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Hello & welcome to the third issue of our publication…
What a fantastic year it has been for us here at The Global IP Matrix! Firstly, we would like to thank all our clients that have taken the time out of their busy schedules to participate in our magazine this year & more importantly YOU the reader for picking up a copy at the international conferences we have had the pleasure of attending during 2018. We launched The Global IP Matrix at INTA
CONTENTS Page 4
The Knowledge economy: The future of intellectual property law Amaka Okafor - Associate (IP & Corporate-Commercial) Stillwaters law firm.
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Domain names: the difficult combination of IP and IT Bart Mortelmans, from bNamed.net
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LATVIA – Battles for Domain Names? Ruta Olmane, Associated Partner, Latvian and European Trademark and Design Attorney, Lawyer, Metida law firm (Latvia)
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Colour Marks in Turkey Mrs. Pelin Demiroğlu - Attorney at Law, Head of Legal Affairs, Department Destek Patent
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EU’s Counterfeit and Piracy Watch-List Lisa Lovell, CEO & Founder Brand Enforcement UK Ltd
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Pharma Patents: Healing the Rights Valery Medvedev, Managing Partner, Russian and Eurasian Patent Attorney at Gorodissky & Partner
in Seattle, earlier this year and our publication has been going from strength to strength thanks to YOU, our global audience and all our contributors. We have strived to give our readers up to date knowledge on IP issues globally, without pigeonholing our editorial content & focusing on one particular area of intellectual property law. We have persisted with our itinerary & produced some fantastic issues this year that we hope you have enjoyed and will continue to enjoy. We look forward to future issues! Happy New Year, may 2019 be a prosperous new year for you all,
From everyone at, Northon’s Media & The Global IP Matrix team. Carlos Northon
CEO & Founder Northon’s Media PR & Marketing LTD Publisher of The Global IP Matrix carlos@northonsprmarketing.com
Elvin Hassan
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Copywriter & Editor Global IP Matrix Info@northonsprmarketing.com
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Craig Barber
Recent amendments to the Patent Act; Argentina Pablo A. Palazzi, a partner at Allende & Brea Nanobodies – A Patent Landscape Case Study Ashley Evans – Senior Manager at Patent Seekers Limited
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Can patent visualisations indicate how patent attorneys’ working environment has changed by Victor Green, Alessio Brizzi, & Jo Shaw from Victor Green & Company
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Head of design Global IP Matrix info@northonsprmarketing.com
Marvin Monterola
Head of sales Asia & The Middle East The Global IP Matrix magazine marvin.monterola@gipmatrix.com
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IP KNOWLEDGE
THE KNOWLEDGE ECONOMY: THE FUTURE OF INTELLECTUAL PROPERTY LAW
Amaka Okafor, Associate - Stillwaters Law Firm www.x stillwaterslaw.com
The term ‘knowledge economy/ knowledge-based economy’ was formulated in the 1960s to describe a shift from traditional economies which majorly focused on land, labour, and capital as factors of production to one based on information and innovation (Intellectual Property/Assets). An innovation is the creation of a new product/service or a new process of creating an existing product/service. As such, technical advances with respect to how products are manufactured or changes in approaches on how products and services are created, advertised and sold to the public could suffice as innovations.
THE PILLARS OF THE KNOWLEDGE ECONOMY
According to the World Bank, a knowledge economy is primarily supported by four core pillars: An adequate “Economic Incentive and Institutional Regime (EIR)”- this substantially entails the availability of sufficient incentives to encourage entrepreneurship, investments, and innovations. For a knowledge economy to thrive in any Jurisdiction, there must be in place, favourable policies and regulations to create an environment that encourages innovation and investment in the same. Investors and innovators must know that their rights and interests are protected for this economy to thrive. A functional “Innovation and Technological Adoption” System- this relates to having a functional and
vibrant network of competent research centers, firms, consultants, think tanks, universities, and other similar organizations working together to harness the increasing availability of information, by adapting them to indigenous needs and inventing new knowledge and technical solutions. An effective “Education and Training” Structure- the success of a knowledge economy is dependent on a largely educated and skilled population. Therefore, adequate education and training systems must be put in place for this economy to thrive as it takes educated and/or skilled manpower to create, apply and/or share knowledge. Information and Communications Technologies (ICT) Infrastructure and Access- this pillar requires the availability of effective and dynamic communication channels ranging from radio, television to the internet, for the processing and dissemination of information1.
INTELLECTUAL PROPERTY(IP) AND KNOWLEDGE ECONOMY
As explained in the previous section, the first pillar of a knowledge economy is the availability of sufficient incentives to encourage investments. Consequently, one the most important issues considered by investors seeking to invest in the Research and Development (R&D) sector is the extent to which their investments and resultant profits can be recuperated; should the R&D venture result in an innovation. Potential investors will be unwilling to invest in R&D which when successful, are unlikely to be profitable. As a result, establishing a reliable, effective and enforceable system for the protection of the rights and interests of relevant stakeholders in an innovation, is fundamentally important and indispensable for the growth of a knowledge economy. Intellectual Property Laws address this problem by establishing and conferring enforceable Intellectual Property rights (IP Rights- such as trademarks, patents, and copyrights) on innovators and/or investors (as the case may be) with respect to the innovations. IP rights are basically exclusive rights conferred by the State on the innovators and/or investors (rights holders) for the commercial exploitation of the innovation e.g. trademark, design, patent, literary and artistic work. These IPRs are used as leverage by the rights holders to enter negotiations with third parties who intend to use or exploit the innovation. These negotiations are usually in form of licenses permitting the use of the invention in exchange for substantial considerations. As a result of these IPRs, right holders are now capable of protecting, enforcing and exploiting their inventions.
The relevance of IP rights, both to the rights holders and consumers, has been clearly understood with the coming of the internet. The advent of the internet like never before brought globalisation of economies and easy accessibility and replicability of data, information, and inventions. Stakeholders, such as manufacturing companies are now faced with various threats from fraudsters and counterfeiters trying to freeride on their investments and goodwill, by replicating their products which consequently dilutes their goodwill, creates potential dangers to consumers (e.g. counterfeit medicines) and exposes them to unjust liabilities. For this reason, companies have begun committing significant resources to the protection of their intellectual assets.
A knowledge economy is accordingly, an economy which utilizes knowledge to develop and sustain long-term economic growth and in which information, innovation, and goodwill are considered the most valuable and expensive assets of the stakeholders.
THE FUTURE OF INTELLECTUAL PROPERTY LAW/RIGHTS (CONCLUSION)
Previously, the exploitation of natural resources and adequate manpower were the primary engines of economic growth. The world is going digital and so are the economies. Information is now widely believed to be the future source of prosperity; representing raw materials which are transformed using human intelligence and technology, into innovations that lead to economic growth. Nevertheless, for a knowledge economy to succeed, accessibility to information, the creation of inventions and effective management and enforcement of IP rights must be present, working side by side. As pointed out in preceding paragraphs, any economy reliant on innovations will not thrive if there are no reliable incentives for potential inventors and investors. IP laws and rights create a reliable legal structure for the investment and commercialisation of IP and accordingly is an indispensable tool in this economy. Up until recently, IP law, especially in Africa was a specialised and dehydrated sector of law, made up of a small group of legal experts and hardly ever contentious. However, in recent times and with the development of an economy based on data and innovations this status quo has changed significantly. We are now faced with a new reality where IP is created, encountered and used daily. Furthermore, the continuous advancement in the use of social networking platforms and the internet presents an emerging IP market and new challenges for IP regimes.
