IPPro Issue 004

AIPPI’s new executive director Arno Hold tells all about his new role

Brands that burn

Can the ends justify the means when protecting your IP?

Tools of the trade Herbert Patty explains how AI and machine learning can increase efficiency at law firms

Harness the power of Patent information with Minesoft ·

Comprehensive patent search & analysis Fast & reliable IP document retrieval Patent knowledge management Competitive intelligence systems

·

Minesoft solutions can transform the way you work, find out how at www.minesoft.com UK: +44 (0) 20 8404 0651 Germany: +49 (0)211 7495 0930 US: +1 866.745.3621

Protect Your Intellectual Property Worldwide RWS is the world’s leading expert in intellectual property (IP), legal translations, foreign patent filing, patent search and database services.

Ensure top quality.

Cut costs and save resources.

Simplify and streamline.

Patent Translations

PCT National Phase Entry

Direct Filing

European Validation

Patent Searches

www.rws.com

Editor’s Note A not-so-sunny summer Over the past two years the world has changed dramatically and what would have been a quiet summer has seen a wide range of potentially world-changing news.

In the US, almost two years on from the election of US president Donald Trump, NAFTA is the closest it has ever been to renegotiation.

Trump, whose nationalist focus has already drawn the ire of China, Europe and Canada, set his sights on renegotiating the agreement, which he has said has been historically bad for the US. The deal could have far reaching impacts on the intellectual property sphere, causing those in the industry to speak out and argue that negotiators must insist on stronger IP protection.

Editor: Becky Butcher beckybutcher@blackknightmedialtd.com +44 (0)203 750 6018 Deputy Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026 Junior Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)203 750 6017 Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)203 750 6021 Contributors: Rebecca Delaney, Jenna Lomax, Ned Holmes, and Maddie Saghir IP Portfolio Manager: Serena Franklin serenafranklin@blackknightmedialtd.com +44 (0)203 750 6025 Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)203 750 6028 Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com Published by Black Knight Media Ltd Copyright © 2018 All rights reserved

3

IPPro

In the UK, Brexit continues to bumble along, with the dishevelled Tory government seeming to be pursuing a no deal Brexit. After suffering even more casualties in her cabinet, UK prime minister Theresa May has said there will be no compromise on her Chequers plan, while the EU’s chief negotiator, Michel Barnier, has said he is strongly opposed to it. The threat of a no-deal Brexit has left the UK’s IP associations working to draw solutions to benefit their members.

For patent attorneys, not much is likely to change under Brexit, with the exception of uncertainty that the long-mooted Unified Patent Court has brought in 2018.

For trademark attorneys, the reality of Brexit is a much more grim cross to bear. CITMA has been working to ease the minds of UK trademark attorneys and their clients.

Elsewhere, the atmosphere has been broadly impacted in Europe by the recent General Data Protection Regulation, while the EU’s Copyright Directive has ignited a blazing row on the continent.

Check out analysis of all this and more inside this issue of IPPro, which, as you might have noticed, has picked up a new lick of paint.

Barney Dixon Deputy editor IPPro

In this issue

AIPPI’s new executive director

Tools of the trade

Arno Hold has been appointed the new executive director of AIPPI, we caught up with him to find out about his vision for the association

Recent innovations have revealed new tools that can leverage AI and machine learning to increase efficiency at law firms.

One innovator, Herbert Patty, explains more

p16

p34

Brands that burn

Japan’s evolving IP landscape

Can Campinos break the curse?

Burberry has recently come under fire for admitting that it is destroying its unsold products. But do the ends justify the means?

With China knocking at the door, can Japan ensure a competitive landscape for a prosperous future?

New EPO president António Campinos has inherited an impressive and troubled establishment in need of a guiding light

p18

p32

Brexit Implications

IP Portfolios

Self-healing Materials

Nathalie Dreyfus discusses the implications of the impending Brexit on IP rights

Peter Vanderheyden explains how evidence of use can be used in monetising your IP portfolio

Humanaaz Khan gives an overview of the exciting new field of selfhealing materials

Brazilian Trademarks

Smart Data

China Trademarks

Professionals from Luiz Leonardos & Advogados explain general considerations on trademark and industrial design protection in Brazil

Doris Spielthenner of CPA Global explores how you can easily obtain significant data insights about technology giants

Peng Gong of TrademarkNow runs through his recent analysis of Chinese trademark applications, revealing some interesting trends

p22

4

p20

IPPro

p36

p24

p40

p26

p44

Penetrate the pool of patent information with PatBase Speed up your research with access to 106 patenting jurisdictions on one platform.

• Search global patents intuitively and comprehensively • Explore the landscape and turn data into intelligence with integrated Analytics V2 • Monitor competitor’s patents with the comprehensive Legal Status Viewer • Identify potential licensing opportunities with Citation Explorer Visit www.minesoft.com for more information.

Minesoft offices worldwide: USA: +1 703 931 1597 UK: +44 (0)20 8404 0651 Germany: +49 (0) 211 7495 0930 Japan: +81 3 54039191

Domains · Latest News Domain name registration boom continues, according to Verisign report Almost 400 million domain names were registered across all top-level domains (TLDs) in Q2 2018, according to a Verisign report.

Verisign’s Domain Name Industry Brief showed that there has been an increase of six million (1.8 percent) domain registrations compared to the first quarter for the year.

Domain registrations have grown overall by 2.4 percent, yearover-year.

Total country-code TLD domain name registrations also saw an increase of 2.4 percent compared to first quarter figures.

Instagram dominated the .com and .net domains that redirected users to social media sites with a whopping 61 percent of redirects, Etsy only receiving 12 percent in second place.

The top trending keyword for both .com and .net is ‘bet’, with the plural ‘bets’ taking place third for .com and seventh for .net, respectively.

Pen and hemp are the second trending keywords in Q2.

China’s .cn remains top of the most registered Internationalised Domain Name, with .tk of Tokelau remaining in second.

AIPPI appoints Hold as executive director The International Association for the Protection of Intellectual Property (AIPPI) has appointed Arno Hold as executive director.

Hold was selected from a host of candidates for his experience in the research, development and management of international IP policy and education, having previously served as a member of the president’s board at the University of St. Gallen, amongst other roles at various academic and governmental organisations.

Hold was officially appointed at AIPPI’s General Secretariat in Zurich on 27 August. He will begin his duties at the AIPPI World Congress, held in Cancun in September.

Commenting on the move, AIPPI president Hao Ma said: “We are confident that Arno Hold’s expertise and experience will greatly assist AIPPI in pursuing its core objective of improving and promoting IP, through its influence with national and regional legislative bodies, IP offices and courts.”

“We look forward to working with Hold for the benefit of all AIPPI members and the association.”

Hold added: “I consider it a great privilege to serve one of the world’s leading international non-governmental organisations dedicated to the development and improvement of legal regimes for IP protection.”

6

IPPro

“I am impressed by the professionalism and dedication of the management team and the association, in particular as the leadership mainly consists of highly engaged volunteers, and look forward to being a part of AIPPI.”

Domains · Latest News US, UK and Germany are top piracy streaming hotspots The US, UK and Germany have been identified as the most prolific live streaming piracy hotspots based on average monthly unique visits, according to a new report from Irdeto.

The majority of the traffic came from the US, which saw 2,934,000 visits during Q1 2018, whilst there were 1,714,000 in the UK and 1,519,000 in Germany.

The Global Consumer Piracy Threat Report attributed the rising popularity of live streaming piracy to the “proliferation of high-speed broadband services”, which encourages pirates to develop “professional looking linking sites” to skirt rights holders.

The report also highlighted the continual prominence of peer-to-peer (P2P) piracy in the distribution of unlawful content. Between January 2017 and May 2018, Irdeto tracked over 800 million monthly downloads. During this monitored period, the US saw 1.71 billion P2P downloads, compared to 1.64 billion and 1.17 billion downloads in Russia and Brazil, respectively.

Last week, Irdeto revealed that illegal high quality video used for streaming is often sourced from P2P websites. Additionally, the report detailed the threat of the so-called Dark Web, which has arisen from the interlinked threats of piracy and cyber crime. The marketplace, which offers the sale of illegal or stolen goods and services, enables the sale of account credentials for various pay TV and video on demand over-thetop content services.

Access to the Dark Web is difficult because of the steps taken by online pirates to conceal it from law enforcement. Most transactions are completed using cryptocurrencies to prevent the tracking of the money flow.

The report emphasises the growing issue of the illicit streaming device (ISD) market, which promotes the sale of plug-and-play devices like Kodi through advertisements on e-commerce sites.

Irdeto identified that ISD advertisements noticeably increased around high-profile sporting events, such as the Anthony Joshua v Joseph Parker fight in April 2018, which saw the number of adverts for ISDs rise to 180 across various e-commerce sites. During 2018, Irdeto has successfully removed around 7,000 advertisements for plug-in boxes across 60 domains.

The report concluded by encouraging “consumer vigilance” against piracy to protect private data and rights holders.

7

IPPro

Dentons recruits Bety Javidzad Dentons has appointed Bety Javidzad as partner in its litigation and dispute resolution practice.

As an experienced intellectual property lawyer, Javidzad is expected to strengthen Dentons’ litigation, class actions, venture technology and emerging growth companies capabilities.

Javidzad specialises in matters such as breach of contract, unfair competition and false advertising across a range of industries, including blockchain, retail, advertising and digital media.

The litigation and dispute resolution practice focuses on advanced disputes in regulatory agencies, arbitration tribunals, and federal and state courts across the US. Mike McNamara, US CEO of commented: “We’re delighted that Bety Javidzad has come to Dentons.”

“She is a high-calibre lawyer with a tremendous reputation in the business and legal communities. Her advertising and class action background, in addition to her focus on emerging trends and technologies, will be of great value to many of our clients.”

Trademarks · Latest News In-N-Out demands In-N-Stout cease and desist In-N-Out Burgers has demanded that Seven Stills Brewery and Distillery refrain from selling its “In-N-Stout” beer.

In a pun filled letter sent to Seven Stills, In-N-Out explained that In-N-Stout was a substantially similar brand name to In-NOut, and that its beer label contained In-N-Out’s logo of palm trees and arrows.

In-N-Out emphasised the company’s efforts to protect their trademark to avoid creating “confusion in the marketplace” amongst consumers, who may be unsure as to the origin, sponsorship or affiliation of the beer in relation to the In-N-Out official trademark.

The letter said: “Please understand that use of our trademarks by third parties ales us to the extent that this could cause confusion in the marketplace

or prevent us from protecting our trademarks in the future.”

“We hope you appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this.”

“We request that you refrain from further use of In-N-Out’s trademarks by not selling or promoting items featuring our marks from your website and social media pages.”

The cease and desist document was posted on Seven Stills’ social media, which appeared to be compromising, rather than hostile.

The letter received online attention for containing several beer-related puns, demonstrating In-N-Out’s “good spirits”.

Goodwin hires Darryl Woo as partner in IP practice Woo is a veteran trial lawyer in the technology industry and focuses his practice on patent, trade secret and complex technology litigation.

Woo has seen a number of notable cases, including a victory representing the original Napster in a major intellectual property litigation.

Douglas Kline, chair of Goodwin’s intellectual property practice, commented: “Darryl Woo has an outstanding reputation as a leading lawyer who litigates and tries complex technology disputes.”

“He joins fellow Goodwin first chair trial lawyers Brett Schuman and Neel Chatterjee in the Bay Area, where we have established a strong foothold and built exciting momentum that continues to attract premier clients and cases. We are excited to welcome Woo to the Goodwin partnership.”

Woo added: “I am thrilled to be joining Goodwin’s IP litigation team in Northern California.”

“Together with Schuman and Chatterjee, and now as three first chair trial lawyers under one roof in the Bay Area, I look forward to bringing our combined experience and expertise for the benefit of our current and future clients.”

8

IPPro

Copyright · Latest News Inside Out copyright case appeal hits Ninth Circuit A company that focuses on the social and emotional development of children has filed an appeal in a copyright infringement dispute with Disney over its film Inside Out. Inside Out focuses on a young girl who is controlled by five emotions in her head, which have to work together to keep her emotional wellbeing in check during her family’s move to San Francisco.

According to Denise Daniels and The Moodsters Company, this idea and the film’s themes were stolen by Disney.

