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Lead News Story
Andrei Iancu confirmed as USPTO director Andrei Iancu has been confirmed as the new undersecretary of commerce for intellectual property and director of the US Patent and Trademark Office (USPTO) by the US Senate. Iancu, who previously served as managing partner of law firm Irell & Manella, was nominated by US President Donald Trump in August last year. His practice at Irell & Manella focused on IP litigation, prosecution, due diligence and licensing. 3
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He has represented clients across the technology spectrum, including those associated with medical devices, genetic testing, therapeutics, the internet, TV broadcasting, video game systems and computer peripherals. Prior to law school, Iancu was an engineer at Hughes Aircraft. Iancu replaces Michelle Lee as director of the USPTO, who resigned from the role in June last year.
Lee was appointed to lead the USPTO in 2014, but her position came under threat with the election of Trump. For three months after Trumpâ&#x20AC;&#x2122;s inauguration it had been unclear whether Lee would be replaced, despite an outcry of industry support for Lee. Associate solicitor Joseph Matal took on the role as acting undersecretary of commerce for IP and director of the USPTO following Leeâ&#x20AC;&#x2122;s departure. www.ippropatents.com
Contents
INTA President
Patent Approaches
Tish Berard, INTA’s new president, Craig Thomson of HGF discusses innovation discusses her role for the next year in fields such as bacteriophage therapeutics p10
p14
Value Analysis
Innovation Analysis
Cindy Ahn of Longford Capital explains how legal counsels can maximise value
Jeffrey Stone of Barnes & Thornburg describes the benefits of “innovation stimulators”
p16
p18
www.ipprotheinternet.com @IPProTI www.ippropatents.com @IPProPatents Acting Editor: Becky Butcher beckybutcher@blackknightmedialtd.com +44 (0)203 750 6019 Senior Reporter: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026 Junior Reporter: Jenna Lomax jennalomax@blackknightmedialtd.com Junior Reporter: Ned Holmes nedholmes@blackknightmedialtd.com Marketing and Sales Support: Paige Tapson paigetapson@blackknightmedialtd.com +44 (0)203 750 6020 Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)203 750 6021
European Patents
Case Report
Matthew Smith of Mewburn Ellis explains how innovators in advanced materials might struggle to get patent protection at the EPO p22
Sachin Sinha of Concur IP gives a run down of TCL Communication v Ericsson and the effects it might have on FRAND rates p28
IP Portfolio Manager: Serena Franklin serenafranklin@blackknightmedialtd.com +44 (0)203 750 6025 Account Manager: Brenda Shanahan brenda@blackknightmedialtd.com +44 (0)203 750 6024 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
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Emoji Analysis
Domain Suspensions
Nathalie Dreyfus of Dreyfus & associés describes how this emoticons fit in with IP
The number of .UK domain names suspended for criminal activity doubled in 2017. Nick Wenban-Smith of Nominet explains p34
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News Round-Up IFPI calls for “effective solution” to value gap The International Federation of the Phonographic Industry (IFPI), with the support of 23 other creative industry organisations, has penned a letter to the new presidency of the European Council asking it provide an “effective solution” to the socalled value gap. IFPI’s letter was sent in advance of a meeting on 31 January, in which representatives of the EU’s 28 member states discussed their approaches to the draft Copyright Directive. According to the federation, the value gap is caused by user upload services, such as YouTube, not returning a fair value for music that is uploaded to their platforms. In a report on the value gap last year, IFPI said: “This is a fundamental challenge for the
music community, which is campaigning for a legislative solution to this issue known as the ‘value gap’.”
Francis Moore, CEO of the IFPI, said: “The value gap remains the single biggest threat facing the music world today and we are campaigning for a legislative solution.”
In its letter, IFPI argued that user upload platforms were abusing safe harbour rules, New trial ordered in BMG v Cox which are intended to protect passive online intermediaries, such as internet service The US Court of Appeals for the Fourth providers, from the actions of their users. Circuit has overturned a $25 million damages award for BMG Rights Management and IFPI said that the new presidency “provides ordered a new trial in its dispute with Cox the unmissable opportunity for a solution Communications, but maintained that Cox as it will lead the Council’s work on the EU had foregone its safe harbour defence. Copyright Directive proposal”. In August 2016, Cox was held liable for the Last year’s IFPI report revealed that more copyright infringement of its users in a ruling than 80 percent of YouTubers had used the at the US District Court for the Eastern District service for music streaming in the past month, of Virginia. amounting to an estimated 1.3 billion users. Cox had also been denied its safe harbour YouTube is estimated to pay less than $1 to defence under the Digital Millennium Copyright rightsholders per user, compared to $20 per Act (DMCA) in 2015 due to its failure to terminate the accounts of its infringing customers. user paid by Spotify.
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News Round-Up Safe harbours, under the DMCA, protect internet service providers (ISPs) from the consequences of their users’ actions, provided the ISP implements a policy that provides for the termination of repeatedly infringing user accounts.
Judge Diana Motz, who wrote the opinion for the court, said that Cox had “failed to qualify for the DMCA safe harbour because it failed to implement its policy in any consistent or meaningful way—leaving it essentially with no policy”.
Cox appealed the earlier decisions, arguing that the district court erred in denying its safe harbour defence and incorrectly instructed the jury.
However, Motz agreed with Cox’s argument that the district court had erred in instructing the jury that Cox could be found liable for contributory infringement if it “knew or should have known of such infringing activity”. The ISP said: “In the court’s view, ‘repeat She said: “Because there is a reasonable infringer’ could cover someone who has not probability that this erroneous instruction been legally determined to be an infringer— affected the jury’s verdict, we remand for a even though the DMCA elsewhere repeatedly new trial.” refers to ‘claimed’ or ‘alleged infringement’.”
Trio of Australian firms combine
The Fourth Circuit’s ruling held that Cox was not entitled to a safe harbour defence and rejected its argument that the term “repeat infringers” was limited to adjudicated infringers.
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Australian intellectual property law firms Fisher Adams Kelly Callinans, Cullens and Spruson & Ferguson will merge under the Spruson & Ferguson brand as of April 2018.
The merged entity will cover all aspects of IP law, including patents, trademarks and designs. It will employ a team of more than 400 staff, including 152 IP professionals across its 10 offices in Bangkok, Beijing, Brisbane, Hong Kong, Jakarta, Kuala Lumpur, Melbourne, Shanghai, Singapore and Sydney. All three firms are members of IP services group IPH Limited. Andrew Blattman, managing director and CEO of IPH Limited, commented: “This announcement today reinforces our marketleading approach and commitment to ensuring our group businesses have the capability, resources and systems to deliver the highest quality service to clients and provide strong career paths for our people.” He added: “Through this merger, we expect significant benefits will flow to
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News Round-Up the business, its clients and people, with songwriters are treated under current law synergies in operations, access to an and how crucial their contributions are to even greater talent base and integration streaming services.” with Spruson & Ferguson’s Asia Pacific service offering.” “We thank the songwriters who shared their stories with the court and helped illustrate Tracey Berger, managing director Sydney/ how badly these rate increases are needed. Melbourne at Spruson & Ferguson, said: While the court did not grant songwriters a “We are delighted to join with Fisher Adams per-stream rate, the increases in overall rates Kelly Callinans and Cullens to provide an and favourable terms are a huge win for even greater pool of IP talent to our local and music creators.” international clients.” According to the NMPA, the board’s “Our combined firm will draw on the strengths decision is the direct result of a lawsuit from of all three businesses to provide our clients the NMPA and the Nashville Songwriters with an enhanced top-tier IP service across Association against Google, Amazon, the Asia Pacific region.” Spotify and Pandora.
CRB issues royalty rate hike for music streaming services
Israelite commented: “We are thrilled the CRB raised rates for songwriters by 43.8 percent.” He said: “Crucially, the decision also allows songwriters to benefit from deals done by record labels in the free market.” “The ratio of what labels are paid by the services versus what publishers are paid has significantly improved, resulting in the most favourable balance in the history of the industry.”
He said: “Open innovation is a fundamental part of the PatSnap philosophy. In 2017, we launched PatSnap Academy to open the floodgates of innovation, by providing those with no knowledge of IP with a free platform to learn how to protect and pursue their ideas.”
“The ASPI programme ties in perfectly with our ethos, and we hope that through this partnership we can provide the necessary insight that can help to bring a largely untapped ocean of new ideas and inventions Frank Scibilia, partner at law firm Pryor to the global marketplace.” Cashman, which represented NMPA and NSAI in the case, commented: “At trial, we Yo Takagi, assistant director general of had a dual focus.” WIPO, added: “WIPO is pleased to welcome
The Copyright Royalty Board (CRB) has ruled to increase royalty payments to songwriters and music publishers from music streaming “First, we wanted to begin correcting the services by nearly 44 percent. unfairly low share of royalties being paid to the songwriters who create the musical According to National Music Publishers works that are the very foundation of music Association (NMPA) president David Israelite, streaming services, and second, to protect the rate hike is the “biggest rate increase our clients against business strategies granted in CRB history”. employed by the interactive streaming services that have had the effect of reducing The new rates will be in effect from 2018 to the reportable revenues on which our clients’ 2022. Services that offer interactive streaming royalties have been based.” and limited downloads, such as Amazon, Apple, Google and Spotify, will be affected. PatSnap joins WIPO ASPI programme The ruling increases the overall percentage of revenue paid to songwriters from 10.5 percent to 15.1 percent.
in providing equal opportunities for innovation across the globe, enabling some of the world’s brightest minds to research and pursue their new ideas regardless of their background or socio-economic status.”
Research and development analytics company PatSnap has joined the World Intellectual Property Organisation’s (WIPO) Access to Specialised Patent Information (ASPI) programme. The ASPI programme is designed to support innovation in developing countries by offering free or low-cost access to sophisticated tools and services for retrieving and analysing patent data. PatSnap’s addition to the programme will provide eligible patent offices, academic institutions, and research institutions with free or low-cost access to its R&D analytics platform.
PatSnap as a partner in the ASPI programme in making available sophisticated patent search and analysis tools for free or at low cost to institutions in least developed and other developing countries.”
“PatSnap joins seven other leading patent database service providers in providing researchers, innovators, and entrepreneurs in developing countries with critical insights into emerging trends in a wide range of technologies and industries.” “This contributes to ASPI’s ultimate goal of encouraging innovation.”
Anaqua partners with Ceva Santé Animale Animal healthcare company Ceva Santé Animale has chosen Anaqua to manage its intellectual property portfolio. The partnership will see Anaqua manage Ceva’s portfolio of patents, inventions, trademarks and awards. Ceva has 12 research and development centres and a growing IP portfolio.
Israelite added: “The decision represents two Jeffrey Tiong, CEO of PatSnap, commented: Bob Romeo, CEO of Anaqua, commented: years of advocacy regarding how unfairly “WIPO’s ASPI programme plays a crucial role “With Anaqua’s unified IP management 8
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News Round-Up software, Ceva will be able to better manage the innovation process and more easily track the status of their valuable IP assets worldwide.”
to the future of transportation—a future in which Uber intends to play an important role. Through that lens, the acquisition of Otto made good business sense.”
“Ceva has a truly global network of R&D teams who work together to keep shifting the boundaries of science, and we are looking forward to supporting their IP and innovation.”
“But the prospect that a couple of Waymo employees may have inappropriately solicited others to join Otto, and that they may have potentially left with Google files in their possession, in retrospect, raised some hard questions,” he said.
Uber Waymo litigation ends
Uber, nor do we believe that Uber has used any of Waymo’s proprietary information in its self-driving technology, we are taking steps with Waymo to ensure our LiDAR and software represents just our good work.”
Uber and Waymo have reached a settlement “To be clear, while we do not believe that any in their trade secret dispute after nearly a year trade secrets made their way from Waymo to of litigation.
Trim: 92(W) x 120mm (H)
Waymo, Alphabet’s self-driving car company, sued Uber for the theft of trade secrets and intellectual property in February 2017, accusing the ride hailing service of taking and using “key parts of Waymo’s selfdriving technology”. According to Waymo, Otto founder Anthony Levandowski, who previously worked at Waymo and later worked at Uber, had stolen more than 14,000 highly confidential design files for various hardware systems, including Light Detection and Ranging (LiDAR) sensor technology, from Waymo. In acquiring Otto, Uber had allegedly acquired this stolen technology. Under the settlement, Waymo will receive $245 million payment from Uber. Uber CEO Dara Khosrowshahi said that he wanted to acknowledge and correct “mistakes of the past”. “To our friends at Alphabet: we are partners, you are an important investor in Uber, and we share a deep belief in the power of technology to change people’s lives for the better.” He added: “Of course, we are also competitors. And while we won’t agree on everything going forward, we agree that Uber’s acquisition of Otto could and should have been handled differently.” Khosrowshahi continued: “There is no question that self-driving technology is crucial 9
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INTA President
The pillars of INTA 10
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INTA President The International Trademark Association’s latest strategic plan focuses on brand value and innovation. Tish Berard, the association’s new president, discusses her plans for the next year Barney Dixon reports Congratulations on your new role as president of INTA. Where do you see yourself taking INTA in 2018? I was fortunate enough to work on the development of the new strategic plan last year, so this year, as president of INTA, I will be supporting the implementation of INTA’s 2018 to 2021 strategic plan. The world is constantly changing and evolving and intellectual property practitioners and trademark attorneys have to match that. Focusing more on brands and the challenges that face brands is something that has to happen, and I think it’s important for trademark practitioners to embrace their role as brand ambassadors so that they are cognisant of the types of changes that can affect brands. I’m very excited and honoured to be the INTA president.
