IPPro Issue 002

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The rise of AI brings tough questions
Pandora’s Box
EU copyright reform analysed
Brexit Update
Patent attorneys lay their
cards on the table
Blockchain Patents
A chain reaction is in full swing

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US-China trade war intensifies
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China has filed a complaint with the World
Trade Organization (WTO) over US tariffs on
inconsistent with Article I.1, and Article II.1(a)
and (b) of the General Agreement on Tariffs
by denying foreign patent holders, including
US companies, basic patent rights to stop
Chinese goods that were imposed last month.
and Trade, and article 23 of the Dispute
Chinese entities from using the technology
According to its complaint, the measures
Settlement Understanding.
after a licensing contract ends.
exerted by the US appear to be “inconsistent
with the relevant provisions of the WTO’s
Last month, alongside $50 billion in tariffs
The move sparked fears of a trade war, which
covered agreements”.
imposed on China, the US filed a complaint at
are slowly being realised, as China proposes
the WTO to “address China’s unfair technology
its own retaliatory tariffs, and US President
Specifically, China claims that the tariffs would
practices that run counter to WTO rules”. The
Donald Trump considers $100 billion in new
be in excess of the US’ bound rates and are
US said that China was breaking WTO rules
tariffs against China in the coming weeks.
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Contents
Copyright Reform
Case Report
The EU could be opening the Pandora’s
Box for copyright
p16
Tinder Lawsuit
Nathalie Dreyfus explains the potential for
far reaching consequences as a result of
US DOJ v Microsoft
p18
Brexit Update
The new standard in global
IP business intelligence
David Kurtz, partner at Constangy, Brooks,
Smith & Prophete, analyses Tinder v
Bumble, as Ben Wodecki reports
CIPA’s Stephen Jones explains the common
misconceptions when it comes to Brexit
and the patent profession
p20
p24
Artificial Intelligence
SEP Debate
www.ipprotheinternet.com
www.ippropatents.com
@IPProTI
@IPProPatents
Acting Editor: Becky Butcher
beckybutcher@blackknightmedialtd.com
+44 (0)203 750 6018
Barney Dixon discusses artificial
intelligence with assistant professor Mike
Schuster of the Oklahoma state university
p28
IP Europe brings its arguments to bear in
the debate over standard-essential patents
in Europe
p32
Senior Reporter: Barney Dixon
barneydixon@blackknightmedialtd.com
+44 (0)203 750 6026
Junior Reporter: Ben Wodecki
benwodecki@blackknightmedialtd.com
+44 (0)203 750 6017
Blockchain Patents
Ruth Burtstall of Baker McKenzie
discusses the recent spike in patents
relating to blockchain
Alibaba Update
Alibaba’s Matthew Bassiur discusses the
company’s recent enforcement efforts
Designer: James Hickman
jameshickman@blackknightmedialtd.com
+44 (0)203 750 6021
p34
p36
Contributors: Ned Holmes and Jenna Lomax
Marketing and Sales Support: Paige Tapson
paigetapson@blackknightmedialtd.com
+44 (0)203 750 6020
IP Portfolio Manager: Serena Franklin
serenafranklin@blackknightmedialtd.com
+44 (0)203 750 6025
Account Manager: Brenda Shanahan
brenda@blackknightmedialtd.com
+44 (0)203 750 6024
Country Profile
Ben Wodecki speaks to Grant Lynds,
president of the Intellectual Property
Institute of Canada
p38
Supported Piracy
For copyright owners, ad-supported
piracy is the new battleground. Bharat
Dube and Bharat Kapoor of Strategic IP
Information explain
p40
Filing Analytics – the IP business development tool
you can’t afford to be without.
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Office Manager: Chelsea Bowles
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Published by Black Knight Media Ltd
Copyright © 2018 All rights reserved
WIPO Cases
Emmanuel Harrar of IPzen explains
how brands should take action against
cybersquatting as WIPO cases reach a
record high in 2017
p44
Agricultural Technology
Doris Spielthenner of Practice Insight
discusses the recent developments and
innovations in the agricultural technology area
p46
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News Round-Up
Take-Two NBA fair use judgement dismissed
A judge has rejected Take-Two’s request
to dismiss a copyright lawsuit over the
depiction of tattoos in its NBA 2K video
game series.
Laura Swain of the US District Court for
the Eastern District of Texas said the
court needed more time to understand
the disputed material because of the
“difficulties inherent in conducting a sideby-side
Solid Oak Sketches, which owns the
rights to the tattoos of various NBA
players, including LeBron James, had
sued Take-Two for the depiction of the
body art featured in the NBA video
comparison of the video game
and the tattoos, further evidence must be
considered in connection with the factintensive
question of applicability of the
fair use defense”.
game series.
Swain commented: “The visibility and
Take-Two and 2K games argued that the
incorporation of the tattoos falls under
fair use, as the tattoos are only displayed
when “specific players are selected and
prominence of the tattoos on screen are
affected by countless possible game
permutations that are dependent on
individual players’ choices.”
that even when the tattoos do appear,
they only appear as small images”. “At this stage of the proceedings, there
The video game developer had
is no objective perspective as to how
[Take-Two’s] video game is generally
previously won a dismissal of statutory
damages of as much as $150,000 per
copyright infringement in the legal battle
with Solid Oak.
played, or to what extent certain game
features can be or are actually utilised,
that would allow this court to make
determinations about the choices and
subsequent observations of the ‘average
Solid Oak had described 2K’s use of the
disputed tattoos as a way of “enthralling
lay observer,’ or about the observability
and prominence of the tattoos.”
consumers to the realism of the games”.
The motion for a judgement on the
In her order denying Take-Two’s motion
for judgement on the pleadings, judge
pleadings was denied for renewal at a
later stage of the proceedings.
Microsoft announces shared
innovation initiative
Microsoft has launched a ‘shared innovation
initiative’, aimed at helping its customers
grow their businesses through technology.
The initiative is based on a set of principles
designed to address co-created technology
and intellectual property issues, and give
Microsoft customers “clarity and confidence”
regarding their work with Microsoft.
These include not imposing contractual
restrictions that prevent their customers
from porting to other platforms, as well as
a pledge that Microsoft will contribute any
licensed code to the open source projects of
its customers.
On top of this, customers, rather than Microsoft,
will own any patents and industrial design
rights that result from shared innovation work.
According to a blog post from Brad Smith,
president and chief legal officer at Microsoft,
technological advancements like artificial
intelligence, cloud-based services and
data analytics could “accelerate” business
operations.
“As collaboration like this between technology
companies and their customers increases, so
will the questions regarding who owns the
patents and resulting IP.
He added: “There is growing concern that
without an approach that ensures customers’
own key patents to their new solutions,
tech companies will use the knowledge to
enter their customers’ market and compete
against them—perhaps even using the IP that
customers helped create.”
EFF warns SCOTUS of extraterritorial
damages danger
Extraterritorial damages would cause a “wide
array of harms and distortions” if awarded
in patent infringement cases, the Electronic
Frontier Foundation (EFF) has told the US
Supreme Court.
In an amicus curiae supporting ION
Geophysical Corporation in its dispute with
WesternGeco, the EFF said that exposing
companies that conduct research and
development in the US to worldwide
damages would “discourage companies
from investing here”.
The Supreme Court agreed to hear
WesternGeco’s case against ION in January
and decide whether patent owners should be
able to recover lost profits from infringement
outside of the US.
WesternGeco was appealing a US Court of
Appeals for the Federal Circuit ruling, which
held that lost profits arising from prohibited
combinations occurring outside of the US
are “categorically unavailable” in patent
infringement cases.
The Federal Circuit ruling was on remand
from the Supreme Court to be considered
in light of the ruling in Halo Electronics v
Pulse Electronics.
In its appeal to the Supreme Court,
WesternGeco argued that under the US patent
act, it is an “act of patent infringement to
supply ‘components of a patented invention,’
‘from the US,’ knowing or intending that the
components be combined ‘outside of the US’
in a manner that ‘would infringe the patent if
such combination occurred within the US’”.
In its amicus brief, the EFF urged the Supreme
Court to maintain the US Patent Act’s domestic
focus, as allowing worldwide damages would
“overcompensate patent owners by inflating
already large awards” and “interfere with
other nations patent systems and, in turn,
may encourage other nations to interfere
with US policy. Consider how such a regime
might impact two hypothetical companies,”
the brief argued, “two companies, a domestic
one, A, and a foreign one, B, design and test
semiconductor chips and contract with a
foreign manufacturer to produce their designs.
A patent owner claims that both companies’
testing processes infringe a patent, and
demands damages for the manufactured chips
on the theory that those chips’ manufacture
and sale are proximately and factually caused
by the infringing testing”.
It said: “Company A could be liable for a
reasonable royalty on its worldwide sales.
In contrast, company B would likely only be
liable for royalties on its US sales. This would
effectively punish company A for conducting
research and development in the US.”
In a blog post, the EFF added: “Discouraging
research and development in the US is exactly
the opposite of what the patent system is
supposed to do.”
Federal Circuit reanimates
Oracle v Google
The billion dollar copyright infringement
lawsuit between Oracle and Google has been
6 IPPro The Internet www.ipprotheinternet.com 7

News Round-Up
Tim Cook to be deposed in Apple v Qualcomm
Apple CEO Tim Cook will be deposed in
the smartphone maker’s $1 billion lawsuit
against Qualcomm.
Cook will appear in court on 27 June to
provide evidence for Apple’s allegations
that Qualcomm had unfairly insisted on
charging royalties for “technologies they
have nothing to do with”.
Apple sued Qualcomm in January 2017,
following a US Federal Trade Commission
lawsuit against the semiconductor
company over the licensing of standardessential
patents. The smartphone maker
claimed that the more it innovated with
new features, the more money Qualcomm
collected for “no reason”.
Apple argued that Qualcomm had
withheld nearly $1 billion in payments
from Apple in retaliation for “responding
truthfully to law enforcement agencies
investigating them”.
Qualcomm has denied “each and every
claim stated” and filed counterclaims,
accusing Apple of abusing its power.
revived after the US Court of Appeals for the
Federal Circuit overturned a previous jury
verdict in favour of Google.
Oracle had sued Google for copyright
infringement in 2010, accusing the search
engine giant of illegally using Oracle’s Java
APIs when creating their Android smartphones.
In May 2016, a jury at the US District Court
for the Northern District of California ruled
in favour of Google, declaring that its use of
Java in the Android operating system was
fair use.
Oracle had been seeking more than $9 billion
from Google, encompassing $475 million
in damages and $8.9 billion in apportioned
profits from Google’s sales.
This latest ruling by the Federal Circuit will see
the case return to the district court for a trial
deciding how much Google should have to
pay in damages.
The court found that “the parties stipulated
that only 170 lines of code were necessary to
write in the Java language.”
“It is undisputed, however, that Google copied
11,500 lines of code—11,330 more lines than
necessary to write in Java.”
“That Google copied more than necessary
weighs against fair use.”
“Even assuming the jury accepted Google’s
argument that it copied only a small portion
of Java, no reasonable jury could conclude
that what was copied was qualitatively
insignificant, particularly when the material
copied was important to the creation of the
Android platform.”
The court noted: “If we ignore the record
evidence, and assume that Oracle was
not already licensing Java SE in the
smartphone context, smartphones were
undoubtedly a potential market. Android’s
release effectively replaced Java SE as
the supplier of Oracle’s copyrighted works
and prevented Oracle from participating in
developing markets. This superseding use is
inherently unfair.”
Apple in trouble over heart
monitor patents
Apple has been taken to court over
alleged patent infringement relating to
the heart rate monitor in its Apple Watch
products. Omni MedSci, a Michigan based
technology startup, accused Apple of
infringing patents for heart rate sensors in
all series of Apple Watches.
In its complaint, filed at the US District Court
for the Eastern District of Texas, Omni MedSci
said that it had met with Apple representatives
several times in 2014 and 2016 to discuss
a partnership for its technology, but no
agreement was made.
Apple was offered the chance to licence
and purchase the Omni MedSci patent and
patent-pending technology, but the tech
giant declined. Apple then allegedly used the
technology anyway.
Representatives from Apple had emailed Dr
Mohammed Islam, principal of MedSci, in
regards to the status of his pending patents
applications, simply saying: “We [Apple] don’t
wish to receive any information about any of
your IP.”
Omni MedSci claims that the technology giant
claims they knew the scope of all four patents
allegedly infringed.
Apple uses a system in its Apple Watches that
use multiple light emitting diodes which Omni
MedSci said directly infringed its patent for
measuring heart rates.
Apple was taken to court by Valencell over
similar behaviour in 2016.
Premier League set top box
sellers jailed
The Premier League has scored a victory in
the fight against piracy with the sentencing of
two sellers of illegal set top boxes.
Jason Richards and John Dodds were
arrested and both sentenced to four and a half
years in jail after the Newcastle Crown Court
found them guilty of conspiracy to defraud.
A joint operation by the Premier League left with no service when the seller is forced to
and the Federation Against Copyright Theft cease trading because the law has caught up
(FACT), along with several other North with them, or their broadcast signal has been
Eastern English bodies, caught the two interrupted by our enforcement measures.”
selling set top boxes that enabled their
customers to view Premier League football He added: “We hope this verdict gets the
through unauthorised access to Sky Sports, message out that selling or using these
BT Sport and illegal foreign channels. devices is simply not worth the risk.”
Kevin Plumb, Premier League director of “The many things fans enjoy about the Premier
legal services, commented: “This is a hugely League, like the ability that clubs have to
significant judgment as it provides further develop talented players, to build and improve
evidence that selling these devices is illegal stadiums, and to support communities, is all
and can result in a prison sentence. We have predicated on being able to market, sell and
seen several reports from people who have protect rights. We are pleased the courts have
purchased illicit streaming devices only to be
recognised that in this case.”
Trim: 92(W) x 120mm (H)
8 IPPro The Internet www.ipprotheinternet.com 9