Anger’s head exploding when furious. Daniels and Moodsters claim this is replicated in Inside Out. Daniels and Moodsters sued Disney in 2017, but the complaint was dismissed by the US District Court for the Central District of California.

On appeal to the US Court of Appeals for the Ninth Circuit, Daniels and Moodsters, represented by Robins Kaplan, said that the preservation of the ruling could “discourage investment in start-ups ... and reduce creative works passing to the public”.

Daniels and Moodsters claim to have pitched a similar idea to Disney, as well as other production companies like Nickelodeon prior to the film’s production.

It said that the district court’s decision would “serve as a dangerous precedent”.

Each Moodsters character represents a single emotion matched by a core body colour. Happiness, Sadness, and Anger were yellow, blue and green respectively. On top of this, each character had “individually expressive traits” such as

The company said that the district court had erred by deciding the “fact-intensive” copyright issue on the pleadings, instead of assessing plausibility, as well as applying a heightened standard.

+33 (0) 1 84 17 45 32 contact@ipzen.com www.ipzen.com

Case Management Manage files online Track activities Attach documents Share Information

Trademark Management

Domain Name Management Manage your domain names online Track deadlines Sort domain names by category Check availability online

Watch Services

Access your portfolios online

Trademarks

Automatically calculate deadlines

Domain names

Integrate trademark data easily

Social media

Deadline Tracking View all deadlines in a snap Select people and delegate task

Integrated Invoicing Generate invoices directly from your files Consolidate files into a invoice Track payments

YOUR IP SOFTWARE SOLUTION IN THE CLOUD

10 IPPro

Corporate Brand Services

Corporate Brand Services Everything you need in a brand proteccon partner Domain Name Portfolio Management

Monitoring & Enforcement Services

Registraaon & consolidaaon Renewal management Porrolio review Privacy, proxy and trustee soluuons New TLD launches

Domain & trademark monitoring UDRP/URS Cease & Desist leeers DMCA take-downs Case research and invessgaaon

Domain Acquisition Services

Security & Tools

Professional and discreet Experienced and knowledgeable negooators Assessment and valuaaon services Escrow and clearing services

Proteccon with mull-layered security 2-factor authenncaaon Private Registraaon Registry locks DNSSEC

US 877.983.6624 Int ++1 760.444.8674 www.101domain.services

Copyright Š 1999 - 2018 By 101domain GRS Limited.

Copyright · Latest News Conan the Barbarian creators awarded $21,000 in copyright dispute The owners of Conan the Barbarian have been awarded a total of $21,000 in statutory damages following a copyright infringement lawsuit at the US District Court for the Eastern District of New York.

Conan Properties International (CPI) and Robert E. Howard Properties (REH) both own copyrights and trademarks in a series of pulp fiction novels, comic books and graphic novels written by Robert Howard during the 1930s.

CPI and REH accused defendant Ricardo Jové Sanchez of heavily manufacturing, displaying, and selling various miniature sculptures that resembled trademarked characters from the novels, comics and graphic novels, over Facebook and Kickstarter for a three year period. This included the characters Conan the Barbarian, which CPI owns the rights to, as well as Kull, Ironhand, Bran Mak Morn, Dark Agnes, Solomon Kane and El Borak, which REH owns the rights to.

The marketed price of the disputed figurines ranged from €27 (approximately $31) to €10,000 (approximately $11,425).

CPI and REH initially submitted a takedown request to Kickstarter, referencing their copyrights under the Digital Millennium Copyright Act. After Sanchez filed a counter-notice to ensure the products remained for commercial sale, CPI and REH filed a copyright infringement lawsuit, seeking a permanent injunction and $70,000 in damages.

The court referred the motion to magistrate judge Roanne Mann, who found liability as to three of the characters (Kull, El Borak and Solomon Kane).

The remainder could not be proved to be “sufficiently original or distinct to warrant copyright protection”, despite the evidential provision of almost 100 literary works, listed by name and copyright number, from CPI and REH. This evidence

12 IPPro

was “disregarded” by the magistrate judge on the basis that the US Copyright Office does not separately register characters, meaning CPI and REH would have to assert copyright ownership by providing detailed descriptions of the characters’ “metes and bounds”.

Failure to do so resulted in Mann finding CPI and REH’s copyrights claims to be “invalid”, as the characters were not “sufficiently delineated” to merit copyright protection.

Mann denied injunctive relief, arguing that CPI and REH had failed to prove evidence of “irreparable harm”. The magistrate judge also recommended an award of $3,000 in statutory damages per character, in consideration of Sanchez as an individual artist with a small operation.

Both CPI and REH objected to the magistrate judge’s recommendations, claiming that Mann had “ignored the willfulness” of the infringement, noting that statutory damages normally range from $750 to $30,000 per work, reaching up to $150,000 per work when willfulness is proved. When reaching its final judgement, the New York court upheld Mann’s decision concerning the three disputed characters, but modified the rulings to find liability based on the four remaining characters The court adopted the magistrate judge’s valuation of statutory damages at $3,000 per character. CPI will receive $3,000, while REH will be paid $18,000.

Owing to the “strong threat of continuing infringement” indicated by Sanchez’s counter-notice, the court found injunctive relief to be “appropriate”, permanently enjoining Sanchez from unlawful manufacture, sale and public display of characters that infringe on CPI and REH’s respective trademarks.

L EGACY

IP Chambers

Experienced ARIPO and Zimbawe IP Experts Address:

No. 1 Wegot Court, Third Street/ H. Chitepo Ave, Harare, Zimbabwe

Phone:

+263 775 053 007

email:

henripasi@gmail.com

Patents · Latest News EPO staff committees reveal three pillars for dialogue with Campinos The European Patent Office’s (EPO) Local Staff Committees of Munich and Berlin have outlined three key pillars as a starting point for dialogue with new EPO president António Campinos.

In a post by the committees, three pillars, covering work, social, and legal issues were discussed, with a view to bring “further topics” in the future.

On the first pillar, work, the committees said that “challenging people” represents one of the main strategies of the EPO management to increase productivity and motivate staff, but that this strategy “incited EPO managers to develop a broadly negative perception of their staff and vice-versa.

It contributed to a strong production increase at the cost of open collaboration, discussion culture, trust and patent quality.”

14 IPPro

The committees said that current production targets were the “wrong incentives” and threaten patent quality.

In its place, the committees suggest a “transparent reward process with clear rules for step/bonus/promotion assignment.

There is also a need for discussing complements to and modifications of the employment framework for the younger EPO staff.”

On the legal pillar, the committees suggest the “introduction of a procedure allowing the termination of cooperation between the International Labour Organisation and the EPO”.

Finally, on the social aspects, the committees said that the dialogue between the social partners at the EPO has hit a “historical low” and an urgent “fresh start” is needed. They suggest a European Social Charter be introduced into the preamble of the EPO service regulations.

Patents · Latest News

NAFTA without IP consideration is ‘not a better deal’ warns IPI president If the new North American Free Trade Agreement (NAFTA) doesn’t improve intellectual property protections, then it’s not a better deal, according to the Institute for Policy Innovation (IPI).

IPI’s warning came as US president Donald Trump claimed that he had struck a “really good” deal with Mexico, despite threatening to pull out of NAFTA on several previous occasions.

Trump said that the deal should be renamed the USMexico Trade Agreement to remove the “bad connotation” of the name NAFTA. In a blog post, IPI president Tom Giovanetti said that the president is “not wrong that NAFTA can and should be improved” but that negotiators must insist on stronger IP protection.

Failure to improve on IP protection will be a “missed opportunity and a failure to deliver on a key campaign promise” Giovanetti warned.

He wrote: “Today, the US is a creators’ economy: we patent new inventions, copyright new creative works, and trademark strong new brands. These industries, identified as the ‘IPintensive’ industries by the US Commerce Department, are

responsible for nearly one-third of all U.S. jobs and for more than 38.2 percent of US gross domestic product.

Giovanetti highlighted that IP-intensive industries make up for 18.2 percent of all employment in the US, which equates to 27.9 million jobs.

He noted key points that need to be implemented in any new NAFTA agreement, such as Mexico implementing the World IP Organisation Internet Treaties and other basic copyright protections.

Giovanetti also took aim at Canada, which has been reluctant to sign a new deal with the US and Mexico over fears it will be bad for the country.

Giovanetti said that Canada should not be allowed to continue to undermine the patents of US companies, that both Mexico and Canada should step up to bear more of the cost of the pharmaceutical innovation that they enjoy, and there should be more transparency in government pricing decisions.

He added: “When NAFTA came into effect, the US economy was already more dependent on innovation than upon traditional manufacturing. And in the 25 years since, that trend has only continued. Revisiting NAFTA provides an opportunity to materially improve the agreement for all parties involved,

Huawei to pay $10.6 million in Optis dispute A Texas jury has awarded Optis Wireless Technology $10.6 million in its patent dispute with Huawei.

The dispute, which took place at the US District Court for the Eastern District of Texas, centred around five wireless and video patents that were previously owned

by Ericsson and Panasonic.

Four of the infringed patents are essential to the 4G LTE standard, while the fifth relates to the implementation of the H. 264 video coding standard.

15 IPPro

The jury unanimously agreed that Huawei had willfully infringed the five patents and failed to provide evidence that the patents were invalid.

Ted Stevenson, principal at McKool Smith and lead trial counsel for Optis, said that the patent management company was “pleased with the verdict”.

Huawei said it was “analysing the jury’s verdict and evaluating its legal options ... Huawei continues to believe in the merits of its defense to the allegations made by PanOptis.”

Arno Hold · Interview

AIPPI’s new executive director Arno Hold, recently appointed executive director of AIPPI, shares his hopes for the new role and discusses what the future holds for the assocation Congratulations on your appointment, what attracted you to the role?

I consider it a privilege to work for one of the world’s leading international non-governmental organisations dedicated to the development and promotion of intellectual property protection.

With over 9,000 members from more than 100 countries, the International Association for the Protection of Intellectual Property (AIPPI) is a truly global non-profit organisation that serves as a politically neutral forum for discussion as well as an international resource for information, opinion and advice about existing and proposed IP laws. The executive director role caught my interest as it allows me to apply both my interdisciplinary background in IP protection and my experience in international multi-stakeholder management.

What do you hope to bring to the role and to AIPPI? I will closely coordinate with various AIPPI bodies to implement AIPPI’s strategy and policy decisions. Secondly, I will further develop AIPPI’s relations with external partners in the IP world. This includes international and regional IP organisations such as the World Intellectual Property Organisation, the World Trade Organisation and the European Patent Office, but also national Intellectual Property Offices, trade and business organisations as well as non-governmental organisations dedicated to IP protection. Furthermore, I will play a part in supporting AIPPI’s over 60 national and regional groups around the globe. I am also expected to provide support in the further development of AIPPI’s study and development programme.

recruiting young members and members from the industry.

The general secretariat will coordinate closely with our national and regional groups to apply state-of-the-art communications and marketing tools. AIPPI will further strengthen its external relations in order to raise awareness and increase the visibility of its work. Finally, the annual AIPPI World Congress presents a unique networking opportunity for both AIPPI members and prospective members.

What does the future hold for AIPPI and for IP protection as a whole?

Rapid technological breakthroughs such as artificial intelligence, big data, blockchain, 3D printing, nanotechnology, robotics, quantum computing, and biotechnology will dramatically change the global socio-economic environment.

These changes will have a radical impact on the existing IP landscape and will pose major challenges for the development, harmonisation and enforcement of IP rights. Within this highly dynamic context, AIPPI strives to remain a body of IP professionals to which inter-governmental organisations, government organisations, intellectual property offices, relevant trade and business organizations and other nongovernment organisations, invariably turn for expertise, guidance and support.

16 IPPro

Arno Hold

One of the key tasks will be the implementation of the Strategic Plan for 2017 to 2020, which includes the continuous improvement of the quality and impact of AIPPI’s annual work programmes as well as an increase in the level and quality of member services. Moreover, AIPPI strives to pursue a targeted membership growth, with a particular focus on

Executive director AIPPI

Under your stewardship, what do you hope to change at AIPPI?

Brand Protection · Feature

Brands that burn When it comes to protecting against counterfeits, brands must do what is in the best interests for themselves and the consumer. But at what point do the ends no longer justify the means?

Ben Wodecki reports British luxury fashion house Burberry recently came under fire for admitting that it is destroying its unsold products to “protect its intellectual property”.

