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GLOBAL REACH, LOCAL KNOWLEDGE www.patentlawyermagazine.com March / April 2021 Conflicting applications: what you need to know when filing in China

RI ME CA A S & Law firm RANKINGS

C Annual Survey 2020: IP Management A R in a changing work environment I B B E A N Zongjie Liu, Partner and Attorney at Corner Stone and Partners, details the conflictions a foreign applicant may face when filing related in China and suggests remedial measures.

Laura Donnelly, Patenting video games Johnson & Johnson Page 18 Page 12 pixinoo / Shutterstock.com

Facebook’s creepiest patents Page 16

Front cover_TPL53_v1b.indd 1 08/04/2021 15:48 EDITOR’S WELCOME Editor’s welcome

ith this issue, we bring you up-to-date information and guidance on patenting in multiple jurisdictions. First with our Wcover story, Corner Stone & Partners bring an evaluation of how best to prepare and overcome conflicting patents when filing in THE PATENT LAWYER China. Further, the latest on patent limitation in Poland and what the new Issue 53 measures could mean for IP owners, then a look to Claims Amendment in Indian law, the breakdown of the GCC patent and what it will mean for Editor patenting in the affected jurisdictions, and details on complementary Faye Waters [email protected] term certificates in . With the increased use of technology Publishing Director Chris Dooley over the past year, related IP is on the [email protected] And guidance rise. With this we bring you an article on Advertising Enquiries “ patenting video games in the UK and Katie Kerr (Publishing Executive) on patenting Europe, with an interesting case- [email protected] in multiple example-based explanation of what is Subscription Enquiries and is not patentable. Further, a look to [email protected] jurisdictions. Facebook’s creepiest patents that will Accounts Enquiries make you think harder about your social [email protected] media usage. Then, a look to data driven Published by: technology. CTC Legal Media Ltd, 23 Hedgers Way, Kingsnorth, Plus, an interview” with Laura Donnelly, Assistant General Counsel at Ashford, Kent TN23 3GN Johnson & Johnson, about her career, her experience in the industry, and Tel: +44 (0)20 7112 8862 her inspirations. Fax: +44 (0)20 7084 0365 We would like to give special thanks to Anaqua for their sponsorship of and Repro by: this issues Women in IP Leadership segment. The interviews in this issue Design and Printing Solutions Ltd discuss the importance of welcoming new talent to the industry with Unit 45C, Joseph Wilson Industrial Estate, Whitstable, Kent CT5 3PS Manisha Singh of LexOrbis, and the importance of recognizing your own Printed by: progression with Elisa Volpi of IP Centrum. Pureprint Group, Crowson House, This and more! Bolton Close, Bellbrook Park, Uckfield, Enjoy the issue. We build services for brilliant IP formalities professionals. East Sussex TN22 1PH Whilst every effort has been made to ensure that the information contained in this journal is correct, neither Those who chose their career to do something special. Something that matters. the editor, contributors or CTC Legal Media can accept any responsibility for any errors or omissions or for any consequences resulting therefrom. © CTC Legal Media 2021, and contributors. The Faye Waters, Editor contents of this journal are protected under the law of the , the Berne Convention and the Universal Copyright Convention. Any unauthorised copying of the journal may be in breach of both civil and criminal law. Infringers will Mission statement be prosecuted. The Patent Lawyer educates and informs professionals working in the industry by ISSN 2051-3690 disseminating and expanding knowledge globally. It features articles written by people at the top of their fields of expertise, which contain not just the facts but analysis and opinion. Important judgments are examined in case studies and topical issues are reviewed in longer feature articles. All of this and the top news stories are brought to CTC Legal Media your desk via the printed magazine or the website www.patentlawyermagazine.com

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IP Centrum FP_lhp.indd 1 31/03/2021 09:43 Editor's welcome_TPL53_v1_ONLINE.indd 3 13/04/2021 12:44 CONTENTS March / April 2021 40 Understanding Indian 64 Substantive examination patent practice on of patent applications Claims Amendment according to the Ranjan Narula and Suvarna Pandey, of RNA, Angolan Patent Law Contents Technology and IP Attorneys, draw on previous Vítor Sérgio Moreira, Patent Engineer at Inventa cases seen in Indian courts and IPAB to provide International, specifics the steps of substantive an overview on claims amendment. examination in Angolan Patent law with comparison 6 Meet the Editorial Board to the European Patent Convention. Meet our Editorial Board members who help 8 determine the direction of this magazine. 43 Women in IP 67 Complementary term Leadership: 8 Cover Story: certificates for An interview: inspirations, patents under the new Conflicting applications: experiences, and ideas what you need to know for equality. Mexican Federal Law Featuring: Manisha Singh for the Protection of when filing in China of LexOrbis and Elisa Volpi Zongjie Liu, Partner and Patent Attorney at Corner of IP Centrum Industrial José Pablo Pérez Zea and Efrain Olmedo Velazquez, Stone and Partners, details the conflictions a foreign Sponsored by: Anaqua of Santamarina+Steta, detail the patent protection applicant may face when filing related patents in extension process in light of a recent Supreme China and suggests remedial measures. Court ruling in Mexico. 53 Rankings: 12 An interview with Laura 70 The end of the GCC Patent: Donnelly: Assistant Americas & Caribbean Ten of the best law firms from each of the top what next? General Counsel at Americas & Caribbean jurisdictions, including Mexico, Munir Suboh and Felicity Hammond, of BSA Ahmad Johnson & Johnson The Caribbean, North and Central America. Bin Hezeem & Associates LLP, provide an overview of the discontinuation of the GCC patent with Laura Donnelly speaks to The Patent Lawyer about a breakdown of the standard national application her experiences, achievements, and inspirations. 60 Patent limitation in requirements now in play for the GCC countries. 27 What Is the Mid-House Poland – implementation 16 Facebook’s creepiest Counsel™ Model? of a long-awaited 74 Trends of Blockchain patents J. Baron Lesperance, Of Counsel at Remenick PLLC, procedure into the considers the new paradigm for General Counsel: in life sciences Kristina Mulina of Zuykov and Partners will make what it is…and what it is not. Industrial Manisha Singh and Shikha Singh, of LexOrbis, you think about the ways social media is using your Magdalena Tagowska and Agnieszka Żebrowska- provide an informative breakdown of the use of data in light of these intrusive patents. 31 IP Trend Monitor Survey: IP Kucharzyk, of Patpol, consider the recent introduction blockchain in the pharmaceutical, medical, and of limitation procedure in Poland and the benefits it genomics industries. 18 up your IP strategy: Management in a changing lends over the prior options. patentability of video work environment 80 Developments in patenting games in the UK and Dennemeyer recently published the latest IP Trend activity in the Fourth Monitor study, in collaboration with CTC Legal Media, 18 Europe Industrial Revolution which this year focuses on the impact of the Richard Johnson, of Mewburn Ellis, discusses Andrew White and Conor McGuiness, of Mathys & COVID-19 pandemic on (IP) data driven technology, the corresponding growth Squire, develop key insights into patenting video activities. In this special summary for The Patent of patent activity and ideas for the future. games with exploration of unsuccessful and Lawyer Magazine, we reveal how patent practitioners successful case examples. have been affected so far, what long-term changes 83 Artificial Intelligence are likely and how businesses will need to adapt. 22 Working without borders: in legal services Stephen Browning, Challenge Director, and Luke getting the job done while 36 Up-to-date information on Shipman, Project Manager, of UKRI explore the working from home patent eligibility in China current uses of AI in the legal sector, and in IP, and the prospects of further developments into its use. This past year has forced change on everybody alike. Lunwei Huang, Partner at Beijing Sanyou IP Anthony Trippe, Managing Director of Patinformatics, Agency Ltd, discusses the Guidelines for explores how the Minesoft suite of tools and services Patent Examination, with experience based opinion, 87 Directory of services can help remote IP teams to work together efficiently for successfully patenting emerging technology in An A to Z list of the international law firms who even though they might be separated. the Chinese jurisdiction. provide IP related services.

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Contents_TPL53_v2.indd 4 08/04/2021 14:43 Contents_TPL53_v2.indd 5 08/04/2021 14:45 MEET THE EDITORIAL BOARD

Ken Adamo – IP Attorney USA Simon de Banke – Founder & CEO, Ken has extensive trial experience as lead IP Centrum counsel before state and federal courts and the Simon de Banke is founder and CEO of the US International Trade Commission. high-tech-focused IP Services disruptor IP Centrum.

Dr Saiful Khan – Potter Clarkson Enrique A. Diaz – Goodrich Riquelme Saiful is a Partner and Board Member at Potter Enrique is head of the Industrial and Intellectual Clarkson who practises in both the Electronics Property Department. He currently manages the & Computing Group and the Design & prosecution of over 3500 and more Group. than 1000 patents per year.

Osamu Yamamoto – Yuasa & Hara, Japan Mark Durrant – Director of Marketing and Osamu Yamamoto is a patent attorney, Communications, Marconi Group and a managing partner of Yuasa and Hara. Mark spent thirteen years at Nokia, most He specializes in patents in the fields of recently as Director of Communications for Nokia biotechnology & pharmaceuticals. Technologies, He is now Director of Marketing and Communications at Marconi Group.

Pravin Anand – Anand & Anand, Eric Su – HongFangLaw, China Pravin Anand, managing partner of Anand Eric Su is founding partner at HongFangLaw and Anand, is an advocate and a patent and and studied law at the East China University of attorney. Politics and Law and chemical engineering at the North University of China.

Noel Courage – Partner, Sergio Olivares Jr. – Olivares, Mexico Bereskin & Parr LLP Sergio Olivares leads the multi-award winning Noel Courage is a partner and patent attorney patent practice at the law firm Olivares and is at Bereskin & Parr LLP, working in its Toronto widely recognized as one of Mexico’s leading office. His practice focuses on patenting and patent attorneys. licensing of life sciences inventions.

Stefan Schohe – Boehmert & Boehmert Dr. Claudia Tapia – Ericsson, Germany Stefan is partner at Boehmert & Boehmert. He Claudia is Director of IPR Policy & Legal mainly works in the fields of IT and physics, with Academic Research at Ericsson. She is Chair a focus on litigious issues. of 4iP Council and vice chair of the Patent and Technology Licensing of LESI.

Caitlin Heard – Partner, CMS Valery Medvedev – Gorodissky & Caitlin’s principal area of expertise is Partners, Russia multi-jurisdictional patent litigation. She has Valery is the Managing Partner and in charge of acted on a number of high-profile disputes the largest IP practice in Russia. He is a Russian across a range of technical areas. and Eurasian Patent Attorney.

Vitor Fidalgo – Lecturer at the Eugene Goryunov – Partner, University of Lisbon Faculty of Law Haynes and Boone Vitor is also Legal Director at Inventa International, Eugene Goryunov is a partner in the Intellectual implementing the best IP strategies and Property Practice Group in the Chicago office enhancing the profitability of assets. of Haynes and Boone and an experienced trial lawyer.

David Harper – Cedar White Bradley Maria Zamkova – Fenix Legal KB, David is a Partner at CWB, and heads up its Sweden regional Patent and IP Disputes teams. With over Maria has a Master of and is 12 years of Middle East experience, David has a a patent and trademark attorney. She is an wealth of regional experience in advising on all expert in European Patents. aspects of intellectual property law.

The Patent Lawyer would like to thank the Editorial Board for their time and support.

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Editorial Board_TPL53_v1.indd 6 08/04/2021 08:51 CONFLICTING APPLICATIONS 9 13/04/2021 12:28 THE PATENT LAWYER Résumé attorney Partner/Patent Liu, Zongjie Mr. Beijing Northern Jiaotong Education: Industrial University/Master of Automation for 4 years as Mr. Liu had been teaching before he a lecturer in university as a patent agent acquired the certificate then he has been in 1996 and ever since serving working as an IP professional companies from quite a lot of famous scope including Japan, whose service office action patent applications, validation of responses, reexaminations, patents and administrative litigation, patent research, patent analysis, and intellectual property consultation. Mr. Liu joined Corner Stone & Partners in 2018 and is responsible for the intellectual property-related services for our Japanese clients. His technical field involves electrical and electronic, mechanical and electrical integration, industrial automation, computer software and hardware, etc. ” Imposes Imposes a heavier burden on the applicant, to an even extent that harms the applicant’s interests. “

The widespread attention attracted by this this by attracted attention widespread The contributing to factor additional an Further, CTC Legal Media application No. CN102768957A (with the filing the filing (with CN102768957A No. application announcement date 6, 2011 and the May date a conflicting 2012) constitutes 7, November issue and is the application at to application claims, the aforesaid of the novelty to prejudicial requirement the satisfy to fail which, therefore, Article 22 2, in Paragraph stipulated novelty for is a typical This case China. of Law the Patent of a caused by novelty loss of of example the applicant’s by constituted conflicting application China. of institute scientific research and a national for the request raised Second, the Petitioner against a patent defense as means of invalidation the Patentee filed in 2015 by infringement lawsuit own earlier application. earlier own First, the facts. two to case can be attributed well-known a respectively are parties involved States United the of company semiconductor RMB 200 million (approximately with a claim of had previously The Petitioner USD 31 million). against the invalidation for requests filed other its family of members and other same patent States, in China and the United respectively concerned (decisions failure in ended all which whole). rights in patent all of validity maintain fourth The the case. is the timing of the attention on the then was Law Patent China’s of revision the proposal whether and review, final of verge applications own the applicant’s “removing of applications” conflicting the scope of from concern. great of were be accepted would revision the fourth of version the final Apparently Corner Stone IP_TPL53_ONLINE ONLY.indd 9

13/04/2021 12:27 CTC Legal Media semiconductor fin”, with the patent number being number with the patent fin”, semiconductor 22, 2011, August 201110240931.5, the filing date patent of grant of date the announcement and The PRB decision, made on 12, 2015. August Decision No. Invalidation 2020 under 27, August Claims 8, 10 and 14 of invalidation 46689, declares Sciences (the Patentee), which is titled “Structure “Structure titled is which Patentee), (the Sciences and its device a semiconductor of a method of method, and manufacturing lodged by Intel (China) Co., Ltd. (the Petitioner) Petitioner) (the Ltd. Co., (China) Intel by lodged the Institute in the name of against an invention of Academy the Chinese of Microelectronics of of the aforesaid patent (i.e., a partial invalidation) invalidation) (i.e., a partial patent the aforesaid of earlier own basis that the Patentee’s on the legal Zongjie Liu bstract: Where applicants from certain from applicants Where bstract: file related countries successively own applications in their patent

THE PATENT LAWYER

patents in China and suggests remedial measures.patents in China and suggests details the conflictions a foreign applicant may face when filing relateddetails the conflictions a Zongjie Liu, Partner and Patent Attorney at Corner Stone and Partners,Zongjie Liu, Partner and Patent In August 2020, a decision on a request for for 2020, a decision on a request August In countries, with the specification of the earlier earlier the of with the specification countries, the claims of of application disclosing contents are applications one, and the related the later earlier filed in China also in succession, the a conflicting constitute will application the of novelty in loss of and result application to application. later 8

invalidation made by China’s Patent Reexamination Reexamination Patent China’s by made invalidation the in concern widespread aroused (PRB) Board was invalidation for The said request profession. A when filing in China filing when what you need to know know need to you what Conflicting applications:Conflicting CONFLICTING APPLICATIONS CONFLICTING Corner Stone IP_TPL53_ONLINE ONLY.indd 8 CONFLICTING APPLICATIONS CONFLICTING APPLICATIONS

application to the same applicant’s later 1. To take the initiative to amend the previous application, which will impose concrete detriment application and delete the relevant contents to the applicant’s interests. Weighing the pros in the specification, that is, the contents the and cons of these two systems, this author “The same as or subordinate to the claims of the prefers the former, i.e., the one implemented before later application. This measure can be the third revision of the Patent Law, which excludes proposal to applied when the amendment will not an applicant’s own applications from conflicting exclude an exceed the scope of disclosure specified in applications. the original version, and the modified Conflicting application constituted by an applicant’s specification will continue to satisfy the applicant’s earlier application to its later application own requirements of supporting the claims and often occur in the process of developing a providing full disclosure. As to the timing of patent portfolio for a complicated product or applications such a voluntary amendment, it can be technology. Due to lack of coordination among made either when the applicant makes a closely related technical solutions, the applicant from the request for substantive examination or may apply specification of the same contents to scope of within three months after receipt of the technical solutions without unity or to different notice of entry into substantive examination, technical solutions, but fail to submit them on conflicting according to Article 51 of the Implementing the same day. Therefore, when handling multiple applications Regulations of the Patent Law; patent applications concerning related technologies, 2. To submit a divisional application combining it is necessary, whether for an applicant or for a was contents of the claims of the later patent attorney, to take overall consideration application and contents of the specification and try to submit them on the same day so as to dismissed. of the earlier application. This measure is mitigate the said risk. applicable where the claims of the later For a foreign applicant who is from a country application can be supported by the where an applicant’s own earlier applications specification of the earlier application. The are excluded from conflicting applications, timing of a divisional application is provided close attention needs to be attached to its related ” for in 5.1.1.1(3), Chapter One, Part One of the applications filed in China to see to it that an Guidelines for Patent Examination enacted earlier application does not constitute a conflicting by China’s Patent Office: no later than the of the Patent Law did not adopt the said proposal. patenting that earlier applications of the application to a later one. For example, the United expiration of two months from the date of Therefore, like a Chinese applicant who needs applicant itself has become included in the States and Japan are the top two sources of issuance of the Notification to Grant Patent to pay attention to a possible conflict between scope of conflicting applications since the third patent applications filed in China. Their mechanism Right; Or its own related applications filed successively, The earlier revision of the Patent Law. On the other hand, of conflicting applications is different from that 3. To modify the claims of the later application an applicant from countries that have different “ however, giving applications of the applicant of China, that is, an applicant’s own earlier so as to differentiate them from contents provisions on the scope of conflicting applications application itself exactly the same weight as that to applications do not fall into conflicting applications set forth in the specification of the earlier (i.e., excluding the earlier applications of the will applications of other entities imposes a heavier in these two countries. Therefore, an applicant application. This will reduce the scope of applicant itself), such as the United States and burden on the applicant, even to an extent that of either of these two countries, when filing protection of the later application, thus can Japan, also needs to stay alert particularly to and constitute a harms the applicant’s interests. The aforesaid patent applications in its own country, does not be used only as the last resort. try to eliminate the following risk: where related conflicting burden means that, if the scope of protection need take into consideration whether the patent applications are filed in succession in the covered by the claims of a later application specification of an earlier application discloses In the fourth revision of the Patent Law, the applicant’s own country with the specification of application coincide with contents disclosed in the the claims of a related later application. proposal to exclude an applicant’s own the earlier one disclosing contents of the claims specification of an earlier application filed by However, if the related applications are filed applications from the scope of conflicting of the later one, and these applications are filed to the later the same applicant (which contents are not directly in China with priority claims based on applications was dismissed for various reasons. also in succession when extended to China, the one and thus covered by the claims of this earlier application), applications in its own country, it is possible that It is the author’s hope that this proposal will be earlier Chinese application will constitute a the earlier application will constitute a conflicting the earlier application constitutes a conflicting adopted in the next revision so that patent conflicting application to the later one and thus destroy the application to the later one and thus destroy the application to the later one. applicants can be relieved of the unreasonable leads to loss of novelty of the same. novelty of novelty of the same. To avoid the said situation, Under the above circumstance, what can be burden described above. In contrast, before the third revision of China’s the applicant has to consider either submitting done to avoid such a conflict? First, of course, it Patent Law, earlier applications in the name of the same. the two applications on the same day or is to coordinate drafting and filing of applications an applicant itself did not fall under conflicting removing their relevance at the time of drafting. filed in the applicant’s own country and in China, applications. If a prior application’s specification It can be seen that, under a system that excludes and to file related applications on the same day includes technical contents that are not covered an applicant’s own applications from conflicting if possible. Second, if same-day filing proves Contact in the claims, these technical contents shall be applications, double patenting, if arising from impossible, the disclosure of the specification Corner Stone & Partners considered automatically waived by the applicant ” difficulty in examination and determination needs to be minimized to the lowest possible 1905, Tower B, Tian Yuan Gang Centre, and freely accessible to the public. Further, a thereof, neither extends any undue benefits to extent required for supporting the claims and No. 2, Dongsanhuan North Road, later application filed by another applicant will an applicant nor inflicts any harm to the public providing full disclosure. Finally, if one or more Chaoyang District, Beijing 100027, China not be allowed to include such contents in its interests; in contrast, under the system that claims of a later application are found disclosed Tel: +86-10-84464600 scope of protection. It is out of consideration for includes applications of an applicant itself into in the specification of an application that has [email protected] tightening standards for double patenting and conflicting applications, an applicant’s earlier been filed earlier, the following remedial www.cornerstoneip.com.cn lowering difficulty in determining double application is prone to constituting a conflicting measures can be considered:

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Corner Stone IP_TPL53_v3.indd 10 08/04/2021 13:29 Corner Stone IP_TPL53_v3.indd 11 08/04/2021 13:29 LAURA DONNELLY OF JOHNSON & JOHNSON

08/04/2021 08:59 13 THE PATENT LAWYER I worked on HIV compounds, and on oncology. I worked on HIV compounds, and on oncology. Also, if we enter into agreement to acquire a Also, if we enter into agreement to acquire out onto the a product And the day we get I worked with small start-ups and had some The technology often involves multiple multiple involves often technology The Yes, we do. It depends, it could be anything. We work with third parties a lot, like Velcade® for A little bit. By the time I left private practice I A little bit. By the time I left private practice I was doing a lot of litigation, and I really enjoyed sides and seeing howthat –being on competing creative you can be. It was a little stressful but also a lot of fun. So, I miss that. I am involved in litigation now but in a different capacity; I’m not in that adversary type role. There are pluses and at counsel you use outside Do yes, And if Johnson? and Johnson what under circumstances? manage that. I’ve taken some beginner computer I’ve taken some beginner manage that. your be to consider you What do your in achievement greatest far? so career feel I can’t really pick just one. Where I really resolve satisfied with what I’ve done is when I case a patent issue, e.g., getting a challenging allowed or winning a litigation. get to company or a product line, the day we sign those papers is great. days market after years of development, those are great achievements. These are all successes, them. and I’ve been lucky to experience many of When I started at J&J, one product I supported that was Velcade®, an anti-cancer medication mantle is used to treat multiple myeloma and like cell lymphoma. It’s satisfying to see a drug the that launched in many markets throughout world, meeting a previously unmet need. in the private role your you miss Do environment? practice inventions include those in the computer the computer include those in inventions or AI is driving Machine learning science areas. how best to R&D so we’re learning a lot of the minuses for both, but that is what I miss most. success in getting the claim constructions that went all the way up to the Federal Circuit. This the with working And rewarding. very was experts; that was my favourite part of the job. science courses to become a little versed in the science courses to become find it fun, but I also find it area - and it’s fun. I the law is changing as we challenging because we are so, to advise our clients, speak and to learn those interests. doing the best we can the only one. Working with partners, J&J is not areas adds another layer third parties in a lot of of complexity. ” We have a have We team at J&J, that was relatively recently formed, to educate on IP is how beneficial to our in economy general. “