What will be the role of your new presidential task force and how will it complement INTA’s 2018-2021 strategic plan? The presidential task force will be focusing on entrepreneurs and small and medium-sized enterprises (SMEs). I believe that right now we’re in a period of increased creativity and entrepreneurship. These entrepreneurs and SMEs may not appreciate the value of IP, especially at the beginning of their businesses. They may be more focused on business aspects, such as where to get capital and how to distribute their products. It’s critical that they think about IP at the beginning. That leads directly into our first strategic directive, which is promoting the value of trademarks and brands. As well as this, educating SMEs and entrepreneurs about IP will assist with our second directive, which is reinforcing consumer trust.
I. Promote the value of trademarks and brands Trademarks and related IP rights are indicators of the origin and the quality of goods and services. As such, they constitute the anchor of brands. Brands encompass the vision that drives companies’ strategies, their culture, and their offerings to consumers and society. Brands are vessels of trust, marketing tools, and financial assets. Protection of trademarks and related IP. Companies and consumers need strong laws, efficient registration and protection mechanisms, and well- trained and equipped IP Offices and registries. Consistency, predictability and cost efficient registration procedures remain a priority for INTA members. INTA will strengthen its interaction with the legislative authorities, advocating for stronger laws, as well as providing support to executive offices and registries in order to provide companies and consumers with a strong framework for trademark and related IP rights protection. Harmonization of laws and convergence of practices. INTA will continue supporting international treaties as well as other forms of legislation, regulation, and harmonisation of rules and practices allowing easier and better access to trademark and IP rights protection. INTA will be a facilitator of best practices as well as a platform for exchange of ideas and solutions to ensure a more consistent and certain legal environment.
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Enforcement. Strong laws and efficient registration systems without proper enforcement mechanisms are useless. Globalization, the advancement of social media, mobile media, the internet of things, as well as multi-media channels are both an opportunity and a challenge for companies and consumers. Off- and online counterfeiting continue to be a highly profitable business that directly affects consumer safety and impacts gross domestic product, employment and social welfare. INTA will vigorously advocate for effective enforcement mechanisms. INTA will be at the forefront of the counterfeit battle by engaging legislators, the judiciary, customs authorities, law enforcement and investigators. INTA will continue engaging courts by means of amicus filings and through education and communication on the value of brands for companies, consumers, and society at large. Business value of brands. Brands determine the people companies recruit, the products and services they put onto the market, the messages they convey to their customers, and the channels they use. To become part of this holistic approach to brands, trademark and IP professionals should understand and advance the value of brands, as well as their potential as communication, marketing and financial assets. INTA will provide its members with the tools to demonstrate the value of brands and how the work they do impacts brand value.
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INTA President II. Reinforce consumer trust
III. Embrace innovation and change
Consumers continue relying on the brands they trust. However, the relationship between brands and consumers has evolved. Brands have become a product of their environment. INTA will continue to demonstrate that brands serve the interests of brand owners, consumers, and society at large.
Innovation inspires. Companies and consumers are embracing innovation at a faster pace than ever before. Consumer values and needs are also evolving.
Reinforce trademarks as sources of information and brands as promises of delivery. INTA will monitor legislative trends and initiatives that threaten brand owner property rights and the ability of consumers to make informed purchasing decisions, such as standardized or plain packaging, and will advocate for a safer Internet for consumers. INTA will engage consumer organizations to jointly promote the importance of brands for consumer information and safety. Communicate the contribution of brands to economies and society. Through economic studies and multiple communication methods, INTA will promote the positive side of IP, namely its contribution to GDP, employment and social welfare around the world. INTA will intensify its communication to non-IP media to contribute to a better appreciation by the public of IP rights. Considering that many economies rely on SMEs and entrepreneurs, INTA will reinforce its SME and entrepreneur membership and highlight the importance of brand protection regardless of the size of businesses. Brand equity. Companies or individuals own their trademarks and related IP. Consumers influence, in more ways than ever before, how a brand and its equity evolve. INTA will build bridges with consumer associations, professional organisations, and academia to be part of the brand equity conversation.
INTA will monitor change and innovation, assess its impact on brands, and provide support and value to its members. Evaluate changes as a result of technology, innovation, and evolving consumer needs and values. Through its different committees and task forces, INTA will analyse changes, study the correlations between brands and innovation, and assess potential impacts for brand owners. INTA will be a platform for thought leadership on change and how members can take advantage of opportunities and avoid challenges brought about by innovation and change. Educate members on the impact of innovation, technology, and change on brands. Through education, resources, and communication, INTA will continue to be a forum of discussion and knowledge sharing for its members. This will further allow INTA to produce opinions or recommendations on existing and future trademark and IP rights-related issues affecting both companies and consumers. Provide innovative, valuable services to members. Innovation and technology are also impacting associations. INTA will take advantage of innovation and technology, identifying trends and opportunities to provide enhanced services to its members, both at organisational and individual levels.
As these entrepreneurs and SMEs learn more about IP and the valuable role it plays in allowing consumers to make educated decisions about their purchases, it will certainly promote and reinforce consumer trust because consumers will see that these new and upcoming companies have a brand they can trust.
SMEs have that information to hand and can successfully develop their own IP.
SMEs and entrepreneurs are known for innovation and change, and that falls into our third directive, which is embracing innovation and change, and by engaging with these SMEs and entrepreneurs, it will not only assist them in understanding the value of IP, but it will assist INTA with continuing its efforts to be on the forefront of such innovation and change. Part of the point of the task force is to look globally and identify opportunities and challenges that entrepreneurs and small businesses may face when it comes to IP. By doing so, we may be able to identify some opportunities for INTA to step in to provide education and additional resources so that these entrepreneurs and
Because they are emerging and innovative, INTA will be looking at and monitoring these types of technologies as they crop up. Artificial intelligence is another one of these emerging technologies that INTA will be monitoring, as well as blockchain and 3D printing.
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How is INTA dealing with new and emerging technologies that could have an effect on brands, for example, 3D printing?
INTA will be focusing on helping its membership develop a broader approach to innovation, so as these new innovations come into a brandâ&#x20AC;&#x2122;s life, theyâ&#x20AC;&#x2122;ll be better equipped to develop strategies to deal with them, embrace them, and know how to be more competitive in the marketplace in light of these new technologies. IPPro www.ippropatents.com
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Patent Approaches
Emerging innovation Craig Thomson of HGF discusses innovation in emerging fields such as bacteriophage therapeutics, and the challenges of protection in these areas Biotechnological approaches used today in medicine have been shaped by explosions of research in many emerging fields. Innovating in such emerging fields can be more interesting than innovating in an established field. There can be more potential to identify real game-changing innovations, there are no established ‘standards’ set by commercialised products, and the field can change daily. However, for the same reasons, developing an optimised strategy for the patent protection of innovations in emerging fields can be very challenging. In this article, we will look at the emerging field of bacteriophage therapeutics, and the challenges of protecting innovations in this area.
An introduction to bacteriophage Bacteriophage (phage) are viruses for bacteria. Many will be familiar with their use, since the 1970s, as a cloning vector (for example, the lambda phage). Outside of former Soviet states (notably Georgia), phage’s ability to target and kill specific strains of bacteria has been largely overlooked as a potential new form of antibiotic. Medicine in the West has focused on the raft of small-molecule antibiotics that have been developed. With the growing number of strains of antibiotic-resistant bacteria, a new-found interest in the use of phage as an antibiotic has emerged. To date, however, there has been no phage therapeutic authorised for sale as a medicine in Europe or in the US. This presents us with the first challenge. When drafting claims to any therapeutic product, one normally wishes to have a clear understanding of what is likely to be sold, so that granted claims can provide the required subject-matter cover, but also so that opportunities for patent term extensions can be optimised. It is common when one drafts an application to a set of new therapeutic compositions not to know what precisely will be approved for market. However, generally one knows the form of related classes of therapeutics that have been approved, including aspects of such approved therapeutics such as formulation. Until a clearer understanding is reached, drafters must draft broadly and include as many options for protection as possible within new filings. Are phage therapeutics going to be single-phage, or more likely cocktails of phage, such as formulations of different types of phage? What formulations will be most efficient for delivery of 14
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phage? Are wild-type phage going to be approved, or is it going to be easier to obtain marketing authorisation for phage that have been modified in some way?
Learning from the past An analysis of the available patent literature suggests that there are only about 450 patent families that have been filed and that focus on the use of phage as a therapy (excluding uses of phage as vectors). Although the number of filings is relatively low, the filings in the last 4 or 5 years have been increasing. Figures for the last half of 2016 and 2017 are not yet available, but what is available suggest that the filings for 2016 will be considerably greater than either of the previous two years. Over the last 20 years, strategies for claiming antibody therapeutics have been tested through prosecution before patent office around the world. One can now look at recent patent filings for companies with a proven track record of commercialising antibody therapeutics to see how they optimise patent filing strategies for this field. Defining restrictively with reference to hybridoma deposit is now less common. We now understand how patent offices require us to define antibodies with reference to their complementarity-determining regions, a drafting style that can enable us to encompass minor modifications of the wild type. We cannot rely on such developed prosecution strategies when it comes to bacteriophage. What can we learn from past filings? Patent filings perhaps start to become interesting around the 2000s. Take, for example, the first independent claim granted under US Patent 7,459,272 in 2008 (Intralytix): “A method for reducing the risk of bacterial infection or sepsis in a person colonised with pathogenic bacteria comprising treating the colonised person with a pharmaceutical composition containing bacteriophage of one or more strains which produce lytic infections in said pathogenic bacteria, wherein said treatment occurs prior to said colonised person developing an illness due to said pathogenic bacteria and said treatment reduces the risk of bacterial infection or sepsis in said colonised person.” This is an impressively broad claim, not being restricted to any specific bacteriophage (other than it being a lytic phage). It was successfully argued that in 2003 such prophylactic methods in the terms defined within the claim were both novel and not obvious. As the art developed, it has become increasingly difficult to obtain such broad claims. It is now more common to see product and use claims restricted to phage defined by deposit and or nucleic www.ippropatents.com
Patent Approaches acid sequence. For example, looking at US Patent 8,071,352, granted to Intron Biotechnology in 2011, we see a claim to “an isolated bacteriophage belonging to Myoviridae family, which has killing activity specific to Staphylococcus aureus, and the genome comprises sequences of SEQ ID. NOs:1-26”, with a sub-claim further defining the phage as “one that was deposited under the Accession No: KACC 97001P”.
US law. Additionally, case law in Funk Bros Seed Company v Kalo Inoculant Co has made it difficult to obtain protection for novel phage cocktails.
Although such product claims are unlikely to now be valid in the US, method claims in the US are now more acceptable. We now also see more claims drawn to consortia (for example “a panel of bacteriophage, wherein the panel comprises any one or more bacteriophage selected from the group”) and to modified phage. Look, for example, to US Patent 9,623,058, the principle claim in this patent being: “A Staphylococcus bacteriophage K mutant, which comprises one or more mutations within one or more of the following regions: a) the region between ORF 18 and ORF 19; and/or h) ORF 100.”
With the US in mind, it is now useful when preparing new applications to include as much information relating to modifications or formulations of the phage. If a synergistic effect can be demonstrated from your cocktail, then this should also be included as it should help issues arising from Funk Bros.
Current challenges and looking to the future
Perhaps the biggest challenge comes from trying to future-proof your patent filings. A patent has the potential to provide protection for 20 years, so we need to have an eye to the products of the future. With the interest in synthetic biology, will synthetic phage be the preferred therapeutic agent?
It is now difficult to obtain methods of use claims where the invention comes from the use of phage in general, rather than the use of specific phage. However, where we can argue that the general use of phage is novel and inventive in the context of the method, such claims should be pursued. Applicants are now more focused on developing specific therapeutics, and so will now more likely want to pursue product claims drawn to phage compositions that will be useful in therapy, with narrower claims drawn to the therapeutic uses of those phage. In Europe, the patent system is well disposed to such a strategy. The most significant problem in many current cases in Europe is having to demonstrate to patent examiners that a phage in a patent application is different to that in cited prior art. For this reason, it is advised to include as much characterisation data as possible in new filings, such as morphological and functional data. The US patent system is, however, perhaps the greatest current challenge. It is not presently possible to obtain patent protection in the US for ‘natural products’, which include isolated phage under
Consequently, it is likely that the product claims outlined above are no longer valid in the US, with the likely exception of the claim drawn to a modified phage.
Of course, we should still be able to rely on protection in the US from claims drawn to methods of treating specific diseases with specified phage.
