Global IP Matrix - Issue 7

www.gipmatrix.com
1

Dear readers,
We sincerely hope that you are all in good
health and keeping in good spirits during these
undeniably uncertain times. We have all had
to adapt to working out of our comfort zones,
which I am sure has been very challenging at
times for you all as it has been for us.
However, we continue our quest to look to the
future and deliver exclusive content to you,
direct from thought leaders working at ground
level in the IP industry from all over the world.
Issue 7 of The Global IP Matrix magazine is
packed with informative and exciting articles
to keep you up to date and educated in what
has been developing in the global IP industry
during the past few months and into the future.
We hope you enjoy reading our publication.
We want to thank all our contributors for
sharing their knowledge, opinions, and
expertise in this new edition of the Global IP
Matrix magazine.
From all of us at
The Global IP Matrix &
Northon’s Media, PR & Marketing
CONTENTS
Patents
Pages 5/6
Lexorbis
Indigenously manufactured patented drugs
exempted from Drug Price Control!
Page 7
Julius & Creasy
Confidential Information – Sri Lankan Perspective.
Page 8/9
Gorodissky & Partners
Pharmaceutical Extorsion.
Page 9/10
PatentSeekers
Patent Searching 101: How to Efficiently Conduct A
Search.
Trademarks
Page 13/15
Stillwaters Law Firm
TASTE & SMELL AS TRADEMARKS IN NIGERIA:
a panacea to restraint of trade.
US/China trade agreement
Page 16/17
Unitalen Attorneys at Law
Interpretation of Contents on Intellectual Property
of the First Phase of Economic and Trade Agreement
between China and the United States
Cannabis IP rights
Page 19/20
Eproint
Medical Cannabis: a glam makeover for a new
generation.
Page 28
A PatWorld Presentation
Alec Griffiths, Manager, Biotech Team at Patent
Seekers.
IP Knowledge past and future
Page 21/23
ECTA
Sailing Beyond Paris and Berne.
Page 24/25
Anku. Anku At-Law
Traditional Knowledge and related IP Issues in the
era of the Covid-19 pandemic.
Covid 19 times
Page 27/29
Innventiva – Espacio Legal
Intellectual Property amid times of COVID-19: a
strategic view
Carlos Northon
CEO & Founder Northon’s Media PR & Marketing LTD
Publisher of The Global IP Matrix & Women’s IP World
carlos@northonsprmarketing.com
Elvin Hassan
Editor for The Global IP Matrix & Women’s IP World
Head of International liaisons for Women’s IP World
elvin@womensipworld.com
Craig Barber
Head of Design for The Global IP Matrix &
Women’s IP World
info@northonsprmarketing.com
Sonia Randev
Senior account manager
sonia@northonsprmarketing.com
Disclaimer: all images in the articles are provided by authors and
Upsplash.com, Pixbay.com and cleanpng.com
THE GLOBAL
IP MATRIX
EDITORIAL
BOARD
Gabriela Bodden
Partner at Eproint
www.eproint.com
Costa Rica
Marek Bury
Managing Partner and Patent
Attorney at Bury & Bury
www.bnb-ip.eu
Poland
Mr. Afamefuna Francis Nwokedi
Principal Counsel of
Stillwaters Law Firm
www.stillwaterslaw.com
Nigeria
Ms. Brenda Matanga
Managing Attorney & head of practice
at B Matanga IP Attorneys for Africa
www.bmatanga.com
Laura Castillo
Partner at
Innventiva Espacio Legal
www.innventivalegal.com
2 www.gipmatrix.com
Zimbabwe
Latvia
3
Dominican Republic
Ms. Ruta Olman
Immediate past president of ECTA
& Associate partner of METIDA
www.metida.lt

Indigenously manufactured
patented drugs exempted
from Drug Price Control!
EDRADEMARK
AEERE
International Intellectual Property Attorneys
Trademark, Patent, Design, Copyright, Domain name
registration, litigation & enforcement services
125mm (H) x 180mm (W)
Pakistan Office:
(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
Email: UnitedTrademark@UnitedTm.com
Websites: www.utmps.com and www.unitedip.com
The Ministry of Chemicals
and Fertilizers (Department of
Pharmaceuticals) has notified an
order amending paragraph 32 of
Drugs Prices Control Order 2013,
effective from January 3, 2019:
a manufacturer is producing
a new drug patented under
the Indian Patent Act 1970
(39 of 1970) for a period
of five years from the date
of commencement of its
commercial marketing by the
manufacturer in the country.
As per the amendment, new drugs patented
in India are exempted from price control
for a period of five years from the date of
commencement of their commercial marketing.
This amendment was intended to boost the
patenting of innovations in India. Most likely,
it would encourage foreign pharmaceutical
companies to manufacture and commercialise
their new patented drugs and medical devices in
India.
Under the Essential Commodities Act, 1955,
the Government has passed many Drug Price
Control Orders (DPCO) from time to time to
regulate the price of essential and lifesaving drugs
to make notified medicines available at a rate
fixed by the Government. In order to encourage
the Indian Innovators to innovate new drugs,
paragraph 32 of DPCO 2013, has exempted
new patented drugs or nep delivery system of
indigenous origin from the price control.
After the para 32 amendments in 2019, drugs
patented by foreigners in India were also
exempted from the price control. This exemption
is available to a manufacturer producing a new
drug patented under the Indian Patent Act 1970
(39 of 1970) for a period of five years from the date
of commencement of its commercial marketing
by the manufacturer in the country. Earlier, this
exception of price control was available only for
the new patented drugs or new drugs involving
a new delivery system indigenously developed
Written by Manisha Singh and Co-Authored by Swati Gupta
LexOrbis - www.lexorbis.com
in India, not for the patented drugs developed
outside of India. However, after the DPCO 2019
amendment, the patented drugs developed
outside of India would also be exempted from
the drug price control. However, the patentee is
required to manufacture it in India to avail of this
benefit.
The aim of the DPCO, 2013, issued under section
3 of the Essential Commodities Act, 1955, is to
ensure that essential drugs are available to all at
affordable prices. However, the 2019 amendment
would have a detrimental effect on the
affordability of drugs under para 32 exception,
as the pharmaceutical companies could now
keep the prices high for the patented drugs
developed outside India. The Delhi High Court
has notified a petition by All India Drug Action
Network (AIDAN) challenging the amendment
of DPCO. The petition highlights the challenges
associated with price control of the patented
drugs according to the recent amendment:
- The new exemption has questioned
the clarity w.r.t. date of commencement
of its commercial marketing by the
manufacturer in the country. It is difficult
to ascertain whether the commencement
of commercial marketing defines the date
of manufacture of drugs in India or the
date of import of the drug in India or the
date of making the drug available to the
retailers.
- The amendment has increased the
list of drugs exempted from the price
control since the drugs which are not of
indigenous origin are also exempted from
the price control.
- Also, the amendment has removed the
term ‘product patent’ from para. 32(i)
of DPCO 2013 thereby extending the
exemption of price control to include any
kind of patent including devices, dosages,
forms, compositions, and process patents
as long as it relates to a new drug.
- The petition has also questioned the link
between Drug Price Control order and
The Patent’s Act 1970.
Conclusion:
The 2019 amendment of the Drug Price Control
Order is a welcome step enabling foreign
pharmaceutical companies to manufacture
and commercialise their innovative drugs in
India without any price control at par with
indigenously developed drugs. Further, it would
facilitate the introduction of new drugs in India,
which were only available for foreign patients,
or its availability to Indian patients was very
expensive. On the one hand, this amendment
would encourage building up manufacturing
capacity in India and, on the other, attract FDI in
the drug sector. Some activists feel that the 2019
amendment would have a detrimental effect on
the affordability of drugs as it gives a free hand
to fix the price of the new drug. However, after
three years of the grant, the Controller can grant
the authorisation of a patented drug to the third
party in the form of a Compulsory Licence if the
patented drug is not available at an affordable
price. The 2019 amendment would boost the
manufacturing of pharmaceuticals in India by
giving price control exception to the patented
drugs for a period of just five years.
4 www.gipmatrix.com www.gipmatrix.com
5