I’d always worked for biotech’s, more of the I worked at a couple of firms in the D.C. area a couple of firms I worked at headhunters and said So, I reached out to CTC Legal Media husband is also a patent attorney and he finished also a patent attorney husband is What is the greatest challenge you challenge What is the greatest Counsel? General Assistant as face had we’ve that noticed we’ve that thing one The changingto spend a lot of time on recently is the technology. I used to be a biotech or chemical our of lot a finding I’m now and attorney first and found a job in the Washington D.C area so a job in the Washington first and found with you been long have How what and Johnson & Johnson the company? you to attracted 17 years. I realize a lot of my colleagues have it’s definitelybeen here just as long, or longer, so a place to stay and to retire from. startups, when I was outside counsel, so I wanted to be in that biotech area and J&J had that opportunity for me – like the EPO litigation opportunities there’s paralegal, a as on worked I like that inside. Another thing about J&J is that pigeonholed; we don’t just the attorneys are not do patent preparation and prosecution, we do everything that relates to the product or technology area, so agreements, counseling, due diligence, litigation, opinion - really we manage a product and any technology around the product is our responsibility. I followed him there and got a job at a law firm. him there and got a I followed and became partner in for a number of years at, but at that point I had the last law firm I was balance was really three children and work/life a step back a little bit as hard. I wanted to take go and I relayed this far as the billable hours small a were we but firm, my at folks the to and my request wasn’t group with a lot of work the So, although I enjoyed accommodated. I needed to leave. work, I decided that in looking and one put me that I was interested of in touch with J&J. I interviewed at a number it’s few reasons: a for J&J chose I but companies are family my of lot a and one for Jersey New in which here, I actually went to school at Rutgers for is in the same city as the headquarters as a J&J. Also, when I worked on that litigation liked really and J&J at people paralegal, I met noticed that every J&J everybody I met. I also to site that I went to had a gym and seemed crucial encourage work life balance, which was for me. And I just really liked their philosophy Law of the people I interviewed with, in the a good Department, and they all seem to have myself. for just time have to nice so is It balance. time Now I run, I go to the gym…I didn’t have the for any of that back then. Laura Donnelly interview_TPL53_v2.indd 13 08/04/2021 08:58 CTC Legal Media and I worked on that that and I worked on Genetics Institute, Inc. and Chugai Genetics Institute, Inc. and Chugai In my last year of college, I thought about In my last year of college, I thought about It was actually the person I was working with, I kind of had the patent track in mind as I went and realized that I probably wasn’t going to be and realized that I probably wasn’t going about the best doctor. I was always nervous care; I what would happen to the patient in my doing had to draw blood and I didn’t really like that, so I did not go in that direction. at the getting a PhD in science. I did research year a for Dentistry of Medicine and University where and a half to see what I wanted to do, I found I wanted to go, whether I liked it - and I that although I like thinking about science, didn’t like the hands-on lab work. It just stressed radioactive or animals, with work to had I out, me materials, and it just seemed that there was uncomfortable. me made that something always who was head of the lab and knew that I wasn’t that direction, that in going in interested as found an ad in the New York Times for a job at a law firm in New York City for a paralegal to help review technical documents. It was perfect, I loved it! It was interesting, the firm represented Ortho Pharmaceutical in a patent litigation, Pharmaceutical Co., Ltd. v. Amgen, Inc. and Ortho Pharmaceutical Co., litigation. I got to travel, I got more and more responsibility working on that case, I got other cases to work on, and I really loved that job. And then folks in the firm encouraged me to go to law school, so that’s why! to law school and that worked really well for and I law school IP focused into an me. I went my school, law in married got it. I enjoyed really emergency room and worked in a doctor’s office emergency room and worked in a doctor’s wanted to go to Med school at that point. So, So, point. that at school Med to go to wanted in an while I was in college I volunteered ” It’s It’s satisfying to see a drug that like launched in many markets throughout the world, meeting a previously unmet need. Laura Donnelly “

THE PATENT LAWYER aura graduated from Cook College, Rutgers University with a B.S. in Biochemistry 1988. She then conducted research on

achievements, and inspirations. Laura Donnelly speaks to The Patent Lawyer about her experiences,Laura Donnelly speaks to phospholipid metabolism under a grant from from phospholipid metabolism under a grant at the the American Arthritis Foundation 12 Can you describe your pathway into into pathway your describe you Can role? current your and to IP I got an undergraduate degree in biochemistry; I love science and I love health, I thought I DC in the law firms of McDermott, Will & Emery; McDermott, DC in the law firms of Long Aldridge & Norman; Piper Marbury Rudnick & Wolfe; and Patton Boggs, where she made partner in 2002. Since 2003, Laura has been a member of Johnson & Johnson’s law department, where she currently leads IP strategy for a number of Johnson & Johnson’s Consumer and Pharmaceutical business units. counseling, licensing and litigation in Washington, in litigation and licensing counseling, small and large companies. She then represented small and large biotech and pharmaceutical companies doing biotech, chemical and pharmaceutical patent prosecution, client Alexandria, VA, doing biotech and chemical patent and licensing counseling, client prosecution, litigation where she represented the National Institutes of Health, various universities and Institute, Inc. After graduating from the University Laura in 1994, Law of School Hampshire New of first worked as an associate at Oliff & Berridge, University of Medicine and Dentistry, Piscataway, University of Medicine and Dentistry, Piscataway, NJ. After that, she worked as a litigation paralegal & at Hopgood, Calimafde, Kalil, Blaustein Judlowe, New York, NY on biotech, chemical and pharmaceutical patent cases, including v. Corp. Pharmaceutical Ortho and Inc. Amgen, Genetics and Ltd. Co., Pharmaceutical Chugai L at Johnson at Johnson & Johnson Assistant General Counsel Counsel General Assistant Laura Donnelly:Laura An interview with An interview LAURA DONNELLY OF JOHNSON & JOHNSON & JOHNSON OF DONNELLY LAURA Laura Donnelly interview_TPL53_v2.indd 12 LAURA DONNELLY OF JOHNSON & JOHNSON

example. When you work with a third party you What are the company’s focuses usually agree to work with outside counsel to for the year ahead? manage the portfolio. We work very closely with them. It’s great when we get great outside “It’s so fun One big thing is IP policy, especially in the US. counsel that we can rely on and that really I think pharmaceutical companies have this bad knows the portfolio well. just being reputation and we want to educate policy IP SERVICES IN RUSSIA, UKRAINE, BELARUS, We also use outside counsel for acquisitions able to makers and the public better on the role of IP, and divestitures, especially the larger ones. Some especially in pharmaceuticals. We have a team KAZAKHSTAN & OTHER CIS COUNTRIES of the small ones we will do ourselves, but the inspire them at J&J, that was relatively recently formed, to large ones we couldn’t manage without outside with what educate on how IP is beneficial to our economy counsel. in general and to the development of PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT We also use outside counsel for opinions and I do and be pharmaceuticals in particular. diligence – to be honest it could be for anything. inspired PATENTS Where do you take inspiration IP LITIGATION What parameters do you use when from them from? deciding on which law firms and for what I take it from a lot of places. I have a lot of strong outside counsel to use? they do. women in my life: I would say my mom, she worked Well, quality is first. If we are getting the right for as long as I can remember. It was never quality, then cost is not so much of an issue. We a question for me to go to college or have a don’t want them to cut corners, we want them career because that’s how she lived her life. to do their job properly and the job that we’ve Work/life balance, I would say, was probably a hired them to do. We also generally try to use little bit harder in her world - I think with the counsel that somebody has already worked ” advancements in technology work/life balance with, whether one of us or a colleague outside is a lot better so I’m grateful for that. of J&J, so then we already have a feel for what My daughters are also my inspiration. It’s the quality would be. great to see them interested and excited about For us personal reputation is very important, the opportunities before them. I have two that I have only brought in people I’ve worked with are starting out their careers and I have two in or someone I know well has worked with and school, but on their way. It’s funny because TRADEMARKS AGREEMENTS recommended. they’re in fields that aren’t my field, but they can The qualities that make them desirable are see that J&J is using some of the kinds of things definitely timeliness, especially for things like that they’re doing - I learn from them which is prosecution because we don’t want to be great. One is a software engineer, and I can paying late fees and I want to be able to have learn a lot from her, and the other is going for a time to actually look – and I do look and assess. PhD in sociology, and data science is what she I do make sure that everything they are doing does, and she knows the ins and outs of makes sense. That and attention to detail – computers and can give a lot of insight. It’s so when I was outside counsel I was trained and fun just being able to inspire them with what learned to really pay attention to detail so if I do and be inspired from them for what they do. folks aren’t doing that why are we paying them? – and willing to listen, sometimes our positions might sound a little different but that doesn’t mean that they always are, so a willingness to consider those things.

How does the global nature of Johnson & Johnson effect your role?

Even though a lot of our attorneys are based in the US, most also have global responsibility. Russia Belarus Kazakhstan Ukraine We have been building our department outside 129090, Russia, Moscow, 220004, Republic of Belarus, Minsk, 050043, Kazakhstan, Almaty, 01135, Ukraine, Kiev, the US since I’ve started, and we have attorneys Grokholskiy per., d. 28, 2nd floor 23/1 Pobediteley Avenue 28 Ryskulbekova Str., Block 4, 25 Chornovola Str., Suite 168 in a lot of markets that we hadn’t before. This is Tel+Fax: + 7 (495) 775-16-37 Tel+Fax: +375 17 204-16-37 10th Floor, Suite 33, Tel+Fax: +38 044 501-16-37 great, but they can’t necessarily be the person e-mail: [email protected] e-mail: [email protected] Tel+Fax: +7 727 312-16-37 e-mail: [email protected] managing the project because they have other e-mail: [email protected] things that they are managing. They are great resources that we can always reach out to and they know the outside counsel in those areas so that’s also very helpful. zuykov.com

14 THE PATENT LAWYER CTC Legal Media

Laura Donnelly interview_TPL53_v2.indd 14 08/04/2021 08:59 Zuykov.indd 1 29/04/2019 12:53 CREEPIEST PATENTS 6 08/04/2021 09:02 17 THE PATENT LAWYER 5 applications, of has filed thousands Facebook Contact and Partners Zuykov 28, Moscow, pereulok, Grokholskiy 129090, Russia 495 775-16-37 +7 Tel: 495 775-16-37 +7 Fax: [email protected] www.zuykov.com/en and she’s right. Progress is unstoppable and and is unstoppable right. Progress and she’s us commonplace for become media have social consequences. with unusual the user profile with the device-based media media device-based the with profile user the data. consumption them. of few a just of revelations are above and that applications shows these patent of review A being able to envisions the company social aspect of almost every contemplate where and with whom you media are, life: users’ and what love, in are you whether you you politicians talk program about, what TV at the moment, and much more. watching are the that much of says Although Facebook applications described in the patent technology these products of been included in any has not be, but as long as Facebook will and never we information, collect personal continues to should understand that the information ads, targeting for only not can be used obtained choices influence users’ us to also allow will but King, Jennifer emotions. their and manipulate Law at Stanford privacy consumer of director of said and Society, Internet for Center School’s consequences”, could be real this: “There all Google Patents Predicting Life Changes of Members of a Social Networking System // URL: https:// patents.google.com/ patent/US20120016817A1/ en Google Patents Routine deviation notification // URL: https://patents. google.com/patent/ US20160316341A1/en Google Patents Correlating media consumption data with user profiles // URL: https://patents.google. com/patent/ US20170195435A1/en The New York Times What 7 Creepy Patents Reveal About Facebook By Sahil Chinoy // URL: https:// www.nytimes.com/ interactive/2018/06/21/ opinion/sunday/ facebook-patents-privacy. html Google Patents Determining user personality characteristics from social networking system communications and characteristics // URL: https://patents. google.com/patent/ US9740752B2/en Google Patents Inferring relationship statuses of users of a social networking system // URL: https://patents. google.com/patent/ US20150356180A1/en Google Patents Correlating media consumption data with user profiles // URL: https://patents.google. com/patent/ US20170195435A1/en Google Patents Predicting Life Changes of Members of a Social Networking System // URL: https:// patents.google.com/ patent/US20120016817A1/ en Google Patents Inferring relationship statuses of users of a social networking system // URL: https://patents. google.com/patent/ US20150356180A1/en The New York Times What 7 Creepy Patents Reveal About Facebook By Sahil Chinoy // URL: https:// www.nytimes.com/ interactive/2018/06/21/ opinion/sunday/ facebook-patents-privacy. html Google Patents Determining user personality characteristics from social networking system communications and characteristics // URL: https://patents. google.com/patent/ US9740752B2/en Google Patents Routine deviation notification // URL: https://patents. google.com/patent/ US20160316341A1/en

4 5 6 1 2 3 4 5 6 1 2 3

3 To predict a life change change a life predict To Your future will now be known to to be known now will future Your 4 U.S. PATENT APPLICATION NO. 15/203,063 15/203,063 NO. APPLICATION PATENT U.S. CTC Legal Media life change events. The system updates the user’s updates The system change events. life and event change life the indicate to profile responsive the user to advertisements provides change life more or one of prediction the to events. system a social-networking of systems computer with associated a user for profile a user retrieve computer more The one or a media device. receive system a social-networking of systems computer more or one The consumption. media correlates system a social-networking of systems In one embodiment, notification. deviation Routine associated log a accessing includes method a entries of includes a number The log with a user. at user the of geo-location a indicate each that a of day a particular of day time of a particular on a geo-location based The entries are week. a mobile by and reported determined without manual the user of computing device determining The method also includes input. user on a based geo-location centroids more one or geo-location the respective distance between data point. Each and each geo-location centroid one or of is representative geo-location centroid data points obtained the geo-location of more the particular of day time of during the particular The method also includes week. a of day of more or one of center routine a determining based geo-location centroids the numbers of routine respective its between distance a on centroid. geo-location each and center comprising data of set training a generates system gone who have users other data of historical uses system The event. change a life through a prediction generate to set data the training algorithm using machine learning models. data to inputs the user the system Furthermore, a prediction retrieve algorithm to the prediction more one or undergo will the user whether of Facebook. 14/985,089 NO. APPLICATION PATENT U.S. with data media consumption Correlating more In one embodiment, one or profiles. user the user profile and the media consumption and the media consumption profile the user media device-based determine data to with content data associated consumption The one being consumed on the media device. a social- of systems computer more or data that associates store system networking Facebook will now be aware of your daily routine routine daily your of be aware now will Facebook as its deviations. well as 12/839,350 NO. APPLICATION PATENT U.S. a social members of changes of life Predicting system. networking system, networking the social of a user for event status, relationship such as a change in marital disclosed the etc., status, employment status, Zuykov_TPL53_v2.indd 17 08/04/2021 09:02 This This 2 with the CTC Legal Media A social networking networking social A So your identity has has identity your So 1 classified, let’s move on. move classified, let’s indicator that identify a relationship status of status of a relationship that identify indicator single and a number of additional users associated additional of single and a number status a relationship that identify with the indicator various of values than single. Based on the other determines system networking the social indicators, a relationship and infers the user for a score score. the on based user the for status of words in various types of communications by communications by types of various in words of are system networking in the social the user The linguistic data and non-linguistic determined. used in a are with the user data associated personality more one or predict to model trained personality The inferred the user. for characteristics with the in connection stored are characteristics targeting, be used for and may profile, user’s and products, of versions selecting ranking, purposes. other various users as indicators and additional the user between an indicator for value a and determines based on users associated additional of a number example of a few patent applications. After reading reading After applications. patent a few of example future. think about their will them, everyone user Determining 9,740,752 NO. PATENT U.S. network- social from characteristics personality communications and characteristics. ing system linguistic obtains system networking social A communications on the text a user’s data from occurrences example, For system. networking social and patent applications. Below I will give you an you give will I applications. Below and patent U.S. PATENT APPLICATION NO. 14/295,543 14/295,543 NO. APPLICATION PATENT U.S. a users of of statuses relationship Inferring system. networking social single, (e.g., status relationship a infers system the of a user of etc.) married, in a relationship, user’s the on based system networking social the social users of with additional interactions statuses and the relationship system networking networking The social users. the additional of interactions of types certain identifies system been patent thus reads your personal relationship relationship personal your reads thus patent (e.g., status relationship your determines and etc.). single, married, in a relationship, Kristina Mulina

THE PATENT LAWYER ocial media is not the least part of life for for life the least part of media is not ocial sometimes get modern people. People so caught up online spending their

industrial , and computer programs; of the formal examination, annual renewal fees on patents for inventions, utility models and industrial designs; Unitary Enterprise “Central Research and Development Establishment of Chemistry”.

• in preparation of responses to inquiries and notification Specializes • correspondence with clients; Conducts • other duties of a patent specialist. Performs Accomplishments In 2014 Kristina passed training courses of the Russian State Academy of Intellectual Property that evidenced by certificate of advanced training “Intellectual property in innovative activity of the enterprise”. Work experience • — Lead engineer-patent expert of the Federal State 2012–2015 In 2012 she gained a Specialist degree of Patent (second higher education) in Bryansk State University named of I.G. Petrovsky. In Zuykov and partners she: • records on applications for inventions, utility models, Manages Kristina Mulina, Attorney Patent to Assistant In 2012 Kristina graduated from Bryansk State University named of I.G. Petrovsky and gained a Specialist degree in “History” with knowledge in English language. Résumé social media is using your data in light of these intrusive patents. is using your data in light social media Kristina Mulina of Zuykov and Partners will make you think about the ways will make you think about of Zuykov and Partners Kristina Mulina Let’s take, for example, Facebook, the popular the popular Facebook, example, for take, Let’s

be observed. Have you ever wondered what social what social wondered ever you Have be observed. what personal and you about know networks collect? they information what data it out figure to and try network, social turn do this, let’s To possesses about its users. patents Facebook’s namely sources, official to S

patents Facebook’s creepiest creepiest Facebook’s CREEPIEST PATENTS CREEPIEST 16 several hours a day, if not more. Truly speaking, Truly more. not if hours a day, several without lives imagine our no longer can we for media. Some people use them only social acquaintances,finding for some communication, the At work. for some self-education, for some maintain we people, same time, observing other us to allowing thereby networks, social own our Zuykov_TPL53_v2.indd 16 PATENTING VIDEO GAMES PATENTING VIDEO GAMES

potentially patentable) if, when it is run on a 1 https://news.ea.com/ matter in the form of game rules (see T 0336/07 PATENTING VIDEO GAMES computer, it produces a further technical effect press-releases/press- – reasons 4.4). Level up your IP strategy: which goes beyond the ‘normal’ physical releases-details/2020/ Similarly, for a patent application directed Electronic-Arts-Reaches- potentiallyinteractions patentable) between program if, when (software)it is run on and a 1 https://news.ea.com/ mattertowards in a thenew form variant of of game Tetris ruleswherein (see the T tetrominos 0336/07 Agreement-for- press-releases/press- computer,computer (hardware)it produces (see a further Headnote technical of T 1173/97). effect Recommended- –rise reasons in addition 4.4). to ‘fall’, it was found that the releases-details/2020/ whichSo, whengoes it beyondcomes to the video ‘normal’ games, physicalalthough Acquisition-of- claimsSimilarly, related for toa patentgames applicationrules and there directed was Electronic-Arts-Reaches- patentability of video games interactionspatents can’t between be sought program for the rules(software) of a game and Codemasters-Group- towardsnothing a technical new variant in ofhow Tetris they wherein were theimplemented tetrominos Agreement-for- in and of themselves, there may be patentable Holdings-PLC/default.aspx (see T 1782/09 – reasons 4). computer (hardware) (see Headnote of T 1173/97). Recommended- rise in addition to ‘fall’, it was found that the 2 https://www. subject-matterSo, when it comes in the to way video the games,rules of thealthough game Acquisition-of- claimsIn addition related to to the games game rules themselvesand there was that businesswire.com/news/ patentsare implemented, can’t be sought provided for there the rulesis some of technicala game Codemasters-Group- nothingare not allowable,technical in the how exclusion they were appears implemented to apply in the UK and Europe home/20201014005253/ ineffect and ofwhich themselves, goes beyond there the may ‘normal’ be patentable physical Holdings-PLC/default.aspx (seeto in-game T 1782/09 statistics – reasons and 4).parameters too. en/Rockstar-Games- 2 https://www. subject-matterinteractions between in the way program the rules and of computer. the game Acquires-Ruffian-Games InFor addition example, to anthe application game rules claiming themselves computer- that businesswire.com/news/ areWhilst implemented, it is not provided possible there to is givesome a technical precise 3 https://newzoo.com/ areimplemented not allowable, method the exclusionfor determining appears an indication to apply Andrew White and Conor McGuinness, of Mathys & Squire, develop key home/20201014005253/ effectstatement which as goes to what beyond the theEPO ‘normal’ will consider physical an insights/rankings/top-10- toof in-gamethe relative statistics skill of and a first parameters player and too. a second en/Rockstar-Games- invention when it comes to video games, a few countries-by-game- player based on the outcome of one or more insights into patenting video games with exploration of unsuccessful and interactions between program and computer. Acquires-Ruffian-Games For example, an application claiming computer- revenues/ examplesWhilst it ofis thenot typespossible of video to give game a precise patent 3 https://newzoo.com/ implementedgames involving method those for playersdetermining was an found indication to be successful case examples. 4 https://www. statementapplications as that to what the EPO the EPOhas found will consider patentable an insights/rankings/top-10- ofmerely the relative a mathematical skill of a first player method and aand second not thecreativeindustries. inventionand non-patentable when it comes are setto video out below. games, a few countries-by-game- playertechnical based in nature. on the The outcome applicant of triedone orto moreargue co.uk/industries/games/ revenues/ S video game publisher Electronic Arts games or mathematical methods, in and of examples of the types of video game patent games-facts-and-figures/ gamesthe claimed involving method those was players technical was foundbecause, to be in 4 https://www. has recently announced its agreement to themselves as inventions (Art. 52 (2),(3) EPC). applicationsWhat isn’t that patentable? the EPO has found patentable uk-market-opportunity#: merelytheir opinion, a mathematical it solved the technicalmethod problemand not of thecreativeindustries. purchase UK-based video game publisher On the face of it, the ability to obtain patent andIn the non-patentable case where anare applicant set out below. appealed the ~:text=Gamer%20 technicalkeeping inplayers nature. interestedThe applicant in thetried game to argue by U co.uk/industries/games/ Codemasters for approximately $1.2 billion.1 This protection for video/computer games, therefore, refusal of their application claiming a method of population%3A%20 tracking their performance and then pitting games-facts-and-figures/ the claimed method was technical because, in Approximately%20 follows the recent acquisition of, for an undisclosed looks bleak. Whatoperating isn’t an patentable?electronic video poker machine, uk-market-opportunity#: theirthem opinion, against ita solvedsuitable the opponent. technical However, problem the of 32.4m,video%20games%20 amount, Scottish video game developer Ruffian However, the EPO will consider a computer Inthe the appeal case wherewas dismissed an applicant by appealedthe Board the of ~:text=Gamer%20 keepingBoard did playersnot agree interested that keeping in players the game interested by in%20the%20 Games by another large US publisher, Rockstar program product an invention (and therefore, refusalAppeal of becausetheir application the Board claiming found a method that the of population%3A%20 trackingwas a technical their performance problem (T 0042/10). and then pitting UK.&text=2017%20was%20 2 Approximately%20 Games. UK-based companies are therefore operatingclaimed method an electronic merely video recited poker the machine,rules of a a%20record%20 themIn another against case,a suitable the applicant,opponent. Nintendo, However, wasthe 32.4m,video%20games%20 clearly playing a leading role in video game thenew appeal variant wasof poker dismissed and, therefore, by the relatedBoard ofto year,1.07%2C%20 Boardunable did to not patent agree a that game keeping where players a kart interested is driven in%20the%20 development and publication. Appealthe technical because implementation the Board found of excludedthat the %2B7.8%20per%20cent. wasby twoa technical characters problem controlled (T 0042/10). by different UK.&text=2017%20was%20 The UK consumer market is of similar scale; claimed method merely recited the rules of a a%20record%20 In another case, the applicant, Nintendo, was its gaming market is currently the sixth biggest Andrew White new variant of poker and, therefore, related to year,1.07%2C%20 unable to patent a game where a kart is driven 3 globally with UK consumers spending an the Résuméstechnical implementation of excluded %2B7.8%20per%20cent. by two characters controlled by different estimated £5.35 billion on game hardware and Andrew White, Partner software.4 Andrew is a European and chartered UK patent attorney, As the UK video game industry looks set to Résuméswith a has a master’s degree and PhD in Physics. He continue its growth, developing a bespoke Andrewmanages White, international Partner portfolios in the medtech, software, intellectual property (IP) strategy tailored to your Andrewtelecoms is aand European automotive and fields,chartered in particular UK patent relating attorney, to company is of the utmost importance. Obtaining withelectric a has vehicle a master’s technologies. degree and Recently, PhD in hePhysics. has developed He suitable IP rights will provide you with the manageshis expertise international in advising portfolios clients on in the patentabilitymedtech, software, of opportunity to ‘fence off’ your innovations from telecomsComputer and Implemented automotive Inventions fields, in particular (in fields relatingsuch as to competitors and potentially lock-in your electricbioinformatics, vehicle technologies.AI and blockchain Recently, inventions) he has and developed how to    customers. IP rights can also significantly push hissuccessfully expertise innavigate advising the clients patentability on the patentability exceptions inof these   up the value of your company. Computerareas, both Implemented in Europe and Inventions abroad, to (in obtain fields patentssuch as of In this article, we look at the patentability of Conor McGuinness bioinformatics,commercially valuableAI and blockchain scope. inventions) and how to    video games in Europe and the UK and address [email protected] navigate the patentability exceptions in these   the common misconception that they are not areas,https://www.linkedin.com/in/andrew-white- both in Europe and abroad, to obtain patents of patentable. In addition to patents, other IP rights commercially4935bb64/ valuable scope. such as trademarks, copyright and confidential [email protected] information are also all highly relevant to video https://www.linkedin.com/in/andrew-white-Conor McGuinness, Technical Assistant and game developers and publishers, and should 4935bb64/Trainee Patent Attorney. be considered as part of any overarching IP strategy. Conor has experience drafting and prosecuting UK and ConorEuropean McGuinness, patent applications Technical in Assistant the fields and of aerospace, Patenting video games in Europe Traineefuel cells, Patent medical Attorney. devices, cryptography and database In essence, a modern video game is a piece of Conorquerying has methods. experience He drafting has an andhonours prosecuting degree inUK and software describing a set of abstract game rules EuropeanPhysics, in patent which applications his project involved in the fields developing of aerospace, a configured to be executed by hardware such as fuelmethod cells, of medical high-speed devices, temperature cryptography and pressureand database a PC or a games console. The European Patent queryingdetection methods. for the Atomic He has Weapons an honours Establishment. degree in Office (EPO) will grant patents to inventions that, Physics,[email protected] in which his project involved developing a it considers, provide a technical solution to methodhttps://www.linkedin.com/in/conor-mcguinness- of high-speed temperature and pressure technical problem, but does not recognise, among detection61159b127/ for the Atomic Weapons Establishment. other things, programs for computers, playing [email protected] https://www.linkedin.com/in/conor-mcguinness- 18 THE PATENT LAWYER CTC Legal Media CTC61159b127/ Legal Media THE PATENT LAWYER 19