1- Knowledge Economy Index (KEI) 2012 Rankings
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Domians
Domain names:
the difficult combination of IP and IT Bart Mortelmans, General Manager of Bnamed www.bnamed.net
Within many corporations, However, if a request comes in domain names cause internal via a non-IT department... disputes between the IT- Then, they should just as well be able to, at least the basics of the technical settings. One department and the legal (or set-up way of enabling this is through templates that IP) department. Who should can be set-up by a specialist in coordination with the people managing the servers and that can manage this important asset? then subsequently be selected while requesting The IP-department wants to safeguard the domain names, in order to protect them from inadvertently expiring or being stolen. They might even prefer to register the domain name with the company that also manages their trademarks. While the IT-department would want direct control over the technical settings, to be able to take swift action if an urgent update is needed. If asked where they would register a domain name, they’d probably go for the company that happens to also host their servers, because of this, domain name management in many companies is still scattered. Domain names are managed by the person who happened to have been the first one to ever need that particular domain name. This causes all sorts of problems, including domain names being lost simply because the person who should be looking after it forgot or has even left the company. We talked about this with Bart Mortelmans from bNamed.net. They work on what they call “domain name outsourcing”. ‘Taking the burden out of managing a portfolio of domain names.’ He tells us there are 3 key points that are important in order to satisfy both IT and IP departments involved: “The first 2 points are obviously having an interface that caters to the legal and that offers the features the techies desire. However, once the two departments individually are satisfied, to be able to really talk about outsourcing and getting rid of the burden, you need to add specialised support on top of this. One that can talk both “IT” and “IP” and that can connect the two departments in a way which internally would not have been possible.”
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the service was originally intended) but also attracted interest from specialised intellectual property firms: “We didn’t expect this, but actually there is a very good reason for this. These IPprofessionals are confronted with requests coming from the IT-department of their clients. So certainly for them, being able to both get support for the IT-related requests they get from their clients and being able to offer their client access to a direct control panel for all IT-related stuff, is a big asset. Many trade mark agents are still wary about also managing domain names, however, with the right tools and support, this actually doesn’t need to be any problem.”
a domain name. However, not every set-up needs to be so complicated that a template is needed. Bart Mortelmans tells us how small changes in the interface can make technically setting up a domain name a no-brainer for anybody: “We have been focussing on having an easy-to-use interface for everybody for a long time now. For this, in some cases, we changed how things would normally appear in a server-control environment. Making some very small changes to how things are worded or in which order they appear on the screen, can make a world of a difference to somebody not used to the computerlingo that is most often used in such interfaces.” Something else to look for in such a system is how helpful it can be in correcting mistaking or allowing input to be automatically formatted. As you will know, computers can be real nitpickers as far as spaces, dots, quotation marks or capital letters are concerned. Having a system that will autocorrect this can not only save you a lot of time but can actually be a life-saver for anybody changing settings for a domain name that is already in active use.
‘Outsourcing domain name management has not only taken off with trademark holders (for which
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LATVIA –
Battles for Domain Names? Ruta Olmane Associated Partner, Latvian and European Trademark and Design Attorney, Lawyer - www.metida.lt
European and Bulgarian Patent & Trademark Attorneys
Nowadays, if you would like to look serious in the eyes of the public, a website with the correct name or domain name is a must-have. Many large companies, as well as publicly known people, have done almost the impossible to protect their virtual identity by purchasing a range of domain names with both positive and negative outcomes.
One of the oldest and leading IP companies in Bulgaria Professional, cost effective services and quality advices
A domain name is a significant defender of your company and its brand in the virtual reality world. Therefore, there are splendid domain name scammers who will want to earn at your expense or at your neglect, if you are not able to reserve the domain names you want in a timely manner.
Areas of practice:
Once you state that someone has registered a domain name which infringes your trademark rights or company title, you are then expecting a quick and easy solution for your problem.
J. Varbanov & Partners
*IP Protection *IP Enforcement *Anti-counterfeiting *Litigations *Domain name registrations *IP watches
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www.jvpatents.com
However, is it so easy in Latvia?
So far, it discovers that in Latvia the status of a domain name and consequently the procedure in solving disputes about domain names is demanding more efforts than in other European Union Member States, especially if you are comparing it with neighbouring countries Lithuania and Estonia. Firstly, the status of country code top-level domains in Latvia (.lv) is still a subject of many questions and uncertainties. In accordance with the Civil Law of the Republic of Latvia (Articles 927-1129), a domain name does not embody features characterising the property, therefore the domain name is not a property of a natural person or legal organisation, so you are only
entitled to obtain the rights to use the domain name. In the meantime, the domain name in some aspects is considered to be a part of your intellectual property portfolio and is thought to be a subject of a certain right as it is possible to transfer rights to use a domain name in accordance with a bilateral agreement or according to a judgement of Court. From 1993, the Top Level Domain for Latvia “.lv” and its generic subdomains, according to the agreement with the IPE (Réseaux IP Européens), is administrated by the Network Information center for Latvia ((NIC DNS Registry) located in the Institute of Mathematics and Computer Science of the University of Latvia). This is the only competent authority providing the domain name registration, maintenance, and administration in Latvia. However, any dispute arising with respect to domain names is a subject for judicial review and there is no administrative institution dealing with these questions.
General Policies
The general Policies1 of Registry prescribes that the domain name shall be chosen in such a way, so as not to infringe the legitimate rights of other parties and also not to violate the existing legislation of the Republic of Latvia. However, the policies do not contain more specific rules in respect to a situation when trademarks or company names are infringed. One problem – pursuant to personal data protection and regulation information about a name, surname and any contact details of a natural person is not publicly available and the Register discloses this information only in accordance with a Court order.
A cancellation action may be filed under a civil procedure by a proprietor of a prior trademark or company name registration and by any other interested party, if a domain name may be considered as a generic name (i.e. both on relative and absolute grounds). In addition, a cancellation action may be initiated also if a domain name has been registered and is being used in bad faith. It is also possible to request cancellation of a registered domain name based on unfair competition law if this domain name is identical with or reproduces a registered trademark or company name. After receipt of a judgment of the Civil Court, a party concerned must submit a judgement to the Network Information Center for Latvia (local DNS Registry) and the local DNS administrator is obliged to immediately perform any necessary actions concerning cancellation (deleting) of a domain name from the database or transferring it to Plaintiff. As you can see the process itself seems to be quite simple, nevertheless, there are some circumstances which might cause several problems for solving these disputes quickly and cost-effectively.
While the Administrative dispute resolution service (Administrative Panel referred to in ICANN Uniform Domain Name Dispute Resolution Policy) for domain name disputes is not established in Latvia, all disputes regarding already assigned domain names are to be resolved in Civil Court directly between the current holder of the domain name and the contesting party without involvement of the Registry.
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requirements the Judge has the right to reject the case, allowing time to consider more evidence. The recent case law discovers additional challenges in disputes about the domain names and they mostly are related to the questions about preliminary injunctions.
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Preliminary Injunctions
Firstly, it is linked with recently adopted rules for the processing of personal data. Following these rules, any personal data belonging to the domain name holder, who is also a natural person will be removed from the public register and the Registry will not disclose this information, otherwise, as only in accordance with the Court request. Thus, before initiating any infringement cases you have to conduct additional action, namely – you have to file a separate request with the Court asking to collect the details of the domain name holder. Secondly, the time and expenses may increase if the holder of the domain is not from Latvia. In accordance with the Policies the holder of the domain name under top level domain .lv may be: A commercial entity registered in Latvia from the moment it is registered in the Enterprise Registry of the Republic of Latvia; A state or local government authority from the moment it is established; A foundation, an agency, a union or other entity established in accordance with the normative acts of the Republic of Latvia from the moment it is established; A natural person, who has reached 18 years of age; A commercial entity or organization registered outside the Republic of Latvia from the moment it is registered. Thus, there is no limitation that the holder of the domain name may be a person from a foreign country.