News Round-Up
US House reps introduces STRONGER bill
US House representatives have the lowest number of regulations, but we
introduced a bill aimed at strengthening
the US patent system.
do have the best ideas, and protecting
those ideas is essential.”
The bill, brought by Republican He added: “Main Street should be just
congressman Steve Stivers and as much of an incubator for innovation
Democrat Bill Foster, is a companion
to the bipartisan Support Technology
& Research for Our Nation’s Growth
and Economic Resilience (STRONGER)
as Silicon Valley, and we must ensure
that these small patent owners have
the same opportunity to compete in the
open market.”
Patents Act that was introduced to the
US Senate last year.
Foster commented: “I am proud to work
with Representative Stivers to make
The legislation will implement reforms
to the US patent system to improve
our patent system stronger and more
effective for everyone with a new idea”.
administrative review proceedings at
the US Patent and Trademark Office, as “From the earliest days of our country’s
well as allowing the US Federal Trade
Commission to target firms that take
advantage of startups.
history, our economy’s strength has relied
on a patent system that has allowed
innovators and entrepreneurs to thrive.”
The bill will “strengthen the position of the “This system has allowed businesses to
US as the world’s leading innovator” to
“protect the property rights of the inventors
flourish, creating jobs and cementing our
reputation as a world leader.”
that grow the country’s economy”.
“Our current patent system, however,
Stivers said the bill would “strengthen the
US’ crippled patent system As a nation,
we may not have the lowest wage rate, or
has been weakened to the point that
it discourages research and innovation
rather than supporting it.”
CEO of FACT, Kieron Sharp, added: “This
result is an excellent example of how serious
an issue illegal streaming is.” “TV boxes and
sticks that allow consumers to illegally stream
sports, such as Premier League matches,
not only have a huge effect on the content
owners and broadcasters but the thousands
of people working tirelessly behind the scenes
to put the sport on our screens.”
The Premier League has recently ramped up its
copyright protection programme, most recently
by securing a High Court blocking order that
compels internet service providers to block
illegal streams of Premier League matches.
Blackberry sues Snap for
patent infringement
Blackberry has filed a lawsuit against
Snap Inc over alleged patent infringement.
Blackberry claimed that Snap infringed
several of its patents with the Snapchat
app, including its Snap Map, Snap Ads and
messaging features. According to Blackberry,
Snap’s infringements have led consumers
away from their products and towards
Snapchat, resulting in a “substantial and
underserved windfall” for Snap, as these
users drive its revenue.
According to Blackberry, Snap Maps infringes
Blackberry’s patent for defining action
spot locations relative to the location of the
mobile device. Similarly, Blackberry argued
that another of their patents, which relates
to advertising techniques, was infringed by
Snapchat with its Snap Ads feature.
Snapchat was released in September
2011, six years after Blackberry released
its Blackberry messaging app, which it said
“revolutionised instant messaging”.
“The appeal and success of BlackBerry
messenger led consumers to consider instant
messaging functionality as an integral aspect
of mobile communications, resulting today
in billions of people worldwide engaging in
instant messaging over their mobile device.”
Blackberry has demanded to the court that
Snap reimburse them “sufficient damages to
compensate for the infringement”.
Finjan files patent infringement lawsuit
US-based cybersecurity company Finjan has
filed a patent infringement lawsuit against
Carbon Black.
Nike wins omnibus dismissal
Nike is among nine companies that have
claimed victory in a patent infringement
dispute with Cellspin Soft Inc.
of Cellspin’s patents was “representative of all
asserted patents”, meaning that the asserted
patents were ineligible.
According to Rick Mulloy, partner at DLA
Piper and lead counsel for Nike, the ruling is
According to Finjan’s complaint, which was In a ruling on 3 April, the US District Court for “important for [Nike] as it eliminates the multipatent
filed at the US District Court for the Northern
District of California, Carbon Black had
infringed patents relating to its cybersecurity
technology. Carbon Black and Finjan had
been attempting to resolve the dispute in
good faith for two years.
Finjan also has pending patent infringement
lawsuits and appeals against Palo Alto
Networks, Cisco Systems, and five other
companies relating to, collectively, more than
20 patents in the Finjan portfolio, including
those that are being disputed against Carbon
the Northern District of California granted the
nine companies, which also included Fitbit,
Moov, Fossil Group, Garmin International,
Cannon, GoPro, Panasonic and JK Imaging, an
omnibus motion to dismiss the case. Cellspin
had accused the companies of infringing three
data uploading patents related to the sale
and marketing of fitness trackers and other
electronic devices.The court dismissed the case,
ruling that the three patents were not eligible
under the precedent set in the US Supreme
Court’s Alice Corp v CLS Bank ruling. It said
that none of the claims of the three patents
case, but also on a broader level as it
provides some additional guidance regarding
the application of the Alice test and also
reaffirms that it can be appropriate to resolve
the section 101 issues at the pleadings
stage before the parties engage in expensive
discovery and other motion practice.”
He added: “Generally speaking, start-ups
aren’t usually involved in patent litigation
as their product offerings aren’t mature
enough to generate significant revenue, but
to the extent they are, it provides additional
Black. Finjan is seeking past damages, “represent an inventive concept sufficient to guidance regarding an important potential
enhanced damages and an injunction against
Carbon Black.
transform the claimed abstract idea into a
patent-eligible application,” and that another
defence that can be asserted early in the case
before significant costs are incurred.”
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UDRP Decisions
Whose Domain Name Is It Anyway?
Facebook, Paddy Power, Deutsche Lufthansa and Red Bull have all
appeared in UDRP at the World Intellectual Property Organisation and
Alternative Dispute Resolution in recent months
Red Bull has won the rights to an infringing domain in a World
Intellectual Property Organization Arbitration and Mediation
Centre dispute.
Irish bookmaker Paddy Power has recovered a disputed domain in
a World Intellectual Property Organisation Arbitration and Mediation
Centre dispute.
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The energy drink company, who also own sports teams around
the world, alleged that redbullmlsstore.com is near identical to its
registered trademark for Red Bull.
Sole panellist Nick Gardner found that the infringing domain name
was registered in bad faith to mislead users into thinking that they
had accessed the New York Red Bulls Major League Soccer team
online store. Gardner said: “The overall impression created by the
respondent’s website suggests that the disputed domain name was
registered by the respondent in order to establish an online business
which deceived Internet users into believing that the website was an
officially approved website offering merchandise relating to the New
York Red Bulls major league soccer team.”
Paddy Power alleged that paddypower.ro was registered in bad faith
as the original registrant of the domain, Petrin Milenco Daniel, was
using Paddy Power’s trademark for financial gain.
Prior to filings its complaint at WIPO, Paddy Power had sent Daniel a
cease and desist letter.
Daniel offered the domain name up for €5 million on the attached
website, but removed all content on the website after he received the
cease and desist letter.
Sole panelist Beatrice Jarka ruled that the disputed domain should be
transferred to Paddy Power as the domain was registered in bad faith.
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Gardner ruled that the disputed domain should be transferred to
Red Bull.
Deutsche Lufthansa has claimed a domain in a UDRP dispute at the
Alternative Dispute Resolution Forum.
The German airline claimed ownership of lufthansaemployment.com
from Frank Panno, who originally registered the domain name.
The disputed domain name diverted users to a fraudulent version of
the Lufthansa website, which the airline claimed was used to phish
for user’s details.
Sole panellist Bruce Meyerson found that the domain name was
confusingly similar. He said: “The domain name is identical or
confusingly similar to Complainant’s mark as it merely appends the
generic term ‘employment’ and the generic top-level domain term
‘.com’ to the fully incorporated trademark.”
Meyerson also found that the domain was being used in bad faith
and that Panno was using the domain name “in connection with an
email phishing scheme for commercial gain”.
He added: “Accordingly, the panel agrees that [Panno] disrupts
Lufthansa’s business and attempts to commercially benefit off the
Complainant’s mark in bad faith.” Meyerson concluded that the
disputed domain should be transferred to Lufthansa.
12 IPPro The Internet
Jarka said: “The fact that the disputed domain name was advertised
for sale to the general public on its webpage, and subsequently
changed as a result of receiving a cease and desist letter, shows
that [Daniel] was not intending to use the disputed domain name in
connection with a bona fide offering of goods and services, as his
primary intention appears to have been to profit from the sale of the
disputed domain name to the complainant.”
Facebook has recovered three infringing domain names in a World
Intellectual Property Office Arbitration and Mediation Centre dispute.
The social networking giant alleged that facebooksupport.com,
facebookusers.com and facebookworld.com were confusingly
similar, if not identical, to its registered trademark.
Sole panellist Andrew Brown found that the infringing domain names
were confusingly similar.
Brown said: “The disputed domain names contain as a first and dominant
element [Facebook’s] world-famous trademark Facebook, combined
with generic and geographical terms ‘support’, ‘users’, and ‘world’.”
He also found that the original registrant of the domains had used
two of the disputed domains to send fraudulent phishing emails or
to spread malware.
Brown concluded that the disputed domains should be transferred
to Facebook. IPPro
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Patent Profile
To identify each prescription packet, it has a built in scanner, which
scans the barcode of the product, which is then matched up to the
droid’s database of each product and delivered.
They can often be difficult to capture and destroy, even in early cases.
This method could greatly increase the likelihood of capturing them
in the ongoing fight against cancer.
This new patent is not replacing the physician role, simply the
dispenser or assistant role.
With that, it means that the human element is still present in the
pharmacy, including experienced individuals with vast medical
knowledge and training that can right any wrongs caused by the
autonomous assistant—if any.
Go away Cambridge Analytica
Cisco is looking to make group chats securer and easier through the
blockchain with its latest invention.
The US patent (0091489) describes a system and method for
achieving authorisation in confidential group communications.
Cancer treatment
Japan’s Yamagata University, alongside Sumitomo Rubber
Industries, has been granted a patent for a new method for capturing
cancerous cells.
The US patent (0088105) describes a method of capturing cancer
cells, which can capture many types of cancer cells. According to
the American Cancer Society, world cancer cases are projected to
increase by 7 million from 14 to 21 million.
Incorporating blockchain into messaging platforms, allows groups of
people to share files or any other information, whilst keeping track of
membership and who sent what, when.
The entire process would create centralised group chats that only
allow authorised members to enter it.
Only approved members by a group chat admin can authorise entry into
the chat. This can be a useful property as it provides for a confidential
‘write only’ capability to the group communications resource.
When cancer cells are formed, they normally appear in blood or
biological fluid, by forming circulating tumour cells.
Cisco had previously filed a patent that proposed using a blockchain
system to track internet of things devices.
I love the Power Glove
Oculus patents a Power Glove remake, Cancer cells could see earlier detection,
Robots run pharmacies and an early machine gun feature in patents past
Enter the Oasis
Oculus has been granted a new patent for a haptic glove, which will
be used alongside a virtual reality (VR) headset for interacting with
immersive environments.
Hand me your prescription, you have ten seconds to comply
Human pharmacy counter assistants and dispensers could be a thing
of the past thanks to a new invention for an autonomous pharmacy
robot from a group of US inventors.
Patent Past - The Automatic Gun
Modern weaponry has the ability to take out whole cities
in a matter of seconds. But at the turn of the 20th century,
weaponry was a lot more simple than today’s equipment.
In 1909, the first US patent for the automatic gun was filed by
Charles Lovelace. Up until that point, most machine guns, such
as the Gatling gun, featured a cranked action to make them
work. A team of around four soldiers usually controlled these.
The US patent (0081436) is reminiscent of Nintendo’s Power Glove,
which was available in the 80s.
Current VR products like the Oculus Rift headset allow the user to
experience VR, but limit hand and touch capabilities, only allowing
slight movements and primitive tracking through its basic controller.
Oculus’s new invention fits a user’s entire hand, allows full articulation
and vibration feedback, with ribbon layers that allow one to fully flex
their digits.
The gloves include graphics processing units and random access
memory components that allow users to store their movements,
meaning the gloves can adapt to each user uniquely.
The US patent (0079083), which was developed by Neil Davey,
Brendan Murphy, Sonya Davey, and Haris Godil, describes a
pharmacy automation system that communicates autonomously with
a physician or an assistant directly to an intermediary.
The robot interacts with an inventory of goods and browses the
inventory of goods to determine if a prescribed medication is
available in the pharmacy.
If products are not in stock, or the customer requires a specific item, the
robot can then process what is missing and remind colleagues to order
them at a more convenient time. According the patent, the robot can aid
with dispensing, prescription filing, dosset box organising, transferring
of delivery and many more tasks at an efficient and accurate rate.
This new-patented weapon depicted the possibility of wielding
a handheld machine gun by a single individual. World War
One did see some of these weapons, like the German MP 18,
although they were often experimental, with cheaper and more
reliable bullet-fed guns remaining in use, and infantry primarily
using bolt-action rifles.
The barrel of Lovelace’s gun was designed to see less recoil,
despite the increased rate of fire. It was adapted to move
rearward to counter forward movement of the breechblock.
It also featured a detachable forestock that can be applied for
mounted use, similar to the earlier static bullet-fed machine guns.
14 IPPro The Internet www.ipprotheinternet.com 15