Confidential
Information –
Sri Lankan Perspective
The law protecting confidential
information (or trade secrets)
is varied worldwide.
Confidential information may
refer to any information of
value or commercial sensitivity
that is not already available to
the public.
Undisclosed information may include any
information of commercial value from
information about a company’s financial
affairs, business operations, or customer
engagements to trade secrets that are the
modus operandi or signature of a company.
For instance, the formula for Coca-Cola syrup,
which bottlers combine with carbonated
water to create the company’s flagship cola
soft drink, is a closely guarded trade secret
since 1891. The secret recipe has a commercial
value that identifies the owner over any other
product in the market. Such a secret recipe
gives its rightful owner an edge over other
competitors, and protection of the same is key
to the business. Similarly, a source code for a
computer programme, a new chemical formula
or a scientific technique, unpublished research
information, business plans of an employer,
even a list of valued customers may all form
part of confidential information. Intellectual
Property rights are thus secured through the
concept of confidential information.
Protection of trade secrets
Protection of trade secrets or undisclosed
information is an intricate subject in itself:
The rights are not registrable as in the case
of trademarks, Patents, Industrial Designs,
nor would there be a particular time period
undisclosed information ought to be
protected. Yet the protection of the same is
essential as such information may be key
to a particular business entity. To promote
the protection of undisclosed information,
most companies enter into Non-Disclosure
Agreements with their employees and business
partners, adopt appropriate physical and
digital security measures in data storage,
and only share information with the staff
that needs access to such information. There
is an implicit understanding that business
advisors or outsource agents would protect the
confidentiality of the information disclosed
in business ventures, even where no explicit
agreements are entered.
Written by Anomi I Wanigasekera,
Partner & Head of the Intellectual Property Division, Julius & Creasy
www.juliusandcreasy.com
Sri Lanka & the law
relating to Undisclosed
Information
The law relating to Undisclosed Information
is embodied in the Intellectual Property Act
(Act) of Sri Lanka. 1
Penalties are
set for misuse
of undisclosed
undisclosed
Information shall be considered as
“undisclosed information”:
It is not as a body or in the precise configuration
and assembly of its components, generally
known among, or readily accessible to, persons
within the circles that normally deal with the
kind of information in question;
“if it has actual or potential commercial value
because it is secret, and if it has been subject to
reasonable steps under the circumstances by the
rightful holder to keep it secret.” 2
The Act further stipulates that undisclosed
information shall include “technical
information related to the manufacture of
goods or the provision of services; or business
information which includes the internal
information which an enterprise has developed
so as to be used within the enterprise.” 3
The law of Sri Lanka bars the misuse of
undisclosed information: “Any act or practice…
that results in the disclosure, acquisition, or use
by others, of undisclosed information without
the consent of the person lawfully in control of
that information … and in a manner contrary
to honest commercial practices shall constitute
an act of unfair competition.” 4
“Disclosure, acquisition or use of undisclosed
information by others without the consent of
the rightful holder may result from industrial
or commercial espionage; breach of contract;
breach of confidence; inducement to commit
any of the acts (above); and acquisition of
undisclosed information by a third party who
knew or was grossly negligent in failing to know,
that an act referred to (above) was involved in
the acquisition.” 5
1 No.36 of 2003
Even in case of patent registration, utmost
2 S.160 (6) (c )
care is taken to protect the confidentiality of
3 S.160 (6) (e )
information: The Act stipulates that before
4 S.160 (6) (a )
granting of the patent, the files may only be
5 S.160 (6) (b )
examined with the written permission of the
6 S.82 (2)
applicant. 6 7 S.160 (8) (a )
www.gipmatrix.com
information: “Any
person, who willfully
and without lawful
authority, discloses any
information
shall be guilty of an offence
under this Act and shall on
conviction after a trial before a
Magistrate be liable to a fine not
exceeding five hundred thousand
rupees or to imprisonment for a term
not exceeding six months or to both such fine
and imprisonment.” 7
In the case of HC (Civil) 31/2017/IP Justice
Ruwan Fernando in his Order, granting the
Interim Injunction in favour of the Plaintiff
company has comprehensively analysed what
constitutes Confidential Information.
“…..the Defendants could not argue that the
information gained by them in the course of
their employment fall into information which
was easily accessible to the public or they were
part of the knowledge, skill, and experience that
was gained by them during their employment
and therefore, they are at the liberty to use them
or disclose them after the employment without
breaching their duty of fidelity to their former
employer or non-discloser agreement.”
The Sri Lankan stance on
confidential information seems to be
inclusive, counting in confidential
information as intellectual property.
In conclusion, creative thoughts
that may turn readily available
public information to right-worthy
confidential information are given
recognition in the Sri Lankan legal
setting.
7

Pharmaceutical
Extortion
Written by Vladimir Biriulin, Partner at Gorodissky & Partners
www.gorodissky.com
The topic of compulsory
licensing occasionally surfaces
on the Russian horizon.
The law (Article 1508 of the Civil Code)
provides that a trademark protected in
Russia based on its state registration or in
accordance with an international agreement
or used as a trademark, or a designation used
as a trademark but not registered as such in
Russia may be recognised as a well-known
trademark. However, it can only be recognised
from the date indicated in the application if
that trademark or that designation became
widely known among relevant consumers in
Russia as a result of its intensive use.
It is Not the Date of the
of the Application
All this, even though there are several
longstanding provisions in the Civil Code:
one allows the use of a patent without the
owner’s permission in the interest of defense
and security (Article 1360) (Russia has not
and hopefully will not come to that situation).
Additionally, Article 1362(1),
allows filing a claim to court
for a compulsory license if
the invention is not used
within four years. Again,
this provision is not used
frequently by interested
persons, if at all. There is yet
another (Article 1362(2)):
if the patent owner
cannot use his invention
without infringing the rights
for another patent, he may ask
the owner of that other patent for a license
and in case of refusal sue him in court. This
provision echoes Article 1358.1 that explains
what a dependent patent is: an invention the
use of which is not possible without the use
of another, earlier invention, is a dependent
invention. It is also provided in Article 1362(2)
that a compulsory license can be granted by
the court if the dependent invention is an
important technical achievement and has
significant economic advantages over the first
invention. In fact, the fight for a compulsory
license always hinges upon these two essential
points: the importance of achievement and
economic advantage.
The provision in Article 1362(2) became
attractive for some Russian pharmaceutical
companies that initiated several court actions
during the last years. A patent is dependent
if a researcher makes his research based on
an invention made by another company. That
earlier invention has proved its effectiveness
in treating a disease and costs dearly for
understandable reasons. So, the new researcher
takes the patented substance, builds some
superstructure upon it, like particulars of
use, the inclusion of the patented substance
in his composition, etc. In all fairness, some
dependent inventions indeed prove to be
useful and raise the first invention to a new
height. In some other cases, researchers make
insignificant improvements. Their effort serves
the only purpose in that it should be sufficient
to pull through substantive examination and
satisfy patentability criteria. The next step (if
the owner of the dependent patent is sued) is to
prove the technical importance and economic
advantage of his dependent invention. For that
purpose, technical expertise, in most cases, is
ordered by the court.
Patent owners of the first patents were able
to rebuff their attempts to piggyback on their
findings in several cases. However, sometimes
they failed.
Nativa, a notorious Russian researcher in
other people’s patents, regularly scans through
the inventory of efficient drugs and builds its
business on “inventing” known substances. In
a recent case, it lost to Bristol-Myers Squibb
selling the drug Dasatinib.
Approximately at the same time, it launched
another medicine on the market – Sunitinib-
Native protected by its dependent patent No
2567535. Nativa obtained that patent in the
wake of the Eurasian patent No 005996 owned
by Sugen and Pharmacia & Upjohn companies.
Conflict between
Patents
Nativa was sued by Sugen and Pharmacia at
the Moscow Commercial Court for infringing
their patent (case No A40-166505/17-15-
1481). Nativa filed a counter-claim asking for
a compulsory license from the plaintiffs. The
litigation lasted for more than a year. It went
through four court instances and ended up
with a judgment in Nativa’s victory at the IP
court (the plaintiffs were obliged to grant a
non-exclusive license to Nativa). The judgment
was appealed at the Supreme Court, but its
Economic Collegium refused to consider the
appeal because it did not find any procedural
mistakes of the lower courts. One may
question the reasons for the plaintiffs’ defeat
and deliberate whether the judgment was
handed down correctly; however, it is worth
putting a finger on the problem and examining
the hints (advice given by the court).
The plaintiffs argued that Nativa’s drug
contains the substance according to their
Eurasian patent. Nativa claimed that it used
its own invention and agreed that it was
dependent in relation to the plaintiff ’s patent; it
had asked the plaintiffs for a license; however,
it was refused. As expected, Nativa claimed
that its invention has “undoubtedly important
technical achievement and has significant
economic advantages,” which was confirmed
by the Russian patent office that would not
have granted a patent in the absence of these
characteristics.
Nativa explained that the economic advantage
consists of lower production expenses. Both
the plaintiffs and the defendant asked the
court to order technical expertise to clear
up the issues requiring special knowledge
in chemistry, pharmacology, medicine, and
patents. Among other questions, there was a
question of whether Nativa’s invention is an
important technical achievement and whether
it has significant economic advantages over
the first patent. The experts confirmed both
the importance of the technical achievement
(no explanation of importance is contained
in the judgment) and the economic advantage
(understandable) of the dependent patent. The
experts, however, diverted in their opinions.
One of the experts made the opposite
conclusion. Nevertheless, the court accepted
the findings of those experts who confirmed
the importance and economic advantage of the
dependent invention and obliged the plaintiffs
to grant a compulsory license.
The Appeal
The plaintiffs appealed the judgment at the
court of appeal. They asked the court to order
another technical expertise, but the court
refused the request. Otherwise, the court
confirmed the conclusions contained in the
first judgment and upheld the judgment of the
1st instance court.
The Cassation Appeal
The plaintiffs appealed the judgment at the IP
Court. In their appeal, the plaintiffs argued
that there was no agreement among the experts
with regard to the “importance of the technical
achievement” of the dependent invention.
At the same time, the plaintiffs opined that
if there is a technically important dependent
invention, it might have various advantages
over the first invention from the point of
view of pharmacology (better efficiency,
safety, fewer side effects, etc.) however those
therapeutical advantages of the dependent
invention should be confirmed by full-fledged
clinical trials which were not carried out.
They also argued that Nativa provided no
convincing evidence with regard to significant
economic advantages.
The IP Court meticulously examined the
arguments of both sides and statements of
both court instances. At the same time, the
court pointed out what the plaintiffs could
but not had done. The plaintiffs stated that
the circumstances in connection with the use
of the invention in the medicinal preparation
might be established only by examination
of the samples of the medicinal preparation.
The court explained that this assertion is not
grounded because the required information
may be contained in the documents
characterising the medicinal preparation,
where the stages of the technological process
are described. The plaintiffs argued that those
documents could not be used because Nativa
submitted them; however, the plaintiffs did
not claim that those documents could be
unauthentic or falsified.
The IP Court reminded that the lower courts
had noted the circumstances showing the
technical advantages of the dependent
invention. The courts concluded, among
other things, that the difference in the speed
of appearance of the active substance in the
blood of rabbits and that the sunitinib may
demonstrate polymorphism confirm the
importance of the technical achievement of the
dependent invention.
The plaintiffs, while stating that no full-scale
clinical trials were conducted to confirm
therapeutical advantages of the dependent
invention did not nevertheless provide
evidence refuting the results of the experiments
and polymorphism of sunitinib. Therefore, the
IP Court did not find it possible to re-evaluate
the conclusions of the lower courts with regard
to the importance of the technical achievement
of the dependent invention.
Nor did the IP Court find sufficient grounds
to recognise as ungrounded the conclusions of
the lower courts with regard to the economic
advantages of the dependent invention. There
are no clear cut definitions of “significant
economic advantages” of one invention over
another. The court of the 1st instance accepted
the findings of two experts and accepted their
calculations. The experts found that Nativa’s
selling price of the drug was 20% less than
that of the plaintiffs. The plaintiffs criticised
those calculations referring to their own large
expenses; however, they did not provide any
reasonable calculations saying just they had
spent about one billion USD in investments
and development of the drug.
The plaintiffs submitted reports of two experts
to the cassation instance in which the experts
explained the meaning of “important technical
achievement” and “significant economic
advantage”. However, the cassation instance
refused to accept them because, according to
the procedural rules, those reports could have
been submitted to the courts of 1st and 2nd
instances only. Indeed, the cassation instance
of the court does not have the competence
to establish circumstances and accept and
evaluate new evidence. The court noted that
every party should prove the circumstances on
which it relies and should run the risk of the
onset of consequences of observing or nonobserving
procedural rules.
The plaintiffs questioned the competence of the
experts who examined “significant economic
advantages”. Here again, the cassation court
responded that this issue should have been
raised at the hearings of 1st and 2nd court
instances.
The compulsory license included the
condition that the license’s cost should be
10% of the revenue. The plaintiffs argued
that this condition does not correspond to
generally accepted rules under comparable
circumstances. However, the plaintiffs did
not provide any evidence supporting those
statements, nor did they submit any relevant
calculations.
The plaintiffs stated that the lower courts
should have ordered additional expertise. The
cassation court responded that no such motion
had been filed by the plaintiffs to the 1st or 2nd
instance of court.
The cassation court did not accept
other pieces of evidence
presented by the plaintiffs
because, like in the
preceding cases, that
evidence should have
been presented at the
hearing at the courts
of 1st and 2nd
instances.
The plaintiffs appealed the judgment of the
IP Court with the Supreme Court though
unsuccessfully.
The Cassation Appeal
Attempts to obtain compulsory licenses
have been, and most probably will be made.
Several governmental authorities and local
pharma companies raise their voice in favor
of compulsory licenses. These discussions
somehow may influence the general public
creating an opinion that compulsory licensing
(and cheaper drugs) in the pharma sector is
good (the fact that reproduced drugs may have
inferior quality is not put to the fore). It is true
that in some cases, the courts ruled against
compulsory licenses though the opposite, as
shown in the above case, may also be true.
In such circumstances, when
they come to the Russian
market, the owners of the
original patents should be
prepared in advance for
the fight with potential
compulsory licensees and
take into account the lessons
of this case. In fact, the IP
Court laid bare the points
where the plaintiffs could but
did not do what was needed.
Lessons should be learned.
8 www.gipmatrix.com www.gipmatrix.com
9