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Firstly, it is necessary to carefully evaluate whether a requested injunction is proportionate. Recently, preliminary injunctions were not granted when the Plaintiff asked for the locking of the domain name’s technical data. As blocking access to the technical data in the Registry database would result that all services related to a domain name, such as e-mails, website, and others would fail to function. Such an outcome is considered as unproportioned as the merit of the claim is not reviewed at that moment. In the meantime, a request to ban the rights to transfer the domain name is considered as a reasonable request for preliminary injunctions. Secondly, the Court raises questions concerning, whether only the registration of a certain domain name itself creates an infringement of trademark rights, as it is not considered as commercial use of this sign. In Court, the opinion Plaintiff must prove that this domain name is used in respect for identical and/or similar goods and/or services as a registered trademark or if the Defendant is performing other commercial activities such as selling domains etc. Thirdly, the Register raises questions concerning, how one proceeds in situations where the Defendant has not extended an agreement with the Register for the domain name in dispute when the dispute (in question) before the Civil Court is still ongoing.
In accordance with Policy domain names .lv might be registered only for one year, but the review of a civil case in Latvia may length much longer time. Currently, the Court has not provided any explanation about this question and it is left on the shoulders of the Plaintiff to follow the actual situation about the domain name of his/her interest. Last but not least, questions are always linked with the law applicable in the disputes about country code top-level domains in Latvia (.lv). As we have no national regulation about these questions, Plaintiffs and Courts tend to apply Commission Regulation (EC) No 874/2004 of 28 April 2004, laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration, however this is still quite a disputable practice which leaves a lot of unanswered questions.
In conclusion
It is noticeable that conflicts between trademark holders and domain name holders are becoming more common, also in Latvia. Currently, the procedure for resolving these conflicts are expensive and cumbersome, therefore there is an actual need to adopt more specific policy rules concerning functions of the .lv Top Level Domain. 1- The policy for acquisition of the right to use domain names under the top level domain .lv, which cover domain name registration and usage under top level domain .lv and its generic second level domains (subdomains) and is an integral part of the agreement.
In such cases, following the civil law provision, the Plaintiff will be obliged to provide a translation of the claim into the language which is understandable for the Defendant and in many cases this language will not be the English language, but the official language of the country of which this person is registered or has an address. Moreover, following international rules this claim will then be forwarded to the Defendant via the Ministry of Foreign Affairs of Latvia. Therefore, as you can see this process and such cases take a much longer time in obtaining a judgement. Thirdly, you have to take into consideration that all documents submitted with the Civil Court in Latvia must be in an official language or accompanied by a translation into the official language of Latvia, i.e. Latvian language. Although this is a quite a formal requirement it should not be underestimated as in some cases it creates a lot of additional expenses. If you do not comply with these
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TRADEMARKS Presents
A colour mark is one of the non-conventional trademarks which can uniquely identify the commercial origin of products or services in practice, but it is seen, that cited function is not ‘ex officio’ accepted by the relevant authorities.
Mrs. Pelin Demiroğlu - Attorney at Law, Head of Legal Affairs www.destekpatent.com
Details of the new definition
When the IP Law introduced a new trademark definition making specific reference to colours, there was some expectation that registration of colour marks would become easier. However, the current acceptance rate for registration of single-colour marks is 0%. The online Turkish trademark database lists 46 colour mark applications and 20 of them, comprising a single colour, have been rejected. Despite the recognition of colours as a registrable sign by the legislator, it is seen that the administrative authority is (reluctant) to grant protection for single colours. Both the trademark applications comprising single colours and the appeals filed against the ex officio rejection decisions of the same are being rejected on the grounds Since 1992 …… that the applied trademark does not have a distinctive character (Art. 5/1). It is designated in refusal decisions that Art. 4/I does not define that any colour YU-LI TSAI LU-FA TSAI applied must be registered as a trademark. Thus, as can be understood from the provision of the relevant article, one of the basic conditions required for a sign to be able to create a brand is that the sign can be shown § Quality | Reliable | Invaluable § in the registry, so that the subject of the protection provided to the trademark IP Right Prosecution & Litigation owner can be clearly and Corporate Legal & Consulting precisely understood from. IP Value-Added Services Focus: Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition The other is the condition of distinguishing from the Licensing, Counseling, Litigation, Transaction same type of goods and Territories: Taiwan, Mainland China, Hong Kong, and Macau services offered by other Fields: Mechanics, Chemistry, Pharmacy, Biology, Electronics, Optics, trademarks. It should Telecommunications, and Computer Sciences be kept in mind that the Address: 13th Floor, 27, Sec. 3, Chung San N. Road, Taipei, Taiwan consumers’ perception of Telephone: 886-2-25856688 Fax: 886-2-25989900/25978989 a single-colour mark is not E-mail: email@deepnfar.com.tw the same compared to the
As a result of the Industrial Property Law numbered 6769 (“the IP Law”) that came into force on 10 January 2017, the definition of a trademark has been broadened. The requirement of capability to be represented graphically is removed and a clear and accurate representation in the registry is found sufficient. Moreover, colours have been explicitly included in the definition of signs which shall be protected as a trademark; (Art. 4/1 “… all signs including designs, colours, numerals, letters, sound and the shape of goods and their packaging).
Web site: http://www.deepnfar.com.tw
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perception of a word brand, a figurative brand, or a three-dimensional brand that does not consist of a product or packaging form. This is not the case when consumers are accustomed to recognising brands of distinctive words and/ or shapes as signs that diagnose the product. The administrative authority also add, that it is not entirely ignored, that the possibility that even a single colour in some cases may be able to distinguish the goods and services of an entity from the goods and services of other enterprises. However, in order to provide a distinctive quality in terms of a single colour, first of all, the colour should be used continuously and for a long time on the relevant product and service and, second of all, the colour must be perceived as a brand by the consumers, indicating a certain commercial resource. In other words, the authority lets the holders of the rejected applications apply to the courts for revocation of the refusal decisions, claiming that the applied colour marks have received distinctive character through prior and frequent use. On the other hand, the administrative authority can give colour combinations the green light and decides for at least the publication of them for third-party oppositions.
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Colour Marks in Turkey
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To conclude
It is to be seen what will happen in the future regarding colour marks. However, it is likely that the eventual court decisions may reflect a discomfort, whether the registration of a single colour grants a monopoly or not.
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COUNTERFEIT & PIRACY
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EU’s Counterfeit and Piracy Watch-List Following in the footsteps of the United States’ Special 301 Report, the European Commission has released its first-ever Counterfeit and Piracy Watch-List. Produced as part of the Commission’s complex strategy for the IP enforcement, the initiative was announced in 2017. The initiative is part of the Commission’s strategy announced in the 2017 Communication “A balanced Intellectual Property enforcement system responding to today’s societal challenges”. The report, published on, 7 December 2018, which will be updated regularly, identifies the marketplaces outside the EU where counterfeiting, piracy or other forms of intellectual property abuse are common practice. The report also identifies and describes the most problematic marketplaces, with a special focus on online marketplaces. The report also provides information to EU rights’ holders on the effectiveness of IPR regimes in countries outside the EU, which will hopefully enable them to improve their business strategies and operations to protect their intellectual property. As a result, it is hoped that a better understanding will transpire, as to how to manage risk around IPR when doing business in, or with, certain nonEU countries.
