNamed.net

Page 9

LATVIA – Battles for Domain Names?

Ruta Olmane, Associated Partner, Latvian and European

Trademark and Design Attorney, Lawyer, Metida law firm

(Latvia)

Page 12

Colour Marks in Turkey

Mrs. Pelin Demiroğlu - Attorney at Law, Head of Legal

Affairs, Department Destek Patent

Hello & welcome to the third issue of

our publication…

What a fantastic year it has been for us here at

The Global IP Matrix!

Firstly, we would like to thank all our clients that

have taken the time out of their busy schedules

to participate in our magazine this year & more

importantly YOU the reader for picking up a

copy at the international conferences we have

had the pleasure of attending during 2018.

We launched The Global IP Matrix at INTA

Page 14

EU’s Counterfeit and Piracy Watch-List

Lisa Lovell, CEO & Founder Brand Enforcement UK Ltd

Page 18

Pharma Patents: Healing the Rights

Valery Medvedev, Managing Partner, Russian and

Eurasian Patent Attorney at Gorodissky & Partner

Page 21

Recent amendments to the Patent Act; Argentina

Pablo A. Palazzi, a partner at Allende & Brea

Page 24

Nanobodies – A Patent Landscape Case Study

Ashley Evans – Senior Manager at Patent Seekers Limited

Page 30

Can patent visualisations indicate how patent attorneys’

working environment has changed

by Victor Green, Alessio Brizzi, & Jo Shaw from Victor

Green & Company

in Seattle, earlier this year and our publication

has been going from strength to strength

thanks to YOU, our global audience and all

our contributors. We have strived to give our

readers up to date knowledge on IP issues

globally, without pigeonholing our editorial

content & focusing on one particular area of

intellectual property law. We have persisted

with our itinerary & produced some fantastic

issues this year that we hope you have enjoyed

and will continue to enjoy.

We look forward to future issues!

Happy New Year, may 2019 be a prosperous

new year for you all,

From everyone at, Northon’s Media

& The Global IP Matrix team.

Carlos Northon

CEO & Founder Northon’s Media PR &

Marketing LTD

Publisher of The Global IP Matrix

carlos@northonsprmarketing.com

Elvin Hassan

Copywriter & Editor

Global IP Matrix

Info@northonsprmarketing.com

Craig Barber

Head of design

Global IP Matrix

info@northonsprmarketing.com

Marvin Monterola

Head of sales Asia & The Middle East

The Global IP Matrix magazine

marvin.monterola@gipmatrix.com

2 www.gipmatrix.com www.gipmatrix.com

3


THE KNOWLEDGE

ECONOMY:

THE FUTURE OF INTELLECTUAL

PROPERTY LAW

The term ‘knowledge economy/

knowledge-based economy’

was formulated in the 1960s to

describe a shift from traditional

economies which majorly

focused on land, labour, and

capital as factors of production

to one based on information

and innovation (Intellectual

Property/Assets).

An innovation is the creation of a new

product/service or a new process of

creating an existing product/service. As

such, technical advances with respect

to how products are manufactured

or changes in approaches on how

products and services are created,

advertised and sold to the public could

suffice as innovations.

A knowledge economy is accordingly,

an economy which utilizes knowledge

to develop and sustain long-term

economic growth and in which

information, innovation, and goodwill

are considered the most valuable and

expensive assets of the stakeholders.

THE PILLARS OF

THE KNOWLEDGE

ECONOMY

According to the World Bank, a knowledge

economy is primarily supported by four core

pillars:

An adequate “Economic Incentive and

Institutional Regime (EIR)”- this

substantially entails the availability

of sufficient incentives to encourage

entrepreneurship, investments, and

innovations. For a knowledge economy

to thrive in any Jurisdiction, there must

be in place, favourable policies and

regulations to create an environment

that encourages innovation and

investment in the same. Investors and

innovators must know that their rights

and interests are protected for this

economy to thrive.

A functional “Innovation and

Technological Adoption” System- this

relates to having a functional and

IP KNOWLEDGE

Amaka Okafor, Associate - Stillwaters Law Firm

www.x stillwaterslaw.com

vibrant network of competent research

centers, firms, consultants, think

tanks, universities, and other similar

organizations working together to

harness the increasing availability

of information, by adapting them to

indigenous needs and inventing new

knowledge and technical solutions.

An effective “Education and Training”

Structure- the success of a knowledge

economy is dependent on a largely

educated and skilled population.

Therefore, adequate education and

training systems must be put in place

for this economy to thrive as it takes

educated and/or skilled manpower to

create, apply and/or share knowledge.

Information and Communications

Technologies (ICT) Infrastructure

and Access- this pillar requires the

availability of effective and dynamic

communication channels ranging from

radio, television to the internet, for

the processing and dissemination of

information 1 .

INTELLECTUAL

PROPERTY(IP)

AND KNOWLEDGE

ECONOMY

As explained in the previous section, the

first pillar of a knowledge economy is

the availability of sufficient incentives to

encourage investments. Consequently, one

the most important issues considered by

investors seeking to invest in the Research

and Development (R&D) sector is the extent

to which their investments and resultant

profits can be recuperated; should the R&D

venture result in an innovation. Potential

investors will be unwilling to invest in

R&D which when successful, are unlikely

to be profitable. As a result, establishing a

reliable, effective and enforceable system for

the protection of the rights and interests of

relevant stakeholders in an innovation, is

fundamentally important and indispensable

for the growth of a knowledge economy.

Intellectual Property Laws address this problem

by establishing and conferring enforceable

Intellectual Property rights (IP Rights- such

as trademarks, patents, and copyrights) on

innovators and/or investors (as the case may

be) with respect to the innovations. IP rights

are basically exclusive rights conferred by the

State on the innovators and/or investors (rights

holders) for the commercial exploitation

of the innovation e.g. trademark, design,

patent, literary and artistic work. These IPRs

are used as leverage by the rights holders to

enter negotiations with third parties who

intend to use or exploit the innovation. These

negotiations are usually in form of licenses

permitting the use of the invention in exchange

for substantial considerations. As a result of

these IPRs, right holders are now capable of

protecting, enforcing and exploiting their

inventions.

The relevance of IP rights, both to the rights

holders and consumers, has been clearly

understood with the coming of the internet.

The advent of the internet like never before

brought globalisation of economies and

easy accessibility and replicability of data,

information, and inventions. Stakeholders,

such as manufacturing companies are now

faced with various threats from fraudsters

and counterfeiters trying to freeride on their

investments and goodwill, by replicating

their products which consequently dilutes

their goodwill, creates potential dangers to

consumers (e.g. counterfeit medicines) and

exposes them to unjust liabilities. For this

reason, companies have begun committing

significant resources to the protection of their

intellectual assets.

THE FUTURE OF

INTELLECTUAL

PROPERTY

LAW/RIGHTS

(CONCLUSION)

Previously, the exploitation of natural

resources and adequate manpower were the

primary engines of economic growth. The

world is going digital and so are the economies.

Information is now widely believed to be the

future source of prosperity; representing raw

materials which are transformed using human

intelligence and technology, into innovations

that lead to economic growth.

Nevertheless, for a knowledge economy

to succeed, accessibility to information,

the creation of inventions and effective

management and enforcement of IP rights

must be present, working side by side. As

pointed out in preceding paragraphs, any

economy reliant on innovations will not

thrive if there are no reliable incentives for

potential inventors and investors. IP laws and

rights create a reliable legal structure for the

investment and commercialisation of IP and

accordingly is an indispensable tool in this

economy.

Up until recently, IP law, especially in Africa

was a specialised and dehydrated sector of law,

made up of a small group of legal experts and

hardly ever contentious. However, in recent

times and with the development of an economy

based on data and innovations this status

quo has changed significantly. We are now

faced with a new reality where IP is created,

encountered and used daily. Furthermore, the

continuous advancement in the use of social

networking platforms and the internet presents

an emerging IP market and new challenges for

IP regimes.

1- Knowledge Economy Index (KEI) 2012

Rankings

4

www.gipmatrix.com www.gipmatrix.com

5


Domians

Within many corporations,

domain names cause internal

disputes between the ITdepartment

and the legal (or

IP) department. Who should

manage this important asset?