CTC Legal Media THE PATENT LAWYER 19 Mathys_TPL53_v2.indd 18 08/04/2021 13:11 Mathys_TPL53_v2.indd 19 08/04/2021 15:10

Mathys_TPL53_v2.indd 19 08/04/2021 15:10 PATENTING VIDEO GAMES

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players and the two characters could swap be too small to show a complete zone of interest, roles during the game which would affect the which had to be considered in the inventive step way the kart moves in response to a player input. discussion. The Board asserted that resolving the A modern Nintendo argued that swapping the roles of conflict by technical means implies a technical “ characters addresses the problem of making contribution (T 0928/03). video game the game more surprising - and therefore exciting Lastly, in a case in which the applicant claimed is a piece - for the players and that this was comparable a game wherein contact between a player to the generation of chance encounter events character and background objects was calculated of software with less predictability as in T0012/08 (see below). by determining whether an overlap existed describing However, the Board was not convinced that between a set of points describing the player this was a technical problem and asserted that character and a block-shaped rendering area of a set of virtual attributes of characters do not have a the background objects, the Board found that abstract physical effect, they simply mean that different this was a computationally effective and efficient characters respond differently to user inputs approach to determining the contact between game rules when moving in the game and, therefore, such objects and that this approach was not the configured the claim related to game rules and was not inevitable result of programming the game rules patentable (T 0188/11). per se. Rather, the claimed subject-matter was the to be direct technical consequence of the particular executed by What is patentable? technical way selected data is used to determine An application claiming a game wherein the a display state. (T 1225/10 – reasons 6.2.2). hardware probability of a character appearing on a game such as a map was varied was, in contrast to the previous Conclusion case, found to be patentable. The Board reasoned From the above review, it is clear that video PC or a that the probability calculation was technical games, or at least aspects of these games, are games because it solved the problem of how to modify the patentable. Bearing in mind the size of the potential game program such that it generated encounters UK market, video game developers and publishers console. in a less predictable manner (see T 0012/08). should be actively considering the patentability In another patent application, it was found that of their creations as part of a wider holistic IP 2QOLQHDSSOLFDWLRQIRUSURMHFWEDVHGFROODERUDWLRQ a guide display device for use in a video game review that also includes other IP rights such as WDLORUHGWRWKHΖ3LQGXVWU\DQGGHYHORSHGE\ system was allowable subject-matter. In more trademarks, copyright and confidential information. ” detail, the guide display device highlighted a first H[SHUWVLQWKHȴHOG character so that the player could identify them, as well as a pass guide mark, which allowed IPShare puts the power in your hands, making it easy for identification of a second character to whom a project teams to share innovation insight and collaborate ball is to be passed. The pass guide mark continued Contact to be displayed on the edge of the display area Mathys & Squire across a Business Unit locally or globally. when the second character left the visible area. The Shard, 32 London Bridge Street, It was argued that the technical problem here London SE1 9SG related to conflicting technical requirements, Tel: 020 7830 0000 PLQHVRIWFRP $QLGHDOZD\IRUΖ3/DZ\HUVWRFRPPXQLFDWHZLWKWKHLU namely: a portion of an image is desired to be [email protected] FOLHQWVVHFXUHO\'HYHORSHGE\RQHRIWKHZRUOGȇV displayed on a relatively large scale (e.g. zoom www.mathys-squire.com OHDGLQJLQQRYDWRUVLQΖ3VRIWZDUHVROXWLRQV0LQHVRIW in); and, the display area of the screen may then Go to www.minesoft.com to get started. 20 THE PATENT LAWYER CTC Legal Media

Mathys_TPL53_v2.indd 20 08/04/2021 13:12 Minesoft FP.indd 1 23/02/2021 11:29 TOOLS FOR REMOTE WORKING

08/04/2021 09:04 23 THE PATENT LAWYER Within the Document view, the red label is is label red the view, Document the Within Patent Classification codes, the images from the from images the codes, Classification Patent ranking The document. the source of copy a PDF list can also be sorted by several variables, including variables, several by list can also be sorted the ranking, the sub-unit labels, or when the when the labels, or the sub-unit the ranking, Another changed. most recently was document is immediately information piece of useful the circled passing the mouse over by available equivalent the This brings up a list of (i) icon. also that are within the project documents Clicking on the document number available. within that document to directly the user takes of features the of 2, some Figure In project. the one of page can be seen for view the Document documents. the selected Automation the Home identified as being part of portfolio. Security within the Network sub-unit about information additional This page provides members, family the document, including other the document sections of the different record, and a link to Claims, Description), (Bibliography, ” Résumé Patinformatics of Managing Director Trippe, (Tony) Anthony Tony Trippe is Managing Director of Patinformatics, LLC. Patinformatics is an advisory firm specializing in patent analytics and landscaping to support decision making for technology based businesses. In addition to operating Patinformatics, Mr. Trippe is also an Adjunct Professor of IP Management and Markets at Illinois Institute of Technology teaching a course on patent analysis, and landscapes for strategic decision making. Tony is an influential thought leader in the patent analysis space, wrote the Guidelines for the Preparation of Patent Landscape Reports for the World Intellectual Property Organization, has been named one of the Top 300 IP Strategists by IAM Magazine, and is the developer of ML4Patents.com the industry’s online resource for the use of machine learning and artificial intelligence in the field of Intellectual Property. To allow To the users to quickly focus on the portions of the document that are of the highest interest to them. “

Lois started by identifying the unique patent identifying the unique patent by started Lois In this case, the most recent publications can In this case, the most recent Here is the scenario: Lois Kent manages a manages a Kent is the scenario: Lois Here isclosures to tracking complicated patent portfolios patent complicated tracking to isclosures ank patent and non-patent literature in real-time. literature and non-patent ank patent CTC Legal Media can create and label custom sub-units and invite custom and label can create members invited Within the project, them to. wants individuals and teams to work on new patent patent on new work to individuals and teams invention of evaluation the with cases beginning d the Minesoft how explore will this article example, Inside Counsel, Outside Counsel, and searchers, the network for responsible Advisors Technical software large a of portfolio patent security 600 over for is responsible team Her company. with years 20 back over cases that stretch jurisdictions. different ten than more in coverage the published documents in the numbers for With IPShare. and uploaded them into portfolio on collaborate can team entire her IPShare, location. Lois in one open and central projects Figure 2 specific users or user groups to collaborate on collaborate to groups user specific users or cases and documents. Permission particular team so all customizable, entirely are levels Lois the areas only and edit view members can as well as notes make can chat, label, annotate, r shows and available also is feed project live A and by has been updated time a project any a of see an example we 1, In Figure which user. and IPShare loaded into the portfolio portion of page. view the Project what can be seen from this Still, order. chronological be seen in reverse suite of tools and services can help remote IP IP remote help can services and tools of suite though even efficiently together work to teams might be separated. they patent including professionals, IP of team small covering dozens of countries. Using a practical practical a Using countries. of dozens covering Minesoft_TPL53_v3.indd 23 08/04/2021 09:04 type CTC Legal Media While colleagues continuing are gone have or Minesoft is a developer of best-in-class tools tools best-in-class of is Minesoft a developer patent literature back and using or patent literature forth cloud- back to working from home, it is easy to feel contact, face-to-face of lack to due disconnected conversations, everyday and even a generally non- and patent Emailing schedule. interrupted sharing can create duplicate files or increase is This trail. audit no with likelihood, error human been have tools said than done, but new easier together work to teams IP allow that developed person. in meeting were they if as seamlessly as for patent professionals designed to allow Anthony Trippe

THE PATENT LAWYER he way patent attorneys work with their changed has preparation patent on clients Drafting years. in the last few significantly

even though they might be separated. even though they might be tools and services can help remote IP teams to work together efficientlytools and services can help Managing Director of Patinformatics, explores how the Minesoft suite ofManaging Director of Patinformatics, This past year has forced change on everybody alike. Anthony Trippe, alike. Anthony has forced change on everybody This past year Figure 1

22 T working from home from working getting the job done while done the job getting Working without borders: borders: without Working TOOLS FOR REMOTE WORKING REMOTE FOR TOOLS and prosecuting patent applications has always always has applications patent prosecuting and been a collaborative process involving several tasks. various on working professionals different all and called, be would meeting a Traditionally, same the in gather would parties interested the room and share physical copies of documents as details about patent-related legal matters out. worked were Minesoft_TPL53_v3.indd 22 TOOLS FOR REMOTE WORKING TOOLS FOR REMOTE WORKING

of this document can also be changed, and the by clicking on the gable icon in the upper right- TextMine feature can be used to identify key hand corner of the window. terms and concepts within the full text of the Besides making notes and collaborating on patent. The highlighting feature can be configured discrete documents, patent teams also need to with organizational-specific words that will be build IDS forms, order large numbers of patent automatically highlighted in different colors to copies and examine large patent families during allow the users to quickly focus on the portions a project. To assist with those aspects of a project, of the document that are of the highest interest Minesoft provides the PatDocs system. In Figure to them. 4, one of the opening screens from the launch Also seen in Figure 2 are some of the critical of this tool is seen. collaboration features available along the right Individual tabs are available in this interface side of the Document view window. The Chat for ordering patent copies, generating IDS forms, feature allows team members to share notes reviewing legal information, retrieving machine and assign tasks to various team members. History and human translation of various documents for provides a comprehensive list of the changes prior art that may have been discovered during that have been made and by whom over time a patentability search and which need to be and finally the Notes frame can be used to share shared with various patent offices. Another exciting internal docketing numbers or other details feature of this system is the ability to view and about the case that should be part of the file. annotate patent family trees. A list of Saved family Another critical component of the Document trees can be seen on the right, and an example View is access to the Legal Status viewer, as of one is seen in Figure 5. seen in Figure 3. In this example, there are four granted US From here, a team member can see the full patents associated with this specific family. legal status of a complete extended family within Using the edit function, a summary of the first a project, including the calculated expiry dates claims of each of these granted patents was and whether any reassignments have taken added. The earliest grant covers a system for Figure 4 place. For each of the documents in the family, secure internetwork communication, while the including the individual EP National Phases, a second covers the transfer of data between a In addition to the individual tasks associated even more challenging with separated team complete prosecution history of each including workstation and a remote computer on an external with each case, it is essential for Lois to be able members working remotely. While that may be both adverse and positive actions are available. network. Finally, there are discrete claims for a to manage all the activity across several the case, the job still needs to be done, and the Litigation information for this family is also available firewall device associated with this invention. projects. Lois can do this quickly by reviewing goals of the company for protecting intellectual Provide This detail concerning the family’s coverage can project analytics for her projects by returning to property continue to need to be addressed. “ Figure 3 be seen in one diagram for easy analysis. IPShare. The Snapshot analysis tool generates Connected teams using tools from Minesoft, a seamless A team automatic graphs showing a birds-eye-view of including IPShare and PatDocs, provide a and efficient “ ongoing projects, including the most prominent seamless and efficient approach for meeting member countries, companies, and publication timelines the needs of patent departments of all sizes and approach. within a project, as well as user activity data in any location. can see such as document activity, rankings, and labels the full legal as they are applied within projects over time. Managing a patenting organization is a status of complicated activity, and recently it has become Contact ” www.minesoft.com a complete Figure 5 extended family within a project, including the calculated expiry dates.

24 THE” PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 25

Minesoft_TPL53_v3.indd 24 08/04/2021 09:04 Minesoft_TPL53_v3.indd 25 08/04/2021 09:07 MID-HOUSE COUNSEL™ 08/04/2021 09:18 in 27 1 THE PATENT LAWYER not. recently wrote about a new paradigm for for paradigm about a new wrote recently to counsel and corporate counsel general to Model New in a post entitled, “A consider But what is Mid-House Counsel™, specifically? specifically? Counsel™, what is Mid-House But which I laid out a methodology for in-house in-house for methodology a out laid I which in- like manage outside counsel to attorneys More Effectively and Efficiently Align Counsel Align Counsel and Efficiently Effectively More Objectives,” Strategic Company’s Your with I that, house counsel. In this piece, I coined a term this I believe how captures I think, accurately Counsel™. Mid-House work: should model file trademark since gone on to I have term A would counsel IP good any (as for protection what Mid- look at a closer take let’s you!), urge what is not... is...and Counsel™ House com/2020/11/25/how-to- manage-outside-counsel- like-in-house-counsel/ https://patentbaron. J. Baron Lesperance 1 Résumé at Counsel Of Lesperance, Baron J. PLLC Remenick J. Baron Lesperance is a registered US patent attorney and Of Counsel at Remenick PLLC in Washington, DC. Mr. Lesperance is admitted to the bars of Michigan and Washington, DC as well to the Law Society of Ontario, Canada. In addition to advising clients on patent matters, he also advises on other aspects of intellectual property law, including trademarks, trade secrets, and licensing. Mr. Lesperance gained his engineering experience in the automotive industry, including a stint at Ford Motor Company, before entering law. He holds degrees in mechanical, electrical, and computer engineering from Lawrence Technological University. Mr. Lesperance obtained his legal education while working full-time as an engineer. Mr. Lesperance has been a US patent attorney since 2005. Mr. Lesperance has both large firm and corporate experience, with a DC IP firm and also with Amway, handling a global wireless charging portfolio. Mr. Lesperance provides his clients with the service perspective he gained in-house. J. Baron Lesperance, Of Counsel at Remenick PLLC, considers the new PLLC, considers Of Counsel at Remenick J. Baron Lesperance, is…and what it is General Counsel: what it paradigm for CTC Legal Media What Is the Mid-House the Is What Model? Counsel™ Remenick_TPL53_v2.indd 27 MID-HOUSE COUNSEL™ MID-HOUSE COUNSEL™

Not quite in-house... example, to have multiple outside firms working tech, business plan, and competitors. That’s where But this new Mid-House Counsel™ model of The Mid-House Counsel™ is an attorney who is on IP and specifically, patent matters. Each of the Mid-House Counsel™ comes in: someone legal service has emerged and is beginning to not on staff within the corporation. There is no these firms has its own way of doing business, with in-house experience with a large gain favor among companies that not only have salary; there are no benefits, payroll taxes, and ““The Mid- their own document templates, their own corporation who can be a conduit and an expert “The a tremendous amount at stake relative to trade other expenses typically associated with full- vocabularies and methodologies...and not all of team member to the GC—without having to secrets and IP protection, but for those who time employment, so there is no “bloat” that House them fit neatly together as a whole. In fact, make the commitment to hiring a full-time in- Mid-House understand that intellectual property is the corporations are often prone to succumbing to. Counsel™ is some of these firms might consider one another house counsel—as there may not be enough Counsel™ company’s chief competitive advantage—likely There is no vacation time to track, nor HR competitors with each other, so they may be work 365 days per year for that position. its most valuable asset—and want to leave paperwork and administrative burdens to worry an attorney more guarded and reluctant to share internal will serve nothing to chance. about. who is not methodologies and “trade secrets” of their own Air traffic controller and early as an As a patent attorney who started as outside via their relationships with the corporate client warning system counsel, then spent three years working in-house ...Not quite outside counsel, either on staff at the center of the wheel. The Mid-House One of the biggest competitive advantages integrated at Amway and managing a portfolio of more than However, the Mid-House Counsel™ is far more Counsel™, then, serves as the intermediary and companies have these days is their intellectual 1,200 patents globally covering wireless charging, aligned with the company’s strategic objectives within the coordinator of all of the company’s objectives property, as I’ve discussed on my podcast.2 There partner that I’ve both worked against the limitations of time than an outside firm or attorney-for-hire corporation. and initiatives, creating a single methodology is simply too much at stake, and innovation is will help and resources and discovered both the benefits typically is. In fact, oftentimes, the Mid-House and coordinated point of contact, alleviating the happening at such an increasing rate, that and challenges inherent in working with Counsel™ will serve as an integrated partner general counsel’s burden of managing multiple monitoring competitors, market indicators, and shape the multiple outside patent firms. Now that I’m that will help shape the company’s strategic vendors and myriad projects at once. new entrants into your IP ecosystem is nearly a company’s again serving in-house IP counsel and general objectives and planning. An IP Mid-House full-time job. While it may not take a full-time counsel as an outside resource, I’ve done Counsel™, for example, might meet regularly with ” Subject matter expert with deep employee to perform the work, corporations strategic enough pattern recognition and trial-and-error a company’s inventors, and engineers, domain authority with differentiating IP need to commit to constant to recognize the optimum way that an attorney along with corporate leadership, to fully understand It’s unrealistic to expect corporate counsel to be vigilance and consistent review of developments objectives can both serve in-house counsel and manage and stay current with changing innovations, experts at everything. In fact, that’s why they that may impact the competitive advantage that and outside counsel as if serving on the inside. market trends, competitive landscape dynamics, lean on outside counsel in the first place—for their precious IP assets afford them. The minute And that’s the Mid-House Counsel™ model in and the company’s overall posture in the discrete matters for which the subject matter or you forfeit market share to a competitor who planning. a nutshell. marketplace. These are activities that are critical domain experience is not among the company’s either out-thought you or outworked you when for the long-term success and competitiveness internal resources. Many GCs are reluctant to it comes to patent and trademark protection, is Want to learn more? If you’re ready to explore of the corporation, but tasks that aren’t always admit that they may not fully understand their the moment in which the company’s very whether this new model is right for you and being addressed by in-house legal teams, and own company’s technology, or the ever-changing existence becomes at risk. I think we all recall your organization, contact me to schedule a can otherwise be economically and logistically IP landscape more generally. So with the limited once-dominant companies that now are ” conversation on how I may be able to be the difficult to hand off to either a junior associate or time they have available, they make difficult shadows of their former selves, and IP certainly resource you need, at jblesperance@ a senior partner at an outside firm. decisions, or lean on outside counsel for direction played a part in their decline, such as Nokia, remenicklaw.com. and expertise. But as outlined above, each Kodak, BlackBerry, Motorola, IBM, and Atari, to Liaison, quarterback and outside attorney may have a different opinion, name only a few. Disclaimer & Notice: The content of this article does project manager and in all likelihood, none of them have (or can As I said, you might not hire a full-time attorney not constitute legal advice. The information presented It’s not uncommon for manufacturers, for take) the time to really understand the company’s to do this for 50 hours per week; and you likely herein is for informational use only. Not responsible for can’t pay an outside firm their hourly rate to the actions or failures of third parties. Not responsible commit to this at all times. But a good Mid- for any action or inaction based on the content of this House Counsel™ is doing this already, and will article. The content of this article is solely the opinion of be willing to make a monthly arrangement that the author(s) and may not necessarily be those of is both affordable and strategically critical. This Remenick PLLC, its clients, or members. Reading this person will provide “early detection warning” on article does not constitute the establishment of an IP developments that may do damage to the attorney-client relationship. Any communication firm, near- or long-term, proactively notifying received will not be confidential unless and until an you of both threats and opportunities. attorney-client relationship is established by an engagement letter. The content of this article may The future, not the past not be current as of the date of access and may be Not every company has the resources to have removed or updated without notice. Consult with legal in-house patent or IP counsel. And others are so counsel before undertaking any legal action. large that they not only have in-house IP counsel, those in-house attorneys are managing several outside firms supporting their patent portfolios Contact and filings internationally. Regardless of size or Remenick PLLC the nature of a company’s dedicated legal team 1025 Thomas Jefferson St. NW, Suite 175 2 protecting your intellectual property, there https://patentbaron. Washington, DC 20007 com/2020/11/24/ tends to emerge the same inefficiencies and Tel +1 202-570-7380 episode-4-how-my- potential gaps that go unfilled. That gap is what in-house-counsel- www.remenicklaw.com presents itself when in-house resources and experience-helps-my- www.patentbaron.com outside counsel aren’t working in lockstep toward clients-stay-ahead-of-the- [email protected] the company’s unique strategic objectives. competition/

28 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 29

Remenick_TPL53_v2.indd 28 08/04/2021 09:18 Remenick_TPL53_v2.indd 29 08/04/2021 09:18 Dennemeyer recently published the latest IP Trend Monitor study, in collaboration with CTC Legal Media, which this year focuses on the impact of the COVID-19 pandemic on Intellectual Property (IP) activities. In this special summary for The Patent Lawyer Magazine, we reveal how patent practitioners have been affected so far, what long-term changes are likely and how businesses will need to adapt.