A spokesperson for the brand said: “Burberry has careful processes in place to minimise the amount of excess stock it produces.”

“On the occasions when disposal of products is necessary, we do so in a responsible manner and we continue to seek ways to reduce and revalue our waste.”

The spokesperson said that this was a “core part” of Burberry’s responsibility strategy to 2022 and that it has formed partnerships and committed support to achieve its goals.

An example of one of these partnerships is Burberry’s agreement with the Ellen MacArthur Foundation’s Make Fashion Circular Initiative, where it says it aims to “join other leading organisations to work towards a circular fashion economy”.

genuine products into the market at discounted prices “it will devalue commercial attraction for customers and reduce the brand’s impact and status within the marketplace”.

Don Pennant, a trademark attorney at Wynne Jones IP, agrees, saying that it could “damage their reputation and cheapen the brand”.

A cheaper price would provide opportunities for counterfeiters to pass off their products easily, as cheaper prices are not necessarily a red flag for customers seeking genuine goods, according to Crampton.

He says: “The reduction could act as a mask to hide behind brand protection monitoring.”

Other than burning excess products, what else can brands do to protect their intellectual property from counterfeiters?

According to Pennant, brands utilise trademark protection to prevent infringement by counterfeiters both at home and abroad.

Brands like Burberry have every right to decide what they do with their products. But some of its items retail for as much as £5,000, leaving some critics to wonder if destruction of these items is really worth it.

Pennant said: “This can include trademark registration with customs and excise, design right protection, patent protection, and copyright protection. They will generally assess what aspect of their brand they are trying to protect when choosing which type of IP to use.”

Why do brands make the decision to destroy excess products? Antony Crampton, compliance and investigations director at CJCH Consulting, believes that if brands allow

Crampton points to a structured investigation strategy of compiling a comprehensive intelligence picture that identifies where, and by whom, such goods are being produced and

18 IPPro

Brand Protection · Feature

then taking disruptive action as a method that brands can utilise to protect itself and its products from counterfeiters.

However, he adds that any form of structured investigation strategy would “often require a law enforcement involvement at some point as this aspect will invariably be operated by organised crime groups”.

Crampton sees this method as a more viable option for brand owners whose products are mass produced and readily available. Examples he highlights are those in the tobacco, cosmetic and perfume, and pharmaceutical industries.

“Public health risk is also a factor for tackling the source of production”, he said.

A second method that brands could adopt to counter the counterfeiters is to “proactively identify the presence of suspected counterfeit goods, verify that they are illicit and undertake the removal, or prevention, of access to point of sale”, according to Crampton.

“Many brands will have either an in-house protection capability or outsource to specialist service providers.”

Pennant said that it is a possibility that such products could be given to those less fortunate through charities. However, from a brand owners perspective this isn’t an option due to “the potential impact on the brand’s reputation and the increased risk of being linked to counterfeit alternatives”.

Crampton echoed this, saying that “initial ethical thoughts would suggest this would be a logical step”.

19 IPPro

“However, the process would have to mitigate the risks to the brand’s reputation and also from counterfeiters as previously discussed.”

Environmental concerns are also abound. In its statement, Burberry explained that it wants to “seek ways to reduce and revalue our waste”.

Crampton believes that brands will discuss this before burning their stock, “particularly as all areas of business, not just fashion, are now taking a firmer stance on their potential environmental impact, and looking to minimise their overall waste and emissions”.

Pennant agrees, and adds that brands should be “increasingly mindful” of how they dispose of their goods. He points to recent news of the “consequences of rises to global temperatures” to highlight that brands are taking steps in the right direction.

Crampton suggests that companies should “ensure that any destruction of goods is conducted in an ecological and environmentally acceptable manner. This will then ensure their brand is protected without unnecessarily damaging the environment in the process.”

Whether it be burning products, or tackling the problem at its source, one thing is certain: brands must make complex decisions in order to protect their customers and IP. However, in a world where poverty and climate change are ever-present and growing issues, one might wonder whether consequentialism can exist parallel to modern ethics.

Japan · Country Profile

The evolving landscape of the Japanese IP system Despite a recent downward trend in terms of patent applications, Japan’s IP system is on the up. But with China knocking at the door, it is now more important than ever to ensure a competitive landscape for a prosperous future Rebecca Delaney reports The IP landscape of Japan has experienced a downturn in patent applications since 2006, but may finally be witnessing an uptick, with 318,479 patent filings in 2017 that could revitalise its IP system.

According to Satoshi Watanabe, a patent attorney at Shobayashi International, the past decline in patent applications can be attributed to the new patent filing strategy of Japanese companies, which prioritises quality over quantity.

Recently, Japan has seen a positive rise quantity in filings abroad, with a 6.6 percent increase in patent cooperation treaty (PCT) applications between 2016 and 2017. This rise demonstrates that Japanese companies are focusing on foreign, rather than domestic, patent filings. Domestically, 80 percent of patent applications filed at the Japanese Patent Office (JPO) are filed by Japanese companies.

Watanabe says that Japanese companies are “allocating their limited budgets to foreign patent filings, mainly to the US, China and Europe”.

Of applications filed by foreign companies in Japan, 76.5 percent of the total 58,189 filings in 2017 were from the US and Europe. Applications from China have recently been on an upward trend with 4,172 filings in 2017, a 9.5 percent increase from 2016.

Chinese applications only make up 7.2 percent of the total.

Generally, trademark applications from foreign countries are on an “upward trend”, experiencing a 26.8 percent increase to 36,159 filings in 2017.

Watanabe also identifies that Japan has recently been focusing on the “utilisation of patents”, such as open innovation to licence patents of large enterprises to small or medium businesses, and the use of patent data for IP landscape analysis.

20 IPPro

Takanori Abe, founder and managing partner of Abe and Partners, views Japan’s current IP landscape as a product of official national and international guidelines.

Abe highlights the Grand Panel of the IP High Court’s ruling on 20 January 2017, which established new criteria on the scope of extended patent rights to cover the product identified by ingredients, quantity, dosage, administration, effectiveness and efficacy, as well as the products that are “substantially identical” to it, which are distinguished to be patented inventions featuring similar active ingredients or quantitatively meaningless differences. It is predicted that this High Court ruling will cause an increase in the number of Japanese lawsuits associated with patent term extension.

Japan is one of the countries that allows IP judges to grant doctrine of equivalents, a statute that allows a court to hold defendants liable for patent infringement even if the disputed product or process does not fall in the category of the literal scope of a patent claim.

New guidelines published by JPO on 5 June 2018 aim to “promote transparency and predictability” of standard essential patents (SEPs) to ensure early resolvement of disputes, particularly concerning the rising number of disputes between telecommunication companies and industry as a result of the growing remote internet ecosystem.

The guidelines include royalty calculation methods and optimal practices for licensing negotiation methods, such as efficiency and integrity.

Another problem facing the IP landscape in Japan is its court system. In comparison to other developed countries, Japan is viewed to have “fewer litigation cases, lower plaintiff’s winning rate and smaller damages”, which has had a detrimental effect by causing more foreign patent applicants to reduce investment in favour of Japan’s competitors, exacerbating the declining Japanese market.

Japan · Country Profile Japan’s lower damage amount emphasises the need for government reform in order to “achieve an appropriate damage amount reflecting the reality and the needs of the business”. However, Abe recognises that this proposal will continue to be discussed for some time to allow the maintenance of equability within other areas of law.

Government proposals for reform also include the need to adopt “appropriate and fair evidence collection measures”, since the Japanese IP system makes it difficult for patent rights holders to prove the methodology of the accused infringer.

Abe adds that “the concrete idea was to introduce an inspection system similar to the German system”, such as an inspection system, has not yet been introduced in Japan owing to industry concern over trade secret protection.

The IP landscape in Japan may also be altered in the future with plans to establish an arbitration centre for international IP disputes in Tokyo in September 2018.

This planned venture will be the first of its kind in Asia, focusing on SEP disputes in particular. Potential arbitrators include “famous specialists”, such as former US judge Randall Rader of the US Court of Appeals for the Federal Circuit.

The Japanese IP system can expect an expanded definition of ‘design’ in design law as the government examines the possibility of widening the scope of design protection and projection to cover spatial design, interior and exterior design, and topographical depictions.

Watanabe reveals that there has been discussions to strengthen Japanese companies’ competitiveness with an amendment to design protection law to “address increasingly diverse ways of design under development of technologies”.

Furthermore, the Japanese government is supporting the advancement of an artificial intelligence system for JPO operations, as well as initiating the “study [of] a blockchain system for contents management” in order to support domestic contents businesses.

It is Abe’s belief that Japan’s efforts at IP reform are an attempt to transform the global perception of the Japanese IP system from “weak” to efficient. He observes that China, Korea,

and Taiwan are establishing specialised IP courts after Japan had established an IP High Court in 2005 which was a start of establishment of a strong IP system.

However, Watanabe acknowledges that the “great leap” of the Chinese IP system to second place in the markets regarding the number of PCT applications has caused problems for Japan.

Over 90 percent of Japanese import suspension cases come from China, chiefly counterfeit goods and technology leaks.

On top of this, Chinese companies are “actively seeking opportunities” to acquire “Japanese technologies, patents, companies, and engineers”, says Watanabe.

Abe is optimistic that Japanese IP will prosper in the future, describing the system as good for the patentee when compared to the US, especially considering the decision in Alice v CLS Bank.

He expressed his hope for foreign companies to “understand the latest changes in Japan, and that Japan is a good jurisdiction to pursue their patent when facing competitors”.

Watanabe recommends the “high quality services” of JPO and patent prosecution highway to ensure the efficient construction of a global patent portfolio, particularly when filing patent applications for business-related inventions.

Watanabe concluded: “I hope that Japan will become an attractive country worth investing in.”

Know your rights Nathalie Dreyfus discusses the implications of Brexit on intellectual property rights The UK leaving the European Union has naturally raised a number of unfamiliar questions. The consequences of Brexit are particularly strong in terms of European law. In this respect, the UK will have to re-integrate the rules of international private law into its internal organisation. For example, the regulations will no longer apply directly. On the other hand, the implemented legislation of the various European directives will remain applicable in the UK as long as they continue to be in force. Such changes have considerable consequences on the protection of intellectual property rights, to the extent that certain titles are directly subject to European legislation, such as the EU trademarks governed by European regulation 2015/2424.

To prepare this legal transition, on 28 February 2018 the European Commission published the 119-page ‘European Commission Draft Withdrawal Agreement’. This agreement aims to summarise the last cycle of negotiations on Brexit in various area of law including IP. The negotiating teams of the UK and the EU aim to finalise the entire agreement by the end of October this year.

An overview of the consequences of Brexit on the difference between IP rights is, therefore, a necessity.

EU trademarks The “European Commission Draft Withdrawal Agreement” provides, in particular, that all EU trademarks registered before the end of the transition period should be automatically protected. The owner will, therefore, be entitled to an IP title that shall be comparable, registered and enforceable in the UK. For the trademarks simply applied for during the period of transition but not yet registered, an additional period of nine months starting from the end of the period of transition, or 31 December 2020, is allowed, to finalise the procedure.

22 IPPro

The new UK trademark will have the same dates of filing or priority as the European trademark it derives from. This right of priority allows the applicant six months to file the trademark in another member state without prior trademarks being enforced against them during this period (Article 50-5 (a) of the WA).

It is stipulated that the administrative or legal decisions, introduced before the end of the transition period, that is the 31 December 2020, which declare invalidity, forfeiture or revoke an EU trademark will have effect in the UK. By derogation, the UK is not obliged to declare invalidity or revoke the corresponding right in the UK where the grounds for invalidity or revocation of the EU trademark or Registered Community design do not apply in the UK (Article 50-3 WA).

Exhaustion of rights shall no longer be applicable in the UK. It shall be necessary to obtain the agreement of the holder of the rights for any use of the trademark on British territory as well as the agreement of the owner of the rights for introducing the goods on the territory of the EU Member States.

Major questions are still pending, in particular concerning the procedures for granting protection.

To allow for the transposition of rights, article 51 of the draft agreement proposes the transmission of all the information provided when an IP title is granted and necessary for its registration. This information should, in fact, be communicated to the competent instances in the UK by European Intellectual Property Office (EUIPO) and the European Commission. This will allow the owner to have an IP title in the UK without having to repeat the administrative procedures for registration.