Copyright Reform
the Brussels political circle, given that where this has been attempted
already—namely Germany and Spain —it failed spectacularly. Small
publishers and startups are aware of this reality, and are trying to
raise awareness that rather than help the publishing sector, article 11
will only serve to further consolidate the press publishing sector and
stifle competition.
Is the danger of big companies stepping on the smaller companies
reflected across the copyright directive?
fortunes of the press sector. On the contrary, we have clear evidence
from Germany and Spain that it will actually do serious harm.
For instance, under the trial national laws the only online news
aggregator that paid licensing fees in Spain is Upday, which is
partly owned by Axel Springer, and in Germany, where trials were
implemented in 2013, Google has yet to pay a cent, despite the fact
that the so-called ‘lex Google’ was not-so-subtly targeted directly at
major market players.
Pandora’s Box
As the EU continues to make movements on copyright reform with
its copyright directive, Mozilla remains steadfast in its assertions that
such reform could open the Pandora’s Box for copyright. Raegan
MacDonald explains
What is the latest in terms of article 11 of the EU’s Copyright Directive?
The negotiations have devolved into a battle of attrition, as votes
and substantial dialogue on key issues in the draft directive are
repeatedly pushed back. The Parliament’s rapporteur—German
centre-right MEP Axel Voss—has struggled to secure a compromise
with other MEPs on two key elements, namely articles 11 and 13,
which remain incredibly controversial issues. These elements of the
proposal are most likely to have negative long-term implications for
the health of the online ecosystem, including for free expression,
innovation, and creativity.
With respect to Article 11 in particular—the proposal to extend
copyright protection to snippets and links of text, often referred to
as the ‘link tax’—publishers, companies, libraries, and digital rights
activists in Brussels are continuing to highlight the negative impacts
of the proposal.
A particular emphasis has been placed on dispelling the myth that this
proposal is good for the publishing sector. For instance, at a recent
conference in Brussels, Matteo Renzi, the vice-president of the largest
Italian digital publishers association argued passionately that this is
really being driven by major publishers to stamp out their competition.
Unfortunately, many politicians have been easily convinced by the
narrative that the ‘link tax’ is a means of strengthening publishers’
financial position vis-a-vis large companies like Google and
Facebook. It is extremely frustrating this narrative remains credible in
Yes. It’s the same in article 13, which tries to target YouTube and
Facebook, but casts such a wide net, the entire internet as we know
it could be turned upside-down. This is because it would essentially
make most online platforms liable for the actions of their users, in
addition to requiring licence agreements and upload filters. These big
platforms seem to be the only point of reference for the problem that
article 13 is trying to address, but really, YouTube and Facebook are
the only two companies that are going to be able to comply and
survive if article 13 passes. Of course I think their services would end
up looking very different, especially because, for instance, YouTube’s
Content ID system is more effective for audio recordings, whereas
the directive is clearly aimed at a wider body of copyright-protected
works. It will open the Pandora’s Box of different kinds of rights
claims which will require different kinds of filters.
Small companies would be hit the hardest and, unfortunately, there
doesn’t appear to be a payoff for artists and creators. It has never
been clearly explained by the legacy rights holders —the music
industry— how this article will bring the actual creators fairer treatment,
including fair remuneration. The major rightsholders believe they need
this for better ‘bargaining power’. While there may well be a reason to
discuss the interactions between some large platforms and the content
industries, this directive is not the place to do so. The EU is missing the
opportunity of a generation to update a fragmented and dysfunctional
copyright regime.
In your opinion, are there any positives to article 11?
Legally and practically speaking, no. To this day there has not been
any evidence that such a regulatory intervention would improve the
Our perspective is that article
11 will only add more confusion,
undermine media pluralism and access
to information, without any added value
to publishers and the media
Our perspective, which is shared by small and competitive publishers,
digital rights activists, and libraries, is that article 11 will only add more
confusion, undermine media pluralism and access to information,
without any added value to publishers and the media. It’s perplexing
that this attrotius idea remains on the negotiating table, like some sort
of copyright zombie.
Why do you think that article 11 is being pushed forward despite
its failed trials?
For both article 11 and 13 I think, as with most IP debates, it is
about control. You can read it all in the European Commission’s
impact assessment for the copyright directive: the problem framing
is that people don’t buy newspapers and that now there is a whole
generation of individuals who consume news almost exclusively via
digital sources.
There are two ways of looking at this period of digital transformation:
you can think, there is a shift happening—consumer and consumption
patterns are changing—we’re going to have to figure out new business
models and try to take advantage of new opportunities to reach our
audience via digital means, or you can double down on antiquated
business models and try to use regulation to smother market shifts.
EU lawmakers consider themselves to be global regulatory standardsetters—just
look at the GDPR. Unfortunately, articles 11 and 13 of
the Copyright Reform directive could make the EU a global standardsetter
in a new policy field and for all the wrong reasons. In the coming
months we’ll be working hard to ensure copyright in Europe doesn’t
turn back the clock. IPPro
Raegan MacDonald, head of EU Public Policy, Mozilla
16 IPPro The Internet www.ipprotheinternet.com 17

Case Report
The Microsoft case:
What are the consequences for personal data protection?
Nathalie Dreyfus explains the potential for far reaching consequences as
a result of the US DOJ v Microsoft, which will be heard at the US Supreme
Court later this year
US v Microsoft Corp
The legal saga of the case of the US Department of Justice (DOJ)
v Microsoft began in 2013 when the American authorities sent
Microsoft a search warrant. The purpose of which was to obtain the
contents of the online emails of a European customer as part of an
investigation related to narcotics. The IT giant refused to comply and
the request was taken before the American courts.
In the first instance decision, the US District Court for the Southern
District of New York considered that an American warrant to seize
user data, such as emails, was valid, even though such data was
situated outside American soil, in this case, in Dublin, Ireland.
The Court based its findings on article 2703(a) of the Stored
Communication Act (SCA) of Title II of the American Electronic
Communication Privacy Act. This provision grants American
governmental entities the ability to order a private online email
company established in the US to disclose the contents of a user
email pursuant to a warrant issued according to the procedures
described in the Federal Criminal Procedure Rules.
Microsoft appealed this judgement raising the question of the
applicability of the Stored Communication Act outside American
borders, on the basis of rule 41 of the Federal Rules of Criminal
Procedure, in the belief that no Federal Court could authorise a
warrant for property situated outside the legal limits of the territory of
the US. The US Court of Appeals for the Second Circuit did not follow
the judgement of the district court, finding in favour of Microsoft in
July 2016.
In particular, it came to the conclusion that US Congress had not
explicitly provided that the SCA should apply outside US borders.
To this extent, the court of appeals decided that the SCA did not
authorise a US court to validate a warrant such as that referred to in
the case at hand. However, the DOJ did not stop there and appealed
against this judgement before the US Supreme Court in October 2017.
The latter is expected to deliberate on the case at the beginning of
the summer. This much-awaited verdict raises concerns among the
experts about the fundamental issues at stake in this case.
The US and the GDPR
One of the main points raised in the proceedings in this case
was obviously how a finding potentially in favour of the US
government would comply with the legislation of the EU and
in particular the General Data Protection Regulation (GDPR),
starting from 25 May.
Moreover, it is from this perspective that the European Commission
intervened as an amicus curiae, in support of Microsoft’s position.
Through a communiqué, it explained that, to the extent that the case
refers to the transfer of data from the EU, it is governed by EU law.
The new European legislation invites non-European national authorities
to sign international and intergovernmental agreements to settle this
type of dispute. Article 48 of the GDPR provides that “any judgment
of a court or tribunal and any decision of an administrative authority
of a third country requiring a controller or processor to transfer or
disclose personal data may only be recognised or enforceable in any
manner if based on an international agreement, such as a mutual
legal assistance treaty, in force between the requesting third country
and the union or a member state, without prejudice to other grounds
for transfer pursuant to this Chapter”.
GDPR represents a substantial economic challenge for companies,
since the new European regulation provides for large fines—up to 4
percent of total global annual turnover calculated on the company’s
previous fiscal period—in the event of failure to comply with the
provisions defined in article 48.
Significant difficulties remain, however, for complying with such
requirements, to the extent that these cross border agreements are
often based on laws and policies that are obsolete. As an example,
the mutual legal assistance treaties (MLAT) in terms of transnational
criminal cooperation, propose fastidious solutions, which only
guarantee minimum legal security. These demands take time,
which remains a considerable source of frustration for the national
authorities, in view of the lack of efficiency they imply.
This is why the US legal authorities prefer conducting a more effective
approach: that of the national warrants. This affair undeniably leads
to the conclusion that a broader reflexion must be conducted on the
legislation relative to personal data, on an international scale.
At a time when cyber criminality is increasing, transatlantic
cooperation is more important than ever. Now, without legislative
action carried out on an international scale, a judgement in favour of
the government in the Microsoft case will probably have considerable
effects, according to Professor Théodore Christakis in his study of this
dispute. In this measure, such an outcome would render transatlantic
cooperation very difficult for the authorities in charge of keeping the
peace, governments and undertakings.
A ruling in favour of the American government would have the
consequence of empowering the American authorities to oblige
service providers present in the US to supply data, irrespective
of where it is stored, which would go against the current legal
requirements. In addition, such an outcome would signal to the
European authority an incompatibility between US law and EU
law, which would make them reluctant to authorise the transfer of
European personal data to the US in spite of the privacy shield.
The CLOUD Act
This affair is obviously in echo of the new American legislation called
the Clarifying Lawful Overseas Use of Data (CLOUD) Act voted
by Congress and signed by US President Donald Trump, which
offers a legal framework for the seizing of emails, documents and
electronic communications located in the servers of US companies
and stored abroad.
This legislation compiled in
the current litigation illustrates the
divergence emerging between Europe
and the US concerning the treatment of
requests for confidentiality and data
One of the principal points of the CLOUD Act resides in the new article
121 it introduces in the Stored Communication Act, which requires a
communication service provider to be able to store, backup and even
disclose the contents of any electronic records or communications,
whether they are located on US soil or outside US borders.
The CLOUD Act thus becomes an alternative to the current process
of sharing user information between countries, the MLAT, the
implementation of which is more straightforward and faster to execute.
The major tech firms such as Apple, Facebook or even Google are
delighted with such an initiative. They expressed themselves in an
open letter in February in these terms: “The CLOUD Act encourages
diplomatic dialogue, but also gives the technology sector two distinct
statutory rights to protect consumers and resolve conflicts of law if
they do arise. The legislation provides mechanisms to notify foreign
governments when a legal request implicates their residents, and to
initiate a direct legal challenge when necessary.”
This opinion is, however, far from being shared with the associations
that defend liberties such as the American Civil Liberties Union and
the Electronic Frontier Foundation.
This contested legislation is patently in conflict with the GDPR
and in particular article 48, which, as explained above, deals with
foreign—including American—investigations, by prohibiting the
transfer or disclosure of personal data unless otherwise expressly
agreed internationally. There is therefore a strong wager to be made
that the CLOUD act will be subject to further discussions at national
and international level. This legislation compiled in the current
litigation illustrates the divergence emerging between Europe and
the US concerning the treatment of requests for confidentiality and
data. They represent a strong position on the part of the overseas
government to shed light on the obsolescence of the current
legislation in a digital world.
The firm Dreyfus & associés specialises in the field of IP. We are up
to date on the new developments in European legislation and can
provide you with all the help and advice you require concerning your
IP rights in Europe. IPPro
Nathalie Dreyfus, founder, Dreyfus & associés
18 IPPro The Internet www.ipprotheinternet.com 19

Tinder Lawsuit
Left, right, left
Like jilted lovers, Tinder and Bumble have expelled old ties and brought up
old arguments in an effort to make one another suffer, and as Tinder airs
the couple’s dirty laundry in a patent infringement lawsuit, it’s a wonder
the two matched in the first place
Ben Wodecki reports
The days of sending love letters, or asking someone out on a date
face to face are quickly fading—gone is the age of mysterious notes
or flowers on the doorstep—the age of swiping right has begun.
These apps have quickly become big business, and the market
has flooded with the likes of Tinder, Bumble, and OkCupid, to
name a few.
Most of these apps generate money from advertising—the freemium
model—whereby basic services are provided free of charge.
Today, finding a date, or the love of your life, means logging on to one
of an abundance of dating apps and creating an online manifestation
of your physical self.
In the case of Tinder, its basic service allows users to swipe
right to find a partner, while more advanced features are
premium content.
20 IPPro The Internet