Download the study at: iptrendmonitor.com

CTC Legal Media THE PATENT LAWYER 31

Dennemeyer_TPL53_v1_ONLINE.indd 31 12/04/2021 13:25 IP Trend Monitor is an annual survey established by the Dennemeyer Group to investigate current topics in IP management. The complete study for 2021, “IP management in a ĿijijĚƙƥČĺîŕŕĚŠijĚƙ changing work environment,” can be downloaded now from IP Trend Monitor's website. It analyzes the results of 2020’s industry survey in detail and follows up on previous The responses from IP practitioners who took part in the IP Trend Monitor editions with sections on automation, AI and digitalization. survey 2020 show that the biggest challenges of remote working lie in what What are the challenges of remote working The IP Trend Monitor panel consists of more than 400 members, representing lawyers, ŞĿijĺƥċĚČîŕŕĚēƥĺĚƙūIJƥîƙƎĚČƥƙūIJċƭƙĿŠĚƙƙȡŠîŞĚŕNjȡƥĺĚēĿIJǛČƭŕƥĿĚƙūIJ in the IP area? attorneys, consultants, IP counsel, inventors and scientists from a mix of large corporations, effectively communicating with other people and building / working as a ƙŞîŕŕîŠēŞĚēĿƭŞȹƙĿǕĚēĚŠƥĚƑƎƑĿƙĚƙȳ¬q/ƙȴȡŕîDžǛƑŞƙȡT¡ƙĚƑDŽĿČĚƎƑūDŽĿēĚƑƙîŠēT¡ūIJǛČĚƙȦ Lack of social contact with colleagues / clients team, as opposed to technical or administrative issues. 75% Nearly 100 members responded to the IP Trend Monitor questions issued at the end of Lack of face-to-face meetings ǨǦǨǦȡūIJDžĺĿČĺǭǩĿēĚŠƥĿǛĚēƥĺĚŞƙĚŕDŽĚƙîƙƎîƥĚŠƥƙƎĚČĿîŕĿƙƥƙȦŞūŠijƥĺĚƙĚĚNJƎĚƑƥƙȡǪǦɼ 65% ¹ĺĚƥūƎIJūƭƑČĺîŕŕĚŠijĚƙȡîŕŕĿēĚŠƥĿǛĚēċNjîƥŕĚîƙƥǫǦɼūIJƎîƥĚŠƥȹƙƎĚČĿîŕĿƙƥ ƙîĿēƥĺĚĿƑƎƑĿŞîƑNjƑĚƙƎūŠƙĿċĿŕĿƥNjŕĿĚƙDžĿƥĺŞîŠîijĚŞĚŠƥŕĚDŽĚŕȡČūŞƎîƑĚēƥūǩǪɼDžĺū respondents, are: “lack of social contact with colleagues / clients,” “lack of 56% Reduced communication with colleagues / clients îŠƙDžĚƑĚēŕĚijîŕĚNJƎĚƑƥƙȡǧǧɼ ȹƙƭĿƥĚîŠēǧǦɼîēŞĿŠĿƙƥƑîƥĿūŠūIJTŠƥĚŕŕĚČƥƭîŕ¡ƑūƎĚƑƥNj face-to-face meetings,” “reduced communication with colleagues / clients” ¤ĿijĺƥƙȳT¡¤ƙȴȡDžĺĿŕĚƥĺĚƑĚŞîĿŠĿŠijǫɼƑĚƙƎūŠēĚēɁūƥĺĚƑȦɂ¹ĺĚîēēĿƥĿūŠîŕƑĚƙƎūŠƙĚƙĿŠČŕƭēĚē 53% ¹ĺĚēĿIJǛČƭŕƥNjūIJƎƑūDŽĿēĿŠijƥƑîĿŠĿŠijȬƥĚîŞċƭĿŕēĿŠij îŠēɁēĿIJǛČƭŕƥNjƎƑūDŽĿēĿŠijƥƑîĿŠĿŠijȬƥĚîŞċƭĿŕēĿŠijȦɂTŠƥĚƑĚƙƥĿŠijŕNjȡŏƭƙƥǨǧɼūIJ patent intelligence and software. patent respondents said that “lack of HR, IT or other administrative support” 47% Challenging environment – When it comes to the region(s) that they are responsible for, patent respondents have a lack of facilities / distractions (e.g., children / pets) slightly bigger focus on North America and Asia than average. Among patent respondents, DžîƙƙƥƑĚŠƭūƭƙȦGƭƑƥĺĚƑŞūƑĚȡūŠŕNjǨǬɼĿēĚŠƥĿǛĚēɁƙĚČƭƑĿƥNjČūŠČĚƑŠƙȡɂîŠē ǬǩɼĿŠēĿČîƥĚē/ƭƑūƎĚȹ/ÀȳČūŞƎîƑĚēƥūǬǪɼūIJîŕŕƑĚƙƎūŠēĚŠƥƙȴȡǩǪɼƙîĿēsūƑƥĺŞĚƑĿČî ŏƭƙƥǩǩɼƙîĿēɁƑĚēƭČĚēîČČĚƙƙƥūT¡ǛŕĚƙȬƑĚƙūƭƑČĚƙȦɂ 33% ¤ĚēƭČĚēîČČĚƙƙƥūT¡ǛŕĚƙȬƑĚƙūƭƑČĚƙ ȳČūŞƎîƑĚēƥūǩǨɼūIJîŕŕƑĚƙƎūŠēĚŠƥƙȴîŠēǨǬɼƙîĿēƙĿîȶHƑĚîƥĚƑ ĺĿŠîȳČūŞƎîƑĚēƥū 29% Connectivity ǨǪɼIJūƑîŕŕƑĚƙƎūŠēĚŠƥƙȴȦ A number of respondents across all specialties also added comments to this section highlighting particular challenges they are facing, including: 26% Security concerns regarding IT systems ɁîēēĿƥĿūŠîŕēĿIJǛČƭŕƥĿĚƙĿŠƑĚČƑƭĿƥĿŠijƎƑūČĚƙƙȡɂɁēĿIJǛČƭŕƥNjƥūēĿƙČūŠŠĚČƥIJūƑŞîŠNj 21% Lack of support (IT, HR, administrative etc.) ĚŞƎŕūNjĚĚƙƑĚƙƭŕƥĿŠijĿŠîĺĿijĺĚƑDžūƑŒŕūîēIJūƑĚDŽĚƑNjūŠĚȡɂɁēĿIJǛČƭŕƥNjƥūĚNJîŞĿŠĚ

Patents and the pandemic physical samples or pieces of evidence” and “back pain due to uncomfortable 7% Other installation of table / chair at home and lack of a large screen.” ¹ĺĚ ~×T'ȹǧǯƎîŠēĚŞĿČĺîƙēĿƙƑƭƎƥĚēŕĿIJĚîŠēċƭƙĿŠĚƙƙƥĺƑūƭijĺūƭƥƥĺĚDžūƑŕēūDŽĚƑ the past year, and IP is no exception. Working from home, videoconference meetings ¹ĺĚƙĚǛŠēĿŠijƙƙƭijijĚƙƥƥĺîƥƎĚūƎŕĚDžūƑŒĿŠijĿŠT¡ĺîDŽĚēūŠĚîŠĚNJČĚŕŕĚŠƥŏūċ îŠēDŽĿƑƥƭîŕĺĚîƑĿŠijƙîƥČūƭƑƥƙîŠēT¡ūIJǛČĚƙîƑĚŠūDžƥĺĚŠūƑŞIJūƑŞîŠNjƎîƥĚŠƥ How has your working environment setting up the structures for remote working (equipment, protocols, software ƎƑîČƥĿƥĿūŠĚƑƙȶîŠēîƑĚŕĿŒĚŕNjƥūƑĚŞîĿŠƙūIJūƑƙūŞĚƥĿŞĚȡƎūƙƙĿċŕNjƎĚƑŞîŠĚŠƥŕNjȦ changed this year? and tools), no doubt facilitated by business continuity plans that many This year’s IP Trend Monitor study reveals that shifts in the workplace are already organizations have put in place in recent years. However, it is much harder to MULTIPLE CHOICE dramatic. For , three-quarters of all patent respondents say they are now QUESTION DžūƑŒĿŠijîƥŕĚîƙƥǫǦɼƑĚŞūƥĚŕNjȦ NjDžîNjūIJČūŠƥƑîƙƥȡŏƭƙƥǭɼîƑĚƙƥĿŕŕDžūƑŒĿŠijĚŠƥĿƑĚŕNjĿŠ adapt to the social consequences. The full IP Trend Monitor study analyzes

ƥĺĚūIJǛČĚȦ ǭɼ some of the initiatives that will likely address these effects.

ǧǮɼ This overall trend is consistent across specialisms and working environments. However, when analyzing all answers received in the survey, it is notable that

ƑĚƙƎūŠēĚŠƥƙĿŠŕîDžǛƑŞƙîƑĚŞūƑĚŕĿŒĚŕNjƥūċĚDžūƑŒĿŠijƑĚŞūƥĚŕNjƥĺîŠƥĺūƙĚĿŠ ǪǪɼ ČūƑƎūƑîƥĿūŠƙȡƎĚƑĺîƎƙĿŕŕƭƙƥƑîƥĿŠijîēĚijƑĚĚūIJijƑĚîƥĚƑǜĚNJĿċĿŕĿƥNjĿŠƥĺĚĿƑƑūŕĚƙȦǮǨɼūIJ ŕîDžǛƑŞƑĚƙƎūŠēĚŠƥƙîƑĚDžūƑŒĿŠijîƥŕĚîƙƥǫǦɼūƑĚDŽĚŠǧǦǦɼƑĚŞūƥĚŕNjȡČūŞƎîƑĚēƥū What will change ǩǧɼ ǭǧɼūIJƥĺūƙĚĿŠČūƑƎūƑîƥĿūŠƙȡDžĺĿŕĚŏƭƙƥǧǮɼūIJƥĺūƙĚĿŠŕîDžǛƑŞƙƙîNjƥĺĚNjîƑĚ ɁDžūƑŒĿŠijŕĚƙƙƥĺîŠǫǦɼūIJƥĺĚƥĿŞĚƑĚŞūƥĚŕNjɂūƑɁŠūƥîƥîŕŕȡɂČūŞƎîƑĚēƥūǩǦɼūIJ When asked which aspects of their business were likely to changee due to the those in corporations. new work environment, most patent respondents selected “contactct withwith colleagues,” “networking” and “contact with clients.” These optionsns were ūƥĺƎƭċŕĿČċūēĿĚƙîŠēƥĺĚƎƑĿDŽîƥĚƙĚČƥūƑĺîDŽĚĺîēƥūƑĚƙƎūŠēƐƭĿČŒŕNjƥūƥĺĚƙĚ ĿēĚŠƥĿǛĚēċNjǭǫɼȡǭǨɼîŠēǫǩɼūIJƥĺĚƙĚƎƑūIJĚƙƙĿūŠîŕƙȡƑĚƙƎĚČƥĿDŽĚĚŕNjȦ¹ĺĚNjŕNjȦ¹ĺĚNj îēŏƭƙƥŞĚŠƥƙȦ¹ĺĚ/ƭƑūƎĚîƥĚŠƥ~IJǛČĚȳ/¡~ȴūƭŠČĚēƥĺîƥîŕŕūƑîŕƎƑūČĚĚēĿŠijƙ Working at least 50% remotely were less likely to choose “marketing” or “continuing education,” ppossiblyossibly in examination and opposition would be held online by default until at least Currently working 100% remotely because these are longer-term activities affected less immediatelyy byby the ¬ĚƎƥĚŞċĚƑǨǦǨǧȦ¬ĿŞĿŕîƑŕNjȡƥĺĚÀŠĿƥĚē¬ƥîƥĚƙ ūƭƑƥūIJƎƎĚîŕƙIJūƑƥĺĚGĚēĚƑîŕ ĿƑČƭĿƥ Working remotely 1% to 50% pandemic. started live-streaming oral arguments on its YouTube channel in March 2020, and the ¡îƥĚŠƥƙ ūƭƑƥĿŠgūŠēūŠĺîƙîŕƙūŕĿDŽĚȹƙƥƑĚîŞĚēƙūŞĚČîƙĚƙȦ sūČĺîŠijĚȶƙƥĿŕŕDžūƑŒĿŠijĿŠƥĺĚūIJǛČĚ ¹ĺĚƙĚūDŽĚƑîƑČĺĿŠijƥƑĚŠēƙƑĚĿŠIJūƑČĚƥĺĚǛŠēĿŠijƙūŠĿŠēƭƙƥƑNjȹƙƎĚČĿǛČǛČ

As for industry, innovative companies found that research and development (R&D) ĺîƑēƙĺĿƎƙŞĚŠƥĿūŠĚēîċūDŽĚîŠēēĚŞūŠƙƥƑîƥĚƥĺĚƙĿijŠĿǛČîŠČĚūIJƙūƙūIJƥƙŒĿŕŕƙIJƥƙŒĿŕŕƙ DžîƙēĿƙƑƭƎƥĚēċNjƥĺĚČŕūƙƭƑĚūIJŕîċūƑîƥūƑĿĚƙîŠēūIJǛČĚƙIJūƑŕūŠijƎĚƑĿūēƙūDŽĚƑƥĺĚƎîƙƥ such as collaborating with colleagues and connecting with existingng (o(orr year. As an alternative to in situ collaboration, some scientists and engineers have potential) clients. They imply that if, as widely expected, working ffromrom home SINGLE CHOICE had to switch to paper-based research. This in itself presents many opportunities, as QUESTION continues for many people even after the pandemic, new ways of from this seemingly simple change come different approaches to invention and communicating will need to be established. creativity, particularly for high-tech start-ups and other agile businesses.

32 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 33

Dennemeyer_TPL53_v1_ONLINE.indd 32 12/04/2021 13:25 Dennemeyer_TPL53_v1_ONLINE.indd 33 12/04/2021 13:26 Productivity and the pandemic OūDžîƑĚT¡ūIJǛČĚƙēūĿŠijȧ What does the future hold? What does the future hold? ØĺĿČĺūIJƥĺĚIJūŕŕūDžĿŠijîƑĚŕĿŒĚŕNjƥūĿŠǜƭĚŠČĚ T¡DžūƑŒĿŠƥĺĚČūŞĿŠijǛDŽĚNjĚîƑƙȧ ~ŠĚūIJƥĺĚŞūƙƥČūŞƎĚŕŕĿŠijƐƭĚƙƥĿūŠƙîƙƙūČĿîƥĚēDžĿƥĺDžūƑŒĿŠij T¡ūIJǛČĚƙĺîDŽĚĺîēƥūƑîƎĿēŕNjîēîƎƥƥĺĚĿƑƎƑîČƥĿČĚƙĿŠƑĚƙƎūŠƙĚƥū While improved treatments, measures to reduce the spread of ØĺĿČĺūIJƥĺĚIJūŕŕūDžĿŠijîƑĚŕĿŒĚŕNjƥūĿŠǜƭĚŠČĚ T¡DžūƑŒĿŠƥĺĚČūŞĿŠijǛDŽĚNjĚîƑƙȧ While improved treatments, measures to reduce the spread of from home is the impact on productivity. Economists continue to lockdowns — an especially problematic undertaking given that the virus and, above all, the distribution of vaccines promise an the virus and, above all, the distribution of vaccines promise an Score ēĚċîƥĚDžĺĚƥĺĚƑūIJǛČĚDžūƑŒĚƑƙîƑĚŞūƑĚƎƑūēƭČƥĿDŽĚDžĺĚŠIJƑĚĚē deadlines dictate so many IP administrative tasks. At the peak of end to the pandemic within the next year, replies to our survey Score end to the pandemic within the next year, replies to our survey Impact of technology from daily commutes and the diversions of water-cooler gossip, ƥĺĚƎîŠēĚŞĿČĿŠǨǦǨǦȡŞîŠNjūIJǛČĚƙĚNJƥĚŠēĚēƥĿŞĚŕĿŞĿƥƙūƑ signify that its impact will continue to be felt for some time. (including digitalization and AI) 5.48 signify that its impact will continue to be felt for some time. Impact of technology or less so due to suboptimal working conditions, lack of interac- relaxed means of communication rules to support applicants. We asked all respondents to rank seven IP trends in order of (including digitalization and AI) 5.48 We asked all respondents to rank seven IP trends in order of tion with colleagues and household distractions. Meanwhile, they also had to review their own systems and ĿŞƎūƑƥîŠČĚȡîŠēǨǮɼƎƭƥƥĺĚɁƎîŠēĚŞĿČîŠēîƙƙūČĿîƥĚē Budget restrictions 5.11 ĿŞƎūƑƥîŠČĚȡîŠēǨǮɼƎƭƥƥĺĚɁƎîŠēĚŞĿČîŠēîƙƙūČĿîƥĚē Budget restrictions procedures to enable remote working, even in sensitive areas disruption” as number one. This was exceeded only by the 5.11 disruption” as number one. This was exceeded only by the Pandemic and associated disruption This discussion is likely to continue; in the meantime, companies such as patent and design examination. ɁĿŞƎîČƥūIJƥĚČĺŠūŕūijNjȡɂƑĚēǛƑƙƥċNjǩǩɼūIJƑĚƙƎūŠēĚŠƥƙȦTŠ 4.98 Pandemic and associated disruption ɁĿŞƎîČƥūIJƥĚČĺŠūŕūijNjȡɂƑĚēǛƑƙƥċNjǩǩɼūIJƑĚƙƎūŠēĚŠƥƙȦTŠ 4.98 îŠēǛƑŞƙĺîDŽĚƥūēĚČĿēĚĺūDžîŠēDžĺĚŠƥūƑĚƥƭƑŠƥūūIJǛČĚƙȦ ƥĺĿƑēƎŕîČĚČîŞĚɁċƭēijĚƥƑĚƙƥƑĿČƥĿūŠƙɂȳƑĚēǛƑƙƥċNjǨǪɼȴȡ Harmonization of law and practice ƥĺĿƑēƎŕîČĚČîŞĚɁċƭēijĚƥƑĚƙƥƑĿČƥĿūŠƙɂȳƑĚēǛƑƙƥċNjǨǪɼȴȡ 3.65 ¬ūŞĚĺĿijĺȹƎƑūǛŕĚČūŞƎîŠĿĚƙƙƭČĺîƙDŽĿDŽîîŠē¹DžĿƥƥĚƑĺîDŽĚ ~ŠƥĺĚDžĺūŕĚȡT¡¹ƑĚŠēqūŠĿƥūƑƙƭƑDŽĚNjƑĚƙƎūŠēĚŠƥƙƥĺĿŠŒūIJǛČĚƙ which may be indirectly related to the pandemic. Harmonization of law and practice 3.65 which may be indirectly related to the pandemic. already announced that workers will be allowed to work from ĺîDŽĚƎĚƑIJūƑŞĚēîijƑĚĚîċŕNjȦØĺĿŕĚūŠŕNjǬɼūIJƎîƥĚŠƥƙƎĚČĿîŕĿƙƥƙ Geopolitical developments – changesGeopolitical in trade developments and policy – 3.46 ĺūŞĚƎĚƑŞîŠĚŠƥŕNjȡDžĺĿŕĚūƥĺĚƑƙƙƭČĺîƙHūūijŕĚîŠē ¡îƑĚ ƙîNjƥĺĚNjĺîDŽĚēūŠĚɁDŽĚƑNjDžĚŕŕȡɂîIJƭƑƥĺĚƑǬǧɼċĚŕĿĚDŽĚƥĺĚNjĺîDŽĚ ~ƥĺĚƑIJîČƥūƑƙDžĚƑĚDŽĿĚDžĚēîƙŞƭČĺŕĚƙƙĿŞƎîČƥIJƭŕȡDžĿƥĺ changes in trade and policy 3.46 ~ƥĺĚƑIJîČƥūƑƙDžĚƑĚDŽĿĚDžĚēîƙŞƭČĺŕĚƙƙĿŞƎîČƥIJƭŕȡDžĿƥĺ proposing a hybrid model. ēūŠĚɁƑĚîƙūŠîċŕNjDžĚŕŕȡɂîŠēūŠŕNjǭɼƥĺĿŠŒƥĺĚNjĺîDŽĚēūŠĚ corporate social responsibility and sustainability ranked at the Promotion of corporate corporate social responsibility and sustainability ranked at the social responsibility “reasonably or very badly.” bottom of the list. However, patent specialists attach slightly Promotion of corporate 2.80 social responsibility bottom of the list. However, patent specialists attach slightly 2.80 ¹ĺĚT¡¹ƑĚŠēqūŠĿƥūƑƙƥƭēNjƑĚDŽĚîŕƙƥĺîƥǩǧɼūIJƎîƥĚŠƥƙƎĚČĿîŕĿƙƥƙ more importance to these two considerations than IP Promotion of sustainability more importance to these two considerations than IP 2.74 IJĚĚŕƥĺĚƑĚĿƙŠūēĿIJIJĚƑĚŠČĚĿŠƎƑūēƭČƥĿDŽĿƥNjūƭƥƙĿēĚƥĺĚūIJǛČĚȡDžĺĿŕĚ TƥĿƙċĚŠĚǛČĿîŕƥūċƑĚîŒēūDžŠƥĺĚƙĚƑĚƙƭŕƥƙċNjƥĺĚƎîƑƥĿČĿƎîŠƥƙɄ ƎƑîČƥĿƥĿūŠĚƑƙūŠîDŽĚƑîijĚȶƎĚƑĺîƎƙƑĚǜĚČƥĿŠijƥĺĚĿƑƎƑūNJĿŞĿƥNjƥū Promotion of sustainability 2.74 ƎƑîČƥĿƥĿūŠĚƑƙūŠîDŽĚƑîijĚȶƎĚƑĺîƎƙƑĚǜĚČƥĿŠijƥĺĚĿƑƎƑūNJĿŞĿƥNjƥū nearly half think they are more productive when working ƑĚijĿūŠƙƥūĚNJƎŕūƑĚĺūDžēĿIJIJĚƑĚŠƥT¡ūIJǛČĚƙîƑĚDŽĿĚDžĚēȦǬǭɼūIJîŕŕ technology and innovation (for all weighted rankings, please technology and innovation (for all weighted rankings, please remotely. These results suggest that even once lockdowns are ƎîƑƥĿČĿƎîŠƥƙDžĺūîƑĚƑĚƙƎūŠƙĿċŕĚIJūƑsūƑƥĺŞĚƑĿČîƙîNjT¡ūIJǛČĚƙ refer to the chart). RANKING refer to the chart). lifted, and normal working is possible again, it may be attractive ĺîDŽĚēūŠĚĚĿƥĺĚƑɁƑĚîƙūŠîċŕNjDžĚŕŕūƑDŽĚƑNjDžĚŕŕȡɂîƙēūǬǮɼIJūƑ RANKING for many patent practitioners to continue working from home. To /ƭƑūƎĚîŠēǬǫɼIJūƑsūƑƥĺĚîƙƥƙĿîȦ¹ĺĿƙǛijƭƑĚēƑūƎƙƥūǫǮɼIJūƑ How work will change îČĚƑƥîĿŠēĚijƑĚĚȡƥĺĿƙƑĚǜĚČƥƙƥĺĚĿŠƥĚƑŠîƥĿūŠîŕŠîƥƭƑĚūIJT¡DžūƑŒȠ ƙĿîȶHƑĚîƥĚƑ ĺĿŠîȡDžĺĿČĺŞîNjĿŠēĿČîƥĚƥĺĚēĿIJǛČƭŕƥĿĚƙIJîČĚē How work will change it may be easier for many practitioners to liaise with colleagues there with the considerable and growing volume of applications T¡DžūƑŒĿƙŕĿŒĚŕNjƥūČĺîŠijĚĿŠƙūŞĚIJƭŠēîŞĚŠƥîŕDžîNjƙȡċîƙĚēūŠƥĺĚǛŠîŕƑĚƙƎūŠƙĚƙƥūǨǦǨǦɄƙƙƭƑDŽĚNjȦƙŒĚēĺūDžƥĺĚNjĚNJƎĚČƥƥĺĚĿƑŏūċ îŠēČŕĿĚŠƥƙĿŠūƥĺĚƑƥĿŞĚǕūŠĚƙDžĺĚŠDžūƑŒĿŠijūŠǜĚNJĿċŕĚƥĚƑŞƙȦ îŠēîČƥĿūŠƙċĚIJūƑĚƥĺĚūIJǛČĚȦ T¡DžūƑŒĿƙŕĿŒĚŕNjƥūČĺîŠijĚĿŠƙūŞĚIJƭŠēîŞĚŠƥîŕDžîNjƙȡċîƙĚēūŠƥĺĚǛŠîŕƑĚƙƎūŠƙĚƙƥūǨǦǨǦɄƙƙƭƑDŽĚNjȦƙŒĚēĺūDžƥĺĚNjĚNJƎĚČƥƥĺĚĿƑŏūċ to change, the top answers among patent respondents were: “I will be doing less travel for business” and “face-to-face meetings will to change, the top answers among patent respondents were: “I will be doing less travel for business” and “face-to-face meetings will ċĚŕĚƙƙČūŞŞūŠɂȳċūƥĺǭǬɼȴȡIJūŕŕūDžĚēċNjȡɁTDžĿŕŕċĚDžūƑŒĿŠijIJƑūŞĺūŞĚŞūƑĚɂȳǬǭɼȴîŠēɁŞūƑĚūIJǛČĿîŕƎƑūČĚĚēĿŠijƙDžĿŕŕċĚĺĚŕē ċĚŕĚƙƙČūŞŞūŠɂȳċūƥĺǭǬɼȴȡIJūŕŕūDžĚēċNjȡɁTDžĿŕŕċĚDžūƑŒĿŠijIJƑūŞĺūŞĚŞūƑĚɂȳǬǭɼȴîŠēɁŞūƑĚūIJǛČĿîŕƎƑūČĚĚēĿŠijƙDžĿŕŕċĚĺĚŕē ƑĚŞūƥĚŕNjɂȳǬǦɼȴȦ ƑĚŞūƥĚŕNjɂȳǬǦɼȴȦ

Impact on workload TŠîŕŕȡŞūƑĚƥĺîŠƥDžĿČĚîƙŞîŠNjƎîƥĚŠƥƑĚƙƎūŠēĚŠƥƙȳǩǧɼȴĚNJƎĚČƥƥĺĚĿƑDžūƑŒŕūîēƥūijūƭƎƥĺîŠĚNJƎĚČƥĿƥƥūijūēūDžŠȳǧǪɼȴȦ¹ĺĿƙČūƭŕē TŠîŕŕȡŞūƑĚƥĺîŠƥDžĿČĚîƙŞîŠNjƎîƥĚŠƥƑĚƙƎūŠēĚŠƥƙȳǩǧɼȴĚNJƎĚČƥƥĺĚĿƑDžūƑŒŕūîēƥūijūƭƎƥĺîŠĚNJƎĚČƥĿƥƥūijūēūDžŠȳǧǪɼȴȦ¹ĺĿƙČūƭŕē ċĚƙĚĚŠîƙîŠūƎƥĿŞĿƙƥĿČDŽĿĚDžȶîŠĿŠēĿČîƥĿūŠƥĺîƥDžūƑŒĿƙîŠƥĿČĿƎîƥĚēƥūijƑūDžȶċƭƥĿƥČūƭŕēîŕƙūċĚîƙĿijŠƥĺîƥƥĺĚŠĚDžDžîNjƙūIJ When asked what the impact of the pandemic has been on their ċĚƙĚĚŠîƙîŠūƎƥĿŞĿƙƥĿČDŽĿĚDžȶîŠĿŠēĿČîƥĿūŠƥĺîƥDžūƑŒĿƙîŠƥĿČĿƎîƥĚēƥūijƑūDžȶċƭƥĿƥČūƭŕēîŕƙūċĚîƙĿijŠƥĺîƥƥĺĚŠĚDžDžîNjƙūIJ working will be more burdensome. As one respondent said: “My team and I will be able to cover more revenue than before, but we will workload, more than half of patent specialists say it has led to working will be more burdensome. As one respondent said: “My team and I will be able to cover more revenue than before, but we will need IT infrastructure and the freedom to develop and focus on that business.” Another respondent predicted that the risk of sick leave ĚĿƥĺĚƑɁƙŕĿijĺƥŕNjŞūƑĚDžūƑŒɂūƑɁƙĿijŠĿǛČîŠƥŕNjŞūƑĚDžūƑŒȡɂ need IT infrastructure and the freedom to develop and focus on that business.” Another respondent predicted that the risk of sick leave DžūƭŕēĿŠČƑĚîƙĚîƙƥĚ̪ċĚƑƙċĚČūŞĚūDŽĚƑDžūƑŒĚēȦ¡ĚƑĺîƎƙƥĺĚîŠƙDžĚƑƥūƥĺĚƐƭĚƙƥĿūŠūIJČĺîŠijĚȶîŠēƥĺĚŒĚNjƥîŒĚîDžîNjIJƑūŞ ČūŞƎîƑĚēƥūŏƭƙƥǨǪɼDžĺūƙîNjĿƥĺîƙŕĚēƥūɁƙŕĿijĺƥŕNjūƑ DžūƭŕēĿŠČƑĚîƙĚîƙƥĚ̪ċĚƑƙċĚČūŞĚūDŽĚƑDžūƑŒĚēȦ¡ĚƑĺîƎƙƥĺĚîŠƙDžĚƑƥūƥĺĚƐƭĚƙƥĿūŠūIJČĺîŠijĚȶîŠēƥĺĚŒĚNjƥîŒĚîDžîNjIJƑūŞ ƥĺĿƙNjĚîƑɄƙƙƥƭēNjȶîƑĚċĚƙƥƙƭŞŞĚēƭƎċNjūŠĚƎîƑƥĿČĿƎîŠƥDžĺūūƎĿŠĚēƥĺîƥɁîĺĿijĺēĚijƑĚĚūIJîēîƎƥîċĿŕĿƥNjDžĿŕŕċĚƑĚƐƭĿƑĚēȦɂ ƙĿijŠĿǛČîŠƥŕNjŕĚƙƙDžūƑŒȡɂDžĿƥĺîƐƭîƑƥĚƑƙîNjĿŠijƥĺĚƑĚĿƙ ƥĺĿƙNjĚîƑɄƙƙƥƭēNjȶîƑĚċĚƙƥƙƭŞŞĚēƭƎċNjūŠĚƎîƑƥĿČĿƎîŠƥDžĺūūƎĿŠĚēƥĺîƥɁîĺĿijĺēĚijƑĚĚūIJîēîƎƥîċĿŕĿƥNjDžĿŕŕċĚƑĚƐƭĿƑĚēȦɂ “no difference.”

