Global IP Matrix - Issue 3 - Jan 2019

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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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 


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 

IP Right Prosecution & Litigation 

Corporate Legal & Consulting 

IP Value-Added Services 

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

Licensing, Counseling, Litigation, Transaction 

Territories: Taiwan, Mainland China, Hong Kong, and Macau 

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Web site: http://www.deepnfar.com.tw 

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. 

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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 

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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 

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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 


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. 


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. 


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. 

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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 


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. 


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. 


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 



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”, 


with keywords or classifications for 

“management and planning”, 

keywords for the “patent” concept with 

keywords or classifications for “machine 

filing”, 


keywords or classifications for “finance”, 


keywords or classifications for “business 

transactions” plus 


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 


31

Pakistan Office: 

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


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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 

UK: +44(0)20 8404 0651 

DE: +49 (0)211 7495 0930 

US: +1 631 459 4786 

JP: +81 3 54039191 

Lond o n • Dussel d o r f • Washington • To k yo

Global IP Matrix - Issue 3 - Jan 2019

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