Lisa Lovell, CEO of Brand Enforcement UK www.brandenforcement.co.uk detriment to EU citizens and EU employees/employers the risk to consumer health and safety (i.e. pharmaceuticals, toys, and spare parts) harm to the environment (i.e. pesticides) the risk to consumers of buying substandard and possibly dangerous goods consumer risk of buying sub-standard and possibly dangerous goods loss of sales/revenues/jobs/government (i.e. VAT, revenue taxes, customs duties) damages to brand image and economic interests of European companies contribution to organised crime
The “Naughty” List China Xxjcy.com / China Telecommunications India
Snapdeal.com
Indonesia (B2C)
Bukalapak.com
Korea
Naver.com
Russia
Tiu.ru
Thailand
Lazada.co.th (B2C)
Ukraine Prom.ua
Main Complaints by Intellectual Property Stakeholders The most common complaints by stakeholders Abuse regarding the takedown process are that The report helps to raise awareness of consumers that might be buying products in those marketplaces and encourages their operators and owners to crack down on intellectual property abuse: serious harm to European business trading outside the European Union significant economic losses for right holders and legitimate businesses undermining of the EU’s comparative advantages in innovation and creativity
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there is a distinct lack of co-operation and communication, erratic implementation of various different policies, inconsistent, cumbersome and stringent procedures, lack of prohibition of prominent keywords which are often used to search for counterfeit goods, insufficient or inadequate vetting of sellers, a lack of proactive measures to detect illegal listings and unreasonable delays in processing removals.
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Co-operation
insufficient cooperation with rightholders lack of investment in, and use of, automatic detection technologies unsatisfactory efforts to reduce the availability of counterfeits
Communication
total lack of responsiveness by the respective legal teams complaints often not acted upon at all low levels / non-responsiveness to requests for updates on takedowns Insufficient information on listing removals; has it actually been removed or has it simply expired? listings frequently left online without communicating the reason to the complainant
Implementation the platform’s policies against IP infringements and for the detection and removal of illegal listings are not properly implemented enforcement through the web form has not resulted in any takedowns legal team occasionally states that listings will be removed within 5-7 days, but then the listing remains live
Inconsistency complaints handled inconsistently failure by a seller to remove should = takedown but there was a distinct inconsistency in action taken
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Keywords
no prohibition of the use of contentious keywords in the listings (i.e. “replica”) no prohibition of terms implying the products’ counterfeit nature (“A-class” and “mirror-class” in Korean)
Procedure
unreasonably stringent enforcement requirements cumbersome takedown procedure requiring official complaint with a physical print out of all infringing URLs takedown documents must be signed/ stamped/scanned by company representatives and sent via email for assessment
Proactiveness
lack of proactive measures to detect illegal listings weak system for vetting of sellers shortcomings with regards to proactive detection/identification/removal of counterfeit listings or no proactive measures employed for detection or removal some platforms use image recognition systems to identify violations but other automatic technologies are also needed in order to help analyse and correlate product, price, and image related information to flag suspicious listings for further analysis
Timeliness
unreasonably long processing time for removals some sellers allowed up to 5 days to remove reported listings
The List - An Effective Tool, to… raise consumer awareness concerning the environmental, product safety and other risks of purchasing on these marketplaces encourage the operators and owners to take the necessary actions and measures to reduce the availability of IPR infringing goods or services encourage responsible local authorities and governments to maximise their efforts to investigate reports of IPR infringements in such marketplaces, and to pursue appropriate enforcement actions raise awareness to consumers that might be buying products in those marketplaces raise consumer awareness concerning environmental, product safety and other risks of purchasing on these marketplaces thwart the deception of online shoppers by these e-commerce platforms misusing such rogue merchants as a marketplaces urge the owners and operators of these marketplaces to adopt business models that rely on the licensed distribution of legitimate content and products promote a better partnership between the owners / operators / right-holders / enforcement authorities encourage their operators and owners to crack down on intellectual property abuse The commission also proposes to encourage the specialisation of national judges for IP and the systematic
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publication of national judgements in IP enforcement cases and has provided guidance on existing EU laws.
“With the planned Watch List the Commission intends to identify concrete physical and online marketplaces, located outside the EU, which engage in or facilitate IP infringements, in particular, counterfeiting and piracy.”
What did the report mean for brands?
effective international rules and a solid, predictable legal system for rights-holders
What the report does not mean for brands? IPR owners cannot expect any immediate effect from this initiative ultimate responsibility still on brand owners to enforce their IPRs worldwide sole monitoring of online marketplaces is not enough and other tactics must also be employed (i.e. Offline Enforcement) physical factories must be identified, supply chains made transparent and physical evidence obtained (i.e. test purchasing, etc)
E-Commerce Recommendations
The Recommendations aim in particular at clearer notice and action procedures and calls for the following; more effective tools and proactive technologies to detect and remove counterfeit listings and other illegal content more transparency on online platforms closer cooperation with right-holders and enforcement authorities more effective measures to detect and remove counterfeit offers increased level of cooperation with rightholders and enforcement authorities more clarity of the platforms’ terms of service regarding prohibiting their use to sell or otherwise trade in counterfeit goods and services more effective vetting of the sellers who are trading on the platforms more effective automated risk management tools to identify high-risk behaviours and potential red flags
The “Nice” List
The following platforms are not listed in EU’s Counterfeit and Piracy Watch-List.
Aliexpress.com
Taobao.com
Amazon.com
Tmall.com
eBay.com
1688.com
Despite ongoing efforts by Aliexpress, Amazon, eBay, Taobao, Tmall, and 1688.com, there is still a significant volume of counterfeit
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goods being offered for sale. On these sites, however, regards the above-listed e-commerce platforms, it was also reported that; a higher level of compliance with the recommendation on measures to effectively tackle illegal content online better cooperation with right-holders apply both proactive and reactive measures to detect and remove counterfeit offers apply terms of service that include IPR protection policy prohibiting the use of their platforms to sell counterfeit products or to provide other infringing services adopt a number of good practices to enforce the terms of service vis-à-vis traders and to cooperate with rightholders, including tools allowing right-holders to register their brands, report counterfeit listings and fast-track takedown procedures some platforms also reportedly partner more closely with brand owners and content creators to optimise detection models some platforms apply different technological measures seeking to reduce the availability of counterfeit offers, such as automated risk assessment tools image recognition semantic recognition algorithms item-tracing authenticity services to help consumers verify the authenticity of products
Further progress is still required
However, according to stakeholders, further progress is needed to ensure that offers of counterfeit products disappear from these platforms or are significantly reduced improved trader vetting systems adoption or improvement of automated risk management and detection tools to identify high-risk behaviours and potential red flags, including dealing with repeat infringers and suspicious offers better responsiveness to takedown requests more consistency in dealing with similar cases increased cooperation with right-holders (i.e. by simplifying access to the brands’ registers) The following indicators are not sufficiently relied on by the platforms when proactively identifying suspicious listings: unusual low price level overly long shipping time seller history and feedback lack of pictures of actual products offered unauthorised use of catalogue pictures use of pictures that are not showing labels of the product an absence of information in the listing description (often making it impossible for brand owners or consumers to determine the authenticity of the products
An Example of Existing Best Practice
Real Deal Online Code of Practice http:// www.realdealmarkets.co.uk
The Real Deal Online programme has been designed to assist administrators of social media selling groups in discharging their legal responsibilities in relation to consumer sales by means of their sales group. The programme requires administrators to liaise with their local enforcement authorities, to welcome enforcement officers as members of the group and to agree to the Real Deal Online Code of Practice, which comprises just five simple steps: to prohibit the sale of counterfeit and other illicit goods to act on information from IPR owners/ representatives reporting the sale of illegal goods to notify law enforcement if they believe that illegal goods are being sold within the group and to exclude the sellers of such goods to highlight warnings and advice notices posted by law enforcement to make sure that all members of the group are aware of its fake-free policy
“The Watch-List is clearly a step in the right direction, but we need more collaboration and continued commitment from all stakeholders to continue developing best practice methodologies such as the excellent example set by the UK’s Real Deal Online Code of Practice” Lisa Lovell, CEO, BEUK.