Patent Searching 101:
How to Efficiently Conduct A Search
Geraint James is an IP Manager
at Patent Seekers Limited and has
developed an expertise in patent
search and analysis across multiple
disciplines. He is a key member of the
company’s patent search teams. He is
involved in thousands of searches for
international patent attorneys both
in private practice, in-house, and for
major blue-chip companies. Geraint
has also helped develop PatWorld, a
global patent search database, which
has been designed to include all the
tools required for a professional
patent search, with an intuitive user
interface and tools for use by searchers
of any level of expertise.
Introduction
Patent searching can be a valuable tool
to ensure a productive and efficient route
through the lifecycle of a product. At Patent
Seekers, we conduct a variety of professional
patent and non-patent searches, ranging
from pre-filing (patentability), through to
State of Art, Invalidity (patent busting),
and Freedom to Operate (FTO). Some
IP professionals are often put-off from
conducting their own patent searching
as they believe they lack the expertise to
conduct an efficient search, or simply do not
have the time to perform a search.
Written by Geraint James, IP Manager at Patent Seekers Limited
www.patentseekers.com
With over 100 years of combined searching
experience, we have fine-tuned our searching
practices to be as productive as possible. This
article will share with you the tips, tricks, and
tools that we use to run efficient patent searches
using the PatWorld patent search database,
along with the type of searches that you can run
that produce the most valuable results in the
shortest time possible.
How to begin a search
There is no one-size-fits-all approach when it
comes to patent searching, and each search type
will require a slightly different search strategy.
Broadly, these can be broken down into three
categories:
I. Prior art (for Patentability, pre-filling,
etc.) –worldwide territories, with no date
limitations.
II. Invalidity – apply a suitable date
limitation (e.g., search for documents
with a priority date before the priority or
application date of the patent in suit)
III. FTO – limit to the territories of interest
and consider using a date limit for patents in
force (i.e., filed in the last 20 years).
Setting appropriate limitations for your
search will reduce the number of results
to review and improve efficiency.
Once you have set an appropriate
limitation, the next step is to generate
a list of keywords that can be used to
describe the invention. Spending a few
minutes exploring possible synonyms and
variations in spellings (e.g., aluminium and
aluminum) will improve efficiency when
searching as you can refer to this list to generate
your search strings. When gathering keywords,
it may help to write a concise search scope to help
focus on the key aspects of the invention.
Staying Organised
Keeping an organised record of your search and
results will significantly improve the efficiency
of your searching. Patent searching is often an
iterative process, where your search strategy
will evolve as you search and analyse results,
therefore knowing what results you have already
reviewed will help prevent reviewing the same
result twice. PatWorld includes several tools to
organise your searching, integral to the projectbased
interface, which saves search histories and
folders into separate work files. Search histories
will keep a log of your search and can be used to
remove the results from one search from another.
Additionally, keeping an organised record of
your search and results will allow you to revisit
a search.
How to get the most
out of the search tools
1. Semantic searching
The semantic (smart) search tool is a fantastic
way of producing patent results with little to
no time and effort. When running a semantic
search, consider how well the text describes the
invention to be searched as semantic algorithms
will extract what it deems are key concepts
from the text and searches these within patents.
Semantic searches can be performed on search
scopes, draft claims, invention disclosures, or
text from other relevant patent documents such
as abstracts or claims. We would recommend
running a semantic search as the first step in a
patent search, as this can often generate results
with minimal time spent and form the basis for
additional searching.
3. Classification Searching
Classification searching effectively negates the need to search for synonyms of keywords. For this
reason, when searching within a classification using keywords, it is important not to search for any
keywords used in the class descriptor (e.g., avoid searching for “waking stick” in a classification for
such). Additionally, classifications can often be combined to search for overlapping subject matters; for
example, searching for a classification containing walking sticks AND a classification for pedometers
will return results that are walking sticks with pedometer functions. Use the classification tool to
search for relevant classifications or look at the classifications listed on similar patents.
4. Assignee/Inventor Searching
Name searching can be used to find patents that are likely associated with a company or a product
on sale. If searching for the main proprietor name (or main inventors) does not produce the results
needed, consider investigating possible parent companies or subsidiaries as IP can often be held in
these names. If your search is associated with a product and said product has a registered trademark,
check the trademark holder’s name as this could give the names of the patent holders.
5. Analysis tools
Analysis tools such as charts, graphs, and maps can be used to gain valuable insight into competitors and
patent landscapes. Using the analysis tools in PatWorld, we can analyse a plurality of metrics, including
filing trends of competitors, global distribution of a technology and analyse agents/representatives
who work with competitors, or who are active in an area. To analyse a competitor, simply search the
company name in the Assignee field and click “create charts” on the results generated. Alternatively, to
gain a snapshot analysis of a technology, create a broad dataset (using keywords and/or classifications)
that would feature a good representation of the technology to be searched.
1. Checks on relevant results
Once you have found relevant results, one of the quickest and most efficient ways of uncovering other
relevant results is to check the citations of the relevant patents. This requires very little time and effort
and can be an iterative process where you may check the citations of new results found in this way.
Additionally, checking for other patents owned by the assignee and/or inventor can often return other
similar results.
Analysing Results
When viewing and analysing results, PatWorld features several tools that you can use to identify
relevant results quickly. When viewing and analysing results, we recommend using the highlighting
tool to highlight key terms and increase the review speed. When selecting keywords to highlight,
consider focussing on the main terms that will distinguish results (i.e., key inventive features).
Additionally, the keywords-in-context tool will only show you where specific keywords appear in the
context of the patent result.
PatWorld also features a star rating system, which
can be used to rate a result from one to five, and a
note feature that adds a note to the result.
Reporting Results
The Report Generator tool in PatWorld can
generate a professional standard report in a few
seconds. After rating and annotating the results
you want to include in the report, click in the
“generate report” tool and select the content of
your report. Using these tools will negate the
need for manually copy-and-pasting information
from a web browser into a word processor that
can be laborious.
Conclusion
Using these tools and techniques
can significantly improve
the efficiency of your patent
searching. Investing a small
amount of time before searching
to gather keywords and ascertain
limitations for your search will
improve the speed and accuracy
of your search. Keeping your
searching focussed on the key
aspects and using tools such as
semantic searching and citation
checks where available will help
you prioritise your search time
better. Advancing your search
by including classifications can
provide greater coverage and
identify results that would not
be picked up from keyword
searching only.
Analysis tools can provide
valuable data on competitors and
patent trends. These charts and
graphs can provide an excellent
supplement to a search report.
2. Keyword (Text) Searching
When conducting a quick, investigatory search,
limit your search terms to the key synonyms,
and focus on the main ways of describing your
invention. Use proximity operators to search for
Finally, use the report tool to
keywords in proximity to each other. PatWorld
generate a professional standard
proximity operators are n#, where # represents the
distance between two keywords—for example,
report document as efficiently as
searching (“walking stick” n5 pedometer), which
possible.
would search for “walking stick” within five
words of “pedometer”. After reviewing these
results, you may uncover additional synonyms or
ways of describing the invention that you could
use to expand your searching.
10 www.gipmatrix.com www.gipmatrix.com
11