Article 51 also proposed that this approach be free and not require proof of location in the UK. However, these provisions have not yet been accepted by the UK.

Brexit Implications · Feature

Brexit imposes the taking of all measures necessary to protect IP rights. Following these points which remain rather vague, it is still, therefore, safer, when registering a new EU trademark, to simultaneously file an application for a UK national trademark.

.eu domain names Brexit will also have consequences for “.eu” domain names.

The European Commission announced on 28 March that any holder of a domain name ending in “.eu” may not renew it without being established within the EU. The same naturally applies for all registrations of “.eu”. This measure shall be applicable in March 2019.

An announcement like this is not without consequences for the UK, which is the fourth largest registrant of “.eu” domain names, with 317,000 in 2017 (out of a total 3.7 million).

When they expire, these domain names, therefore, run the risk of being taken over by cybersquatters who will have the right to register these “.eu” domain names with no recourse possible for the British. Solutions to bypass this constraint have, however, been found by certain undertakings. They aim in particular at the creation of subsidiaries in one of the member states.

Patents The question of the European patent is much more straightforward. The European Patent Office (EPO) is not an EU body but an organisation governed by the European patent convention of 1973 bringing together the European member countries. Brexit will have, in this respect, no consequences on the UK’s membership of the EPO. To this extent, it shall still be possible to register European patents designating the UK. Similarly, the patents already registered will remain effective.

The European unitary patent, for its part, aims only at EU countries who are members. The aim is to offer inventors a simplified solution compared to the current system by conferring a patent with a unitary effect in the EU.

23 IPPro

This unitary patent and its court are, however, today only in the project stage and no final decisions have yet been taken on the subject.

However, the uncertainties related to Brexit concerning it have been removed since, on 26 April 2018, the UK ratified the agreement on the unified patent court. As a transition period is provided up to 31 December 2020 during which the UK undertakes to follow the legal and regulatory provisions of the EU, one would think that Great Britain will keep its status as Contracting Member of the Agreement on the UPC during this period and shall proceed to amend the text of the agreement in order to make the situation sustainable.

Copyright Copyright is the subject of a separate note from the European Commission. It is not concerned by the stipulated transition period. After the UK finally leaves the EU, on 30 March 2019, copyright will, therefore, be under the regime of the international agreements to which the UK is a party and in particular ADPIC—the agreement on IP rights related to commerce—which contains provisions on the subject of copyright and its exploitation.

Many questions have therefore been clarified regarding the protection of EU rights in the UK after Brexit. It nonetheless remains necessary to follow the progress of the points remaining vague in order to ensure optimal protection of our IP rights.

Founder Dreyfus

Furthermore, no agreement has been reached on appellations d’origine or geographic indications. On the other hand, a procedure similar to that of trademarks is allowed for in terms of European Designs.

In addition, the European unitary patent is accompanied by the introduction of a unified supranational court for the settling of disputes between inventors or undertakings. In this way, it will no longer be possible to contest the validity of a European patent before the national courts, which will create a harmonisation of the related decisions.

Nathalie Dreyfus

Similarly, the question of the transposition of the international registrations designating the EU in UK titles has not been settled. We are still awaiting special measures taken by the UK on this subject, according to the dispositions of article 52 of the draft agreement.

IP Portfolios · Feature

Crowdsourcing evidence of use and monetisation best practices Peter Vanderheyden of Article One Partners explains how evidence of use can be used in monetising your intellectual property portfolio The benefits of evidence of use in monetising your intellectual property portfolio are clear: generation of revenues, creation of a defensive portfolio, better economic decisions around fees management and abandonment and even competitive intelligence. However, creating and enacting an effective formalised strategy can be challenging. A 2016 study showed that firms across the board (small, medium and large) do not licence or utilise between 55 to 70 percent of their patent portfolio. Evidence of use itself is not a new or original process, but crowdsourcing the search to find demonstrable evidence of use is a novel twist that, over the last few years, has produced exciting results for our clients.

Clients repeatedly told us that they didn’t know where to begin or how to justify the initial expenses. It was out of one of these conversations that Article One Partners (AOP), now a member a proud member of RWS IP Services, created an alternative solution to overcome some of these initial hurdles: crowdsourcing the evidence of use process.

Here are the top five reasons why you should consider evidence of use.

Something different A crowdsourced evidence of use search differs from a traditional evidence of use search in one fundamental way: the search is performed by hundreds of people rather than just a few. We like to think of this crowd as ‘the Human Search Engine’. When incentivised by monetary reward, awarding only the best evidence of use mappings, our crowd tends to naturally self-select for the best researchers; those who perform well regularly stick around and continue participating and those who do not, drop off and work on other types of searches.

Since the patents are often posted in groups or batches, the patents/studies themselves are in competition with each other on our platform. Members of the crowd have limited time and the researchers who consistently perform well develop methodologies for quickly parsing the mappability of a patent to product literature by considering:

24 IPPro

�

have I seen this functionality?

�

can it be discovered in printed/published material?

�

what related resources are available to me?

Early in the development of our methodology, a client compared our evidence of use process with a traditional service offered by another firm. The traditional search resulted in a 7 percent successful map-rate while AOP’s process had about a 17 percent successful map-rate. Since then, and over a larger sample size, AOP’s successful map-rate has grown to more than 30 percent.

Get an independent assessment Having your portfolio vetted by an objective third-party is critical. Inventors often have a narrow view of their own inventions and might not understand the true market implications of their patents—we especially hear this all the time in feedback: “I never would have imagined that it might be used in that context”.

Even if you have an internal process to do this on some level, do not fall victim to your own paradigms. When errors, such as overlooking an important database or failing to recognise emerging markets, become systematic, they become harder to detect across your own data set as you normalise that error.

A good way of keeping a check on your methodologies is to occasionally test other services and compare them against your own; you may be surprised with what you find.

Keep current and focused on your end goal Avoid the pitfall of collecting and presenting too much information. The evidence that you are presenting should be also be factually persuasive. In speaking with our clients, they frequently state two things. First, that approaching the other side from a business perspective, rather than a purely legal or licensing approach, more often results in a favorable outcome.

Second, focusing on evidence of use provided by an unbiased third party (time stamped), can demonstrate the value for

IP Portfolios · Feature both parties at the table and quickly focus the discussion in a productive way.

is constrained by budget, but you can make better use of your budget by having a tiered approach to assessing your portfolio, starting with advice on prequalifying and ranking the patents in your portfolio.

Make sure the methodology is a fit If you do not have the means to act upon information like evidence of use or technology mappings, then even the best search or report in the world is not going to increase your bottom line. You must be prepared to act on the information you receive. A well-designed process for monetisation can help facilitate efficient action. It also provides the opportunity for inspection and improvement as you learn and discover new tools and services.

Prequalifying and ranking your portfolio allow you to better focus your efforts and get the most out of your results.

Identifying potential process and execution bottlenecks before you hit them can save you both time and money down the road.

Doing something is better than nothing In 2018, executive boards are focused on turning the patent department from a cost center to a profit center. You can either wait for a mandate or you can proactively develop and promote a strategy for monetisation internally.

If you have a robust and well-developed program, you should routinely test your process and service partners against those of others. If your monetisation program is less robust, you might consider working closely with a search partner, or search partners, who can not only provide the necessary information but also share anecdotal insights learned from other clients and conferences within the field.

Set clear and realistic goals with respect to budget and outcomes. This process is a marathon, not a one-time event or a sprint. Taking the lead in developing will help ensure that the requirement for a miracle event is not thrust upon you from above.

If you have volumes of patents to analyse and assess for potential sale, you will need someone with scalability and resources to do it both efficiently and effectively. Everyone

The hardest part of a journey is often taking the first step, the rest comes with time and experience.

2018

THE IP INDUSTRY’S PREMIER, MOST ENGAGING EVENT FILLED WITH INDUSTRY EXPERTS AND LEADERS FROM ALL CORNERS OF THE GLOBE  150+ ATTENDEES

 75% IN-HOUSE REPRESENTATION

 25+ COUNTRIES REPRESENTED

Join over 30+ Expert Speakers

Dr Changhae Park, Vice President, Intellectual Property Monetization, NXP Semiconductors

Mr Patrick Patnode, President of Licensing, GE Ventures

Mr Jerry Xia, Chief IP Counsel, Asia-Pacific, Honeywell International Inc

Dr Stephan Wolke, Head of Intellectual Property & Services, CEO, Thyssenkrupp AG | Thyssenkrupp Intellectual Property

Ms Claudia Tapia, Director IPR Policy, Ericsson

Mr Giovanni Visintini, Counsel - Brands BP Legal – Brands, BP Plc.

To find out more about this event please visit ipworldsummit.iqpc.com or email enquire@iqpc.co.uk To receive 25% off the current rate enter the code IPPRO25 25 IPPro

Self-healing Materials · Feature

A crack or a scratch Humanaaz Khan of Concur IP Consulting gives an overview on the exciting new field of self-healing materials A crack or a scratch in a car or a smartphone is frustrating, costly and requires extensive manual effort to get fixed.

In the case of drilling parts or pipelines used in refineries, inspection for damage is troublesome and if any crack exists, the whole pipeline needs to be removed and replaced with a new one.

To tackle these problems, scientists and researchers have been developing self-healing materials that mimic the way our skin repairs itself after a wound, cut or scratch.

Self-healing is a branch of smart coatings and advanced materials with huge market potential.

With the advancements in the smart materials, self-healing materials are expected to grow at a fast pace.

The key benefits of self-healing materials are as follows: ● Minimising the cost of repairing the damages ● Increasing the service life of the asset ● Reducing the inefficiency of the materials due to degradation There are two self-healing mechanisms: ● Intrinsic: the polymer itself is self-healing as it exploits the reversible nature of certain chemical bonds to incorporate healing abilities directly into the material.

Intrinsic systems require an external stimulus, such as, heat or light to trigger healing. Intrinsic self-healing coatings are not able to heal large cracks, which is a major drawback. Over the past decade, the number of self-healing polymers based on supramolecular interactions, which include non-covalent bonds such as hydrogen bonds, metallopolymers, ionomers, host–guest as well as π–π interactions has advanced immensely and some of them even approached a commercial status.

26 IPPro

● Extrinsic: in this case, the polymer matrix is not selfhealing, but the healing agents in the form of capsules and vesicles or channels are added in the matrix. When a crack occurs, healing agents are released to heal the cracks. These are of two types: capsule based system and vascular system. Capsules are finite and once they are depleted, the material can no longer mend itself. The major issue with this approach is that it works only once and cannot heal any further damages after the capsules are fractured and the curing agent is used. The ideal approach depends on the properties and final application, but multiple healing and pervasiveness issues associated with capsule-based polymer composites, which are limited to a single healing cycle, have caused researchers to increasingly look at vascular network structures.

This approach relies on hollow fibers or channels for distribution of healing agents into polymeric systems in a continuous pathway.

The below table illustrates characteristics of intrinsic, capsule based and vascular self-healing systems.

Innovation trends We conducted research to identify innovation trends in the self-healing technology based on patent filings. We identified patents relevant to the technology based on various technical keywords and patent classes, segmented the patents into various technical categories and analysed the entire dataset to derive various insights.

Our study revealed 1,513 unique inventions in the technology from 3,056 worldwide patent publications during the last 20 years. Pending applications account for over 60 percent of the total publications indicating recency of the technology and ongoing research and innovation efforts.

The US, China, and Japan have been the major source of innovations in the self-healing technology. China’s focus seems to be in the construction segment, while Japan is focusing on automotive and electronics segments along with

Self-healing Materials ¡ Feature construction segment. The US has diversified patent filings across the segments.

Many Chinese universities including Chinese Academy of Sciences, Tongji University, Sun Yat-sen University and Harbin Institute of Technology are among the prominent players in this technical area, while LG, IBM and Arkema are the top corporates active in the area.

The number of inventions in the self-healing technology (figure 1) have grown consistently over the last 10 years. A sharp surge in both the number of inventions and the number of publications is seen between 2014 and 2016. There is a large dip in 2017, but it is likely due to the inherent delay in the patent application getting published after filing.

Among the application areas, self-healing technology has been proven to be a boon to the construction industry and is expected to grow the highest. According to MarketWatch, the self-healing material market is expected to grow with a CAGR of approximately 7 percent from 2017 to 2023.

