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Inside IPPro: The Annual
The value of tradition and the digital future
A strategic plan
GRUR’s Stephan Freischem and Sandra von Lingen discuss a
good year for the association, as it celebrates its 127th year
INTA president Tish Berard sets out the progress made in the
past year on each leg of the association’s strategic plan
The IPO’s Mark Lauroesch discusses the
current climate for IP in the world as it
turns increasingly nationalistic
The IACC breaks down how it has
responded over the last 12 months to a
worldwide rise in counterfeiting
Sozos-Christos Theodoulou describes
ECTA’s recent efforts, which include a
renewed focus on thought leadership
Kristina Grinkina of CIPA runs through
an eventful year for the association
IPzen’s Emmanuel Harrar explains the
potential applications of blockchain
Sarah Matheson of AIPPI describes the
association’s broad outlook
AIPLA president Myra McCormack
explains the association’s move to
digital and more
Bill Elkington, president and chair
of the Licensing Executives Society,
describes the latest for the association
Detective inspector Nick Court runs
through PIPCU’s 2018 successes and
looks forward to 2019
4 IPPro: The Annual
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Feature · GRUR
Embracing the value of tradition and the digital future
GRUR’s Stephan Freischem and Sandra von Lingen discuss a good
year for the association, as it celebrates its 127th year
Since its foundation in 1891, the German Association for the
Protection of Intellectual Property (GRUR) has become the
largest and oldest non-profit, non-lobbying association in
Germany devoted to the protection, academic advancement
and development of IP law.
With over 5,200 members hailing from 60 countries, GRUR
offers a forum for a wide range of IP professionals: lawyers,
patent attorneys, judges, academics, enterprises, associations
of enterprises, and German and European IP offices, as well as
international IP authorities and their respective staff members
In fulfillment of its statutes, the association provides
assistance to legislative bodies and authorities competent for
IP issues, organises conferences and workshops, and offers
continued education courses for lawyers and patent attorneys.
Over the past century, GRUR has become better known under
its abbreviation (based on its German name) and the name
Grüner Verein (Green Association), a nod to the distinctive,
green covers of its four leading German IP law journals: GRUR,
GRUR International, GRUR-RR and GRUR-Prax.
Moreover, it offers access to thousands of additional edited
court decisions through its online resource tool GRUR-RS,
which is hosted by the platform Beck-Online, of GRUR’s
long-standing, renowned legal publisher Beck-Verlag which
also hosts and presents all GRUR publications online via the
GRUR Plus Module.
At the basis of the GRUR Association is the General
Assembly to which all major decisions are submitted for
discussion and decision.
Projects and decisions are prepared and managed by the
General Council in accordance with the principles laid down
by the General Assembly.
The executive committee, appointed by the General Council
and headed by the president, currently Dr Gert Würtenberger,
and up to three vice presidents—Prof Dr Reto Hilty, Prof Dr
Jochen Bühling and Ludwig Schaafhausen—conducts the
regular affairs of the association.
The executive committee is supported by the secretary
general, Stephan Freischem, the vice secretary-general,
Dr Anke Nordemann-Schiffel, the treasurer, Dr Gunnar
Baumgärtel, and their business office staff in Cologne, which
act as contact point for members, execute the boards’
management decisions, organise the various meetings and
GRUR events, and develop new project ideas.
At a local level, GRUR members are organised into seven
regional groups, covering all areas of Germany.
The academic statements, research projects and event
programmes of GRUR are developed by eleven special
expert committees and working groups in charge of
all areas of IP law as well as competition, antitrust and
6 IPPro: The Annual
GRUR · Feature
The core work
GRUR´s academic business year ends and restarts in
September of each year, when the GRUR Annual Meeting
takes place, and subsequently runs for a twelve-month period
until the next yearly conference.
Looking back on the past period between 2017 and 2018, it
was a busy year indeed.
At the core of GRUR´s work, there are the association´s
advisory opinions and position papers. They are
drawn up in the GRUR Special Committees and highly
regarded due to their competence, neutrality and wellbalanced
questions related to “Artificial Intelligence, Robotics and IP—
What is at stake?”.
Shortly thereafter, GRUR council members met with American
IP Law Association representatives at the Max Planck Institute
for Innovation and Competition in Munich for an update on US,
European and German IP law.
In the same month, the traditional annual meeting of
representatives of the GRUR executive council and the special
committee with representatives of the Federal Ministry of
Justice and Consumer Protection (BMJV) took place in Berlin
to discuss topical IP, antitrust and data law issues as well as
the new German Government’s visions and work agenda in
the field of IP law.
From September 2017 to August 2018, GRUR submitted
nine advisory opinions on draft legislation at national and EU
level. It also submitted international treaties, questions of
the application of the law and pending court proceedings to
the competent ministries, authorities, committees or courts,
such as to the European Court of Justice—participating
in a role as competent third party—or to the German
Federal Constitutional Court with regards to the pending
constitutional complaint against the Unified Patent Court
(UPC) ratification in Germany.
At regional level, over 70 expert lectures were organised by
the seven GRUR Regional Groups (so in average, one lecture
per regional group every month)—another cornerstone of
Like in previous years, GRUR participated as observer and
user association in various meetings, cooperation projects and
conferences of the World Intellectual Property Organization,
EU IP Office, the European Patent Office and the German
Patent and Trademark Office.
For several decades now, GRUR has continuously offered
training seminars for IP professionals in cooperation with
the DeutscheAnwaltAkademie, the German Bar Association
(Deutscher Anwaltsverein) and the German Chamber of Patent
Special courses are held for lawyers and patent
attorneys wishing to qualify as specialists in IP law and
related fields of law.
Event-wise, the GRUR Annual Meetings, which took place at
the end of September 2017, attracted over 700 participants
from more than 30 jurisdictions.
Later in the year, in November 2017, GRUR and Oxford
University Press held the 8th GRUR Int/Journal of Intellectual
Property Law & Practice (JIPLP) Joint Seminar in London
within the framework of the publication partnership
established between their IP journals GRUR Int and JIPLP in
2013. Over 250 participants attended this event to discuss
the topic of “A Distinctive Mess? Current Trade Mark Law and
Practice in the EU and UK”.
In the first week of June, a GRUR delegation visited
representatives of the European Commission’s Directorate-
General GROW for an exchange of views on current issues of
patent, trademark and design law in particular.
In the same week, GRUR held its 9th GRUR meets Brussels
Workshop in the EU capital, a one-day international event
with 10 high-level speakers and over 150 attendees exploring
In the framework of its academia support programmes,
the GRUR Academic Fund continued supporting, among
other projects, the yearly conferences of the Circle of
European Trade Mark Judges (CET-J), and co-funding
three professorial university chairs (in some cases including
members of their scientific staff) in order to support the
development and strengthening of academic IP hubs in
different parts of Germany.
In that context, funds were granted to the chair of civil law
and IP law at the University of Munich (the so-called GRUR
chair), the chair of civil law, IP and German and European Civil
Procedural Law at the University of Osnabrück and the chair
of civil law and IP law, especially Patent and Trademark Law at
Leibniz University Hannover.
The GRUR Young Academics Fund once again supported the
annual conference and subsequent conference publication of
the GRUR Young Academics group, which was established in
2016 and aims to ehance the research, debate and exchange
of knowledge amongst young IP scientists and practitioners.
Feature · GRUR
Funds were also granted to participants of the Munich IP Law
Center (MIPLC) programmes and selected other continued
courses. Moreover, young IP academics are being financially
supported in their participation in the upcoming GRUR Annual
Meeting 2018 Digital Future in Berlin.
The digitalisation of the world affects society and all areas of
life. New technologies are constantly arising at increasingly
shorter intervals, posing new and exciting legal questions and
challenges—many of them yet unknown—to IP, competition,
trade secrets, antitrust and data law, and, of course, the
enforcement of the respective rights.
How will—or rather, may—artificial intelligence and robotics,
machine learning, digital mobility, virtual reality, algorithmdriven
marketing and opinion making, 3D Printing, and
digital markets affect, change, and shape the future of our
law and practice? What are the actual technologies behind
these new developments? In how far, and at which stage,
do they call for legislative action at national and/or EU level?
GRUR has taken on the vision and challenge of becoming
a platform and `academic think tank´ for the promotion of
research, exploration and discussion of the impact of `digital
topics´ on the future of IP and related fields of law in the
coming decade and beyond.
by digitalisation. To give an outlook, the 9th GRUR Int/
JIPLP Joint Seminar which will take place at Industrie-
Club, Düsseldorf, on 28 November 2018 will be dedicated
to the topic “the EU approach to standard-essential
patent (SEPs)—Huawei, its aftermath and potential
developments”, aiming at presenting the perspectives
from patent and antitrust experts from academia, private
practice, jurisprudence and EU policy makers a year after
the release of the EU Commission’s communication on
SEP licensing. Last but not least, GRUR will bring forward
the internationalisation of its professional journal GRUR Int,
with the aim of transforming it into a fully English-language
journal in the near future.
It goes without saying that in all its activities, GRUR will
continue to co-operate and exchange views with befriended
IP associations, especially International Association for the
Protection of Intellectual Property (AIPPI) and the national
groups of AIPPI, the members of the European Sister
Associations—a group of European trademark and design
associations active as EU IP Office user associations—as well
as IP offices, institutions and legislative bodies in Germany,
Europe and beyond.
To create a framework for GRUR´s various activities in this
new area of academic research and discussion, GRUR
established the GRUR Special Committee on Data Law at
the end of 2016, which, since then, organised two GRUR
meets Brussels Workshops (in 2016: “Towards a connected
Digital Single Market—what about a new ‘industrial data
protection right’ for companies?” and in 2018: “Artificial
Intelligence, Robotics and IP—What is at stake?”) and also
set the foundation for the design of the GRUR 2018 Annual
Meeting on “Digital Future”. This year, the GRUR annual
conference, which will take place from 26 to 29 September
2018 at Hotel InterContinental in Berlin, will strongly focus
on the digital issues and challenges. The sessions of our
expert committees will provide in-depth analysis from the
various angles of IP, competition, antitrust and data law,
including industry, judicial and practice perspectives. So
far, over 700 participants from 35 countries have registered
for our conference and registrations are still coming in, so
we are expecting vivid and inspiring encounters, exchanges
Later in the year, GRUR will, of course, also continue
its activities in the more traditional fields of IP, although
many of them are, in fact, shifting towards and impacted
Sandra von Lingen
Senior manager international
affairs and publications
8 IPPro: The Annual
Feature · IPO
Looking into the crystal ball
The Intellectual Property Owners Association’s Mark Lauroesch
discusses the current climate for IP in the world and whether
increasingly nationalistic tendencies might serve to set back the
harmonisation of IP laws
These days, making predictions is quite a challenge. We are
continually surprised by what we wake up to: new scandals,
tweets, and stock records, to name a few. Anticipating
what is on the horizon in the world of intellectual property
is no different. It is important to position ourselves as IP
professionals for what is coming next, so we’re giving it a shot.
The Supreme Court’s interest in IP
reveals a tension between legal and
Over the last several years, the US Supreme Court has taken
up a markedly increased number of IP cases for review. In the
past, the US Court of Appeals for the Federal Circuit, which
hears all patent appeals cases, was generally considered the
court of final resort for patent issues.
the constitutionality of the US Patent and Trademark Office’s
(USPTO) Patent Trial and Appeal Board (PTAB) post-patent
grant proceedings, the Supreme Court took up the issue
in Oil States v Greene’s Energy. This sent patent lawyers
scurrying to pull their dusty constitutional law textbooks from
the shelf to make predictions about how the case should be
resolved. Patent lawyers pontificated on this complex aspect
of constitutional law.
Some hoped the court would eliminate the proceedings,
which they believed to be outright unfair. Others defended
the proceedings as an efficient mechanism for eliminating
ill-granted patents. Others urged that patents should be
recognised as personal property rights, concerned that the
Supreme Court decision would diminish the right recognised
in article 1, section 8 of the constitution.
Many believe the uptick in Supreme Court activity represents
the court’s distinct interests in addressing IP policy concerns
and conforming Federal Circuit precedent to Supreme Court
jurisprudence. Some speculate that the rumbling about
so-called “patent troll” litigation did not fall on deaf ears,
believing that judicial activism resulted in several earthshaking
decisions around patent subject matter eligibility.
As the Federal Circuit has been repeatedly reversed over the
last few years, it has become apparent that the Supreme Court
disfavours objective patent law rules that arguably provide
businesses with more certainty and predictability, instead
preferring “totality of the circumstances” approaches, believed
to provide more flexibility and fairer jurisprudence.