TASTE & SMELL AS
TRADEMARKS IN NIGERIA:
panacea to the restraint of trade
Written by Ifeanyi Emmanuel Okonkwo,
Associate at Stillwaters Law Firm
www.stillwaterslaw.com
J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
The Need
Trademark in Nigeria means a
mark used or proposed to be used
in relation to goods. A mark as
defined by the TradeMarks Act
(TMA) 1967 indicates ‘a device,
brand, heading, label, ticket,
name, signature, word, letter,
numeral, or any combination
thereof’. 1
One of the oldest and leading IP companies in Bulgaria
Professional, cost effective services and quality advices
Areas of practice:
*IP Protection
*IP Enforcement
*Anti-counterfeiting
*Litigations
*Domain name registrations
*IP watches
PO Box 1152, BG-1000 Sofia, Bulgaria
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
e-mail: jvp@jvpatents.com
www.jvpatents.com
But we know the sad realities of such
clauses – unless such a clause is in line with
public policy and is found to be reasonably
necessary, it is usually construed void when
tested in court. When the blue-pencil rule is
applied in interpreting such a restraint clause,
what is often left may not be enough to
protect the proprietors’ trade secrets. Besides,
the law protects the rights of every free citizen
to participate in trade. Truly, the restraint
of trade clause is not the best of methods.
The Trademarks Act essentially is there not
to restrain trade/traders, but to protect and
promote trade. It is an Act that protects the
right to use one’s invented trademark to the
exclusion of others. The owner of such a mark
could, of course, assign or licence another to
use the mark. The point is that the consumers
are not deceived into mistaking the origin
of the goods of the proprietor. That way, the
proprietor’s customers are protected, and
so are the proprietors’ goods, goodwill, and
accruable profits. Suppose then, the Nigerian
TMA defined a mark to include smell
and taste. The implication is that when an
employee leaves the employer’s company, that
employee cannot produce the same product
of the employer or a confusingly similar or
identical product. This is because the TMA
protects against the use of confusingly similar
marks. 2 Any such mark must be distinctive of
a registered mark.
The Problem
Now, apart from the fact that the Nigerian
Act did not define a mark to include taste and
smell, there is another problem. The problem
here is that a mark sought to be registered
has to be presented or placed in a graphical
manner. Such is the necessary interpretation
of regulation 23, 24, 25, and 30 of the
Trademarks Regulation (TMR). The problem
is not unknown to developed countries.
According to Cornish, Llewelyn, and Aplin: 3
‘Smell marks face even greater difficulties.
When the smell is the main object of the
product (as with scent or an air freshener), it
should not be capable of being a trademark
at all. Even when it is secondary additive
(detergent, shampoo, notepaper) it is
registrable only on very strong evidence of
recognition as a trademark, assuming that
in some way the applicant has complied with
the ‘graphical representation’ requirements
set out in Sieckmann (2003) RPC 38 EC J.’
While it is easy to represent such marks as
names, letters, numerals, even colour in
the space provided in Form 5, Some have
argued that it may be practically impossible
to represent a smell or taste in the space
provided and present the same online during
e-registration. Submitting in person, however,
may be much easier than through online
submission. This is because the product could
be glued to the space and covered. The same
can be said when the product is tasted. Now
the application makes it clear that what is
sought to be registered is not the product but
the smell or taste. Truly, sounds, smells, taste,
and touch have been successfully recorded
and registered in the foreign practice of
trademarks. Accordingly, Lea and Cornford 4
assures us:
‘Smell marks are recorded both as having
been registered, such as ‘the smell of freshcut
grass’ for tennis balls, and as having
been refused registration, such as the ‘smell,
aroma, or essence of cinnamon’ in relation to
furniture…However, the ECJ in Sieckmann,
while confirming that smells may act as
distinctive signs, appears to have rejected all
current practical methods of representing
them graphically.’
12 www.gipmatrix.com www.gipmatrix.com
13

It is to be noted that the requirement of
a graphical representation is a condition
established by the Trademark laws of these
countries. Unfortunately, the Nigerian TMA
did not expressly provide for such. The
graphical representation is a consequence of
the Trademarks Regulations. Kerly brought
out the full fact and implications of the
Sieckmann case. He reported:
‘In Sieckmann, the application was to
register an olfactory mark comprising “the
pure chemical substance methyl cinnamate
(= cinnamic acid methyl ester),” and the
structural formula was provided: C6H5-
CH=CHCOOCH3. In addition, Mr.
Sieckmann gave details where one could
obtain the chemical, he submitted with his
application an odour sample of the sign in
a container and stated that the scent was
usually described as ‘balsamic, fruity with a
slight hint of cinnamon’. The ECJ answered
the various questions referred to it in the
following way. First, it stated that a trademark
might consist of a sign which is not in itself
capable of being perceived visually, provided
that it can be represented graphically.
Second, as far as the graphic representation
is concerned, it laid down the requirements
that it must be clear, precise, self-contained,
easily accessible, intelligible, durable, and
objective. Third, the ECJ stated that, in
respect of an olfactory sign, the requirements
of graphic representability are not satisfied
by a chemical formula, description in
written words, a deposit of an odour sample,
or a combination of those elements. 5
‘In the light of those emphatic statements, one
may ask: how else can one attempt to provide
a satisfactory graphic representation of an
olfactory mark? There are some possibilities
that Mr. Sieckmann did not put forward, such
as defining the odour by referencing accepted
standards of classification for odorants such
as Zwaardemaker. Still, it is very difficult
to find an alternative that would satisfy the
requirements laid down by the ECJ. The
practical effect of the Sieckmann judgement
is probably that it is impossible to obtain
a valid registration of an olfactory mark
unless or until the requirements for recording
the ‘sign’ in question are changed to allow
representations other than purely graphic or
descriptions in words’.
Kerly concluded that the same fate befalls a
taste mark. It is to be noted that the major
reason behind the graphical presentation is a
certainty. There must be a certainty to even a
layman as to what is sought to be registered.
The Way Forward
As far as signs/marks of smell and
taste are concerned in foreign
countries, the ECJ has made their
registration almost practically
impossible. That fate, however, is
not and should not be the same for
Nigeria. First, our deduction of the
‘graphical requirement’ is traced to the
Regulation, which can be amended
easily by the Minister of Trade and
Commerce. Secondly, it is my hope
that the IPCOM bill sought to be
passed would redefine the meaning
of a mark and trademark to include
smells and taste. That way, many of
the problems on restraint of trade
will be alleviated if not totally solved;
proprietors can be fully protected,
and employees/traders can enjoy
the fullness of their rights to work/
trade.
Kerly went on to provide his view on the
matter on pages 17-18:
1 Section 67, TMA.
2 Section 5, 11, 13 TMA
3 Cornish, Llewelyn, and Aplin, Intellectual Property:
Patents, Copyright, Trademarks and Allied Rights
(7 edn: Sweet & Maxwell) 2010, p. 738 paras. 18-34..
4 Gary Lea & Peter Cornford, Trade Marks: law and
practice (3rd edn: Jordans, 2012) Pp. 27-28.
5 Kerly’s Law of Trade Marks and Trade Names
(14th, edn: Thomson; Sweet & Maxwell) 2005, p. 7
14 www.gipmatrix.com www.gipmatrix.com
15

Interpretation of Contents on Intellectual
Property of the First Phase of Economic
and Trade Agreement between
China and the United States
On January 15, China and the
United States signed the First Phase
of Economic and Trade Agreement.
The agreement is good news for
China, America, and the entire
world. This agreement includes nine
chapters: the preamble, intellectual
property, technology transfer,
food and agricultural products,
financial services, exchange rates,
transparency, expanded trade,
bilateral assessments, and dispute
settlement. At the same time, the two
sides agreed that the United States
would fulfill its commitment to phase
out tariffs on Chinese products and
realise the transition from raising
tariffs to lowering tariffs.
Written by Lei Zhao Partner/Attorney at Law at Unitalen
www.unitalen.com
From the perspective of content distribution,
the intellectual property part is located in the
first chapter of the agreement, which fully
reflects the importance both countries attach
to intellectual property protection. Intellectual
property, whether in the formulation of laws
and regulations or judicial system reform
and other aspects, has played a leading role in
China. It is also one of the most intense focuses
of economic and trade negotiations between
countries, especially China and the United
States.
The intellectual property part of the China-
US economic and trade agreement includes
the contents that have been already adopted
by Chinese laws and regulations as well as
various reviews and trial guidelines in the past
two years, such as the application of punitive
damages, curbing malicious registration, and
conditional transfer of the burden of proof. It
also includes the new, even need to make an
important change in reviews and enforcement
practice at the present stage, such as the
extension of the validity of a patent, reduce
the transfer of criminal investigation in the
administrative law enforcement standard,
and the establishment of the rapid judgment
enforcement system.
I. Improving the protection of
trade secrets
According to article 1.3 and article 1.4 and
article 1.5 of the agreement, all natural
persons and legal persons can be liable for
the infringement of trade secret law and
infringement of trade secret. They should
be held accountable to prohibit behaviour
in a way that completely covers the theft of
trade secrets. Moreover, in the civil judicial
procedure, the burden of proof or evidence
could be discretionarily transferred to the
defendant. The above contents were reflected
in the newly revised anti-unfair competition
law in 2019.
In addition, article 1.7 of the agreement
also involves “lowering the threshold for
the initiation of criminal law enforcement,
and eliminating any content that takes the
determination of actual loss by the holder
of business secrets as a prerequisite for the
initiation of a criminal investigation on the
infringement of business secrets”.
Ii. Highlight the protection of
intellectual property rights of
pharmaceuticals
In regard to patent protection, section 3 of
chapter I of the agreement specifically provides
for the effective protection and enforcement
of drug-related intellectual property rights,
“including patents and undisclosed test
data or other data submitted to meet the
requirements for market approval”. Specific
measures proposed in articles 1.10 and 1.11
include allowing “supplementary data to meet
relevant patentability requirements” establish
“effective mechanisms for early resolution of
patent disputes”. In addition, in article 1.12 of
the agreement, it is proposed to “extend the
duration of the patent to compensate for the
unreasonable delay in the patent authorisation
or drug marketing approval process”. For
patents on new drug products approved for
market in China and on the methods for their
manufacture and use, the extension period
may be limited to a maximum of five years,
and the total period of validity of the patent
shall not exceed 14 years from the date of
approval for the market in China.
Relevant provisions on extending the duration
of patent protection for innovative drugs have
also been presented in the 2019 amendment to
the patent law (draft).
III. Combating piracy and
counterfeiting
Sections v and vii of chapter I of the agreement
emphasise the need to combat piracy and
counterfeiting; there are two targets, namely
online infringement (including piracy and
counterfeiting on e-commerce platforms) and
product infringement related to public health
or personal safety.
In terms of dealing with Internet infringement,
article 1.13 (1) of the agreement proposes to
establish an effective notification and removal
system to enable IP owners to take effective
and prompt actions against the infringement
in the Internet environment. In addition, the
article 1.14 of the agreement, “for failing
to take the necessary measures to control
the infringement of intellectual property
rights main e-commerce platform, should
take effective action to combat platform of
counterfeit or pirated goods”, and by way of
business licenses revoked network punishment
“repeatedly failed to curb counterfeit or
pirated goods sales e-commerce platform”.
To some extent, this imposes an obligation
on the major e-commerce platforms to take
necessary measures to rectify the infringement
of intellectual property rights.
From the perspective of the harmfulness of
piracy and counterfeit products themselves,
counterfeit goods with health and safety
risks will have a significant impact on public
health or personal safety, so we should focus
on cracking down on these products that
affect the national economy and people’s
livelihood. Article 1.20 of the agreement
provides for the destruction of counterfeit
goods in terms of border measures, civil and
criminal justice procedures and, in addition to
the destruction of the goods themselves, “shall
order the immediate destruction, without
compensation, of materials and tools primarily
used in the production or manufacture of
counterfeit or pirated goods”.
Iv. Cracking down on malicious
trademark registration
Article 1.24 of the agreement states that “in
order to strengthen trademark protection,
both parties shall ensure the full and effective
protection and enforcement of trademark
rights, especially to combat malicious
trademark registration”. Previously, the
newly revised Trademark Law in 2019 had
made adjustments in two aspects: regulating
malicious applications, hoarding registration,
and increasing penalties for trademark
infringement. Revised trademark law in
response to the malicious registered enhanced
obligations on the use of trademarks, article
4 of the specified “malicious trademark
applications without intent to use shall
be rejected”, and the malicious registered,
malicious litigation rules on the punishment
measures in article 68 specifically warning or
fines;
In order to further implement the latest
provisions of the Trademark Law, the State
Administration for Market Supervision
and Regulation issued several provisions
on standardising trademark application for
registration on October 10, 2019. It lists the
factors to be considered in the examination
of a malicious application for trademark
registration to enhance the operability
and transparency of the examination of
trademark registration. And through the
penalty such as fines and other ways against
the malicious trademark applicants and
trademark agencies, China is severely cracking
down on malicious trademark applications
and illegal agency behaviour.
V. Strengthening judicial
protection of intellectual
property rights
Section 9 of chapter I of the agreement
proposes that the transfer procedure from
administrative law enforcement to criminal
law enforcement should be improved. Article
1.26 proposes that “if according to objective
criteria, there is a ‘reasonable doubt’ based
on clear facts about criminal violations of
intellectual property rights, the administrative
department shall be required to transfer the
case to criminal law enforcement”.
Article 1.27 of the agreement also calls for
greater civil relief and criminal penalties for
intellectual property theft or infringement.
Specifically: “as transitional measures, possible
theft or infringement of intellectual property
should be contained, and the application
of existing remedies and penalties shall be
strengthened. To deter possible theft or
infringement of intellectual property rights
by imposing heavier penalties in a manner
close to or up to the maximum legal penalty
in accordance with the relevant laws on
intellectual property rights. As a followup,
statutory minimum and maximum
compensation, prison sentences, and fines
should be increased to deter future theft or
infringement of intellectual property.
Epilogue
Strengthening the protection of intellectual
property rights is a common goal of China
and the United States. The above-mentioned
consensus reached by the two sides in
the agreement protects the interests of
both sides. It conforms to China’s reform
direction of strengthening the protection of
intellectual property rights. It is not difficult
to find that China’s intellectual property
system has been gradually improved and
developed, which also reflects the content of
intellectual property protection proposed in
the agreement.
As the Vice-Minister of Commerce and
International Trade Negotiations, Deputy
Representative, Wang Shouwen puts it, “the
implementation of the relevant details,
will help to strengthen the protection of
intellectual property rights, improve the
business environment, expanding market
access, and better maintenance of all kinds
of enterprise in China, including foreign
enterprises, legitimate rights, and interests,
but also to protect Chinese enterprises and
the lawful rights and interests in economic
and trade activities to the U.S”.
16 www.gipmatrix.com www.gipmatrix.com
17