The IP-department wants to safeguard the

domain names, in order to protect them from

inadvertently expiring or being stolen. They

might even prefer to register the domain

name with the company that also manages

their trademarks. While the IT-department

would want direct control over the technical

settings, to be able to take swift action if an

urgent update is needed. If asked where they

would register a domain name, they’d probably

go for the company that happens to also host

their servers, because of this, domain name

management in many companies is still

scattered.

Domain names are managed by the person

who happened to have been the first one to

ever need that particular domain name. This

causes all sorts of problems, including domain

names being lost simply because the person

who should be looking after it forgot or has

even left the company.

We talked about this with Bart Mortelmans

from bNamed.net. They work on what they

call “domain name outsourcing”. ‘Taking the

burden out of managing a portfolio of domain

names.’ He tells us there are 3 key points that

are important in order to satisfy both IT and

IP departments involved: “The first 2 points

are obviously having an interface that caters to

the legal and that offers the features the techies

desire. However, once the two departments

individually are satisfied, to be able to really

talk about outsourcing and getting rid of the

burden, you need to add specialised support

on top of this. One that can talk both “IT”

and “IP” and that can connect the two

departments in a way which internally would

not have been possible.”

Domain names:

the difficult combination

of IP and IT

Bart Mortelmans, General Manager of Bnamed

www.bnamed.net

However, if a request comes in

via a non-IT department...

Then, they should just as well be able to, at least

set-up the basics of the technical settings. One

way of enabling this is through templates that

can be set-up by a specialist in coordination with

the people managing the servers and that can

then subsequently be selected while requesting

a domain name. However, not every set-up

needs to be so complicated that a template is

needed. Bart Mortelmans tells us how small

changes in the interface can make technically

setting up a domain name a no-brainer for

anybody: “We have been focussing on having

an easy-to-use interface for everybody for

a long time now. For this, in some cases, we

changed how things would normally appear

in a server-control environment. Making

some very small changes

to how things are worded

or in which order they

appear on the screen,

can make a world of a

difference to somebody

not used to the computerlingo

that is most often

used in such interfaces.”

Something else to look

for in such a system is

how helpful it can be

in correcting mistaking

or allowing input

to be automatically

formatted. As you will

know, computers can be

real nitpickers as far as

spaces, dots, quotation

marks or capital letters

are concerned. Having a

system that will autocorrect

this can not only

save you a lot of time

but can actually be a

life-saver for anybody

changing settings for

a domain name that is

already in active use.

‘Outsourcing domain

name management

has not only taken

off with trademark

holders (for which

the service was originally intended) but

also attracted interest from specialised

intellectual property firms:

“We didn’t expect this, but actually there

is a very good reason for this. These IPprofessionals

are confronted with requests

coming from the IT-department of their

clients. So certainly for them, being able to

both get support for the IT-related requests

they get from their clients and being able to

offer their client access to a direct control

panel for all IT-related stuff, is a big asset.

Many trade mark agents are still wary about

also managing domain names, however, with

the right tools and support, this actually

doesn’t need to be any problem.”

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6 www.gipmatrix.com www.gipmatrix.com

7


LATVIA –

Battles for Domain Names?

Ruta Olmane Associated Partner, Latvian and European

Trademark and Design Attorney, Lawyer - www.metida.lt

J. Varbanov & Partners

European and Bulgarian Patent & Trademark Attorneys

One of the oldest and leading IP companies in Bulgaria

Professional, cost effective services and quality advices

Areas of practice:

*IP Protection

*IP Enforcement

*Anti-counterfeiting

*Litigations

*Domain name registrations

*IP watches

PO Box 1152, BG-1000 Sofia, Bulgaria

South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria

Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,

e-mail: jvp@jvpatents.com

www.jvpatents.com

Nowadays, if you would like

to look serious in the eyes

of the public, a website with

the correct name or domain

name is a must-have. Many

large companies, as well as

publicly known people, have

done almost the impossible to

protect their virtual identity by

purchasing a range of domain

names with both positive and

negative outcomes.

A domain name is a significant defender of

your company and its brand in the virtual

reality world. Therefore, there are splendid

domain name scammers who will want to earn

at your expense or at your neglect, if you are

not able to reserve the domain names you want

in a timely manner.

Once you state that someone has registered a

domain name which infringes your trademark

rights or company title, you are then expecting

a quick and easy solution for your problem.

However, is it so easy

in Latvia?

So far, it discovers that in Latvia the status

of a domain name and consequently the

procedure in solving disputes about domain

names is demanding more efforts than in other

European Union Member States, especially

if you are comparing it with neighbouring

countries Lithuania and Estonia.

Firstly, the status of country code top-level

domains in Latvia (.lv) is still a subject of many

questions and uncertainties.

In accordance with the Civil Law of the

Republic of Latvia (Articles 927-1129), a

domain name does not embody features

characterising the property, therefore the

domain name is not a property of a natural

person or legal organisation, so you are only

entitled to obtain the rights to use the domain

name. In the meantime, the domain name

in some aspects is considered to be a part of

your intellectual property portfolio and is

thought to be a subject of a certain right as it

is possible to transfer rights to use a domain

name in accordance with a bilateral agreement

or according to a judgement of Court.

From 1993, the Top Level Domain for

Latvia “.lv” and its generic subdomains,

according to the agreement with the IPE

(Réseaux IP Européens), is administrated

by the Network Information center for

Latvia ((NIC DNS Registry) located in the

Institute of Mathematics and Computer

Science of the University of Latvia). This is

the only competent authority providing the

domain name registration, maintenance,

and administration in Latvia. However, any

dispute arising with respect to domain names

is a subject for judicial review and there is no

administrative institution dealing with these

questions.

General Policies

The general Policies 1 of Registry prescribes

that the domain name shall be chosen in such

a way, so as not to infringe the legitimate rights

of other parties and also not to violate the

existing legislation of the Republic of Latvia.

However, the policies do not contain more

specific rules in respect to a situation when

trademarks or company names are infringed.

One problem – pursuant to personal data

protection and regulation information about

a name, surname and any contact details of

a natural person is not publicly available and

the Register discloses this information only in

accordance with a Court order.

While the Administrative dispute resolution

service (Administrative Panel referred

to in ICANN Uniform Domain Name

Dispute Resolution Policy) for domain

name disputes is not established in

Latvia, all disputes regarding already

assigned domain names are to be

resolved in Civil Court directly between

the current holder of the domain

name and the contesting party

without involvement of the

Registry.

www.gipmatrix.

A cancellation action may be filed under a civil

procedure by a proprietor of a prior trademark

or company name registration and by any

other interested party, if a domain name may

be considered as a generic name (i.e. both on

relative and absolute grounds). In addition,

a cancellation action may be initiated also

if a domain name has been registered and is

being used in bad faith. It is also possible to

request cancellation of a registered domain

name based on unfair competition law if this

domain name is identical with or reproduces a

registered trademark or company name.

After receipt of a judgment of the Civil Court,

a party concerned must submit a judgement

to the Network Information Center for

Latvia (local DNS Registry) and the local

DNS administrator is obliged to immediately

perform any necessary actions concerning

cancellation (deleting) of a domain name from

the database or transferring it to Plaintiff.

As you can see the process itself seems to be

quite simple, nevertheless, there are some

circumstances which might cause several

problems for solving these disputes quickly

and cost-effectively.

9


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Firstly, it is linked with recently adopted rules

for the processing of personal data. Following

these rules, any personal data belonging to the

domain name holder, who is also a natural

person will be removed from the public

register and the Registry will not disclose this

information, otherwise, as only in accordance

with the Court request. Thus, before initiating

any infringement cases you have to conduct

additional action, namely – you have to file

a separate request with the Court asking to

collect the details of the domain name holder.

Secondly, the time and expenses may increase

if the holder of the domain is not from Latvia.

In accordance with the Policies the holder of

the domain name under top level domain .lv

may be:

A commercial entity registered in Latvia

from the moment it is registered in the

Enterprise Registry of the Republic of

Latvia;

A state or local government authority

from the moment it is established;

A foundation, an agency, a union or other

entity established in accordance with the

normative acts of the Republic of Latvia

from the moment it is established;

A natural person, who has reached 18

years of age;

A commercial entity or organization

registered outside the Republic of Latvia

from the moment it is registered.

Thus, there is no limitation that the holder

of the domain name may be a person

from a foreign country.

requirements the Judge has the right to

reject the case, allowing time to consider

more evidence.