Looking into the crystal ball, there is nothing pointing away
from this trend. After denying two petitions for certiorari on
Ultimately, the Supreme Court upheld the constitutionality
of the proceedings, but noted that its decision was to
be read narrowly and “should not be misconstrued as
suggesting that patents are not property for purposes of the
due process clause or takings clause”. The constitutional
door is ajar, and we will likely see new challenges to these
proceedings. Justices Gorsuch and Roberts dissented in Oil
States, and the next new justice could be more amenable to
such new challenges.
Will the result of the “patent troll” narrative be to
curb patent abuse or to disincentivise innovation?
It is often the swamp image of Washington politics that
convinces people that congress won’t change its point of
view, but sometimes it is simply a narrative captured in
10 IPPro: The Annual
IPO · Feature
More than five years ago, there was near-universal support by
IP and business leaders for the narrative that non-practicing
entities (so-called “patent trolls”) were pervasively abusing the
patent system by falsely accusing consumers of infringement,
asserting patent claims with unjustifiable scope and using
unethical litigation tactics.
The narrative was persuasive, and a good deal of action
was taken. The Federal Rules of Civil Procedure were
changed to require plaintiffs to more definitively state the
basis for their cases. The Leahy-Smith American Invents
Act was enacted with an objective to address trolls, and
the Federal Circuit and Supreme Court issued several
decisions to help curb abuse.
Judicial activism, however, led to a series of pivotal cases
that dramatically changed the scope of patent subject matter
eligibility. Consequently, some extremely deserving inventors
can unfortunately no longer receive patent protection and no
longer have an incentive to invest in such innovation.
Can congress fix it? Yes, but the “troll” narrative persists, in
part because there still is some truth behind it. Patent litigation
abuse still exists and does need to be addressed.
Many are concerned, however, that Congress might “fix”
the troll problem by stifling innovation. Some label the
troll narrative as disingenuous, intended to facilitate more
“efficient infringement,” where companies disregard others
patent rights and litigate for a more favourable outcome only
Others say that patents inhibit innovation, perhaps because it
is costly to license the many different inventions their products
aggregate. Of course, it is more costly to pay to use others’
inventions, just like it is costly to absorb the expense of
abusive patent litigation. But will we swallow the patent abuse
narrative at the cost of allowing some companies to steal
Will the new USPTO director address criticism of
inter partes review proceedings or decide the patent
trial and appeal board has it right?
For a while now, many in the IP community have been critical
of the PTAB post-patent grant proceedings that consider
the validity of issued patents. The previous director was
disinclined to address those concerns by changing the
regulations governing the proceedings.
New director, Andrei Iancu, has shown a willingness to
address these concerns about fairness. Iancu has already
asked for comments on changing the claim construction
standard used in the proceedings from broadest reasonable
interpretation to the Phillips standard.
This change would reduce the possibility of inconsistent
claim construction determinations by the PTAB and
federal courts and possibly increase the predictability of
patent validity disputes and promote confidence in the
Iancu is also looking at additional changes to address
the patent community’s perceptions. He is a litigator by
background and, despite being new to the organisation,
ensuring procedural fairness with litigation-esque rules is
something he will likely be comfortable taking on.
Will progress on harmonising international patent
laws be affected by nationalism?
In recent years, optimism has abounded that many countries
around the world would develop and implement harmonised
laws concerning patent examination. Optimally, innovators
would not have to follow different rules and provide different
information in each country where they seek patent
protection. They could instead use one harmonised process
and provide the same information to meet patent filing
obligations in each country.
Money saved by creating efficiency through harmonisation
could be reinvested by inventors into further innovation.
Harmonised laws would also provide patent offices with
opportunities to reduce duplication of efforts, which should
result in cost savings for governments.
Recently, however, there has been a rise in nationalistic
tendencies around the globe. After decades of globalisation,
many countries are looking inward.
As a result, multilateral treaties are being deemphasised
in favour of bilateral treaties, with each country looking
for concessions from its trading partners to maximise its
Where does this trend leave the effort to harmonise patent
laws? The harmonisers, the world’s most prolific patent offices
and representatives of their constituencies, are still actively
engaged in efforts to reach an accord, albeit with setbacks
that are to be expected in this age where compromise seems
Harmonising patent laws serves every country’s interest and
does not diminish any country’s self-interest. A more efficient
and cost-effective system would be a win-win situation for all
involved, benefitting both innovators and patent offices.
Feature · IACC
Elevating the fight against fakes
The IACC breaks down how it has responded over the last 12 months to a
worldwide rise in counterfeiting
Solidifying strategic partnerships
In response to the increase in counterfeiting around the
globe, the International AntiCounterfeiting Coalition (IACC)
has elevated its efforts to combat counterfeiting and piracy
over the last year. Founded in 1979, the IACC is the world’s
longest-standing organisation devoted solely to the fight
against piracy and product counterfeiting. As a memberdriven
organisation, the IACC’s unique collaborative approach
has been the cornerstone of its success. To find innovative
and effective ways to protect its members and consumers
from counterfeiting, the IACC engages all sectors, from
rightsholders to governments or intermediaries. In addition
to educating, training, and advocating for stronger policies
against counterfeiting, the IACC has created several innovative
programmes with intermediaries to tackle online counterfeiting.
With cybercrime rates climbing worldwide and the scale of
online counterfeiting growing, the IACC was especially active
this year in finding collaborative ways to establish a more
trusted online environment.
In 2018, the IACC’s payment processor initiative, RogueBlock,
continued to report illicit online merchants to the world’s
largest payment processors, including Mastercard, Visa
International, Visa Europe, PayPal, American Express,
Discover, Western Union, PULSE, MoneyGram and Diners
Club. RogueBlock is an IACC initiative in partnership with
the payment processing industry that allows members to
report suspicious online activity in a streamlined way. So
far, RogueBlock has terminated more than 5,500 counterfeit
merchant accounts, which were linked to over 200,000
fraudulent websites. By targeting counterfeiters’ abilities
to make a profit, this programme hits them where it hurts
the most: their wallets. In that same vein, the IACC signed
a memorandum of understanding with the European
Registry for Internet Domains (EURid) this June to solidify a
partnership to fight cybercrime in the .eu and .ею domain
namespace. This agreement, which was signed at this
year’s Europol IP Crime Conference, is the IACC’s first-ever
partnership with an online registry to tackle cybercrime and
aims to rid the internet of fraudulent domain names to create
a safer environment for all online users. In the last three years
alone, EURid has suspended more than 70,000 fraudulent
The MarketSafe Expansion Programme continued to build a
bridge between rightsholders and Alibaba Group, providing
rightsholders with the tools and resources needed to achieve
effective enforcement on Alibaba platforms, including the
takedown of online counterfeit merchants and the removal of
in-store counterfeit products. After completing the programme,
companies are then eligible to enter Alibaba’s Good Faith
Programme, which grants them a seal of trust from Alibaba,
leading to an expedited takedown and removal process.
Another major partner with whom the IACC collaborated with
this year was Amazon. Through the signing of a memorandum
of understanding, the IACC and Amazon initiated a new brand
engagement programme to enhance collaboration and anticounterfeiting
efforts between Amazon and IACC members.
A global voice in IP policy
In addition to its collaboration efforts and strategic
partnerships, the IACC continues to provide insight on
important intellectual property policy to both government
and industry stakeholders around the world. The IACC
regularly comments on relevant IP matters around the globe
in a variety of ways, including contributing to the US Trade
Representative’s annual Special 301 Report, partaking in the
Chinese government’s ongoing development of ecommerce
legislation and participating in ICANN’s IP Constituency.
As part of its global outreach efforts during the past year,
the IACC has been increasing its engagement in Asia. This
May, the IACC participated in the second China Brand
Development Forum in Shanghai. Additionally, in July,
IACC president, Bob Barchiesi, gave a keynote address
at the opening ceremony of the Quality Brand Protection
Committee’s (QBPC) 2018 China Forum on Criminal IP
Protection in Jiangsu. The QBPC, along with Jack Chang and
other leaders, has been a strategic partner to the IACC over
the last few years in promoting IP rights protection in China.
Further, Barchiesi was invited to become a vice chair of the
World Brand Alliance, headed by Liu Pingjun, president of the
China Council for brand development.
The IACC has also looked to increase its engagement in
Latin America and the Caribbean. In May, Barchiesi met with
12 IPPro: The Annual
IACC · Feature
Curacao’s prime minister, Eugene Rhuggenaath, to solidify the
country’s partnership with the IACC, to advance Curacao’s
fight against counterfeiting and to reinforce the vital role that IP
protection plays in economies around the world.
In June, Barchiesi traveled to Europe to speak at the 2018
Global Sustainability Network in Vatican City. There, he
called attention to the use of forced labour in manufacturing
counterfeits, as well as the broader connections between IP
crimes and transnational organised crime.
The coming months promise to bring just as much
effective collaboration and education around anticounterfeiting.
In September, the IACC will be a partner in
Interpol’s annual International Law Enforcement IP Crime
Conference held in Dubai.
This will be the second year in which the IACC has partnered
with Interpol and Underwriters Laboratories (UL) to bring
educational and networking opportunities to organisations in
both the public and private sectors.
The foundation of the IACC’s collaborative approach is its anticounterfeiting
educational events and training programmes.
To advance awareness, the IACC hosts events, conferences,
panels, in-depth discussions and networking sessions each
year for IP professionals, such as the IACC’s annual Spring
Conference in Seattle, Washington in May 2018. The event
gathered 500 attendees from over 40 countries under the
theme ‘bridging the divide: global collaboration and new
partnerships to fight counterfeits’. The conference agenda
featured discussions with a number of high-level government
attaches as well as a fireside chat series with intermediary
company representatives from Alibaba, Amazon, eBay and
select payment processors. The speakers shared their unique
anti-counterfeiting experience and knowledge with attendees,
which in turn led to discussions about resources and
In June, together with Europol, the Hungarian National Tax
and Customs Administration, and Underwriters Laboratories,
the IACC co-hosted the second annual Europol IP Crime
Conference in Budapest. Themed ‘blueprint for accurate and
functional enforcement’, the event gathered 400 IP leaders, as
well as businesses and law enforcement authorities from over
46 countries, and addressed the most recent innovations in
IP rights enforcement strategies, as well as the importance of
developing a sound IP strategy.
In October, the IACC and UL, in partnership with Interpol,
will be co-hosting the Latin America Regional Brand
Protection Summit in Orlando, Florida.
At the summit, the IACC is set to release a new, multilingual
version of its law enforcement training app, which has
been refined based on feedback from the Latin American
The app will now be available in Spanish and Portuguese.
Additionally, in its effort to continue engagement in Asia,
specifically China, the IACC plans to meet with Chinese
government officials in November to exchange the most upto-date
information and best IP practices.
In 2019, the IACC will be celebrating a significant milestone, its
fortieth anniversary. Since 1979, the organisation has stayed
true to its mission of advocating for brand protection around
the globe. What began as a small organisation comprised
of just a handful of member companies has evolved into the
leading voice against counterfeiting and piracy.
Looking ahead to the next 40 years, the IACC will continue
its collaborative approach to explore innovative solutions and
uncover new paths to defeat counterfeiting.
Additionally, in 2018, the IACC continued to host its regular
training sessions for law enforcement both in the US and
internationally. Each training session allowed brands to
connect directly with law enforcement and coach them on how
to authenticate their products and identify counterfeit versions.
Strong collaboration between the public and private sectors
remains a key component in the fight against fakes, and
through these training sessions, law enforcement and rightsholders
are better able to learn from each other’s experiences.
Since the beginning of 2018, the IACC has conducted more
than 15 training sessions around the world, and has targeted
holding approximately 25 training sessions in key ports across
the US until the end of the year.
Vice president, chief of staff
Feature · ECTA
Local and international
Sozos-Christos Theodoulou describes ECTA’s recent efforts, which
includes a renewed focus on thought leadership in Europe
During the European Communities Trade Mark
Association (ECTA) 2018 Annual Conference in Athens,
Greece, ECTA had the privilege to nominate ex-EU
Intellectual Property Office executive director, and current
European Patent Office president, António Campinos, as
an honourary member of ECTA.
I was elected as president of ECTA for the term of 2018 to
2020, while Ruta Olmane’s term as president ended after
having served in the management committee for a term of
Anette Rasmussen, from Denmark, was elected as the first
vice president and Mladen Vukmir, from Croatia, was elected
as the second vice president.
US, South America, Asia, and Africa. Some 33 percent
of the delegates attended from non-European countries,
demonstrating that ECTA’s recognition expands way beyond
the European borders.
The theme of this year’s conference, ‘Gods in Transit: IP at
the Crossroads of Great Civilisations’, was reflected in the
professional programme of the conference.
Three workshops preceding the conference on 13 June
were dedicated to plain packaging in the industry, exchange
of best practices between small family law firms, and
demonstration of new IP tools and statistics of the EU
Intellectual Property Office (EUIPO) and World Intellectual
Property Organisation (WIPO).
Carolin Kind, from Germany, and László Bérczes, from
Hungary, continue in their roles as secretary general and
treasurer of the association, respectively.