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PATENTS
Pharma Patents: Healing the Rights There isn’t a more valuable asset than human health but it comes at a price. Human beings are not perfect, nature created them in such a way that they should die after a time. Permanent attempts are made by researchers to put off that time as long as possible. Researchers devised many methods to deal with inherent and acquired human defects, medicinal preparations being one of the first choices.
The development of a new drug is a sophisticated process… Scientists synthesize thousands of substances that could potentially become medicines. According to sources, only one of ten thousand obtained substances reveal properties that may be useful in treating a disease. After that preclinical and clinical studies follow, registration with the health authorities and finally, the drug goes to the patients. Pharmaceutical companies spend hundreds of millions or even billions of US dollars to find a substance useful for treating a particular disease. Development of a drug may take ten years and often more. Sometimes the obtained drug reveals unexpected properties as occurred with Viagra which was initially intended to treat ischemic heart disease but suddenly revealed other unexpected properties, thanks to which it became widely known.
Valery Medvedev, Managing Partner, Russian and Eurasian Patent Attorney - www.gorodissky.com
Generic Drugs
Realities of life are such that where there is a good drug it attracts attention, not only of practicing doctors but also of the competitive companies wishing to have their unwelcome share of the successful drug. These companies are generally termed as generic companies. There is nothing bad in the idea itself. Generic drugs are produced and sold in many countries, their share being some 50 to 60 percent in a given market. This, however, is correct in a situation where the relevant patent has expired and the company producing the original drug has had its share of the market and is working on a drug of the next generation with improved properties. For example, Humira (stands for “human monoclonal antibody in rheumatoid arthritis) used in the treatment of many ailments needing immunosuppressive drugs were sold at more than $4000 per month
The problem of generics is also high on the agenda in Russia. Some generic companies are reluctant to wait until the patent dies and initiate production and sales of biosimilars before the expiration of a relevant patent. This has really been a headache for original pharmaceutical companies doing business in Russia. To a large extent, this is explained by the absence of patent linkage. The Ministry of Health does not check whether there is a valid patent and may issue a marketing authorization for generic drugs before the expiration of the relevant patent.
Currently, there are two practically independent systems of protection of drugs. One concerns state registration of pharmaceuticals to prove their safety, efficiency, and quality. The procedure of registration is regulated by the Law “On the Circulation of Medicines”. Another is patent protection endowing the patent owner with the legal monopoly for the use of the drug in which the invention is used. These two systems are independent. Russian courts recognize that registration of drugs per se does not infringe patent rights however patent owners rightly believe that such registration creates a threat of infringement. This leads to the situation where a drug covered by a third party’s patent may be registered and offered on the market. Only when the infringing medicine goes to the market the owner of the patent may sue the infringer, cancel the registration at the Ministry of Health and claim damages. The law of many countries including in one of the members of the Eurasian Economic Union, Kazakhstan, provides for the patent linkage. This means that the applicant for the registration of the drug should declare that he is not infringing other persons’ rights while the patent owner may ask the registration authority to suspend the registration of the drug. Russia is hopefully going to change the current situation and introduce patent linkage too. The Ministry of Health proposed amending the Federal law “On the Circulation of Medicines” related to the submission and examination of an application for the state registration of drugs. The bill provides that the pharmaceutical companies wishing to obtain marketing authorization should submit information on the valid Russian patents and trademarks and confirm that they do not infringe the rights of other persons.
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While promoting its proposal FAS made emphasis on Article 1360 CC (the use of an invention in the interests of national security) rather than on Article 1362. Article 1360 allows the government to grant permission for the use of the invention in the interests of defense and national security. It may be agreed that in some rare cases national security may be jeopardized because of insufficient health care so FAS (or another interested entity) holds it that a compulsory license could be issued in certain circumstances. It seems that prospects of the proposal to become a law are obscure and are tapering off to zero. Being disappointed with the dim prospects of accepting FAS’ proposals some Russian pharmaceutical companies tackled the issue from a different angle. There is a provision in the Civil Code (Article 1362(2)) providing that if the owner of a patent cannot use his invention without infringing the rights for another (first) patent and the owner of that first patent refuses to grant him a license, the owner of the second patent may demand a compulsory license from the owner of the first patent in court. The owner of the dependent patent when suing the owner of the original patent should prove that his invention is an important technical achievement and has significant economic advantages over the first invention. If this is proved the court may grant a compulsory license. Proving a significant economic advantage may not be difficult for the prospective licensee. He did not spend money on extensive research and thus may afford cheaper prices riding on the findings of the owner of the original patent.
However when such dependent patent is obtained by a competitor (presumably unfair) he and his supporters claim to have made important technical achievement. The question arises: how can attempts to use other people’s inventions, for cheap be offset? There are several options confirmed by business and judicial practice. One is to file an appeal against the grant of a dependent patent with the Chamber of Patent Disputes of the patent office. Usually, the ground on which the appeal can be made is a failure to meet the “inventive level” requirement. This seems to be a natural step because such “secondary” patents, in fact, they slightly modify the original patents with some minor modifications without any tangible improvements. They do not possess better medical effects nor are they free from negative side effects. This approach is for the most part sufficient to have the patent cancelled. A different approach was demonstrated by companies in other cases. The holder of a patent for a dependent invention may obtain a marketing authorisation while the original patent is still in force. In this case, the owner of the original patent may sue the owner of the dependent patent and claim suspension or withdrawal of the marketing authorisation. It is obvious that while the original patent is not infringed at this stage nonetheless the marketing authorisation creates a threat for such infringement. If the dependent patent owner uses his marketing authorisation and launches the drug on the market the original
Important Compulsory Licenses technical The above is not the only hurdle in the business achievement is a of pharma. There is another problem standing in the way of normal pharmaceutical business requirement not in Russia. Several years ago the Federal Antimonopoly Service (FAS) came up with easily defined a proposal to grant compulsory licenses on the basis of administrative decision instead of court. In fact, the concept of a compulsory license is not new. Compulsory licenses are provided in the patent laws of many countries and Russia is not an exception. Article 1362(1) of the Civil Code (CC) sets forth that if an invention is not used or used insufficiently during four years after the grant of a patent any person may ask the patent owner to issue a license, and, in case of refusal, sue the patent owner and obtain a license through the court judgment. This provision is dormant, however, not a single license has been granted on the basis of that article so far. Similar examples may be cited from other countries: there was a Bayh-Dole law of 1980 in the US providing for the grant of compulsory licenses if research was made with federal funding, however even in that case no compulsory licenses have been granted.
It is common knowledge that the development of efficient drugs involves much effort and money. Pharmaceutical companies must offset huge expenses for the development of the drug and set aside money for future research. For that purpose, they obtain patents that give them a lawful monopoly for 20 or even 25 years. Registration of a trademark for the drug is not a bad idea either which helps to gain popularity of the drug.