The recent case law discovers additional

challenges in disputes about the domain

names and they mostly are related to the

questions about preliminary injunctions.

Preliminary

Injunctions

Firstly, it is necessary to carefully

evaluate whether a requested injunction

is proportionate. Recently, preliminary

injunctions were not granted when the

Plaintiff asked for the locking of the domain

name’s technical data. As blocking access to

the technical data in the Registry database

would result that all services related to a

domain name, such as e-mails, website, and

others would fail to function. Such an outcome

is considered as unproportioned as the merit

of the claim is not reviewed at that moment.

In the meantime, a request to ban the rights to

transfer the domain name is considered as a

reasonable request for preliminary injunctions.

Secondly, the Court raises questions

concerning, whether only the registration

of a certain domain name itself creates an

infringement of trademark rights, as it is not

considered as commercial use of this sign.

In Court, the opinion Plaintiff must prove

that this domain name is used in respect for

identical and/or similar goods and/or services

as a registered trademark or if the Defendant

is performing other commercial activities such

as selling domains etc.

Thirdly, the Register raises questions

concerning, how one proceeds in situations

where the Defendant has not extended an

agreement with the Register for the domain

name in dispute when the dispute (in question)

before the Civil Court is still ongoing.

In accordance with Policy domain names

.lv might be registered only for one year, but

the review of a civil case in Latvia may length

much longer time. Currently, the Court has not

provided any explanation about this question

and it is left on the shoulders of the Plaintiff

to follow the actual situation about the domain

name of his/her interest.

Last but not least, questions are always linked

with the law applicable in the disputes about

country code top-level domains in Latvia (.lv).

As we have no national regulation about these

questions, Plaintiffs and Courts tend to apply

Commission Regulation (EC) No 874/2004 of

28 April 2004, laying down public policy rules

concerning the implementation and functions

of the .eu Top Level Domain and the principles

governing registration, however this is still

quite a disputable practice which leaves a lot of

unanswered questions.

In conclusion

It is noticeable that conflicts between

trademark holders and domain name holders

are becoming more common, also in Latvia.

Currently, the procedure for resolving these

conflicts are expensive and cumbersome,

therefore there is an actual need to adopt more

specific policy rules concerning functions of

the .lv Top Level Domain.

1- The policy for acquisition of the right to use

domain names under the top level domain

.lv, which cover domain name registration

and usage under top level domain .lv and its

generic second level domains (subdomains)

and is an integral part of the agreement.

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In such cases, following the civil law

provision, the Plaintiff will be obliged to

provide a translation of the claim into the

language which is understandable for the

Defendant and in many cases this language

will not be the English language, but the

official language of the country of which

this person is registered or has an address.

Moreover, following international rules

this claim will then be forwarded to the

Defendant via the Ministry of Foreign

Affairs of Latvia. Therefore, as you can see

this process and such cases take a much

longer time in obtaining a judgement.

Thirdly, you have to take into consideration

that all documents submitted with

the Civil Court in Latvia must

be in an official language or

accompanied by a translation

into the official language of

Latvia, i.e. Latvian language.

Although this is a quite a

formal requirement it should

not be underestimated as in

some cases it creates a lot of

additional expenses. If you

do not comply with these

www.gipmatrix.com

11


TRADEMARKS

Presents

Colour Marks

in Turkey

A colour mark is one of the

non-conventional trademarks

which can uniquely identify the

commercial origin of products

or services in practice, but it is

seen, that cited function is not ‘ex

officio’ accepted by the relevant

authorities.

As a result of the Industrial Property Law

numbered 6769 (“the IP Law”) that came

into force on 10 January 2017, the definition

of a trademark has been broadened. The

requirement of capability to be represented

graphically is removed and a clear and

accurate representation in the registry is

found sufficient. Moreover, colours have been

explicitly included in the definition of signs

which shall be protected as a trademark; (Art.

4/1 “… all signs including designs, colours,

numerals, letters, sound and the shape of

goods and their packaging).

§ Quality | Reliable | Invaluable §

Details of the new

definition

When the IP Law introduced a new trademark

definition making specific reference to colours,

there was some expectation that registration of

colour marks would become easier. However,

the current acceptance rate for registration of

single-colour marks is 0%. The online Turkish

trademark database lists 46 colour mark

applications and 20 of them, comprising a

single colour, have been rejected. Despite the

recognition of colours as a registrable sign by

the legislator, it is seen that the administrative

authority is (reluctant) to grant protection

for single colours. Both the trademark

Since 1992 ……

YU-LI TSAI

applications comprising

single colours and the

appeals filed against the ex

officio rejection decisions

of the same are being

rejected on the grounds

that the applied trademark

does not have a distinctive

character (Art. 5/1).

It is designated in refusal

decisions that Art. 4/I does

not define that any colour

applied must be registered

as a trademark. Thus,

as can be understood

from the provision of

the relevant article, one

of the basic conditions

required for a sign to be

able to create a brand is

that the sign can be shown

in the registry, so that the

subject of the protection

provided to the trademark

owner can be clearly and

precisely understood from.

The other is the condition

of distinguishing from the

same type of goods and

services offered by other

trademarks. It should

be kept in mind that the

consumers’ perception of

a single-colour mark is not

the same compared to the

12 www.gipmatrix.com

Mrs. Pelin Demiroğlu - Attorney at Law, Head of Legal Affairs

www.destekpatent.com

LU-FA TSAI

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Focus: Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition

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perception of a word brand, a figurative brand,

or a three-dimensional brand that does not

consist of a product or packaging form. This is

not the case when consumers are accustomed

to recognising brands of distinctive words and/

or shapes as signs that diagnose the product.

The administrative authority also add, that

it is not entirely ignored, that the possibility

that even a single colour in some cases may

be able to distinguish the goods and services

of an entity from the goods and services

of other enterprises. However, in order to

provide a distinctive quality in terms of a

single colour, first of all, the colour should be

used continuously and for a long time on the

relevant product and service and, second of all,

the colour must be perceived as a brand by the

consumers, indicating a certain commercial

resource.

In other words, the authority lets the holders

of the rejected applications apply to the

courts for revocation of the refusal decisions,

claiming that the applied colour marks have

received distinctive character through prior

and frequent use. On the other hand, the

administrative authority can give colour

combinations the green light and decides for

at least the publication of them for third-party

oppositions.

To conclude

It is to be seen what will happen in the future

regarding colour marks. However, it is likely

that the eventual court decisions may reflect a

discomfort, whether the registration of a single

colour grants a monopoly or not.

Arm yourself with

practical solutions

to best navigate the

changing patent

landscape and

maximise the value

potential of your IP

“Very interesting,

great talks as well as

a great opportunity

to network”

Oil & Gas IP 2019’s Expert Speaking Faculty Includes:

Michel De Puydt

Head of Law Department

IP and Technology

Total S.A.

Charlotta Ljungdahl

VP of Intellectual Property

Air Liquide

Counsel, BP

“Very useful, especially

the networking

aspects”

Head of IP, Aker Solutions

Marta Burao Munoz

Director of Technology

Commercialisation & IP

Repsol

Jalmari Sasi

Senior Legal Counsel

Neste Corporation

Join us at the world's only summit

dedicated to discussing the patent and IP

issues within the Oil & Gas industry

Dr Geetha Basappa

Senior Patent Engineer

Baker Hughes GE

Hein Wille

Corporate IP Director

SBM Offshore

ENQUIRE@IQPC.CO.UK | +44 (0)20 7036 1300 | OILANDGASIP.IQPC.CO.UK

Yuichiro Nakaya

Director of Intellectual

Property

Japanese Oil, Gas &

Metal Corporation

(JOGMEC)

Dr Alta Spamer

IP Technical Adviser

Sasol

Hilton Olympia,

London, UK

26th-27th February

2019

20% off:

IPMatrix20


COUNTERFEIT &

PIRACY

Advertise with us

EU’s Counterfeit and

Piracy Watch-List

Following in the footsteps of the

United States’ Special 301 Report,

the European Commission has

released its first-ever Counterfeit

and Piracy Watch-List. Produced

as part of the Commission’s

complex strategy for the IP

enforcement, the initiative was

announced in 2017.

The initiative is part of the

Commission’s strategy announced

in the 2017 Communication “A

balanced Intellectual Property

enforcement system responding to

today’s societal challenges”.