Will phage that have been modified to remove genes that are not required (or potentially detrimental to full therapeutic potential) be the therapies of the future? If this is the case, we must ask ourselves if claims drawn to specific deposited phage, or to tightly defined nucleic acid sequence are broad enough to cover these future potential therapeutics. For that reason, we should try and be innovative in our claim strategies and our applications should push patent offices to accept more broadly defined phage (including modifications to those sequences). Finally, as this field becomes established, and the levels of competition in the market rise between the principle parties, we will no doubt see a corresponding increase in defensive and aggressive patent strategies. The field will then become more interesting, for perhaps a different reason. IPPro
Perhaps the biggest challenge comes from trying to future-proof your patent filings. A patent has the potential to provide protection for 20 years, so we need to have an eye to the products of the future Craig Thomson, partner, HGF 15
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Value Analysis
Getting with the times Cindy Ahn of Longford Capital explains how the general counsels of IP-centric companies can maximise value and innovation while staying within budget Budget constraints often act as a barrier to aggressive litigation and patent protection. But it doesn’t have to be that way. Companies can pursue justice and have their holiday bonuses, too.
revenue. They are shifting the risk and costs that sometimes prevent companies from defending patents, and redefining the role of legal departments along the way.
As general counsel managing multiple litigations for a publicly traded biotech firm, no statement crystalised the pressure of balancing budgetary constraints and quality legal practice more than a warning my former boss gave early in my tenure, that if I didn’t come in under my budget, the company wouldn’t be able to give Christmas bonuses that year. That statement kept me intensely focused on controlling costs. I didn’t have the luxury of taking big risks, unless I wanted my colleagues to potentially suffer the consequences. Luckily, our company was extremely intellectual property savvy, in part because the CEO was a former patent litigation attorney with the confidence to assess the importance of IP in protecting our technology and market position.
From cost centre to value driver
As a result, we did not hesitate to litigate when appropriate. This required me to hire legal teams I trusted to win, which accounted for the lion’s share of my legal budget every year. I spent a lot of time pouring over invoices and attempting to cut costs in a manner that would not jeopardise the overall quality of work that I expected from my outside legal teams, and in turn was expected from me. I never cost my colleagues their Christmas bonuses, but it certainly wasn’t easy. I was recently reminded of the immense pressure to balance costs with effective legal counsel when I read that pharma, biotech and life science had easily the highest legal spend of any industry in the US last year. Looking back on my own situation, however, I don’t think I would be on such a knife’s edge if I were an in-house counsel today, and here’s why.
A new era of innovation For an industry built around innovation, many legal departments at pharma and biotech firms can be relatively stuck in their ways, relying largely on time-tested methods of cost cutting just as I did: tamping down on billable hours, seeking alternative fee arrangements or potentially sacrificing quality for low cost options. While most inhouse counsel would agree these options can be helpful in controlling costs, they would concede that they are merely band-aids, to be applied when the ideal strategy or solution simply seems too costly. Now, however, a few innovative general counsels are challenging this paradigm. They aren’t struggling to choose between aggressively pursuing IP claims and coming under budget, because they know they can do both. Rather than obsessing over saving money, they are focusing instead on identifying winning cases and generating 16
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The volume of legal spending in the pharma and biotech industries is staggering: firms spend, on average, 2.5 percent of revenue on internal and external legal services, according to a survey from the Corporate Legal Operations Consortium. That’s a whole percentage point higher than the next highest industry, media and entertainment, and in an industry with an estimated $370 billion in sales, that’s some $9 billion in legal spending. Controlling these soaring costs has to be a priority for every company in the industry, from big pharma to biotech startups. However, the spirit of innovation at the heart of the industry—labs filled with brilliant scientists, discoveries that save lives and global searches for the next wonder drug—often seems to be missing from legal departments, which are too often seen as cost centers, tasked with the near-impossible tasks of keeping expenses in check while also defending all-important IP. When it comes to litigation, many of these companies are still asking themselves the questions: “do we have the budget for that?” or “what if we lose?”, that can cause them to miss opportunities to extract value from meritorious IP claims. After all, even a successful case can eat up resources and act as a short-term drag on profits, potentially doing more damage that it is worth. But in order to remain competitive, general counsels and their bosses know a vigorous IP strategy is essential. Many beleaguered general counsels have set out to spend less without scaling back on their caseload, pushing the risks and pricing pressure on to their outside law firms, and driving a race to the bottom for firms that specialise in IP cases. Patent attorneys at established firms are being undercut by new entrants offering to take on cases for a fraction of the cost—and with a fraction of the experience and expertise. Rather than rethinking their strategy, companies are simply trying to litigate as lean as possible. It doesn’t have to be this way. Innovative new tools like litigation financing allow companies to deploy the best available legal resources without causing major disruptions to cash flow or absorbing a multimillion-dollar hits to quarterly earnings. Forwardthinking general counsels are using these tools to once again pursue the ideal path forward, rather than the most affordable one. www.ippropatents.com
Value Analysis A flexible new solution Although the use of litigation finance in the US is rising at a rapid clip, about a third of corporate lawyers are now using it, up more than 400 percent since 2013, we remain far behind the UK and Australia in adoption. Yet the main concerns stifling broader adoption are evaporating. Just five years ago, 85 percent of US lawyers believed legal financing would lead to unnecessary litigation. Today, that figure has dropped to 10 percent. While litigation finance has historically been used mainly for trials, the legal battlefield for pharma and biotech has expanded beyond the courtroom in recent years, with generic drug makers often seeking approval under the Hatch-Waxman Act or requesting inter partes reviews (IPRs) to settle patent disputes. But as long as there is a resolution point and financial reward at the end of the process, litigation finance remains a valuable tool. A standard litigation finance arrangement calls for the financier to take a percentage of the proceeds in the event of a successful outcome. In an IPR—or any other administrative proceeding—the value exchange would derive from a market analysis that determines the potential value of a win. A company seeking to bring a generic drug to market, for example, might agree to share a percentage of sales for a finite period. Litigation finance is also a democratising force. It is just as useful to a large-cap firm looking to alleviate short-term costs as it is to a growth-stage company whose success depends on its ability to defend ground-breaking patents. In the raging IP battle between innovators and generics, it offers both sides a fair chance to prevail, based on the merits of their claims, not on their resources.
Embracing disruption For any company operating in the pharma/biotech space, legal costs are built into the business model. Generics know they will face costly lawsuits as they try to bring cheaper drugs to market, just like innovators can expect to spend millions fighting off attacks on their signature drugs, particularly in the age of IP rights. Any startup seeking to break into the industry should know that their innovations
will be gobbled up by bigger competitors if they don’t come with a savvy IP strategy. It’s safe to say that those costs aren’t going down anytime soon, which is why general counsels need to get creative, and be prepared to deploy a full array of tools. Because IP is so central to the pharma and biotech industries, business leaders generally appreciate the value of applying for patents and protecting them. But that doesn’t mean they can always afford to wield them. Even companies with vast resources are apt to pass on smaller cases that could spoil a quarter, possibly damaging shareholder value more in the short-term than they would boost it in the event of a favorable outcome. Yet general counsels are essentially throwing away assets if they ignore patent infringement. Again, the scenario cries out for innovation. And again, litigation finance offers an elegant solution. Because the cost is incurred only when, and if, a case reaches a successful conclusion, income and expenditures are synchronised. For generics, the legal winds have lately been blowing in a positive direction, thanks to legislation that not only encourages them to attack patents, but also allows them to do it faster and cheaper than ever before. But it’s still a costly endeavor, particularly for companies without the cash hoards of their large-cap competitors. For these firms, the ability to litigate at the same level—hiring lawyers of equal ability and expertise—is essential to carving out a market share. The same goes for growth-stage companies, which may have the next great breakthrough, but will quickly see its value destroyed if they can’t afford to protect and monetise it. For companies whose future depends on one big innovation, there is no greater risk than having their resources sucked up by legal battles, rather than marketing or production. It’s all but impossible to avoid these disputes, however, which is why partnering with a litigation finance firm makes so much sense. In each case, it no longer has to be a question of whether the legal department will blow the holiday bonus pool, but whether it will deliver a holiday surprise. General counsels no longer have to ask themselves how much they can do with their budget. The question is how much value they can get from their company’s IP. IPPro
General counsels no longer have to ask themselves how much they can do with their budget. The question is how much value they can get from their company’s IP Cindy Ahn, director, Longford Capital 17
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Innovation Analysis
Patent counsel: innovation stimulator Jeffrey Stone, partner at Barnes & Thornburg, describes how patent counsel can become “innovation stimulators” to enhance their work Patent counsel, including patent attorneys and patent agents, take on a number of roles in assisting clients with a variety of patent and other intellectual property matters.
One key non-traditional role for patent counsel is that of “innovation stimulator”. In this role, counsel facilitates the purposeful stimulation of a client’s inventive conception and innovation processes.
These roles typically include that of counselor; documenter; protector; and strategist. However, I encourage patent counsel to look beyond these traditional roles to seek out unique and creative ways to provide maximum value to the client.
Patent counsel is—by virtue of training, experience, intense knowledge of the client business strategy and the relevant competitive landscapes—well-positioned to take on the role of innovation stimulator. The rewards for taking on this challenging role are many,
This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.
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Innovation Analysis including an enhanced attorney-client relationship and satisfaction that comes from helping a client’s business grow in value.
Invention and innovation are key drivers of client value Technology-based client businesses operate in highly competitive, knowledge-driven environments that are constantly changing and evolving. Accordingly, these clients must continually innovate to deliver valuable new solutions to meet customers’ evolving needs and to remain differentiated from competitors. Tech-based clients, therefore, must strive for a relatively continuous and vibrant flow of new ideas focused on serving strategic goals to not only maintain the current competitive position, but also to strategically grow revenue in new ways. All tech-based businesses understand this, and many of those businesses strive for a culture of innovation, but an unfortunately large number fail to reach full innovative potential. Some of the key reasons for these innovation shortcomings include: � �
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A general deficit of organisational knowledge of optimal inventive processes. Innovation is neither intentional nor purposeful, with invention instead occurring primarily on an ad hoc basis, with innovation becoming lost in the chaos of pressing day-to-day job responsibilities. Invention and innovation is generally expected only of technical personnel with little to no input sought from non-technical personnel, many of whom are customer-facing and may understand customer wants and needs much better than technical personnel, in some cases. A resulting inability to fully unlock and realise the full inventive potential of inventors and to effectively create a culture of creativity and innovation throughout the organisation to ensure a continuous stream of fresh ideas with maximum volume and optimised focus.
How can patent counsel help correct these deficiencies? The answer is not as difficult, disruptive or time-intensive as it may seem, and patent counsel plays a leading role in the solution.
The role of patent counsel as innovation stimulator
Problems often go unsolved, solutions are not properly focused on the problem, solutions are not the best solution, the raw number of ideas generated by the organisation is suboptimal. For example, many organisations use brainstorming sessions to discover answers to questions that, unfortunately but predictably, continue to remain largely unanswered post-session. Most of these brainstorming sessions are uncontrolled, producing a large number of off-topic or non-feasible results, and are further contaminated by various inventive model elements that are counterproductive, thus producing suboptimal results. A purposeful innovation session can help patent counsel address some of the problems with clients’ innovation systems. The session may be executed, with patent counsel preparation and facilitation, with minimal expense, time commitment and disruption to the organisation. Our experience facilitating numerous sessions is that they consistently provide both immediate and long-term value measured by: specific focus targeting; near- to mid-term commercial potential; the sheer volume of ideas generated; and training in an optimised innovation process. Sessions executed over the years consistently produce a large volume of ideas in a very short timeframe, ranging between 50 concepts to 200 concepts in a typical four to six-hour session. The following are examples from an actual session: �
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A successful purposeful innovation session comprises, among other things, the following key characteristics:
First, the client should be introduced to the potential power of purposefully focusing on new idea generation to solve existing issues, meet customer needs, and/or explore new strategic areas.
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While this may sound like what the client currently expects and requires from the inventors, the actual result is almost always less than optimal.
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The session was executed to improve a relatively old ‘known’ portion of a medical device system. Because of the age of the related art, and the absence of new concepts, the client was pessimistic that anything of value would be produced, but nonetheless agreed to do the session. The session produced 75 potentially patentable concepts, impressive enough for a subsystem considered ‘old’. But more significantly, and of much more value to the client, 25 of the concepts were commercialisable in the short term, while 25 more concepts were commercialisable in the medium term. The client now engages in regular sessions covering various aspects of the overall system as well as exploration of new strategic directions.