On 14 and 15 June, various sessions were held, including an
update on Brexit, hot topics in anti-counterfeiting, and analysis
on EU copyright reform.
Gergely Dzsinich was appointed as ECTA’s strategy and
communication officer in March.
The annual conference
The ECTA daily newsletter provided recent professional
updates and conference related on-site news for the
delegates on every day of the event. The ECTA bulletin
comprised of interviews, articles, and case law reviews.
This year, the ECTA Annual Conference was attended
by more than 800 attendees from all over Europe, the
In 2019, the ECTA Annual Conference will take place in the
Edinburgh International Conference Centre between 26 and
14 IPPro: The Annual
ECTA · Feature
Between June 2017 and June 2018, ECTA, with the
active assistance of its committees, issued several
June 2017: ECTA commented on the EUIPO draft
guidelines of work package legal reform.
August 2017: ECTA submitted a position paper on the
exchange of customs-related data with third countries.
September 2017: ECTA commented on the EUIPO
observatory draft work programme and the European
Commission communication on reform recommendations
for regulation in professional services.
October 2017: ECTA commented on the draft
second edition of the WIPO examination guidelines
concerning the classification of goods and services in
29 June. In 2020, the ECTA Annual Conference will be held
in Copenhagen, Denmark.
All of the events and position papers take place on the
European level, however, both the management committee
and council members actively voice ECTA positions to
international and local authorities, as well. ECTA will, with
the help of its professional staff in Brussels as well as its
council and committee members, continue to be an active and
important stakeholder in EU IP.
February 2018: ECTA position paper on the proposal for
a directive of the European Parliament and of the council
on copyright in the Digital Single Market, comments on
articles three and 13.
March 2018: ECTA published joint statement regarding
the negotiations concerning the exit of the UK particularly
with regard to trademarks and designs.
April 2018: ECTA produced several position papers on:
Free trade zones in non-EU countries: general
recommendations, best practices, and guidelines.
The dependency of international trademarks on a national
basic application or registration.
The introduction of a non-use central attack for
international trademark registrations.
The introduction of a common electronic filing portal.
In May 2018, ECTA produced a position paper on WHOIS.
The position papers and comments are available for ECTA
members under the member area—activities and position
papers sections of the ECTA website: www.ecta.org.
ECTA also continues to actively participate in
Promoting the UK and best practice
Kristina Grinkina of CIPA runs through an eventful year, which
saw CIPA challenge Brexit confusion, and secure continued
participation in the UPC
In the past year, the Chartered Institute of Patent Attorneys
(CIPA) has worked tirelessly to show that Brexit will not affect
the status or influence of the UK’s chartered patent attorneys.
We have continued our lobbying activities both at home and
abroad, and have further strengthened relationships with our
sister institutes across the world. CIPA has also submitted
detailed responses to a number of formal consultations to
influence intellectual property policy.
CIPA’s international liaison committee, together with CIPA’s
officers and members, have hosted meetings and organised
events both in the UK and abroad to share best practice,
deepen the bonds of friendship and promote the UK
profession in our key markets. CIPA has hosted visits from a
number of international organisations and sister institutes from
the US, Korea, Japan and China, and has also travelled to
meet with colleagues in Australia, New Zealand and Malaysia.
In September 2017, CIPA hosted a delegation from the Korean
Patent Attorney Association (KPAA), where the effects of
Brexit, the Unified Patent Court and the most recent and
significant intellectual property cases were discussed.
initiatives in China. CIPA’s international liaison committee
chairman, Richard Mair, travelled to Seoul to represent the
CIPA president at a meeting of presidents from various
leading patent attorney institutes from around the world.
The meeting committed the patent attorney profession to
assist with further development of the global IP system
and to protect IP rights arising out of the fourth Industrial
Revolution. In April this year, Mair also lead a delegation
to Malaysia, where they participated in a round table
discussion with the Malaysian IP Association. More recently,
in June, colleagues from the American IP Law Association
(AIPLA) visited CIPA for an IP Inclusive
breakfast meeting followed
by a round table discussion,
featuring talks on litigation
options by Justice Henry
KPAA presented a seminar to CIPA members on Korean IP
law and practice, including litigation, designs, and patent
and trade mark infringement. In the same month, CIPA
hosted a delegation from the China-Britain Business Council,
consisting of representatives from leading Chinese firms. They
discussed the practical application of IP law and practice in
China and shared best practice at a jointly hosted UK-China
IP Workshop held at CIPA’s offices in Central London.
CIPA delegates also travelled to meet with the New Zealand
Institute of Patent Attorneys and the Institute of Patent and
Trade Mark Attorneys of Australia.
A range of topics were covered including Brexit, recent
case law, and the UK’s increasing popularity as a venue
for IP dispute resolution. In November, CIPA’s immediate
past president Tony Rollins led a delegation to Shanghai
and Beijing with the UK Intellectual Property Office to
help the UK Government improve co-operation on IP
16 IPPro: The Annual
CIPA · Feature
Carr and other current UK patent and design issues. A
seminar by AIPLA on US IP law followed in the afternoon.
CIPA’s Annual Congress drew record attendance of more
than 160 delegates to Glaziers Hall in Central London
in September 2017. The attendees listened to keynote
speeches by Heli Pihlajamaa, director of patent law at the
European Patent Office (EPO), and Tim Moss, CEO at the
UK IP Office (UKIPO). A number of popular sessions were
delivered on topics including the EPO, advocacy technique
and tips, a review of the Lambert Toolkit, Competition Law,
patents, the UPC, and litigation.
One month later, at CIPA’s 135th Annual General Meeting,
Stephen Jones succeeded Tony Rollins as president of
CIPA, and Julia Florence was elected as the new vice
president. Jones said that his priorities during his term
would be to continue CIPA’s work in areas of policy and
education, international harmonisation, and to promote
diversity in the profession.
In April this year, CIPA was once again partner to
The Times’ Raconteur special edition on IP. Various
CIPA fellows and associates were quoted across a
number of the articles. Chartered patent attorney and
member of CIPA’s media and PR committee, Peter
Arrowsmith, contributed an opinion piece on how the
patent system must change to keep pace with the rise
of artificial intelligence.
Finally, in June 2018, patent administrators from
across Europe and beyond attended our seminar on
European Patent Office (EPO) procedures. The joint
CIPA/EPO seminar in London was attended by 65
patent administrators from Saudi Arabia, Romania, the
Netherlands, Germany and Denmark. Laurence Brüning-
Petit, EPO head of patent law, Sabine Menrath, EPO
procedural expert in formalities and formalities expert
Debby de Brouwer of Grip IP Services explained best
practices on a variety of administrative issues.
Feature · CIPA
CIPA has submitted a number of consultation responses in
an effort to influence decisions on IP policy in the UK and
abroad. CIPA’s patents committee submitted comments on
the Chinese State Intellectual Property Office consultation on
proposals for accelerated examination of patent proceedings.
The consultation considered both accelerated prosecution
and re-examination/invalidation matters. We also contributed
to the the IP (Unjustified Threats) Act, which was passed at
the end of last year, through the submission of a number of
written consultation responses and written evidence to the
House of Lords.
CIPA has supported the technical consultation on minimum
standards on the EU Trade Secrets Directive (EU) 2016/943,
specifically on the regulations which will transpose the
directive into UK law. CIPA fully supported the intention of the
directive, which is to provide minimum standards for measures
and procedures that trade secret holders should be able to
rely on in the event of unlawful acquisition, use or disclosure of
their trade secrets.
Ratification of the UPC
After many years of lobbying and doing everything possible
to assist the government to move towards ratifying the
UPC, CIPA’s presidential team was present at the House
of Commons on World IP Day, 26 April 2018, for the
announcement by IP minister, Sam Gyimah, that the UK had
ratified the UPC Agreement.
CIPA president Stephen Jones welcomed the move, saying
that the UPC would benefit businesses and that the UK would
be able to continue to contribute fully despite Brexit, as the
UPC would be an international court and not an EU institution.
In March this year, CIPA welcomed the announcement by the
government that the UK had joined the Hague Agreement for
industrial designs. UK businesses previously had access to
the Hague Agreement through EU’s membership, but after
Brexit, that would no longer have been the case. Members of
CIPA’s copyright and design committee worked closely with
the UKIPO to help make the UK’s membership a reality.
Other promotional initiatives
CIPA has helped the UKIPO to create IP Tutor Plus, a suite of
teaching materials aimed at giving students the knowledge to
engage with the IP system. IP Tutor Plus will be delivered as a
lecture to law, business and accounting, science, technology,
engineering and mathematics, creative, and humanities
students by either lecturers, or visiting chartered patent or
trade mark attorneys. The aim of the materials is to educate
future leaders about the importance of protecting their IP
and to ensure that IP protection is not overlooked at the
conception of a business.
In April this year, IP Inclusive, in association with CIPA, the
Chartered Institute of Trademark Attorneys, and headline
sponsor Dehns, launched Careers in Ideas, an initiative to
assist those considering a career in IP. At the launch event, a
suite of new resources were showcased to encourage greater
diversity in the IP sector. Chief executive of the UKIPO, Tim
Moss, welcomed the initiative, saying that more diversity in
the IP professions would contribute to a stronger IP system
and encourage competition, innovation and growth.
Finally, CIPA’s hard work was recognised at Memcom
2018, the leading conference and awards event for the UK’s
membership sector, when our head of media and public affairs,
Neil Lampert, won an award for outstanding achievement. At
the same event, IP Inclusive received an award for the best
equality or diversity campaign.
In the New Year, CIPA launched an animated video, which
explained that European patent work will be unaffected
by Brexit because the EPO is not an EU institution. The
video was shared with key stakeholders across the world
to show them why they should continue to engage with
UK-based patent attorneys with confidence. This “business
as usual, despite Brexit” message was also promoted by
ex EPO president, Benoît Battistelli, after he met Jones
and colleagues at the EPO in January in Munich. The EPO
released a statement following the meeting with the CIPA
team, stating that Brexit would have no effect on the UK’s
membership of the EPO, and that European patent attorneys
based in the UK will continue to represent applicants before
the EPO following the UK’s exit from the EU.
18 IPPro: The Annual
Feature · IPzen
Blockchain and IP:
an emerging technology
IPzen’s Emmanuel Harrar runs through the potential applications of
blockchain in the intellectual property industry
Special thanks to Hajar Malekian, PhD in law, BSc in software engineering
What is blockchain?
Blockchain is a secure and transparent technology for
storage and transmission of information with no centralised
By submitting a document to blockchain a unique identifier
called a digital fingerprint or a hash is generated on the
basis of complex mathematical calculations performed by
miners (validators parts of a blockchain network). A certificate
containing the generated number can then be issued to
protect a related right. Since blockchain is a peer-to-peer
system, it could technically replace trusted third party.
High security is an important benefit of blockchain. The
technology offers more security guarantees than a
centralised system. Transactions among participating
members of blockchain networks are encrypted. In
addition, any data stored in blockchain is certified and
timestamped. The recorded data can be neither modified
nor deleted, however, everyone can read it. In addition,
given the fact that blockchain is based on fool-proof
mathematical calculations, blockchain certificates would
be valid anywhere. Using a blockchain service saves time,
as blockchain transactions are ultrafast. Finally, and most
importantly, the digital footprint (hash) associated with
intellectual property is the only element of communication,
and it ensures data confidentiality.
Using blockchain for IP management
IP refers to certain creations such as artistic and literary
works, names, symbols, designs, and inventions. It includes
copyrights, trademarks, patents, industrial designs and
geographical indications. Protection of IP can be simplified
and strengthened by blockchain service.
Blockchain for ‘proof of creation’ and ‘proof of creation
process’: An important issue in protecting IP rights
against counterfeiting is providing a ‘proof’. Different
types of proofs include proof of authorship, proof of
ownership, proof of authenticity, proof of integrity, proof
of originality of the work, proof of content, proof of
creation date, usage proof, proof of creation process,
and finally, proof of counterfeiting.
Figure 1- blockchain
There are two main types of blockchain services: public and
private blockchain. Public blockchain is an open source and
permissionless technology that allows anyone to participate
and benefit. However, private blockchain is not open source,
accessible only to identified and authorised network members.
Blockchain can supply all the above-mentioned types
of proofs. It is especially useful for managing intangible
assets. Establishing a proof via blockchain is a secure,
simple, quick, and inexpensive task. It lets IP right owners
obtain a proof of creation that can serve them in case of a
litigation. This represents a new probative approach that
can guarantee an effective protection of IP rights.
20 IPPro: The Annual
IPzen · Feature
Blockchain could also be an interesting option for
establishing a proof for unregistered IP rights, such
as copyrights. In fact, in some countries, including
France, some IP rights such as trademarks, patents,
and industrial designs need to be registered by an
appropriate office for IP in order to be protected.