There are, however, some disparities when responses from gĚijĚŠē ƎƑîČƥĿƥĿūŠĚƑƙĿŠDŽîƑĿūƭƙǛĚŕēƙîƑĚĚNJîŞĿŠĚēȦČƑūƙƙîŕŕîƑĚîƙūIJ gĚijĚŠē

T¡ȡƑĚƙƎūŠēĚŠƥƙĿŠŕîDžǛƑŞƙĺîDŽĚijĚŠĚƑîŕŕNjƙĚĚŠîŞūƑĚ The sum of the individual numbers does not The Dennemeyer Group offers high-quality services for the protectionThe Dennemeyer and management Group offers of high-quality Intellectual Propertyservices for rights the and is ƙƭċƙƥîŠƥĿîŕĿŞƎîČƥūŠƥĺĚĿƑDžūƑŒŕūîēȠǩǭɼƑĚƎūƑƥɁƙĿijŠĿǛČîŠƥŕNj Single choice questions ask survey îŕDžîNjƙîēēƭƎƥūǧǦǦɼūƑĚNJČĚĚēƙǧǦǦɼThe sum of the individual numbers does not respondentsSingle choice to questions select only ask one survey answer dueîŕDžîNjƙîēēƭƎƥūǧǦǦɼūƑĚNJČĚĚēƙǧǦǦɼ to rounding. ČūŞŞĿƥƥĚēƥūċĚĿŠijƥĺĚǛƑƙƥȹČĺūĿČĚƎîƑƥŠĚƑIJūƑČƭƙƥūŞĚƑƙijŕūċîŕprotection and management of Intellectual Property rights and isŕNjȦ ŞūƑĚDžūƑŒȡɂČūŞƎîƑĚēƥūŏƭƙƥǧǩɼūIJƥĺūƙĚĿŠČūƑƎūƑîƥĿūŠƙȦ fromrespondents a list of tochoices. select only one answer due to rounding. WithČūŞŞĿƥƥĚēƥūċĚĿŠijƥĺĚǛƑƙƥȹČĺūĿČĚƎîƑƥŠĚƑIJūƑČƭƙƥūŞĚƑƙijŕūċîŕ more than 55 years of experience in the industry and 20+ ŕNjȦ ūƑƑĚƙƎūŠēĿŠijŕNjȡǩǩɼūIJƥĺūƙĚĿŠČūƑƎūƑîƥĿūŠƙƑĚČūƑēɁŠū from a list of choices. For multiple choice questions, the total ūIJǛČĚƙDžūƑŕēDžĿēĚȡ'ĚŠŠĚŞĚNjĚƑŞîŠîijĚƙŠĚîƑŕNjƥĺƑĚĚŞĿŕŕĿūŠT¡With more than 55 years of experience in the industry and 20+ numberFor multiple of answers choice questions,selected can the be total greater ƑĿijĺƥƙūIJîƑūƭŠēǮȡǦǦǦČƭƙƥūŞĚƑƙȦūIJǛČĚƙDžūƑŕēDžĿēĚȡ'ĚŠŠĚŞĚNjĚƑŞîŠîijĚƙŠĚîƑŕNjƥĺƑĚĚŞĿŕŕĿūŠT¡ ēĿIJIJĚƑĚŠČĚɂĿŠDžūƑŒŕūîēȡČūŞƎîƑĚēƥūŏƭƙƥǧǮɼĿŠŕîDžǛƑŞƙȦ Multiple choice questions ask survey thannumber the of number answers of surveyselected respondents can be greater ƑĿijĺƥƙūIJîƑūƭŠēǮȡǦǦǦČƭƙƥūŞĚƑƙȦ respondentsMultiple choice to questionsselect multiple ask survey For more analysis of this matter, see the full IP Trend Monitor whothan answered.the number of survey respondents ~ƑijîŠĿǕîƥĿūŠƙDžĿƥĺĚDŽĚŠƥĺĚŕîƑijĚƙƥȡŞūƙƥēĿDŽĚƑƙĚT¡ƎūƑƥIJūŕĿūƙƥƭƑŠ answersrespondents from to a select list of multiplechoices. to~ƑijîŠĿǕîƥĿūŠƙDžĿƥĺĚDŽĚŠƥĺĚŕîƑijĚƙƥȡŞūƙƥēĿDŽĚƑƙĚT¡ƎūƑƥIJūŕĿūƙ the Dennemeyer Group for reliable protection, administrationƥƭƑŠ study 2021. answers from a list of choices. who answered. Most of our IP experts in the panel have andto the management Dennemeyer of Group their mostfor reliable valuable protection, assets. In administration addition to a Ranking questions ask survey multipleMost of our areas IP expertsof expertise. in the For panel this have fulland spectrum management of IP-related of their most legal valuableservices, assets.Dennemeyer In addition offers to IP a respondentsRanking questions to compare ask survey items ƎîƑƥĿČƭŕîƑîŠîŕNjƙĿƙȡDžĚĺîDŽĚǛŕƥĚƑĚēēūDžŠmultiple areas of expertise. For this strategyfull spectrum consulting, of IP-related comprehensive legal services, IP management Dennemeyer software, offers IP IP torespondents each other to by compare placing themitems allƎîƑƥĿČƭŕîƑîŠîŕNjƙĿƙȡDžĚĺîDŽĚǛŕƥĚƑĚēēūDžŠ answers by patent specialization. paymentstrategy consulting,services and comprehensive cutting-edge patentIP management search and software, analysis IP into ordereach otherof preference. by placing them all answers by patent specialization. tools.payment For servicesmore information, and cutting-edge visit dennemeyer.com patent search andor follow analysis the in order of preference. ČūŞƎîŠNjūŠgĿŠŒĚēTŠȦtools. For more information, visit dennemeyer.com or follow the 34 THE PATENT LAWYER CTC Legal Media CTC Legal Media ČūŞƎîŠNjūŠgĿŠŒĚēTŠȦ THE PATENT LAWYER 35 CTC Legal Media THE PATENT LAWYER 35

Dennemeyer_TPL53_v1_ONLINE.indd 34 12/04/2021 13:26 Dennemeyer_TPL53_v1_ONLINE.indd 35 12/04/2021 13:27 Dennemeyer_TPL53_v1_ONLINE.indd 35 12/04/2021 13:27 PATENTING IN CHINA 08/04/2021 09:21 37 THE PATENT LAWYER that, this method is not applied to any any to applied not is method this that, Résumé Partner Huang, Lunwei Lunwei Huang is a partner and senior patent attorney at Beijing Sanyou IP Agency Ltd., which is a full service IP law firm founded in 1986 in Beijing, P.R. China. With over 20 years’ experience in IP industry, he has a wide-ranging expertise, including patent prosecution, invalidation, reexamination, administrative and infringement litigation, patent search and analysis in the fields of semiconductor, telecommunication, electronics, and computer systems, etc. combining the target classification model and model classification the target combining in the it is commented this example, For for training the initial classification model to to model classification the initial training for model; classification a target obtain a form to model extraction feature the target classification the first for model mathematical task. Guidelines scenario, and is “abstract”, specific technical Article under patent a for eligible not is therefore Law. the Chinese Patent 25 of 2 Example neural a convolutional training for method A model, comprising: (CNN) network a CNN of parameters model initial obtaining model the initial wherein be trained, to model kernel convolution include an initial parameters matrix offset an initial layer, each convolution of matrix weight initial an layer, convolution each of offset and an initial connection layer the full of acquiring a layer; connection the full of vector images; training of plurality and a operation a convolution performing on each training maximum pooling operation and kernel convolution using the initial image by the each of for matrix offset the initial feature a first obtain to layers, convolution on the each of image each training image for layers; convolution the on the pooling operation a horizontal performing image on at each training image of first feature second a obtain to layer, convolution one least image on each each training image of feature vector a feature determining layer; convolution image based on the second each training of image on each each training image of feature each feature processing layer; convolution and the matrix weight based on the initial vector probability a class obtain to vector, offset initial a image; calculating each training of vector ” And thereby And thereby a achieves technical effect that complies of with law the nature, solution defined in the claim shall be as taken a technical solution and therefore be patent eligible. “

for Guidelines Guidelines does not Guidelines does not specially for inventions inventions for specially . In practice, the focus is put on is put on the focus . In practice, Guidelines The above provisions in the provisions The above Here I particularly want to note that, in the that, in the note to want I particularly Here CTC Legal Media a technical effect that complies with law of of law with that complies effect a technical be shall claim the in defined solution the nature, be and therefore solution as a technical taken eligible. patent obscure, be somewhat may Examination Patent the that in especially “technical”, is what to as definition clear a provide used throughout is frequently although this term the in a an element if say, that is to nature”, of “law it may nature, of with law claim has a connection own my in it put To “technical”. considered be whole a the elements in a claim as language, if than confined rather realm, objective the to extend can be this claim realm, in the subjective solution. defining a technical considered Specific examples judging principles for The above-introduced subject all to apply generally eligibility patent computer involving including inventions matters, program, inventions involving business method, business involving inventions program, intelligence, artificial involving inventions and circle. in IP recently topic which is a hot in the is a chapter there Meanwhile, Examination Patent for which with algorism and business rule, related specific examples of a number by is highlighted patent on their with detailed analysis along eligibility. patent in China, for practice examination patent algorism, such as those applications involving the algorism important for very AI, it is to related application to a specific technical be put into to The a patent. eligible for the invention make in the provided examples two following help to may Examination Patent Guidelines for and negative positive it from comprehend aspects respectively. 1 Example constructing a mathematical method for A model, comprising: model extraction feature initial an training samples of in training based on eigenvalues in and eigenvalues task a first classification at least one second of samples training feature a target obtain to task, classification the second wherein model, extraction tasks classification is different task classification processing task; the first classification to related the of sample in each training the eigenvalues based on respectively, task first classification obtain model, to extraction feature the target each training to corresponding eigenvalues eigenvalues sample; combining the extracted sample and a each training to corresponding sample, training an extracted form to value label Sanyou_TPL53_v2.indd 37

08/04/2021 09:21 Guidelines, Guidelines, CTC Legal Media Guidelines for Patent gives Examination Guidelines for Patent clearly Examination If the application passes the test, i.e., the i.e., the the application passes the test, If with respect application a patent In examining The According to these three clauses in the patent clauses in the patent these three to According Examination practice application a patent when examining In practice, Chinese the eligibility, patent to respect with a test the application to first subjects examiner law. the patent Article 25 of Article 5 and under Article 25, under examination for In particular, the even that, as long as a claim contains stipulates this claim cannot feature, one single technical Article under edibility patent from be excluded a strict for I think it is rather 25. In this respect, Article 25 rejection. an raise to Chinese examiner matters subject to pertain not does application Article 5 in patentability from excluded explicitly examiner the law, patent the 25 of Article and Article 2. under examination to proceeds whether i.e., Law, the Chinese Patent Article 2 of to technical pertains to a claimed subject matter a so-called follows solution, the examiner i.e., determines approach, “three-elements” solving is for claimed subject matter the whether referred to in items (4) of the preceding paragraph, the preceding (4) of in items to referred the claimed subject matter is patent eligible. is patent the claimed subject matter determine to how on provisions detailed further pertains to a claimed subject matter whether the to According solution. technical in a claim the features take shall the examiner the claimed and if consideration, whole into as a to nature of law utilizes whole solution as a achieves and thereby problem, a technical solve criteria are all met, the examiner determines that determines met, the examiner all are criteria a technical problem, adopts technical means, means, technical adopts problem, a technical these three If effect. a technical and achieves a patent may be granted in accordance with the in accordance be granted may a patent this Law”. of provisions solution technical pertains to that anything law, defined range in the exclusion fall and does not eligible. Article 25 is patent Article 5 and in For processes used in producing products products used in producing processes For ” As long as a claim contains one even single technical feature, this claim cannot be excluded from patent edibility under Article 25. Lunwei Huang “

THE PATENT LAWYER efore filing patent applications globally, applications globally, filing patent efore whether know importance to great it is of is patentable the pursued subject matter

successfully patenting emerging technology in the Chinese jurisdiction. patenting emerging technology successfully with experience based opinion, for Patent Examination, with experience Guidelines for Lunwei Huang, Partner at Beijing Sanyou IP Agency Ltd, discusses the IP Agency Ltd, discusses Partner at Beijing Sanyou Lunwei Huang, As China is emerging as a significant significant a as emerging is China As 36 access or utilization of the said genetic resources genetic said the of utilization or access law, which will come into effect as of June 1, 2021, as of effect come into will which law, Principles of patent eligibility 3 clauses in the Chinese are there Basically, In eligibility. with patent connected Law Patent Chinese patent of version the latest Article 2 of

jurisdictions, it would be beneficial for global patent global for be beneficial would it jurisdictions, B

patent eligibility in China eligibility patent Up-to-date information on information Up-to-date PATENTING IN CHINA PATENTING in the targeted jurisdiction, as filing a patent jurisdiction, as filing a patent in the targeted matter subject unpatentable an for application time and money. of waste end up in a will filings, and that the patent patent destination for other from somewhat China differs of system is in violation of any law or administrative administrative or law any violation of is in that “For Article 25, it is provided In regulation“. be right shall no patent the following, of any and rules (2) discoveries; (1) scientific granted: for methods (3) activities; mental for methods diseases; of the treatment for the diagnosis or (5) methods for varieties; and plant (4) animal and substances transformation nuclear transformation; nuclear of means by obtained for which is used primarily the design, and (6) the or color pattern, the identification of works. flat on printed the two combination of it is provided that “The term ‘invention’ refers to to refers ‘invention’ that “The term it is provided a product, to solution relating technical new any Article In thereof”. improvement an or a process be granted right shall patent “No 5, it is provided the to that is contrary invention-creation any for to detrimental is that or morality social or laws an for granted be will patent No interest. public the if on genetic resources based invention filers to have a knowledge of patent eligibility in eligibility patent of a knowledge have filers to some were there China. In addition, recently practice and patent Law changes in the Patent the patent to China, bringing something new of provide to trying is article This issue. eligibility in eligibility on patent information up-to-date China. Sanyou_TPL53_v2.indd 36 PATENTING IN CHINA

class error based on the class probability vector not questioned patent eligibility of this claim of each training image and the initial class of and the application was eventually granted. In each training image; adjusting the model contrast, the U.S. examiner rejected the patent “It is very parameters of the CNN model to be trained application, asserting this claim pertains to abstract based on the class error; further adjusting the concept. important model parameters based on adjusted model Seen as such, I’m of the opinion that China is for the parameters and the plurality of training images, somewhat more flexible than the U.S. in patent until the number of iterations reaches a preset eligibility. This flexibility is also reflected in other algorism to number; taking the model parameters obtained aspects, among which an example is computer be put into when the number of iterations reaches the program-related inventions. preset number as the model parameters for the Similar to U.S. standard, computer program a specifi c trained CNN model. per se is not patentable in China. However, there is a workaround. Under the patent examination technical For this example, it is commented in the practice in China, even if a computer program- application Guidelines that, this method is applied to a based invention is described purely as a software specific technical field of image processing, is in the specification, it is still allowed to claim an to make the for solving a technical problem, adopts technical apparatus, a so-called “virtual apparatus”, which is invention means that conform to law of nature, and achieves unique to China’s patent examination practice. technical effect, therefore pertains to technical As a cursory example, for a computer program eligible for solution defined in Article 2 of the Chinese which causes to execute a process A, a process Patent Law and is patent eligible. B and a process C, it is allowed to include an a patent. Interestingly, my experience is that such a apparatus claim in the claim set as long as the method defined in the above example 2 would program is applied to a specific technical scenario, likely be rejected in U.S. patent examination like: An apparatus comprising of: a device for practice, for pertaining to abstract concept. The process A, a device for process B, and a device below example 3 may further show the differences for process C. ” on patent eligibility between China and U.S. The Guidelines for Patent Examination makes it practice. clear that the devices in such an apparatus claim are considered as program modules, rather Example 3 than physical components. A method for evaluating exploitation value of Again, my experience is that such an a geological resource, comprising: apparatus claim will be considered claiming in acquiring geological parameters of a geological substance a computer program per se and structure in a plurality of designated dimensions, rejected in the U.S. patent examination practice. the geological parameters being for characterizing a state of the geological structure Conclusion in the designated dimensions; matching the The Chinese patent office is positively embracing geological parameters with a threshold for each the emerging technologies, such as artificial of the designated dimensions, respectively, to intelligence, internet, big data and block chain, obtain a characterization value of each of the in terms of patent eligibility, and I’m of the view designated dimensions; forming a that the Chinese patent office is quite friendly in characterization vector with characterization this respect. values of the designated dimensions, wherein Meanwhile, when applying patent in China for the threshold represents a minimum value of the an invention involving algorism, computer geological parameters in the designated program, business rule or something like that, it dimensions corresponding to a worthy is crucial that the invention as a whole has a geological resource, the worthy geological “technical” attribute to make it patent eligible. resource corresponding to the minimum value of the geological parameters belongs to the same category as the geological resource and has been exploited; and performing an evaluation Contact operation based on the characterization vector Beijing Sanyou Intellectual to obtain an evaluation value of the geological Property Agency Ltd. resource in the geological structure. 16th Fl. Block A, Corporate Square, No.35 Jinrong Street, Beijing, 100033, This claim comes from a real case but has P.R. China been appropriately adapted to be presented Tel: 86-10-88091921, 88091922 herein. The same claim has been filed with the [email protected] Chinese patent office and USPTO. In examination [email protected] by the Chinese patent office, the examiner has

38 THE PATENT LAWYER CTC Legal Media

Sanyou_TPL53_v2.indd 38 08/04/2021 09:21 Beijing Sanyou FP.indd 1 15/07/2020 13:54 CLAIMS AMENDMENT 08/04/2021 09:32 41 THE PATENT LAWYER relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused. the amendments are permitted under the Act. promptly-patentee to show reasonable grounds for delay. advantage from should have known of the need to amend the patent, which he knows or should have known should be amended, will not be allowed to amend. of the patentee and not with the merit of the invention. • The amendment will be allowed provided • The amendment needs to be sought • A patentee who seeks to obtain an unfair • The court is concerned with the conduct ” Scholarship Scheme-2008, run by Department of Science & Scholarship Scheme-2008, run by Department Technology (DST), Government of India. Suvarna holds membership of APAA and Bar Council of Delhi. Résumés Attorneys IP and Technology RNA, of Partner Managing Narula, Ranjan (INTA) Association Trademark International Member, and Board now its IP law firm, RNA, in 2004, and is Ranjan founded the specialist working has 27 years’ post qualification experience Managing Partner. He Ranjan IP and Technology issues. on contentious and non-contentious 1991 an advocate and patent attorney since has been practicing as IP of IP, IT, and Technology matters including handling a wide range and strategic advice on IP clearance, acquisition, management issues, has worked in-house and in private practice enforcement. Ranjan operations. international IP practice heading its India including a stint with to join the INTA, Board of Directors. In 2019, Ranjan was invited as a leading IP practitioner by various Ranjan has been ranked leaders, WTR 1000, IP Star (Managing IP), WIPR publications including Ranjan is regularly invited Who’s Who legal, Asia IP experts and others. commerce on IP issues. He to speak by Universities and chamber of on key IP issues that are has authored several articles and papers published by IP magazines and blogs. Attorneys and IP Technology RNA, of Associate Managing Pandey, Suvarna Professional qualifications • office. Registered Patent Agent with Indian Patent • Women Scientists Diploma in Intellectual Property Rights through • Masters in Biotechnology. • LL.B. a law graduate. Having been Suvarna is a registered patent agent and include patent in the practice for around 10 years, her specialties patentability and infringement searches, patent drafting, and providing proceedings at the opinions. She is also involved in patent prosecution proceedings. She is patent office, opposition, and other invalidity management of patent specialized in the development and strategic chemical, and portfolios in areas that include Biotechnology, advising clients on global pharmaceutical inventions. She has been patent strategy including PCT applications and national phases in designated countries. Suvarna has also authored various articles and delivered training sessions in the domain of Indian Patent practice. [email protected] The amendments thus were allowed. “