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in 2017. After expiry of the patent in Europe in 2018 generic companies were selling the drug for as little as several hundred USD. The UK ministry of health plans to save £300 million on Humira in 2019.
Protection of Drugs
Some experts say that in many cases the results of preclinical trials of dependent inventions are not confirmed during clinical trials. Hence, in order to prove that the dependent invention is indeed an important technical achievement, the owners of such patents should conduct full-scale clinical trials in order to show advantages over earlier patents. They prefer not to do that but simply insist on the alleged importance of their technical achievement. With that poor armamentarium, they still go to court but may be expected to be dismissed. This issue is not simple. Also, there has been a discussion in Russia about “evergreen” patents. When the owner of the original patent develops its continuation, a dependent invention and obtains a patent, he is sometimes accused of unfair behavior wishing to extend the validity of his patent to eternity.
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patent owner will have to monitor the market, collect evidence of infringement and engage in much more costly court proceedings. In order to make obtainment of marketing authorisation impossible, steps are being made to introduce patent linkage as mentioned above.
The bottom line: never give up; the stakes are too high to ignore the opportunity to bring false “innovators” in line.
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Published by Northon's Media PR & Marketing Ltd
Recent amendments to the
Patent Act; Argentina Mr Pablo A. Palazzi - Partner at Allende & Brea Argentina www.allendebrea.com.ar
Dedicated to women in Intellectual property Law & Innovation Recently, Law No. 27.444 introduced a series of amendments in the Patents Law. The changes introduced for patents and utility models are related to (i) Formal requirements for filings, (ii) Substantive examination, (iii) Priority documents, (iv) Agent applications, and (v) Deadline reductions. The reductions include: (i) for the submission of third party observations - from 60 business days to 30 calendar days. (ii) For the conversion of a patent to a utility model - from 90 business days to 30 calendar days. (iii) For the correction of errors - from 180 days to 30 calendar days. In particular, the main changes introduced for patents are related to the deadlines for the presentation of documentation related to the patent and the priority document.
Profiles - Rankings - Achievements - Accolades - Experience - Articles + Much more
Launching at AIPPI in London September 15, 2019 - September 18, 2019 To be involved in this unique publication then, please contact us at info@worldipwomen.com or call us on +44 (0)208-805-0711
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a certified copy from the original office and a Spanish version of the submission was in a different language. The new regulations intended to make this optional for trademarks, utility models and patents, but a new Resolution (N° 250/2018) from the INPI ratified that this is still mandatory, with exception of patent submissions. This means that patent applicants are not required to submit the priority declaration and the transfer of rights document (if needed). In the past, the granting of the patent required the fees payment, the priority declaration, and the rights transfer document, among others. If these documents were not submitted, the applicant was not able to enjoy the international priority right. Now, the only documents that must be submitted are (i) denomination and description of the invention; (i) plans or technical drawings which are required for the comprehension of the description; (iii) one or more claims and; (iv) a summary of the invention´s description. In other words, the requirements were shortened and simplified.
In addition, the patent act established that any patent application could be converted into a utility model application and the other way round. This conversion could be done 90 days from the filing or during the 90 days after the Patents Office demands it. However, the amendments to the patent act shortened the deadline up to 30 days. As before, if the applicant does not convert the application during the deadline established, it shall be declared as abandoned. This modification contributes to the aim to speed up the times at the local Patent Office. One of the most important amendments is related to the deadline reduction for the substantive examination. Previously, the patent act established a period of 180 days for the examination, where the applicant could be required to present any additional information. In this sense, after the 180 days period, if the applicant did not comply with the requirements, the application was declared as abandoned. From now on, the
Electronic Applications & what is needed to apply
Previously, the patent act established that in order to get the patent submitted the applicant had to file a written application at the Argentine Patent Office. With the new regulation, this requirement has been eliminated and Law N° 27.444 only demands “to file an application”. This means that applications can be made electronically. In order to submit a patent application, it is mandatory to provide the Argentine Patent Office with information about the applicant (inventor and company) and the specification, containing title, description, claims, abstract and drawings (if any) of the invention. Regarding the priority right, the patent act established that priority had to be invoked at the moment the patent was submitted and accompanied by a priority declaration with
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applicant has 30 days to comply with any requirements of the Patent Office during the substantive examination. Regarding the substantive examination, the amendment establishes a maximum of 18 months for the applicant to pay the corresponding fees, in contrast with the previous deadline of 36 months. In this sense, if the applicant does not pay these fees during this period of time, the patent application shall be declared as abandoned.
Changes in Patent Publications
After the substantive examination, the Patent Office decides if the patent is granted. Before these new modifications came into force, granted patents were published in the patent office´s Gazette. From now on, they will be published at the INPI´s website. Law N° 24.481 established that anyone who improved a discovery or an invention patent had the right to request a patent of addition. However, with the new regulations, only the ones that improve an invention patent have the right to request a patent of addition.
In this sense, the actual requirements for obtaining a patent are: (i) Language: it is mandatory to submit a
Spanish sworn translation within ten days from the filing date if the patent is submitted in a different language. (ii) Power of attorney: the signature of the grantor in the power of attorney must be certified by a Notary Public and the document must be legalised or provided with the Apostille of the Hague Convention in order to be valid. (iii) Priority Document: the date and priority number of the original application must be included on the patent application. A certified copy from the original may be requested by the Patent Office during the
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substantive examination. (iv)Substantive examination: the substantive examination must be requested and paid within 18 months from the filing date.
Regarding utility models, the changes are the following; Previously, the issue of the certificate of utility models relied on certain requirements, such as the invention to be new and with industrial character. The fact that the invention lacked inventive activity or had been disclosed abroad was not an impediment to obtaining the certificate. This last sentence has been deleted and the new regulations do not explain anything about an impediment regarding the certificate. Once the applicant files the utility model application and pays the fee for the substantive examination, the Patent Office will check if it complies with the requirements and publish the application. In this sense, the new regulation enables a period of 30 days to file oppositions against applications. Once the 30 days expire the Patent Office will decide if the application is granted. However, if the applicant does not pay the substantive examination fee, the application will be declared as abandoned. Utility model applications had to be signed by the applicant and accompanied by the proof of payment of the fees. Now, the application has to comply only with the corresponding payments in order to avoid the Patent Office to declare the application null. In addition, when applications were filed by legal representatives, it´s personality had to be properly proven complying with certain requirements. With the new regulation, the representation shall be considered as an affidavit and the Patent Office will be able to ask for the supporting documentation. In the case the application is filed by a business manager, the management shall be ratified within 40 days after the filing.
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When a patent or a utility model was denied, the applicant had the possibility to appeal in order to the Patent Office re-consider the denial of the application or against any observations. From now, the applicant will be able to file an administrative appeal against the denial of the application within 30 days from the denial. In relation to the funds’ administration, the INPI has the power to manage the funds raised from its services and to establish, modify or delete fees related to the procedures, including the ones related to the holder´s rights. Furthermore, the INPI has now the power to (i) regulate the patents and utility models procedures, in everything that facilitates them; (ii) adapt requirements that shall become obsolete because of new technologies; and (iii) simplify the registration procedure for the applicants and the society as a whole.
To conclude
Many of the changes introduced in the Argentine Patent Act are welcome and it is hoped that it will simplify and shorten the trademark processes in our country. Several regulations of the INPI remain to implement some of these modifications.
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What Are the Trends in Technology Focus?