Tinder Lawsuit
According to Global Web Index, 24 percent of Tinder users are
paying for premium features like superlikes and rewinds, with Tinder
generating $121 million dollars solely from these subscriptions.
But Kurtz says there are a serious negatives to bringing a statutory
trade secrets claim, namely, the statutes come with prevailing party
attorneys’ fee provisions.
As emerging industries rise and start-ups look to extract revenue
from popular sectors, companies are inevitably bound to run afoul of
each other’s intellectual property.
He says: “In other words, if the court finds that the claim of
misappropriation was made in bad faith, Match could be responsible
for paying Bumble’s legal fees.”
Tinder and Bumble are two dating app companies embroiled in such
an argument.
Match Group, Tinder’s owner, had reportedly been looking to
buy Bumble, but early in March decided to sue the rival dating
app instead.
In its complaint, Match accused Bumble of infringing two of its
patents, including a design patent for Tinder’s world famous ‘swipe
left, swipe right,’ feature.
Match also claimed that Bumble executives Chris Gulczynski
and Sarah Mick, who had previously worked at Tinder, stole
design features, including the development of the undo, or
rewind, function.
Bumble hit back at Match, arguing that the company’s accusations
were “baseless”.
In an open letter to Tinder, Bumble said it would not be intimidated.
It said: “We’ll never be yours. No matter the price tag, we’ll never
compromise our values.”
“We swipe left on your attempted scare tactics, and on these endless
games. We swipe left on your assumption that a baseless lawsuit
would intimidate us.”
“Given your enduring interest in our company, we expected you to
know us a bit better by now.”
It’s not me, it’s you
David Kurtz, partner at Constangy, Brooks, Smith & Prophete,
says that Match provides a “compelling story that, at a minimum,
Gulczynski and Mick misappropriated trade secrets and brought
them to Bumble where they were ultimately developed. If Match can
present evidence supporting its claims, and Bumble does not have a
strong counter argument, then Match is certainly right to make this a
trade secrets case”.
He adds: “In court, Match will argue that Gulczynski and Mick were:
(1) given access to confidential Match information and ideas, (2) knew
they had a duty to confidentiality maintain those ideas, and not use
them on behalf of a competitor; and (3) at a minimum, they have
misappropriated Match’s proprietary ‘undo’ and picture messaging
ideas, and developed them for Bumble.”
22 IPPro The Internet
“In the world of litigation, there’s almost nothing worse than filing a
claim against another party, and not only losing, but paying the fees
of the entity you sued.”
To counter Match’s case, Bumble has argued that the claims are not
legitimate grievances, but have been filed to disparage its platform in
an effort to lower its market value.
Kurtz says that Bumble will argue that the underlying patents are
invalid because the patented methods should never have been
patentable, and that the trademarks upon which Match relies have
been suspended and, in any event, terms like ‘swiping’ are generic.
On top of this, Kurtz believes that Bumble will argue that the
ideas Match claims are “proprietary” are common ideas, and that
Gulczynski and Mick haven’t used any trade secrets learned during
their Bumble employment.
Despite the dangers of Match’s case, Kurtz says its most significant
strength is in the fact that Bumble’s CEO Whitney Wolfe Herd,
Gulczynski, and Mick, all worked at Tinder.
He explains that Match will have access to all of the communications,
files, records and other information created during their employment,
which can be used to bolster its claims.
Kurtz adds: “I would expect that Match will continue to go through
all available records related to the two of them, and utilise any useful
finds in litigating its case.”
“For instance, to the extent that a forensic analysis shows that
Gulczynski and Mick took any work product with them upon leaving
Match, that fact could be very helpful in painting the picture that they
have been infringing upon Match’s IP rights.”
“Certainly, it’s a plus for Match, compared with alleging such wrongdoing
against a competitor lacking any of their former employees.”
With a strong defence, Match must be aware of any weaknesses in
its case. Kurtz notes that Match waited a long time to file its case,
which is its most “obvious weakness”.
He says: “The fact that Match waited so long to file its case is a ‘nonlegal’
factor which calls into question the basis for filing the lawsuit,
and may add a heavy dose of skepticism on the part of the court and,
if the case gets that far, a jury.” IPPro
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
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Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
e-mail: jvp@jvpatents.com
www.jvpatents.com

Brexit Update
With more certainty for patent attorneys than others in the IP
profession over their rights post-Brexit, what are the pressing
issues for patent attorneys and firms in the Brexit negotiations?
CIPA has worked with colleagues inside and outside government to
progress the ratification of the Unified Patent Court (UPC) Agreement.
The government has now completed all the necessary legislative
steps and CIPA hopes that formal deposit of ratification of the UPC
Agreement by the UK will happen soon.
Ratification by Germany will still be needed for the agreement to
come into force.
The UPC will be a better and more attractive system with the full
participation of the UK, including as the base for the life sciences
branch of the central division of the UPC. Another issue that requires
attention is the Nagoya Protocol to the Convention on Biological
Diversity (CBD) which obstructs important research on genetic
resources, leading to delay or complete abandonment of crucial work
in areas such as human health and food security.
The protocol needs to be interpreted and enforced in a way which
gives proper weight to all the objectives of the CBD, as well as to
other important public policy objectives.
The EU regulation that applies it fails to do this.
Cards on the table
CIPA has a strong preference for the UK to participate in the unitary
patent and UPC system and for this to continue after Brexit. This
will be best for the UK, for the users of the system, and for the other
member states.
CIPA has published papers and lobbied the government to propose
a sensible and practical framework for interpreting and applying the
Nagoya Protocol in the UK, and urges that the regulation must not be
transposed unchanged into UK law upon Brexit.
Confusion over rights of representation post-Brexit has left some
wondering how patent attorneys will be affected. Stephen Jones, president
of the Chartered Institute of Patent Attorneys, sheds light on the situation
Barney Dixon reports
Rights of representation is a key issue for trademark attorneys in
the Brexit negotiations. Where do patent attorneys stand?
Because the European Patent Convention is not EU legislation
and the European Patent Office (EPO) is not an EU institution, the
European patent system will not be affected by Brexit.
The UK’s 2,300 European qualified patent attorneys will continue to
represent their clients at the EPO after the UK leaves the EU. It will
be business as usual.
This is good news for the UK because the UK’s patent attorneys
contribute up to £1 billion every year to the British economy. The
majority of this comes in fee income from foreign companies choosing
to use British representation.
Of the 40,000 European patent applications filed every year by the
UK’s European patent attorneys, a large proportion are for overseas
clients showing the high regard the rest of the world has for the UK
patent attorney profession. We punch above our weight in Europe,
filing one third of all European patent applications.
Unlike European patents, trade marks in Europe are granted by an EU
institution—the EU Intellectual Property Office, and there is a concern
that UK trade mark attorneys may lose their rights of representation
upon the UK leaving the EU.
The Chartered Institute of Patent Attorneys (CIPA) believes this would
be seriously detrimental to users of the system and disproportionately
so for SMEs as well as smaller professional firms. Along with all
other UK representative bodies CIPA continues to press the UK
Government for clarity on this issue.
What are the common misconceptions around this?
CIPA has devoted considerable time and resources to promoting this
‘business as usual’ message.
The EPO has helped publicise this message, issuing unequivocal
statements on its website.
Despite this, we continue to receive both first hand and anecdotal
evidence that this key message is still poorly understood. This is
perhaps not surprising.
Europe has many meanings in different contexts and it is easy
to be confused, especially for those living and working outside
of Europe.
CIPA has led delegations to our key international markets and
explained the situation to sister patent attorney organisations,
industry groups and the UK government’s global IP attaché network,
relying on these valued friends and colleagues to spread the message
that they can confidently continue to use UK based patent attorneys
for their EPO work and that European patents will still be granted for
the UK before and after Brexit.
What is wrong with the EU regulation that applies to the
Nagoya Protocol? Why is it important that this is not
transposed into UK law?
The Nagoya Protocol is currently enforced throughout the EU
by EU Regulation 511/143, which is so dauntingly complex and
legally onerous that it discourages important medical research
using non-human genetic resources such as animals, leaves
or microbes. There is evidence that some biotech companies
are simply avoiding using biological material obtained after the
protocol came into force, 12 October 2015, because it is simply
too complicated to do so.
As a result, potentially life-saving research into treatments for
disease outbreaks may be abandoned—or not started at all. Also,
important UK research could migrate to the USA, which has not
ratified the protocol. Brexit provides an opportunity to improve
this flawed legislation.
The regulation is over-prescriptive in two respects:
First, it fails to balance the third objective of the Convention
on Biological Diversity—benefit-sharing—with the other two
objectives: to promote its sustainable use and to share equitably
the benefits resulting from such use. Making research more
difficult frustrates the development of new uses for genetic
resources. Fewer new uses mean fewer benefits to share.
Secondly, it disregards all other important objectives of public
policy. These include research freedom in general, and in particular
easing research on vital objectives such as human health and food
security. Even to the extent of not being able to monitor or treat
infectious disease.
A further worry is the suggestion that the protocol should extend
to mere information, for example details of the structure of
biological material in a document, and that a similar protocol be
introduced to cover access and benefit sharing in areas beyond
national jurisdiction, namely the oceans. Given the stifling effect of
the current law it seems inappropriate to extend it further.
What sort of framework does CIPA suggest to replace this?
What the UK should seek to do—as a long term aim—is to
establish a sensible and practicable framework for interpreting
and applying Nagoya. This should recognise the rights of provider
countries to control their genetic resources (that is to say, samples
of resources for which they are the country of origin) while those
samples are within their boundaries. Sovereignty applies within
national boundaries, not worldwide. Once such material was
outside these boundaries, the rights of provider countries would
be limited to enforcing contractual terms against parties with
whom they had made access agreements.
To introduce a new law in the UK conforming with such notions
would require new legislation, drafted with some care. But relaxing
the grip of regulation 511/14 on UK research is too urgent to wait.
On Brexit, the Regulation could be transposed into UK law in the
Great Repeal Bill, but with specific exceptions.
Article 4.8 (imposing special requirements on pathogen research)
could be omitted, and preferably also Article 7.1, so that any
obligation to show ‘due diligence’ would be deferred until a
product was ready for launch. This could be combined with
instructing the enforcing agency to concentrate on ensuring
that any genetic resources sample collecting in Nagoya provider
countries was conducted in accordance with local laws.
24 IPPro The Internet www.ipprotheinternet.com 25

Brexit Update
How might the UK be affected if it were to sit outside of the
unitary patent?
The UPC agreement is a non-EU instrument which is separate from
the unitary patent regulation although membership of the UPC is a
condition of membership of the unitary patent.
Could Brexit, along with the potential for the UK to miss out on the
UPC, lead to it becoming a less attractive venue for international
companies looking for a gateway into Europe?
The UK has a great IP system and functions as an international IP hub,
attracting business from around the world.
If the UK were not to participate in the unitary patent, then European
patents for the UK would continue to be granted by the EPO in the
same way as now, but the UK could not be designated as part of a
unitary patent.
CIPA believes the unitary patent will be beneficial to businesses in
allowing them to obtain a single patent covering the majority of EU
member states.
The UK’s IP system is consistently ranked by independent research
as one of the best in the world, with specialist courts and judges,
renowned for their impartiality, experience and skill, as well as
experienced arbitrators and mediators, providing a well-developed
system for resolving IP disputes. Litigation decisions can usually be
expected within 12 months. This speed of judgment, along with the
rigorous testing of evidence are among the features which set the UK
apart from other countries.
UK businesses, including SMEs in particular, would benefit from
streamlining and potential cost reductions from such a system,
similar to those which already exist for trademarks and designs.
CIPA is therefore in favour of the UK government and the EU working
out a way for the unitary patent to function so as to include the UK,
as well as potentially other non-EU states.
The use of English as the international language of business and
science, and the UK profession’s experience of working in both civil
and common-law legal systems, confirm the UK as an international
hub for IP work. This will continue whether or not the UPC comes in to
operation, and whether or not the UK is part of it. But CIPA’s position
remains that the UPC will be a better system for its users, and for the
other member states, if the UK plays a full part in the system. IPPro
CIPA’s position remains that the
UPC will be a better system for its users,
and for the other member states, if the
UK plays a full part in the system
Stephen Jones, president, CIPA
26 IPPro The Internet