The report, published on, 7 December 2018,

which will be updated regularly, identifies

the marketplaces outside the EU where

counterfeiting, piracy or other forms of

intellectual property abuse are common

practice. The report also identifies and

describes the most problematic marketplaces,

with a special focus on online marketplaces.

The report also provides information to EU

rights’ holders on the effectiveness of IPR

regimes in countries outside the EU, which

will hopefully enable them to improve their

business strategies and operations to protect

their intellectual property. As a result, it

is hoped that a better understanding will

transpire, as to how to manage risk around IPR

when doing business in, or with, certain non-

EU countries.

Intellectual Property

Abuse

The report helps to raise awareness of

consumers that might be buying products

in those marketplaces and encourages their

operators and owners to crack down on

intellectual property abuse:

serious harm to European business

trading outside the European Union

significant economic losses for right

holders and legitimate businesses

undermining of the EU’s comparative

advantages in innovation and creativity

detriment to EU citizens and EU

employees/employers

the risk to consumer health and safety

(i.e. pharmaceuticals, toys, and spare

parts)

harm to the environment (i.e. pesticides)

the risk to consumers of buying substandard

and possibly dangerous goods

consumer risk of buying sub-standard

and possibly dangerous goods

loss of sales/revenues/jobs/government

(i.e. VAT, revenue taxes, customs duties)

damages to brand image and economic

interests of European companies

contribution to organised crime

The “Naughty” List

China

India

Indonesia

(B2C)

Korea

Russia

Thailand

Ukraine

Xxjcy.com / China

Telecommunications

Snapdeal.com

Bukalapak.com

Naver.com

Tiu.ru

Lazada.co.th (B2C)

Prom.ua

Main Complaints by

Stakeholders

The most common complaints by stakeholders

regarding the takedown process are that

there is a distinct lack of co-operation and

communication, erratic implementation

of various different policies, inconsistent,

cumbersome and stringent procedures, lack

of prohibition of prominent keywords which

are often used to search for counterfeit goods,

insufficient or inadequate vetting of sellers, a

lack of proactive measures to detect illegal

listings and unreasonable delays in

processing removals.

Lisa Lovell, CEO of Brand Enforcement UK

www.brandenforcement.co.uk

Co-operation

insufficient cooperation with rightholders

lack of investment in, and use of,

automatic detection technologies

unsatisfactory efforts to reduce the

availability of counterfeits

Communication

total lack of responsiveness by the

respective legal teams

complaints often not acted upon at all

low levels / non-responsiveness to

requests for updates on takedowns

Insufficient information on listing

removals; has it actually been removed

or has it simply expired?

listings frequently left online without

communicating the reason to the

complainant

Implementation

the platform’s policies against IP

infringements and for the detection and

removal of illegal listings are not properly

implemented

enforcement through the web form has

not resulted in any takedowns

legal team occasionally states that listings

will be removed within 5-7 days, but then

the listing remains live

Inconsistency

complaints handled inconsistently

failure by a seller to remove should =

takedown but there

was a distinct

inconsistency

in action

taken

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15


Keywords

no prohibition of the use of contentious

keywords in the listings (i.e. “replica”)

no prohibition of terms implying the

products’ counterfeit nature (“A-class” and

“mirror-class” in Korean)

Procedure

unreasonably stringent enforcement

requirements

cumbersome takedown procedure

requiring official complaint with a

physical print out of all infringing URLs

takedown documents must be signed/

stamped/scanned by company

representatives and sent via email for

assessment

Proactiveness

lack of proactive measures to detect illegal

listings

weak system for vetting of sellers

shortcomings with regards to proactive

detection/identification/removal of

counterfeit listings or

no proactive measures employed for

detection or removal

some platforms use image recognition

systems to identify violations but other

automatic technologies are also needed

in order to help analyse and correlate

product, price, and image related

information to flag suspicious listings for

further analysis

Timeliness

unreasonably long processing time for

removals

some sellers allowed up to 5 days to remove

reported listings

The List - An Effective

Tool, to…

raise consumer awareness concerning the

environmental, product safety and other

risks of purchasing on these marketplaces

encourage the operators and owners to

take the necessary actions and measures

to reduce the availability of IPR infringing

goods or services

encourage responsible local authorities

and governments to maximise their efforts

to investigate reports of IPR infringements

in such marketplaces, and to pursue

appropriate enforcement actions

raise awareness to consumers that might

be buying products in those marketplaces

raise consumer awareness concerning

environmental, product safety and other

risks of purchasing on these marketplaces

thwart the deception of online shoppers

by these e-commerce platforms misusing

such rogue merchants as a marketplaces

urge the owners and operators of these

marketplaces to adopt business models

that rely on the licensed distribution of

legitimate content and products

promote a better partnership between

the owners / operators / right-holders /

enforcement authorities

encourage their operators and owners to

crack down on intellectual property abuse

The commission also proposes to

encourage the specialisation of national

judges for IP and the systematic

publication of national judgements in

IP enforcement cases and has provided

guidance on existing EU laws.

“With the planned Watch List the

Commission intends to identify

concrete physical and online

marketplaces, located outside the

EU, which engage in or facilitate

IP infringements, in particular,

counterfeiting and piracy.”

What did the report

mean for brands?

effective international rules and a solid,

predictable legal system for rights-holders

What the report does not mean for brands?

IPR owners cannot expect any immediate

effect from this initiative

ultimate responsibility still on brand

owners to enforce their IPRs worldwide

sole monitoring of online marketplaces is

not enough and other tactics must also be

employed (i.e. Offline Enforcement)

physical factories must be identified,

supply chains made transparent and

physical evidence obtained (i.e. test

purchasing, etc)

E-Commerce

Recommendations

The Recommendations aim in particular at

clearer notice and action procedures and calls

for the following;

more effective tools and proactive

technologies to detect and remove

counterfeit listings and other illegal

content

more transparency on online platforms

closer cooperation with right-holders and

enforcement authorities

more effective measures to detect and

remove counterfeit offers

increased level of cooperation with rightholders

and enforcement authorities

more clarity of the platforms’ terms of

service regarding prohibiting their use

to sell or otherwise trade in counterfeit

goods and services

more effective vetting of the sellers who

are trading on the platforms

more effective automated risk

management tools to identify high-risk

behaviours and potential red flags

The “Nice” List

The following platforms are not listed in EU’s

Counterfeit and Piracy Watch-List.

Aliexpress.com

Amazon.com

eBay.com

Taobao.com

Tmall.com

1688.com

Despite ongoing efforts by Aliexpress,

Amazon, eBay, Taobao, Tmall, and 1688.com,

there is still a significant volume of counterfeit

16 www.gipmatrix.com

goods being offered for sale. On these sites,

however, regards the above-listed e-commerce

platforms, it was also reported that;

a higher level of compliance with

the recommendation on measures to

effectively tackle illegal content online

better cooperation with right-holders

apply both proactive and reactive

measures to detect and remove counterfeit

offers

apply terms of service that include IPR

protection policy prohibiting the use of

their platforms to sell counterfeit products

or to provide other infringing services

adopt a number of good practices to

enforce the terms of service vis-à-vis

traders and to cooperate with rightholders,

including tools allowing

right-holders to register their brands,

report counterfeit listings and fast-track

takedown procedures

some platforms also reportedly partner

more closely with brand owners and

content creators to optimise detection

models

some platforms apply different

technological measures seeking to reduce

the availability of counterfeit offers, such

as

automated risk assessment tools

image recognition

semantic recognition algorithms

item-tracing authenticity services to

help consumers verify the authenticity

of products

Further progress is

still required

However, according to stakeholders, further

progress is needed to ensure that offers of

counterfeit products disappear from these

platforms or are significantly reduced

improved trader vetting systems

adoption or improvement of automated

risk management and detection tools

to identify high-risk behaviours and

potential red flags, including dealing with

repeat infringers and suspicious offers

better responsiveness to takedown

requests

more consistency in dealing with similar

cases

increased cooperation with right-holders

(i.e. by simplifying access to the brands’

registers)

The following indicators are not sufficiently

relied on by the platforms when proactively

identifying suspicious listings:

unusual low price level

overly long shipping time

seller history and feedback

lack of pictures of actual products offered

unauthorised use of catalogue pictures

use of pictures that are not showing

labels of the product

an absence of information in the

listing description (often making

it impossible for brand owners

or consumers to determine the

authenticity of the products

An Example of Existing

Best Practice

Real Deal Online Code of Practice http://

www.realdealmarkets.co.uk

The Real Deal Online programme has been designed

to assist administrators of social media selling groups

in discharging their legal responsibilities in relation

to consumer sales by means of their sales group.