Patent counsel provides an overview of the shortcomings of the current inventive model and why it does not produce optimal results. Discussion of elements of an optimal inventive model is included with supporting research summary. Participant-inventors receive both classroom-style and experiential training that can be incorporated into daily routines, increasing invention frequency and capture. www.ippropatents.com
Innovation Analysis
When patent counsel takes on the role of innovation stimulator, it adds value to the attorney-client relationship
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Required endorsement of the session by management, with specific focal area(s) of the session provided by management. Management participation in the session itself, firmly demonstrating to all participants that they are absolutely empowered to innovate in ways that align with the businesses strategic goals. Management also experiences firsthand the previously unseen inventive talent possessed by the participant-inventors. Specific selection of session participants with regard to the following: [i] Intentional optimisation of diversity of participants’ thinking styles is critical to the success of the session. Linear and abstract thinkers are both accounted for, as are right-brain dominants (typically non-technical participants) and left-brain dominants (typically technical participants). [ii] Personnel with customer-facing roles are sought out for inclusion. Patent counsel knowledge of key competitive activity within the relevant patent landscape completed before the session is conducted. Perhaps most importantly—and most difficult to achieve during initial sessions, particularly for technical folks—participants are instructed to absolutely not optimise, or even enable, the concepts generated during the session. Adherence to the nooptimisation rule is critical to the success of the session in several respects, not the least of which is the efficient use of valuable session time, and is further supported by the fact that many of the most prolific inventors do not optimise solutions initially, preferring instead to first capture the concepts followed by selective optimisation. Post-session categorisation and ranking of the generated ideas, done in most cases by the participants themselves using an established ranking system across a number of key criteria. This is followed by optimisation and full enablement of the highest ranked concepts—most typically these are ideas that are commercialisable in the short- to mid-term.
Clearly, each session will differ not only in form, but also in substance depending on the client’s needs, expertise level. Creating an innovation stimulation programme is a bit more involved, but companies can surely conduct some basic research into the optimisation of invention process stimulation strategies. 20
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Experience indicates that companies receive at least the following benefits from execution of at least one session: �
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Participants recognise deficits of the current inventive model and learn techniques to unlock their full inventive potential and to further understand how the power of that inventive potential can be realised on a daily go-forward basis. Participants are infused with the knowledge that they are, in fact, inherently capable of generating profound and valuable inventions, and that they are empowered by management to innovate. Management has firsthand evidence of the inventors’ talent and skill to generate new and highly valuable concepts when given the proper framework, with management viewing the inventors in a much more favorable light post-session. The typical “inventor” is expanded to include non-technical, as well as technical, personnel, resulting in conceptions that are more customer-oriented and enhancing the depth and breadth of the generated ideas by, among other things, helping participants who may be introverted to freely participate. Each session generates a high number of new and useful inventive concepts for consideration that are purposefully targeted to strategic goals and needs of the business, with a high percentage likely capable of commercial execution.
Properly focused sessions may identify the best possible concept for commercialisation, with simultaneous generation of a dense defensive sphere of protective ideas surrounding the identified best concept. The business realises enhanced value by: [i] Identifying and protecting commercial products [ii] Generating patent protection that strategically and defensively surrounds core commercial products to the effective elimination of commercially viable alternatives [iii] Strategically disrupting competitive patenting activities A true culture of invention and innovation is created throughout the organisation, not just within the technical groups, resulting in enhanced innovation flow over time.
When patent counsel takes on the role of innovation stimulator, facilitating highly focused, commercially viable and valuable inventions with a key goal of helping to create a fully optimised culture of innovation, it adds value to the attorney-client relationship. IPPro www.ippropatents.com
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
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European Patents
Strict and inflexible: material claims at the EPO Innovators in advanced materials can face an uphill struggle to get suitable patent protection at the European Patent Office. Matthew Smith, partner at Mewburn Ellis, explains When a useful new material is made, by whatever means, for whatever purpose, the intellectual property surrounding that must be protected. In my opinion this is true for all inventions, of course, but in the field of materials we are presented with some special challenges. These are particularly apparent before the European Patent Office (EPO). New materials are vital in addressing the problems we face individually as well as societally. But as materials become more complex, refined, and diverse, it seems to me that our systems for protecting such innovations must also change, evolve and improve to suit the modern technological landscape. Patent claims can primarily be split into two types: ‘item’ (product or apparatus) and ‘activity’ (use, method, process). Ideally, we want protection of both types: to protect, for example, not just our new material but also uses of it and ways of making it. The EPO requires that we define a product in terms of its technical features (physical characteristics). This works well for a ‘conventional’ product—a widget with part a connected to part b. What do we do when our product is a material? In the best case scenario, we can recite or explain the structural features which define it—particles of X, dispersed homogeneously in Y, for example. However, increasingly we face situations where this is simply not possible. We cannot say, or do not know, the microstructure of our new material—perhaps it is subtly variable through its bulk; perhaps a purely structural definition would be too narrow to capture the true scope of the invention. Composites and particularly alloys are just two areas where this is often a concern. This gives us two options. First, a process based definition of the material by reference to the way in which we have made it. Second, a parameter based definition of the material by reference to its key performance properties and characteristics.
A process-based definition This is what is commonly referred to as a product-by-process claim. These claims define a product in terms of the process used to make it: for example, a material X, obtainable by the steps a, b, c. There are two problems here: both are somewhat swept up by a comment seen frequently in comments from European patent 22
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attorneys: traditionally, the EPO does not like product-byprocess claims. The first problem stems from a point of interpretation: the EPO considers the product-by-process claim to be directly to the product itself, not limited by the method used to make it. That means the product itself must be novel and inventive. Fair and reasonable on paper, sure, but in practice a major headache. EPO case law going back over 30 years places a burden of proof on the applicant. This can put us in a very uncomfortable position: having to prove novelty of the claimed product. That generally requires experimental data reproducing prior art teachings (which is often difficult or even impossible), possibly within a relatively short time frame, perhaps six and a half months, unless extra fees are paid. Such activity can be prohibitive for small companies, who may not have resources available for such investigations. It may even prove a challenge for larger concerns, whose research and development departments are not set up to reproduce but to innovate. While the EPO examiner does need to explain their objection to a product-by-process claim, for example by explaining why they think the product of two processes would be the same, it is not straightforward to overturn such an objection without hard evidence. The second problem again stems from interpretation, but this time of process claims. How so? Well, Article 64(2) of the European Patent Convention (EPC) states that the protection afforded by a process claim extends to “products directly obtained by such process”. This seemingly removes the need for product-by-process claims, and indeed the EPO often argues to that effect. However, that interpretation is not quite right. Article 64(2) of the EPC very carefully recites that protection is given to only those products directly obtained by the claimed process. That is, the product must actually have been obtained by the claimed process. The product-by-process, on the other hand, is not so limited (when the word ‘obtainable’ is used—using ‘obtained’ has some limiting effect in some EPO countries but not in others, although the EPO make no distinction). The product-by-process claim covers the product as obtained by any method. www.ippropatents.com
European Patents Clearly this is a more useful scope. It’s also more enforceable–as a patentee, I don’t have to prove or investigate the alleged infringer’s process. Having their product is enough. It follows from the above that product-by-process claims are not only important in their own right, they are also judged to a very high standard by the EPO. In my opinion, this is a rather unsatisfactory situation. Ironically, in the field of polymers ‘product-by-process’ claims are often accepted without question. There, it is well understood that the product of the reaction between a number of monomers is somewhat unpredictable at an atomic/molecular scale—but that the product can still be useful and predictable at a macro scale. It seems to me that the EPO should start taking a more similar approach with claims directed to other types of material than polymers. Denying the inventors of complex materials protection for those inventions simply because they have created, for example, a composite not a polymer is unreasonable. The EPO (in particular the examining divisions) should also accept that the enhanced protection afforded a process claim by Article 64(2) of the EPC is no substitute for an actual product claim (even if it is a productby-process claim). Applicants have justifiable reasons for wanting product protection, which should be understood and respected.
A property based definition So a process-focused definition is less than ideal. What about the other option, a property-based claim? Sadly, things are not much better. Let’s say we define our excellent new material as comprising components A and B, and having a thermal conductivity of X, tensile strength of Y, and a refractive index of Z. Again we face a number of problems beyond the normal. The main one is analogous to the ‘first problem’ mentioned above: the EPO is able to place the burden of proof on the applicant, to prove that prior art materials comprising A and B do not have the properties X, Y and Z. The EPO is strict here: no benefit of doubt can be accorded if the applicant does not provide evidence.
Certainly as a first step the EPO examiner must make some comparison with the prior art, but often it falls to the applicant to explain in detail why the claimed materials are different from those of the prior art, and often to provide experimental evidence proving that. Again, this is not always straightforward or even possible for all applicants. Furthermore even if the objection is addressed using argument there is no particular standard to be met: we must simply ‘convince’ the examiner. What is needed to achieve that can be highly variable. Then there is the matter of clarity. Of course the meaning of claims must be clear but the EPO has special rules for the consideration of materials’ (all) parameters in patent claims. Definition in terms of parameters is only allowable if “the invention cannot be adequately defined in any other way”—but there is no clear standard for what “adequate” means. Parameters must be reliably measurable—in practice this often means extensive explanation of measurement methods must be included in the description, adding a time and cost burden for applicants. Further problems can arise if there are a number of different ways of measuring a property (the classic example being viscosity). While the need for claim clarity is understandable from the EPO’s (and hence the public’s) perspective, their strict approach is again, in my opinion, excessively hard on applicants making complex innovations, particularly in the materials field. In my view, it is important for EPO examiners to be encouraged to demonstrate a strong prima facie case for lack of novelty, without shifting the burden of proof to the applicant until a solid case based on cited references has been put forward.
What does the future hold? Innovators in advanced materials can face a serious uphill struggle to get suitable patent protection at the EPO. That is not to say it is impossible, or that applicants should be discouraged from applying. It is merely a recognition that when writing such applications we must do so with an eye for the future (including plenty of flexibility) and with a plan for success. While it is unlikely that things will change drastically at the EPO in the short term, I am hopeful that gradual trends in technology will mean the EPO will appreciate the difficulties its evolved case law represents for emerging technologies. IPPro
Innovators in advanced materials can face a serious uphill struggle to get suitable patent protection at the EPO
Matthew Smith, partner, Mewburn Ellis 23
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Pacific Partnership
The transition of the trans pacific Oscar Mago and Kaylee Savournin of OMC Abogados explain how a renegotiation of the TPP could effect Peruâ&#x20AC;&#x2122;s IP landscape 24
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Pacific Partnership Barney Dixon reports From an intellectual property standpoint, how can Peru benefit from the Trans-Pacific Partnership? The Trans-Pacific Partnership (TPP) helps us gain the knowledge, innovation and technology from other more developed countries. By regulating the protection of IP in the Peruvian market, it will make it more attractive and safe for international companies dedicated to research in various fields, especially to cutting edge research. This will mean a leap for Peru, access to new tools for its development and also a decisive step in the way of putting national standards at the level of the most developed economies in the world. In addition, Peru is a country of innovators, which urgently needs to stimulate and protect its own innovations. Also, we must highlight that one important benefit for a mega-diverse country like ours, is the recognition of the existing link between traditional knowledge, genetic resources and IP, topics that come together in a way that contributes to their protection and adequate utilisation by society. According to the USTR, the TPP would set a strong patentability standard in participating countries. How would this differ from Peru’s current standard? After the World Trade Organisation’s Doha Round of trade negotiations held in Qatar, the US started to negotiate multilateral and bilateral trade agreements with other countries. In those agreements, the most controversial chapter was the one related to IP. Why do we say it is controversial? Because at the moment of negotiating this chapter, the US applies what is known as the agreement on TradeRelated Aspects of IP Rights (TRIPS) plus, that is, they apply a higher standard than that stipulated in the TRIPS agreement. The TRIPS plus concept covers both provisions designed to raise the level of protection for rightsholders beyond the provisions of the TRIPS agreement, as well as measures to reduce the scope or effectiveness of limitations to the rights and exceptions arising from the TRIPS agreement, all of which have the effect of reducing the capacity of developing countries to protect the public interest. This makes developing countries, with low negotiating capacity, sign adhesion contracts, renouncing their autonomy to control their own resources, because on the one hand, they restrict their sovereignty by liberalising the regimes of access to biological material and the protection of traditional knowledge, placing at risk one of their strategic resources of development: biodiversity. 25
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One example of this is second use patents in pharmaceutical products. To date Peru has implemented exclusions and protection systems in accordance with the TRIPS agreement, decision 486 and decision 345 of the Andean Community with regard to the patentability of pharmaceutical products, prohibiting second-use patents. In contrast, the TPP establishes that second-use patents are patentable. It is for this reason that the members of the TPP had to negotiate this point, reaching the following agreement, patents of second use will be accepted, but in the case of Peru, the competent authority should consult the Andean Community to be able to accept it. How could the potential renegotiation of the TPP affect the IP portion of the agreement, considering Trump’s stance on nondomestic trade and IP? The ministers of the remaining members of the TPP have tasked officials to engage in a process of assessing options to bring the comprehensive, high quality agreement into force expeditiously. Over the past several months, officials have worked to reach a balanced outcome that maintains the significant benefits of the TPP. This renegotiation consisted in suspending 20 clauses of the original TPP agreement, including postal service, electronic commerce and the fight against illegal wildlife trade; but more than half of them are related to IP one of the most controversial chapters of the agreement. In January 2018, they reached an agreement and the renegotiated TPP, called Comprehensive and Progressive Agreement for TransPacific Partnership (CPTPP) was born. Comparing both treaties, we can say that the TPP’s IP chapter aims at the protection and observance of IP rights, and its contribution to the promotion of technological innovation and to the transfer and dissemination of technology. But it also ensures that signatories can adopt the necessary measures to protect the public health and nutrition of the population, or to promote the public interest in sectors of vital importance for their socio-economic and technological development, either by preventing the abuse of IP rights by their owners or through the use of practices that unjustifiably limit trade or are detrimental to the international transfer of technology. The CPTPP maintains the high standards, overall balance, and integrity of the TPP while ensuring the commercial and other interests of all participants and preserves their inherent right to regulate, including the flexibility of the parties to set legislative and regulatory priorities. Ministers also affirm the right of each party to preserve, develop, and implement its cultural policies. Ministers consider that the CPTPP reflect the desire of the parties to implement the TPP outcomes among themselves. www.ippropatents.com
Pacific Partnership Trump’s actions benefited the developing countries that are members of the TPP, because there will no longer be a conflict between the national legislation and the CPTPP, reaching an equilibrium point in this topic Maylee Savournin, lawyer, OMC Abogados Taking in consideration Trump´s “Make America Great Again” slogan, and the withdrawal of the US from this treaty, we can say that the IP chapter of the original TPP has not been severely affected by the renegotiation, because the US is a great innovative and technological power in the world, and it is natural that it seeks to protect to the maximum its investment in research and production of new products, so when they negotiate bilateral or multilateral trade agreements, it is not surprising that its content resembles its legislation. Trump’s actions benefited the developing countries that are members of the TPP, because there will no longer be a conflict between the national legislation and the CPTPP, reaching an equilibrium point in this topic. Are there any potential gains to be had for Peru in the renegotiation of the TPP? Are there any concerns that Peruvian IP professionals have about the original agreement that could be addressed? Yes, there are. As we said before, the objective of the CPTPP, was not to modify the original text, but to obtain an equilibrium point after the withdrawal of US. Therefore, Peru has obtained the following benefits: Winning five new markets in a single trade agreement, as is the case of Australia, Brunei Darussalam, New Zealand, Malaysia and Vietnam. The potential increase of Peruvian non-traditional exports is estimated to these markets in $2,250 million with the entry into
force of the TPP. The country also wins by the improvement in access conditions and rules agreed in previous bilateral agreements. Access to global value chains, as a result of the application of the mechanism known as “accumulation of origin”, which allows to consider consumable goods, materials or intermediate goods originating in any country as if they were Peruvian. This mechanism will particularly benefit small companies, since they will be able to export inputs that are linked to a value chain in the TPP block. The integral nature and high standards of the TPP will contribute to the process of modernisation of state institutions, as well as the application of expeditious systems and procedures of institutions linked to foreign trade. At the same time, it will allow Peru to benefit from the good management practices of its partners in the treaty. And the most important gain for Peru is that the CPTPP members have recognised the existing link between traditional knowledge, genetic resources and IP, topics that come together in a way that contributes to their protection and adequate utilisation by society. Peruvian IP professionals have one main concern about the TPP, which is the acceptance of the protocol relating to the Madrid Agreement concerning the international registration of trademarks, approval has always been objected by different sectors involved using constitutional, legal and administrative reasons and also because of the negative impact on the resources generated by the competent national office. IPPro
Peruvian IP professionals have one main concern about the TPP, which is the acceptance of the protocol relating to the Madrid Agreement concerning the international registration of trademarks Oscar Mago, managing partner, OMC Abogados 26
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Case Report
TCL v Ericsson: the future of FRAND rate setting TCL Communication v Ericsson was the first time a US court has determined FRAND rates for a portfolio of cellular SEPs and will likely have far reaching implications for future SEP licences. Sachin Sinha of Concur IP explains 28
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Case Report
A public version of the much awaited judgement in the TCL Communications v Ericsson case came out just before Christmas. The ruling, which was handed down at the US District Court for the Central District of California on 21 December, is the first time a US court has determined Fair, Reasonable, and Non-Discriminatory (FRAND) rates for a portfolio of cellular standard-essential patents (SEPs), and will likely have major implications for future SEP licences. It is also the first time a top-down approach has been reliably used by a court to determine FRAND rates for cellular SEPs.