Artificial Intelligence
The US must embrace the AI revolution, or its global lead in intellectual
property will be lost in time, like tears in rain
The primary source of global intellectual
property internet news and analysis
Barney Dixon reports
Schuster explains that ‘to invent’ means to “identify a certain and
permanent conception of the invention as it will be used”.
Artificial intelligence (AI) sounds cool. When you look at the breadth
of fiction attached to the technology, you might consider it the
impossible—the fantasies of authors and writers around the globe. It
is this air that gives it its identity and its mystique. But AI is very much
here, and with that, comes a particularly unique set of problems.
As Russian president Vladimir Putin once said, “the nation that leads
in AI will be the ruler of the world”. Leading in something means
leading in its every single aspect, including, in this case, setting
standards regarding AI and patent law.
For the US, a country that is currently in the midst of a potential
patent downturn, due to what some critics have called a “weakened
IP system”, headlining in AI patent policy could be important to the
continued premiership of the US patent system.
“Providing information about the existing state of the art is not—
standing alone—invention. Neither is simply identifying a goal to be
achieved or employing another to achieve that goal,” he says.
He adds: “This leads to the legal conclusion that, where a human
solely identifies a goal and provides background information for AI to
use in creating a new technology, it is the computer—not the human—
who is the inventor.”
An upcoming paper from Schuster specifically discusses this problem
and the variety of types of AI capable of invention. For example,
Schuster describes genetic algorithms as one such variant.
He details algorithms that develop “new technologies by mimicking
biological evolution”.
Implementing AI poses an unusual set of issues for a national patent
system, and not all are related to the actual patenting of AI itself. For
example, if an AI were to invent something, does the patent belong to
the AI itself, or the creator of the AI?
Assistant professor Mike Schuster, of the Oklahoma State University,
believes that these issues need to be addressed—one way or another—
in the near future. He hopes that, when the time comes, sufficient
information and research will be available to make an informed decision.
Schuster says that invention by artificial intelligence is already here.
He explains: “It has independently invented jet engines, parts of
bullet trains, communication systems, and new pharmaceuticals.”
These issues of invention and ownership are already out there, according
to Schuster, who recounts that there are already reports of an individual
who secured a patent on technology that he admits was invented by AI.
“He did so without bringing the AI’s role as inventor to the US Patent
Office’s attention,” Schuster says.
28 IPPro The Internet
“The AI creates multiple sets of random design parameters relevant to
a subject technology,” Schuster illustrates, “it then tests each set for
performance and discards poor performers.”
“The survivors then create additional parameter sets by
combining subsets of their elements to form hybrids (offspring).
These sets are ‘mutated’ by randomly altering one or more
parameters. The process repeats itself, beginning by testing the
parameter sets for performance, until an acceptably performing
design is reached.”
You’ve done a man’s job
Inventions developed by AI already exist and already, as Schuster
explains, we have seen individuals claiming ownership for AI
created inventions.
So, in this new, strange territory, how should governments react?
Should patents be owned by the AI itself? The purchaser of the AI?
Or those that developed the AI in the first place?
www.ipprotheinternet.com

Artificial Intelligence
Schuster says that, despite the fact this is an emerging area with real
questions, he hasn’t found any significant discussions about patent
ownership by AI.
But he adds: “There are, however, a set of twin questions that
commonly arise in the area of patents for AI-created inventions”.
Schuster says that the related question of who should own the
patents is also being discussed.
He explains: “I’ve asserted in an upcoming article that, if we decide
to grant these patents, firms who employ AI to invent should own the
resulting patents.”
“First, should patents be granted for computer created inventions,
or should these technologies be free for anyone to use, assuming
they aren’t a trade secret? Second, if such patents are granted, who
should own them?”
Speaking of the first issue, Schuster says that there are compelling
arguments on both sides of the discussion of whether to grant
patents for AI created inventions.
“Professor Ryan Abbott of the University of Surrey believes that the
software owner should secure any patents which arise. Others state
that a party who reviews the AI’s output for patentable inventions
might be the actual inventor and thus, patent owner. Again, the issue
of AI and patent law reaches an unresolved point.”
So with much uncertainty surrounding AI developed inventions and
the resulting patents, how close are we to this reality?
He explains: “Many patent systems are premised upon the idea that
these intellectual property rights are granted to encourage creation
of new technologies.”
“Building from this, some assert that—due to the relatively low cost of
invention via AI—little incentive to engage in AI invention is needed
to offset the expenditure, and therefore, there is no need to grant
patents for these technologies.”
Schuster adds: “In the same vein, some believe that patents for AI
inventions will further patent thickets—technological areas wherein
huge numbers related patents exist that render commercial activity
in the field difficult.”
Schuster says that AI’s are already inventing, yet the US government
doesn’t appear to have any guidance on the matter.
Last year, Schuster filed a Freedom of Information Act request with the
US Patent and Trademark Office (USPTO), seeking all promulgations
or directives to patent examiners, instructing them on how to
examine patent applications listing one or more inventor that is not a
human, including software, computers, and artificial intelligence. The
office told Schuster that it had no relevant information, which he says
indicates a lack of internal guidance on the issue.
Despite the present blackout on this issue, Schuster says he doesn’t
believe this subject will go untackled for long.
“The argument goes that, due to the (relative) ease of AI invention,
significantly more technologies will be created, causing a proportional
increase in patents granted and related growth of patent thickets.”
But Schuster also reveals a counter argument: that refusing to give
patents for AI created inventions encourages lying to the patent office.
“If a company uses AI to invent a particularly valuable commodity and
it is not allowed to secure a patent on it, a difficult choice is created”,
he explains, “it can use the technology in commerce, which affords
the company a brief competitive advantage before others identify
and adopt the invention. Alternatively, it can preclude competitors
from accessing the invention by not employing the technology, which
of course, deprives the company of any market benefit.”
He expounds: “Within the next few years, I believe the issue will come
to the fore through one of several avenues: we might see a patent
application naming an AI inventor, litigants disputing inventorship
who bring up AI, or a proactive amendment to the patent statutes
or USPTO guidelines. It is possible that the issue will come up in
some unexpected manner, but I expect that it will be addressed in the
near future. Hopefully, the issues will have been widely discussed by
that point such that—regardless of what policy is adopted—a wellinformed
decision can be made.”
Will a reactive approach from the US pay off? Last year, David Teece,
director of the Tusher Center for Intellectual Capital Management, UC
Berkeley-Haas, said that the US IP system was “weakened”, leading
to the strengthening of foreign rivals.
“There is, however, a third option: the firm may attempt to secure
a patent by falsely naming a human as an inventor. Under current
policy, at least in the US, such subterfuge is unlikely to be identified,
and potential sanctions to the company for such deceit are relatively
low. Incentives to behave in this manner are not aligned with policies
encouraging candor during patent prosecution.”
Teece said that other countries, especially China, are embracing
stronger IP and transforming themselves into innovation economies.
He said “We have been sleeping while Rome burns. Today, one has a
better chance of getting an injunction in China or Germany or Brazil
then in the US.”
He makes clear that further research needs to be done to determine
the severity of these concerns before an informed policy is set.
Will the US sleep on the future of AI, or will it take the reins and
become the leader of the world? Only time will tell. IPPro
30 IPPro The Internet

SEP Debate
Standard setters
IP Europe brings its own arguments to bear as Europe’s SEP debate continues
Barney Dixon reports
Despite appearing to cool down, Europe’s standard-essential patent
war continues to boil. The debate has temporarily shifted from a
regulatory setting, to a competition between two competing best
practice workshops on standards licensing.
IP Europe, an organisation representing research and development
intensive wireless technology developers in Europe—both small- and
medium-sized enterprises (SMEs) and larger corporations such as
Ericsson, Nokia and Orange—now shares its frustration within this
context, arguing that Silicon Valley giants are hijacking its attempts to
maintain fair, reasonable and non-discriminatory (FRAND) outcomes
to licensing negotiations.
Francisco Mingorance, executive secretary of IP Europe, says
that despite these frustrations, there are early signs that the recent
European Commission Communication on SEP licensing has improved
outcomes in the market. We spoke to Mingorance to find out more.
What is the difference between IP Europe’s CEN/CENELEC
workshop and other workshops aimed at SEPs in Europe?
We launched our CEN/CENELEC workshop initiative, the ‘Best
Practices and a Code of Conduct for Licensing Industry Standard
Essential Patents in the Internet of Things (IoT) / Industrial Internet’,
last October, to document the best practices used over the last 15 to
20 years in licensing standardised technology.
We want this exercise to support constructive working relationships
between standards developers and implementers as we make the
transition into the internet of things and 5G environment.
An additional goal of this exercise is to help inform the many SMEs
who, attracted by the market potential of the Internet of Things, will
be entering the standards environment for the first time. They need to
be well informed about the legal and financial obligations of licensing
and using the open wireless technology standards.
On the other hand, a group of Silicon Valley giants, who initially
attempted to hijack our workshop before leaving with copies
of our documentation, have established a parallel workshop,
titled ‘Industry Best Practices and an Industry Code of Conduct
for Licensing of Standard Essential Patents in the field of 5G
and Internet of Things’, aimed at rewriting 20 years of licensing
practices to their specifications. Sadly, this is part of an ongoing
pattern of behaviour from a few companies that are trying to
diminish and undercut the value of innovative open wireless
technology standards like 4G and 5G.
We are trying to develop and document existing best practices, they
are attempting to squeeze the returns, and ultimately the sustainability,
of European innovators like Ericsson, Nokia and Orange, which are
investing heavily in developing revolutionary technology for inclusion
in open standards. Unfortunately, despite these significant differences,
the title of the opposing workshop is confusing some organisations.
What is at the root of these different approaches?
The sole focus of this group of Silicon Valley giants is to try to
undermine the tried-and-tested licensing valuation model by putting
forward new ways of calculating royalties based on the fraction of
the value of a microchip. Unfortunately, we have seen this behaviour
repeatedly: for example, in their hijack of the intellectual property
Rights policy at the Institute of Electrical and Electronics Engineers
Standards Association (which is now being investigated by the US
Department of Justice), and their unsuccessful lobbying around the
European Commission’s Communication on SEP licensing.
None of these companies has ever produced or licensed any cellular
technology, but they benefit greatly from being able to implement
open standard technologies in their products.
If you reduce the licence fees by a factor of 30 or more, which is what
these companies are proposing, then there is no longer an incentive
for companies and universities to contribute IP to open standards.
There would be no more investment in open standards, only private
technology held privately by companies and that is the end of it.
They need to recognise that if there is no remuneration, there will be
no more innovation in open standards to support the development of
their businesses. In this instance, wireless innovators would be forced
to sell their innovations to private buyers, leading to a fragmented
marketplace of competing wireless technologies and a decline in
interoperability. But perhaps this is what they want.
What does IP Europe hope to achieve from its second CEN/
CENELEC workshop?
We are trying to educate tech users who are new to this field. In the past
there have always been limited players in the telecoms market: everyone
knows each other and they all know the rules of the game. Now, we are
talking of bringing in new sectors, like the automotive industry, or the
health sector or energy sector, transportation, you name it.
Companies in these new sectors will start using the internet of things
and 5G technology in completely new ways and most of them don’t
yet fully understand how these new specifications will work. What
we’re trying to do is document and explain how it works and how
it can be used to the mutual advantage of both those who use the
technology and those who develop it.
Sometimes with the internet of things, you will have small companies
that will also develop the wireless technologies and will want to license
it out. As such, it is also important for them to be able to operate in
a stable and predictable IP licensing environment, rather than one in
which they may be forced to find expensive legal remedies, just in
order to receive payment for their inventions.
We want to document the best practices and promote what we call
good behaviour in licensing negotiations between patent holders
and the licensee (not just from one perspective) and to promote
the behaviours that prevent litigation by making more information
available and explaining how licensing works. Then eventually we
want to encourage more investment in 5G and to improve technology
standards for small and large companies, as opposed to undermining
any fair and reasonable expectation of returns.
Were you pleased with the European Commission’s communication
on SEPs? Could they have gone further?
We were happy with the communication, but it could have been even
better. Both the communication and the conclusions of the European
Council supported the tried-and-tested principle of access to all in
licensing negotiations, which was our primary goal. The alternative
license to all approach, being advocated for by the Silicon Valley
cabal, would have obligated our members to provide licenses for the
technology to every single member of product value chain that requested
one. This was seen as another attempt to force us to license our world
changing innovations at the fraction of the value of a chip. However,
when judging success, it is important to remember that the political and
legal wrangling can only be viewed as beneficial if it helps create a more
positive market dynamic, and I’m pleased to say that has been the case.
It was felt by some of our members that in the build up to the
communication that a number of negotiations had stalled as
implementers were questioning whether the outcome of the
communication may offer them a chance to renegotiate. However,
two days following the decision BMW became the first automotive
manufacturer to agree a licensing deal for using the 2G, 3G and 4G
patented technologies in the AVANCI patent pool.
That is the really great news, because despite the talk of industry
winners or losers, standardisation is, at its heart, an exercise in
balance and collaborative innovation that is intended to make
sure consumers can benefit from shared access to the best
technologies globally.
Is the debate going the way you’d hoped?
Despite this positive trend though, it
remains a great shame that this ongoing
campaign to undermine open standards
continues to distract energy and
resources away from development and
commercialisation of these revolutionary
open technology standards
Gradually, yes. I think there is a growing appreciation in the US
particularly, but also in Europe, that some of the more outlandish
positions and actions taken by opponents of the IP rights have
been potentially damaging to a very important and advanced area
of innovation.
Despite this positive trend though, it remains a great shame that
this ongoing campaign to undermine open standards continues
to distract energy and resources away from development and
commercialisation of these revolutionary open technology
standards; especially, when we are just about to see again the huge
benefits the system brings, in the shape of the first full technical
specification for 5G. IPPro
Francisco Mingorance, executive secretary, IP Europe
32 IPPro The Internet www.ipprotheinternet.com 33