For these types of IP rights, blockchain would not
present a particular benefit. However, blockchain
service could be used to prove “genuine use” of
trademark during its life cycle. It would also help to
better manage trademark rights, as trademark usage
must be demonstrated upon trademark renewal in
intellectual property office.
Blockchain for documenting infringement: blockchain
can also be used to document and date an IP right
infringement, as well as to trace an infringement especially
in the online environment.
In order to do so, a simple screenshot related to the
infringement can be submitted to the blockchain system.
Blockchain for ensuring product traceability: blockchain
can be used to verify authenticity of products. It could
represent an essential tool for identifying fake products
on the market. By registering in blockchain each stage of
product’s life cycle, from manufacturing to introduction on
the market, full and unalterable traceability is ensured. This
possibility could be of interest to many IP rights intensive
industries, including the pharmaceutical, automotive,
luxury goods and consumer goods industries, where
product traceability is essential for addressing the product
While many company’s assets are intangible, IP rights
are critical to the survival of the business. As indicated
above, blockchain represents some significant benefits
for IP. Blockchain can help to simplify the management of
intellectual property assets and protect them more effectively
against any potential litigation.
Besides the high level of security ensured by blockchain,
the financial burden related to the protection of IP would be
Blockchain for distribution of copyright via smart
contracts: Blockchain service can be used as an effective
solution for copyright distribution especially when there
are multiple copyright owners.
Therefore, it makes it possible to protect the entire creative
process more effectively.
It can clearly identify rights owners and allocate their
copyrights. Through a smart contract feature available
on blockchain, one can make an instant payment to
copyright owners by purchasing a licence, according to
Blockchain for creation and enforcement of
IP agreements: Another blockchain benefit is
the ability to create and enforce IP agreements
such as licence agreements and exclusive
distribution networks by means of smart
contracts. Thus, a real-time payment to IP
rights owners could be provided.
A broad focus
Sarah Matheson of AIPPI describes how the association’s global nature
gives it a broad outlook, as she looks to the future of the association
Barney Dixon reports
What has AIPPI been focusing on over the past year?
Being a global association with over 9,000 members,
covering 125 jurisdictions, and dedicated to the development
and improvement of all legal regimes for the protection of
intellectual property, means the International Association
for the Protection of IP’s (AIPPI) focus in any given year is a
AIPPI has enjoyed being an invited observer at recent
meetings on the project of the Hague Conference on private
international law to develop a convention on the recognition
and enforcement of foreign judgments. A key question for
all who use the IP system is whether IP rights should be
included within the scope of the convention at all, and if so,
on what basis?
In preparation for a diplomatic conference, anticipated for
2019, AIPPI is undertaking a study to develop its position on
this important topic. A key focus for AIPPI every year is the
work on its study questions, which lead to AIPPI Resolutions,
the official position of AIPPI on any given topic.
By a rigorous process, four topics for detailed study are
selected annually on the basis of their importance to the IP
community, whether because relevant laws vary between
jurisdictions, existing laws could be improved, or an absence
of regulation creates business uncertainty.
Each question is analysed by our national and regional groups,
then debated by experts as to whether harmonisation is
desirable and what the law in question should be, culminating
in adoption by AIPPI’s executive committee. By reason of its
global membership, an AIPPI Resolution ultimately represents
a balanced consensus view.
Conflicting patent applications: Different approaches to the
treatment of an application that conflicts with an earlierfiled
(but not yet published) application currently leads to
claims being considered patentable in one jurisdiction but
unpatentable in another.
Registrability of 3D trademarks: Despite many
jurisdictions permitting the registration of trademarks
comprised of the 3D shape of goods or packaging,
registrability of such marks continues to present
challenges to trademark owners.
Partial designs: Copying of a part or a portion of a design
of a product may not infringe a registered design right,
making it difficult to protect a part of an article without a
system of protection for partial designs.
Joint liability for IP infringement: The lack of harmonisation
as to liability for infringement resulting from the acts of
more than one party gives rise to an imbalance between
appropriate relief for the right holder and proper allocation
of responsibility for the relevant acts.
AIPPI is active throughout any given year in contributing to
external consultations, in hosting or speaking at seminars
and preparing papers, often through the work of its dedicated
Standing Committees. Highlights of the last 12 months on
various topics include:
Hosting a session at the World Trade Organisation
Public Forum 2017 entitled ‘IP and other e-commerce
related legal frameworks—harmonisation as a means of
Celebrating World IP Day by running a seminar hosted by
the EU IP Office (EUIPO) in Alicante entitled ‘trademark,
designs and more—AIPPI at the EUIPO’.
Over the last year, AIPPI has been studying the following key
IP issues with the aim of adopting resolutions at the 2018
AIPPI World Congress in Cancun, Mexico:
Hosting a side event at the 36th Session of the World IP
Organisation’s (WIPO) Standing Committee on copyright
and related rights.
22 IPPro: The Annual
AIPPI · Interview
Speaking at the China IP Forum on the issue of
remuneration for employee inventors.
Contributions to consultations including the EUIPO
consultation on draft design guidelines, various
WIPO consultations on the patent cooperation treaty
system, the European Commission consultation on
measures to improve the effectiveness of the fight
against illegal content online, and the consultation
of the Supreme People’s Court of China on its
guidelines concerning patent cases.
Numerous studies and papers covering such
issues as border remedies with respect to
counterfeit goods, criminal protection of IP, the
requirement of indicating the source/country
of origin of genetic resources and traditional
knowledge in patent applications, access to
medicines and access to prior art documents in
standard setting organisations by patent and trademark
Another highlight is AIPPI’s ongoing collaboration with
Wolters Kluwer to produce the ‘AIPPI Law Series’.
The 4th volume—to be launched at the Cancun
Congress—is entitled ‘genuine use of
trademarks’. AIPPI members from
Interview · AIPPI
key jurisdictions have authored chapters exploring the central
role of the use requirement in trademark law.
What are some of the key challenges facing IP and
the IP community around the globe?
Building respect for IP and continuing education about
the value of IP is a constant challenge. As the IP roadmap
published last year by the International Chamber of Commerce
(ICC) points out, “there is an urgent need to communicate on
IP issues with the general public so that political objections to
IP initiatives are not based on a lack of understanding”.
The balanced approach to the IP system that AIPPI promotes,
and the position it formulates, aim to ensure that IP laws are
improved for all stakeholders, not just rightsholders.
exploring what IP issues might arise. AIPPI also has been
increasingly focussing on another trend identified in the ICC
IP roadmap—‘company data and trade secrets are more
valuable than ever’.
A session at the Sydney Congress explored a
hypothetical case of trade secret theft across the globe
and explaining how the challenge of protecting company
secrets in a digital environment would play out in their
In response to these challenges, AIPPI has also recently set up
a standing committee on trade secrets.
What is AIPPI working on for the next year? What
are some of the association’s goals?
The ICC’s IP roadmap has identified a number of ways in
which IP is evolving that align with a number of recent and
current AIPPI projects. For example, the identification of
innovation as ‘a global game’ is reflected in AIPPI’s recent
focus on the implications of multinational inventions, for
example, where joint inventors of an invention reside in
This is an increasingly common situation due to the prevalence
of international corporations having geographically distributed
research and development groups, multinational joint venture
projects, and international corporate/academic collaborations.
AIPPI’s Resolution on “inventorship of multinational inventions”
(Rio de Janeiro, 2015) and its current study on inventor
remuneration, are directed to addressing the problems that the
present lack of harmonisation creates for employee inventors
and employers alike.
The ICC IP roadmap also points out that new technologies
are transforming IP management and enforcement. As part of
its comprehensive professional development programme at
the Cancun Congress, there are sessions designed to unlock
the mysteries of artificial intelligence (AI) and blockchain. A
session on AI will include a technical overview setting out
some fundamental concepts of AI, along with some issues that
are commonly misunderstood.
The focus will then move to the implications for IP rights. For
example, best practices for protecting AI–related inventions,
issues surrounding ownership of AI-created works and issues
for enforcement of AI–related IP rights.
AIPPI’s executive committee has already voted on the study
questions it will prepare for debate at the 2019 AIPPI World
Congress in London. These are:
Plausibility: Despite there being no requirement for
plausibility in legislation or any IP treaty, this study
will seek to identify the boundaries of this evolving
requirement which is now evoked in relation to the
sufficiency, inventive step, clarity and utility requirements
of patent law.
Consumer survey evidence: This study will explore
whether survey evidence may be used at all and the
value to be attached to it, including such issues as
admissibility, restrictions on use, precedings where
such evidence may be used and where the counterevidence
Copyright in artificially generated works: Following the
Cancun panel session on AI, this study will focus on
whether the classic principles of copyright can or should
be applied to artificially generated works, or whether
something new and different is required.
IP damages for acts other than sales: Non-sales
infringements with no associated act of sale can involve
complex damages analyses and different considerations
for different types of infringing acts.
AIPPI aims to ensure that its annual work programme and
the work of its standing committee is maintained, while
continuously aiming for improved quality and impact.
The session on blockchain and cryptocurrencies aims to
cut through the propaganda to improve the IP practitioner’s
understanding of blockchain and cryptocurrencies,
In the coming year, AIPPI will also be looking for opportunities
to submit amicus briefs in national and regional tribunals,
24 IPPro: The Annual
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Feature · AIPLA
Educate and engage
AIPLA president Myra McCormack shares the association’s move to
digital, as well as its efforts in clarifying patent subject matter eligibility
It is hard to imagine that it has been almost a year since I took
on the role of president of the American Intellectual Property
Law Association (AIPLA). I have been a member of AIPLA for
over 23 years, and I am so proud of all the great work that this
raising AIPLA’s visibility on the international IP scene. I’m
proud to say that the association has made significant strides
in these areas.
Holistic approach to educational offerings
We have a new director at the US Patent and Trademark
Office (USPTO), Andrei Iancu, and it has been my pleasure
to speak with him several times this year. I believe he is
steering the USPTO in a good direction for patent and
The USPTO awarded the 10 millionth patent this summer, a
landmark event that was highly celebrated by the office. While
we celebrated this patent for its landmark chronology, we
should also see each patent as a reflection of the growth
and importance of IP in America. A strong patent system is
incredibly important to our economy. Through reliance on
their patent, a patent owner can harvest investment, manage
company expansion and create job growth. The ability to rely
on a patent once granted is key. I don’t have to tell you that
the history of the USPTO reflects the history of our country,
extending at least back to the time that the foundational rights
for patents, trademarks and copyrights were included in
the US Constitution. For more than 120 years of that history,
AIPLA has been a respected voice in the IP law community
and has continued this over the last 12 months.
My presidential term has focused on two goals. The first goal
is to ensure that AIPLA is providing its members with the
products and services that they need to support their careers.
To that end, we undertook a holistic review and update of
our educational offerings to encourage increased AIPLA
participation at the local level and create new opportunities
outside of stated meetings. The second goal is to continue
AIPLA’s mission is to be an innovator, a powerful advocate,
and a visible global leader in IP law through our commitment
to education, outreach, member services, and advocacy. With
that in mind, we have taken a critical look at the association’s
educational offerings and have found new avenues to provide
value to our members.
We recently launched a podcast series which will expand with
time. Our podcast offerings will include:
Deep Dive: an analysis-focused podcast series
that takes a deep dive into AIPLA’s best online
programmes and webinars. Each episode goes into
even more depth than its accompanying webinar and
responds to member questions.
Dicta: a debate-focused podcast series that explores
every corner of IP. We bring together IP professionals to
debate the pros and cons of important cases, legislation,
and other noteworthy events.
IP Casebriefs: a news-based podcast series that briefly
covers current events. This short podcast uses a one-onone
Pathways: a career-based podcast series providing
insights and best practice tips from various experts. These
podcasts touch on a variety of topics to provide tips to IP
practitioners in all phases of their careers.
26 IPPro: The Annual
AIPLA · Feature
Furthermore, website users will soon notice something
different at www.aipla.org. We are in the process of making
some dramatic improvements to our website and want to
thank members for their input to provide an even more userfriendly
interface. We will make it easier to access the items
you need, while making it more fun and intuitive to keep you
updated on news, advocacy, and our events. The website
will better share who we are and what we do. We have also
added features to improve the content, look and availability
of our website on a variety of devices because we know that
is how our members work. The website is streamlined and
improved to allow easier navigation. Finally, we’ve added
some personalisation elements so that each user can see and
discover what matters to them most.
This summer we also launched AIPLA INNOVATE, a
special compendium of articles written by and for AIPLA
members. Designed as an online publication, INNOVATE
features magazine-like articles on a wide variety of
topics in IP law today.
Going local: public outreach and
This holistic approach has further led us to incorporate
several innovations to our existing offerings, such as new
and expanded networking opportunities outside of our
stated meetings. AIPLA is a community of practitioners,
and despite advances that allow us to receive
educational offerings remotely, I believe that there will
always be a desire for those practitioners to meet and
engage with one another. But budgets can be tight and
time short, so an important goal for the organisation is to
bolster our outreach and encourage AIPLA participation
at the local level.