The programme requires administrators to liaise

with their local enforcement authorities, to welcome

enforcement officers as members of the group and to

agree to the Real Deal Online Code of Practice, which

comprises just five simple steps:

to prohibit the sale of counterfeit and other illicit

goods

to act on information from IPR owners/

representatives reporting the sale of illegal goods

to notify law enforcement if they believe that

illegal goods are being sold within the group and

to exclude the sellers of such goods

to highlight warnings and advice notices posted

by law enforcement

to make sure that all members of the group are

aware of its fake-free policy

“The Watch-List is clearly a step in the right direction,

but we need more collaboration and continued

commitment from all stakeholders to continue

developing best practice methodologies such as the

excellent example set by the UK’s Real Deal Online

Code of Practice” Lisa Lovell, CEO, BEUK.

www.gipmatrix.com

17


Pharma Patents:

Healing the Rights

There isn’t a more valuable asset

than human health but it comes

at a price. Human beings are not

perfect, nature created them in

such a way that they should die

after a time. Permanent attempts

are made by researchers to put

off that time as long as possible.

Researchers devised many

methods to deal with inherent

and acquired human defects,

medicinal preparations being one

of the first choices.

The development

of a new drug is

a sophisticated

process…

Scientists synthesize thousands of substances

that could potentially become medicines.

According to sources, only one of ten thousand

obtained substances reveal properties that

may be useful in treating a disease. After

that preclinical and clinical studies follow,

registration with the health authorities

and finally, the drug goes to the patients.

Pharmaceutical companies spend hundreds

of millions or even billions of US dollars to

find a substance useful for treating a particular

disease. Development of a drug may take ten

years and often more. Sometimes the obtained

drug reveals unexpected properties as occurred

with Viagra which was initially intended to

treat ischemic heart disease but suddenly

revealed other unexpected properties, thanks

to which it became widely known.

It is common knowledge that the development

of efficient drugs involves much effort and

money. Pharmaceutical companies must offset

huge expenses for the development of the drug

and set aside money for future research. For

that purpose, they obtain patents that give

them a lawful monopoly for 20 or even 25

years. Registration of a trademark for the drug

is not a bad idea either which helps to gain

popularity of the drug.

Generic Drugs

Realities of life are such that where there is a

good drug it attracts attention, not only of

practicing doctors but also of the competitive

companies wishing to have their unwelcome

share of the successful drug. These companies

are generally termed as generic companies.

There is nothing bad in the idea itself. Generic

drugs are produced and sold in many countries,

their share being some 50 to 60 percent in a

given market. This, however, is correct in a

situation where the relevant patent has expired

and the company producing the original

drug has had its share of the market and is

working on a drug of the next generation with

improved properties. For example, Humira

(stands for “human monoclonal antibody in

rheumatoid arthritis) used in the treatment of

many ailments needing immunosuppressive

drugs were sold at more than $4000 per month

PATENTS

Valery Medvedev, Managing Partner, Russian and

Eurasian Patent Attorney - www.gorodissky.com

in 2017. After expiry of the patent in Europe in

2018 generic companies were selling the drug

for as little as several hundred USD. The UK

ministry of health plans to save £300 million

on Humira in 2019.

The problem of generics is also high on the

agenda in Russia. Some generic companies

are reluctant to wait until the patent dies and

initiate production and sales of biosimilars

before the expiration of a relevant patent.

This has really been a headache for original

pharmaceutical companies doing business in

Russia. To a large extent, this is explained by

the absence of patent linkage. The Ministry of

Health does not check whether there is a valid

patent and may issue a marketing authorization

for generic drugs before the expiration of the

relevant patent.

Protection of Drugs

Currently, there are two practically independent

systems of protection of drugs. One concerns

state registration of pharmaceuticals to

prove their safety, efficiency, and quality.

The procedure of registration is regulated by

the Law “On the Circulation of Medicines”.

Another is patent protection endowing the

patent owner with the legal monopoly for the

use of the drug in which the invention is used.

These two systems are independent. Russian

courts recognize that registration of drugs

per se does not infringe patent rights however

patent owners rightly believe that such

registration creates a threat of infringement.

This leads to the situation where a drug covered

by a third party’s patent may be registered

and offered on the market. Only when the

infringing medicine goes to the market the

owner of the patent may sue the infringer,

cancel the registration at the Ministry of

Health and claim damages. The law of many

countries including in one of the members of

the Eurasian Economic Union, Kazakhstan,

provides for the patent linkage. This means

that the applicant for the registration of the

drug should declare that he is not infringing

other persons’ rights while the patent owner

may ask the registration authority to suspend

the registration of the drug.

Russia is hopefully going to change the current

situation and introduce patent linkage too. The

Ministry of Health proposed amending the

Federal law “On the Circulation of Medicines”

related to the submission and examination

of an application for the state registration of

drugs. The bill provides that the pharmaceutical

companies wishing to obtain marketing

authorization should submit information on

the valid Russian patents and trademarks and

confirm that they do not infringe the rights of

other persons.

Compulsory Licenses

The above is not the only hurdle in the business

of pharma. There is another problem standing

in the way of normal pharmaceutical business

in Russia. Several years ago the Federal

Antimonopoly Service (FAS) came up with

a proposal to grant compulsory licenses on

the basis of administrative decision instead

of court. In fact, the concept of a compulsory

license is not new. Compulsory licenses are

provided in the patent laws of many countries

and Russia is not an exception. Article 1362(1)

of the Civil Code (CC) sets forth that if an

invention is not used or used insufficiently

during four years after the grant of a patent

any person may ask the patent owner to issue

a license, and, in case of refusal, sue the patent

owner and obtain a license through the court

judgment. This provision is dormant, however,

not a single license has been granted on the

basis of that article so far. Similar examples

may be cited from other countries: there was

a Bayh-Dole law of 1980 in the US providing

for the grant of compulsory licenses if research

was made with federal funding, however even

in that case no compulsory licenses have been

granted.

While promoting its proposal FAS made

emphasis on Article 1360 CC (the use of an

invention in the interests of national security)

rather than on Article 1362. Article 1360

allows the government to grant permission

for the use of the invention in the interests of

defense and national security. It may be agreed

that in some rare cases national security may

be jeopardized because of insufficient health

care so FAS (or another interested entity) holds

it that a compulsory license could be issued in

certain circumstances.

It seems that prospects of the proposal to

become a law are obscure and are tapering

off to zero. Being disappointed with the dim

prospects of accepting FAS’ proposals some

Russian pharmaceutical companies tackled the

issue from a different angle.

There is a provision in the Civil Code (Article

1362(2)) providing that if the owner of a patent

cannot use his invention without infringing

the rights for another (first) patent and the

owner of that first patent refuses to grant him

a license, the owner of the second patent may

demand a compulsory license from the owner

of the first patent in court.

The owner of the dependent patent when suing

the owner of the original patent should prove

that his invention is an important technical

achievement and has significant economic

advantages over the first invention. If this is

proved the court may grant a compulsory

license.

Proving a significant economic advantage may

not be difficult for the prospective

licensee. He did not spend money

on extensive research and thus

may afford cheaper prices riding

on the findings of the owner of the

original patent.

Important

technical

achievement is a

requirement not

easily defined

Some experts say that in many

cases the results of preclinical

trials of dependent inventions

are not confirmed during clinical

trials. Hence, in order to prove

that the dependent invention is indeed an

important technical achievement, the owners

of such patents should conduct full-scale

clinical trials in order to show advantages over

earlier patents. They prefer not to do that but

simply insist on the alleged importance of

their technical achievement. With that poor

armamentarium, they still go to court but may

be expected to be dismissed. This issue is not

simple.

However when such dependent patent is

obtained by a competitor (presumably unfair)

he and his supporters claim to have made

important technical achievement.

The question arises: how can attempts to use

other people’s inventions, for cheap be offset?

There are several options confirmed by

business and judicial practice. One is to file an

appeal against the grant of a dependent patent

with the Chamber of Patent Disputes of the

patent office. Usually, the ground on which

the appeal can be made is a failure to meet the

“inventive level” requirement.