Medical Cannabis:
a glam makeover for a new generation
Written by Gabriela Bodden, Partner at Eproint
www.eproint.com
Cannabis and related hemp
products have been a part of
our world’s history since we can
recall.
It can be traced back to 2900
BC when the Chinese Emperor
Fu Hsi referenced marijuana
as “Ma” (the Chinese word
for cannabis) as a popular
medicine that possessed both
yin and yang.
C
M
Y
CM
MY
CY
CMY
K
In ancient Egypt, for example, cannabis pollen
was found on the mummy of Ramesses II,
who died in 1213 BC. In India, “bhang” is a
cannabis drink generally mixed with milk, that
is used as an anesthetic and anti-phlegmatic.
On the other hand, in ancient Greece, cannabis
was used as a remedy for earache, edema, and
inflammation.
Historically, cannabis has been used in
medicine as an ailment to improve muscle
spasms, menstrual cramps, rheumatism,
and the convulsions of tetanus, rabies, and
epilepsy; it was also used to promote uterine
contractions in childbirth, and as a sedative to
induce sleep.
Let’s fast- forward to the 19th century, and
we find that the uses of cannabis in medicine
have spread through the West as mainstream
medicine, and we can safely say it is the
medicine of the moment!
Medical cannabis:
what is it, and how is
it used?
The marijuana plant contains more than 100
different chemicals called cannabinoids. Each
one has a different effect on the body. Delta-9-
tetrahydrocannabinol (THC) and cannabidiol
(CBD) are the main chemicals used in
medicine. THC also produces the “high”
people feel when they smoke marijuana or eat
foods containing it.
At present, cannabis is used in medicine to treat
a number of different conditions, including but
not limited to: Alzheimer’s disease, appetite
loss, cancer, Crohn’s disease, eating disorders
such as anorexia, epilepsy, glaucoma, mental
health conditions such as schizophrenia and
posttraumatic stress disorder (PTSD), multiple
sclerosis, muscle spasms, nausea, pain, HIV/
AIDS, wasting syndrome (cachexia) and
fibromyalgia, amongst others.
Hemp and Cannabis:
are they the same
plant?
The difference between hemp and cannabis
is a subject that is all too often improperly
explained.
Cannabis is a flowering plant that consists
of three primary species: Cannabis sativa,
Cannabis indica, and Cannabis ruderalis.
Hemp, or industrial hemp, is a variety of the
Cannabis sativa plant species that is grown
specifically for the industrial uses of its derived
products. It is one of the fastest-growing plants
and was one of the first plants to be spun into
usable fiber 50,000 years ago.
“Hemp” is a term used to classify varieties
of Cannabis that contain 0.3% or less THC
content (by dry weight).
There is a general misconception that cannabis
may have adverse effects on human health
overall, and although this may be partially
true, it is the manner in which the plant is
treated and used and in what circumstances
that can have important health benefits for
certain illnesses.
Studies have shown that medical cannabis has
fewer side effects in comparison to painkillers,
and patients who used cannabis for medical
purposes felt better overall. Not to mention that
also some studies have shown that legalisation
has not led to increased recreational use of the
drug.
18 www.gipmatrix.com www.gipmatrix.com
19