The association has made local networking opportunities more
plentiful by supporting our existing committees in their efforts
to expand their offerings of local events.
We have bolstered our relationships with local IP
associations across the country, and we have travelled
regionally to visit law firms and companies to learn how
AIPLA can better serve our members.
On 11 April 2018, AIPLA joined forces with the US
Chamber of Commerce in Washington DC to present the
programme ‘Investing in American Innovation: Is the US
Patent Environment Promoting or Limiting Investment?’ Iancu
featured as keynote speaker and maintained that the dialogue
on the IP system should focus on the remarkable and lifechanging
innovations attributable to our US system rather than
on flaws or abuses in the patent system.
On 26 April 2018, in celebration of World IP Day, AIPLA’s
Public Education Committee organised more than 14
programmes in 14 different cities around the US, including
an event at the USPTO and a celebration on Capitol Hill. This
year’s theme, ‘Powering Change: Women in Innovation and
Creativity’, recognised the significant contributions of women
in the field of innovation and creativity.
I have personally taken part in many events at AIPLA that
promote networking across our membership and that
support a variety of demographics. We want to make sure
that travel is not a prerequisite for member satisfaction in this
organisation. In addition to the local events discussed above,
AIPLA offers world-class education at your desktop, and later
this year we are implementing our first-ever virtual career fair.
All these initiatives are to improve efforts of bringing AIPLA to
Feature · AIPLA
Coordinating AIPLA’s presence here and abroad
Over the past year, AIPLA continued its longstanding efforts in
advocacy, both in the US and abroad.
Locally we continue our advocacy in the courts. We filed
briefs in a number of significant cases, and so far we have
been on the winning side in each case.
These include Oil States Energy Services v Greene’s Energy
Group, WesternGeco v ION Geophysical, Nantkwest v Matal,
In re Silver, Tex. Supreme Court.
We also filed in Booking.com v USPTO, a pending Fourth
Circuit case construing trademark statutory language on
USPTO attorneys’ fees that is virtually identical to the patent
statutory language construed in Nantkwest.
I have been particularly pleased with our efforts to keep
the dialogue moving forward on the patentable subject
matter puzzle surrounding section 101 of the Patent
Act. As you might well know, following a string of recent
Supreme Court rulings, patent owners have become
increasingly frustrated by the lack of clarity over subject
AIPLA’s initial legislative proposal, released May 2017, called
for a statutory amendment to clarify that eligibility is confined
to the categories already listed in section 101, and that other
issues treated as matters of eligibility are handled within the
requirements for patentability found in sections 102, 103,
and 112 of the Patent Act.
More recently, AIPLA and the Intellectual Property
Owners Association reached an agreement on a joint
legislative proposal to amend section 101. We are
pleased that a number of local associations have agreed
with our joint proposal.
WIPO at the 28th Session of the Committee of Experts for
the Nice Agreement.
The 16th Session of the Working Group on the Legal
Development of the Madrid System.
The 36th Session of the Intergovernmental Committee
on IP and Genetic Resources, Traditional Knowledge
The 7th Session of Working Group on the Legal
Development of the Hague System for the International
Registration of Industrial Designs.
AIPLA continues to submit comment letters, addressing, for
example, China’s Supreme People’s Court draft regulations
relating to patents, and various Japan Patent Office proposals
relating to standard essential patents. What I have learned is
that you need to be at the table to make a difference—and
AIPLA is at the table.
I entered this office with a firm belief that AIPLA is a great
organisation. I joined AIPLA as a member in 1995 and have
been an active member of AIPLA for most of my career. I was
active within committees, at the committee leadership level,
the board level and now the executive committee.
I have witnessed the passion and professionalism of the
association’s leadership, staff, and members, and I’m proud to
say that these same qualities continue today.
The association believes in the importance of IP as a driver of
American commerce and industry. Strength comes from our
membership. I hope that AIPLA’s members will continue to be
engaged and educate policymakers to provide world-class
continuing legal education and opportunities for engrossing
dialogue around intellectual property worldwide.
Internationally, AIPLA continues to contribute to the goal of
procedural patent harmonisation as part of the Industry IP5
and to discussions around the longer-term goal of substantive
harmonisation as part of the Industry Trilateral. It was my
pleasure to participate in the Industry IP5 meeting this year.
AIPLA participated in numerous stakeholder meetings across
the globe with the heads of the trilateral offices, IP5 heads of
offices, TM5 and Group B+, and has attended meetings at the
World IP Organization (WIPO) as a recognised Observer.
Our presence at these meetings ensures that US IP
practitioners’ interests are well represented internationally. To
that end, AIPLA members represented us at:
American Intellectual Property
28 IPPro: The Annual
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YOUR IP SOFTWARE SOLUTION IN THE CLOUD
A new beginning
Bill Elkington, president and chair of the Licensing Executives Society,
describes the latest for the association
In 1965, the Licensing Executives Society (LES) began as
a diverse group of technology and patent licensing people
with a common interest in learning from one another and
teaching others about the field of licensing. They began with
the big idea that licensing is a profession with associated
best practices that should be developed, learned, used to
the benefit of the professionals involved, to the advantage of
the organisations they represent, and, finally, to the benefit
of society at large.
The founders of LES believed licensing could serve
innovators by putting the fruits of their innovation into the
hands of those who would help that innovation flourish.
They envisioned the profession of licensing as supporting
and enhancing the innovation economy.
Over the years, LES has remained true to this mission,
but it lately has begun to expand its concept of what the
profession is and what it is in the best position to serve.
Yes, licensing continues to be an element of how LES
defines itself, but more recently, there has been a growing
recognition within LES of the importance of business
management functions—in addition to licensing—that figure
importantly in the creation, preservation and harvesting
of value from innovation. And this has come about as the
diversity and perspectives of LES members themselves
have expanded into intellectual capital management areas
outside of licensing.
There has been an increasing awareness that licensing
is an aspect of a bigger idea. Many believe that there is a
profession of intellectual capital management that should be
defined, developed, understood and supported.
At a strategy meeting in July 2017, the LES board realised
that no professional organisation has yet to posit the
existence of something called the intellectual capital
management profession. Further, it concluded that no
professional organisation has set out to define what best
practices look like in intellectual capital management. And at
that meeting, the LES board decided that LES should set out
to take on that role.
At this juncture, it is important to point out that the
profession under discussion is not the intellectual property
management profession but rather the emerging intellectual
capital management field.
A very great deal of the valuable ‘i-stuff’ that enterprises
develop, manage and employ to create shareholder value
may not be protectable under the four bodies of IP law.
As a result, a more expansive concept of the field is
needed. For example, areas of intellectual capital that
might not be protectable under IP law include business
models, quality management systems, innovation
management systems, business partnering processes,
merger-acquisition-and-integration processes and
the unique combinations of these and other business
processes that give a company a differentiated set of
operational and financially beneficial attributes.
Just as it is difficult to conceive of a 21st century
corporation of any size without a human resources
department, 50 years from now, it will be difficult to
imagine a corporation without an intellectual capital
It is commonplace that since the 1980s and 90s, 80
percent or more of many companies’ equity value is in
its intellectual capital. Yet today, in many companies,
intellectual capital is managed in an ad hoc way, with
each part of the organisation more or less on its own to
figure out how to contribute to its piece of intellectual
With so much at stake, shouldn’t companies’ intellectual
capital be managed systematically, through a coherent set of
business policies, processes, tools, training and metrics?
This is where LES is going. LES’ vision is to connect and
inspire the intellectual capital management community—to
create that community by drawing a broad diversity of
people involved in intellectual capital management to
LES and providing them with lively and engaging content,
thought-provoking collegial discussions, beneficial
intellectual capital management standards and a
comprehensive executive-quality curriculum.
Part of the reason intellectual capital management is ad hoc
in the 21st-century corporation is that there has been little
30 IPPro: The Annual
LES · Feature
academic research specifically tailored to ask and answer
questions about the field.
Few academics are looking at corporate governance using
this particular lens.
The result is that Master of Business Administration (MBA)
students are barely aware of the possibilities of this field,
much less of the best practices.
Most MBA graduates see intellectual capital
management as something the lawyers do, when in fact,
it is something that they mostly do themselves. This lack
of awareness and understanding carries over into the
academic world where there are few courses available
to help MBA students open their eyes to the study of
intellectual capital management. Another reason why
intellectual capital management is underdeveloped as
a field is that there is no significant body of standards
developed in the field.
This is changing, however. There are two significant
initiatives here. The first is the work of the International
Organisation for Standardisation in Technical Committee 279,
“Innovation Management Standard”. The second is the work
of LES Standards, which was accredited by the American
National Standards Institute (ANSI) in early 2017.
The American National Standards Institute (ANSI) is the
unique accrediting organization in the US for voluntary
consensus standards development organisations. LES has
joined the Institute of Electrical and Electronics Engineers,
American Society for Testing and Materials, Society of
Automotive Engineers, American Medical Association, and
about 250 other ANSI-accredited standards development
The ANSI accreditation assures participants and potential
standards users that these organisations develop standards
in a fair, balanced, due-process-driven way, mindful of the
needs of all affected constituencies.
Feature · LES
There have been five committees hard at work in LES
Standards for the past couple of years:
Intangible assets in the boardroom
IP protection in the supply chain
The first four are planning to go through formal commenting
and balloting on their draft standards by the end of 2018.
Also, four more standards committees are just now forming:
IP management for startups
Big data licensing
In some respects, as a professional field, intellectual capital
management is where human capital management was
70 years ago when the American Society for Personnel
Administration was first formed in 1948, the precursor
to today’s Society for Human Resource Management, a
professional organisation of 300,000 members in 165
countries.So in 2018, LES is at a new beginning, announcing
its support for a new profession that encompasses licensing
but that points considerably beyond licensing to the
comprehensive and coherent governance of a corporation’s
most valuable asset class—aside from its human capital—its
ISO/TC 279 innovation management
There is much to do, and we welcome all disciplines and
perspectives in helping to define, develop and grow this
exciting new field.
Bill Elkington, president and chair, LES
At Rockwell Collins, Bill Elkington provides leadership in all
the dimensions of intellectual capital management, and has
done so for the past 15 years.
On the LES USA and Canada Board, Elkington functions
as chair and president. He has led the LES Standards
initiative, whose purpose is to develop business process
and management framework standards for the field of
intellectual capital management. He chaired and cochaired
the LES IP100—an invitation-only conference—
for a number of years.
He also is a member of the Aerospace Industries
Association, IP Committee, where he works on
education and policy issues with colleagues from
other aerospace and defense companies, specifically
regarding software and data rights in Department of
He is a member of the government/industry Section 813
Panel, a panel authorised by Congress (in the National
Defense Authorisation Act of 2016) to study the software
and data rights laws and regulations in Department of
Defense contracting and make recommendations for
changes to them.
32 IPPro: The Annual
Feature · PIPCU
From strength to strength
Detective inspector Nick Court runs through PIPCU’s 2018 successes
and looks forward to 2019
The City of London Police’s Intellectual Property Crime Unit
(PIPCU) has gone from strength to strength since the renewal
of our funding in August 2017. In the past year, we’ve reached
50,000 website takedowns, seen a counterfeit airbag seller
sentenced and seized over 2,000 suspected counterfeit items
from a single house!
None of this could have been possible without the support of
our stakeholders. Funded by the UK IP Office (UKIPO), PIPCU
is a specialist national police unit dedicated to protecting the
UK industries that produce legitimate, high-quality physical
goods and online, digital content from IP crime. PIPCU tackles
counterfeiting and piracy that affects physical goods, with
a focus on offences committed using an online platform. In
August 2017, it was announced that we would receive a further
£3.2 million from the UKIPO to fund the unit to June 2019.
There’s more at stake
At the forefront of PIPCU’s work to protect the public is
raising awareness of the latest crime trends and the media
is an integral part of this. In September 2017, we launched
our annual campaign, ‘there’s more at stake when it’s a
fake’, warning consumers about the dangers of identity
theft and fraud when purchasing counterfeit goods online.
When buying items, people will part with personal details
such as their address and financial information which allows
fraudsters to set-up new websites selling counterfeit goods in
websites, this includes 22,084 clothing websites and 15,975
footwear websites, with 3,591 sites taken down for selling
bags, accessories and jewellery.
PIPCU in action
In May 2018, PIPCU officers seized over 2,000 items,
including clothing, shoes and handbags in Manchester
as part of its crackdown on counterfeit goods sellers on
We visited addresses in the Manchester area on 22
and 23 May 2018 and seized 2,118 items from just one
residential address which are believed to have left 55
brands out of pocket.