This seems to be a natural step because such

“secondary” patents, in fact, they slightly

modify the original patents with some

minor modifications without any tangible

improvements. They do not possess better

medical effects nor are they free from negative

side effects. This approach is for the most part

sufficient to have the patent cancelled.

A different approach was demonstrated by

companies in other cases. The holder of a

patent for a dependent invention may obtain

a marketing authorisation while the original

patent is still in force. In this case, the owner

of the original patent may sue the owner of

the dependent patent and claim suspension

or withdrawal of the marketing authorisation.

It is obvious that while the original patent is

not infringed at this stage nonetheless the

marketing authorisation creates a threat for

such infringement. If the dependent patent

owner uses his marketing authorisation and

launches the drug on the market the original

patent owner will have to monitor the market,

collect evidence of infringement and engage in

much more costly court proceedings.

In order to make obtainment of marketing

authorisation impossible, steps are being made

to introduce patent linkage as mentioned

above.

The bottom line: never

Also, there has been a discussion in Russia give up; the stakes are

about “evergreen” patents. When the owner of

the original patent develops its continuation, a too high to ignore the

dependent invention and obtains a patent, he is

sometimes accused of unfair behavior wishing

opportunity to bring false

to extend the validity of his patent to eternity.

“innovators” in line.

18 www.gipmatrix.com www.gipmatrix.com

19


Published by

Northon's Media PR & Marketing Ltd

Recent amendments to the

Patent Act; Argentina

Dedicated to women in Intellectual property Law & Innovation

Recently, Law No. 27.444

introduced a series of

amendments in the Patents

Law. The changes introduced

for patents and utility models

are related to (i) Formal

requirements for filings, (ii)

Substantive examination, (iii)

Priority documents, (iv) Agent

applications, and (v) Deadline

reductions.

The reductions include: (i) for the submission

of third party observations - from 60

business days to 30 calendar days. (ii) For the

conversion of a patent to a utility model - from

90 business days to 30 calendar days. (iii) For

the correction of errors - from 180 days to 30

calendar days.

In particular, the main changes introduced

for patents are related to the deadlines for the

presentation of documentation related to the

patent and the priority document.

Mr Pablo A. Palazzi - Partner at Allende & Brea Argentina

www.allendebrea.com.ar

a certified copy from the original office and

a Spanish version of the submission was in a

different language.

The new regulations intended to make this

optional for trademarks, utility models

and patents, but a new Resolution (N°

250/2018) from the INPI ratified that

this is still mandatory, with exception of

patent submissions. This means that patent

applicants are not required to submit the

priority declaration and the transfer of rights

document (if needed).

In the past, the granting of the patent required

the fees payment, the priority declaration, and

the rights transfer document, among others.

If these documents were not submitted, the

applicant was not able to enjoy the international

priority right. Now, the only documents that

must be submitted are (i) denomination and

description of the invention; (i) plans or

technical drawings which are required for

the comprehension of the description; (iii)

one or more claims and; (iv) a summary of

the invention´s description. In other

words, the requirements were

shortened and simplified.

In addition, the patent act established that

any patent application could be converted

into a utility model application and the other

way round. This conversion could be done

90 days from the filing or during the 90 days

after the Patents Office demands it. However,

the amendments to the patent act shortened

the deadline up to 30 days. As before, if the

applicant does not convert the application

during the deadline established, it shall be

declared as abandoned. This modification

contributes to the aim to speed up the times at

the local Patent Office.

One of the most important amendments

is related to the deadline reduction for the

substantive examination. Previously, the

patent act established a period of 180 days

for the examination, where the applicant

could be required to present any additional

information. In this sense, after the 180 days

period, if the applicant did not comply with

the requirements, the application was declared

as abandoned. From

now on, the

Profiles - Rankings - Achievements - Accolades - Experience - Articles + Much more

Launching at AIPPI in London

September 15, 2019 - September 18, 2019

To be involved in this unique publication then, please contact us at

info@worldipwomen.com or call us on +44 (0)208-805-0711

www.worldipwoman.com

Electronic Applications &

what is needed to apply

Previously, the patent act established that in

order to get the patent submitted the applicant

had to file a written application at the Argentine

Patent Office. With the new regulation, this

requirement has been eliminated and Law N°

27.444 only demands “to file an application”.

This means that applications can be made

electronically.

In order to submit a patent application, it is

mandatory to provide the Argentine Patent

Office with information about the applicant

(inventor and company) and the specification,

containing title, description, claims, abstract

and drawings (if any) of the invention.

20 Sponsored www.gipmatrix.com

by PatentSeekers

Regarding the priority right, the patent act

established that priority had to be invoked

at the moment the patent was submitted and

accompanied by a priority declaration with

www.gipmatrix.com

21


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applicant has 30 days to comply with any

requirements of the Patent Office during the

substantive examination.

Regarding the substantive examination,

the amendment establishes a maximum

of 18 months for the applicant to pay the

corresponding fees, in contrast with the

previous deadline of 36 months. In this sense,

if the applicant does not pay these fees during

this period of time, the patent application shall

be declared as abandoned.

Changes in Patent

Publications

After the substantive examination, the Patent

Office decides if the patent is granted. Before

these new modifications came into force,

granted patents were published in the patent

office´s Gazette. From now on, they will be

published at the INPI´s website.

Law N° 24.481 established that anyone who

improved a discovery or an invention patent

had the right to request a patent of addition.

However, with the new regulations, only the

ones that improve an invention patent have the

right to request a patent of addition.

In this sense, the actual requirements

for obtaining a patent are:

(i) Language: it is mandatory to submit a

Spanish sworn translation within ten

days from the filing date if the patent is

submitted in a different language.

(ii) Power of attorney: the signature of

the grantor in the power of attorney

must be certified by a Notary Public

and the document must be legalised or

provided with the Apostille of the Hague

Convention in order to be valid.

(iii) Priority Document: the date and priority

number of the original application must

be included on the patent application. A

certified copy from the original may be

requested by the Patent Office during the

substantive examination.

(iv)Substantive examination: the

substantive examination must be

requested and paid within 18 months

from the filing date.

Regarding utility models, the

changes are the following;

Previously, the issue of the certificate of utility

models relied on certain requirements, such

as the invention to be new and with industrial

character. The fact that the invention lacked

inventive activity or had been disclosed abroad

was not an impediment to obtaining the

certificate. This last sentence has been deleted

and the new regulations do not explain

anything about an impediment regarding the

certificate.

Once the applicant files the utility model

application and pays the fee for the substantive

examination, the Patent Office will check if it

complies with the requirements and publish the

application. In this sense, the new regulation

enables a period of 30 days to file oppositions

against applications. Once the 30 days expire

the Patent Office will decide if the application

is granted. However, if the applicant does

not pay the substantive examination fee, the

application will be declared as abandoned.

Utility model applications had to be signed by

the applicant and accompanied by the proof

of payment of the fees. Now, the application

has to comply only with the corresponding

payments in order to avoid the Patent Office to

declare the application null.

In addition, when applications were filed by

legal representatives, it´s personality had to

be properly proven complying with certain

requirements. With the new regulation, the

representation shall be considered as an

affidavit and the Patent Office will be able to

ask for the supporting documentation. In

the case the application is filed by a business

manager, the management shall be ratified

within 40 days after the filing.

When a patent or a utility model was denied,

the applicant had the possibility to appeal in

order to the Patent Office re-consider the denial

of the application or against any observations.

From now, the applicant will be able to file an

administrative appeal against the denial of the

application within 30 days from the denial.

In relation to the funds’ administration, the

INPI has the power to manage the funds raised

from its services and to establish, modify or

delete fees related to the procedures, including

the ones related to the holder´s rights.

Furthermore, the INPI has now the power

to (i) regulate the patents and utility models

procedures, in everything that facilitates them;

(ii) adapt requirements that shall become

obsolete because of new technologies; and

(iii) simplify the registration procedure for the

applicants and the society as a whole.

To conclude

Many of the changes

introduced in the Argentine

Patent Act are welcome and

it is hoped that it will simplify

and shorten the trademark

processes in our country.

Several regulations of the

INPI remain to implement

some of these modifications.

22 www.gipmatrix.com www.gipmatrix.com

23


Nanobodies –

A Patent Landscape Case Study

“Providing insight into current

developments in the Nanobody

Patent Landscape via

statistical analysis conducted

in Questel Patent Portal”.