. These guidelines include: guidelines These . elaborative one and does v E.I. Du Pont, IPAB allowed Du E.I. v

specifies that Inventions which are should be allowed is upon the patentee and full disclosure must be made of all Solvay Fluor Gmbh Fluor Solvay Analysing the provisions under the Patents Act with • The onus to establish that amendment Section 3 (e) The court held that from the “conjoint reading held that from the “conjoint The court the present amendment The court found that IPAB further held that the Section 58 gave IPAB further held that the Section 58 gave CTC Legal Media material” was present in the other claims of the present in the other material” was application. it claims, other the with claims along two the of of the that the working is clearly discernible in named three processes invention is based on the amendment seeks to para 20 above and by process sensitizing the of scope the clarify material, namely mentioning some sensitizing lead to an altogether new tin. Thus, it does not the regarding objections the and invention the of scope the beyond being amendment inconsistent being and original specifications are meritless.” with the original claim is merely a clarificatory/ regard to amendments the IPAB held that “permissible amendment the (i) follows: as are amendments can only add an actual fact; (ii) the applicant is not allowed to introduce new matter into the speci- fication; and (iii) amendments must be of the nature power to the Court to allow the patentee to amend the patent in proceedings in which the validity of the patent was put in question and held that it was a wide discretion. It summarized that such Evans v Ltd Laboratories French & given in SmithKline 561 FSR [1989] Ltd Medical not alter the scope of the invention. The court further not alter the scope of the invention. The court Claim amendments to overcome 3(e): objections under section 3(d) and In under Sections 3(d) and 3(e) being non-patentable subject matter. Section 3(d) specifies that Inventions orenhancement of known efficacy of that substance usethe mere discovery of any new property or new known a of use mere the of or substance known a for known such unless apparatus or machine process, the applicant to amend claims based on the on the the applicant to amend claims based raised specification for overcoming objections only in the aggregation of the of the components thereof or a process for producing such substance” are not patentable. of a disclaimer, correction or an explanation.” discretion should be exercised as per guidelines clarified that, “at best even if the defendant’s defendant’s the if even best “at that, clarified objections are accepted, the said amendment also cannot which appears to be a disclaimer come in the way of permitting the amendment”. of a which are a “mere discovery of a new form the in result not does which substance known at process results in a new product or employs least one new reactant” are not patentable. “substance obtained by mere admixture resulting RNA_TPL53_v2.indd 41 08/04/2021 09:32 The The CTC Legal Media issued on October Prism Cement Ltd v Controller of patents and Prism Cement Ltd v Controller of patents IPAB considered that drawings were an integral The defendant challenged the validity of The defendant challenged the validity of friendly process. patentee’s claim on the basis of prior art documents. The plaintiff, in order to overcome the inventive citations referred art prior the over objection step by the defendants, amended its claim by by tin”, typically material, sensitizing “a inserting way of an explanation. The reference of “sensitising part of the specification and disclosure of the of the part of the specification and disclosure feature of the open channels in the drawings The sufficiently supported the amended claims. the board in this regard mentioned that, though in the word “open” is not explicitly mentioned the drawingsdescription, once the description and “channel the that clear is it together, read are (3)-(3)” as explicitly mentioned in the description, is in fact “open channel”. Therefore, if the appellant the has amended “channel” to “open channel”, amendment is well supported by the description when read with the drawings and if the adjective the claims, the in “channel” added to is ‘open’ scope of the word “channel” is narrowed. amendments were thus allowed. Implied Support from the claims: In Agc Flat Glass Europe Sa v Anand Mahajan And No. 593/2007], in CS (OS) 13519/2007 Ors. [ I.A. No. which was the case of patent infringement, the amendments claim the with dealt Court High Delhi plaintiff The plaintiff/patentee. by proposed had a patent (Indian patent no. 190380 ) on a product called ‘Mirror New Generation Ecological Mirrors’ which was a mirror without a copper or lead environmentally an through obtained was and layer Claims draw support from Claims draw support Drawings: In designs [OA/7/2016/PT/MUM] during 12 2020, the applicant amended claims, open prosecution, incorporating the features of The channel from the drawings and specification. only specification had the reference of channel and not for the open channel. The application appeal was refused by IPO following which the was filed by the applicant at the IPAB. Suvarna Pandey Ranjan Narula the proposed the proposed

requested during prosecution of a patent a of prosecution during requested application for overcoming the novelty laim amendments of Patents is often often is Patents of amendments laim THE PATENT LAWYER facts.

an overview on claims amendment.an overview draw on previous cases seen in Indian courts and IPAB to provide cases seen in Indian draw on previous Ranjan Narula and Suvarna Pandey, of RNA, Technology and IP Attorneys, RNA, Technology and IP and Suvarna Pandey, of Ranjan Narula • Disclaimer, correction, or explanation; • actual For the purpose of incorporation of The scope of the amendments are narrow, Section 57 to 59 of the Indian Patent Act Act Indian Patent 57 to 59 of the Section Claim amendments may include include may amendments Claim There is no guidelines or indicators from the cases recent the of few outlines post The stating that even what has been permitted must stating that even what has been permitted original have been disclosed in substance in the specification. In other words, and inventive step objections in view of the the of view in objections step inventive and prior art documents. of provides for claim amendments. The scope to an amendment provided in section 59 (1) is, that no extent, restrictive. The Section specifies of: amendment shall be made except by way amendment should be wholly within the scope the within wholly be should amendment of the original claims. amendments based on features of claims or on the basis of features of description. The acceptance of any claim amendments remains the discretion of the controller and is based on the facts of each matter. Practically, narrowing of claims by incorporating the claimed features from the originally filed claims is readily accepted by the Controller. However, it is the at controller the convince to challenging Indian Patent office to accept claim amendments where the features are borrowed from the description or drawings that accompany the specification. IPO, except the provisions laid in section 57 and 59, for the controller to assess the allowability orders the Thus, amendments. claim the of from IPAB or the courts dealing with such issue becomes an important precedent and act as a guiding principle. decided by the Intellectual Property Appellate Board (IPAB) and the Courts where the amendment of claims was permitted.

40 C

practice on Claims Amendment on Claims practice Understanding Indian patent Indian Understanding CLAIMS AMENDMENT CLAIMS RNA_TPL53_v2.indd 40 CLAIMS AMENDMENT

IPAB concluded that the amendments were To sum up, the amendment of claims play an Women in for demonstrating the technical advancement important role in addressing the commercial interest achieved due to the combination of elements. of the applicant as they evolve during the prosecution IPAB allowed the amendment holding that the “Elaborative of application. Further, in many cases the claim amendment was explanatory in nature. one and amendment is in line with what has been accepted and amended in other jurisdictions in particular EPO, IP Leadership Claim amendments on the basis does not JPO and USPTO. The question whether a particular of description: alter the claim draws support from the specification has been In Allegro Pharmaceuticals, LLC v Controller Of construed broadly in recent cases by the IPAB. The Celebrating achievements and continuing Patents And Designs [OA/12/2020/PT/CHN], the scope of the observation that the ambit of claim amendments patent application was refused by IPO under grounds under “clarification” and “explanation” as per of Section 59 rejecting the claim amendments. invention. section 59 shall not be taken in a restricted the empowerment of women The applicant appealed the refusal to the IPAB manner, rather suitable amendments protecting and restricted claim 1 to specific peptide compounds “novel and inventive” features of the Invention may within the scope of the pending claims by specifying be allowed augurs well for Patent eco system. the peptide as Glycine-Arginine-Glycine-Cysteic (Acid)-Threonine-Proline. The originally filed ” claims were related to method claims and the Contact composition claims, which were further amended RNA, Technology and IP Attorneys to the “compound” during examination. 401-402, 4th Floor, Suncity Success Tower, IPAB observed: “while we hold that “what is not Sector - 65, Golf Course Extension Road, claimed is disclaimed”. But looking at this case Gurgaon - 122 005, National Capital specifically, it is evident that the amendments Region (Haryana), India are aimed at incorporating actual facts as shown Tel: +91-124-4296999 above. We also hold that for the error in initial Fax: +91-124-2841144 drafting of the claims, no applicant should suffer [email protected] and therefore, considering as a special case, we www.rnaip.com are inclined to partially allow the claims”.

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RNA_TPL53_v2.indd 42 12/04/2021 15:37 Women in IP cover_TPL53_v2.indd 43 08/04/2021 09:35 This segment is dedicated to women working in the IP industry, providing a platform to share real accounts from rising women around the globe. In these interviews we will be discussing experiences, celebrating milestones and achievements, and putting forward ideas for advancing equality and diversity. I would not By providing a platform to share personal experiences we aim to continue the empowerment of women in the world of IP.

This segment is sponsored by Anaqua, who, like The Patent Lawyer, are passionate to continue go back to the empowerment of women. Anaquas’ sponsorship enables us to remove the boundaries and offer this opportunity to all women in the sector. We give special thanks to Anaqua for supporting this project and creating the opportunity for women to share their experiences, any other allowing us to learn from each other, to take inspiration, and for continuing the liberation of women in IP. Sponsored by patent

“It is our privilege to support this issue’s Women in IP segment for The Patent Lawyer Magazine. We look management forward to reading and learning more from other women in the industry and value their perspectives. At Anaqua, we expect and encourage different viewpoints and experiences to enable our team to see the world more software. clearly and embrace the opportunities around us. Diversity and inclusion foster an enriched, innovative, NINA HILL collaborative, and supportive work environment – a key component to a successful future. CORPORATE IP ADMINISTRATOR EMERSON ELECTRIC CO. Nancy Hegarty, Vice President of Marketing,” Anaqua If you would like the opportunity to share your experiences with Women in IP Leadership, would like to nominate an individual to be involved, or would like to learn more about sponsorship, please contact our Editor.

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Women in IP_reverse cover_TPL53v2.indd 44 08/04/2021 09:36 Anaqua FP.indd 1 08/04/2021 15:25 WOMEN IN IP LEADERSHIP

08/04/2021 12:46 47 THE PATENT LAWYER I have received several honours and accolades I have received several unnoticed due to the lack of equality and diversity new talent. Organisations should make conscious efforts to build greater gender parity at all levels and the unconscious biases should be done away with. Gender sensitisation should and pay equal and practice become a regular equal opportunity should become the rule, not only in theory but in practice. Competency of a their on based adjudged be should candidate Lundbeck, and Procter & Gamble. I also represent and Procter & Gamble. Lundbeck, the Reserve banking institution, India’s central of Delhi and before the High Court Bank of India of India in cases related to the Supreme Court financial companies. banking and non-banking and copyright In one of the trademark while representing infringement proceedings, suit was filed H. Lundbeck, an infringement & Research for against HAB Pharmaceuticals pharmaceutical the exporting and manufacturing Business Dispute Lawyers of 2020 by Asian Legal Frontline PCB Solutions, S3G Technology, Technology, PCB Solutions, S3G Frontline from my peers in the legal industry, the latest the industry, legal the in peers my from Top was for being recognized as one of the IP India. As 2020 came to a close, a leading 300 business media platform, iAM Strategy IP recognized me as one of the world’s leading IP’s strategists. Recently, the firm won in Asia inaugural India IP Awards for IP Prosecution that Firms of 2020. It is always gratifying to see your hard work is valued in the industry. And What are your future career aspirations? how will you work to achieve them? the I have come far from the day I started firm with my partners. Recently, we celebrated that 24 glorious years of LexOrbis. I can only say it took sheer determination to build a company myself see I reason, that for and scratch from coming the in LexOrbis in involved actively it is times. The legal industry is dynamic, and role or wrong to contain oneself to a particular changing the with evolving without set skill times. My position at the firm has allowed me to witness the nitty-gritty of a legal business. I aspire to learn, grow and to lead by example while continuously working towards a better future. What changes would you like to see in the IP industry regarding equality and diversity in the next five years? A major chunk of talented individuals are going in the IP sector. Moreover, the legal profession has been male-dominated for ages. With the changing times, I hope to see an industry which is inclusive, appreciative, and welcoming of product under a mark CIDRALEX which was CIDRALEX which was product under a mark Lundbeck’s well-known to deceptively similar “CIPRALEX”. and registered trademark ” I hope to seeI hope an industry is which inclusive, appreciative, and welcoming of new talent. “

Though, we were abreast with the international Though, we were abreast with the international With experience, I learnt the strength of learnt the strength of With experience, I Eventually, efforts started paying off, client Eventually, efforts started paying off, client But as a lawyer my achievements go beyond CTC Legal Media the creativity and innovation offered by the the by offered innovation and creativity the Hence, realm. IP international the in market Indian the dedicated I and fruition to came LexOrbis myself and my building a name for last 24 years was my passion for IP law firm. So, I’d say that it position. that led me to my current profession. In this profession,networking in the legal ideas with like-minded you must exchange engage, the larger your people. The more you only will it be enriching, acquaintance base. Not of pool larger a creating in will also help it but in legal events, attend clientele. Participate communicate, go out workshops and seminars, – you never know when of your comfort zone you may come across the biggest opportunity of your career. how What challenges have you faced? And have you overcome them? back, When I started the firm around 20 years country was spectrum of the the economic with undergoing a paradigm shift particularly of 1991, the introduction of New Economic Policy challenges in our initial days due to the complexities but the standards and applied that in our firm, not was operating were we which in ecosystem it then, Back model. service such a to geared and was also very difficult for us to motivate take to scientists and engineers young inspire way to up and pursue a career in law. The only consistency was difficulties these overcome and perseverance. sign-ups happened and now we have a diverse many include that clients 1500+ of base client multinational companies, 500 Fortune organisations, sector public corporations, small institutes, research government-funded and medium-sized enterprises and technology start-ups from a wide range of industries. What would you consider to be your greatest achievement in your career so far? 1997 with five personnel. I started LexOrbis in than more of strength a has the firm Today positively reflects believe that members. I 180 built have to proud am I as achievements my on a firm that provides jobs and opportunities to so many people, many of them young and up- and-coming. has IP in work My office. an of walls four the enabled me to act on some complex cases. including clients prominent some represent I and the consequent opening of the economy and the consequent opening of the economy severalfor multinational corporations. We faced and which were there in the administrative legislative structure at that time. Women in IP_Manisha Singh_v1.indd 47 08/04/2021 12:45 CTC Legal Media wanted to tap the potential of wanted to tap the potential of law firm with my partners. I law firm with my partners. I in on starting my own IP focused focused IP own my starting on in in the pros and cons, and zeroed explored all the possibilities, weighed and tried to make the most of it. I and tried to make the most of it. I the opportunities that came my way the opportunities that came my way where I am today. I always honoured where I am today. I always honoured My deliberate career choices led me to My deliberate career choices led me to advice from your experience? current position? And can you offer She is also known for her sharp litigation and She is also known for her sharp litigation How have you found the pathway to your matching the international standards. The general practice firm in which I was working was not IP specialised a having of idea the to open practice, complete with technical experts and happening were that transitions the ignoring was to decided I Therefore, realm. Indian IP the in start a boutique firm, specialising in IP, with my partners. of large global and domestic companies. Her Her companies. domestic and global large of latest keen interest in using and deploying the technology tools and processes has immensely service helped the firm to develop efficient IP delivery models and to provide best-in-class services. and involved has been She skills. negotiation successfully resolved various trademarks, passing and infringement design and copyright the off cases in short timeframes and out-of- applying manner, cost-efficient most of box strategies and thinking. She is a member as several international IP associations, such LESI, AIPLA, AIPPI, APAA, ECTA, FICPI, INTA, in the MARQUES and actively participates committee works of these organizations. What inspired your career? main the and lawyer as a career my started I motivation behind setting up an Intellectual Property (IP) law firm was the love for innovation and passion to protect intellectual property, ” I’d say that say I’d my it was passion for that IP law led me to current my position. “ portfolios anisha Singh is the founder and anisha Singh is the founder and Managing Partner of LexOrbis. She overviews and supervises all

THE PATENT LAWYER

An interview: inspirations, experiences, and ideas for equality. inspirations, experiences, An interview: practice groups at the firm. Manisha is known known practice groups at the firm. Manisha is on expertise deep her for respected and of forms all of enforcement and prosecution IP rights and for strategizing and managing 46

global patents, trademarks and designs M LexOrbis and Managing Partner, Partner, Managing and Manisha Singh: Founder Founder Singh: Manisha WOMEN IN IP LEADERSHIP IN IP WOMEN Women in IP_Manisha Singh_v1.indd 46 WOMEN IN IP LEADERSHIP WOMEN IN IP LEADERSHIP

skills, qualification, and talent instead of their roles and creating an environment which gender, race, or personal choices. promotes zero tolerance towards gender bias. LexOrbis is a fine example of diversity itself. Elisa Volpi: IP Legal Officer, Where The firm, which was founded in 1997 with five “ personnel, today has a people’s strength of people from 180 members (spread across three offices diverse within India), all from diverse backgrounds of IP Centrum India. I strongly believe in ‘unity in diversity’ and religions, I have successfully established an organization, An interview: inspirations, experiences, and ideas for equality race, where people from diverse religions, race, ethnicity, cultural backgrounds all work together ethnicity, in complete harmony. lisa obtained her Master’s in Law from passionate and enthusiastic. She really was able cultural I believe that we are developing a future pool the Università degli Studi di Milano and to transfer her passion for IP to me. Today, I feel of leaders that is representative of the diverse Ebegan her career as an IP Case Manager confident saying that she is the person who backgrounds cultures. An inclusive culture is the force which & Paralegal in for LegalVision. From inspired my career and taught me how to drives morale, engagement, and performance here, she has developed her skillset and her always work with passion and enthusiasm. all work and hence diversity has a strong influence in knowledge of IP and has recently joined IP together in sculpting culture. If you take age in count, we Centrum, as an IP Legal Officer, where she is How have you found the pathway to your have members as young as 21 and as senior as driven to grow her career further. current position? And can you offer advice complete 60 years! from your experience? To create an understanding of each other’s What inspired your career? I had a really great time working in Australia harmony. cultural set-ups, we organize events which When I was in law school, I enjoyed a lot of the however, unfortunately, it came time for me to range from celebration of all Indian festivals, courses I was following, but I never really had a Elisa Volpi leave the country, therefore the company I was annual outings and trips. At least once every course that made me decide what I wanted to working for, and move on. I came back to Europe, year all 180 members meet at one place and do after my degree. specifically, and, after having such a unwind together in informal surroundings away During my studies I have always travelled a positive experience in IP, I immediately started ” from the busy office life. 2020 restricted such lot: I studied for one year in the USA when I was looking for my next challenge in the IP area. movements for all, so we conducted online in high school, as well as six months in “I know as I got in contact with a few companies and unwinding sessions, where we played music, and eight months in Belgium while at university. I was offered a job with a company as an IP Project sang, played games and laughed together. Also for after my graduation I had a trip organized. well that my Leader, in the records Department. There I was Such events help people in understanding each I had planned to go to Australia for one year, as happiness able to deepen my knowledge in IP and develop other, respecting cross cultural beliefs and my sister was living there and was having a my professional skills to a further level, however systems and building a strong organization. great time. It was a perfect moment to leave comes from I wasn’t really feeling right in the working everything, fly to the other side of the world and the fact environment. I wasn’t as enthusiastic, as passionate How do you think the empowerment of look for my next challenge. and as proud as I was in my previous job. I loved women can be continued and expanded in I went to Sydney and I got in touch with a few that I am the job, but I wasn’t completely happy, so I started the IP sector? law firms. One law firm in particular, LegalVision, looking around and that’s when I came into When I started the law firm in the late 90s, India contacted me back informing me that they were surrounded contact with my current employer, IP Centrum. was new to the world of intellectual property. It looking for someone to help out in the IP Department. by people I had a few interviews with some people of took determination to build an inclusive culture I had completed one course at university on IP, IP Centrum and I immediately felt the click. So, where women were equally represented. There which I found fun, so I thought I could give it a who support now I’m working with them and I can say that I was a dearth of progressive opportunities for try and see where that could take me. My me and am really happy. First of all, I’m loving the job women in IP which enabled me to create such adventure at LegalVision began and, from then, that I’m doing and I’m again feeling very policies where everyone gets to explore their my interest and knowledge in IP started make me enthusiastic and happy to do my job. I know as full potential, irrespective of their gender. growing and growing. I was having a great time well that my happiness comes from the fact Almost 70% of LexOrbis’s workforce comprises and loving what I was doing. As a consequence, feel valued. that I am surrounded by people who support of women, and the policies at the firm are from halfway through my training, I was already me and make me feel valued. Also, our Director, all aimed to provide them with equal work working on my own and handling my own Simon de Banke, is very involved in everyone’s opportunities and a well-balanced life. In fact, cases. Everything was going great and it didn’t daily life at IP Centrum. He is a true leader who the firm’s office in Mumbai is run by an all- take me long before I realized that IP could is always there to support us, advise us and female workforce. have been the area where I wanted to develop ” push us to our limits, allowing us to grow both The IP sector can contribute to the empower- my professional future in. personally and professionally. ment of women by providing more opportunities, I was working with the team of IP lawyers, It’s been a bit of a weird pathway how I’ve got without attaching social stigmas. Companies however there was one of them, a fantastic woman, here, but it’s very interesting an inspiring to find should be accommodative of the many roles who helped me the most and was sort of a what I’ve been looking for. So, my advice would Sponsored by women get to play in their lives and therefore mentor for me. She was my go-to person every be to focus on two things; the first thing should should make such policies which help women time I had a specific question, an issue or a be finding the area that you love and want to maintain a work-life balance. We all must work doubt. She inspired me both as a professional develop yourself in and the second should be collectively in eradicating gender-based and as a person because not only she was great finding the right working environment for you - prejudices by seeing more women in leadership at what she was doing but she was also so one that has your same mindset, goals and

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Women in IP_Manisha Singh_v1.indd 48 08/04/2021 12:49 Women in IP_Elisa IP Centrum_v1.indd 49 08/04/2021 10:10 WOMEN IN IP LEADERSHIP WOMEN IN IP LEADERSHIP

values. I believe it’s essential to find a company how I would like my future to be like, however, Again, I definitely don’t believe that we’re that matches and appreciates you. up to now, I never ended up where a few years there, but I’m very confident that we are on a good before I thought I would be. path to move towards providing equal opportunities. “I like to What challenges have you faced? And how There are certainly a few things that I surely Hopefully that’s something that’s going to “The more have you overcome them? want in my future. First of all, I want to keep on happen more over the next few years. I can’t view my I’m still quite new, I haven’t worked for many working in an area that I love. I think this is essential predict what it’s going to be like, but I hope that I see news achievements years, but one main challenge that I had to face in order to live happy. At the moment I feel very all women will begin to get more and more about was having to leave my very first company. As I confident that I will keep working in Intellectual equal opportunities across the board. as how much said I was so involved, I was being given more Property. However, I am very curious to see what successful I’m growing and more responsibilities and, at the same time, the future holds. How do you think the empowerment of women, the I was having such a great time as well. I liked My career aspiration is to continue working in women can be continued and expanded in every year. the job, the people and the mindset of the firm, a company where I can try and make a difference. the IP sector? more I feel and I truly felt like I belonged there. I would love to be able to have an impact on the Something that I personally feel is that now, But my visa expired. I talked to our immigration progresses and successes of my company and with the power of social media, the more I see empowered lawyer at the firm and we went through options all of our clients. news about successful women, the more I feel to do more to perhaps extend my stay, however we came empowered to do more and achieve more. So, ” to the conclusion that, for that specific moment What changes would you like to see in the IP something that I do believe could be very and achieve in my life, it wasn’t feasible to stay. I was very industry regarding equality and diversity in important is sharing more news about women; more. young with limited experience. It was very hard the next five years? share more of women’s successes, women’s to break into realizing that I couldn’t continue This is a very delicate topic, but I believe that promotions, women’s achievements, share all working with them. It was very challenging, and we are living in a moment where things are the news - because the more women you see I tried to find my way around it but there was happening; many changes are occurring, and succeeding, the more you feel that you can do no option. we are moving towards equality and diversity. it as well! I think that sharing more news about So, I said, “alright, this is going to happen, I do believe that we’re doing very well but I women can be very empowering for all those ” there is no way for me to avoid it. So, let’s try and don’t believe that we are there yet. Many companies young women getting ready to take on their make the best out of the situation.” And that’s are doing really great, however I know way too future. what I did. I tried to enjoy every moment, learnt many others that are not. I’m quite positive Something else that can be very important, in as much as I could and developed fantastic about this topic. However, of course there’s still my opinion, is trying to reach out to those who relationships with incredible people. What was a lot that needs to be done, particularly in inspire you. If there’s someone you look up to, I important for me was to make sure I could go regards to the position of women in the working think it would be very empowering to reach out back home with an even bigger luggage (of environment. Women are becoming much to them, to let them know and to ask them how experiences) - that’s what we say in Italy. more integrated and recognized than they used their story went, how they did it and achieved to be, but there are still many companies that what they have achieved. I think reaching out can What would you consider to be your greatest don’t trust that, for example, women can give also be a very empowering type of relationship achievement in your career so far? the same type of work performance that a man because you have the very person telling you I’ve definitely had some great achievements could. Or that women would be able to cover how they got where they are, which is much while working on different cases, however at this certain positions, instead of a man. more personal than just seeing something on stage in my life, I like to view my achievements For example, I know that there is still a social media. I think this too could be a great as how much I’m growing every year. mindset in certain companies that think that a way to achieve continued empowerment. Every year I look back and I think about how woman shouldn’t be getting a certain position much I learnt, how much my knowledge just because one day she may want a family evolved and how much my skills improved. I also and therefore won’t be able to provide the type love to look back and see what relationships of commitment required for such position. I I built with amazing people. I consider a great think that’s still a very present thought. Actually, achievement having the possibility to work on not long ago, before I started working for my myself and grow in every way possible. I believe current company, I was doing a lot of interviews, it’s amazing to be able to just look back and I’m talking about 2020, and one interviewer think “That’s where I started. And this is where asked me a lot of personal questions, including I am now. I am proud of my progresses and I “do you have children and, if not, are you planning look forward to seeing my next ones”. on having some soon?” and I was shocked. How So, at the moment, I think that my greatest was that relevant to the job I was applying for, achievement is simply looking back and making or to the experience and skills I actually had for sure that I’m always a step further from where that job. But especially, how were they even I started. Keeping on learning and improving allowed to ask that question?! For what I know, yourself is a great way to grow as a person. that’s one of the questions that should definitely Sponsored by never be asked during an interview. Anyways, What are your future career aspirations? And that was the moment I realized I did not want to how will you work to achieve them? work for that company as their mindset and I always find it hard to answer questions about values didn’t seem to be aligned to what I was my future. I love making plans and visualizing looking for.