Officers targeted people who were believed to have sold
counterfeit goods on Facebook Marketplace. Officers were
making sellers aware of the risks that these products pose to
the people who buy them and highlighting the fact that this is
a criminal offence.
By targeting counterfeits at the point of sale, officers are
able to limit the potential for these items reaching unwitting
members of the public. However, in some cases the
counterfeits do find their way on to online sales sites. These
cases must be tackled with an investigation.
Caught and in court
Between April 2016 and March 2017, Action Fraud, the
national fraud and cyber reporting centre, hosted by the City
of London Police, received over 15,000 reports linked to
identity crime, which shows the extent of the growing problem.
In addition, 400 victims have been contacted by PIPCU in the
last two years to inform them that their identity is believed to
have been stolen and used to open websites in their name
after they had previously purchased counterfeit items online.
It is essential that law enforcement limits the impact of fraud
on vulnerable people. Those people who find they have
handed their personal details to a fraudster are then vulnerable
to fraud, it is our job to stop the fraud before it happens.
Since 2013, PIPCU’s Operation Ashiko, which aims to combat
websites selling counterfeits has taken down a total of 50,000
On 22 February 2018, Robert Czernik, 35, of Blackbird Close,
Poole, Dorset was sentenced at Inner London Crown Court to
two counts under Section 92 of the Trade Marks Act for selling
In a report from Honda it was confirmed that the airbags
sold by Czernik had not been produced to any recognised
safety standard and might not activate correctly in a
collision, therefore potentially causing serious or life
Over 190 airbag covers and a variety of airbag parts were
seized in a search of his home on 18 February 2016, including
mechanical springs and counterfeit airbag assemblies bearing
the names of major brands. Detailed analysis by Honda
confirmed that the airbags sold by Czernik were counterfeit.
34 IPPro: The Annual
PIPCU · Feature
As a result, Czernik was charged on 16 February 2017 for
selling goods likely to be mistaken for a registered trademark
under the Trade Marks Act.
A total of 28 brands, including Honda, Toyota, Mercedes Benz,
Audi, and Skoda have been identified by PIPCU’s detectives
as being affected and 680 people have been notified and
advised to contact their car manufacturer to ensure their
airbag is safe.
At the helm of the good ship PIPCU
Any successful team needs a committed leader and this
year we had the pleasure of being joined by Detective Chief
Inspector Teresa Russell.
DCI Russell has 25 years of policing experience and has lead
a varied career. Starting out in the public order unit, her unit
was engaged in tackling a series of anti-capitalism violent
disorders in the 90s including a number of subsequent May
Day protests. She spent a brief time formulating the City of
London Cold Case Review team, before becoming the deputy
coordinator for the Counter Terrorism Intelligence Unit South
West, implementing the Government’s PREVENT strand of the
counter terrorism strategy.
On returning to the City as a Detective Inspector, DCI Russell
was transferred to the Fraud Squad. There she created the
highly successful Operation Broadway, a joint partnership
disruption and awareness initiative tackling ‘boiler room’
frauds. She was promoted to Detective Chief Inspector in
In the coming year we are looking to work with Europol
more closely to broaden PIPCU’s influence across Europe.
We are also expanding Operation Creative and are working
on new ways to take down websites alongside our work
on the Infringing Website List. This is in addition to working
with more regulators following the success of our work with
the Gambling Commission. In the realm of hard counterfeit
goods, we will be working to disrupt the larger sales at the
top of the food chain and develop our intelligence using
Detective inspector Nick Court of the PIPCU has worked for the City of London Police for the past eight years,
having started out at Essex Police as a Criminal Intelligence Analyst. He then joined the City Police as a Police
Constable and after an attachment with the Home Office, returned to the city in 2014 as a Cyber Crime Supervisor.
DCI Court joined PIPCU in 2017.
Bad faith IP litigation
Unitalen’s Lei Zhao runs us through a recent case at
the Yuhang district people’s court in Hangzhou city
Recently, the Yuhang district people’s court in Hangzhou
city, Zhejiang province, made a new first-instance judgment
in favor of Bayer Consumers Care AG against Qing Li (a
Chinese individual) in an unfair competition infringement
case. The court held that Li applied for plaintiff’s trademark
in bad faith and maliciously filed complaints against the
plaintiff, its wrongful acts constitute unfair competition and
award the plaintiff economic loss of RMB 700,000 ($102,938).
This case is the first time for Chinese courts to clarify and
make a judgment against professional trademark squatters
that the misconduct of trademark squatters constitute unfair
competition and can be punished under the anti-unfair
In July, the Chinese Trademark Office announced that China’s
trademark applications still maintain continuous and rapid
growth. In the first half of 2018, the total trademark filing
number was 3.58 million, an increase of 55 percent. Up to the
end of June 2018, China has 31.428 million trademark filings
in total, 19.395 million accumulated registrations, 16.807
million valid registrations. China is the top filer of trademarks
for 16 years in a row in the world. China has become an
important force in promoting the growth of global trademark
intellectual property rights. On the other hand, it costs only
official fees RMB 300 ($44) to file a trademark in China and
the term is 10 years if it is successfully registered. If some
trademark registrations become popular in the future, it
could be sold at a price of tens or even hundreds of times.
Moreover, as China has been strengthening IP protection
for years and the Chinese market is great of importance,
some people treat trademark squatting as good “business
opportunities” with low illegal cost and huge profit margin.
As a result, bad faith applications have been dramatically
increased. Some bad faith applicants file trademark
applications for some brands, which are not registered yet
in China by the brand owners, or file similar trademarks to
famous brands which already registered in China.
In order to demand a high price and make more profits, some
bad faith applicants very often take all possible legal actions,
such as a lawsuit or complaint before online platform. Because
they have trademark rights, sometimes they indeed could
win in some actions, which will give more pressure to the real
brand owners to purchase squatted trademarks at high price.
The products involved in Bayer v Qing Li are Coppertone
Ultra Guard and Coppertone Kids in the brand series of
Coppertone of Bayer group. Established in 1944, Coppertone
is a professional sunscreen cream product under Bayer group.
After more than 70 years of continuous use and publicity,
Coppertone enjoys very high popularity worldwide and is
widely favoured and recognised by Chinese consumers. Bayer
has also registered its Coppertone trademark in both English
character and Chinese character in China.
Li knew that the plaintiff had filed many trademarks for
its Coppertone trademarks in both English characters
and Chinese characters in China. Despite this Li filed
trademark applications for the product packaging, which
was designed by the third party entrusted by the plaintiff
and was originally put into commercial use by the Bayer. Li
obtained the trademark registration in 2016. Later, Li used
the two registered trademark rights to launch large-scale and
continuous complaints against Coppertone products sold
on Taobao platform by distributors of Bayer, and provided
removal services of its complaints to Coppertone product
distributors if Li received payments.
Due to Li unfair competition behavior, the plaintiff’s products
involved in the case were taken down from the platform during
36 IPPro: The Annual
Unitalen · Feature
the peak sales season, and the distributors were also demoted
and punished with point penalty by the platform, which
further led to the inability to carry out normal commercial
production and operation activities. According to the data of
Alibaba IP protection platform, Li filed 249 times complaints
against the products involved, involving 121 distributors, and
withdrew 19 times after complaining. Alibaba also found that
Li had registered the word trademark of several well-known
brands for complaint purpose at the same time, including
“TFBOYS” and the words “JEJUGREENTEA”. Alibaba further
confirmed, Li filed 2605 complaints in its IP protection
platform, involving eight trademarks, against 1810 online
stores. During the complaint period, Li had contacted Bayer
several times, seeking to transfer the two trademarks at a high
price, by providing the service of withdrawal complaints. After
being rejected by Bayer, he began to bargain and arbitrarily
disturbed the normal production and operation activities of the
related enterprises when he could not achieve his purpose.
Bayer group had repeatedly sent a letter to Li to clarify that
it has prior copyright for the two trademarks registered by
him, and the use of the two trademarks is reasonable and
legal. Li should immediately stop the malicious nuisance and
actively negotiate with the plaintiff to deal with the follow-up
matters of the two trademarks. Li has been ignoring news,
and insisted that Bayer bought the trademarks at a high price,
otherwise the complaints will not stop. In this case, Bayer filed
invalidation action against its registration, and initiated unfair
infringement lawsuit against Li for its bad faith registration
and malicious complaints on 31 October 2017 before Yuhang
district people’s court. The court held that two trademarks
registered by the Li is a major copy of the copyright created by
the Bayer, it infringes Bayer’s prior copyright.
Li has never actually used the trademark in any way after the
trademark has been approved for registration. Instead, he
began to launch a large number of complaints on the Taobao
platform after obtaining the registration. While initiating the
complaint, Li made a “paid withdrawal” through QQ, Alibaba,
and other channels. It can be seen that the purpose of the
defendant’s trademark registration and complaint is to gain
corresponding benefits rather than to truly safeguard its
trademark right. Li repeatedly contacted the Bayer’s agent
to ask the it to purchase the two trademarks at a high price.
It can be seen that the defendant’s motive for trademark
registration is not to use the trademark involved to carry
out normal business activities, but to make profits through
complaints, sales and other means.
Meanwhile, according to the data provided by Taobao, Li
made 2,605 complaints on the Taobao IP platform, involving
8 trademarks and 1,810 online stores. It can be seen that the
defendant’s extensive trademark registration is not a normal
business activity, but an obvious act of hoarding trademarks
Importance of the case
First, this is the first successful case for the rights owners
to attack professional trademark squatters under anti-unfair
competition law. In particular, behavior of professional
trademark squatters, such as registrations in bad faith,
malicious complaint, sale in bad faith, hoarding trademarks
and paid withdrawal of complaint, could be managed by
anti-unfair competition law. Even though China is not a case
law country, this case will be no doubt helpful to expand
vision in dealing with similar cases. As we know that there
are many professional trademark squatters in China, who are
using same or similar model, such as registration in bad faith,
malicious complaint, sale in bad faith, hoarding trademarks
and paid withdrawal of complaint. Those people are making
money by the way which are not based on honest labor for
profit, but on the acquisition of others’ prior achievements
and accumulated goodwill, which is a typical unearned
behavior. Such acts of maliciously obtaining and exercising
the trademark right through infringement of the prior rights of
others violate the principle of good faith and disrupt the fair
competition order in the market, and shall be deemed as unfair
competition acts as stipulated in article two of the anti-unfair
competition law. If professional trademark squatters could
not make profits and will also undertake serious unfavourable
legal consequence, then they will have no motive to apply
for trademarks of other brand owners. As a result, it will also
help to reduce the volume of new trademark applications,
oppositions, invalidations and administrative litigations.
Eventually, it will save judicial resources and create a healthy
and fair market in China.
Over the years, Li applied for hundreds of trademarks involving
multiple different categories of goods, using the same means
as in this case, many of which were identical or similar to the
patterns used on the packaging of goods of other brands.
Feature · 101domain
the new landscape for domain names
Kimberly Darwin of 101domain gives an overview of the far-reaching
effects of the EU’s General Data Protection Regulation
The EU’s newest addition to the Data Protection Directive,
the General Data Protection Regulation (GDPR), came into
effect on 25 May 2018. Since that time, GDPR has altered
the business world’s obligations in handling personal
data and privacy practices surrounding this data. As a
consequence, the structure of a critical piece of the domain
name system, the WHOIS database, is being shaken to
its core. Enforcing and acquiring domain names under the
GDPR proves to be a great challenge. With limited WHOIS
information, trademark holders may encounter roadblocks
in defending their intellectual property, and domain
investors must work harder to conduct their business of
selling domains to interested parties. ICANN’s Temporary
Specification, meant to address these questions around
WHOIS, is only in effect until 25 May 2019.
ICANN and its contracted parties are working on a permanent
policy that addresses the internet community’s concerns
around WHOIS while remaining compliant with GDPR. In
the meantime, companies must adapt to a domain system
deprived of public WHOIS information and understand how it
will impact their ability to enforce, sell, and acquire domains.
The WHOIS database was established to collect and display
information about domain name registration records from
registries and registrars in real-time. With the evolution of
the internet, the public domain record information has been
used in ways unforeseen by its creators. As the internet grew,
contact information listed in WHOIS served the needs of new
stakeholders including domain name investors, IP owners, law
enforcement agencies, businesses, and individuals. As well as
being an aid for legitimate parties, WHOIS has also become a
resource for fraud and abuse.