Mr Ashley Evans – Senior Manager at Patent

Seekers Limited, (Biochemistry BSc) with over

10 years’ experience and biotech subject matter

specialist, the company having completed

more than 15,000 searches for international

patent attorneys both in private practice and

in-house, and for major blue-chip companies –

discusses a patent landscape case study focused

on nanobodies and reveals the key findings

(email: mail@patentseekers.com).

Nanobodies were originally developed from

the discovery that Camelidae (e.g. camels,

etc.) have functional antibodies that

comprise only heavy chains, where the

target recognition module is comprised of

a single variable domain (VHH or Nb) and

two constant domains (CH2, CH3). When

cloned and isolated, the single variable

domains possess full antigen binding

capacity and have excellent stability.

Nanobodies are based on single-domain

antibody fragments and have potential

in an array of diseases, they possess

significant advantages:

-Small size, high solubility, high

stability.

-Highly effective tissue penetration

in vivo.

-Can be linked to Fc-domains,

peptide tags, toxins or other

nanobodies.

-There is the potential for

conjugation at specific sites to drugs,

radionuclides, photosensitizers, and

nanoparticles.

Recombinant production has proven to be

cost-effective and nanobodies may be utilised

as building blocks for multi-domain constructs.

It has been documented that the advantageous

properties of Nanobodies are predominantly

related to their single domain structure,

which is more hydrophilic in comparison with

standard antibody fragments. The Nanobody

surface is convex and the CDR3 loop is

extended, thus enabling effective recognition

of hidden epitopes. Nanobodies are deemed to

Ashley Evans – Senior Manager at Patent Seekers Limited

www.patentseekers.com

be non-immunogenic as a result of high similarity with human VH sequences, they are widely

discussed as very flexible tools, utilised in the fields of research, diagnostics, and therapy.

Whilst research papers offer insight into current scientific research, patent mapping enables the

identification of key trends and information specifically related to the patents in the Nanobody

technology space. This data can be utilised to support business decisions such as focusing areas

of research, planning for current market developments, identifying competitors and supporting

patent filing strategies. The following case study will provide further insight into current

developments in the Nanobody Patent Landscape (2054 patent families identified).

How Rapidly Is New Innovation Taking Place

in This Space?

This graph appears to illustrate that Nanobodies are an accelerating area of technology with

peak activity for the number of filings occurring in recent years since 2015. The apparent dip in

filings in 2017/2018 is most likely explained by applications yet to be published that would be

claiming these years as a priority. The findings may offer an indication that generally assignees

may be building their portfolios. Furthermore, it could be expected that the number of nanobody

related filings may increase further in the coming years as research and development continue

to contribute to the existing trend for greater activity (approximately 28% of the portfolio is

allocated to 2016-17). Note: There will be a gap in current patent information as a result of the

18-month delay between the filing of an application and its publication.

What Is the Global

Origin of

This Technology?

The distribution of the top twenty priority

countries for this field is shown in the above

map. The map shows priorities originating from

a range of countries across the globe, with a

significant number of patents originating in the

US and China. The next level of distribution

appears to include Europe, Australia, and India.

It should be noted that the map does not show

EPO or WO priorities, there were approx.50%

of families comprising EP application(s) and

approx.72% comprising WO application(s)

within the portfolio. This may indicate that

while the Nanobody technology area has a

relatively global focus with established markets,

there exists further room to expand into new

territories and further develop existing markets

beyond the USA and China.

What Are the Trends

in Technology Focus?

This heat map shows the number of publications

placed in the top twenty IPC classifications

over time. As previously discussed nanobodies

are flexible biological tools and as expected the

classification codes identified in this chart reveal

that the portfolio is diversified across a variety

of areas. Since 2016 it appears that the two IPC

classifications with the largest distributions are

as follows below, suggesting a therapeutic focus

to the patent portfolio:

A61K39/395 - Medicinal preparations

(comprising Antibodies)

C07K16/28 - Immunoglobulins - against

receptors, cell surface antigens or cell surface

determinants.

What Is the Global

Grant Success of This

Technology?

The chart above illustrates the proportion of

granted patents to patent applications for the

top twenty most prevalent patenting authorities

in this field. At the time of writing, 49% of the

portfolio is classified as pending, with 37%

classified as granted. This may further indicate

that the Nanobody field is an established yet

growing area. The proportion of granted patents

could be expected to increase in the near future,

should this area of technology keep pace with

the identified trend of an increasing rate of

filings and the high proportion of pending

applications.

24 www.gipmatrix.com www.gipmatrix.com

25


Who Are the Current

Competitors?

The most prevalent assignee appears to be

Ablynx, owning approximately 8% of the

publications in the field and possessing a

strong foothold as the leading company in this

area. Overall, 24% of the portfolio is owned by

the top 10 players who would appear to have

a strong allocation of the Nanobody patent

portfolio. The remaining distribution seems to

be evenly spread over the remaining assignees.

As only three assignees have more than 50

patent families, there are likely many smaller

players in the field.

Technology Landscape

Who Are the Likely

Future Competitors?

The heat map indicates a strong rise in

publications from Novartis over the last

eight years. They face strong competition

from Ablynx who appear to be established

as the market leading Nanobody biotech

company and have consistently invested in

growing their patent portfolio. This chart

enables useful insights into the activities

of competitors and to establish a trend in

terms of which assignees are leading the race

for innovation within this space. It can be

useful to understand the levels of investment

from competing assignees and it may be

beneficial to identify future acquisitions that

could complement an existing IP portfolio.

Guangxi and Nanchang Universities are both

recent entries, currently Nanchang is also the

third biggest assignee and based on current

trends, is actively growing its portfolio and

research interests.

What Technologies Are the Top Companies Working On?

This heat map shows the main IPC

classifications assigned to the patent portfolios

of the top 20 assignees identified within

the Nanobody dataset. This may enable a

comparison of how diversified or concentrated

the assignee’s portfolio may be. It can provide

an overview of the positioning of applicants

in terms of their research interests or the

identification of any potential complementary

relationships that may exist for collaboration.

It appears that Ablynx has a diversified

patent portfolio with a variety of therapeutic

and diagnostic interests which adds further

weight to its position as a key assignee in the

nanobody field. Using Questel Patent Portal’s

collaboration chart, it was found that there

appears to be collaboration between Novartis

and the University of Pennsylvania, who have

similarly matched patent portfolios based on

the distributions documented above.

This patent map illustrates a set of documents clustered according to their semantic proximity where a

point corresponds to a patent family. The map provides a visualisation of the technology clusters prevalent

within the Nanobody portfolio and reveals a diverse set of interests. The portfolio is predominantly based

on therapeutic patents, with cancer therapy being a hotspot of interest. There also appears to be a variety of

clusters related to the nanobody structure, recombinant technologies, and drug targeting.

To Conclude

This patent landscaping case study has revealed that Nanobody

technology is an established field with trends indicating great

potential for future innovation and patent filings across a diversified

portfolio, comprising a variety of therapeutic and diagnostic related

technology clusters. The landscape has identified a variety of

competitors and their activity levels, including large corporations

such as Novartis, more niche and specialised companies/subsidiaries

such as Ablynx, and a collaborative university presence.

For further insight, specialised state of the art searching could

enable investigation of assignee portfolios or further searching of

more specific Nanobody subject matter. Thus, providing a further

breakdown of inventions that lie within a specific area of the portfolio.

It’s important to understand the limitations (and the errors that can

arise) from this form of statistical based landscape work which is

designed as a guidance tool and to avoid drawing “final” conclusions

such as for infringement/FTO purposes, which requires specialist

searching and analysis. Additionally, there are other charts covering

areas, not within the scope of this article, such as key inventors, key

patents identified from citation analysis and other assignee metrics,

which could also provide useful investigative information relating to

this vibrant and interesting technology area.

26

www.gipmatrix.com

www.gipmatrix.com

27


Specialist global search services for patent attorneys,

universities, technology companies and SME’s

Patentability/Novelty Search

Infringement/FTO/Clearance

Invalidity/Patent Busting

State of the Art

Patent Mapping/Landscapes

Patent Monitoring

Patent Status

Competitor Analysis

Tel: +44 (0)1633 816601

Email: mail@patentseekers.com

www.patentseekers.com


Can patent visualisations indicate how patent attorneys’

working environment

has changed?