The decision from a UK court in Unwired Planet v Huawei case also referred to the top-down approach, but it was used merely as a cross check for comparable licences. In the TCL v Ericsson judgement, it is the primary method used in combination with comparable licences for determining the FRAND rates. Many industry experts have expressed their opinions on this judgement, most of them considering it to be favourable to implementers.
The key takeaways from TCL v Ericsson A firm stand against royalty stacking The court took a firm stand against royalty stacking. The judgement cited one of the key reasons for using top down analysis is that it prevents royalty stacking. The court also found that the results from the ex-standard approach proposed by Ericsson are highly suggestive of royalty stacking and lack fundamental credibility. The court adopted a maximum aggregate royalty rate based on various public announcements made by SEP owners and industry leaders for the top down calculations.
Top-down approach as a preferred method The court relied on the top down approach for determining a fair and reasonable royalty rate.
conceded number of Ericsson SEPs and Ericsson’s disputed number of SEPs as the numerator. After applying an adjustment, the court used the same denominator determined by Concur IP, in collaboration with other TCL experts, for the number of industry-wide SEPs in all four calculations. It then compared these four rates against the unpacked rates from the comparable licences and adopted a rate of 0.45 percent, which is very close to one of the rates (0.452 percent) given by the top down calculation using 6 percent maximum aggregate royalty rate and Ericsson’s disputed number of SEPs. 3G: For 3G, the court derived two rates for the US using top down analysis (one using TCL’s conceded number of Ericsson SEPs and other using Ericsson’s disputed number of SEPs).
It said: “A top-down model aims to value a portfolio of SEPs by determining a fair and reasonable total aggregate royalty for all patents that are essential to a standard.”
However, the court found both these rates (0.103 percent and 0.129 percent) to be significantly lower than the rates from the comparable licences analysis and adopted a rate of 0.30 percent, which is close to the lowest rate (0.39 percent) from the comparable licences analysis.
“It then apportions that royalty to the SEP owners based on the relative value of their portfolio against the value of all patents essential to the standard.”
2G: For 2G, the court directly used the royalty rate (0.16 percent) derived from the top down analysis, as there was no reliable unpacked 2G rates from comparable licences.
The court, however, noted that the top down approach cannot address the discrimination aspect and relies on analyses of comparable licences to determine a rate that is non-discriminatory. It applied the combination of top-down and comparable licences analyses to arrive at a FRAND rate for each of 4G, 3G, and 2G. 4G: The court first determined royalty rates for Ericsson portfolio using top down calculations. It derived four royalty rates for the US using maximum aggregate royalty rates of 6 percent and 10 percent for 4G and using both TCL’s 29
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Industry-wide essentiality analysis feasible The court took a positive view on the industry-wide essentiality analysis performed by Concur IP and considered this as a reliable source for the number of industry-wide essential patents. Dr Zhi Ding cross-checked a sample of essentiality analysis outcome with his own analysis and found very few disagreements. Ericsson made numerous challenges to the process including the time and fee charged by Concur IP, qualification of team members and the fact that the team members were aware of the parties involved in the case. www.ippropatents.com
Case Report However, the court was not persuaded by Ericsson’s arguments to reject Concur IP’s analysis and used the number of industry-wide SEPs determined by Concur IP and Dr Ding, after some adjustments, as the denominator for the top down calculation.
Contribution count not an indicator of patent portfolio strength Ericsson proposed the use of technical contribution counting as a means to determine the strength of its portfolio. The court rejected the idea citing two major flaws: a lack of correspondence between technical contributions and patents, and its inability to account for transferred and expired patents.
Importance of individual patents difficult to quantify TCL experts analysed the importance and contribution of Ericsson SEPs and used the analysis to calculate a value share for Ericsson’s SEPs relative to the value-distribution of all SEPs in the standard. While the court did find some value in the importance and contribution analysis, particularly to show that Ericsson’s patent portfolio is certainly not as strong or essential as it has claimed, it found the application of this analysis to calculate the overall rates too flawed to be used. The court cited three flaws: � �
�
Lack of similar analysis on rest of the SEPs for comparison with importance and contribution of Ericsson’s SEPs Lack of analysis on whether the alternatives identified for various Ericsson SEPs would be mutually consistent with each other, who owned the alternatives, whether the alternatives were unpatented, expired, or part of a previous standard Lack of justification to map specific importance and contribution ratings to quantifiable values
Broad interpretation of similarly situated firms The court took a broad interpretation of similarly situated firms and found Apple and Samsung to be similarly situated as TCL for licence comparison along with Huawei, LG, HTC, and ZTE.
The court made following observations in this regard: � �
�
Sales volume alone does not justify giving lower rates to otherwise similar firms Factors such as the firm’s overall financial success or risk, brand recognition, the operating system of their devices, or the existence of retail stores have no bearing on whether Ericsson’s royalty rates for its SEPs are discriminatory Local kings, such as Karbonn and Coolpad, are not similarly situated to TCL
Competitive harm to a firm sufficient to prove discrimination While Ericsson argued that discrimination must have the effect of impairing the development or adoption of standards, the court took a much broader view and found that harm to the competitor firm offered discriminatory rate is sufficient to prove discrimination.
Impact on future SEP licences It would be interesting to see how this judgement and the underlying findings impact SEP licences going forward, both new licences (particularly for the upcoming 5G technology) and the existing ones when they are up for renewal. Are we going to see another series of disputes when licensees at the higher end of the range try to negotiate rates closer to the ones determined by the court or will the SEP owners and implementers develop an understanding and commonly agreed upon rate? If one goes by the history, the latter looks less likely. Patent portfolios are dynamic due to acquisition and sale, as well as filing of new patent applications, and so will be the FRAND rate for each of these portfolios. This will give both SEP owners and implementers opportunity to renegotiate the rates once the existing licences end. The approach adopted by the court for royalty calculation is certainly going to play an important role in future SEP licenses. Particularly, the top down approach may gain more popularity going forward. The cellular industry has been demanding more transparency in royalty rate setting and this judgement will go a long way in addressing that. IPPro
The cellular industry has been demanding more transparency in royalty rate setting and this judgement will go a long way in addressing that Sachin Sinha, co-founder, Concur IP 30
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Emoji Analysis
Emoticons and intellectual property In the digital era text-based conversations are dominated by emoticons and emojis. Nathalie Dreyfus of Dreyfus & associés describes how this new language fits in with intellectual property Being symptoms of the language revolution in the internet era, emoticons, a sort of ‘digitalised emotions’, have been the subject of legal debates.
this threat, which was intended to highlight certain aspects of IP that were considered absurd. Despair Inc particularly criticised the monopolisation of already trivialised signs by certain companies.
Emoticons are sequences of characters that describe emotions, feelings or sensations in a written speech. Widely used nowadays on social networks, their paternity is still a subject of debate. Although the idea of drawing a smiling figure goes back a long way, it seems that the first person to use the smiley face per se was the New York Herald Tribune in 1953 during an advertising campaign. At that time, no one attempted to protect the smiling little figure.
However, this event highlighted an interesting point: such a registration had been totally tolerated by the US which did not seem to be hindered by a potential lack of distinctiveness or by the fact of applying an IP right on a sign belonging to the public domain.
However, it is in the midst of a real legal battle that the emoticon will find its way later. Patents, domain names, trademarks; numerous attempts to obtain ownership of these smiles, sometimes futile, have been observed in recent years.
First of all, we have to look at France, where, in 1971, history smiled at the young entrepreneur Franklin Loufrani. He then registered a stylised figure named “smiley” as a trademark and created The smiley Company, now based in London and the owner of the yellow smile rights. Faced with numerous disputes, Loufrani’s brand never faded, for example, condemning the AOL service provider in 2005 for exposing a smiley on its home page or, in 2006, the Pier Import furniture chain for marketing “smiling balls”.
A suspicious smile for the brand Emoticons have become an inevitable part of our society, and it is therefore only natural that companies have taken an interest in them. They are widely used in the world of marketing, as evidenced for example by McDonald’s advertising campaign, many companies have attempted to acquire brand rights over these sequences of characters, which are meant to express the emotions of their emitters. IPlaw was then questioned, mainly with regard to the distinctive character—necessary for the registration of a trademark—of these totally trivialised signs. An interesting way of analysing this point is by looking at the case law in recent years in Europe and US. First of all, it seems that the US is more prone to registration as a trademark. The company Despair Inc, of the satirical site despair.com, created the buzz by registering the ‘: - (‘ in the year 2000 as a trademark and announcing its intention to sue the seven million users who would violate it. The site later announced the satirical scope of 32
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Europe seems to be less smiley. In recent years, the case law on the registration of emoticons has shown many divergences.
