IPPro The Annual 2018/19

IPProMagazine

The beating heart of the world is reaching new heights in innovation, with technology coming to the forefront in 2018 as an enabler of efficiency and automation.

In the intellectual property industry, artificial intelligence, machine learning, and blockchain are beginning to shape the burgeoning technology services landscape, and exciting opportunities for both inventors and law firms alike are beginning to present themselves.

However recent regulation, such as the EU’s General Data Protection Regulation has drawn a line in the sand for enforcers, resulting in far-reaching consequences across continents, and leaving brands open to attacks from those wanting to hide behind anonymity on the internet.

All this, and more, is discussed inside IPPro: The Annual, which features comment and analysis from the world’s leading IP associations. We hope you like its new coat of paint and, as ever, if you have any feedback or suggestions, don’t hesitate to get in touch.

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Editor’s Note

Back to the future

The beating heart of the world is reaching new heights in innovation, with

technology coming to the forefront in 2018 as an enabler of efficiency

and automation.

Editor: Becky Butcher

beckybutcher@blackknightmedialtd.com

+44 (0)203 750 6018

Deputy Editor: Barney Dixon

barneydixon@blackknightmedialtd.com

+44 (0)203 750 6026

Junior Reporter: Ben Wodecki

benwodecki@blackknightmedialtd.com

+44 (0)203 750 6017

Designer: James Hickman

jameshickman@blackknightmedialtd.com

+44 (0)203 750 6021

Contributors: Rebecca Delaney, Jenna Lomax,

Ned Holmes, and Maddie Saghir

IP Portfolio Manager: Serena Franklin

serenafranklin@blackknightmedialtd.com

+44 (0)203 750 6025

In the intellectual property industry, artificial intelligence, machine learning, and

blockchain are beginning to shape the burgeoning technology services landscape,

and exciting opportunities for both inventors and law firms alike are beginning to

present themselves.

However recent regulation, such as the EU’s General Data Protection Regulation

has drawn a line in the sand for enforcers, resulting in far reaching consequences

across continents, and leaving brands open to attacks from those wanting to hide

behind anonymity on the internet.

All this, and more, is discussed inside IPPro: The Annual, which features comment

and analysis from the world’s leading IP associations. We hope you like it’s new

coat of paint and, as ever, if you have any feedback or suggestions, don’t hesitate

to get in touch.

Publisher: Justin Lawson

justinlawson@blackknightmedialtd.com

+44 (0)203 750 6028

Office Manager: Chelsea Bowles

accounts@blackknightmedialtd.com

Published by Black Knight Media Ltd

Copyright © 2018 All rights reserved

Barney Dixon

Deputy editor

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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

p6

p44

IPO

IACC

ECTA

The IPO’s Mark Lauroesch discusses the

current climate for IP in the world as it

turns increasingly nationalistic

p10

The IACC breaks down how it has

responded over the last 12 months to a

worldwide rise in counterfeiting

p12

Sozos-Christos Theodoulou describes

ECTA’s recent efforts, which include a

renewed focus on thought leadership

p14

CIPA

IPzen

AIPPI

Kristina Grinkina of CIPA runs through

an eventful year for the association

p16

AIPLA

IPzen’s Emmanuel Harrar explains the

potential applications of blockchain

in IP

p20

LES

Sarah Matheson of AIPPI describes the

association’s broad outlook

p22

PIPCU

AIPLA president Myra McCormack

explains the association’s move to

digital and more

p26

Bill Elkington, president and chair

of the Licensing Executives Society,

describes the latest for the association

p30

Detective inspector Nick Court runs

through PIPCU’s 2018 successes and

looks forward to 2019

p34

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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

and representatives.

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

data law.

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

considerations.

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

GRUR´s work.

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

Attorneys (Patentanwaltskammer).

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.

7


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.

Meeting challenges

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

and debates.

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

Stephan Freischem

Secretary general

Sandra von Lingen

Senior manager international

affairs and publications

GRUR

GRUR

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

business/IP philosophies

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

congressional heads.

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

if necessary.

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

others’ technology?

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

patent system.

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

own gains.

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

so hard.

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.

11


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

domain names.

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.

Tailored education

Looking forward

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

enforcement tools.

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

IP audience.

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.

Candice Li-Uzoigwe

Vice president, chief of staff

IACC

13


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

six years.

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

Position papers

Between June 2017 and June 2018, ECTA, with the

active assistance of its committees, issued several

position papers:

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

international applications.

29 June. In 2020, the ECTA Annual Conference will be held

in Copenhagen, Denmark.

The future

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.

Sozos-Christos Theodoulou

President

ECTA

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

Brexit discussions.

15


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.

International influence

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.

Events

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

Influencing policy

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.

Brexit

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.

Kristina Grinkina

Communications officer

CIPA

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?

Advantages

Blockchain is a secure and transparent technology for

storage and transmission of information with no centralised

control body.

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

counterfeit concern.

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

significantly reduced.


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

predefined conditions.

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.

Emmanuel Harrar

Founder

IPzen

21


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

broad one.

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

inclusive trade’.

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

offices.

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

Sarah Matheson

Secretary general

AIPPI


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

respective jurisdictions.

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

different countries.

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

is admissible.

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,

where appropriate.

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

association does.

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

trademark practitioners.

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

interview format.

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

networking initiatives

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

our members.

27


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

matter eligibility.

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

and Folklore.

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:

Myra McCormack

President

American Intellectual Property

Association

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

management department.

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

capital management.

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

organisations.

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.

31


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 licensing

IP valuation

IP protection in the supply chain

IP brokerage

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

intellectual capital.



ISO/TC 279 innovation management

FRAND licensing

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

Defense contracting.

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

their name.

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

Facebook Marketplace.

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

fake airbags.

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

threatening injuries.

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

January 2016.

Looking forward

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

new methods.

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.

35


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

competition law.

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

for profit.

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.

Lei Zhao

Partner

Unitalen

37


Feature · 101domain

GDPR:

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.

Private registration

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.

Trademark owners

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.

Domain investors

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.

Acquiring domains

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.

Kimberly Darwin

Senior corporate services executive

101domain

39


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

rising temperatures?

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

reflecting coatings.

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

detection avoidance.

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

Screenshot

41


Feature · Minesoft

Screenshot

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

China’s 607.

Figure 3: Top five assignees by jurisdiction (by number of families)

Screenshot

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

and processes

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.

43


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

three directions.

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

and enforcement.

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

past year.

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45


Feature · INTA

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

Latin America.

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.

Looking ahead

a toolkit to help trademark professionals navigate the

Temporary Specification.

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

in Asia.

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

Tish Berard

President

INTA

46 IPPro: The Annual


Vendor Profiles

101domain

www.101domain.com

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

www.anovip.com

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.

47


Vendor Profiles

Dreyfus & Associés

www.dreyfus.fr

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

www.IPzen.com

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


Vendor Profiles

J Vabranov & Partners

www.jvpatents.com

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,

AIPPI, PTMG.

Minesoft

www.minesoft.com

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

international trade.

49


Vendor Profiles

Unitalen Attorneys at Law

www.unitalen.com

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

www.utmps.com

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:

*IP Protection

*IP Enforcement

*Anti-counterfeiting

*Litigations

*Domain name registrations

*IP watches

PO Box 1152, BG-1000 Sofia, Bulgaria

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

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

e-mail: jvp@jvpatents.com

www.jvpatents.com


Intellectual Property

in an Innovative World

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