Cannabis and IP?
The capable art of creating cannabis IP rights
is evolving. It focuses on patent protection for
novel processes and products, the protection
of related trademarks, trade secret protection,
generating the very necessary health
registration permits that enable the products to
be imported into a given country where such
a requirement must be met, and protection
via contracts of all sorts when faced with
particularly important know-how.
In general, an invention based on cannabis
must comply with the patentability
requirements: be new, useful, and nonobvious.
Therefore, cannabis-based patents can be
for GMO cannabis, new strains of cannabis
plants, unique cannabis cultivation methods,
for the extraction and processing of cannabis
plants, cannabis products (cannabis oils and
extracts, cannabis beverages, edible food
products, animal products, etc.), equipment
for the processing of cannabis, medical uses
for cannabis, such as treatments for a disease
or a particular disorder, the possibilities are
never-ending. The industry is letting their
imagination flow freely!
We usually see first-hand that companies must
do their mandatory due diligence before using
any type of IP rights they believe they “own,”
creating possible vulnerabilities and where
they may face infringement cases.
The patent protection process of a cannabis
product or registering a trademark for a
cannabis product is the same as in the case of
other types of products. However, the industry
is facing a boom, and the number of patent
cases worldwide is increasing, where, for
example, patents may overlap and generate
infringement cases. In the USA, we see a first
patent infringement case already; it involves
two companies: United Cannabis Corporation
v. Pure Hemp Collective, Inc. United Cannabis
claims that Pure Hemp Collective has
infringed certain patent claims on cannabis
extracts and their method of preparing and
using such extracts. This case will likely set the
future of the cannabis industry litigation in the
USA, and this same scenario will be faced in
different countries as the cases start to arise.
When a company is on edge protecting their
creations and know-how, this makes a genuine
difference when faced with competitors and
in commercialising their products. Some
companies choose to license their IP rights
while others don’t. This is all dependent on the
business model.
Latin America and
the Caribbean?
As the push for legalisation at home and
abroad grows, cannabis is garnering significant
attention from investors, manufacturers, and
researchers. Despite the plant being illegal
in many jurisdictions just alone in the U.S., a
total of 33 states have legalised cannabis for
medical use.
In hand with this, cannabis for medical
purposes has received the green light in several
Latam countries (Mexico, Brazil, Colombia,
Argentina, Peru, and Chile.)
For instance, CBD products are legal in
Colombia as long as they contain less than 1%
THC in dry weight. In general, the community
seems to be embracing the health benefits of
this product; however, there are concerns as to
the high prices of such products that remain
inaccessible for most regular people.
Mexico has created several commercial
licenses for CBD products where the products
must contain less than 1% THC content to be
approved for commercial use.
Cannabis in Costa
Rica:
Currently, only the consumption and personal
cultivation for medical or scientific purposes is
decriminalised, so marijuana, as such, is still
considered an illicit drug.
Nonetheless, in recent weeks Costa Rica has
been one of the Central American countries
that are looking at a Bill aimed to regulate
medical cannabis and hemp. And this is indeed
a promising industry, especially during such
difficult times that the world is navigating. It
is seen as a source of income that promises to
rectify the economy of this country.
The Costa Rican government has manifested
its support to the production of hemp and
based on this a company by the name of ‘Micro
Plantas de Costa Rica S.A,’ and the CATIE (The
Tropical Agricultural Research and Higher
Education Center) have reached an agreement
that promotes the economic development of
the Costa Rican agricultural sector, generating
value in production processes through
innovation and knowledge derived from
research, where the objective is to generate a
prototype for the different hemp processes,
within the framework of a relationship between
a private company, academia, investors and
other interested institutions, taking into
account the capabilities of the different actors
to be able to develop a successful project at the
country level, which in turn can be scaled to
13 other countries in the region and that also
benefits the rural population by bringing in
new technologies.
In tandem with this, before the Legislative
Assembly of Costa Rica lays Bill no. 21,388,
which seeks to legalise the medical production
of hemp and cannabis in this country. Although
the word cannabis almost immediately converts
this project into a polemic one, it is also
promising in that it could effectively reactivate
the local economy into the production and
exportation of products based on cannabis and
industrial hemp.
The current unemployment rate in this
country has reached a whopping 11.4%, and
this cannabis-hemp industry would become a
new source of employment for many people.
According to various studies, it seems Costa
Rica possesses the agroeconomic conditions
that permit the cultivation of cannabis and
hemp at an industrial level. This is attractive
to the industry worldwide as a promising
substitution for several industries that are
currently on the low.
Currently, medical cannabis is legal in 21
countries, with an overall market composed
of 771 million people. Out of these, 51% live
in countries that allow the importation of
medical cannabis. This data was provided by
Deloitte Canada in 2017, and if Costa Rica
passes this Bill into Law, we will also be facing
a positive future!
The Bill proposes a licensing system for the
extraction, laboratory, and cultivation in
order to limit the production phase. It aims
at a pharmaceutical industry in this country,
making Costa Rica a development potential
and creating a cluster of pharma companies
that wish to develop this industry in areas such
as food, drinks, clothing, medicine, and others.
Currently, there are 13 countries worldwide
that allow the importation of cannabis
products for medical use. In Latin America,
Mexico, Jamaica, Colombia, and Chile would
be the most favorable destinations to export
from Costa Rica.
Sailing Beyond
Paris and Berne
by Mladen Vukmir, Second Vice-President – ECTA
www.ecta.org
Mladen Vukmir is the Second
Vice-President of ECTA and a
member of the ECTA Board. He
is an IMI Certified Mediator,
past member of the INTA Board
of Directors, past INTA ADR
Committee, and INTA Brands
& Innovation Committee Chair
as well as past President of the
Croatian AIPPI Group.
“We cannot become
what we need to be by
remaining what we are.”
Max De Pree
Modern societies are witnessing the changing
role of law upon accelerated growth in the
quantity of information, modifications of
knowledge structures, and information
processing possibilities. Without the rule of
law and the role of intellectual property within
the legal system, humanity would never have
reached the level of growth that led it into the
most prosperous part of its entire history.
the legal system provides for one of their
most important traditional roles – to serve as
guidance to their societies.
The very central pillar of the traditional role
of the law came under pressure in modern
complex societies, as the stability it used
to provide to every society ruled by law,
became the cause of instability under the
new conditions. In complex systems, such as
our modern societies increasingly are, any
point of stability is bound to increase the
overall instability of the system, just as a rock
protruding through the foaming whitewater
does add complexity to the flow. Fewer points
of stability in a volatile environment might
increase the smoothness of its state.
changes in forms of human creativity. Our
societies did not adjust easily, nor did they yet
manage to cope with the changes profoundly
enough to escape the stress. Patching up the
systems designed for the different environment
might not be a path to the greater efficiency of
today’s environment.
Looking back…
In the last two hundred plus years, our societies
have demonstrated certain difficulties of
grasping the nature of the intangible creativity
and trying to form a new form of property
right over it. It could be said that even though
a couple of centuries have passed since our
As an IP attorney, my focus is that difficult
means it is possible if crafted in a very artful
manner. Cannabis companies must carefully
patchwork laws and regulations as if walking
on thin ice and take extra precautions. Having
the right lawyer on board is key.
The ideal scenario would be for medical
cannabis to be legalised worldwide, thus
eliminating the blockages the industry
currently faces; however, this may happen
with time. In the interim, doing proper duediligence
and clearing the ground may slow the
process in a sector that is growing by leaps and
bounds, but will be worthwhile in the long run.
Nowadays, however, many observers note that
our legal systems that were designed to produce
consistent results find themselves increasingly
at odds with the needs of contemporary
societies to have diverse outcomes available
in order to satisfy the wide variety of business
models and relations that coexist. Accordingly,
our legal systems are coping with the increased
differences in factual patterns that complex
contemporary societies are generating. The
resulting inconsistencies and the inherent
slowness of the legal process are increasingly
at odds with the fast-moving pace of the
economy and technology. Consequently, we
are witnessing increased hardships with which
Intellectual property
systems and functions
Different challenges of this kind are easily
visible if we focus on intellectual property
systems. Throughout the last century and a half,
the functions of copyright law and industrial
property law have experienced unprecedented
changes in their fields of application. Since
the digitalisation started and global digital
networks enabled our economies to switch to
the digital domain, we are witnessing profound
artists and businesses started relying on their
intangible assets, our societies are on many
points still struggling with fully accepting the
underlying concept of intangible assets. In the
meantime, and without fully embracing the
intangibles, yet another set of very different
intangibles emerged as a perceived asset. Data,
intangibles that are not created by human
creativity, have joined the club of the most
valuable assets for the modern industries, and
in the form of privacy protection is gaining in
profile among the individuals.
20 www.gipmatrix.com
www.gipmatrix.com
21

A hundred and forty years ago was when
Paris and Berne conventions were conceived
to shape the authors’ rights and industrial
property systems in an attempt to harness
the value of human creativity, unlike the ways
that the historical societies knew. At that time,
creativity was perceived as an extraordinary
activity achieved by the inspiration of a highly
gifted individual. Nowadays, most human
creativity is done as an everyday, mundane,
serial activity based on sheer knowledge,
which almost everyone in knowledge-based
societies performs. On top of that, intangible
assets created by harnessing and harvesting
humongous amounts of data by human and
machine efforts are becoming a form of an
asset as valuable as intellectual property and
energy ever were.
Human creativity and
development
This fundamental change has brought about
many unexpected metamorphoses of not only
how we create, but also how we understand
and apply the rules regulating human
creativity. Law grew complex to the border of
inherent inner contradictions, its original role
of providing guidance at odds with its growing
complexity, inconsistency, and slow pace of
its application. At the same time, complex
societies we are now living in are requiring
elevated complexity and flexibility in order to
be able to continue developing. By developing
in what can almost be described as a cancerous
growth, the law has become complex to the
degree that some social actors of change started
considering it more onerous then helpful.
The increase of the role of mediation as an
essentially non-legal dispute resolution method
is but one of the signs of this perception.
Organisations such as Commongood.org are
finding ways to push the social discourse into
examining the future role of the rule of law
in democratic societies. Most dangerously of
all, in many a country, the general population
started accepting the idea that introducing
non-democratic means of governance has
some advantages over democracies. To me,
it primarily means that law needs to be
streamlined to achieve the flexibility and
efficiency that it is now lacking.
Not only did creativity change. Forces of
globalisation, and not only globalisation in
the political sense, but primarily in logistical
and spiritual, have challenged the traditional
order impacting the central social principles
of sovereignty and territoriality. Of course,
the Berne and Paris IP order was based on
the traditional perceptions of territoriality,
specifically those prevailing in the nineteenth
century. Despite the recent backlash against
globalisation, our perception is that the
actual globalised integration is irrevocably
progressing in spite of the political setbacks. It
is the digital domain of the internet that made
the global connections a fact almost as hard
as, for example, the basis of the second law of
thermodynamics.
Its scientific concept of entropy teaches us
that, for example, a bottle of ink spilled into
a pool is physically impossible to recoup into
the bottle from which it was spilled.
It became challenging to imagine
how can any untangling of a global
population happen ever again,
barring some catastrophic collapse
of our civilisation. The planet has
truly become one, and territoriality
has become a burden in tackling
many problems, especially those
that are inherently global such as
environmental threats, and I would
add finding the best way to regulate
creativity. All of us in the intellectual
property field understand and
accept that creativity is the bestdistributed
resource of all. This is
why, after a hundred and fifty years,
we need to open up the dialogue
on what kind of system, legal or
otherwise, will extend the Paris and
Berne based intellectual property system that
served us so well for so long.
In order to be able to do this, we need to go back
and examine the constants and discontinuities
in the legal protection of creativity. This is best
done not only by legal but also through other
types of analysis that lawyers were traditionally
unwilling to conduct, such as semiotic analysis
of the language used to draft and construe the
rules and sociological and economic analysis of
the relations that are morphing in our societies
before our eyes.
Businesses have already noticed that keeping
the IP rights neatly boxed in their nineteenthcentury
compartments is not adequate for the
creativity that modern industries deploy in
developing their products. The same challenges
are visible to the artists who are dealing with the
issues of free expression since the emergence
of conceptual and pop art. This development
clearly pushes towards the merging of the
principles of copyright and freedom of speech
law. Shifts of this kind are why we have long
started speaking of overlapping intellectual
property rights and why our associations
moved from being dedicated to a single IP
right to all those related rights that we use to
protect the results stemming from the single
and singular human creative capability.
To a keen observer, it will sooner rather than
later become clear that it is always authors’
rights that will be first showing the inadequacies
and the direction in which the entire IP
universe will start changing. The accumulated
and mounting inadequacies and the inability
www.gipmatrix.com
to meaningfully reform the copyright world is
a clear sign of the difficulties the other Paris IP
worlds will face and an indication that the Paris
and Berne conventions are now confining such
meaningful change. It is dawning on the IP
professionals that the movement towards space
beyond the confines of the centuries-old IP
system has become desirable, if not inevitable.
A strong upsurge in creativity seems to be
closely followed by a proportional upsurge
of copying. As we all know, the onset of new
digital technologies in the copyright field has
led to a significant increase in unauthorised
copying. Once we digitise other formats of
human productivity and creativity, we will be
exposed to the similar growth of copying of
the objects of protection of other IP rights.
By now, it is becoming abundantly clear that
choosing law as a principal tool in combating
counterfeiting and piracy might not have been
the right choice. One could even assert that, in
light of the constant growth of counterfeiting
trade, choosing law as a principal tool in
combating counterfeiting was an inferior
choice and that the results might have been
different otherwise.
Challenges and
innovation
The challenge we are facing is that even those
lawyers who are thinking about innovation still
seem to believe that the innovation is confined
to introducing new legal services or products
and then finding novel ways to market them.
Not many seem to understand that lawyers
owe to their society innovations in managing
social relations in new ways as well. If we accept
that one of the basic tenets of contemporary
societies is innovation, and that innovation
must be pervasive in all social activity fields,
one starts wondering why the legal profession
would be excluded from it. Innovation cannot
remain a monopoly of a consumer or any
other industry in modern societies; all social
participants need to contribute by innovating.
Those lawyers who miss this will risk being
increasingly seen as a burden to their society.
While the text has no intention of proposing
strong conclusions on possible changes,
several theses emerge. Advancements are
likely to occur, but hard to anticipate as the
scope of social changes is also unprecedented,
and the nature of the digital medium is
radically dissimilar from analogue mechanical
reproduction means. Changes within the legal
system will not involve only copyright and other
rights of intangible human creativity results
protection, but an overall transformation of
the role of law within societies.
After an initial denial and a protracted period
of reluctance, the IP community seems to
have acknowledged that without seizing the
momentum, it might become marginalised in
the discussions on its own field of expertise.
It is, therefore, paramount for the IP, and
specifically trademark communities, to
leapfrog their reluctance in tackling these
complex issues.
(Mladen Vukmir is the Second Vice-President of
ECTA. Views in this text are entirely his own).
23