Blockchain Patents
Chain Reaction
The growing number of patent filings relating to distributed ledger technology
has skyrocketed in recent years, showing those in the IP profession that
the technology is here to stay, and leaving many questions in its wake.
Ruth Burstall of Baker McKenzie explains
The number of patent filings that mention blockchain or distributed
ledger technology (DLT) in the title, abstract, or claims has increased
exponentially over the past few years.
Although the number of patents granted remains low, the swell in
applications is indicative of the excitement around DLT.
Blockchain was conceived as a way to transfer cryptocurrencies
without the need for an intermediary. Information (in the case of
cryptocurrency, regarding the ownership and transfer of currency) is
shared and verified across a peer-to-peer network and then stored in
a distributed ledger format. As information on the distributed ledger is
verified by the many participant hosting computers (nodes) solving a
complex mathematical problem, no single entity holds the information
and it would take a significant amount of computing power to attack
the network. Information stored on distributed ledgers is therefore
very secure and DLT has therefore found many applications beyond
cryptocurrency from verifying the provenance of diamonds to tracking
Chinese chickens.
The challenges of patenting DLT
DLT has piqued the interest of many, from technology start-ups, to
traditional technology companies to financial institutions, which
have filed numerous patents for DLT inventions in the past five to 10
years. A recent report by Thomson Reuters, based on WIPO figures,
indicates that China leads DLT patent applications, having filed 225
of the DLT patents last year and 59 in 2016, compared to the US,
which saw 91 applications in 2017 and 21 in 2016.
As yet, few applications have been granted but it seems likely
that applicants have had to navigate several difficult issues on the
question of patentability.
First, as with any patent, DLT patent applicants will need to
demonstrate novelty and an inventive step. Blockchain was
described in a 2008 paper by its anonymous inventor, who uses
the pseudonym Satoshi Nakamoto, and was made available to the
public as a way of transferring bitcoin in 2009. Although Nakamoto
did not seek patent protection for blockchain, it forms part of the
prior art for any subsequent DLT. With the speed at which the
technology is being developed and applications filed, the prior art
is a quickly expanding and shifting landscape, meaning it may be
difficult to carve out a monopoly.
Secondly, DLT patent applications need to be carefully drafted to
ensure that the claims cover patentable subject matter, with the
potential to fall foul of restrictions on patenting business methods
and computer programmes. Computer programmes are expressly
excluded from patent protection in many countries, although where a
computer programme has a technical effect it may still be capable of
protection. Likewise, computer programmes and business methods
may not be capable of protection if they are simply ideas of an
abstract nature.
The US Supreme Court in Alice v CLS Bank held that patents claiming
an escrow system implemented on a computer were too abstract
to be valid. Although the court held that claim elements that add
something “significantly more” to an abstract idea might transform it
into patent-eligible subject matter, it did not give clear guidance as to
what these elements might be.
Following this decision, US federal courts have declared many
computer-related inventions to be invalid on the basis that they are
too abstract to attract protection. These restrictions not only make it
more difficult to draft a patent which will proceed to grant, but also
increase the risk that a granted patent will be subject to challenge by
competitors on grounds of invalidity.
Thirdly, the land-grab for patents has led many to speculate that DLT
will be the next innovation to spark patent wars, similar to those which
accompanied the rise of smartphone technology. It also increases the
risk of so-called patent trolls—those whose business model is based
on applying for or purchasing patents, then demanding royalties or
suing for their use, rather than operating the inventions.
Patent litigation is extremely expensive and for many pure-play DLT
initiatives, patent litigation would require them to ‘bet the company’ on
the result. The Blockchain Intellectual Property Council, established
by the Digital Chamber of Commerce, a US advocacy group which
promotes the emerging DLT industry, already warned in 2017 that the
exponential rise in patent filings creates a high risk of IP abuse and
has made helping DLT developers to manage this risk a key element
of its strategy.
The Chinese Ministry of Information Technology and the European
Commission are already reportedly working on blockchain standards,
and this is likely to lead to the emergence of Standard Essential
Patents (SEPs). SEPs must be licensed on fair, reasonable and nondiscriminatory
(FRAND) terms.
Alternative approaches
While there has been something of a gold rush to patent DLT-related
innovations, there are different schools of thought as to whether filing
patents is the correct way to protect DLT, and not all DLT developers
are applying for patents. As a practical matter, for some start-ups, the
cost of filing patent applications and the delay that the application
process may introduce in getting a technology to market may be
prohibitive. These companies may rely on trade secret protection
in preference to patents, but, for companies seeking investment,
applying for a registered patent and related monopoly may be a
prerequisite to securing funding.
Some think that developing DLT on an open source basis will be
the best way to support the success of the technology by allowing
interoperability of developments. For example, the Hyperledger
Project established by Linux in 2015 aims to support collaborative
development of DLT. Another approach has been to establish patent
pools which allow the cross-licensing of patents. Some developers
may take a hybrid approach—applying for patents on technology and
then licensing them under open source licences.
While we can expect the trend of
high numbers of patent filings on the
technology to continue it will probably
not be long before some of the issues
discussed above start to emerge
What can blockchain do for patents?
Whichever approach is taken to protecting DLT innovation, some are
already flipping the question of what patents can do for DLT on its
head and instead asking what can DLT do for patents?
With various governments exploring the application of DLT for land
registries, it is not beyond the realms of possibility that DLT could
also be adopted as a way of registering and recording transfers and
licences of patents and other IP rights. The European Parliamentary
Research Service identified in a 2017 report that digital rights
management and smart contracts are potential use cases of DLT.
Many DLT start ups are already focusing on the application of DLT
in recording the creation and transfer of unregistered rights such as
copyright in music. DLT could also be used to defensively publish
technologies as prior art to prevent others from obtaining a patent
over such technologies.
Although it is currently possible to record patents with customs
authorities and to request that they detain and destroy infringing
products, it is often difficult for customs authorities to tell whether
products are indeed infringing. As DLT allows the secure recordal
of information about a product’s provenance and the steps it has
taken through the supply chain, it has huge potential in helping to
enforce against the import of patent-infringing goods at customs
borders. There are already examples of scannable chips or tags being
embedded in products which interface with information recorded on
blockchain to verify the authenticity of products. If customs authorities
had access to technology which allowed them to scan such tags, this
would greatly assist them in identifying counterfeit products.
The interest of government bodies in DLT and the move towards
creating standards suggests that this technology is here to stay.
While we can expect the trend of high numbers of patent filings on
the technology to continue it will probably not be long before some
of the issues discussed above start to emerge. Exactly how it will
transform the way we live and work remains to be seen, but DLT
developments over the next few years should certainly be watched
with interest by the IP community. IPPro
Ruth Burstall, senior associate, Baker McKenzie
34 IPPro The Internet www.ipprotheinternet.com 35

Alibaba Update
Power to the enforcers
Matthew Bassiur of Alibaba, gives an update of the e-commerce company’s
enforcement efforts
Barney Dixon reports
Third party support for Alibaba has grown in recent years. What do
you think Alibaba does well in terms of enforcement?
You are absolutely right. We are seeing a deeper appreciation for
Alibaba’s efforts and a greater understanding of our role as a partner
in intellectual property protection. In recent years, Alibaba has made
it even easier for rights holders to work with us and protect their IP.
These efforts are paying off for rights holders. Leading brands, small
and medium-sized enterprises (SMEs) and industry associations,
including some who were previously our most vocal critics, have
voiced their support for and satisfaction with our programs.
To illustrate, let me share some data from last year. While the number of
registered accounts in our IP protection system rose 17 percent yearon-year,
the number of takedown requests dropped 42 percent. We
believe this is attributable to Alibaba’s efforts in proactively identifying
and removing potentially problematic listings. Listings go through our
scanning engine, which identifies and intercepts problematic listings
within microseconds, and prevents their entry onto our platforms. In
addition, our deep learning algorithms continue to apply complex
modeling to proactively remove suspicious live listings. In fact, last
year 97 percent of our proactive takedowns occurred before a single
sale took place.
Additionally, in 2017 we launched enhanced data modeling to our IP
protection platform to speed up the handling of takedown requests.
As a result we’ve seen a two-thirds reduction in processing time and
24 hour handling time during business hours has become the new
norm. To assist small businesses and individuals, we have taken
the extra step of developing a simplified online form for submitting
takedown requests in order to make it easier for them to report and
remove infringing listings.
Finally, when we do identify infringers, we take action, in 2017, we
closed more than 240,000 Taobao stores.
Our offline enforcement efforts are also an area of strength. Alibaba
does not limit its IP protection efforts to online matters and we work
closely with rights holders and Chinese law enforcement officials. In
2017, there were hundreds of arrests based on information and leads
provided by Alibaba. We are taking action in civil courts as well as
assisting in criminal matters.
To date, we have brought 12 civil actions in China. Last year, we sued
two sellers of counterfeit Swarovski watches and we brought and
won a lawsuit against a pet-food vendor by alleging damage to our
brand and reputation for selling counterfeit cat food on our platform
and in violation of our terms of service. We believe these are the first
legal actions brought in China by an e-commerce company against
infringing sellers on its platform.
Do you think Alibaba has changed perceptions of its commitment
on IP? How has Alibaba won over brands that may have previously
argued that Alibaba doesn’t do enough? How does it build trust
with brands?
I believe perceptions have changed, yes. Collaboration between
Alibaba and rights holders is essential for the protection of IP, and
every day we are working with brands to understand their IP and
how we can work together. We listen to, deeply value and take
action based on what we hear from them.
As an example, in 2016, Alibaba merged its notice and takedown
systems into a single ‘one-stop’ IP protection platform. This was a
significant undertaking for us, but we knew from our collaboration
with rights holders that a more unified and streamlined notice and
takedown system was something that would be well received. As I
mentioned earlier, in 2017 we made enhancements to platform to
allow for faster processing of takedown requests.
Alibaba has, for years, invested heavily in both technologies; it takes
time for the development, testing and implementation of technological
enhancement. It also takes time for those enhancements to be
adopted and the benefits realised. I think in some ways the changes
in perceptions we’re seeing now are the result of sustained, years
long efforts by Alibaba.
It also takes time to build the trusted relationships that enable
our success. More than 100,000 brands operate on our platforms,
including 75 percent of the world’s most valuable consumer brands,
as well as countless small businesses, all of which have thriving
businesses on Alibaba’s platforms.
These businesses would not choose to work with us if they did not
view us as a trustworthy partner.
One of the key initiatives that Alibaba launched in 2017 was the
AACA. Can you tell us a little bit about the AACA and any plans
for 2018?
We established the Alibaba Anti-Counterfeiting Alliance (AACA)
in 2017, an alliance created among Alibaba and approximately 30
global and domestic China brands, including Louis Vuitton, Uniqlo
and Burberry. In September of last year, we created an Advisory
Board to give AACA members the chance to participate in strategic
decision-making and influence policies being considered by Alibaba.
Advisory Board members include Swarovski, Adidas, Ford, Pernod
Ricard and Sony, among others.
Representation covers each of the industries represented in the AACA,
including apparel, personal care products, consumer electronics, and
the automotive industry.
Simply put, we leverage our
big data and analytics to help target
illicit manufacturers, distributors and
suppliers of counterfeit products
Matthew Bassiur, vice president and head of global IP enforcement, Alibaba Group
We believe this is an industry first and Alibaba will hugely benefit
from the input of the AACA and the Advisory Board.
This year we announced that the AACA was adding more members
to bring our full membership to approximately 100 brands. This not
only triples the number of companies that will benefit from the AACA
programs and initiatives, but provides even broader representation
in the dozen industries.
What role does technology play in Alibaba’s work on intellectual
property protection?
The online environment is reflective of the offline reality and Alibaba
takes a technology-driven approach to IP protection. As a leading
global technology company, we leverage our advanced algorithms
and machine-learning capabilities for our online and offline IP
protection efforts. Online, we proactively monitor our platforms in
order to identify potentially problematic listings and take action. Our
data modeling is constantly improved upon to increase the accuracy
in identifying, preventing or deleting suspicious listings. Offline, we
use data and analytics to build cases for referrals to law enforcement.
This is in addition to responding to many valid law enforcement
requests for information to support their own investigations. Simply
put, we leverage our big data and analytics to help target illicit
manufacturers, distributors and suppliers of counterfeit products. We
are also one of the few e-commerce platforms—if not the only one—
to also have such a robust, proactive offline investigations program.
How else is Alibaba working to create a better environment for IP
protection in China?
In addition to the efforts I have already described, we view it as
part of our responsibility to advocate for improvements in laws and
enforcement penalties in this areas.
The best example of this is the vocal public advocacy of Alibaba’s
founder and executive chairman Jack Ma who last year called for
stronger IP laws and enforcement in China including jail time for
offenders. So it is very encouraging to see just such changes being
discussed in China. IPPro
36 IPPro The Internet www.ipprotheinternet.com 37