50 CTC Legal Media THE PATENT LAWYER CTC Legal Media THE PATENT LAWYER 51

Women in IP_Elisa IP Centrum_v1.indd 50 08/04/2021 10:11 Women in IP_Elisa IP Centrum_v1.indd 51 08/04/2021 12:51 TPL53_Rankings cover_v1:Layout 1 12/4/21 09:21 Page 53

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A comprehensive list of the 10 most well-respected law firms from the Americas and the Caribbean

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CTC Legal Media Rankings: Honduras Nicaragua Guatemala SPACE TO FILL South America To advertise contact In May/June 2021 issue of [email protected] The Patent Lawyer Magazine Aguilar Castillo Love Arias BLP Bufete Casco Bufete Mejía & Asociados Casco & Casco Dentons Muñoz Zacapa Bufete Melara & Asociados García & Bodán Melara y Asociados Alvarado y Asociados Arias Bendaña & Bendaña BLP Central Law Consortium Legal Dentons Muñoz García & Bodán Guy José Bendaña-Guerrero & Asociados LatinAlliance Arias BLP Carrillo & Asociados Central Law Consortium Legal Dentons Fernandez & Fernandez Lexincorp S.C. Mayora & Mayora, Palomo Abogados El Salvador Canada Costa Rica SPACE TO FILL

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Arias Central Law Consortium Legal De La Gasca & Cía Espino Nieto & Asociados EY Law García & Bodán LatinAlliance Lexincorp Romero Pineda & Asociados, Compañía de Abogados Belmore Neidrauer Bereskin & Parr Borden Ladner Gervais Goodmans Gowling WLG Norton Rose Fulbright Olser, Hoskin & Harcourt Ridout & Maybee Smart & Biggar Torys Throughout the next few pages, you will view a comprehensiveThroughout the next law firmslist of the 10 most well-respected Amercias from the alphabetical country and company order.and the Caribbean, in from a multifaceted methodology,Our focused list is derived industry research and feedback fromwhich uses months of esteemed connections around theour readers, clients, and world. All firms but are are ranked top 10 in their jurisdiction to avoid bias. displayed alphabetically 54 THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2021 RANKINGS PATENT CARIBBEAN & THE AMERICAS THE Arias BLP Colbs Estudio Legal Consortium Legal Dentons Muñoz Divimark Abogados Eproint EY Law Lexincorp MMonivation TPL53 rankings - Americas and Caribbean_v2.indd 54 THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2021 12/04/2021 16:50 57 THE PATENT LAWYER +52 442 2900290 Querétaro +52 81 81336000 Monterrey CDMX +52 55 52795400 Franchising [email protected] José Pablo Pérez Zea José Pablo Pérez CTC Legal Media TPL53 rankings - Americas and Caribbean_v3.indd 57 08/04/2021 15:57 CTC Legal Media

Rankings: Rankings: Mexico SPACE TO FILL UK & Europe UK To advertise contactTo advertise

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[email protected] The Patent Lawyer Magazine The Patent In July/August 2021 issue of In July/August Arochi & Lindner Basham Ringe y Correa Becerril Coca & Becerril Calderón & De La Sierra Dumont Goodrich Riquelme y Asociados OLIVARES Panamericana de Patentes y Marcas Santamarina y Steta Uhthoff Gómez Vega & Uhthoff THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2021 RANKINGS PATENT CARIBBEAN & THE AMERICAS THE 56 TPL53 rankings - Americas and Caribbean_v2.indd 56 THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2021 THE AMERICAS & CARIBBEAN PATENT RANKINGS 2021 Panama

Alfaro, Ferrer & Ramírez Arias Fábrega & Fábrega Benedetti Cl Abogados Cedeno & Mendez CLD Legal Estudio Benedetti Guinard & Noriega Icaza González-Ruiz & Alemán Jiménez Molino & Moreno Morgan & Morgan

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Ballard Spahr Cantor Colburn Desmaraisc Fenwick & West Finnegan, Henderson, Farabow, Garrett & Dunner Fish & Richardson Foley & Lardner Kirkland & Ellis Fueling innovation, Oblon, McClelland, Maier & Neustadt Sterne, Kessler, Goldstein & Fox one idea at a time

USA North America - West Coast Ballard Spahr is proud to be named a TOP 10 North Coast – Cooley Durie Tangri East Coast USA IP firm by Gibson, DunnSPACE & Drutcher TO FILL The Patent Lawyer Magazine. Jones Day Knobbe Martens Olson & Bear Mckool Smith Morrison & Foerster Orrick, Herrington & Sutcliffe Paul Hastings Quinn Emanuel Urquhart & Sullivan

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TPL53 rankings - Americas and Caribbean_v2.indd 58 08/04/2021 15:14 TPL53 rankings - Americas and Caribbean_v2.indd 59 08/04/2021 15:14 LIMITATION PROCEDURE 08/04/2021 13:00 61 of the of Ph.D., Patent Patent Ph.D., THE PATENT LAWYER Ph.D., Ph.D., ebrowska-Kucharzyk, ex tunc). within the prescribed time time within the prescribed limited patent description. Therefore, the Therefore, description. patent limited Résumés Magdalena Tagowska, attorney, Head of Patent Department at Patent of Head attorney, Patpol Ż Agnieszka at Patpol Attorney Patent After the request for a patent a patent for request the After proceedings, to submit explanations and to to and explanations submit to proceedings, to and additions corrections relevant make thus examination process will pretty much much pretty will process examination application that during patent to correspond will limitation patent the Moreover, prosecution. patent the of date filing the from effect an take application (i.e. limitation is filed, an examiner will will limitation is filed, an examiner the newly examine to be appointed claims. patent of version submitted issuing the decision on patent Before the request may limitation, the examiner holder, patent limit discontinuance the pain of under ” Any Any limitation of a patent was virtually impossible. “ of the Industrial Property Property the Industrial of 1 Therefore, before February 2020, any patent patent 2020, any February before Therefore, CTC Legal Media Law. According to this provision, a patent holder holder a patent this provision, to According Law. claims. patent amending by patent the limit can limitation can be filed a patent for request A in however patent, granted any to respect with an or invalidation an in are that patents of case certain timeframe opposition proceedings in the patents In case of be observed. needs to the for the request proceedings invalidation the day be filed up to limitation can only patent prior to the day on which the first oral proceedings proceedings which the first oral on the day to prior the opposition notice, in case of whereas held, are be only can limitation patent the for request the holder which the patent on day the to filed prior opposition to with respect his position presents notice. claims including an independent claim and independent claim and claims including an on that specific claims that depend dependent a waive possible to not was it Therefore, claim. to thereof the scope limiting in a part by patent dependentthe in presented specific embodiments to refused have simply would The PPO claims. without claim independent an of waiver a record The rationale its dependent claims. of all waving the by as presented behind such an approach, Department, a body that the Registry was PPO, record cannot registers, patent administers that some only to related part in a patent of waiver a an independent consisting of a group claims from the dependent claims, since this claim and all patent the examine qualified to is not body course, such a justification limitation on merits. Of Newly introduced limitation procedure noticed finally have the law-makers Fortunately, a limitation procedure need for the long-existing patent a means for introduced and in Poland Art. 89 limitation as seems completely without any grounds grounds any without seems completely the already of examination further because any be unnecessary. claims seems to granted the record to be sufficient would it Moreover, register, claims in the patent patent waived examination. substantive without any a waiving by be achieved limitation could only an independent claims consisting of of group which most its dependent claims, claim and all a to way in any be helpful not would the time of of an introduction Therefore, holder. patent long- was limitation patent to related provisions welcomed. and very awaited Patpol_TPL53_v5.indd 61 12/04/2021 09:32 motion. motion. CTC Legal Media The above-described practice had an even had an even practice The above-described According to the PPO, a partial waiver could waiver a partial the PPO, to According Another option that was potentially available available potentially was that option Another effect, i.e., the partial waver waver i.e., the partial an ex nunc effect, have only patent the when date the on effect an take would Furthermore, such a statement. makes holder as one could working not was this option register to refusing was as the PPO expect, waiver. patent on partial the statement some of a set of to directed was it if only be recorded more detrimental effect. The adjunctive board in board The adjunctive effect. detrimental more did not proceedings an invalidation/opposition of validity the examine separately to bother more to directed which are dependent claims, unless the invention, specific embodiments of requested motion the invalidation/opposition after Therefore, in-part. said patent of invalidation an of decided on invalidity board the adjunctive invalidated claim, it automatically independent verifying of the dependent claims, instead all within the scope falling inventions the whether the patentability the dependent claims meet all of reversed be might practice this Hopefully, criteria. Court Administrative Supreme a recent by that the PPO indicated which basically decision, independent only not examine should separately the dependent claims. However, claims, but also all implement this court will the PPO how as to be seen. to yet remains verdict was limitation holders seeking patent patent to who holder patent A patent. a of waiver partial a the asked have could its patent a part of waives in waiver patent partial such a register PPO to would course, this option Of register. the patent was not allowed to inspect an amended or a limited or inspect an amended to allowed not was be in not would claims, since this patent of version with such an invalidation/opposition line ebrowska-Kucharzyk, of Patpol,ebrowska-Kucharzyk, of Agnieszka Żebrowska- Kucharzyk Magdalena Tagowska opposition or invalidation opposition or

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i.e., a procedure enabling restriction of the the of enabling restriction i.e., a procedure decision after protection the patent scope of n February of 2020 a patent limitation procedure, 2020 a patent of n February benefits it lends over the prior options. benefits it lends over the consider the recent introduction of limitation procedure in Poland and theconsider the recent introduction Magdalena Tagowska and Agnieszka Ż Magdalena Tagowska and on patent grant is issued, either as a part of an as a part of is issued, either grant on patent during an invalidation/opposition proceedings proceedings during an invalidation/opposition 60 opposition proceedings is strictly determined by determined is strictly opposition proceedings Therefore, request. an invalidation the scope of validity the patent examining board the adjunctive behind such an approach, as presented by the PPO, by as presented behind such an approach, validity patent the which to extent the that was an or invalidation an during examined is limitation procedure were introduced to the Polish the to introduced were procedure limitation in enacted (amendment Law Property Industrial on force into which entered 2019, October was patent a of limitation any 2020), February 27 or during invalidation Even impossible. virtually claim amendment any opposition proceedings was scope the patent in limitation of resulting by considered not was it rather or allowed, not the examining was that board the adjunctive the rationale In general, validity. patent issue of Options for a patent limitation before the IPL amendment the amendments concerning patent Before (IPL) also imposes certain procedural restrictions restrictions (IPL) also imposes certain procedural the partes inter in case of proceedings. during opposition and patent invalidation proceedings. invalidation during opposition and patent procedure limitation the patent way the Moreover, Law Property Industrial the in been introduced has practice in the Polish Patent Office (PPO), especially Office (PPO), Patent in the Polish practice opposition/invalidation procedure or as a stand- or procedure opposition/invalidation the in to has been introduced alone procedure, a such that fact A system. legal patent Polish earlier available not was limitation procedure specific very a of in development has resulted I Industrial Property Law Property Industrial awaited procedure into the into procedure awaited – implementation of a long- a of implementation – Patent limitation in PolandPatent LIMITATION PROCEDURE LIMITATION Patpol_TPL53_v6.indd 60 LIMITATION PROCEDURE

if the patent limitation and invalidation are examined jointly. Another example includes a situation, wherein the patent invalidation request is directed to specific compounds covered by a Markush formula in a patent claim. If the patent holder is willing to limit the patent claims by eliminating these specific compounds, then such a claim amendment would also result in a rather speedy conclusion of the invalidation proceedings. In other cases, it should be assumed that a validity examination of a limited version of patent claims will not speed up the invalidation or opposition proceedings because it will be necessary to examine not only validity of the granted claims, but also validity of one or more limited versions of patent claims submitted by the patent holder. Of course, such a procedure, wherein a limited version of patent claims is examined during an invalidation or opposition proceedings, is standard in other jurisdictions or even during the opposition proceedings at the European Patent Office. However, by introduction of this specific requirement for a party to substantiate a request for a joint examination In a case when the request for limitation is of a patent limitation and a patent validity, the filed with respect to a patent that is undergoing law-maker apparently has intentionally restricted an invalidation or an opposition procedure, any a further possibility of claim limitation. A person of the parties to these proceedings may request A patent limiting a patent in a distinct procedure will not that the limitation proceedings are combined with “ be aware what kind of arguments will be raised holder can the invalidation or the opposition proceedings for with respect to the patent validity against the the joint examination. However, the proceedings limit the patent in its limited form. Moreover, once the can only be combined if such joint examination patent limitation is granted in a separate procedure, will expedite or facilitate the invalidation or the patent by the patent holder will not be allowed to make opposition proceedings. Therefore, even if the amending any further amendments to the claims after the patent’s validity is challenged in the opposition opposition or invalidation proceedings are resumed. or the invalidation proceedings, it does not patent Therefore, even though the newly-introduced mean that a limited version of the patent claims claims. provisions establishing patent limitation procedure will be automatically examined during these were long awaited, many questions still remain proceedings. On the contrary, a party requesting to be answered. Among them, the most vital is such joint examination of a patent validity and how the PPO will apply them in the invalidation limitation will be required to substantiate such a or opposition proceedings. Due to the COVID-19 request, by providing arguments that such joint ” pandemic many invalidation and opposition examination will bring an end to these proceedings proceedings were put on hold in 2020. Therefore, faster. Moreover, if the proceedings are not combined so far there has been a limited possibility to see for a joint examination, an invalidation or an opposition how recently added Art. 891 of the Industrial proceedings will be stayed until the matter of patent Property Law could be used and how the practice limitation is resolved in separate proceedings. with that respect would develop. However, we At first glance, it seems that a joint examination expect that many patent holders will make use of a patent limitation and a patent invalidation of this patent limitation tool in the near future. should always make these proceedings more efficient. However, a more thorough analyses of the newly introduced provisions on patent limitation Contact suggest otherwise. There are specific circumstances PATPOL – European and Polish Patent under which the patent limitation can accelerate a and Trade Mark Attorneys patent invalidation or patent opposition proceedings. 162J, Nowoursynowska Str., For example, it applies to a situation in which a 02-776 Warsaw, POLAND partial patent invalidation is requested. If the Tel: +48 22 546 91 00 patent holder is willing to limit the patent in a [email protected] manner corresponding to invalidation request, then www.patpol.pl the invalidation proceedings will be accelerated

62 THE PATENT LAWYER CTC Legal Media

Patpol_TPL53_v5.indd 62 08/04/2021 13:00 PatPol FP.indd 1 12/04/2021 09:55 SUBSTANTIVE EXAMINATION

08/04/2021 13:16 65 THE PATENT LAWYER Résumé Engineer Patent Moreira, Sérgio Vítor Vítor Sérgio Moreira is a Patent Engineer at Inventa International. His solid background in Chemical Engineering enables him to take care of all patent procedures in several areas of expertise, such as pharmaceutical, oil, petrochemical, and biotech industries. Despite of forbidding the granting of patents patents of granting the forbidding of Despite maintain the seeks to APL the if Therefore, pharmaceutical products and medicines and medicines products pharmaceutical On consumption”. animal human or for intended processes or hand, the apparatus the other patentable. are manufacture in their employed medicines, and products pharmaceutical claiming a substance of claim (“Use a Swiss-type way, same according could be accepted Office (EPO), Patent APL. the of interpretation a literal to the and medicines off products pharmaceutical is not wording its current patentability, grid of regarding open, gaps letting several updated, bear shall we wherein the method and use claims, is nowadays products known uses of new to referred several jurisdictions, but it is an exception to to exception but it is an jurisdictions, several and chemical- “food Angola, namely, in patentability or composition X for the manufacture of a a of the manufacture for X composition or application Z”), therapeutic medicament for the European by accepted which is no longer applications patent of in mind that the number patent the pharmaceutical of share a relevant applications. APL does not provide rules referred to “methods to rules referred provide does not APL by body animal the human or of treatment for methods and diagnostic therapy or surgery which body”, animal on the human or practiced to according patentability from excluded are that it is possible Therefore, EPC. of Article 53 (c) the of treatment as “method of a claim drafted X” composition a substance or disease Z by APL. In the the by acceptable be literally would ” APL comprises a gap regarding clarity of claims, may which limit the of power action of a patent examiner to raise objections. “

The APL defines in its Article 4(d) a specific a specific Article 4(d) defines in its APL The APL and EPC share a common exception to to a common exception and EPC share APL efers to the identification of subject matter which subject matter identification of the to efers nventions would be contrary to the “ordre public” public” the “ordre to be contrary would nventions CTC Legal Media is effectively claimed by the applicant. The EPC The EPC the applicant. by claimed is effectively in its common principle very defines a explicitly define the “The claims shall wherein Article 84, shall They is sought. protection which for matter the by and concise and be supported be clear is silent about this relevant APL The description”. of the requisite regarding and matter, legal in examiner point that a patent the only “clarity”, 5 Article on based be would raise could Angola necessary is it which of accordance in APL, (f) of of description and comprehensive clear file “a to be such that it may invention the the subject of skill ordinary a person having carried out by proper be a not would although this in the art”, is clearly APL Article 5 (f) of because approach APL Therefore, the description. to restricted which claims, of clarity comprises a gap regarding in its although EPC inserts a disclaim morality, or not shall Article 53 (a), stating that “exploitation because it merely be so contrary be deemed to all some or in regulation or law by prohibited is States”. the Contracting of in protected typically is which matter, subject may limit the power of action of a patent examiner patent a of action of power the limit may of exploitation when the commercial patentability i to raise objections regarding broad, ambiguous broad, objections regarding raise to claims. and unclear patentability to Exceptions examiner a patent by followed step The next r Regarding the patentability. from is excluded relevant several and EPC have APL this topic, different very lead to which may differences, examiner. patent a by conclusions Inventa_TPL53_v3.indd 65

08/04/2021 13:16 CTC Legal Media Angola establishes the provisions regarding regarding Angola establishes the provisions Cooperation Treaty (PCT) since 2007. Moreover, Moreover, 2007. since (PCT) Treaty Cooperation Trade World the of Angola is a member Agreement the of and consequently Organization, Substantive examination steps invention the Identifying during work starts his usually examiner patent A studying the by examination a substantive what subject matter identify to claims, in order On Trade-Related Aspects Of Intellectual Intellectual Of Aspects Trade-Related On Rights(TRIPS) since 1996. Property means by Property Industrial of the protection 28, February of Law Property the Industrial of Patent hand, the European 1992. On the other which is in (EPC) is in its 16th edition, Convention 1st, 2020. July since force Vítor Sérgio Moreira

THE PATENT LAWYER his study aims to provide an approach of of an approach provide aims to his study examiner a patent by followed the topics application is processed when a patent

to the European Patent Convention. steps of substantive examination in Angolan Patent law with comparisonsteps of substantive examination Vítor Sérgio Moreira, Patent Engineer at Inventa International, specifics theVítor Sérgio Moreira, Patent Angola is a Member State of World Intellectual Intellectual World of State Angola is a Member by a Patent Office during the substantive during the substantive Office a Patent by Angolan the of context a in phase, examination 64 Property Organization (WIPO) since 1985, a member since (WIPO) Organization Property Industrial of the Protection the Paris Union for of Patent the of member a and 2007, since Property Patent Law (APL). As a matter of comparison, the of a matter As (APL). Law Patent the to according evaluated are same topics we wherein (EPC), Convention Patent European two the between on the main differences focus frameworks. legal T Angolan Patent Law Patent Angolan according to the to according of patent applications patent of Substantive examination examination Substantive SUBSTANTIVE EXAMINATION SUBSTANTIVE Inventa_TPL53_v3.indd 64 SUBSTANTIVE EXAMINATION COMPLEMENTARY TERM CERTIFICATES

Regarding the evaluation of exceptions to The objectives of the EPC Article 54 (3) are patentability, an examination of a patent application related to avoiding a plurality of granted patents in the pharmaceutical technical field, according for the very same claimed invention and, of Complementary term to the APL and the EPC, would probably result in “Some patent course, safeguard the first applicant to have the quite different outcomes. Moreover, as previously exclusive rights in the Member States of the mentioned, IAPI does not maintain in the internet applications European Patent Office. a public database, wherein the patent applications of residents On the other hand, the APL does not contain certificates for patents under filed in Angola could be consulted. Therefore, any provision regarding specific identification of the gaps in the substantive examinations may meet “P documents”. Moreover, the PCT procedures procedures regarding this critical technical field the novelty guide a patent examiner to identify in the international the new Mexican Federal may result in several uncertainties for the public, search report, documents filed before the date including the patent applicants, due to the lack requirement that limits the state of art, but published later, of easily accessible public information. according to although said documents are normally not used for the further examination during the international Law for the Protection Prior art searches the APL, phase, but they might become pertinent at a later The patent examiner shall primarily identify prior national stage. So, a patent examiner in Angola art documents published before the date that even if the receives this information from the PCT, but the limits the state of art, namely the filing date of inventions APL does not rule this topic, resulting is an of Industrial Property the patent application or, where applicable, the increased level of uncertainty regarding this matter. priority date, in order to further evaluate if the were invention meets the patentability criteria of published Conclusions José Pablo Pérez Zea and Efrain Olmedo Velazquez, of Santamarina+Steta, novelty and inventive step. The APL may be out of date in terms of some legal detail the patent protection extension process in light of a recent Supreme Considering the previous published documents, earlier. aspects pertinent to the substantive examination the APL defines a grace period in number 4 of of patent applications. As a matter of example, Court ruling in Mexico. its Article 3, wherein publications committed by the APL seeks to limit the granting of patent the applicant within the six months preceding applications related to pharmaceutical products the filing date or, where applicable, the priority and medicines, but let some ways of uncertainty or many patent offices around the world, Mexico and Canada Agreement (USMCA) had date of the patent application shall not be taken ” for therapeutic methods and use claims. Regarding who deal with technically complex patent substituted NAFTA, and just 20 days before the into consideration for objections related to lack the identification of the state of art documents, Fapplications, with lack of resources and/ new Federal Law for the Protection of Industrial of novelty. The EPC has similar provisions in its which are used for assessing if an invention is or personnel, it sometimes takes more than five The life of Property (FLPIP) came into force. Article 55, but the previous publication by the novel and inventive, the APL does not rule the years to grant a patent. The Mexican Patent “ In this case, the plaintiff filed the original patent a patent applicant must have happened “at an official, or relevant issue of “P documents”, which may result Office is taking huge steps to become more applications before the USPTO in January 1999, officially recognized, international exhibition falling in a plurality of patents granted referred to the very efficient but currently it is not the exception. should be of which, twelve months later, became a PCT within the terms of the Convention on international same invention for different owners. Alternatively, To address this situation, a recent Supreme international application published in July 2000. exhibitions signed at Paris on 22 November 1928 this gap also may be used in favor of the applicant, Court ruling1 becomes useful to understand the no less than This application entered the national phase in and last revised on 30 November 1972”. which may file several patent applications in Angola problem that delays from the Patent Office may 17 years Mexico in July 2001 and was not granted until The easier conditions of the grace period regarding the same invention and obtaining several bring to a patent owner. It is important to consider established by the APL are positive, when we patents, wherein the exclusive right to exploit said that this case was filed when the Industrial from its 1 Mexico’s Supreme Court. ADR 257/2020. Bayer take into consideration the unfamiliarity of the invention could be extended for several months. Property Law (IPL) and the North America Free granting. Healthcare, LLC. Angolan public with the patent system. Therefore, Therefore, there are some opportunities for Trade Agreement (NAFTA) where in force, but it some patent applications of residents may meet updating the Angolan patent system, including was finally resolved when the new United States the novelty requirement according to the APL, publishing guidelines for examination and creating even if the inventions were published earlier. internet databases, which would allow the public Besides identifying the prior art documents to easily check the filed patent applications and ” published before the date that limits the state of their status. art, a patent examiner, following the EPC provisions, must consider the Article 54 (3), which states that the content of European patent applications Contact as filed, which have the dates of filing prior to Inventa International the date that limits the state of art of the Alameda dos Oceanos, 41, application under examination, and which were K21 Parque das Nações, published on or after that date, shall be 1990-207 Lisbon, considered as comprised in the state of the art Tel: (+351) 213 150 970/1 (“P documents”). [email protected] www.inventa.africa