Construction industry has been the main focus of inventions in the self-healing technology with 32 percent of the inventions relating to this segment. According to Grand View Research, this segment had a market size of $25 million in 2016 and it is estimated to grow at a CAGR of 25.9 percent.

Automotive, biomedical and electronics segment have more than 10 percent each, of the total number of inventions.

Technical focus of patents We also conducted a technical analysis of self-healing technology patent portfolio. The technology categories have been identified and studied in detail from several different points of view as demonstrated below. The broad categories under which the entire patent portfolio has been categorised include self-healing mechanisms, hydrogels, properties and end applications. The chart below illustrates the distribution of unique inventions among the technology categories.

Most filing activity has taken place in capsule based selfhealing mechanism with application in construction industry.

Soft robotics is an emerging application area with scarce filing and has been explored mostly by universities.

Market activities Several companies have launched commercial products implementing self-healing technologies. Our study revealed over 15 companies selling various products in the market.

This includes NEI Corporation (polymer coatings, fiber reinforced epoxy composites), Nissan Motor (scratch shield paint for automobiles and smartphones), LG (G Flex’s back cover), 3M (Scotchgard™ Paint Protection Film for Automobiles), Suprapolix (adhesives, elastomeric materials, coatings, biomedical, cosmetics, 3D-printable materials), Autonomic Materials (coatings, adhesives and composites for alternative energy, industrial maintenance and machinery, military equipment, infrastructure, oil and gas machinery, (figure 1) Comparison of self-healing mechanisms

Capsule based system

Vascular system

Intrinsic

Healing agent

Yes

Yes

No

Multiple healing

No

Yes (as long as the healing agent supply is available)

Yes

healing volume

Limited by amount of agent

Broad if have enough supply

The opening or broken pieces needs to contact

Fabrication process

Complicated

Complicated

Simplest

Processability

No

No

Yes

Recyclability

No

No

Yes

Shape Limitation

Yes

Yes

No

27 IPPro

Self-healing Materials ¡ Feature (figure 2) Innovation timeline

450 400

No. of Publications

350

No. of Inventions

300 250 200 150 100 50 0 2006

2007

2008

2009

2010

2011

2012

2013

2014

2015

2016

2017

Earliest Filing Year

(figure 3) Total Inventions

Automotive 13% Aerospace 9% Electronics 11% Construction 32% Military 4% Biomedical 12% Textiles 7% Oil and gas 3% Sports 3% Soft Robotics 1% Marine 5%

28 IPPro

Self-healing Materials · Feature transportation, paints), and Covestro (coatings, adhesives, specialties). There have been significant collaboration and investment activities in the space over the last 10 years. Some of the major ones include:

led to the creation of a polyurethane in which reversible chemical bonds have been introduced. ● Chisso Corporation of Japan funded NEI Corporation’s effort to develop a new class of self-healing coatings for flat-panel displays and related markets.

● Solvay, Camino Real Capital Partners, Phoenix Venture Partners and Burwell Investments invested $3 million to accelerate commercialisation of Automatic Materials’ new self-healing technology.

● Canadian Space Agency awarded funding to MPB Communications for developing self-healing composite on either a micro satellite or the International Space Station. It has also collaborated with Concordia University and McGill University in developing this selfhealing material.

● IBM collaborated with Carbon Inc to make use of selfhealing and recyclable polymers developed by IBM in 3D printing technology of Carbon 3D to manufacture membranes for batteries or water-purification.

● Nissan collaborated with the University of Tokyo and Advanced Softmaterials in 2005 to develop self-healing paint. It also successfully licensed their breakthrough “scratch shield” paint to NTT DoCoMo in 2009 for mobile phone applications in Japan.

● Acciona Infraestructuras participated in the Healcon and Shine European projects to develop concrete and road surfaces capable of regenerating themselves. It involved 12 companies, universities and technology centers from different specialties in six European countries that has

(figure 4) Distribution of original inventions among technology companies Intrinsic

201

Capsule–based

346

Vascular

32

Hydrogels

102

To heal large cracks or healing volume

95

Tensile strength of polymer materials

195

Healing time

178

Healing efficiency

161

Simple fabrication process

147

Multiple healing

114

Automotive

211

Aerospace

148

Electronics

166

Construction

500

Military

64

Biomedical

184

Textiles Oil and gas

44

Sports

44

Soft Robotics Marine Application form-coating

29 IPPro

104

18 73 541

Self-healing Materials ¡ Feature

The self-healing material market is expected to grow with a compound annual growth rate of approximately 7 percent from 2017 to 2023 and reach $4.1 billion by 2025, according to a report by Grand View Research. Every year, numerous attempts are being made focusing on the development of different self-healing systems for large scale production with the best possible property-cost correlation. The current activity around this technology is likely to continue and generate more inventions. The growth of this technology is expected to accelerate further due to unique properties of the products yielding long-term financial benefits as compared to conventional materials available today in the market.

We believe that the patent filing trend will continue to see significant rise in the coming years touching new technical aspects of the self-healing technology and remain a prominent research area for scientists and developers around the globe.

Significant efforts are being made towards developing a fully autonomous intrinsic self-healing system capable of regaining its initial properties rapidly at ambient temperature with prolonged durability to overcome the disadvantage of holding the broken pieces of the sample together in direct contact or under pressure to fuse them together under a high temperature for several hours. Self-healing speed and multiple healing cycles are another key factor for practical application of this technology. Designing materials with high self-healing speed and multiple healing cycles without any external stimuli is highly preferred. Most of the academicians and corporate entities are striving towards building simple processing self-healing materials with multiple and rapid healing capabilities. Also, self-healing materials usually have poor mechanical properties, which limit their applications.

To improve the mechanical behaviors, the polymeric matrix is often adulterated with various compounds. There also exists a need for providing a coating on varied substrates to impart self-healing, antimicrobial and/or antifouling properties to the substrates at ambient temperature without external interventions. Construction has been and will remain the prominent application area owing to rising demand for highquality construction materials due to increase modernisation in infrastructure and buildings. Automotive, medical and electronics application areas are anticipated to witness a significant growth in the coming years based on their recent patenting activity, as it could extend the lifetime of lithium ion batteries used in consumer electronics and electric cars, and also improve biosensors used in the medical field and environmental monitoring. In future, these materials

30 IPPro

Despite the rapid advancement of this technological area, there are still many challenges that should be resolved for practical applications. Apart from several technical challenges discussed earlier in this report, such as, healing large cracks, tensile strength of polymer materials, healing time, healing efficiency, simple fabrication process and multiple healing, other challenges include storing of healing agents inside the material for a longer period, initiation of healing and that the healing agent should be strongly bound to the material and be stable with respect to the surrounding environment. One of the key challenges remains in scaling up the technology for mass production economically. Each of the three types of selfhealing mechanisms discussed in the report has advantages and limitations that come into play when considering practical applications. Technological innovations in this field have an incredible potential to make damage repair process more efficient, both in terms of cost of repairing the damage and human efforts required in fixing the damage.

Manager Concur IP Consulting

The road ahead

can be used in variety of application including soft robotics, space crafts, nuclear reactors, special cutting tools, turbine injectors, flexible electronics, artificial skins, biomimetic prostheses, and energy storage devices. Smart textiles with self-healing property is the most promising self-functioning ability of textiles, wherein a coating is introduced to protect the underlying textile substrate by sealing small holes and little tears and yet the challenges are to find the appropriate microcapsules for the specific application for example, water resistant micro-capsules for rain coats. Self-healing technology for oil and gas and marine sectors is highly desired and will have great impact in cost savings as a crack which happens often in geothermal well, costs approximately $1.5 million per well for repairing. So, if these materials become cost-effective enough to produce, they could be used in all kinds of applications and be part of our everyday lives. Being flexible and simple, intrinsic self-healing polymers can be used as printing materials for additive manufacturing and hence, brings lots of potential for future applications.

Humanaaz Khan

â—? Arkema collaborated with ESPCI Paris to commercialise its self-healing rubber based on the concept of supramolecular chemistry.

The new standard in global IP business intelligence

Filing Analytics – the IP business development tool you can’t afford to be without.

Grow your business and increase revenue Obtain new clients and improve client retention Get the leading edge over your competitors

Download your free law firm report at

filinganalytics.io

EPO Analysis · Feature

An office in turmoil: can Campinos break the curse?

Can the EPO’s new president bring about desperately needed change during his tenure?

Barney Dixon reports If you’ve been watching the European patent landscape recently, a debate is raging over quantity v quality of patents.

The European Patent Office (EPO) maintains that both quantity and quality of patents are up, with levels of user satisfaction for patent administration services at the EPO increasing to 89 percent in 2017 from 80 percent in 2015. However, a recent letter from four German law firms, Grünecker, Hoffmann Eitle, Maiwald, and Vossius & Partner, argued that the “incentive systems and internal directives [at the office] appear to be directed towards rewarding or even requesting rapid ‘termination’ of proceedings and a correspondingly higher productivity”.

It said that while the law firms do appreciate the increased speed, such “overreaching desire” for high productivity has led to a range of problems, including issues of quality, scope of protection, and inadequately assessed patents.

While it is now led by ex-EU IP Office (EUIPO) executive director, António Campinos, over the past eight years, the EPO has been helmed by Benoît Battistelli, a controversial figure who is credited with bringing in a record number of patent grants year-over-year. This feat was said to be down to efficiency measures brought in under his reign.

Battistelli was also instrumental in the creation and advancement of Europe’s long-mooted unitary patent system, which is yet to be implemented.

However, the immediate past president, whose tenure was extended by three years from its original five year term in 2014, has come under fire from those at the EPO, including the Staff Union of the EPO (SUEPO), which has waged war against what it says are unsafe working conditions.

Battistelli was accused of abusing staff rights at the office, including introducing proposals to scrap permanent

32 IPPro

employment contracts, and dismissing staff representatives against the demand of the EPO’s administrative council.

Over the years SUEPO has held various demonstrations challenging Battistelli and the disciplinary sanctions of several staff representatives and union officials. The demonstrations were banned early on, exacerbating Battistelli’s problems with the staff union.

Many of the sanctions placed on these staff representatives have since been overturned by the International Labour Organisation, which has reinstated several staff members, including high up SUEPO members Malika Weaver, Ion Brumme, and Elizabeth Hardon.

With insight from sources close to SUEPO, IPPro has covered many of these incidents.

Our sources say that Battistelli introduced a “reign of fear” at the office, with a “brutal human resources management style targeting in particular (but not limited) to the weakest among EPO staff”.

“One of the numerous obnoxious human resources policies that was implemented under Battistelli’s mandates was abusively / euphemistically labelled ‘dealing with challenging people.

With such brutal human resources management methods, fear spread rapidly among staff, each day a little more, like a virus. At some point, everyone feared to be accused of having committed any kind of (non-existing) wrongdoing and then fear to be abusively sentenced for it.”

This, our sources explain, is coupled with “far too high production targets” which “obviously deteriorates the quality of products delivered as the four major German law firms rightly pointed out recently”.

This worry about production targets is not limited just to SUEPO members (the largest union with a membership rate of close to 50 percent of the entire EPO workforce), and in March,

EPO Analysis · Feature

nearly 1,000 EPO examiners signed a petition to warn the office’s administrative council that the quality of patents at the EPO is “endangered by the demands of current management”.

The petition read: “We, examiners of the EPO, are submitted to constraints that are no longer compatible with fulfilling appropriately our duties within the search and examination divisions. We are far too often put in front of the dilemma of either working according to the European Patent Convention and respecting the examiner’s guidelines, or issuing ‘products’ as our hierarchy demands.”

SUEPO claims that these working conditions have lead to psycho social risks for staff, and evidences this with an office wide survey in 2016, which spoke to 2,649 employees out of the 6,770 employees at the office. Some 58 percent of these staff perceived a negative impact of the work on their health. This study is available in full at suepo.org/ documents/43311/54961.pdf.

Battistelli may be gone, but our source believes that his shadow has yet to dissipate. When Campinos came into power, he said that staff engagement would be among his “top priorities”. He initially sent a message to all staff members in his capacity as president to let them know of this, and welcome their ideas on any changes the might be considered at the office. He explained that their input would be “vital” and that he would present a strategic plan to the Administrative Council in June 2019.

Campinos said that “staff input” would play a major role in the development of the strategic plan, but said he recognised that the EPO has “many stakeholders”.