Country Profile
O Canada
Grant Lynds of the Intellectual Property Institute of Canada provides an
overview of upcoming changes to Canada’s trademark law and how brands
should adapt their strategies
Ben Wodecki reports
What are the biggest changes coming to Canada’s trademark law?
How will these changes affect Canadian companies?
The biggest change we have on our horizon is the implementation
of our legislation to implement three treaties, the Singapore Treaty
on the Law of Trademarks, the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes
of the Registration of Marks, and the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks. The
significant change is the implementation of Madrid Protocol into
Canada. We’re a little bit later to the party than most people but we’ll
get there and the current forecast is that the agreement will be in
force by 2019.
Canadian companies are going to be more aware that they have the
opportunity to use the Madrid Protocol should they choose to file
outside of Canada, and that there’s a more cost effective and leaner
route to engage trademark systems outside Canada and vice versa.
The companies outside Canada that are looking to file inside Canada,
will see that being inside Canada gives them a more cost-effective
route to consider filing via the Madrid Protocol.
Do the new laws hold any provisions aimed at tackling counterfeits?
Our main anti-counterfeiting measures are still rooted in legislation
that came into force fairly recently in 2015, the Combating Counterfeit
Products Act. We’re still working within the domain or the regime
of that legislation, which is still fairly recent in trying to see if it has
provisions that are effective in tackling counterfeits.
To date, there have been very few seizures under the provisions of that
legislation. Much of the commentary is focused on Canada having a
less than robust regime under that legislation for intercepting and
detaining counterfeit goods that come into Canada.
What is the biggest problem area for Canada in terms of counterfeits?
We’re looking at the US Trade Representative’s Special 301 Report,
which brought some concerns to Canada over in-transit goods—
essentially goods being shipped through Canada, not with a final
destination of Canada, that come from another country and go
through Canada and then onward to the US or other countries.
That is not something that the Canadian government has the ability
to detain and inspect under our Request for Assistance programme,
but that is what the US government has commented on. I know
that hasn’t changed and my only question there is whether or not is
whether the US will continue to comment on that in its 2018 report.
How should brands adapt their strategies to prepare for these
legislative changes?
Once the new legislation to implement the treaties comes into
force, the definition of a trademark will be broader than the current
definition. While some of the types of trademarks are already
recognised, even though they may not be explicitly identified in the
definition of a trademark, the new definition will capture many forms
of trademarks.
Brand owners should review their portfolios to ensure they have
captured all possible trademarks that may be deserving of protection
in Canada.
We also expect there may be increased opposition or summary
cancellation proceedings in the future since trademark owners will
not be required to provide evidence of use of their trademarks in
order to obtain a registration.
As such, if trademarks are registered in the future but use has
not commenced within the requisite time period in Canada, we
expect summary cancellation proceedings to increase as well as
opposition activity.
I think brand owners should therefore plan in their corporate
strategies to engage Canada’s summary cancellation proceedings
and opposition proceedings on an expanded basis, starting after the
changes come into force, which we expect to be in 2019.
What tools are available for Canadian brands looking to enforce
their trademarks against counterfeits?
Canadian brand owners can always look to sue for trademark
infringement or passing-off in Canada’s Federal Court or provincial
courts, and they can also try to engage the Request For Assistance
process, which was brought into force by way of the Combating
Counterfeit Products Act mentioned above.
This is a procedure whereby brand owners can file a list of registered
trademarks, geographical indications or copyrights with the Canada
Border Services Agency (CBSA), to provide that information to the
CBSA should they suspect incoming goods are counterfeit.
There have been many recommendations by interested groups
to the Canadian Federal Government on ways to improve
the Request For Assistance process, which we hope will be
addressed soon to improve Canada’s ability and reputation in the
anti-counterfeiting regime.
How might the renegotiation of the North American Free Trade Agreement
(NAFTA) affect Canadian IP from an enforcement perspective?
Both NAFTA and the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) set minimum standards, which
are often exceeded by either US or Canadian IP rights.
As part of the NAFTA negotiations, the US has apparently been
negotiating for a broader implementation of the enforcement
provisions of TRIPS, but Canada has been focusing on modernising
the language of NAFTA to reflect technological developments since
the mid 1990’s.
The enforcement of copyright in digital applications is one example
where the US has been seeking tighter protection. IPPro
38 IPPro The Internet www.ipprotheinternet.com 39

Supported Piracy
Now, why would CNN keep interrupting a news story as important
as this with annoying commercials? Also, while it is not surprising to
see a well-known company like Verizon, or even Safelite, advertise
on CNN, isn’t it odd to see a commercial for a quack-ish weightloss
cure? And what of the ghastly comments in the sidebar, from
neo-Nazi nutcases rejoicing over the attack? Why was CNN allowing
such comments on its YouTube channel? The answer to all of this,
of course, is that the live stream was not on CNN’s official YouTube
channel, but rather a pirate channel. Hundreds of such rogue pages
abound on YouTube, peddling news, sports, sitcoms and movies.
And how did we get to this dodgy website? Courtesy of a routine
Google search, once again:
Badvertising:
This infringement is brought to you by…
For copyright owners, ad-supported piracy is the new battleground. Bharat
Dube and Bharat Kapoor of Strategic IP Information explain
Sift through any newspaper, blog or academic journal, and the odds
are you will find much scepticism about copyright law. After all, the
public’s perception of copyright enforcement is often defined through
news stories like ‘Film Company Sends Warning Letter to Visually
Impaired 90-year Old Granny in Rural Bavaria’, or, ‘Music Label
Forces 19-year old Singer to Cough Up $ 100,000 for YouTube Cover
Song, Dropout of Harvard’.
Copyright owners have indeed, on occasion, been guilty of
overzealous conduct of this sort, owing to a combination of naïveté
and myopic legal advice. Yet, copyright owners have also pursued
thousands of legitimate targets—mercenaries who indulge in
industrial-scale media piracy, battering the revenues of law-abiding
businesses. Unfortunately, in today’s world of man-bites-dog news,
this rarely receives the attention it deserves.
Stung by bad publicity, copyright owners have increasingly used
uncontroversial, gentler strategies to counter piracy. Two of the most
common are awareness campaigns targeting school and university
students, and the promotion of affordable, accessible content
through websites like iTunes, Netflix and Hulu. While such strategies
have no doubt been effective, piracy still thrives in stubborn little
pockets of the internet. A central reason for this is the financial
ecosystem that supports piracy. Consider this example: last year,
on the day of the horrific white supremacist car attack in Virginia, a
concerned colleague of ours hastily typed ‘CNN live streaming’ on
Google (or some such search string).
Our colleague was directed to a live YouTube CNN feed, the first
or second search result. It was only after some minutes that our
colleague realised something was amiss. The feed was consistently
interrupted by commercials like the shown on the right.
Outside YouTube, the numbers probably run into thousands. As a
simple example see the screenshots below, taken both with and
without an adblocker:
It could be that brands and
advertisers see piracy as a much lesser
evil than hate speech—an eminently
justifiable position
Quite evidently, pirate websites are supported by advertising. And
these are not just spammy ads of the 1800-Gain-Back-Youth-and-
Look-Sexy-Miracle-Pill variety (which, sadly, we can report from
personal experience do not work). Rather, many of these ads are from
perfectly respectable businesses. In 2014, a report authored by Mike
Weatherley, who at the time was a British MP and intellectual property
advisor to then UK Prime Minister David Cameron, estimated that
600 pirate websites generated over $200 million through ad revenues
the previous year. The report found that nearly a third of the ads were
of household brands, usually placed by ad networks a step removed
from the actual company. In India, a report prepared last year by the
Veri-site division of our company, SIPI, which was commissioned by
the Federation of Indian Chambers of Commerce and Industry (FICCI)
tracked 1,143 pirate websites and found a whopping 73 percent to
be supported by ads.
Over half were ads of well-known global brands. The report also
found several instances of websites containing viruses and malware—
something most visitors to pirate websites can attest to.
Bharat Kapoor, COO, Strategic IP Information
40 IPPro The Internet www.ipprotheinternet.com 41

Supported Piracy
We live in a cynical age where the public and the
commentariat frequently dismiss, even demonise, the
interests of copyright owners
search results. Google has certainly recognised the problem of
“badvertising” (to borrow a term from the FICCI-SIPI report) in the
context of hate websites.
According to recent news reports, YouTube will impose stricter
criteria for the types of videos that can earn money from it, to prevent
racist and extremist YouTube channels from benefiting commercially.
This after a host of complaints to Google from reputed corporations,
peeved at their ads showing up on hate channels.
What complicates matters is that pirates frequently operate in
foreign jurisdictions.
For example, we are aware of a case where the producer of a Bollywood
blockbuster tracked down a file-sharing website to central Europe.
The pirates, of foreign origin, hadn’t the faintest clue about Indian
cinema, but got wind of the fact that the film was commercially
successful and could earn their website thousands of clicks (and,
therefore, significant ad revenues).
We also received information that, in 2015, the Indian government
had complained to the US government about 500-odd US websites
abetting Bollywood piracy.
The list included Google (see below, discussed in a paper by law
professor Arpan Banerjee, who shared with us the information):
We live in a cynical age where the public and the commentariat
frequently dismiss, even demonise, the interests of copyright owners.
For many, corporations like Disney and Fox are gluttonous merchants
of “free market fundamentalism”, to borrow an expression from
the noted copyright scholar William Patry (incidentally, also senior
copyright counsel at Google).
As the High Court of Ireland observed in EMI v Eircom: “Among
younger people, so much has the habit grown of downloading
copyright material from the internet that a claim of entitlement seems
to have arisen to have what is not theirs for free.”
Adding to this are legal complications. Identifying and suing pirates
overseas is extremely difficult, especially when many governments
are not proactive in enforcing foreign copyrights.
And while advertisers and brands are easily identifiable, it is hard
to argue that the unintentional placement of ads on pirate channels
amounts to infringement.
But why has badvertising on pirate websites and YouTube channels
not triggered the same response? It could be that brands and
advertisers see piracy as a much lesser evil than hate speech—an
eminently justifiable position.
Furthermore, considering the popularity of illegal downloading, some
brands may even feel happy, or at least indifferent, about having their
ads on pirate websites.
Consider the screenshots to the right, from the FICCI-SIPI report,
showing ads from Facebook and Shaadi (an Indian matchmaking
portal) on a pirate website. Both Facebook and Shaadi cater to a
young demographic, as does the pirate website. So why should
these ads be a problem for either Facebook or Shaadi?
One response could be that a sense of ethics should guide Facebook
and Shaadi’s advertising policies.
Another argument could be that such badvertising could harm
Facebook and Shaadi’s brand image if users end up downloading
viruses and malware.
Under these circumstances, dismantling advertising on pirate
websites, through a non-litigious arrangement, could be a neat
solution for embattled copyright owners.
One could also point out that pirate websites often contain ads for
pornographic websites, which Facebook and Shaadi may not like to
see their ads being placed next to.
Here, the City of London’s Police IP Crime Unit (PIPCU) has been a
success story of sorts. PIPCU maintains an Infringing Website List for
online advertisers to be aware of.
PIPCU can also block ads on infringing websites reported to it. Yet,
pirates can evade PIPCU actions by migrating to different domains,
free speech laws constrain action in many cases, and, most
importantly, PIPCU is confined to Britain.
Therefore, effective action against ad-supported piracy can perhaps
best arise from a privately ordered arrangement, involving discussions
between copyright owners and other stakeholders.
Not necessarily a bad thing. No end-user targeted. No messy lawsuits.
No police. No adverse publicity.
Here, copyright owners will have a fair amount of convincing to do.
Nevertheless, as the old fable reminds us, persuasion is better than
force—especially if the latter has to be exercised against inoffensive
grandmothers and teenagers. IPPro
Both Facebook and Shaadi cater
to a young demographic, as does the
pirate website. So why should these
ads be a problem for either Facebook
or Shaadi?
Weatherley has called on to Google to “take the lead” and
“maximise the prioritisation of sites with legitimate content” in
Bharat Dube, CEO, Strategic IP Information
42 IPPro The Internet www.ipprotheinternet.com 43