WHOIS under GDPR
Domain registrars are required to redact personally identifiable
information of domain registrants residing in the EU,
publishing only pertinent and non-sensitive information in
the WHOIS database in compliance with ICANN’s Temporary
Specification for gTLD registration data, a short-term solution
created to satisfy GDPR regulations. Yet ICANN still requires
registrars to adopt a system that allows for an open door of
information. Today, with the introduction of the GDPR, the
door of free-flowing information is closed and only under
predefined circumstances can the door be opened and
information released. In response, a few of the larger registrars
developed new technology that displays WHOIS information
geographically in a way which excludes EU citizens. Other
registrars have opted for an easier solution, which shields
everyone’s WHOIS information by default regardless of where
they reside. In addition, registrars may offer a web form to
contact the domain registrant or provide anonymised emails
for domain owners in the WHOIS record. The Canadian
Internet Registration Authority (CIRA) has been successfully
utilising the web form system for years in management of .CA
Canadian domains. Since its launch in 2010, CIRA’s Interested
Party Contact / Message Delivery Form has facilitated over
250 secure messages a month while keeping the domain
owner’s identity private for over 2.7 million domains in
operation. Such forms allow interested parties to send a
message to registrants without the necessity of revealing
domain ownership information.
In the past, private registration options were offered to
shield ownership information from the public eye; an
anonymised email address would populate the registrant’s
email field, and any inquiries were then forwarded to the
registrant, maintaining anonymity. Despite ICANN’s Temporary
Specification restricting domain operators from publishing
registrant data to the WHOIS database, private registration still
remains a valuable tool. Although many registrars have opted
to shield all registrant information whether or not the registrant
resides in the EU, ownership information still exists at the
registry level, where the domains are created. And registry
operators for smaller regions, such as Anguilla, a tiny island
in the Caribbean, are not subject to GDPR regulations and
continue to publish personal registrant information. Anguilla’s
domains are a hot commodity right now, as its .AI extension is
often used as a ‘domain hack’, a term designated for a domain
38 IPPro: The Annual
101domain · Feature
that suggests a word, phrase or name when combining the
elements on both sides of the dot. Since AI is the common
acronym for Artificial Intelligence, it’s a trendy extension for
tech companies, both startup and already-established, to
purchase for a new product, service or concept. Anguilla is not
subject to GDPR regulations, and by default, will publish your
client’s public information in the WHOIS database. If this is
related to a new disruptive idea, your client may not be happy
that the word is out via the WHOIS database. Anguilla does
offer privacy for its domains,so consider this when discussing
new domain ideas with your client.
The UDRP was put in place to help trademark owners recover
domain names that were registered in bad faith. In cases of
trademark infringement, a brand owner can file a UDRP or
URS (a faster, less costly) complaint with an ICANN accredited
forum to have the domain transferred to them, or suspended,
respectively, if the brand owner prevails. Under GDPR, this
is now more complicated. IP professionals traditionally use
WHOIS information to aid them in recovering and acquiring
domain names for their clients. Without public WHOIS
information, complainants filing UDRP and URS cases are
essentially submitting disputes blindly. This can be extremely
frustrating for trademark owners in their attempt to prove
infringement of their brand. Without being able to easily
identify the domain registrant, it is difficult to determine the
intent of the user, whether they are an established domain
investor, an honest business person, or a cybersquatter
who registered the domain name in hopes of selling it to the
trademark owner. The World Intellectual Property Organisation
(WIPO) described how disputes will work under the GDPR.
In a two-step process, the complainant will file a case, at
which time WIPO will recover the domain owner’s information
from the registrar. At this point, the complainant can decide
to continue or amend its complaint based on the personally
identifiable information they now have. The previous system,
which had access to WHOIS, allowed trademark holders to
conduct research on their own and determine if there was a
case of trademark infringement prior to taking action under
the UDRP. Without the ability to research previous decisions
against a repeat respondent, we may see a decrease in
effectiveness in recovering cybersquatted domain names.
Without WHOIS information, users cannot easily identify the
owner of a domain name, even in the case where they want to
be found. Unlike most people on the web, domain investors
want their information made available to the public. The longterm
solution to replace ICANN’s Temporary Specification
will most likely include an option for customers to opt-in to
having their information displayed on WHOIS. This is one of
the many challenges for those attempting to conduct business
in a domain industry without a fully transparent WHOIS. If
you are in the business of consulting with domain investors,
suggest that they use parked pages to reflect the proper use
and intent of their domains, as well as include a contact form
for inquiries; and if and when available in future ICANN policy,
they can opt-in to their WHOIS information being shared
publicly with their domain registrar.
If you or your client are looking to acquire a domain, you may
love the form option adopted by CIRA and some registrars.
It affords direct communication with the domain registrant,
although they are not required to respond to your inquiry.
Should the registrar not offer that option, you may need
to resort to archived results such as archive.org for email
addresses or phone numbers that may or may not still be
valid. Domain brokers are equipped with many tools to do this
sort of detective work, so consider one if your initial research
is not providing you with results. As you can see, the new
GDPR both positively and negatively affects how business
is transacted regarding domain names. It affords privacy for
those who may be purchasing in bad faith, and yet makes
it more difficult for owners with a legitimate interest in their
domains to sell them to inquiring buyers.
Businesses and individual users could benefit from the
mandated anonymity to further protect their information, while
trademark owners and intellectual property professionals must
work harder when acquiring and enforcing domain names in
this new space. The success of the GDPR within the domain
industry will depend on the community’s ability to adapt and
create solutions that provide value for all parties involved. In
a short time, if anything, the GDPR has been successful in
sparking a global conversation around the topic of online
privacy and inspiring permanent change in the domain industry.
Senior corporate services executive
Cities look to IP for answers
as they feel the heat
James Cooper from Minesoft explores how PatBase and PatBase
Analytics V2 can be used to explore a technology area, with a
focus on solutions to the current rising temperatures in cities
around the globe
In recent years, there has been a much greater awareness
of the important role that patents play in legal, technology
and business environments, with high profile patent battles
between technology giants playing out in the courts (and
the media) on a regular basis. As well as monitoring any
infringement on a corporation’s novel ideas, knowing
and studying global patent data is also an effective tool
to avoid parallel developments and wasted research and
development efforts in overcrowded research fields.
With this in mind, Minesoft has designed a suite of patent
information products and a global, searchable patent
database. Users can easily search, review, analyse and share
patent information across a corporation, effectively harness
the knowledge found in patents, gain competitive intelligence
and build on the ideas of others to drive innovation forward.
After a scorcher of a summer in 2018, it is no surprise to
hear that our cities are getting hotter, the current trend in
global temperature cannot be denied, with the earth set to
warm by 2 degrees centigrade by the end of this century.
The hottest 10 years on record have all been within the past
15 years, and with denser populations and energy networks,
cities suffer worst from the increase due to the heat island
effect: The air temperature of a city with 1 million inhabitants
can be between one to three degrees centigrade warmer
than its surroundings.
40 IPPro: The Annual
Minesoft · Feature
Companies and organisations looking for solutions to the
rising mercury can and are finding a valuable resource of
information in patent literature.
So, how are cities fighting back against the
Cities around the world have been trialling different methods
to tackle the rapidly rising temperatures. In Guiyang, China,
city planners studied wind patterns, water bodies and nearby
green belts to incorporate ‘wind corridors’ to blow throughout
the city, reducing ambient temperatures with no additional
cost or maintenance.
As well as working with what is already there, many cities
are committing to increasing the amount of green space
within their boundaries. In Australia, where ‘extreme
temperatures’ is a less relative term than elsewhere in the
world, many cities are committing to increasing their tree
canopy cover, with Sydney aiming to expand coverage by
50 percent by 2030.
New trees would provide shade to residents and help cool
the immediate area via evapotranspiration of water from the
leaf surface. An increase in trees also helps to improve air
quality and reduce carbon emissions in the local area.
There are many methods used to reduce city
temperatures, and in terms of intellectual property
there are two core technologies included in the US
Environmental Protection Agency’s five main strategies
for dealing with the heat island effect: Cool roofs and
cool pavements, both achieved using heat and radiation
Traditional black asphalt absorbs much of the sun’s
energy that hits it, holding in heat and in some countries
becoming too unstable to drive upon in unusually hot
weather. Los Angeles, among other cities, is investigating
a white coating that can be applied to road surfaces as
well as roofs and walkways.
Originally designed to hide spy planes from satellite infrared
(IF) camera technologies, the coating has been repurposed,
the heat and IF reflective properties being utilised for
themselves and not for a secondary purpose such as
The coating reflects the majority of the sun’s energy and can
keep an area up to 5.5 degrees centigrade cooler.
They form part of a scheme to make Los Angeles 1.67 degrees
centigrade cooler over the next 20 years.
Analysing the technology area
Starting with a keyword search to look for reflective
coatings, class codes for the technology area were
identified along with additional keywords used to refine
the search criteria. Using PatBase or similar tools allow
Figure 1: PatBase Analytics V2 Dashboard view for the technology area
Feature · Minesoft
Figure 2: top 10 jurisdictions by number of families
multiple insights to be gained on the topic, showing the
key players and jurisdictions involved in leading these
technologies forward. Included amongst these results are
patents for reflective glass-granule substrates to reflect
light, weather resistant coatings designed for use within
solar panelling and stealth paint designed to hide spycraft
from IF sensors. An excellent example of a patent
describing a technology to solve one problem that can be
repurposed as a solution for an entirely different scenario,
is the Chinese patent application: CN20181172242
applied for in March this year.
Using the integrated Analytics engine, PatBase Analytics V2,
assesses the obtained results from our search, enabling the
searcher to retrieve information about the key players within
the technology field. To date, the key jurisdictions are the US,
the World Intellectual Property Organisation, the European
Patent Office, Germany, and China.
Two of the major players in the technology field are US
companies (Certainteed Corp and 3M), so it’s not surprising
to see the US in top position with 659 families compared to
Figure 3: Top five assignees by jurisdiction (by number of families)
42 IPPro: The Annual
Minesoft · Feature
Certainteed possess more than twice the patent families
in this area as their nearest rival, 3M. It is worth noting
however that while Certainteed possesses more families
than its competitor, 3M as a multinational is protecting their
IP across more of the major jurisdictions, being the only
assignee to appear in four of the top five patenting entities
across all five primary issuing authorities for this technology.
Nations like China and the US are key players in this
market. 2018’s summer notwithstanding, their ambient
temperatures have always been on the high side globally,
and it is they that will trail-blaze the methods and
technologies required to keep city living possible as the
heat rises. Germany’s appearance amongst the top five
may be in part due to the German government’s continued
subsidies for renewable energy technologies. Whilst
installation peaked in 2012, the extension of the scheme
into 2018 makes Germany a valuable market for solar
vendors to operate in for the near future, and reflective
coatings are an important component of many solar energy
and heating products.
Minesoft’s suite of patent solutions make it easy to keep
your cool when searching and identifying patents for a range
of technologies and processes. Companies, academic
institutions and governments can gain insight into how others
are tackling an issue to help inform their own responses.
With over 60 full text collections, including non-Latin data,
PatBase provides access to patent literature generated from
key countries around the world.
In just a few minutes, PatBase and integrated PatBase
Analytics V2 can be used to identify key players in the space
for licensing agreements, locate expired IP that is open for use.
Whether you have a practical problem to solve, valuable IP
you wish to keep track of or competitors to monitor, Minesoft’s
solutions have you covered.
Minesoft’s suite of patent
solutions make it easy to keep your
cool when searching and identifying
patents for a range of technologies
James is currently a support executive at Minesoft. Having completed his degree in Biomedical science in
2012, James started his career in the Healthcare Sector to support an application to study medicine. He
worked at a Centre for the Treatment of Traumatic Brain Injury for 2 years, monitoring patient response
to treatment and assessing efficacy of treatment based on patient meta-data in addition to assisting the
Healthcare Team and Nursing Staff.
In mid-2015, James joined Minesoft to provide support for Chemical Explorer, and now assists with the
company’s marketing, customer relationship management and support services for all products.
Feature · INTA
Implementing INTA’s strategic plan
INTA president Tish Berard sets out the progress made in the past year
on each leg of the association’s three-year strategic plan
The International Trademark Association’s (INTA) 2018 to
2021 strategic plan outlines three strategic directions for
the association: (1) promote the value of trademarks and
brands; (2) reinforce consumer trust, and; (3) embrace
innovation and change. During the past year, the association
has secured a number of achievements in each of these
Promote the value of trademarks and brands
INTA has worked throughout the world over the past year,
taking part in some 225 meetings and delegations with
officials and sending more than 100 letters and submissions to
policymakers and government officials.
This work includes advocating for more effective laws and
supporting executive offices and registries, promoting
harmonisation, supporting better enforcement, and developing
an understanding of brands and brand value.
In China, INTA is the only foreign IP association registered
according to the new non-governmental organisation
regulation. Our role in advancing the law in China was
acknowledged by the chief judge of the Supreme People’s
Court at the end of 2017.
In India, INTA has made recommendations for amendments
to section 134 of the Indian Trademarks Act and on improving
its new Trademarks Rules. We will be meeting with India’s
controller general on this issue.