Courts have each time, validated the distinctive character of the smiley and ruled that no trivialisation of the sign prior to registration could be proven. Is the yellow mark infallible? Registered in more than 100 countries, there is no indication that foreign courts will be as lenient towards it in future disputes. Doubts are all the more convincing as the European courts have been much less inclined to record emoticons. Many courts around the world have been reluctant to consider such registration. The EU IP Office rejected Pricer AB’s application for registration of the sign ‘; - (‘, arguing in particular that it was contrary to the public interest for a company to have a monopoly on such an everyday sign. It also raised the lack of distinctiveness of the sign. This decision was followed by the German and Finnish courts concerning other emoticons. Whether French courts will align themselves with these latter case law remains to be seen. www.ippropatents.com
Emoji Analysis Patents: a more conducive ground for emoticons? Trademark law seems to be reluctant to grant legal protection to the emoticon, so many companies have tried to acquire the digital smile through a patent right. It seems that patenting the emoticon itself is a legal deadlock: to be patentable, an invention must first of all be new, it must not concern an invention that has already been made available to the public. It must also be capable of industrial application by being manufactured or used whatever the type of industry, and finally, it must result from an inventive step. However, it seems difficult to imagine that the emoticon as such would satisfy these three conditions, especially with respect to novelty, since these sequences of signs have been totally made common by their users for decades. As such, patenting the emoticon as an invention seems impossible. This is what the Russian businessman Oleg Teterin understood when he was being refused a patent on an emoticon. However, rights holders succeeded in circumventing this legal requirement: if they understood that the yellow smile was not in itself patentable, they were interested in the technical process for displaying or creating emoticons on our screens. The tech giants perfectly illustrate such a process: Apple owns, for instance, since 2010, a patent on a method for creating emoji— kinds of improved emoticons—using the front camera. In the same way, Varia Holdings owns rights on the button used to directly send emoticons using a smartphone, without having to type the different characters. It did not hesitate to sue Samsung for patent infringement, which used the same functionality. The case is still ongoing. But it is undoubtedly Microsoft that achieved the greatest feat by registering on 20 January 2004 with the US Patent and Trademark Office a method consisting in “selecting pixels to be used as an emoticon, assigning a character sequence to the pixels, and transmitting the character sequence to a destination to allow for reconstruction of the pixels at the destination”.
Microsoft was criticised as a result of this patent protection which led to a real legal reflection around patenting elements such as emoticons, which then resemble a language. Such protection had indeed highlighted the monopolisation of an IP right over concepts of the public domain. It will therefore be necessary to wait for future case law to determine whether or not judges will make such a patent fall.
Domain names and emoticons: a happy marriage? It is technically possible to reserve a domain name that includes an emotional icon: Coca-Cola has integrated the ‘☺’ emoticon in its domain name, relying on this prowess to create a mediated buzz. Emoticons comply with the Unicode standard, which is one of the computer standards for exchanging text on the internet. They can therefore be converted into a punycode, which is a coding syntax designed for the creation of internationalised domain names. For example, the ‘☺’ sign used by Coca-Cola for one of its domain names has been converted to the ‘xn--h28h.ws’ character suite within the Domain Names System (DNS) so that it can appear as emoticons in the search bar. However, Coca-Cola was forced to restrict itself to the .ws domain belonging to the independent state of Samoa, which is rather lenient with regard to the registration of domain names. On the other hand, the Internet Corporation for Assigned Names and Numbers does not allow such an emotional-conversion for gTLDtype extensions, such as .com, .net, .org and .eu, as only suites of letters and numbers are allowed. Indeed, it was pointed out that the authorisation of such conversions in emoticons could favor typosquatting, a fraudulent practice based on the likelihood that by searching for or typing the address of a website, the internet user is likely to make one or more typos. Emoticons are now completely normalised in our language, but it is still difficult for the law to apprehend them. IPPro
Emoticons are now completely normalised in our language, but it is still difficult for the law to apprehend them
Nathalie Dreyfus, founder, Dreyfus & associés 33
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A .UK state of mind A recent report from Nominet revealed that the number of .UK domain names suspended for criminal activity doubled in 2017. Nick Wenban-Smith, general counsel at Nominet, explains
Barney Dixon reports Why did .UK suspensions for criminal activity double in 2017? We believe that the reason for the overall increase in suspensions is that the process is now more familiar to our referring agencies who are therefore sending us more requests for suspension. As our approach to tackling criminality online is a collaborative one, involving law-enforcers, UK public bodies and registrars, we see the increase as a positive step in the fight to mitigate the impacts of criminality on the .UK internet community. How does Nominet work with law enforcement and rightsholders to tackle IP infringement across the UK? We have adopted a collaborative approach with law-enforcers and registrars, and react quickly to minimise the damage caused. Our current approach limits our role to one of facilitation and administration, using a standardised process. In the event of a complaint about criminal use of a .UK domain name, we will only take action on formal requests made by UK public bodies with statutory criminal enforcement powers. They must give specific details about the circumstances leading to the request, and the statutory provision relied on. In practice, this means we can only act on requests from the police, National Trading Standards and bodies such as the Medicines and Healthcare Products Regulatory Agency. Following administrative checks—which include a check of our registration data and the domain’s status—we forward the complaint on to both the domain registrant and registrar, and suspend the domain 48 hours later. We do not take any view on the degree of criminality, or on the content of the website. Effectively, we take 34
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the certificate reporting criminal use as evidence that the terms of registration have been breached. What were some of the biggest .UK trends in 2017? What are you looking forward to in 2018? As you can see from the report stats, over 80 percent of the suspensions are a result of intellectual property crime—essentially fake goods being offered for sale on the internet. Almost all of the overall increase in suspensions has therefore been due to the increase in suspensions for IP crime. While this is nothing new of course, it signals determination by the authorities to tackle the issue. We expect this rise in infringements to continue into 2018 and beyond, and while they might not be as disabling as threats to national infrastructure like the Wannacry attack on the NHS, they are certainly a concern for unsuspecting consumers and so will remain a focus. Big changes are coming for domain registries in 2018 with the implementation of the general data protection regulation (GDPR). What will be some of the biggest challenges for registries this year and how can they be tackled? In terms of the GDPR, pretty much all ccTLDs have been implementing a compliance programme—but the most visible aspect of that to the outside world will be a reduction in the data fields which are publicly available on the WHOIS. Responsible registries are still committed to provision of information to rights holders and law enforcement (in GDPR terms, they have a legitimate right to access information where necessary to investigate abuse and criminal behaviours), but the practical aspects and additional work created are certainly a concern. In terms of the gTLD WHOIS policies, which the Internet Corporation for Assigned Names and Numbers is looking at right now, the concern there is that the necessary changes to comply with GDPR come too late for an orderly implementation ahead of May 2018 when the GDPR comes into effect. IPPro
The tectonic trade shift A new US President and the UKâ&#x20AC;&#x2122;s controversial vote to leave the EU has left global trade lines on shifting sands. Michael Bednarek and Kristina Montanaro Schrader of Adams and Reese explain Barney Dixon reports What sorts of shifts are we seeing in global trade? For several decades, there was a trend toward the harmonisation of international intellectual property laws and increasing cooperation between countries. This movement was not an indication that theft of IP was diminishing. In fact, companies that invested heavily in emerging markets such as China were facing rampant infringement and coerced technology transfer. The most developed countries opted to ignore or tolerate IP infringement to avoid impacting access to important manufacturing centres, especially China. At the time, this was considered a temporary cost of doing business for those companies wanting access to the Chinese market. Fast-forward to today and some companies are discovering that the loss of IP is not temporary. For example, domestic Chinese companies that began by borrowing foreign technology are emerging as leading competitors for the Chinese market. 36
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US, Japanese and European companies are now rethinking the balance of protecting IP against obtaining access to new markets. We now see a rise in economic nationalism across the world that threatens the harmonisation of IP laws. Enforcement of IP rights is emerging as a potential tool in future trade wars. A recent US International Trade Commission (ITC) case targeted the entire Chinese steel industry based on evidence of theft of trade secrets coming from a US Department of Justice investigation of Chinese hacking of American companies, and other allegations. Government agencies are now paying close attention to new technologies that may be foundational to entirely new industries, such as gene splicing. CRISPR technology represents a major advance in the field of gene editing, proving a practical tool to edit DNA. In January, the Opposition Division of the European Patent Office (EPO) held that a key CRISPR patent of the US innovator, Broad Institute, could not claim priority to US provisional applications that date back to 2012. Without the earlier priority date, the patent was found invalid based on intervening prior art. The possibility that IP rights will be used as a tool in future trade wars is likely one reason the Chinese government is now heavily subsidising the acquisition of patents by Chinese companies. www.ippropatents.com
Global Trade Data from the World Intellectual Property Office (WIPO) shows that China filed more patent applications in 2016 than the combined total applications of the US, Japan, South Korea and the EPO.
How can companies ensure their IP isn’t affected by global shifts in trade? Companies must remain vigilant and calibrate their IP strategy to global trends. As harmonisation fades, the ability to implement global strategies on a local level becomes more important. Effective global collaboration requires that you “know what you don’t know and know who knows it”. Companies with global reach need to understand the broad parameters and differences in IP protection and know who has expertise needed in each country. Those that lack local IP expertise need to either develop it or get access to it. A company’s response to the rise in economic nationalism depends on global position.
modern innovation is an effort to dismantle traditional IP to remove obstacles to frictionless commerce. Market power alone may be enough to thwart upstarts. If this is the case, there is little need for IP.
How could the Trump administration’s approach to IP theft overseas affect US companies looking to invest in Chinese IP and vice versa? It’s important to remember that IP protection is customarily left to the IP owners acting in the context of national laws. When governments get involved and use IP as a justification or pretext for trade remedies, there is a risk that confidence in the impartiality of state actors deciding IP disputes will be compromised.
Those seeking to enforce IP in the US will find agencies more receptive to protecting domestic industries—especially at the ITC and Customs and Border Protection.
A commonly held, but usually mistaken, impression is that disparities in the enforcement of IP rights result from differences in business culture. This perception can lead to unfortunate stereotypes, when there is probably a much simpler explanation: countries act to protect their own interests.
US companies seeking assistance from foreign governments may face challenges abroad, underscoring the critical need for access to local expertise.
Simply put, countries that export IP regard IP protection as a matter of paramount importance; countries that import IP regard IP protection as a tariff.
Industry leaders must also look beyond traditional IP tools to secure all facets of the intellectual capital that provides their competitive advantage. Under this broader view, companies focus on their human capital, relational capital and traditional IP, especially utility and design patents.
Since developed countries are most often in the position of IP exporters and developing nations are most often in the position of IP importers, the result is that the IP rights issue often looks like as a battle between developing and developed countries.
This multi-factored approach considers employees and business relationships as part of a company’s competitive advantage, and favors collaboration and cooperation over enforcement of traditional IP assets. In the US, Europe and elsewhere, there are internal battles being fought over whether traditional IP laws apply to 21st century innovation. Some of the most important innovation today is ‘soft innovation,’ which is easily copied or reverse-engineered because the core innovation often resides in the business concept involved. Protection of this type of innovation is a challenge because traditional IP protection tools—patent, trademark, copyright, trade secret—have not been allowed to evolve to cover modern innovation. The US Supreme Court has ruled, for example, that patent protection is off-limits for much soft innovation. The EPO has been even more aggressive in denying protection for soft innovation. To some, the unwillingness to adapt IP protection to 37
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The US government’s interactions concerning Alibaba are a good example of this. For several years, various IP holders in the US have voiced concerns about Taobao and other Alibaba platforms serving as havens for counterfeit goods and other IP infringement. In December 2016, the outgoing US Trade Representative (USTR) took a hardline approach and included Taobao back on its annual “Notorious Markets” list of marketplaces known for IP infringement. Taobao’s inclusion followed a four-year period where it had been dropped from the list. Despite president-elect Trump’s initial friendliness with Alibaba’s founder Jack Ma, including an announcement to create jobs and support small businesses in the US, since taking office, the Trump administration has maintained the US’s hardline stance towards China. The USTR has continued its inclusion of Taobao in the 2017 Notorious Markets list, and more recently, Trump has threatened a “very big IP fine”. www.ippropatents.com
Global Trade
US IP owners hope their hardfought victory to get Taobao listed on the Notorious Markets list will lead to real discussions to reduce counterfeit sales on Alibaba platforms Michael Bednarek, special counsel, Adams and Reese US IP owners hope their hard-fought victory to get Taobao listed on the Notorious Markets list will lead to real discussions and efforts to reduce counterfeit sales on Alibaba platforms, but multilateral pressure and bi-lateral pressure will only go so far.
How will Brexit affect US companies seeking protection in the UK and the EU?
Today, IP owners are increasingly focusing their efforts on direct advocacy of their interests with the Chinese government and entities like Taobao, and decreasing their reliance on US government involvement in such discussions.
For starters, the European Patent Convention is not a piece of EU legislation, so it will be unaffected when the UK leaves the EU. European patent holders will not lose any rights and patents already obtained via the EPO will remain unaffected.
Until investors begin pulling out of countries that have inadequate IP rights protection, expect more of the same.
At present other European IP laws are harmonised and much of the UK legislative framework in this field is currently composed of EU Regulations and EU Directives. To a great extent, the EU Regulations relevant to IP and life sciences, especially pharmaceuticals, were transposed into English or Scottish law, so a regulatory vacuum may be created.
At present, it appears that the lure of low-cost manufacturing and large markets is too much for many companies to resist. In time, today’s IP rights pirates will develop into IP rights exporters and the battlefield will move, but the game will remain the same. Successful companies cannot ignore the tremendous opportunities available abroad. The opportunities are very real: enormous, increasingly affluent markets, low-cost manufacturing and service, and new sources of supply. At this time of great opportunity there are also risks, but these risks can be managed by working with those who understand the process and can help develop a strategy for success in the global marketplace.