Our sources say that nothing has “changed concretly” since Campinos joined the office, and that for the moment he has “not taken a single action indicating his intention to clearly stop with past (in)human resources practices. Worse he has kept all those—in particular in human resources who are directly responsible for the brutal mismanagement

33 IPPro

of the past years—in their positions. So what can we credibly expect if the same ones are still in charge? So far Campinos has only turned on a smoke screen with his sweet story-telling, which fools no one. No concrete work has started with either the statutory staff representatives (which he only briefly met on 17 July and will meet again mid September) or with SUEPO Central yet, which he superbly ignored so far!”

The sources add: “So far nothing but the usual top management blabla. Concretely the production pressure is not less, the targets are not lowered, the quality of the work is thus still at risks. Those who mistreated staff under Battistelli still enjoy their positions. Hard working EPO staff are not rewarded for their efforts and pressure is kept on all equally. Is this better than under Battistelli? For the moment the answer is no. Also Campinos did not re-established the numerous staff reps and union officials abusively sanctioned by his predecessor (Aurélien Pétiaud, Michael Lund, Elizabeth Hardon, or the still abusively dismissed to date ex member of the Central Staff Committee and ex Secretary of SUEPO The Hague, Laurent Prunier). So far the work atmosphere has not improved. Everyone is awaiting for his first concrete decisions and hope that from September onwards, Campinos will finally show that he is different from his predecessor. He needs to now act switly and take decisions to reduce the far too high production pressure as well as to take decisions to stop once and for all with the deleterious human resources policies which put the entire EPO under an unhealthy stress for too many years.”

For staff at the EPO, there is still a long road ahead, and as the debate over quantity v quality persists, it is uncertain whether direct change is on the horizon. For Campinos, there remains the shadow of Battistelli and the uncertainty of the future.

Campinos’s tenure at the EUIPO has been described as positive and progressive and his words speak volumes to the differences between him and his predecessor, but actions will always speak louder than words.

Herbert Patty · Profile

Tools of the trade Herbert Patty takes us through a new tool he is working on that aims to maximise artificial intelligence and machine learning to increase efficiency in law firms What are the specifics of the tool you are currently working on?

I am working on a software tool that employs artificial intelligence and machine learning. Some of the things we are doing are confidential, because we’re currently in the process of filing patent applications for the system. But, essentially, we can convert legal documents into a mathematical expression so that we can compare legal documents in a more quantitative fashion. Essentially, we’re moving from language arts to mathematics. This way, we can effectively compare hundreds of thousands to millions of documents in a very efficient manner. The new tools will identify trends, which will decrease the time for us to find missing information.

So the overarching effect of this is going to be efficiency through smaller teams?

Exactly. Efficiency will enable smaller teams. At this juncture, we’re not saying that the future is now—in other words, we still believe that attorneys and content experts are needed for legal research. However, the great thing about AI tools is that, in terms of its training, it is always an ongoing development, so there is never a destination point and therefore these tools will undergo continuous development, which makes the tool more precise so that the results obtained are richer. As such, one can go through a set of documents at one time, then at a later time one can go back through the same documents once the tool has been significantly improved.

What will be the day-to-day effects of a legal practice?

Right now, most law firms have access to information technology services, but in the future law firms will also have ready access to professionals with programming and data mining skill sets. These professionals generally have advanced degrees in mathematics and statistics. I believe presently large law firms definitely have their own set of employees who can perform these tasks. Currently, in most law firms they have an office manager and IT contractors

34 IPPro

and services, and the larger firms even have marketing and recruiting specialists as well. However, they will need professionals who have the ability to write programmes leveraging data from various sources in an attempt to gain a competitive advantage. I think the future, quite frankly, is going to have more technical professionals working in law firm environments although it doesn’t look that way now. I believe that in less than 40 years from now the legal industry will use AI tools that are really effective in receiving input, understanding human command, and accessing scores of data to in turn churn out output at a human’s request. But right now, without getting too futuristic, I believe maybe within the next 20 years most law firms will have significant human resources with the ability to mine data and create computer programmes to make attorneys more efficient.

In the past, obtaining information was rather expensive. The internet age has made obtaining information a lot easier and has decreased the cost of obtaining information because the information is now at one’s fingertips. Simply, one can just perform a search to obtain information about any and everything. Once more information is digitised, we’ll be able to leverage more information. I believe in the future, 20 years from now, a lot of that digitised information will be formatted such that the data can be manipulated easily. I believe that in 20 years almost all data related to any human endeavor will be digitised in some form. As such, I believe the ‘secret sauce’ with regards to information isn’t going to be that much of a secret anymore. Lawyers, like any other service professional, will earn a living based on their efficiency rather than their past ability to leverage information. Marketing efforts will be very important as one concealed information in the law will be readily available to all practitioners and to the public at large.

In terms of the raw information itself, I don’t believe that will be a determined factor amongst lawyers, because right now if you go to a big law firm, most of these lawyers have more resources than the average attorney. Generally speaking, you should get better results when you go to a bigger law firm where there are more senior attorneys. Some of that has to do with those firms recruiting from the best schools, but you

Herbert Patty · Profile

In terms of sustainability, I believe that new ways of competition will be based on marketing and the efficiency of data utilisation. The raw data will be out there, but how efficient you are in terms of converting it into a comparable format will be important. A lot of law firms have access to capital as well—you can’t take outside investment because in most jurisdictions there’ll be ethical issues. Nevertheless, if you have one law firm with profits of 10 million, and another with 20,000, the former will be able to market and so forth. The other piece is that, generally speaking, most people around the world, definitely here in the US, believe that lawyers overcharge for their services. Many people have had bad experiences with lawyers because of the fee, so the average person is always looking for a way to escape paying those lawyers. Legal work is something where no-one wants to pay professionals, but everyone will eventually need one. I believe with the digitalisation, a lot of attorneys right now make a lot of work from run-of-the-mill cases rather than complex ones.

It would be akin to BMW, which makes a lot of its revenue from its 3 series models and not necessarily from its 5 or 7 series. This is because the 7 series model is aspirational; when a buyer comes in, even when they buy the 3 series because

35 IPPro

Partner Nolte IP Law Group

Do you think there will be an increase in smaller law firms that are able to sustain themselves in the same way larger firms have been?

it’s the most cost-effective for their budget, they can visualise themselves buying the 7 series even though they can’t afford it. Therefore, BMW make most of their margin based upon the 3 series, and it’s the same for legal services. We don’t make most of our money on complex cases because that’s not how the market works—we make money on things that we do all the time based on information we know. For example, you may have a defense attorney with a client who has a DUI. In the future, the average person will have access to general information about resolving driving under the influence charges (DUI). Right now, if a client comes into a criminal defense attorney’s office having been charged a first-time DUI, they don’t know what the standard offer for a DUI is. That is, information that the attorney is able to leverage to be able to make money. Soon, the average criminal defendant going to have access to information such as the type of factors could increase their offer. Once all the information is disclosed so defendants know what they’re likely to get for a first-time DUI within the county—which the lawyer already knows because they are in court all day—the average defendant may go to court representing themselves and work with the prosecutor assigned to their case without retaining a criminal defense attorney. If they were to spend an hour or two with information based on the data, the data can be expressed in meaningful ways for non-attorneys.

Herbert Patty

also have really good talent. I think even beyond talent, there’s an information, knowledge, and know-how gap between the white-shoe law firms and your average smaller boutique firms. But I believe these gaps will decrease over time with the digitalisation of information in general. Particularly, legal professionals will move from intuition to what the data says. In the past, great attorneys not only had a good handle of the law only good at understanding what the law is, but have above average intuition, which gave these attorneys their competitive advantage. However, as more information becomes digitised, I don’t believe that above-average human intuition will create as much competitive advantage because access to raw data will provide a fuller picture beyond the ability of human intuition.

Brazilian Trademarks · Feature

Visually perceptible Professionals from Luiz Leonardos & Advogados explain general considerations on trademark and industrial design protection in Brazil In December 2014, with the purpose of consolidating the trademark guidelines and examination proceedings, the Brazilian Patent and Trademark Office (BPTO) issued the Trademark Manual, which constitutes a significant reference for trademark examiners and users of the trademark system.

The BPTO conducts a thorough examination regarding the registrability of the mark. Therefore, it is advisable to conduct searches prior to filing in order to analyse the chances of successfully registering the mark.

In 2017, the trademark directorate of the BPTO also became responsible for the prosecution of geographical indications and industrial designs, making it necessary to adopt a new management structure. In addition, several proceedings were adopted in the examination of geographical indications and industrial designs were reviewed and simplified.

● The principle of stability of the form, according to which signs relating to objects with a physical constitution that does not bear firmness and stability are not registrable as trademarks

Information on the BPTO’s website suggested that in 2017, it also started to take the necessary steps to gain membership to the Madrid Protocol until December 2018.

The purpose of this article is to provide readers with a concise update on the general aspects of trademark and industrial design protection, as well as on litigation involving IP matters in Brazil.

Trademarks According to the Brazilian industrial property law, only visually perceptible signs can be registered as trademarks.

Consequently, non-traditional trademarks consisting of sounds, scents and taste cannot be registered in Brazil.

Among the topics that should be considered by trademark owners who wish to obtain trademark protection in Brazil, the following shall be pointed out.

Brazil is a first-to-file country. The legal entity or individual who first files the mark has priority to the registration. Nonetheless, a legal entity or individual who has been using a trademark in Brazil in good faith, for at least six months, has the right of precedence to the registration of the trademark. It’s the socalled “prior use right”.

36 IPPro

The BPTO considers the following aspects:

● The sign should be taken as a whole, that is, the whole plastic form of the object put in the market shall be considered, instead of its isolated parts ● Colours, images and labels affixed to the object do not confer sufficient distinctiveness to the mark ● Reliefs: three-dimensional marks with embossed device elements (drawings, patterns or textures) on the surface have their distinctive character assessed on a case-bycase basis ● Details of the mark that cannot be perceived by consumers are not considered as distinctive aspects, as they do not interfere in the act of acquiring the product or service Trademark Coexistence Agreements and Letters of Consent are not necessarily accepted by the BPTO. They may be accepted whenever the BPTO is convinced that there is no possibility of consumer association or confusion between the marks.

The BPTO takes into consideration the ability of the mark, as a whole, to be perceived as a mark by the target public.

Simple geometric elements, such as circles, lines, rectangles and squares are not capable of being

Brazilian Trademarks · Feature perceived as a mark by consumers and therefore are considered not distinctive.

by technical or functional considerations are not registrable as industrial designs in Brazil.

Expressions used only as means of recommending, highlighting and/or evidencing the products or services that will be identified by the sign are considered slogans or advertising expressions by the BPTO and are not protectable as trademarks.

Upon filing, a design application is automatically published.

Registration is granted by the BPTO, within approximately 12 months, counted from the filing date, based exclusively on the examination of formal requirements.

However, the BPTO may accept an amendment to the mark to exclude the elements regarded as not registrable, provided certain requirements set forth in the Trademark Manual are met.

Administrative nullity actions may be filed up to 180 days, counted from the issuance of the registration, whenever it is granted contrary to the provisions of the Brazilian IP Law. Nullity may be total or partial, this last one when the remaining part of the mark can be considered registrable. Besides, a trademark registration may also be annulled at Courts as mentioned further down.

After five years from grant, registration can be cancelled through administrative non-use cancellation action (forfeiture proceedings), should use of the mark has not been initiated within five years from grant, has been interrupted for more than five consecutive years, or if within that time, the mark has been used with alteration in its original distinctive character.

Industrial designs According to the Brazilian Industrial Property Law, industrial design is an ornamental plastic form of an object or an ornamental arrangement of lines and colours that may be applied to a product, providing a new and original visual result in its external configuration that may serve as a pattern for industrial manufacture.

ID is protectable in Brazil by registration with the BPTO, for a 10-year term, counted from the date of filing, renewable for three successive periods of five years each, summing up 25 years of legal protection.

Novelty, originality and industrial application, for example, 2D or 3D objects cannot be comprised by the state of the art, must have a distinctive visual configuration in relation to prior objects and be able to be manufactured in industry.

The original configuration may result from the combination of known elements.

Works of a purely artistic nature, the necessary, common or ordinary shape of an object or the form determined essentially

37 IPPro

Substantive examination is optional and may be applied for by the registrant, at any time during the term of the registration.