This heat map shows the number of publications placed in the top twenty IPC classifications over time. As previously discussed nanobodies are flexible biological tools and as expected the classification codes identified in this chart reveal that the portfolio is diversified across a variety of areas. Since 2016 it appears that the two IPC classifications with the largest distributions are as follows below, suggesting a therapeutic focus to the patent portfolio: A61K39/395 - Medicinal preparations (comprising Antibodies) C07K16/28 - Immunoglobulins - against receptors, cell surface antigens or cell surface determinants.
Nanobodies –
A Patent Landscape Case Study “Providing insight into current developments in the Nanobody Patent Landscape via statistical analysis conducted in Questel Patent Portal”.
Mr Ashley Evans – Senior Manager at Patent Seekers Limited, (Biochemistry BSc) with over 10 years’ experience and biotech subject matter specialist, the company having completed more than 15,000 searches for international patent attorneys both in private practice and in-house, and for major blue-chip companies – discusses a patent landscape case study focused on nanobodies and reveals the key findings (email: mail@patentseekers.com). Nanobodies were originally developed from the discovery that Camelidae (e.g. camels, etc.) have functional antibodies that comprise only heavy chains, where the target recognition module is comprised of a single variable domain (VHH or Nb) and two constant domains (CH2, CH3). When cloned and isolated, the single variable domains possess full antigen binding capacity and have excellent stability.
Ashley Evans – Senior Manager at Patent Seekers Limited www.patentseekers.com
be non-immunogenic as a result of high similarity with human VH sequences, they are widely discussed as very flexible tools, utilised in the fields of research, diagnostics, and therapy. Whilst research papers offer insight into current scientific research, patent mapping enables the identification of key trends and information specifically related to the patents in the Nanobody technology space. This data can be utilised to support business decisions such as focusing areas of research, planning for current market developments, identifying competitors and supporting patent filing strategies. The following case study will provide further insight into current developments in the Nanobody Patent Landscape (2054 patent families identified).
How Rapidly Is New Innovation Taking Place in This Space?
Nanobodies are based on single-domain antibody fragments and have potential in an array of diseases, they possess significant advantages: -Small size, high solubility, high stability. -Highly effective tissue penetration in vivo. -Can be linked to Fc-domains, peptide tags, toxins or other nanobodies. -There is the potential for conjugation at specific sites to drugs, radionuclides, photosensitizers, and nanoparticles. Recombinant production has proven to be cost-effective and nanobodies may be utilised as building blocks for multi-domain constructs. It has been documented that the advantageous properties of Nanobodies are predominantly related to their single domain structure, which is more hydrophilic in comparison with standard antibody fragments. The Nanobody surface is convex and the CDR3 loop is extended, thus enabling effective recognition of hidden epitopes. Nanobodies are deemed to
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What Is the Global Origin of This Technology? The distribution of the top twenty priority countries for this field is shown in the above map. The map shows priorities originating from a range of countries across the globe, with a significant number of patents originating in the US and China. The next level of distribution appears to include Europe, Australia, and India. It should be noted that the map does not show EPO or WO priorities, there were approx.50% of families comprising EP application(s) and approx.72% comprising WO application(s) within the portfolio. This may indicate that while the Nanobody technology area has a relatively global focus with established markets, there exists further room to expand into new territories and further develop existing markets beyond the USA and China.
What Is the Global Grant Success of This Technology? The chart above illustrates the proportion of granted patents to patent applications for the top twenty most prevalent patenting authorities in this field. At the time of writing, 49% of the portfolio is classified as pending, with 37% classified as granted. This may further indicate that the Nanobody field is an established yet growing area. The proportion of granted patents could be expected to increase in the near future, should this area of technology keep pace with the identified trend of an increasing rate of filings and the high proportion of pending applications.
This graph appears to illustrate that Nanobodies are an accelerating area of technology with peak activity for the number of filings occurring in recent years since 2015. The apparent dip in filings in 2017/2018 is most likely explained by applications yet to be published that would be claiming these years as a priority. The findings may offer an indication that generally assignees may be building their portfolios. Furthermore, it could be expected that the number of nanobody related filings may increase further in the coming years as research and development continue to contribute to the existing trend for greater activity (approximately 28% of the portfolio is allocated to 2016-17). Note: There will be a gap in current patent information as a result of the 18-month delay between the filing of an application and its publication.
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Who Are the Current Competitors?
Technology Landscape
The most prevalent assignee appears to be Ablynx, owning approximately 8% of the publications in the field and possessing a strong foothold as the leading company in this area. Overall, 24% of the portfolio is owned by the top 10 players who would appear to have a strong allocation of the Nanobody patent portfolio. The remaining distribution seems to be evenly spread over the remaining assignees. As only three assignees have more than 50 patent families, there are likely many smaller players in the field.
Who Are the Likely Future Competitors?
The heat map indicates a strong rise in publications from Novartis over the last eight years. They face strong competition from Ablynx who appear to be established as the market leading Nanobody biotech company and have consistently invested in growing their patent portfolio. This chart enables useful insights into the activities of competitors and to establish a trend in terms of which assignees are leading the race for innovation within this space. It can be useful to understand the levels of investment from competing assignees and it may be beneficial to identify future acquisitions that could complement an existing IP portfolio. Guangxi and Nanchang Universities are both recent entries, currently Nanchang is also the third biggest assignee and based on current trends, is actively growing its portfolio and research interests.
What Technologies Are the Top Companies Working On? This heat map shows the main IPC classifications assigned to the patent portfolios of the top 20 assignees identified within the Nanobody dataset. This may enable a comparison of how diversified or concentrated the assignee’s portfolio may be. It can provide an overview of the positioning of applicants in terms of their research interests or the identification of any potential complementary relationships that may exist for collaboration. It appears that Ablynx has a diversified patent portfolio with a variety of therapeutic and diagnostic interests which adds further weight to its position as a key assignee in the nanobody field. Using Questel Patent Portal’s collaboration chart, it was found that there appears to be collaboration between Novartis and the University of Pennsylvania, who have similarly matched patent portfolios based on the distributions documented above.
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This patent map illustrates a set of documents clustered according to their semantic proximity where a point corresponds to a patent family. The map provides a visualisation of the technology clusters prevalent within the Nanobody portfolio and reveals a diverse set of interests. The portfolio is predominantly based on therapeutic patents, with cancer therapy being a hotspot of interest. There also appears to be a variety of clusters related to the nanobody structure, recombinant technologies, and drug targeting.
To Conclude This patent landscaping case study has revealed that Nanobody technology is an established field with trends indicating great potential for future innovation and patent filings across a diversified portfolio, comprising a variety of therapeutic and diagnostic related technology clusters. The landscape has identified a variety of competitors and their activity levels, including large corporations such as Novartis, more niche and specialised companies/subsidiaries such as Ablynx, and a collaborative university presence.
For further insight, specialised state of the art searching could enable investigation of assignee portfolios or further searching of more specific Nanobody subject matter. Thus, providing a further breakdown of inventions that lie within a specific area of the portfolio. It’s important to understand the limitations (and the errors that can arise) from this form of statistical based landscape work which is designed as a guidance tool and to avoid drawing “final” conclusions such as for infringement/FTO purposes, which requires specialist searching and analysis. Additionally, there are other charts covering areas, not within the scope of this article, such as key inventors, key patents identified from citation analysis and other assignee metrics, which could also provide useful investigative information relating to this vibrant and interesting technology area.