TRADITIONAL KNOWLEDGE AND RELATED
INTELLECTUAL PROPERTY ISSUES IN
THE ERA OF THE
COVID-19 PANDEMIC
“Let’s drink this herbal
tea to protect ourselves,
to protect our families,
and our neighbours
[…] and there will be
no more deaths”
President of Madagascar,
President Andry Rajoelina. 1
TRADITIONAL
AFRICAN CULTURES
Such statements are not uncommon among Africans. This is because African cultures and beliefs
promote traditional knowledge and traditional medicines in particular, as a key source of healing.
In fact, the current responses from Africans to the COVID-19 pandemic reaffirms African beliefs
in the value of traditional medicines. Therefore, it is not surprising that despite caution from the
World Health Organisation (WHO) on self-medication relative to symptoms of the COVID-19,
social and mainstream media are inundated with stories of traditional medicines as a cure for
COVID-19.
Covid Organics (CVO) is an example of such traditional medicines. The medicine was developed
by the Malagasy Institute of Applied Research in Madagascar and has so far been shipped to many
African countries, namely: Comoros Island. Guinea Bissau, Equatorial Guinea, the Democratic
Republic of Congo. Liberia, Niger, Tanzania, Nigeria, Senegal, and Chad. 2
Traditional knowledge though not specifically defined in the reviewed literature, has been broadly
said to be composite in nature, encompassing both tangible and intangible (spiritual) aspects. For
example, a typical traditional healing process may involve the following steps:
1. The use of herbal preparations or concoctions which involves medicinal
knowledge and knowledge associated with traditional resources.
2. Chanting of traditional healing recitals or songs and dancing traditional
dances.
3. The dance may be performed on a traditionally designed mat.
4. The traditional medicine practitioner may be dressed in traditional apparel.
5. There may be libation and invocation of ancestral spirits or gods.
A survey conducted in January 2011 3 - indicated that the term traditional knowledge, when
used in Ghana, includes the following: traditional medicines, food, and food preservation,
diversity conservation, farming systems, ethnoveterinary, language, music, dances, arts and
craft, indigenous artefacts, rituals, taboos, fashion, traditional art system, and symbols. The key
component of traditional knowledge is that it is passed on from one generation to another. It is
through the process of transfer that it becomes firmly embedded in society.
Writen by Sarah Norkor Anku (Mrs), Senior Partner,
Anku.Anku at law - www.ankuatlaw.com
TRADITIONAL KNOWLEDGE
& EXPRESSIONS OF FOLKLORE
For academic and legal purposes as it is for
convenience, the hitherto broad nature of
traditional knowledge has been generally
divided into two parts, namely traditional
knowledge (stricto senso), which deals
with the “scientific aspects of indigenous
knowledge such as traditional medicines, food
preservation, biodiversity conservation, etc.
The ARIPO Swakopmund Protocol on the
Protection of Traditional Knowledge and
Expressions of Folklore 4 refers to such
traditional knowledge as follows:
“Traditional Knowledge” shall refer to
any knowledge originating from a local
or traditional community that is a result
of intellectual activity and insight in a
conventional context. This includes knowhow,
skills, innovations, practices, and
learning, where the knowledge is embodied
in the traditional lifestyle of a community, or
contained in the codified knowledge systems
passed on from one generation to another.
The term shall not be limited to a specific
technical field and may include agricultural,
environmental, or medical knowledge
associated with genetic resources.
The second part being Traditional Cultural
Expressions or Expressions of Folklore, which
has been a source of creative ideas, especially
for the creative industry, such as performing
arts, etc. This part has also been referred to, in
the Swakopmund Protocol 5 as follows:
“Expressions of Folklore” are any forms,
tangible or intangible, in which traditional
culture and knowledge are expressed, appear
or are manifested, and comprise the following
forms of expressions or combinations thereof:
i. Verbal expressions, such as but not
limited to stories, epics, legends, poetry,
riddles, and other narratives; words,
signs, names, and symbols;
ii. Musical expressions, such as but not
limited to songs and instrumental music;
iii. Expressions by movement, such as
but not limited to dances, plays, rituals
and other performances; whether or not
reduced to a material form; and
iv. Intangible expressions, such as
the production of art, in particular,
drawings, designs, paintings (including
body-painting), carvings, sculptures,
pottery, terracotta, mosaic, woodwork,
metalware, jewelry, basketry, needlework,
textiles, glassware, carpets, costumes;
handicrafts; musical instruments; and
architectural forms.
In effect, the traditional healing process
may include both traditional knowledge
and expressions of folklore since the healing
process may also include accompanying rituals
provided in the definition of the expressions of
folklore in the Swakopmund Protocol.
PROTECTION FOR
TRADITIONAL
KNOWLEDGE SYSTEMS
Traditional knowledge generally has not found
space in the current international system; the
WIPO admits that the current global system
for protecting intellectual property was
fashioned during the age of industrialisation
in the West and developed subsequently in line
with the perceived needs of technologically
advanced societies 6. However, in recent years,
indigenous peoples, local communities, and
governments, mainly in developing countries,
have demanded equivalent protection for
traditional knowledge systems 7 , in other
words, a sui generis protection for traditional
knowledge systems. Currently, there are a few
national and regional protection systems. For
example, South Africa amended the Intellectual
Property law, through Amendment Act No. 28
of 2013, to provide for the recognition and
protection of certain traditional and indigenous
terms or and expressions 8 while the African
Regional Intellectual Property Organisation
(ARIPO) also created a sui generis system of
traditional knowledge protection. 9
In view of the demands, an Intergovernmental
Committee on Intellectual Property and
Genetic Resources, Traditional Knowledge
and Folklore (IGC) were established by WIPO
member states in 2000. The IGC was mandated
to develop an international legal instrument
(or instruments) that would give traditional
knowledge, genetic resources, and traditional
cultural expressions (folklore) effective
protection 10 . These discussions have been
ongoing for the past two decades.
At IGC 40, which was concluded on June 21,
2019, delegates agreed among others at plenary
and informal consultations on Agenda Item
7 (“Taking Stock of Progress and Making a
Recommendation to General Assembly”) that,
draft articles on genetic resources,
traditional knowledge, and traditional
cultural expressions, contained in
documents WIPO/GRTKF/IC/40/6,
WIPO/GRTKF/IC/40/18 and WIPO/
GRTKF/IC/40/19 respectively, be
transmitted to the 2019 WIPO General
Assembly; and
to transmit the Chair’s Text of a Draft
International Legal Instrument Relating
to Intellectual Property, Genetic
Resources and Traditional Knowledge
Associated with Genetic Resources to the
2019 WIPO General Assembly, and to
include it as a working document of the
Committee “as a Chair’s text”. 11
These documents require further work, and
the Committee needed its mandate to be
renewed for the 2020-2021 biennium. The
WIPO General Assembly, which took place
from September 30 to October 9, 2019, agreed
on the renewal, as well as the work plan for the
IGC for the biennium. Unfortunately, IGC 41,
which was planned to take place from March
16 to 20, 2020, is now postponed 12 as a result
of the COVID-19 pandemic.
The current interruption in the international
negotiations on the protection of traditional
knowledge, resulting from the break in
the work of the IGC, raises many concerns
about appropriate protection for traditional
knowledge innovations in this era of the
COVID-19 pandemic. Could traditional
knowledge innovations be linked to western
science and protected under the current
system of intellectual property protection?
THE GAP BETWEEN
TRADITIONAL KNOWLEDGE
AND WESTERN SCIENCE
Some believe that there is a gap between
traditional knowledge and western science,
which can be bridged because both traditional
knowledge and science deal with knowledge
about the structure and behaviour of the
natural and physical world. However, whereas
science is based on facts that can be proven,
for example, by experiments, traditional
knowledge in most cases is not proven but have
gained their reputation over generations and
sometimes include the non-tangible (spiritual)
world.
Many also agree that traditional knowledge and
western science can complement one another;
however, there is widespread debate as to how
and to what degree traditional knowledge and
western science should be integrated.
Scientists are said to add value to traditional
knowledge. While some believe that
traditional knowledge should be held to the
same methodologies and standards used in
science, others argue that while “scientific
practice generally excludes the humanistic
perspective, traditional knowledge assumes
a holistic view including language, culture,
practice, spirituality, mythology. Customs and
even social organisations of local communities,
thus to suggest that traditional knowledge is
only the equivalent of science is to diminish
incorrectly the strength and breadth of
traditional knowledge”. 13
Consequently, how can traditional knowledge
and western science complement one another
without compromising the integrity of either
one of the knowledge systems to enable
effective Intellectual Property protection,
especially in this COVID – 19 era?
Western scientific research requires data to
substantiate and verify findings. At the same
time, traditional medicines do not follow
such procedures, and efficacy is determined
from effective use over the years and from
generation to generation. There is, therefore,
the need for the collaborative efforts of the two
systems.
TO CONCLUDE
WHO has been working to facilitate
collaboration and to incorporate traditional
medicine into national health systems,14 It
recognises that traditional, complementary,
and alternative medicine has many benefits.
Africa has a long history of traditional
medicine and practitioners that play
an essential role in providing care to
populations. 15
Regarding Madagascar’s CVO herbal drink,
Felix Tih 16 has reported that the WHO will
study the drug which has been promoted as a
cure for COVID-19. In fact, medicinal plants
such as Artemisia annua are being considered
as possible treatments for the COVID-19 and
should be tested for efficacy and adverse side
effects. 17
Finally, WHO’s welcome of innovations
around the world including repurposing
drugs, traditional medicines and developing
new therapies in the search for potential
treatments for COVID-19, may not suffice
without adequate and effective intellectual
property protection systems relating to
innovations from traditional knowledge
sources, to motivate and reward creativity
among traditional knowledge practitioners.
1 Reported by Felix Tih “Madagascar leader urges use of supposed
COVID-19 cure”, 18/05/2020 aa.com.tr
2 ibid
3 , by Sarah Norkor Anku; Implementation of the ARIPO Swakopmund
Protocol on Protection of Traditional Knowledge and Expressions of
Folklore in Ghana, 2011, Unpublished thesis, Africa University, Zimbabwe
4 Section 2 of the ARIPO Swakopmund Protocol on the Protection of
Traditional Knowledge and Expressions of Folklore, 2010
5 ibid
6 Traditional Knowledge and Intellectual Property – Background Brief
https://www.wipo.int/pressroom/en/briefs/tk_ip.html
7 ibid
8 Ines Monteiro Alves, “South Africa: The Protection of Traditional
Knowledge in Africa”, 02 September 2019
9 Supra 4
10 ibid 6
11 https://www.wipo.int/tk/en/news/igc/2019/news_0009.html
12 ibid
13 Castillo 2009
14 A statement made by Matshidiso Moeti, Regional Director of
WHO Africa in Africa, and reported by Felix Tih
on 14th May 2020.
15 https://www.afro.who.int/news/who-supports-scientifically-proventraditional-medicine?gclidl
16 A report by Felix Tih, “WHO gets in touch with Madagascar, after country
slammed global health body for not endorsing its drug” 14/05/2020
24 www.gipmatrix.com www.gipmatrix.com
25
17 https://www.afro.who.int/news/who-supports-scientifically-proventraditional-medicine?gclid