INTA is actively monitoring legislative progress in other
jurisdictions, including Canada, which has passed a new
Trademarks Act. The association is also monitoring legislation
in the UK, where INTA has submitted recommendations and
attended a delegation with the UK minister for IP, Sam Gyimah,
regarding Brexit. Comments on new legislative proposals have
also been submitted in Bhutan, Cambodia, Hong Kong, Nepal,
Sri Lanka and Vietnam.
In support of its harmonisation goal, INTA has worked with
countries that are considering joining the Madrid and Hague
systems. In the past year, INTA has taken part in a workshop
on the Madrid System in Jordan and provided comments
on initiatives in Ethiopia, Kenya, Qatar, South Africa and the
African Regional Intellectual Property Organisation.
44 IPPro: The Annual
INTA · Feature
Working to improve enforcement, INTA has led anticounterfeiting
initiatives in Africa, Asia, Latin America
and North America, and has taken part in events
organised by the European Commission and OECD.
Specific projects INTA has focused on include the One
Belt One Road initiative in China.
In Latin America, the third INTA workshop on anticounterfeiting
with IP offices was attended by
representatives of 15 offices in the region, including six
heads of offices, and culminated in the signing of a joint
white paper on the role IP offices should play in anticounterfeiting
INTA has also held training sessions with trademark
examiners in Guatemala, Paraguay, and Argentina, with
90 judges in the Andean Community and Ecuador, and 70
Customs officials in Chile and Panama.
A developing area of INTA’s work is providing members with
the tools to demonstrate the value of brands and how their
work contributes to brand value.
For example, INTA strongly supports the US Trademark
Caucus, which now has more than 30 members and has held
five briefings as well as district workshops in the past year.
Reinforce consumer trust
Trademarks are a vital source of information for consumers,
and INTA monitors and takes action to ensure this function
is not undermined. A particular concern in recent years is
the introduction of plain or standardised packaging. INTA
has made submissions in countries from China to Colombia
highlighting the threat this poses.
Another aspect of reinforcing consumer trust is demonstrating
and communicating the contribution of brands to the
economy and society. In August 2017, INTA published the
first Impact Study on Trademarks in Indonesia, Malaysia,
the Philippines, Singapore, and Thailand. This assessed the
economic contribution of trademarks in south east Asia and
showed how trademark-intensive activities directly contribute
between 22 percent and 50 percent to GDP in the countries
studied and account for between 13 percent and 29 percent
of total employment.
One way INTA has demonstrated the value of trademarks to
the general public is by co-hosting a trademark exhibit, The
Power of Trademarks, at the National Inventors Hall of Fame
in Alexandria, Virginia. The exhibit, presented with US Patent
and Trademark Office, drew more than 15,000 visitors in the
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Embrace innovation and change
Recognising both the opportunities and challenges that
innovation offers trademark practitioners, INTA is focused on
evaluating changes, educating members on their impact and
providing innovative services to members. Much of this work
takes place in the context of the diverse programme of the
INTA Annual Meeting and other INTA events.
We are delighted that the past three Annual Meetings have all
broken attendance records: in May 2018, nearly 11,000 people
from almost 150 countries registered for the 140th Annual
Meeting in Seattle.
In March 2018, INTA held the Brands and Innovation
Conference in New York, which focused on the tremendous
worldwide change associated with technology and innovation.
The two-day programme drew hundreds to New York to learn
about navigating and harnessing new innovations to benefit
their brands, products, services, and jobs.
INTA also continues to develop new programming to address
the changing needs of its members. In October 2017, we
held the Changing Landscape of Latin America Conference
in Cartagena de Indias—our first stand-alone conference in
In February 2018, the first INTA moot court in the Asia-Pacific
region was held in Singapore. Some 78 students from 27 law
schools in eight countries took part.
Additionally, one of INTA’s most important assets is the
dedicated group of member volunteers who serve on its
committees and project teams. Many of those committees are
focused extensively on innovation, including the brands and
innovation committee, and the emerging issues committee.
a toolkit to help trademark professionals navigate the
We are also compiling anonymised data on users’ experiences
to inform INTA’s advocacy positions.
There is also important work to do on brand restrictions, and
INTA will provide further analysis of the recent WTO ruling on
Australia’s plain packaging rules for tobacco products.
This ruling was disappointing for trademark owners and indepth
study and comment is warranted.
Later this year, INTA’s Presidential Task Force
will issue recommendations regarding one of the
association’s top priorities: small- and medium-sized
enterprises and entrepreneurs.
Other ongoing work includes liaising with partners to tackle
the sale of counterfeit goods online and across borders, and
promoting education about the danger of counterfeits, notably
through the ever-growing Unreal Campaign.
Through all of these challenges, INTA will be led by its
members. We will continue to expand our programming
to provide opportunities for practitioners to meet and
discuss trademark developments. In October 2018, the
Asia-Pacific Conference in Sydney will look “beyond
trademarks” and in December 2018 the Middle East and
Africa Conference in Dubai will focus on the opportunities
and challenges of attracting investment into the regions,
innovation, and the importance of a robust IP strategy.
Looking further ahead, in September 2019 the INTA
Board of Directors will meet in New Delhi, the first time it
has gathered in India, and in 2020 the Annual Meeting will
be in Singapore—only the second time it has been held
Numerous challenges lie ahead in the coming year for INTA
and the rest of the trademark world. Foremost among these
is Brexit. INTA will continue to monitor developments in the
run-up to Brexit, and advocate to ensure there is as much
continuity, predictability, and transparency as possible—both
during the transition period and in the long-term.
INTA will also ensure its members are informed of any relevant
developments via the Brexit Topic Portal.
Another topic of great importance to INTA members is
the impact of the GDPR on the WHOIS domain name
system operated by ICANN, and ICANN’s proposed
Temporary Specification. In June 2018, INTA published
46 IPPro: The Annual
101domain.com is the trusted provider of corporate domain name management, monitoring, acquisition and enforcement services
for many of the world’s leading organisations.
For companies and legal professionals navigating and managing the challenges of brand abuse and infringement online. Trust
101domain.com to provide world-class expertise, consultation, and management services to help you work more efficiently and
effectively in enforcing trademark rights on a global basis.
101domain offers a broad range of services, including domain name registration, renewals, and transfers; domain portfolio
management, consolidation, and consulting; UDRP, URS, take-downs, and C&Ds; domain name acquisitions, recovery, and
research; monitoring including domain names, social networks, marketplaces, and more.
AnovIP are leaders in the protection of intellectual property and assist clients from around the globe in developing and
implementing IP strategies.
AnovIP has expertise in providing high quality and customised IP support services at a competitive cost to individual inventors,
small- and medium-size innovation companies, large corporation, and law firms.
Dreyfus & Associés
Founded in 2004 by Nathalie Dreyfus, Dreyfus quickly became one of the top intellectual property law firms in France. The Dreyfus
team is well equipped to assist companies with particular expertise in IP/IT matters in France, the EU and worldwide.
When confronting problems, Dreyfus assists its clients in decision-making processes concerning the management and valorisation
of their IP titles in the business realm and on the internet.
With a worldwide network, Dreyfus will represent companies in arbitration centres and courts all over the world in disputes
concerning trademarks, designs, patents, copyright, domain names, new gTLDs, social networks, Google AdWords and IT.
Advising major traditional industrial actors as well as small and medium-sized firms impacted by the rise of ecommerce and the
increasing use of trademarks on the web, Dreyfus has mastered all the issues related to the online presence of companies.
In addition, Dreyfus has established the Dreyfus IPweb internet platform, an intuitive and interactive tool. This platform aims to
consolidate and summarise all the information available to Dreyfus clients. The firm’s expertise, investment and creativity ensure
optimal management of trademarks and domain name portfolios.
IPzen is a user-friendly, cost-effective and efficient case management solution for IP rights. It is comprised of independent
modules to help you easily manage any type of IP portfolio. IPzen covers the entire IP lifecycle and by using IPzen, individuals,
smaller and bigger firms as well as large corporations have experienced both an enhanced level of productivity and, for the latter,
an increasingly collaborative nature in their day-to-day operations. IPzen’s cloud-based system organises the wealth of information
surrounding a case and supplies all of the necessary tools for follow-up. You can create deadlines, upload documents, share
information between users and clients, generate templates, link files, get financial indicators, share your deadlines with your
colleagues when you’re away from the office, customise individual user entitlements as well as your dashboard and much more.
IPzen is the perfect solution to collaborate with your team of lawyers.
Our solution was created by lawyers, for lawyers. As such, our powerful tool is bound to help you get all the value out of your IP
portfolio. IPzen also furnishes an ever-growing list of services that truly make it a one-stop shop: enforcement services, which
include UDRPs, take-down notices, phishing and domain name recovery; domain name portfolio management services, including
assistance for registrations, transfers, renewals and more; trademark outsourcing services, including filings, renewals and transfers
of ownership; and watch services for trademarks, domain names, social media, mobile apps and Google AdWords. Watch services
also include our new non-Latin character domain name watches for the Chinese, Japanese, Arabic and Cyrillic scripts.
48 IPPro: The Annual
J Vabranov & Partners
J. Varbanov & Partners is one of the oldest and leading IP firms in Bulgaria. We provide professional and cost effective services
and quality advice on all aspects of industrial property matters for the territory of Bulgaria as well as for the EU.
Our team is dealing with establishment, protection and enforcement of industrial property rights derived from patents, trademarks,
industrial designs, including validation of European patents in Bulgaria.
Our staff is made up of Bulgarian and European patent, trademark and design attorneys with great experience. We do filings and
representations before Bulgarian Patent Office, OHIM, WIPO and EPI.
We represent clients before custom authorities in connection with the application of boarder measures and all kinds of
anti-counterfeiting activities. We are members of INTA, ECTA, EPI, UNION of European Practitioners in Industrial Property,
Founded in 1996, Minesoft develops specialist software solutions in the IP field, providing international patent databases,
competitive intelligence, analytics and customised archive solutions. Minesoft serves many Fortune 500/FTSE 100 companies
around the world as well as state-run patent offices, IP law firms and patent attorney firms. Minesoft’s solutions, developed
and maintained in-house, are designed to help companies protect their innovations and to exploit the value of IP and scientific
information throughout the innovation process.
In May 2003, Minesoft and RWS Group announced their agreement to develop PatBase, a new searchable database of patent
documents designed by experts in the complex art of patent information research. Since the first critically acclaimed public
demonstrations in 2003, PatBase has gone on to attract over 50,000 users worldwide from the best-known names in industry as
well as leading patent litigation firms.
Minesoft has expanded its portfolio of innovative patent information products to include PatBase Express, PatentOrder,
PatentTracker, Legal StatusTracker, CiteTracker, Chemical Explorer, Pat-KM and PatBase Analytics.
In 2009, Minesoft won the prestigious Queen’s Award for Enterprise for an outstanding achievement in rapidly growing export
markets in the field of IP (patent) information.
In 2013, a new Chinese language version of PatBase was launched, in addition to the previous English and Japanese interfaces.
While PatBase Express is available in English, Japanese, Chinese, French, German, Spanish and Portuguese.
In 2015, Minesoft was awarded the Queen’s Award for Enterprise for a second time for an impressive, sustained growth in
Unitalen Attorneys at Law
Unitalen is dedicated to protecting the ideas and innovations that drive businesses around the world. As one of the largest
intellectual property law firms in China with more than 600 employees and more than a decade of experience in IP law, we offer the
full spectrum of client-tailored, value-added and cost-effective IP services to our clients.
We have more than 183 patent attorneys, 66 trademark attorneys, 61 lawyers and more than 200 patent engineers, including
former patent examiners, judges and in-house IP counsel. Many of them were trained in the US, Europe or Japan. With extensive
knowledge in fields including electrical engineering, computer technologies, biotechnology, pharmaceuticals, chemistry and
chemical engineering, mechanical engineering, and material science, our attorneys are well equipped to tackle all issues
surrounding IP protection.
Unitalen’s headquarters in Beijing are in close proximity to the State Intellectual Property Office, the trademark office and courts.
The firm’s 22 branch offices are strategically located in most of China’s leading technology and business centres, providing us
greater accessibility to our clients. Besides, we have representative offices in the US, Europe, Japan, Hong Kong and Taiwan.
United Trademark and Patent Services
United Trademark and Patent Services is a leading firm of lawyers and consultants specialised in intellectual property rights and
issues. The firm has been serving its global and regional clients in more than 189 jurisdictions around the world. United’s services
include searching, filing, prosecution, registration, licensing, franchising, transfer of technology, arbitration, dispute resolution,
enforcement and litigation, anti-counterfeiting, due diligence and counseling.
IP theft in today’s digital age is becoming ever more prevalent and complex. It costs governments and companies a lot
more than a first glance would suggest. Much worse are the consumers deceived by counterfeit products. Consumers not
only lose financially but sometimes also lose their lives as counterfeits can range from high end luxury goods to life saving
drugs and car parts.
50 IPPro: The Annual
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:
*Domain name registrations
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,
in an Innovative World