Nullity actions may be started by any party with a legitimate interest or by the BPTO, administratively, up to five years after the grant of the registration. Once it is applied for, it will be possible for third parties to file considerations on the merits of the industrial design at the Brazilian PTO; or at a court, at any time during the term of the registration.

If the nullity proceeding is requested or published within 60 days after grant, effects of the grant of the registration are suspended. Nullity of a registration will produce effects as from the filing date of the application, with consequences in possible infringement actions.

When secrecy is requested by the applicant, the application may be withdrawn up to 90 days counted from the filing date without producing the effect.

Similar to patents, who in good faith, prior to the date of filing or of the priority of an application for registration, exploited the subject matter in the country will be guaranteed the right to continue the exploitation in the previous manner and conditions.

Industrial Designs made by employees or suppliers of services belong: ● Exclusively to the employer when it results from a work contract in Brazil, which object is the research or the development of the industrial design or when such results from the nature of the services for which he was contracted ● Exclusively to the employee, provided it is unconnected to his work contract and when it does not result from the use of resources, means, data, materials, installations or equipment of the employer ● The ownership will be common, in equal parts, when it results from the personal contribution of the employee and from resources, data, means, materials, installations or equipment of the employer, without prejudice to express contractual provisions to the contrary

Brazilian Trademarks · Feature

The statute of limitations for filing lawsuits aiming either at repairing damages caused to industrial property rights, or at annulling the BPTO’s act that granted a trademark is five years, but initiating litigation soon may be important, from a legal and strategic perspective, especially if it is intended to request a preliminary ex parte injunction. As for patents and industrial designs, the lawsuit aiming at annulling them may be submitted at any time of the patent or registration life. Being a foreign plaintiff from nationalities other than French, Spanish and Italian, for example, with whom Brazil has cooperation treaties, the plaintiff will have to post a bond in Brazilian currency in order to secure the payment of judicial expenses.

If the plaintiff is successful, this bond is given back, duly adjusted according to the official inflation index in Brazil. The bond may be avoided in case a local company is included in the lawsuit as a co-plaintiff.

38 IPPro

Attorney at law and Head of the Trademarks Department Luiz Leonardos & Advogados Attorney at law and partner Luiz Leonardos & Advogados

To this end, substantive evidence has to be submitted to demonstrate the likelihood of prevailing in the litigation; and the need for an urgent preliminary decision from courts. The chances of success in obtaining preliminary injunctions, as well as in prevailing in the lawsuits, are directly related to the amount and quality of the evidence produced. An appeal to the Court of Appeals is available to the defendant in case an injunction is granted or to the plaintiff in case an injunction is denied.

Attorney at law and partner Luiz Leonardos & Advogados

It is possible to obtain a preliminary injunction in IP infringement and nullity actions, aiming at immediate stopping the IP rights violation, such as determining the seizure of the infringing products and aiming at suspending the effects of the administrative decision, which grant or reject a patent or a trademark/industrial design registration, respectively.

Patrícia Lusoli

The state court has jurisdiction to decide on questions related to IP rights infringement, including unfair competition and trade-dress, since these are questions that regard and affect only private parties, while court nullity actions, with the possibility to obtain a preliminary suspension of the registration/patent are brought before the federal court, due to the interaction of the BPTO, a federal autarchy.

Carla Tiedemann Barreto

In cases of IP Violation, the owner of the infringed IP rights may file a lawsuit before the state court from the Defendant’s domicile or in any venue where the infringement occurred. This possibility is also attributed to the licensee, in case it is expressly foreseen in the license agreement. This lawsuit will aim at stopping the undue use of the trademark, industrial design or patent, and is commonly filed along with a request for losses and damages in compensation for the losses caused.

The Brazilian state and federal courts are taking up to two years to render a first instance decision on IP infringement or nullity lawsuits. Appeals to the State Court of Appeals or to the Federal Court of Appeals are taking around two years to be decided. In case of appeals to the High Court of Justice or the Federal Supreme Court, the case may take three to four more years. These are, in general terms, an updated highlight on Brazilian trademark and industrial design administrative and judicial proceedings.

Constanza Woltzenlogel

Litigation

Smart Data · Feature

Spotting business opportunities with smart IP data Although it seems that the tech giants may hold a significant amount of your personal data, Doris Spielthenner of CPA Global explores how you can easily obtain significant data insights about them All this information is publicly available under register sources for different jurisdictions. These actual snippets have been identified using Filing Analytics which collects these information points from diverse sources and makes the data available and easily searchable while providing further analytics on the data.

We’re all familiar with the big tech giants that seem to be always in the news. Headlines about their controversial moves with acquisitions, data breaches or court cases, but most of the time it’s about their latest innovations.

For example, Facebook has generated news headlines not just about its data breaches but also about its latest innovation named Athena, a low earth orbit internet satellite that is designed to “efficiently provide broadband access to unserved and underserved areas throughout the world”.

Google has also been making headlines with its new Google Assistant developments. Google Assistant is an artificial intelligence (AI) assistant that can communicate to make phone calls and schedule appointments for its user with a believable human voice. This is considered by many as a breakthrough development in the application of AI and natural language analysis.

Regardless of the good or controversial headlines the tech giants may generate, an undeniable fact about them is that

they are very innovative and file many patents. For patent attorneys and law firms, these tech giants can be a great source of business and revenue. That being said, they can be considered a competitive business space for law firms to enter, but is that really true? The patent filing data shows that there is a diverse spread of law firms that actively work with these companies and that the spread of law firms regularly changes.

What’s interesting to analyse is the rise and fall of patent filings from these tech giants amongst specific law firms. Looking at the latest Patent Cooperation Treaty (PCT) filing data for 2018, Google works with more than 35 US-based law firms. Upon a closer look at their ‘source of PCT filings’ in Filing Analytics, it shows that three of these law firms started working with Google in 2016 and 14 of them only just started working with them last year. At first glance, this may look like deliberate diversification, which would mean that the top law firms who would have gotten the most amount of work must be getting less and that the work from Google is more diversified.

However, this doesn’t appear to be the case here. (figure 1) Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io

Screenshot

40 IPPro

Smart Data · Feature Screenshot

(figure 2) Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io The top five major law firms, who have historically received the most work from Google, still received a sizable amount of work from Google last year and this year. So questions then arise, how is the work being divided amongst law firms, who are the new entrants receiving additional work and are there any law firms receiving less work from Google? Let’s take a closer look at the patent filing data to get the answers. Upon looking at the case flows for Google, we can clearly see some law firms losing business from the tech giant even though there is no shortage of work coming from them.

For example, the screenshot from Filing Analytics shows that Law Firm 4 and 5 lost business from Google over the past years, while Law Firm 6 only started receiving work from them in 2017. Law Firms 1 to 3 show a nice increase in work last year but they haven’t received any work from Google in 2018.Now there may be many reasons for this such as the law firms may not have the technology speciality area or there could just be a lack of resource capacity etc. However, the important aspect to note is that there is plenty of work available from Google but it’s now being snapped up by new entrants. New entrants who are most likely focussing strongly (figure 3) Google’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io

Screenshot

www.ipprotheinternt.com

41

Smart Data · Feature Screenshot

(figure 4) Facebook’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io on business development and actively targeting new clients like Google, rather than just relying on their existing clients for work. Another interesting point to raise is the pattern of the work declining from Google amongst the law firms over the years. While some law firms show an increase in work for 2018, Law Firm H shows a sharp drop and Law Firm L shows no work for 2018. Will these two lose all business from Google in the next year?

The data from Google’s ‘Filed PCT Applications’ data also show similar patterns of consecutive drops.

Observe the sharp drops in Law Firm B and F, and the gradual drop in filings for Law Firm A and D. The same pattern holds true for other tech giants like Amazon and Facebook. For example, if we take a closer look at Facebook’s ‘Filed PCT applications’ in Filing Analytics it shows that law firm A had an increase in work from Facebook over the years, whilst law firms B and F show a clear decrease in work volume from them. These drops and rises, among other factors, could be considered to be indicative of the strength of the relationship between the client and the firm and the effort (figure 5) New ‘Watch’ feature on filinganalytics.io

Screenshot

42 IPPro

Smart Data · Feature Screenshot

(figure 6) New ‘pi Connect’ feature on filinganalytics.io

Apart from the patent data and analysis that Filing Analytics already provides, its new Watch feature ensures that you are alerted to any filing changes related to a law firm or applicant, without you having to do any extra work! For example, if you put a watch alert on Facebook you will be immediately informed when they start to use a different law firm for its filings into your jurisdiction, giving you a window of opportunity to also obtain work from the tech giant whilst its open to using new law firms. Additionally, if you are already working for a major applicant or with a law firm, you can set up an alert to be notified when they start using a new law firm to handle the filings in your jurisdiction. You can immediately step in and start to strengthen your relationship with the client to ensure that you retain them rather than losing them to another competitor.

Team up with another law firm Another key feature to assist law firms to obtain more work is the ‘pi Connect’ feature, which connects you to other law firms to easily set up new business partnerships. Rather than try and work with the tech giants directly, why not connect with a law firm in another jurisdiction to handle the tech giants

43 IPPro

To discover which tech giants you can find work from or find out who is working with whom visit http://filinganalytics.io and obtain a free report on any law firm of your choice with details of the firm’s recent filings, their filing partners in your jurisdiction, client lists and more.

All this information is publicly available under register sources for different jurisdictions. These actual snippets have been identified using Filing Analytics which collects these information points from diverse sources and makes the data available and easily searchable while providing further analytics on the data.

Director of law firm analytics CPA Global

So how can a law firm who wants to work with a tech giant know when would be the best time to try and enter the market? Or if you are a law firm already working with a tech giant or a significant applicant, how can you prevent losing business from them to another law firm?

incoming filings for your jurisdiction. This is also an easy way for law firms to increase their business opportunities with no extra resourcing required on their part.

Doris Spielthenner

put in by the law firm towards business development and client retention.

Trademark strategies of top Chinese filers Peng Gong of TrademarkNow runs through his recent analysis of Chinese trademark applications, revealing some interesting trends It’s not surprising that of all regions, China has the most trademark applications filed in the last five years. The total trademark volume has reached 15.846 million, totalling 58.2 percent of the world’s amount. The TrademarkNow database for 2017 shows that the total amount of Chinese

applications is over 5.8 million including unpublished trademarks. The complexity of the Chinese market is not to be underestimated, and hidden amongst the data are facts critical to building understanding of the strategies of top trademark owners in China.

Screenshot

(Figure 1) Comparison between 2017 and last five years top owners in China. Source: TrademarkNow

44 IPPro

BRANDING STYLE APPEARANCE, AESTHETICS AND ÉCLAT The 32nd MARQUES Annual Conference

Tuesday 18th - Friday 21st September 2018 Register online at www.marques.org

Paris Marriott Rive Gauche Hotel 17 Boulevard Saint-Jacques, 75014 Paris, France

Feature · China Trademarks Screenshot

(figure 2) 候丰羽 brand chart in China. Source: TrademarkNow Screenshot

(figure 3) HOU FENGYU’s brand names in China. Source: TrademarkNow Figure 1 shows four individual trademark owners (候丰 羽, LI ZHIWEI, 梁翠清, WANG YI) topped the list in the last five years, and five individual trademark owners (候丰羽, LI ZHIWEI, 李金枝, 梁翠清, 李晓冰) in 2017. As you can see that 候丰羽(HOU FENGYU), LI ZHIWEI(黎志伟), 梁翠清(LIANG CUIQING) are the most active owners in China. What do they have in common? China is the world’s largest clothing manufacturer so it comes as little surprise to discover that all four of these companies file mostly in class 25.

HOU FENGYU is the owner who filed most trademarks in 2017 passing out even Alibaba and Tencent. Surprised? Now let us examine HOU FENGYU’s owner profile. The application

46 IPPro

volume became very high after 2014 and all of the trademarks are from class 25. I have reviewed these marks filed in the last five years and noticed some interesting name patterns, for example, 馨(Xin) is the first character in the trademark name, and the rest is different combinations that most likely would become clothing brands (Figure 4).