WIPO Cases
Record
Emmanuel Harrar of IPzen explains how brands should take responsive
and preventive action against cybersquatting after WIPO cases reached
record highs last year
In recent years, the number of disputes related to cybersquatting has
greatly increased. This fraudulent practice consists of registering a
domain name that is identical to or imitates a trademark, with the sole
purpose of taking undue advantage of it.
This phenomenon is symptomatic of the new challenges facing
companies in the internet era. Massive speculation has grown up
around domain names, the economic value of which can sometimes
be considerable.
Cybersquatting issues are now settled through UDRP proceedings,
which have also seen a recent increase.
When summing up the year 2016, the World Intellectual Property
Organization (WIPO), the principal arbitration and mediation centre
in charge of such proceedings, observed an exponential increase in
these cases.
They reached a record high in 2016 with 3,036 cases handled,
representing an increase of 10 percent over the previous year.
According to WIPO, the increase was caused by the creation of new
generic top level domain names (gTLD), of which 340 were created
in 2016. Cybersquatting proceedings related to these new gTLDs
represented almost 16 percent of WIPO cases and concerned 5,374
domain names in total. Domain names .xyz, .top and .club were
identified as the new gTLDs that generated the largest number of
filings. In parallel, country code top level domains (ccTLD) represented
some 14 percent of the cases filed with WIPO, with 74 percent of
national domain directors having appointed WIPO to perform the
service of settling disputes. Domain names ending in .com were
identified as those being subject to the highest number of filings with
a wide majority of 66 percent.
Francis Gurry, CEO of WIPO, responded to this increase in the
number of filings by calling for continued vigilance from trademark
owners and consumers alike, highlighting the fact that this is even
more important as a considerable number of these disputes involve
incidents of online counterfeiting.
Last year was no different with 3,074 cases. This only represents
a 1.3 percent increase compared to the previous year, however it
should be emphasised that this figure has in fact doubled since 2000,
the year the proceedings entered into force.
WIPO has shed light on the three most active sectors in domain
name disputes. The first position goes to the banking and finance
sector, which saw 12 percent of cases; the fashion sector is in
second position with 11 percent; and lastly, as would be expected,
the internet and information technologies sector, with nine percent. It
is not surprising that the cybersquatters prefer these sectors which
are highly sensitive domains, or business sectors that are susceptible
to infringement. In almost a third of the legal cases related to
banking and finance filed in 2017, the plaintiffs also mentioned the
practices of fraud, phishing or scams. In parallel, in more than a third
of the cases related to fashion in 2017, the plaintiffs alleged acts of
copyright infringement.
Concerning the geographic origin of the filings, the US takes the lead
with 920 cases, followed by France and the UK with 462 and 276
cases, respectively.
In addition, and not surprisingly, as in 2016, the extension that was
the most involved in last year’s proceedings was .com, with slightly
more than 70 percent of the contentious domain names. The new
extensions now represent 12 percent of domain names in UDRP cases.
If any proof were necessary, these statistics demonstrate the huge
success of the UDRP proceedings—faster and less expensive than
legal proceedings—which have been widely adopted by major firms
around the world.
In 2017, WIPO published its new Jurisprudential Overview 3.0, an
up-to-date summary of WIPO case law on UDRP principles, which
cites around 1,000 decisions and covers hundreds of questions of
substance and procedure. As the main global domain name resource,
the WIPO overview consolidates the changes that have occurred in
the case law since 2011.
The new WIPO summary also has sections dealing with the
principles of consolidation of the cases faced with the allegations
of counterfeiting and other illegal activities (such as identity theft) in
relation to contentious domain names and their website contents.
In June last year, WIPO also began to provide dispute settlement
services for .eu and .se domain names. From now on, the organisation
will provide services for 76 country domains of this type.
Exponentially important proceedings
UDRP continues to be an important tool for undertakings all over
the world for combating cybersquatting, but also the rise of other
types of malevolent behaviour, such as phishing, identity theft and
infringement.
The UDRP will be 19 years old in August, making it timely to say a few
words about its origins and evolution.
The policy was developed at the end of the 1990s in response to
the growth of the internet and to the generalised cybersquatting
that followed. At the instigation of the US, WIPO summoned a vast
international consultation to envisage solutions to the problem.
Among the final recommendations, UDRP selected an administrative
procedure that was “fast, effective, profitable” and “uniform for
resolving disputes”.
Following a formal process for drawing up policies, reports from the
personnel and public comments, UDRP was finally adopted as a
consensual policy by the Internet Corporation for Assigned Names
and Numbers (ICANN), and then implemented on 24 October 1999.
Since it was adopted, it has acquired and maintained a place as
an online tool that is essential and effective for advice on brand
protection all over the world. The success rates of the plaintiffs
continue to increase year after year, reaching 85 percent
This reminds us of the extent to which increased vigilance on the
internet is indispensable for the perpetuation of a business. The
domain name has become a veritable showcase for undertakings
who wish to be visible on the web in order to attract customers,
and so making sure none of the names registered by third parties
with fraudulent intentions infringes IP rights is an essential reflex for
safeguarding the company’s image. Businesses must therefore take
both responsive and preventive action.
IPzen: a solution
UDRP continues to be an
important tool for undertakings all over
the world for combating cybersquatting
By subscribing to one of IPzen’s range of services to defend your
rights, you will be able to contemplate your IP rights serenely, without
fear of potential misuse. As soon as IPzen detects misuse of your
rights by a user, the results will be forwarded to you automatically.
IPzen enforcement is the service specially designed for the transfer
or cancellation of a domain name that infringes your rights. IPzen will
do the necessary to withdraw any contents that could compromise
your commercial interests, and provide you with special support in
resolving disputes. Thanks to IPzen, you can also detect and notify
the legal services of the social networks of any misuse of user names.
You can therefore take advantage of 24/7 monitoring set up in
particular on Facebook, Twitter, MySpace, Instagram, YouTube,
Dailymotion, LinkedIn, Viadeo, and many other social networking
sites, to combat cybersquatting and username squatting. IPPro
Emmanuel Harrar, CEO and founder, IPzen
44 IPPro The Internet www.ipprotheinternet.com 45

Agricultural Technology
Sowing the seeds
Doris Spielthenner of Practice Insight discusses the recent developments
and innovations in the agricultural technology area
There have been a number of interesting announcements recently
about innovations in the agricultural technology area, such as
precision or automation farming. Developments include:
Walmart’s new patents on drones for farming automation,
indicating a new player possibly planning to enter this space
AgEagle Aerial Systems’, an automated farming drone innovator,
merger with EnerJex Resources, an exploration company
Soil sensor manufacturer, Teralytic, deploying LoRa technology
from Semtech in their wireless sensors to detect nitrogen,
phosphate and potassium levels in soil to reduce waste and
improve crop yields
However, this is just a small snippet of the recent developments in
this area, which contain business opportunities that law firms should
not miss out on. In the second half of this article, I’ll share with you,
how you may able to grow your footprint in this market.
The agtech sector in recent years has garnered a lot of attention,
not only from the food and agriculture industry, but also the general
public due to issues including food or a shortage thereof is an
important consideration for the future of humanity as we face the
growing effects of climate instability; shortage of farmers and people
taking up farming as a profession; and the growing population and its
impact on food and land requirements.
Agriculture can be a difficult industry to work in because of its
land and freshwater requirements, which directly compete with its
consumers—the general population. It’s a catch 22 situation, as the
population increases so does the demand for food. Yet at the same
time, the available land and freshwater for agriculture decreases.
The use of technology to try and overcome these issues is
revolutionising the way farming is planned and executed. Because of
this, the agricultural technology area continues to grow and so does
the patenting activity and the emergence of start-ups.
From this we see the emergence of innovative solutions such as:
Disclaimer: All this information is publicly available under registered sources for different jurisdictions. The screenshots and numbers in this article have been identified by using software, Filing Analytics,
developed and managed by Practice Insight, which collects these information points from diverse sources and makes the data readily available and easily searchable, whilst also providing further data analytics.
Robotics and drones: At the forefront of hardware innovation
in agtech are the drone manufacturers and service providers
that offer monitoring and automating capabilities to farmers. In
addition, robots or intelligent farm equipment that can perform
farming functions more efficiently is increasing. Examples of
start-up companies working in these areas include, Terravion,
Blue River Tech, Farmbot, and Mavrx.
Farming sensors: This area is at the heart of AgTech farming.
Collecting data on crop health, weather, soil quality and moisture
levels with the help of farming sensors will increase farming
efficiency. Centaur, Spensa, Phytech, and Sencrop are all
examples of companies working in the farming sensors area.
Farm management platforms: These platforms allow farmers
to efficiently manage their resources, crop and yield production
and livestock. Companies such as AEGRO, Farmlogs, Agriwebb,
and Farmdok are producing new technology developments in
this area.
Data management and analytics: Focusing on using machine
learning and big data analytics to manage and analyse data on
farm and livestock, that can assist farmers to make informed
decisions that can save energy, increase efficiency, optimise
herbicide and pesticide application, and manage risk. Companies
such as Strider, Cibo, Prospera, TL biolabs, Farmnote, Gamaya,
CropZilla, and Agralogics are providing data management and
analytics solutions.
Smart irrigation: Systems for monitoring and automating water
supply and usage for farms. Companies such as Flowius, cropX,
Aquaspy, and Tevatronic are some examples of startups in this
area.
Indoor farming: Indoor farming and hydroponics provide an
alternative solution to the agricultural land shortage problem.
InFarm are currently working in this area.
Autonomous farming equipment and vehicles plus navigation
technology is moving at a fast pace. In some cases, the development
is perceived to be even faster than in the standard automobile
industry, as these off-road farming vehicles don’t have to deal with
standard road challenges such as changing lanes, pedestrians, and
other drivers on the road.
The agricultural technology field is filled with many business
development opportunities for attorneys and law firms to obtain,
as innovative start-ups produce new patents. Keeping in mind that
there is the disadvantage of a low volume of work while they are in
their infancy. While corporates may offer higher volumes, trying to
establish a new business relationship with them can be a difficult and
time consuming process.
Further, many corporates will do their filing in-house or have
a preference for using an established group of law firms.
For example, Bayer CropScience AG is a fairly ‘captured’ client, as
they regularly use the same law firms to represent them in various
jurisdictions, but more importantly they self-file a large volume of
their work.
As the field of agricultural
technology area continues to grow,
law firms should weigh up the time and
expenditure they would need to invest to
break into the market of being a preferred
law firm for an existing corporate, against
obtaining work from agtech start-ups
What this means is that although the overall filing volume by Bayer
CropScience is large, only a small portion of it is available for external
law firms, and possibly none at all for any new law firms to try and obtain.
Another example of where a corporate already has many pre-existing
business relationships with law firms is Monsanto. While Monsanto
doesn’t have a large volume of self-filed applications, they appear
to have very strong existing business relationships with external law
firms, who get regular filings from them year by year. A snapshot
of the PCT case flow for Monsanto LLC (US) from Filing Analytics
displays this aspect clearly. Please note that law firm names have
been replaced with generic titles such as “law firm A”.
However, startups have only a few patent filings due to their infancy
and they usually work with one or at the most, a few law firms. Selffiling
is rare, as startups tend to focus more on building their business
rather than in-house legal capability. For example, the following agtech
start-ups work solely with one law firm: Terravion works with Perkins
Coie LLP; Strider Labs works with Kahler Käck Mollekopf, Infarm
GmbH has worked with Reiniger und Partner for their EP and DE
filings; and Centaur Inc is represented by Polsinelli Shugart in the US.
It is quite possible that these startups will increase their patent
filings and then widen their representation options in the future. It’s
also possible that if the start-up doesn’t already have a law firm
representation in your jurisdiction, then perhaps you can grab the
opportunity to be their representing law firm.
As the field of agtech area continues to grow, law firms should weigh
up the time and expenditure they would need to invest to break into
the market of being a preferred law firm for an existing corporate,
against obtaining work from agtech start-ups. Especially, as the
start-up business for your law firm could increase significantly in a
one- to five-year period.
The growth and pace of innovation in this field and the opportunities
to work with many startups certainly makes it a clear case on why
law firms already working in related areas (automotive, high tech and
electronics, automation and robotics) should not overlook the ripe
business development opportunities in agricultural technology. IPPro
Doris Spielthenner, general manager, Practice Insight
46 IPPro The Internet www.ipprotheinternet.com 47

Industry Events
The world’s premier IP directory
ECTA
Athens
IP Law Europe Summit
Montreux
June 2018
13-16
ecta.org
June 2018
21-22
events.marcusevans-events.com
IP Law Summit
Irving, TX
Global IP UK Exchange
London
June 2018
24-26
events.marcusevans-events.com
June 2018
26-18
globalipexchangeuk.iqpc.co.uk
www.ipproconnects.com
48 IPPro The Internet
www.ipproconnects.com
15

Industry Appointments
Movers and shakers at Fish & Richardson, Foley & Lardner and more
Fish & Richardson has added Elizabeth King to its Houston office
as of counsel.
King, who has 20 years experience in domestic and international
trademark law, joins the firm’s trademark and copyright group.
She is a skilled litigator with experience in handling trademark
infringement cases in federal courts, before the US Court of Appeals
for the Federal Circuit, and before the US Patent and Trademark
Office (USPTO).
King previously served as principal partner at Sutton McAughan
Deaver, as well as serving as examining attorney at the USPTO.
Cynthia Walden, group leader of Fish & Richardson’s trademark and
copyright practice, commented: “[Elizabeth King] is a top-notch
attorney with impressive expertise developing global trademark
protection strategies for large clients with complex issues. She will
be a valuable resource for our clients and a great addition to our deep
bench of seasoned trademark and copyright lawyers.”
Holland O’Neil, chair of Gardere Wynne Sewell, commented:
“Both Foley and Gardere have historically been recognised for a
commitment to client service and an ability to counsel clients through
their most multifaceted legal and business challenges.”
“By integrating our resources, we’ll have distinctive capabilities and
channels to provide our clients with strategic and innovative counsel,
ultimately continuing to enable our shared client-first culture.”
Jay Rothman, Finley & Lardner Chairman & CEO, added: “In short,
Foley and Gardere are better together.”
Barnes & Thornburg has added Mark Nelson as partner to its
intellectual property department in Dallas.
Nelson has more than 20 years experience in handling large
multifaceted patent litigation cases. His practice covers a wide range
of areas including telecommunications, gaming, semiconductors
and more.
Foley & Lardner has merged with Gardere Wynne Sewell.
The newly combined firm will have 1,100 lawyers in 24 offices across
the US, Mexico, Asia and Europe.
As part of the merger, Foley will expand geographically in intellectual
property to Texas, while deepening the practice to benefit the rugged
business climate of the state.
Nelson commented: “The firm places incredible emphasis on putting
clients first by providing first-class legal work at a fair and reasonable
price. I’m excited to be part of the growth of the Dallas office.”
Mark Bayer, managing partner of Barnes & Thornburg Dallas office,
added: “Having someone with his reputation will help us grow the IP
department in Dallas and will attract other practitioners that sync with
our core practices, client base and firm culture.” IPPro
50 IPPro The Internet