At Victor Green & Company we

have been asked to carry out patent

landscape visualisations to provide

analysis, often for broad subject areas.

To show an example of a landscape,

analysts looked at patents and patent

applications that might impact the

working life of patent attorneys. There

are some products on the market that

can create inventions, locate prior

art or file patent specifications. This

article gives an overview of the patent

landscape that may have given rise to

such products.

Background

Some countries, for example, Japan and the

Republic of Korea have considered extending

intellectual property (IP) rights to machines

according to Keisner [1]. The European

Parliament recognised the need for legal status

for robots in its Civil Law Rules on Robotics

[2]. Automatic patent drafting was described

by Aristodemou & Tietze [3]. Khoury

considered the use of big data to find prior art

[4]. McLaughlin, Fraser, Hattenbach, and Koza

commented on AI generated inventions [5-8].

Khoury argued that “Human-Like Robots” or

“Hubots” should not be able to obtain IP rights

for their inventions [9].

Scope

The aim was for the landscape to give a broad

overview of patent attorneys’ work, to include

anything on data processing that might cross

their desk. If topics were viewed as being

within a patent attorney’s field of expertise,

they were left in the final set, even if they

had not been the focus of the search strategy.

For these reasons, some items were retained,

for example; on patent analysis, databases,

search algorithms, analytical tools, mapping,

translations, and white space analysis.

Some topics were excluded. For example,

blockchain technology relating to IP was not

investigated, as it was a substantial topic in its

own right and there were recent reports on this

technology. For this article, it was assumed

that patent attorneys did not spend much time

on patent searching and they obtained searches

from patent analysts. Inventions on patent

searching and retrieval may be covered in more

detail at another time. Generally, references on

trademarks and copyright were left out.

Method

A strategy was devised to retrieve patents and

patent applications on IP data processing,

which was run in the PatBase database and

PatBase Analytics module. For further

information about PatBase please see www.

minesoft.com and for an explanation of

strategy construction, see https://www.

victorgreen.co.uk/how_we_search.html.

The strategy started with keywords about

“patents” and “machine filing” in English,

French, German and Spanish and two patent

classification codes. The data processing

subclass (G06Q) from the Cooperative Patent

Classification (CPC) had two subgroups for IP

management (G06Q50/184) and management

and planning (G06Q10/06), which looked of

interest. Searches revealed further keywords

and classifications which were added to the

strategy e.g. management and automation

(G06Q10/10), marketing and pricing

(G06Q30/02) and finance (G06Q40/06).

Iterative search

improvement and

result filtering

Any additional terms and codes identified

during the search were added to the strategy.

Due to a large number of Asian assignees

in the field, the search was broadened by

adding non-Latin character keywords for

Chinese, Japanese, Korean, for example, 특허

for “patent” in South Korean. The Super

Classification option was used to broaden

the international coverage. This included

Japanese Classification schemes as well as

the Cooperative Patent Classification (CPC),

International Patent Classification (IPC) and

the US Patent Classification (USPC).

A ranking of patentees revealed a further CPC

on business transactions (G06Q30/0601).

Generally, the use of classification codes

helped to reduce false drops for terms such

as “patent”, “intellectual property”, “prior art”

and “invention”. These appeared in numerous

specifications to introduce the invention,

without the terms being the subject matter

Victor Green, Founder, Alessio Brizzi & Jo Shaw

www.victorgreen.co.uk

of the invention, for example, “this invention

claims”.

The scope for this article as defined by the

following concept combination searches:

keywords for the “patent” concept

with keywords or classifications for “IP

management”,

keywords for the “patent” concept

with keywords or classifications for

“management and planning”,

keywords for the “patent” concept with

keywords or classifications for “machine

filing”,

keywords for the “patent” concept with

keywords or classifications for “finance”,

keywords for the “patent” concept with

keywords or classifications for “business

transactions” plus

keywords for the “patent” concept

with keywords or classifications for

“management and automation”.

Results were checked for relevance; irrelevant

records were removed leaving over sixteen

hundred families in the final set, which was

then visualised using PatBase Analytics and

Visual Explorer. The subject matter included

automatic patent filing, computer-generated

inventions, formalities software, reminder

systems for renewal fees, identification of

potential patent infringement, methods for

determining patentability, systems to grant

patents, crowdfunding platforms to

secure IP, trading tools, value

assessment

methods,

auctions for

IP, prediction

systems, patent

portfolio

management,

business strategy

tools, licensing

arrangements

and information

disclosure statement

management. This

image shows an example

from the results set, of a

method for presenting

patent information.

Fig. 1 Sample image of patent software, US2018089892 from Olaru Gheorghe

Patbase Analytics results

The PatBase Analytics dashboard summary showed that 27% of families had grants. The

jurisdictions graph showed that the US had most filings and most grants. It was followed by

China, South Korea, and Japan. There has been an increase in patent filings from Asia over the

years.

Fig. 2 Top 20 jurisdictions by families, applications and grants

The map view of key filing countries highlighted the US and Asia

Fig. 3 Top 20 jurisdictions by families, applications, and grants

The analysis of

filings showed a

gradual increase

in families filed

since 1999. The

graph shows a

slight acceleration

in filings starting

from the year 2015.

The fall after 2016

is probably to be

ascribed, at least

partially, to the

eighteen months

between priority

and publication.

Fig. 4 Most recent 25 years by families, applications and priority

Conclusion

The areas covered in this landscape

corresponded to some software products

that are available for patent attorneys and

IP companies. The inventions aimed to help

attorneys with tasks such as management of

IP workflows, the location of prior art and

prosecution of patent specifications. The

analysis showed that the area was fairly young,

with little to no filings prior to the year 2000,

and showed a positive trend in the number

of applications, with an increase after the

year 2015. This was probably due to the fact

that effective, commercially viable products

need to be able to deal with the complexities

that attorneys navigate, and are likely to rely

heavily on the latest advancement in fields

such as machine learning, natural language

processing, and data mining.

Taking into consideration the

above-mentioned findings, and

the limited number of products

currently available on the market,

it would seem that the sector has

not yet matured, but is attracting

increasing commercial interest.

References

1 Keisner CA, Raffo J and Wunsch-Vincent S

Breakthrough technologies – robotics and IP

WIPO Magazine, 6, Dec 2016

2 European Parliaments

Resolution of 16 February 2017 with

recommendations to the Commission on Civil Law

Rules on Robotics (2015/2103(INL))

Strasbourg Final edition, Feb 2017

3 Aristodemou L & Tietze F

The state-of-the-art on Intellectual Property

Analytics (IPA): A literature review on artificial

intelligence, machine learning and deep learning

methods for analysing intellectual property (IP) data

World Patent Information, Volume 55, Pages 37-51,

Dec 2018

4 Khoury AH & Bekkerman R

Automatic Discovery of Prior Art: Big Data to the

Rescue of the Patent System, 16 J. Marshall Rev.

Intell. Prop. L. 44 (2016)

5 McLaughlin M,

Computer-Generated Inventions

SSRN Jan 2018

6 Fraser E

Computers as Inventors – Legal and Policy

Implications of Artificial Intelligence on Patent Law

Scripted, Volume 13, Issue 3, Dec 2016

7 Hattenbach B & Glucoft J

Patents in an era of infinite monkeys and artificial

intelligence

STAN.TECH. L.REV. 19, 32 (2015)

8 Koza JR, Keane MA & Streeter MJ

Evolving Inventions

Scientific American 288, 52 – 59, 2003

9 Khoury AH

Intellectual Property Rights for Hubots: On the Legal

Implications of Human-like Robots as Innovators

and Creators

Cardozo Arts & Entertainment Law Journal. Vol. 35

Issue 3, p635-668, 2017

30 www.gipmatrix.com www.gipmatrix.com

31


Pakistan Office:

(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)


34 www.gipmatrix.com

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Patent information

can be challenging.

Rely on us to help

provide you with

comprehensive,

viable solutions

Our solutions boost efficiency,

without losing accuracy.

• Search patents intuitively and comprehensively with PatBase

• Explore the landscape and turn data into intelligence with

integtrated Analytics V2

• Identify potential licensing opportunities with Citation Explorer

• Monitor competitor’s patents with the comprehensive Legal Status Viewer

Find out how Minesoft solutions can transform the way you work at www.minesoft.com

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