Different rights will be impacted in different ways.
The situation is a bit murkier for trademark and design rights. Companies should review licenses, settlements and other agreements relating to portfolios of existing EU trademark and registered and unregistered design registrations now. Without an agreement to the contrary, community rights—such as registered and unregistered community designs and EU trademarks, previously referred to as community trademarks—will no longer be enforceable in the UK. Current IP owners should identify which of their rights are now likely to be affected and may need further application/registration in order to achieve maximum protection over that right. IPPro
In time, today’s IP rights pirates will develop into IP rights exporters and the battlefield will move, but the game will remain the same
Kristina Montanaro Schrader, anti-counterfeiting team leader, Adams and Reese 38
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Russia Analysis
Telemedicine law in Russia Ilya Goryachev of Gorodissky and Partners discusses Russia’s new telemedicine law and what it means for intellectual property January 2018 was the first time in a Russian jurisdiction a specific law on telemedicine technologies took effect—namely the Federal Law on amending certain legislative acts of the Russian Federation on issues of applying information technologies in healthcare systems. For effective operation, the telemedicine law requires a number of by-laws.
specifically outlined in his speech before the Russian Parliament that use of information technologies would significantly increase efficiency of control over essential medicines resulting in elimination of fake and counterfeit products. Furthermore, mobile application technologies relating to healthcare sector were also introduced. For instance, Yandex, one of the major IT companies in Russia and Europe, launched its online medical consultation service Yandex-Zdorovie.
So far, on 9 January 2018 the Russian Ministry of Justice registered the Ministry of Health Regulation on approving procedure of arranging and rendering medical care with use of telemedicine technologies, which specifically deals with telemedicine technologies in medical care.
Until recently, there was no specific legislation of telemedicine technologies, as well as no framework rules or procedures. Furthermore, impossibility to issue online prescription orders by medical professionals was viewed as a restraint on developing modern IT use in the healthcare sector.
As such, adoption of the telemedicine law is a reflection of the Russian authorities’ incentives of increasing level of using the modern technologies in healthcare sector.
One of the purposes of the telemedicine law is to make available medical aid with the use of telemedicine technologies by having medical advice and case conferences, ensuring remote cooperation between doctors as well as between a doctor and a patient or their legal representative, and the distant monitoring of a patient’s health.
It should be noted that telemedicine as such is not unknown in Russia, and there were examples of use of telemedicine technologies in the Russian healthcare system. The attention of the Russian government was on telemedicine technologies in 2015 when the development of telemedicine technologies was listed among the government priorities in healthcare sector. The government-approved development strategies for the specific Russian regions listed a necessity to provide healthcare entities with telemedicine devices. In 2016, the Russian president 40
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Definition of telemedicine technologies Telemedicine law defines telemedicine information technologies ensuring: � �
technologies
as
Remote cooperation of medical professionals with each other, with patients and / or their representatives Identification and authentication of medical professionals, patients and / or their representatives www.ippropatents.com
Russia Analysis �
Record-keeping of measures taken during case conferences, medical advice, remote medical monitoring of a patient’s health
Use of telemedicine technologies is now a tool ensuring access and quality of medical aid. General personal data protection rules as well as provisions on physician-patient privilege are mandatory. The record-keeping process will involve the use of encrypted certified digital signature. Medical systems medical privilege
organisations receive a right to develop information containing data on the patients, on medical aid and activity personal data laws and physician-patient needs to be complied with.
medical organisation, on outpatient or inpatient basis and as a day-patient department mode. Conditions of medical aid are determined based on the actual location of the patient. Case conferences (councils of physicians) with use of telemedicine technologies are held: �
�
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The Telemedicine law sets forth purposes of medical advice with use of telemedicine technologies: �
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Preventive care, gathering and analysis of a patient’s complaints and previous case history, evaluation of diagnostic and treatment activities as well medical surveillance Decision-making process on whether a face-to-face visit is required
While giving medical advice with the use of telemedicine technologies the attending professional is allowed to adjust the treatment on condition that the diagnosis was set and treatment was prescribed during a face-to-face visit. Remote medical surveillance over a patient is exercised by the attending professional after a face-to-face visit, based on the data: � �
Registered with use of the medical devices, intended for health monitoring State healthcare information system (unified federal or regional): [i] medical information system [ii] other information systems under conditions to be approved by the Russian government
Types of telemedicine technologies The Telemedicine Regulations provide that telemedicine technologies are used for the following types of medical aid: � � � �
Primary healthcare Specialised medical care, including high-technological medical care Urgent (including high-technological) medical care Palliative medical care
The main principle behind the use of telemedicine technologies is that they may be rendered under any conditions: outside the 41
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Urgent form: in case of sudden acute diseases and conditions as well as during acute exacerbation of a chronic disease when there is a threat to the patient’s life Emergency form: in case of sudden acute disease and conditions as well as during acute exacerbation of a chronic disease without evident signs of a threat to the patient’s life Regular form: during preventive actions, in case of diseases and conditions that do not pose a threat to the patient’s life and not requiring urgent and emergent medical care, if the delay of it does not entail health deterioration or a threat to the patient’s life and health
Information Systems The telemedicine law provides that data support in healthcare is exercised by developing and using the healthcare information systems: � � � � �
Federal state healthcare information systems Healthcare information system of the federal or territorial compulsory medical insurance funds State health information system of the constituent part of the Russian Federation Information system of a medical organisation Information system of a pharmaceutical organisation
The healthcare information system deals with the information on entities in state, municipal and private healthcare systems, as well as with other information in healthcare. Personal data operation rules as well as physicianpatient privilege are mandatory for the healthcare information system. The healthcare information systems will be managed by: � � � �
The Ministry of Healthcare and other federal authorities and their territorial divisions Regional healthcare authorities and entities authorised by them Federal or territorial compulsory medical insurance funds Medical and pharmaceutical organisations
Specific requirements for the healthcare information system will be set by the Ministry of Healthcare. www.ippropatents.com
Russia Analysis
The telemedicine law provides for the unified information system which will be set to ensure access to healthcare services in the electronic form as well as cooperation in the healthcare information system. The unified system of identification and authentication will be implemented to ensure use of telemedicine technologies.The Russian government will approve the rules on managing the unified system, access to information in it and the information exchange procedure. The unified system will include the following data: � �
� � �
�
� � � �
From the federal healthcare information systems as well as from federal databases and registers Information on medical organisations, except for medical organisations under jurisdiction of federal authorities where military service is held Information on medical professionals Information on patients and persons for medical examinations, health inspection and medical clearance is exercised Information on medical documentation from which it is possible to determine health condition, and information on a medical organisation where the documents at issue are gathered and stored Information of statistical survey in healthcare sector, as well as consolidated analytical information on medical activity and medical aid Information on high-technological medical aid Data necessary to exercise monitoring and control in state and municipal tenders for drugs Information on provision of drugs, medical devices and specialised medical food under the social care legislation Classification codes, reference texts and other regulatory references
The sources of information for the Unified system will be: � � � �
The Ministry of Health and other competent federal executive authorities Competent regional executive authorities as well as municipal authorities Federal compulsory medical insurance fund and regional compulsory medical insurance funds Medical and pharmaceutical organisations as well as operators of Information systems; The unified system will allow the user to obtain medical services on-line by using the unified portal for state and municipal services.
Drug prescription orders in electronic form Prescriptions, including for drugs that contain narcotics and psychotropic substances under the specific rules on the form, may be issued in the electronic form on consent of the patient 42
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or their representative. However, the decision whether electronic prescriptions will be used in the specific constituent part of the Russian Federation is at the discretion of the local healthcare regulators. It shall be noted that on 13 December 2017, the lower chamber of the Russian Parliament adopted in the first hearing the draft law, which specifically allows online retail sale of overthe-counter medicines by drug stores.
Telemedicine technologies and intellectual property Taking into account that use of telemedicine technologies are closely linked to information system, IT solutions applied will require due protection. The general rule is that patents are not granted for software in Russia. Software is protected as a copyright asset. The exclusive right to software emerges in Russia due to the fact of creation of copyright. However, discretional registration of the software in the Russian Patent Office may be exercised, thus increasing the level of protection. Furthermore, since use of telemedicine technologies affects the use of medical devices with data transmittance functions, the specific attention is invited to claim construction for invention and utility model patents. Industrial design protection for such medical devices is also useful. Since as a result of the telemedicine law the drug prescriptions orders will be kept in electronic form, the question remains open on whether the data on such prescriptions may be used in patent enforcement litigation, in particular, in cases relating to patents involving treatment process claims. Overall, the telemedicine law may be seen as a welcoming sign in terms of the increasing use of information technologies in the healthcare sector. While a lot needs to be done (also in terms of adopting by-laws and infrastructure development), the telemedicine law is among the necessary steps in creating a more enhanced market for software and medical devices. IPPro
Ilya Goryachev Senior lawyer Gorodissky and Partners
Unified system
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Digital Firms
Embracing the digital revolution Sara Lotfalizadeh of IPZen explains how law firms should adapt to incentivise client relationships and enhance productivity in the digital age “Every once in a while, a new technology, an old problem, and a big idea turn into an innovation,” said US innovator, Dean Kamen, whose specific mindset led him to invent the Segway, which has been a small revolution in how people move around. He could do so because his mind was looking forward, toward future. We keep repeating that we entered the 21st century, and yet, legal profession tends to fall behind. The world today is entering a new age: the digital era. If lawyers want to keep up and not become a practice of the past that next generations learn of in history books, movies or documentaries, they have to lucidly face the future and digitise their activity. What law firms should consider in a general way is that they have to become proactive about their activity. It is all about strategy: they need to project themselves, and forecast what and where their growth will be in five, ten, fifteen years from now. What the world is going to be like? It will definitely continue to evolve. And the world means, first of all, the people. Indeed, any of them could be a potential client. Because people evolve, based on the supply and demand principle, law firms must also follow in order to match their clients’ needs and expectations and remain attractive. A law firm first rely on the trust their clients put in the services they offer. This means the quality, the reactivity, the speed and, most importantly, the adequacy between the supply and the demand. No client seeking a remedy for their divorce would go knocking on the door of a IP professional for instance. If the client evolves, so should the lawyer. Here, it is all about an overall realisation by law firms, that there are changes to come in order to ensure them a bright future. This means that law firms need to shift to a new engine of growth. Digital tools are undoubtedly today’s engine of growth. To remain competitive in a 44
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hard competitive environment, lawyers need to invest in these tools and provoke their progression to the digital era. For this reason, here are five rules to guide law firms to identify clearly what are the main aspects they should consider to stay ahead of the game.
Rule one: incentivise clients’ relationship Clients are the heart of a lawyer’s activity. For this reason, intuitu personae should be the first and the most important priority of a lawyer. The point here is not to say that it is a new thing. It is clearly not a scoop. However, it is fundamental, to completely rethink the relationship with the client in the view of the digital era. Nowadays, clients have emails and internet connection, so geographic locations are no longer barriers for a lawyer’s activity. But if lawyers want to be truly competitive and innovative, emails are not sufficient anymore. They need to build a customised and trusting relationship with their client. The real solution is to use a cloud-based solution
that enables the client to have access to their files from anywhere in the world and at any time provided they have an internet connection. With this solution, lawyers will select the contents to make available to the client, so both parties win. It increases trust in lawyer-client relationship and give back to the client a feeling of control over their case and transparency on what is actually happening to their reality.
Rule two: take advantage of dematerialised legal data Here too, it is the good old work. A lawyers’ work basis is to make legal researches about specific issues to make sure their client’s protection is efficient. To do so, it is common to see lawyers spend hours on legal researches. But time is the first resource for lawyers. Wasted time is synonym of wasted resources and can rapidly lead to bankruptcy if there is no return on investment of their time. Therefore, once again, lawyers need to take advantage of the new tools available to convert time into profit. www.ippropatents.com
Digital Firms
First, open law projects which have been developed to promote collaborative legal databases and allow lawyers or any legal practitioners to have access to legal information. These tools allow lawyers to hasten their research: goodbye timeconsuming legal researches on papers and hello ease-work with keywords, multi-criteria searches and consolidation of documents in one place. Then, open data projects, also developed with the same objective as open law projects. The only difference is that while open law projects are to help lawyers with their researches, when they actively look for an answer, open data projects provide assistance to lawyers in a passive way as they inform them of a change in the law when it occurs, which keeps their knowledge updated.
Rule three: enhance productivity Instead of getting bogged down on boring and repetitive tasks that need to be done but are secondary to lawyers’ activity, they need to find digital tools that can help them enhance their productivity. For instance, they could work with a case management system in which all their files would be docketed allowing them to find the right information at the right time, to consolidate documents and emails and use customised actions in files to save time. It would also have an included agenda tool which would ensure them to never miss a deadline and a chronometer which will allow them to record the exact time worked on a file and, together with preset hourly rates and fixed fees based on clients and lawyers, would allow them to invoice in a snap. Finally, to be really efficient and to cover all their administrative tasks, it should be equipped with an integrated invoicing system which will allow them to generate all documents from purchase order to an invoice in few clicks.