In fact, HOU FENGYU has one licensed company under his name, and dozens of clothing stores. Some names are in use but most are not. I examined the other two owners and noticed that they also tended to choose names in Chinese that are very close to the most-likely-to-become-clothingbrand names. They also cover most of the related goods

Feature · China Trademarks Screenshot

(figure 4) LI ZHIWEI owner overview in China. Source: TrademarkNow

which results in international clothing brands having to avoid these catchy names in Chinese. Additionally, small clothing manufacturers often buy the catchiest names (trademarks) from individual trademark owners. In China, the risk of buying a trademark is much lower than filing and the pending time of trademark transfer via the Chinese Trademark Office (CTMO) is much shorter.

There are several online trademark transaction websites in China and it is estimated that ordinary trademarks cost €1,500 to €4,000 each—relatively cheap for interested buyers. Catchy and memorable names are more expensive.

Therefore, trademark trading has become a mature and booming business in China. Filings from the second owner on the list, LI ZHIWEI started to rise after 2016. Class 25 is still the major one but there are others.

However, the pattern is the same, covering the most possible brand names. Due to the similarity between class 25 and 14 (jewels), this owner has increasingly filed there also using the same strategy.

Summary

● Buying: You can also purchase suitable trademarks from websites as above. However, please be aware of these two concerns ● Running a clearance search is advisable in case of infringement ● Check the application date of the trademark. A trademark that is unused in the last three years in China according to Chinese Trademark Law Article 49 may be cancelled CTMO has called for public comment on Chinese Trademark Law aiming to amend it in April 2018. One of the things up for discussion is where brand owners have no intention to use their trademarks should be eliminated.

If implemented, unused trademarks would not act as obstacles to the parties that need them in the Chinese market.Generally speaking, there is no easy way to follow and monitor an enormous number of trademarks in China but an intelligent, AI-backed legal technology can do a lot of the heavy lifting for you.

The volume of trademark applications in China is rising and while some might aim to infringe your trademarks, most are just to cover potentially good names for the Chinese market.

● Monitoring: Using a system like TrademarkNow, these individual trademark owners in China can be easily monitored alerting you to all new filings

47 IPPro

Data manager TrademarkNow

Recommendations:

Peng Gong

This is not illegal to do in China, providing the names are not similar to existing valid trademarks. Filing fees in China are extremely low at RMB 300 (roughly €38). So, how should we respond to this strategy?

Feature ¡ GDPR Insight

We don’t need no regulation Emmanuel Harrar of IPzen explores the implications of GDPR on the WHOIS The General Data Protection Regulation (GDPR), which entered into force on 25 May this year, has considerable implications for the numerous undertakings and associations processing personal data within the EU. In this respect, many organisations, including ICANN, in charge of Internet governance and the attribution of generic top-level domain names (gTLD) such as.com have decided to call into question exceptionally their model of WHOIS, the computer sheet that identifies the holder of a domain name. This public directory, a historical internet tool that makes available the personal information of the holder, is in fact threatened by the new regulation.

WHOIS, a key tool in the battle against cybersquatting Today, WHOIS data is extremely useful, but the way it works and the accuracy remain relative. The identification of those who register domain names is, in fact, indispensable to combat cybersquatting.

The WHOIS directories serve in particular to find information on the holders of the domain names. They also bear quite an appropriate name (who is) and enable the finding of the essential information on the protagonists relative to a domain name and in particular the date of registration of the name, the registrant, the administrative contact or the registrar of a domain name. All in all, the WHOIS is the database of domain names registered on a registry or with a registrar, these intermediaries between ICANN and the registrants who manage the registration of the domain names.

The term WHOIS is not new and the origin is to be found in a memorandum for a directory service intended for the

48 IPPro

users of ARPANET developed in 1982, containing the contact information of the users who transmitted data via this network. When the internet began to become commercial, the use of WHOIS became more intense. ICANN inherited this memorandum in 1998 when it was founded. Subsequently, ICANN changed the requirements relative to the WHOIS service, adopting rules concerning the verification of the WHOIS data (2003), the accuracy of the names retrieved (2004) or restriction on the commercialisation of WHOIS information (2004).

There are in fact two categories of WHOIS registers, thin WHOIS and thick WHOIS, according to the level of information that can be found there. As an example, VeriSign provided a thin WHOIS for the generic top-level domains <.com> and <.net>, and kept no personal data relative to the domain name.

The name of the owner, their address or telephone number was held directly by the registrar who possessed the thick WHOIS with more detailed information.

The GDPR and its implications for WHOIS GDPR regulates the processing of personal data with regard to the EU in a much stricter way than in the past. In this dynamic, the new European regulation now obliges the registries and the registrars to obtain the consent of the registrants to collect their personal data and prohibits its disclosure to the public.

The WHOIS then raised a problem for the protection of personal privacy. The public circulation of the identity, or other relative information to the holder of a domain name, as well as the administrative and technical contacts who may be natural persons, opens the door to the commercial exploitation of their data without prior consent. This is precisely one of the

Feature · GDPR Insight (figure 1) Domain name registration ICANN Accreditation

REGISTRY

Accreditation

Domain name registrant

Domain name registrant Registry Anonymisation service Domain name registrant Domain name registrant

issues the regulation was intended to handle. Changes relative to access to the personal data on the WHOIS sheets were in this respect essential for effective compliance.

The model of WHOIS was called into question by the German EPAG registrar, which purely and simply stopped collecting the administrative and technical contact details for the new registrations, due to a strict interpretation of the regulation.

ICANN then initiated legal action before the regional court of Bonn to apply for the continued collection of all the WHOIS data, so that this data remained available to the parties able to establish a legitimate reason for accessing it, in compliance with the provisions of the GDPR. On 30 May 2018, the German judges ruled in favour of EPAG, declaring ICANN’s requested an injunction against the registrar “without grounds”. ICANN appealed this judgement and the regional court of Bonn decided to hear the file again.

The compliance of WHOIS with the Regulation There was no need, however, to wait for the GDPR for the domain name registries to take an interest in protecting the data circulated by WHOIS. In particular, Afnic, the French registry, who manages <. fr>, after consulting the CNIL, introduced a limited WHOIS for natural persons in which some personal data did not appear in 2006. To access this information requires compliance with the procedure for removing anonymity introduced by Afnic. Only requests from rights holders with grounds and presented via a specific form, are admissible.

Such a preoccupation did not only concern European countries, in 2008, the Canadian registry CIRA introduced a system similar to that of Afnic. The WHOIS of the domain

49 IPPro

<. ca>, therefore, comprises two statuses: the data of the undertakings, which are not considered personal, continues to be displayed, and private individuals who are by default registered in hidden WHOIS, with a connecting system that can send a message to the owner, with no guarantee of an answer.

The new WHOIS proposed by ICANN: the Calzone model ICANN was therefore forced to modify its WHOIS policy.

To this end, it amended its contracts with the registries concerning their collection of personal data on 31 July last year (point 2.18 of the Registry accreditation agreement) requiring registries to obtain the consent of any person who is a domain name holder before the publication of their personal data on WHOIS. From this perspective, ICANN retained the provisional model of WHOIS, reduced to the minimum and applied to all the domain name holders, in and outside the EU on 28 February 2018 called the “Calzone Model”.

The aim was to enable short-term compliance between the WHOIS directory and the provisions of the GDPR, prior to a full revision of the system to find an optimal balance between the fight against cybercrime and data privacy.

The information made available to the public will be the sign of the domain name, the administrative and technical info (dates, status, name of the registry, DNS servers), the state and country of the holder, the name of the organisation for companies and a means of contacting the holder (anonymised email or web form).

Feature · GDPR Insight

This model has prompted numerous reactions from the domain names community. Too strict for some, it has also been considered too flexible for others.

The government advisory committee (GAC), which includes representatives from the US and certain European data protection authorities, in particular, deplored the loss of much essential information for the rights holders and the police authorities. According to its recommendations, this e-mail address must imperatively remain visible to be able to effectively combat malfeasance on the internet, which is not the case in the model adopted by ICANN. On the contrary, for the G29, the model does not yet fulfil the requirements laid down by the GDPR. In a letter dated 11 December last year, the G29 emphasised the non-respect of the model of article 5, paragraph 1, point b) of the regulation which provides, inter alia, that personal data must be “collected for explicit and legitimate purposes”, which ICANN does not expand on. Similarly, article 6 of the regulation imposes that any processing must have a legal basis, which, according to the workgroup, is lacking in the Calzone model.

Lastly, the G29 explicitly expressed their refusal where ICANN had recourse to the principle of “legitimate interest” allowed for in article 6 of the regulation, which makes it possible to continue to access the data without proving user consent, even in cases where the data may be used by law enforcement to combat possible fraud, insofar as this is not the explicit purpose.

On 23 May this year, the three respective presidents of the general divisions of CONNECT (Communication networks, contents and technologies), HOME (Migration and internal affairs) and JUST (Justice and consumers), answered the letter of G29. They followed the argument developed by G29 but nonetheless expressed disagreement on a point of G29’s opinion to not anchor a disclosure of personal data on the legal basis of legitimate interest, expressed in the following terms: “The system to be implemented after 25 May should ensure full compliance with the GDPR, while broaching governance

50 IPPro

Application of the GDPR by the registries Following the communications of ICANN, the registrars had to amend their way of processing personal data. In this respect, it is interesting to note a lack of consistency in their new confidentiality policies.

For example, some registries now only leave visible the technical information of the domain and the country of the registrant. To communicate with the holder of the registered domain name, it is possible to use an online form to contact the registrant directly (GoDaddy, US). Other registries have introduced a proxy service enabling the confidentiality of the personal data of the registrants (Namecheap). On the other hand, the Chinese registries continue, for the moment, to disclose the information about European citizens. It should be noted that depending on the registry and on the country, a variety of interpretations have been made of the provisions of the GDPR to ensure compliance in ways that inevitably differ from one another.

Which strategy to adopt?

The above remarks lead us to believe that there is not yet stability regarding the application of the GDPR which remains disparate.

Faced with a project that is ongoing, the specialist counsels are still giving thought to the strategies to be adopted. In such a situation, it is, in fact, necessary to see how the dialogue will progress among the different players to find a model of WHOIS that is compliant with the GDPR, which will continue to be a key mechanism for combating cybercrime and more generally any infringement of rights perpetrated online.

Founder IPzen

What will the future hold for WHOIS?

and access to the WHOIS data for legitimate purposes, in particular, to meet the objectives of public policy and the application of the law.”

Emmanuel Harrar

The other information will in principle be confidential and only users accredited through an official programme, to be developed in the near future, will have access. For example, specialists in intellectual property law will be able to apply for accreditation from ICANN.

J. Varbanov & Partners

European and Bulgarian Patent & Trademark Attorneys

One of the oldest and leading IP companies in Bulgaria Professional, cost effective services and quality advices

Areas of practice: *IP Protection *IP Enforcement *Anti-counterfeiting *Litigations *Domain name registrations *IP watches

PO Box 1152, BG-1000 Sofia, Bulgaria South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47, e-mail: jvp@jvpatents.com

www.jvpatents.com

®

PATENTS EP VALIDATIONS PCT NATIONAL APPLICATIONS TRADEMARKS MODELS COPYRIGHT DOMAIN NAMES SEARCHES PORTFOLIO SEARCHES COMPANY NAME SEARCHES LICENSING ASSIGNMENTS OPPOSITIONS LITIGATIONS CUSTOMS ACTIONS ANTICOUNTERFEITING RENEWALS ANNUITIES

Your Intellectual Property agent in Eastern Europe and Asia European Patent and Trademark Attorneys Domain name registrar (.si)

European countries

Eurasia

Slovenia | Croatia | Bosnia and Herzegovina | Serbia | Kosovo | Montenegro | Macedonia | Albania | Bulgaria | Czech Republic | Cyprus | Greece | Hungary | Poland | Romania | Slovak Republic | Turkey | Estonia | Lithuania | Latvia

Russia | Armenia | Azerbaijan | Belarus | Georgia | Kazakhstan | Kyrgyzstan | Moldova | Tajikistan | Turkmenistan | Ukraine | Uzbekistan | Mongolia

Mark-Inventa Co., Ltd.

Mark Inventa

®

Intellectual Property Services

Glinška ulica 14, SI-1000 Ljubljana, Slovenia P.O. BOX 2948, 1001 Ljubljana, Slovenia p: + 386 1 4266 503 and + 386 1 5404 331 f: + 386 1 2510 508 and + 386 1 5243 118 e: office@mark-inventa.si url: www.mark-inventa.com