Intellectual Property amid
times of COVID-19:
a strategic view
Written by Laura Castillo Sepúlveda
Partner at Innventiva - Espacio Legal
www.innventivalegal.com
Humanity has been surprised by
a silent enemy whose smallness
was hidden by a pandemic that,
in less than five months, has
caused hundreds of deaths and
whose power of contagion has
alarmed populations around
the world. This challenger is the
COVID-19 pandemic, which
under the slogan ‘stay home’,
has transformed the economic,
social, and legal systems of all
nations, reaching a new world
order.
To face this challenge, scientists around the
world are creating vaccine formulas, trying
medications, building unconventional
respirators, and working towards any other
tool that may aid humanity in fighting this
battle. These ideas and inventions are part of
the solution to the pandemic and are linked to
Intellectual Property Rights (IPRs). Therefore,
this area of law is now more important than
ever. Furthermore, the increase in the use of
new technologies has simplified the exchange
of goods, services, and information, placing
IPRs at risk. Consequently, in these times, it is
more necessary than ever to use good strategies
to preserve, rescue, and protect IPRs.
This article looks for points of convergence
between the existing laws and the reformed
world order. Thus, it will expose that COVID
can represent great opportunities rather than
attacks on IPRs. Particularly, it will analyse
the defiances and opportunities the pandemic
entails for Intellectual Property (IP) practice in
three main fields: i) counterfeiting, ii) licence
agreements and iii) trade secrets.
I. Counterfeiting
products
Counterfeiting is the production or
distribution of goods without the permission
of its proprietor. Amid times of COVID-19,
counterfeiting is the consequence of i) the ease
in which international commerce can be done,
ii) the lack of strict customs revisions during
quarantine, and iii) the economic downturn
that makes people need cheaper products. This
illegal practice affects consumers; IPRs owners,
impeding them to receive the income of their
IP; and it also obstructs the tax collecting
of governments. In times of a pandemic,
counterfeiting of medicines, medical
equipment, as well as protection products, such
as masks and disinfectants could have adverse
effects on the health of consumers since they do
not follow the protocols of regulated products
and may have an altered expiration date or an
incorrect amount of active ingredients. In fact,
international organisations such as INTERPOL
and the World Customs Organisation have
reported an increase in the production and
distribution of essential counterfeit products
to deal with COVID-19.
www.gipmatrix.com
The criminality of these events is not in
doubt. The first solution would be to apply
strong customs measures to detect counterfeit
products, prosecute the counterfeiter, seize the
merchandise, and destroy it. However, in times
of a global crisis, the relevance of corporate
social responsibility (CSR) is currently being
observed. Specifically, the need for companies
to strike a balance between their IPRs and the
general interest: allowing easy and affordable
access to products that have become necessary
to —literally— survive. Thus, a convenient
solution would be not to enforce, but to grant
specific and royalty-free licence of use, for a
limited period of time.
Evidence of the above is the Open COVID
Pledge (OCP) by which the pledgor
compromises to share its IP (copyrights and/
or patents) to end and diminish COVID-19
pandemic. In this scenario, the pledgor
publishes a licence permitting others to use the
IP as described in the legal terms of the said
licence.
27

In the
OCP, not all
licences are permitted.
In order to be compatible, the
licence must comply with the following
criteria: be available to the public; grant
all rights regarding the specific IP that is
being licenced; be royalty-free and fully
paid-up; must contain an obligation of nonexclusivity
nor seek judicial relief to use the
IP. Likewise, the licence must begin no later
than December 1, 2019, and until the World
Health Organisation declares the end of the
pandemic plus one year, provided it is not
prior January 1, 2023. An additional relevant
aspect is the field of use, which will imply that
the pledgor is free to grant any permissions
but should have as a minimum “the purpose
of diagnosing, preventing, containing, and
treating COVID-19”.
On the other hand, there are similar efforts
outside the OPC’s scope. These are the cases of
Medtronic, Abbvie, Fortrees Investment Group
LLC, Pfizer, and other laboratories. Likewise,
the United States Patent and Trademark Office
(USPTO) launched “Patents 4 Partnerships”,
an integrated platform in which individuals or
businesses willing to create solutions for the
eradication or treatment of COVID-19, can
easily search for patents or patent applications
whose owners have agreed to licence. Unlike
the OPC, the USPTO does not have –at the
moment– a standard licence agreement or
minimum requirements. In this case, parties
are responsible for their own negotiations and
terms in the licence agreement.
Licencing has always existed, but how
companies manage them in a worldwide
emergency crisis will be decisive for what
comes next. Society is attentive and will
support any business that aided in a way out
of this crisis. Thus, in these times, the way
companies oversee their licences must follow
a strategy that not only suits corporate image
and CSR, but that could show benefits for the
international community
as a whole. IP holders who
assume this type of
solution are likely to be
seen as the leaders who
helped undermine the
COVID-19 pandemic.
II. Licencing
agreements
From the above, it can be perceived how
important IP licencing agreements are. In that
regard, COVID-19 has taught us that nothing
is as predictable or resistible as one might
conceive. Certainly, the circumstances in
which we currently live can cause obligations,
such as compliance to a minimum sale,
production, or royalty requirements cannot
be fulfilled. This is the case of businesses that
have stopped operating or whose sales have
decreased. In these times, IP lawyers around
the world are reviewing agreements of affected
contractors and studying suspension or
excusable provisions such as a force majeure
clause.
In the best scenario that the licence agreement
contains a force majeure clause, it is vital
to analyse if a pandemic event is included
in the said provision. In general, it is likely
to be included since most (not all) of the
agreements state broad definitions such as
‘act of God, unforeseeable event or event
beyond the parties’ control’. Without a doubt,
the COVID-19 pandemic could fit this
provision. Similarly, it is important to note
if the obligation that wants to be suspended
is included in the said clause since possibly
it covers specific aspects only. Also, it should
be observed what steps should be taken to
implore the clause.
Notwithstanding the importance of this type of
provision, the number of contracts that omit it
would be surprising. In these cases, the parties
may refer to the common law of the country
that governs the contract. For instance, the
Dominican Republic’s case law has specified
that three cumulative requirements must
be met in order to consider an event as a
force majeure and consequently suspend
contractual obligations. That is, the event
must be: i) external (it does not depend on
the parties); ii) unpredictable (by the time the
licence was signed the event was unpredictable
by the parties); iii) irresistible (it means that
once the event has arrived, the licensee has
done everything reasonably possible to fulfill
his obligation and it has been impossible).
These three requirements must be connected
with the breach of the obligation in question.
Additionally, the above will be analysed
on a case-by-case basis, which eliminates
any guarantee of success. To illustrate, in
the Dominican Republic, the first case of
COVID-19 arrived in March 2020, hence
in the case of requirement number ii, if the
contract was signed in February 2020, it can be
said that the event was predictable. In that case,
COVID-19, in principle, would not qualify as a
force majeure event.
Although the general rules of law replace what
the parties do not contractually foresee, it is
known that open gaps translate in time, money,
and, above all, a detriment in the parties’ good
business relationship. It is expected that from
now on, as IP lawyers, nothing will be taken for
granted, and any slit in licencing agreements
will be permeated.
III. Trade secrets
COVID-19 has touched another aspect that
concerns IP, and that is trade secrets. This
includes all sensitive information, crucial for
the company’s development, such as sales
methods, a list of clients and suppliers, and
commercial strategies, among others. This
has always been an important point; however,
at the moment trade secrets are at higher risk
since due to the pandemic employees are
working remotely and using digital platforms
for virtual meetings
To avoid infringements to this important
corporate asset, companies must investigate
the data handling policy of each virtual
meeting platform. In this way, those that do not
have safe protection will be avoided. Likewise,
companies (regardless of their size) must
have a clear non-disclosure agreement, which
establishes what information the employee
can access, what to do, what not to do with
the confidential information and the legal
consequences in case of a breach. Similarly,
in remote work computers, access should be
limited only to the files that employees need,
according to their functions. Equally, it is vital
to have software to avoid cyber attacks. All
of these must go hand in hand with constant
communication and employee training.
Conclusion
Finally, it has been analysed how the current
pandemic has influenced IP in the fields of
counterfeiting, licence agreements, and trade
secrets. It has been shown that COVID-19
has allowed IP lawyers and IPRs holders
to witness the challenges that each of these
fields entails directly. Most importantly, it
has evidenced the improvements that must
be implemented in legal systems, how to
do business and the strategies that should
be taken to avoid infractions or to respond
to them. In the end, these lessons will
benefit not only IPRs holders but also the
international community as a whole.
www.gipmatrix.com
29

Specialist global search services for patent attorneys,
universities, technology companies and SME’s
Patentability/Novelty Search
Infringement/FTO/Clearance
Invalidity/Patent Busting
State of the Art
Patent Mapping/Landscapes
Patent Monitoring
Patent Status
Competitor Analysis
Tel: +44 (0)1633 816601
Email: mail@patentseekers.com
www.patentseekers.com