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Specialist global search services for patent attorneys, universities, technology companies and SME’s
Patentability/Novelty Search Infringement/FTO/Clearance Invalidity/Patent Busting State of the Art Patent Mapping/Landscapes Patent Monitoring Patent Status Competitor Analysis
Tel: +44 (0)1633 816601 Email: mail@patentseekers.com www.patentseekers.com
Patbase Analytics results
Can patent visualisations indicate how patent attorneys’
The PatBase Analytics dashboard summary showed that 27% of families had grants. The jurisdictions graph showed that the US had most filings and most grants. It was followed by China, South Korea, and Japan. There has been an increase in patent filings from Asia over the years.
working environment has changed? At Victor Green & Company we have been asked to carry out patent landscape visualisations to provide analysis, often for broad subject areas. To show an example of a landscape, analysts looked at patents and patent applications that might impact the working life of patent attorneys. There are some products on the market that can create inventions, locate prior art or file patent specifications. This article gives an overview of the patent landscape that may have given rise to such products.
Background
Some countries, for example, Japan and the Republic of Korea have considered extending intellectual property (IP) rights to machines according to Keisner [1]. The European Parliament recognised the need for legal status for robots in its Civil Law Rules on Robotics [2]. Automatic patent drafting was described by Aristodemou & Tietze [3]. Khoury considered the use of big data to find prior art [4]. McLaughlin, Fraser, Hattenbach, and Koza commented on AI generated inventions [5-8]. Khoury argued that “Human-Like Robots” or “Hubots” should not be able to obtain IP rights for their inventions [9].
Scope
The aim was for the landscape to give a broad overview of patent attorneys’ work, to include anything on data processing that might cross their desk. If topics were viewed as being within a patent attorney’s field of expertise, they were left in the final set, even if they had not been the focus of the search strategy. For these reasons, some items were retained, for example; on patent analysis, databases, search algorithms, analytical tools, mapping, translations, and white space analysis. Some topics were excluded. For example, blockchain technology relating to IP was not investigated, as it was a substantial topic in its own right and there were recent reports on this technology. For this article, it was assumed that patent attorneys did not spend much time on patent searching and they obtained searches from patent analysts. Inventions on patent searching and retrieval may be covered in more detail at another time. Generally, references on
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Victor Green, Founder, Alessio Brizzi & Jo Shaw www.victorgreen.co.uk trademarks and copyright were left out.
Method
A strategy was devised to retrieve patents and patent applications on IP data processing, which was run in the PatBase database and PatBase Analytics module. For further information about PatBase please see www. minesoft.com and for an explanation of strategy construction, see https://www. victorgreen.co.uk/how_we_search.html. The strategy started with keywords about “patents” and “machine filing” in English, French, German and Spanish and two patent classification codes. The data processing subclass (G06Q) from the Cooperative Patent Classification (CPC) had two subgroups for IP management (G06Q50/184) and management and planning (G06Q10/06), which looked of interest. Searches revealed further keywords and classifications which were added to the strategy e.g. management and automation (G06Q10/10), marketing and pricing (G06Q30/02) and finance (G06Q40/06).
Iterative search improvement and result filtering
Any additional terms and codes identified during the search were added to the strategy. Due to a large number of Asian assignees in the field, the search was broadened by adding non-Latin character keywords for Chinese, Japanese, Korean, for example, 특허 for “patent” in South Korean. The Super Classification option was used to broaden the international coverage. This included Japanese Classification schemes as well as the Cooperative Patent Classification (CPC), International Patent Classification (IPC) and the US Patent Classification (USPC). A ranking of patentees revealed a further CPC on business transactions (G06Q30/0601). Generally, the use of classification codes helped to reduce false drops for terms such as “patent”, “intellectual property”, “prior art” and “invention”. These appeared in numerous specifications to introduce the invention, without the terms being the subject matter
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Results were checked for relevance; irrelevant records were removed leaving over sixteen hundred families in the final set, which was then visualised using PatBase Analytics and Visual Explorer. The subject matter included automatic patent filing, computer-generated inventions, formalities software, reminder systems for renewal fees, identification of potential patent infringement, methods for determining patentability, systems to grant patents, crowdfunding platforms to secure IP, trading tools, value assessment methods, auctions for IP, prediction systems, patent portfolio management, business strategy tools, licensing arrangements and information disclosure statement management. This image shows an example from the results set, of a method for presenting patent information. Fig. 1 Sample image of patent software, US2018089892 from Olaru Gheorghe
The areas covered in this landscape corresponded to some software products that are available for patent attorneys and IP companies. The inventions aimed to help attorneys with tasks such as management of IP workflows, the location of prior art and prosecution of patent specifications. The analysis showed that the area was fairly young, with little to no filings prior to the year 2000, and showed a positive trend in the number of applications, with an increase after the year 2015. This was probably due to the fact that effective, commercially viable products need to be able to deal with the complexities that attorneys navigate, and are likely to rely heavily on the latest advancement in fields such as machine learning, natural language processing, and data mining.
Taking into consideration the above-mentioned findings, and the limited number of products currently available on the market, it would seem that the sector has not yet matured, but is attracting increasing commercial interest.
of the invention, for example, “this invention claims”. The scope for this article as defined by the following concept combination searches: keywords for the “patent” concept with keywords or classifications for “IP management”, keywords for the “patent” concept with keywords or classifications for “management and planning”, keywords for the “patent” concept with keywords or classifications for “machine filing”, keywords for the “patent” concept with keywords or classifications for “finance”, keywords for the “patent” concept with keywords or classifications for “business transactions” plus keywords for the “patent” concept with keywords or classifications for “management and automation”.
Conclusion
Fig. 2 Top 20 jurisdictions by families, applications and grants
The map view of key filing countries highlighted the US and Asia
References 1 Keisner CA, Raffo J and Wunsch-Vincent S Breakthrough technologies – robotics and IP WIPO Magazine, 6, Dec 2016 2 European Parliaments Resolution of 16 February 2017 with recommendations to the Commission on Civil Law Rules on Robotics (2015/2103(INL)) Strasbourg Final edition, Feb 2017 3 Aristodemou L & Tietze F The state-of-the-art on Intellectual Property Analytics (IPA): A literature review on artificial intelligence, machine learning and deep learning methods for analysing intellectual property (IP) data World Patent Information, Volume 55, Pages 37-51, Dec 2018
Fig. 3 Top 20 jurisdictions by families, applications, and grants
4 Khoury AH & Bekkerman R Automatic Discovery of Prior Art: Big Data to the Rescue of the Patent System, 16 J. Marshall Rev. Intell. Prop. L. 44 (2016) 5 McLaughlin M, Computer-Generated Inventions SSRN Jan 2018
The analysis of filings showed a gradual increase in families filed since 1999. The graph shows a slight acceleration in filings starting from the year 2015. The fall after 2016 is probably to be ascribed, at least partially, to the eighteen months between priority and publication.
6 Fraser E Computers as Inventors – Legal and Policy Implications of Artificial Intelligence on Patent Law Scripted, Volume 13, Issue 3, Dec 2016 7 Hattenbach B & Glucoft J Patents in an era of infinite monkeys and artificial intelligence STAN.TECH. L.REV. 19, 32 (2015) 8 Koza JR, Keane MA & Streeter MJ Evolving Inventions Scientific American 288, 52 – 59, 2003 9 Khoury AH Intellectual Property Rights for Hubots: On the Legal Implications of Human-like Robots as Innovators and Creators Cardozo Arts & Entertainment Law Journal. Vol. 35 Issue 3, p635-668, 2017
Fig. 4 Most recent 25 years by families, applications and priority
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Pakistan Office: (Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
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