Rule 4: strengthen teamwork Another key point of a law firm is the associates and their work. One goes fast, two goes further. For this reason, it is important that a legal team work hand in hand and value one another’s work and their contribution to the legal team. It is interesting for a law firm to be equipped with a cloud-based solution which will allow each associates to work directly on the files at the same time with the same organisation, even if they are far from each other. This solution also enables the team not to slow them down in the hypothesis of the absence of one of the associates in charge of the said case. 45
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It should also be equipped with a validation module that allows partners to control the work of juniors and make sure the quality provided to the client never fluctuates. This way it will foster and facilitate the collaboration and improve team productivity. Do not forget that the legal team is the root of a law firm, the foundation on which a law firm stands strong. If the legal team works together, they achieve more.
Rule five: ensure security Last, but not least, is the overall data security of the law firm. Indeed, lawyers are custodians of their clients’ information. As said earlier, there is no good lawyer-client relationship without trust, and without security of the data, there is no trust. This is why it is recommended to choose a well-secured solution, like for instance a cloud-based solution which works on the principle of one encrypted virtual machine per client with their own database and storage. This way, data cannot mix, and in the very unlikely case of a cyberattack that will win against the system, it will not attain the other users. To avoid the risk of a cyberattack, this solution should be encrypted with an SSL certificate and should be submitted to 24/7 monitoring. To avoid the risk of a data loss, this solution should be replicated in another datacenter located in Europe and submitted to continuous backups in two different datacenters. It is only with all these considerations in mind that a law firm data can be truly secure. In conclusion, the world is changing and the legal world should adapt to it, catch the train while it is still waiting at the platform, or it will face the risk of being obsolete. If there is one thing that law firms should remember it is that they need to shift to a digital way of managing their activity to cope with the new digital era. If some lawyers are still not convinced, remember that papers are more a work habit than a real utility. Digital tools such as IPzen Legal will help you save time and therefore save of your true competence for your clients. IPPro
Sara Lotfalizadeh Business development manager IPZen
There are two practices that could help save a lawyer’s time:
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The reverse doctrine of equivalents in Taiwan Yu-Li Tsai of Deep & Far discusses the reverse doctrine of equivalents in Taiwan and how the law is beginning a shift in favour of patent owners The reverse doctrine of equivalents has been applied by the Intellectual Property Court in Taiwan for many years. The reverse doctrine of equivalents means that even though an analysed object has satisfied the requirement of ‘literal infringement’ on an invention, the analysed object still does not infringe the invention if it does not substantially utilise the technical means of the invention. For example, in the case of a battery electrode patent, a claim thereof recites an electrode composed of a plurality of microporous metal plates. The description of the invention indicates that the function of the micropores of the electrode is to control the pressure of the gas bubble, where the micropores have a diameter of 1 to 50 micrometres, but the claim does not recite the technical feature of the microporous diameter and its function. In addition, the analysed electrode is also composed of a plurality of microporous metal plates but the micropore diameter of the metal plate of the analysed electrode is much larger than 50 microns, which is almost negligible for the control of the pressure of the bubble. Under this circumstance, although the technical contents of the analysed object superficially satisfy the requirement of literal infringement on the claim of the patent, it seems that the analysed object does not substantially utilise the technical means disclosed by the invention, and there is room for applying the reverse doctrine of equivalents. However, the IP Court may start to restrict the application of the reverse doctrine of equivalents. This phenomenon may be because after receiving so many criticisms for being overly conservative in 46
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judging patent infringement, the IP Court is becoming more positive about enhancing the protection of patent rights and intends to change Taiwan into a jurisdiction that is much friendlier to the patent owner. In the following section, I will briefly discuss a recent civil case of the IP Court related to the reverse doctrine of equivalents. The patent at issue is a utility model patent TW M370330 with the title “Structure of Hairdressing Air Hood”. Claim 1 of the `330 patent recites: a hairdressing hood structure includes: (A) a hood body configured with a ventilation hole; (B) a plurality of clamps, each of which is pivoted to the hood body at one end thereof and located outside the ventilation hole; (C) a plurality of elastic elements, each of which is disposed between the plurality of clamps and the hood body, so that the clamps elastically swing relative to the hood body; and (D) a cover body disposed outside the hood body and covering the clamps, wherein the cover body is configured with a through hole for connection among the clamps. The product at issue is: a hairdressing hood structure includes a hood body, three clamps, three elastic elements and a cover body; (A) the hood body is centrally configured with a ventilation hole; (B) each of the three clamps is pivoted by a shaft hole at one end thereof to a pivot outside the hood body and is located outside the ventilation hole; (C) the three elastic elements are respectively disposed between the three clamps and the hood body so that the three clamps can swing elastically with respect to the hood body; (D) the cover body is disposed outside the hood body and covers the three clamps and the cover body is configured with a through hole for connection among the clamps. www.ippropatents.com
Taiwan Patents The cover body is movably disposed outside the hood body so that the cover body is rotatable relative to the hood body. Each of the three clamps has a slip-stopping portion on the inner side of the other end thereof, and the slip-stopping portion can be designed in a zigzag shape to increase the friction area. Each of the three elastic elements has an elastic body, which can be a spring and extend from each of the two ends thereof with an elastic pin, and the elastic pin is bent at a tail end thereof with a hook; the hood body is configured with three pivots; each of the three elastic bodies is sleeved between the shaft hole and the pivot shaft at one end of each of the three clamps so that the three clamps can swing elastically relative to the hood body. Through the driving of the elastic pins, one end of each of the three clamps, which is configured with the slip-stopping portion, can move inwards so as to clamp the hair dryer mouth so that the hairdressing hood structure can be disposed at the hair dryer mouth. The only embodiment in the `330 patent describes that the operation of the clamps includes two parts: (1) control the opening of the clamps: the operation is to clockwise rotate the cover body, and the pillars on the cover body are driven to resist and expand the clamps in the resisting direction; (2) control of the closure of the clamps: the operation is to relax on the force applied on the cover body, and use the elasticity of the elastic elements to reset the clamps. In contrast, the operation of the clamps of the product at issue includes two parts: (1) controlling the opening of the clamps: the operation is to anticlockwise rotate the cover body, and the arc-shaped pulling rod on the cover body is driven to drive and expand the clamps by means of pulling; (2) controlling the closure of the clamps: the operation is to remove the temporary fixing on the cover body, and to use the elasticity of the elastic elements to reset the clamps. It is undisputed that claim 1 of the `330 patent reads on the product at issue. However, the defendant alleged non-infringement by claiming the application of reverse doctrine of equivalents because the operations of the clamps of the `330 patent and the product at issue are substantially different with respect to the opening control of the clamps. That is, the `330 patent utilises clockwise resisting force and the product at issue utilises anticlockwise pulling force to control the opening of the clamps.
hood body”. Even though the product at issue has the “arc-shaped pulling rod” structure, it still utilises the same principle that “the elastic elements can cause the clamps elastically swinging relative to the hood body”. The “rotating direction” and “arc-shaped pulling rod” structure of the product at issue do not affect the fact that the `330 patent already covers that “the elastic elements can cause the clamps elastically swinging relative to the hood body”. In short, the product at issue has utilised substantially the same technological way, exerted substantially the same function and achieved substantially the same result as those of claim 1 of the `330 patent. Therefore, the defendant’s assertion that the reverse doctrine of equivalents can be applied to the product at issue is not convincing. In this article, we discussed briefly about an IP Court’s case related to the reverse doctrine of equivalents, where there is only one embodiment disclosed in the specification of the patent at issue and the court still refused to read the technical features of the embodiment into the claim so that the reverse doctrine of equivalents cannot be applied. Apparently, the IP Court restricted the application of the reverse doctrine of equivalents. In 2016, the Taiwan Intellectual Property Office (TIPO) published the Guidelines for Identifying Patent Infringement. Even though the reverse doctrine of equivalents was specifically provided in a section of the old guidelines along with an example, the section and example for the reverse doctrine of equivalents were totally eliminated in the new guidelines. That is, the standard is arguably no longer applicable in the new guidelines. It is to be noticed that even if the reverse doctrine of equivalents is totally abolished, it will not make big changes in the infringement practices because the spirits of the reverse doctrine of equivalents can be easily invoked or come to life by interpreting what a claim recitation is really referring to, in light of the supporting disclosure. It may be possible that the IP Court is just like a pendulum swinging to another extremity for rescuing its image from the past con-patent criticism. Normally, everything settles down between the extremities. In conclusion, we can see that the IP Court currently has a pro-patent tendency to enhance the protection of the patent rights. Therefore, we believe that Taiwan will become a jurisdiction much friendlier to the patent owner. IPPro
Issues and holding
Reasoning Claim 1 of the `330 patent does not limit the technical features of “rotating direction” and “pillar”, and claim 1 recites that “the elastic elements can cause the clamps elastically swinging relative to the 47
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Yu-Li Tsai Patent attorney Deep & Far
As to whether the defendant did not infringe the patent at issue because the application of the reverse doctrine of equivalents, the court held: no, the defendant infringed the patent and the reverse doctrine of equivalents could not be applied.
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Industry Events
AIPPI Israel Conference
IACC Annual Spring Conference
Tel Aviv
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April - May 2018
May 2018
29-01 aippi.org
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Industry Events
IP Law Europe Summit
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18-21
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09 -10 ipworldsummit.iqpc.com
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Industry Appointments
Movers and shakers at Adams and Reese, Leason Ellis and Buchalter Adams and Reese has added Maia Woodhouse to its Nashville office.
Buchalter has recruited three IP attorneys in its Orange County office.
Woodhouse’s practice focuses on trademarks, patents, trade dress, trade secret and copyright disputes.
Rick Taché joins Buchalter as shareholder from Greenberg Traurig, alongside Erikson Squier and Roger Scott who are both senior counsel. Taché will serve as co-chair of the firm’s patent litigation group. His practice focuses on complex IP litigation, as well as patent and trademark prosecution. Squier is experienced in patent prosecution and litigation and Scott works in civil litigation matters, particularly employment litigation.
She previously worked at Baker Donelson where she was an associate. Gif Thornton, managing partner of Adams and Reese, commented: “Maia Woodhouse is a superb young IP litigator.” “She makes our strong intellectual property practice even stronger. We welcome her to the team.” Mitch Boult, an IP attorney who sits on Adams and Reese’s executive committee, added: “This move continues the upward trajectory of our global IP team.” “[Woodhouse] is one of the top IP litigators of her generation and our clients will benefit immediately from her skills and insights.”
Adam Bass, president and CEO of Buchalter said: “Adding a highlyregarded and elite intellectual property shareholder such as Rick Taché and his team to our patent and litigation groups is reflective of the type of talent we want to attract to properly service our clients. We are delighted to welcome Taché, Erikson Squier, and Roger Scott to the firm.”
Robert Isackson has joined Leason Ellis as partner, effective 1 February.
Taché commented: “My practice fits extremely well within Buchalter’s expanding full-service platform. I am thrilled to join the firm’s extremely talented patent and litigation teams with a demonstrated ability to serve high profile clients.”
Isackson is an IP law litigator that completed nine patent trials, including four as first chair.
OMC Abogados & Consultores has welcomed Maylee Savournin and Rodrigo Manzur as new members of the team.
He has led trial teams in various patent litigations, as well as nonpatent IP cases and arbitrations, including those in trade secret, trademark, trade dress and copyright matters. In addition, he handles IP counselling, procurement work and transactional matters.
Previously, Savournin served as a legal advisor in the Grupo Empresarial de la Construccion of Havana of the Ministry of Construction for three years. In addition, she has completed courses on the legal protection of trademarks, as well as another course which covered copyright. She has also completed a course on tax law, international trade and foreign investments.
Isackson has previously served at Orrick, Herrington & Sutcliffe, where he headed up the firm’s New York IP group.
Manzur has worked in the areas of civil, criminal and administrative law, as well as intellectual property law. IPPro
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Bolivia SORVILL, Intellectual Property Law Firm SORVILL is a Bolivian law firm with over 35 years of experience in Intellectual Property and has served clients specialized in different areas such as information technology, mining, airlines, laboratories, manufacturers, financial institutions, services, among others. We operate primarily in the field of distinctive marks, inventions, copyrights, health regulation and unfair competition. We specialize in consulting, registration and litigation of trademarks, trade names, slogans, patents, utility models, industrial designs, copyright, domain names and sanitary registrations. Our firm boasts professionals specialized in their respective areas, led by Dr. Jorge Soruco Villanueva lawyer and economist with a broad experience in Intellectual Property. SORVILL is an active member of prestigious associations in Intellectual Property such as INTA (International Trademark Association), ASIPI (Asociaciรณn interamericana de Propiedad Industrial), AIPLA (American Intellectual Property Law Association), ABPI (Bolivian Association of Industrial Property). Av. Mariscal Santa Cruz Edif. Cรกmara de Comercio Of. 1012, La Paz-Bolivia, PO.BOX.7947. +591 2-239 0948 +591 2-211 2603 sorvill@entelnet.bo www.sorvill.com https://www.facebook.com/Sorvill/?ref=hl https://twitter.com/
Jorge Soruco Villanueva CEO sorvill@entelnet.bo
Valery Aliaga Bretel Trademark Paralegal Specialist sorvill@entelnet.bo