66 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 67

Inventa_TPL53_v3.indd 66 08/04/2021 13:24 Santamarina_TPL53_v3.indd 67 08/04/2021 12:56 COMPLEMENTARY TERM CERTIFICATES COMPLEMENTARY TERM CERTIFICATES

July 2006, providing its owner with an effective within the rights of the Mexican State to unreasonable delays, but it also sets forth The FLPIP will provide the Mexican Patent enforcement term of 14 and half years. materialize that option into law, or not. exceptions to such terms which were not Office with important elements to acquire an In light of the above, the patent owner requested Furthermore, the Court considered on the considered on the Supreme Court’s ruling, such increased budget, which should translate to a the Mexican Patent Office compensation on the matter of equality, that there was no violation to as the periods of time attributable to the more efficient operation, making delays in I2 take Article 23. A action patent shall duration of the patent due to the time that the Mexican Constitution since, given the applicant. patent prosecution a rare exception. In the “have an non extendable was lost during the prosecution, which was only particularities and complexity of the patent In light of the above, the principles of meantime, the complementary certificates- interm all of 20 cases years, counted imputable to the Patent Office. This request was proceeding, it was impossible for the legislature complimentary terms set forth in the USMCA even if a positive move- will rarely provide an from the day of the application’s filing and will denied and, against it, the plaintiff brought a to consider each and all types of cases and were printed into the new FLPIP. These set forth extension as considerable as the one resolved where third be subject to the payment constitutional challenge before a district judge establish different terms of evaluation for each by the Supreme Court. that a patent will still have a non-extendable partiesof the government fees. and the ruling was later reviewed by the Supreme kind of patent application. Therefore, the generic twenty year term from the date of its It is clear that the reasoning behind the ruling 3 ARTICLE 1709: Patents: 12. Court. term of five years from the beginning of the acknowledged application, and, only in the made by the Supreme Court, based on a 17 year areEach Partyusing shall provide a Among the many arguments presented substantive examination to resolve the granting event that during its prosecution there are rule, in some cases will provide a more positive KETTLEterm of protection in for by the plaintiff, it is worth underlining the of denial of an application could not be unreasonable delays directly attributable to the result to a patent applicant. However, this criterion patents of at least 20 years construction of two specific ones: (i) Article 23 of unconstitutional. Patent Office that produce an application term will only be relevant for patents granted or applied from the date of filing or 17 anyyears fromof theour date of the IPL2 contradicts NAFTA’s Article 1709-123 Nonetheless, the reasoning by the Court was of more than five years from its filing to its granting, for before November 15, 2020, and therefore it is markets,grant. A Party may extend since it does not provide for the possibility to thoroughly related with the broadness of will it be possible to obtain a complementary likely that we will see a disparity in the protection the term of patent compensate the protection which was reduced NAFTA’s Article 1709. 12, since it resolved that certificate. With this reform, the simple delay is terms of those patents complemented under whateverprotection, in appropriate by a delay of the Patent Office, and (ii) Article 23 regardless of the term that the authority not enough as the text of the law is focused on the Supreme Court criterion and those cases, to compensate for of the IPL violates the Mexican Constitution decided was adequate, the life of a patent could how unreasonable the delay was. complemented under the FLPIP rules. theirdelays caused by regulatory approval José Pablo Pérez Zea because it harms the principles of equality and never be less than 17 years. This new chapter of the law uses specific This will most likely bring constitutional and sizeprocesses. and legal certainty, due to the fact that an unprecise The Supreme Court resolved that the definitions which depart from the Supreme conventional challenges against the reasoning 4 Article 20.44: Patent Term regulation of terms for resolving a patent appropriate interpretation of Article 23 of the IPL Court’s ruling, as it considers that the application of the Patent Office to determine the term to howeverAdjustment for application, allows the possibility of reduced in connection to NAFTA´s Article 1709, must be date is that on which the application is presented complement a patent. It is therefore convenient Unreasonable Granting protection for more complex patents, when it is that the life of a patent cannot be more than to the Patent Office, for national applications, or that the ruling by the Supreme Court was issued theyAuthority are Delays. clear that patent protection should be equal for twenty years from the date of application, but it that on which the application entered the so closely to this major reform to the Mexican using3. If there are it. unreasonable any patent owner. cannot be less than 17 years if the date of its national phase, for international applications, Intellectual Property Law. delays in a Party’s When reviewing this challenge, the Supreme granting is being considered. That is why, when and therefore, the five-year delay will only be The ruling cannot be directly translated into issuance of a patent, Court considered that the language of NAFTA’s a delay on the proceeding is made obvious, the counted from that date. these new challenges, as it is based on the that Party shall provide the means to, and at Article 1709 set forth, rather than an obligation for term of protection should be extended in order This complementary certificate will provide interpretation of NAFTA and the previous IP Law. ” the request of the Mexico, the possibility to consider compensation. to compensate such a delay and respect the life the same rights as the patent and will be in Nonetheless, the criterion will influence the patent owner shall, Therefore, the fact that Article 23 of the IPL did of the patent, which as reiterated by the Court, force on the day after the patent would lapse. Federal Courts on the interpretation of the adjust the term of the not consider such an option, could not be should not be less than 17 years. The certificate will not be automatic; instead, it USMCA and the FLPIP, mainly on the fact that patent to compensate Efrain Olmedo Velazquez considered as unconventional as it was well On this particular ruling, the Court assumed will have to be requested by the applicant on a the Supreme Court considered and reiterated for those delays. jurisdiction and ruled, not only in the matter very specific time frame, which is two months that when compensating for the delays of the 4. For the purposes of this of constitutionality, but also on the specific after the notice of allowance is received, filing a Patent Office, the life of a patent should be of no Article, an unreasonable delay at challenge to the denial of the extension by the writ of arguments and the payment of a less than 17 years from its granting. least shall include a Résumés Patent Office. It ordered it to issue a new response, government fee. delay in the issuance of José Pablo Pérez Zea is the partner in charge of the IP practice in acknowledging such compensation, with a The patent will be complemented with the a patent of more than Santamarina + Steta, with more than 30 years of experience advising patent life of 17 years, as opposed to the 14 and days that the application was in fact delayed. five years from the clients in the protection of their intellectual property rights, including a half years that were originally granted. This means that delays that are attributable to date of filing of the entertainment, licensing, franchising, , trademarks, patents, The ruling of the Court will not automatically the applicant will not be considered, such as the application in the and unfair competition. He has also counseled a great number of extend any patent term to 17 years from its granting, additional months used to comply with the territory of the Party, or three years after a national and foreign companies in several contentious conflicts. He but will be an extremely useful precedent to requirements of the Patent Office on the request for examination holds a law degree and a Master’s degree in IP from Universidad achieve that extension for any patent granted, or substantive examination. Acts of god or force of the application has Anahuac in Mexico City. He is a member of INTA, AIPLA, FICPI, ASIPI, applied for before November 5, 2020, which is majeure will not be considered as unreasonable been made, whichever AIPPI and a member of the board of the Mexican Intellectual Property the date on which the FLPIP entered into force. delays, nor will the period from the reception of is later. A Party may Association (AMPPI). The FLPIP rules will be effective exclusively the application to the favorable decision on the exclude, from the for applications filed after it entered into force, form examination. determination of those Efrain Olmedo Velazquez is the associate leading the IP litigation and it includes a clear possibility to extend the After the petition for a complementary delays, periods of time that do not occur practice in Santamarina + Steta. He has more than 10 years of term of protection for a patent which prosecution certification is received, the Patent Office will Contact during the processing professional experience specialized in intellectual property litigation was unreasonably delayed by the Patent Office. subtract any term that, as a matter of law, is not Santamarina+Steta of, or the examination and consulting, representing both actors and defendants in This extension is possible pursuant to Articles considered unreasonable from the originally Campos Elíseos 345, 2nd and 3rd floors of, the patent proceedings for infringement, revocation and nullity of trademark, 126 to 136 of the FLPIP, which follow Article proposed delay, and if there is a delay, a Chapultepec Polanco application by the patent, design and copyright registrations, from the Trademark Office 20.444 of the USMCA. Unlike NAFTA, the USMCA certificate will be granted that will cover one Miguel Hidalgo, 11560 granting authority; to the Supreme Court. He also represents clients in the entertainment mandates the signatory States to establish a day for each two days of unreasonable delay. Mexico City, Mexico periods of time that are industry. He holds a law degree from Universidad Nacional Autónoma proceeding to adjust the term of the patent to Even if the possibility of a complementary Tel: +52 55 5279.5400 not directly attributable to the granting de México (UNAM) and an LLM from the University of Michigan. He is a compensate for an unreasonable delay of the certificate is now included in the law, it is worth [email protected] authority; as well as member of INTA, AIPLA and was the coordinator of AMPPI’s Copyright authority. noting that it allows the Patent Office several [email protected] periods of time that are committee. It is also worth noting that the text of the exceptions that may not provide the users of the www.s-s.mx attributable to the USMCA provides clear scenarios to consider as system the desired results. patent applicant.

68 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 69

Santamarina_TPL53_v3.indd 68 08/04/2021 12:56 Santamarina_TPL53_v3.indd 69 08/04/2021 12:56 GCC PATENTS 08/04/2021 10:53 71 THE PATENT LAWYER abstract (in Arabic and English); and Arabic (in abstract the UAE up to and legalized applicant consulate); and Arabic into translated inventor(s), consulate); the UAE up to legalized the from 90 days (within document(s) Arabic); into translated filing date, applications). Arabic in (in abstract drawings, required translation); with English • specifications, claims, copies of Three • drawings, claims, required Specification, • the by (executed Attorney of Power • the by deed (executed Assignment • the priority of Certified copies • PCT application no. (for PCT There are no restrictions on type of claim, claim, on type of no restrictions are There are documents standard The following claim dependency or the number of claims, nor claims, nor of the number or claim dependency large a for fees official additional any there is claims. of number the by regulated are Arabia in Saudi Patents Integrated of Layout-Designs on Patents, Law Designs and Industrial Varieties, Plant Circuits, Law). (Saudi Patent patent obtain applications to for required registry: patent local the before protection ” Munir’s IP Practice encompasses advising on all aspects of Felicity has worked with numerous well-known regional clients and Résumés Suboh, Partner Munir the Intellectual Property Munir is a Partner of BSA and founder of in the field, Munir Practice. With more than 15 years’ experience represents clients across a wide range of matters in a contentious, non-contentious and commercial context. He is described in legal directories as a “quick thinking lawyer” who is “thorough and thoughtful in everything he does”. Munir was named as a MENA Super 50 Lawyer in 2021. Intellectual Property, including trademarks, patents, know how, trade secrets and copyright. Recent noteworthy assignments have included multi-jurisdictional strategic patent advice, concerning medical instruments in COVID-19. Hammond, Associate Felicity Felicity joined BSA Ahmad Bin Hezeem & Associates LLP as an Associate in the Intellectual Property Department. Felicity has been working in the Middle East since 2016 and has expertise in both trademark and patent prosecution, in addition to several prominent, cross-jurisdictional contentious IP matters. has been part of creating their portfolio and enforcement strategies. Felicity has also worked with many high-profile international clients who have sought to enforce their rights in the Middle East. Felicity holds an LL.B in Law from the University of Liverpool in the United Kingdom.. The departure from the GCC Patent initiative has left many questions for existing and prospective applicants. “

e In addition, the GCC patent system was not not was system patent the GCC In addition, basic the and Charter the GCC of spirit the In a the implementation of That said, thus far, The following standard documents are required required documents are standard The following For now, we await further update and and update further await we now, For CTC Legal Media would be managed by the independent courts independent courts the by be managed would country. GCC concerned the in nor Treaty Cooperation Patent the part of and this made the Paris Convention, of signatory seeking applicants for option it a less popular through protection worldwide straightforward periods. priority the respective for the What is the future GCC Patent? processing for time frames current of view In the GCC the annuities, and paying patents at least 2040. In the continue until shall Patent GCC the whether question the meantime, enforceable be practically continue to will patent unclear. remains the GCC throughout will Council the Supreme the GCC, of objectives integration deeper advocate continue to countries. However, the member between a is there law, unitary a advocating of instead GCC existing the amend will they that possibility similar a unifying law, of be more to Law Patent Mark Law. Trade GCC the current to countries member the GCC across unifying law GCC The without challenges. been has not into enter to envisioned was Mark Law Trade countries, harmonizing the the GCC in all force in each country. systems trademark national countries completing the legal all Despite and implement the law approve to formalities countries the member of all not nationally, continue and Law Mark Trade GCC the recognise clarification from the Supreme Council and advis Council the Supreme clarification from Current standard requirements for National Applications Arab United Emirates Law Federal by regulated are in the UAE Patents No Law Federal 2002 (as amended by of 17 No 2006). 31 of protection patent obtain to applications for registry: patent local the before those concerned about the viability of the GCC GCC the of viability those concerned about the the national with filing under proceed to patent in protection patent The country. each of route as era a new go through will offices local GCC in investment massive require offices many the improve to infrastructure prosecution patent The current process. protection patent set out below. which are of requirements to use and rely on the national legislation legislation the national on use and rely to that the expect therefore We instead. provisions any of practically, or implementation, legally for place take not would law Patent GCC unified some time still. BSA_TPL53_v2.indd 71 08/04/2021 10:52 CTC Legal Media The GCC patent granted an inventor unified unified an inventor granted patent The GCC Given the uncertainty surrounding the future the future surrounding the uncertainty Given is subject to a uniform GCC legislation, which is legislation, GCC a uniform is subject to countries. the member of in all in force actively legislation Patent the GCC in practice, However, countries the GCC of upon in several relied is not own their to refer always would and each country system court GCC unified no Furthermore, laws. objections any a result, As established. ever was the be managed by would the patent to disputes patent and any Arabia authorities in Saudi Why was the GCC Patent discontinued? indication any given has not Council The Supreme Patent. GCC the of up wind the to led what of several faced patent the GCC in practice However, many countries for the GCC challenges across in each member treaty of Rectification years. many raised formalities other amongst state protection patent this regional whether questions on there a result, As not. or be enforceable would within the courts where instances known are Patent. a GCC enforce to refused have GCC countries and theoretically the GCC across protection Existing GCC Patents patents any communications, latest the to According be processed will 2021 January 5 to filed prior Patent GCC the and normal as examined and grants. patent provide to continue will Office clarification further this is subject to However, will applications pending the possible is it and We party. a third to outsourced or be transferred on this point. update further await of the circumstances and patent, the GCC of be advisable for it may and grant, examination to patent GCC a filed recently have who those a file and strategy existing their reconsider GCC the individual application in each of patent and delay unnecessary any avoid countries, to protection. grant to possible complications Felicity Hammond Munir Suboh n 5 January 2021, the Supreme Council Council 2021, the Supreme January n 5 meeting and its annual held the GCC of discontinue the issued its decision to

THE PATENT LAWYER the individual GCC countries via a Paris countries GCC the individual within the application Convention months; or twelve period of priority the countries under GCC the individual national Treaty Cooperation Patent month within a thirty phase entry, period. priority 1. application in each of filing a patent By each of application in 2. filing a national By

requirements now in play for the GCC countries. requirements now in play GCC patent with a breakdown of the standard national application GCC patent with a breakdown Associates LLP provide an overview of the discontinuation of the of the discontinuation of provide an overview Associates LLP Munir Suboh and Felicity Hammond, of BSA Ahmad Bin Hezeem & of BSA Ahmad Bin Hezeem and Felicity Hammond, Munir Suboh The departure from the GCC Patent initiative initiative Patent the GCC from The departure GCC Patent, with the announcement that the that the with the announcement Patent, GCC any accept no longer will Office Patent GCC 2021. January 6 applications as of patent new has in , Office, located Patent The GCC 1998 since applications patent receiving been a implement and grant established to was and protection patent of form harmonized The main idea of countries. the GCC throughout a holder(s) of the give is to system Patent GCC legal the benefit of patents granted GCC 70 The impending dissolvement of the GCC Patent Patent the GCC of The impending dissolvement in applications patent new all that means Office 2021 January 5 countries filed after the GCC must be filed either: Initial Implications has left many questions for existing and prospective prospective and existing questions for many has left relatively which remain of applicants, the majority substantiation by further subject to and unclear Council. the Supreme from one single regional application, which which application, one single regional from and admini- the financial reduced significantly on applicants. It should also burden strative GCC the in patents acquire to patentees urge support the innovative to more and invest region principles. and creativity protection of patent rights in all the GCC countries the GCC rights in all patent of protection O

Patent: what next? Patent: The end of the GCC the of end The GCC PATENTS GCC BSA_TPL53_v2.indd 70 GCC PATENTS GCC PATENTS

for applications to obtain patent protection applicant is not the inventor; before the local patent registry: • Certified copy of the priority document, • Title of the patent and summary if claiming priority; description of the invention; • PCT details in case of national phase. It is apparent • Specification, claims, required drawings, “ abstract in (in Arabic with English It is noteworthy that the requirements for that each translation); are subject to review and further • Power of Attorney duly legalized up to substantiation from the Kuwaiti Patent Office. of the GCC the Bahraini Consulate or Apostilled; The country that will be most affected by the countries • An Extract from the Commercial end of the GCC patent is Kuwait. For many years, Register or a Certificate of Incorporation protection in Kuwait could only be obtained via apply very duly legalized as above or Apostilled; a GCC patent office. Prior to this, applicants similar • Deed of assignment signed by both would simply file the application in Kuwait and parties duly legalized as above or obtain a filing receipt. No examination would requirements Apostilled, if the applicant is not the take place in Kuwait and there was no system inventor; for administering grants or paying annuities. for patent • Certified copy of the priority document There has not been any formal announcement protection. duly legalized as above or Apostilled, if on Kuwait’s position following the end of the claiming priority. GCC Patent, but it is likely we will soon see a development in this area and Kuwait will establish procedures so that it may grant its first The Qatari Patent Law (No. 30 of 2006) was national patent. ” enacted in 2006. The following standard documents are required In conclusion, it is apparent that each of the for applications to obtain patent protection GCC countries apply very similar requirements before the local patent registry: for patent protection and arrangements. This • Title of patent (in Arabic and English); should continue to improve and ultimately ease • Specification, claims, required drawings, the process of local application in each member abstract in (in Arabic with English countries. Having said this, and in light of recent translation); development with GCC patent registry, we • Power of Attorney duly legalized up to strongly urge all patent holders to review their the Consulate of Qatar; patent protection strategy in the GCC countries • Certified copy of the Extract from the and obtain a strategic advice on what options Commercial Register or a Certificate of they can exercise. This should impact the • Power of Attorney (executed by the • Three copies of specifications, claims, Incorporation; existing patent applications, granted patents as applicant and legalized up to the Saudi required drawings, abstract in (in Arabic • Deed of assignment duly legalized as well as the new inventions that will require consulate); with English translation); above, if the applicant is not the patent protection in the future. The • Assignment deed (executed by the • Power of Attorney duly legalized up to inventor; “ inventor(s) and legalized up to the Saudi the Consulate of or Apostilled; • Copy of international publication (if question consulate); • Simple copy of Certificate of published) and search report (for whether • Certified copies of the priority incorporation or Extract from the national phase application); document(s) (within 90 days from the Commercial register; • Certified Priority documents, if priority is the GCC filing date, translated into Arabic); • Letters patent (home registration to be claimed. patent will • PCT application no. (for PCT certificate) legalized up to the Consulate applications). of Oman; Kuwait continue • Deed of assignment signed by both Law No. 4 of 1962 regulates the registration of The legalized inventor’s assignment(s) and parties duly legalized as above or patents and industrial models in Kuwait. to be Power of Attorney must be submitted within Apostilled, if the applicant is not the The following standard documents are practically three months from the application filing date. As inventor; required for applications to obtain patent with the UAE, there are no restrictions on type • Certified copy of the priority document, protection before the local patent registry: Contact enforceable of claim, claim dependency or the number of if claiming priority; • Three copies of specifications, claims, BSA Ahmed Bin Hezeem & throughout claims, nor is there any additional fees for a • International publication sheet and required drawings, abstract in (in Arabic Associates LLC large number of claims. search report (if filing through PCT); with English translation); Level 6, Building 3 the GCC • PCT Preliminary Examination Report. • Power of Attorney duly legalized up to Dubai International Financial Centre (DIFC) Oman the Consulate of Kuwait; The Gate District, Dubai remains Patents in Oman are regulated by the Law of • An Extract from the Commercial unclear. Industrial Property 67/2008. Patents in Bahrain are regulated by Patents and Register or a Certificate of Incorporation Tel: +971 4 528 5555 The following standard documents are required Utility Models Law No. 1 of 2004, as amended by duly legalized as above; [email protected] for applications to obtain patent protection Law 14 of 2006. • Deed of assignment signed by both www.Bsabh.com before the local patent registry: The following standard documents are required parties duly legalized as above, if the

72 THE PATENT” LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 73

BSA_TPL53_v2.indd 72 08/04/2021 10:53 BSA_TPL53_v2.indd 73 08/04/2021 10:53 TRENDS IN BLOCKCHAIN 08/04/2021 10:57 75 te its efficiency. its efficiency. te THE PATENT LAWYER record. record. 5 . It was reported in the news that that in the news reported was . It 6 Lately, it was in the news that hospitals in hospitals in that in the news was it Lately, with co-operative approach of four hospitals, hospitals, four of approach with co-operative it service provider suppliers and a software two a medical by taken the route trace is possible to and hence authentica device Switzerland have trialled orders of medical medical of trialled orders have Switzerland successfully were and via Blockchain devices processed resulting in permanent traceability for every every for in permanent traceability resulting managed well to That is contributing device. provenance Shikha Singh, a Managing Associate at LexOrbis Associate Shikha Singh, a Managing Shikha is an advocate registered with the Bar Council of India, as well as a patent agent. She has a professional degree in Biotechnology. She regularly advises clients on IP strategy and portfolio management. Ms. Singh has in- depth knowledge of patent law and regulatory framework and extensive experience in patent filing, drafting, prosecution and advisory matters – especially in the biotechnology, nanotechnology, biopharmaceuticals, immunology, polymer sciences, chemical, pharmaceutical and start-up fields. She has delivered talks at various forums on patent law practice. Résumés LexOrbis of and Managing Partner Manisha Singh, founder groups at the firm. Manisha overviews and supervises all practice IP laws and practices were Starting her career at the time when Indian to India’s obligations to undergoing substantial changes pursuant played an important and comply with the TRIPS agreement, Manisha policy and law makers on crucial role in advising and apprising Indian and enforcement global standards associated with IP administrative for her deep expertise on systems. Manisha is known and respected of IP rights and for prosecution and enforcement of all forms trademarks, and designs strategizing and managing global patents, Her keen interest in portfolios of large global and domestic companies. and processes has using and deploying latest technology tools immensely helped the firm to develop efficient IP service delivery for known also is She services. best-in-the-class provide to and models her sharp litigation and negotiation skills for both IP and non-IP litigations and dispute resolution. She represents the Reserve Bank of India, India’s central banking institution before the High Court of Delhi and the Supreme Court of India in cases related to banking and non- banking financial companies in addition to a large number of intellectual property litigations with a focus on patent litigations covering all technical fields – particularly pharmaceuticals, telecommunications, and mechanics. She has been involved and successfully resolved various trademarks, copyright and design infringement and passing off cases in shortest possible time and in thinking. and strategies out-of-box applying manner cost-efficient most ability to trace origin and ability to trace origin and confirm the authenticity of the object/article/device being traded. https://www.med-tech news.com/news/hospitals- trial-blockchain-tracking- of-medical-devices/ Technology and Intellectual Property Rights, JIPR, 2019

B.P.Singh et.al. -Blockchain Provenance refers to the 4 5 6

enables the machines/devices to to machines/devices the enables medical devices could be made easy. The The could be made easy. devices medical This technology can be utilized to keep permanent keep to can be utilized This technology The term “transactions” used herein include include used herein “transactions” The term With this technology precautionary upkeep upkeep precautionary technology this With Figure 1 above represents working of Blockchain Blockchain of working represents 1 above Figure technology CTC Legal Media Figure 1 for maintaining it without violating regulatory issues. violating regulatory without maintaining it for their competitors, private blockchain platform platform blockchain private competitors, their such use cases. to prudent seems more data to related transaction transaction, money sciences/healthcare life In the case of etc. chain, clinical it can be data in supply industry, etc. data research data, results in a simple manner: Applications in Life Sciences sciences and field of is a broad Lifesciences includes biomedical, genomics, pharmaceuticals, sciences. of branches related more and many Sector: Biomedical blockchain of finds ample consumption This Sector which devices medical instance, For technology. amplified by the increasing speed of technologies speed of the increasing amplified by processes. and transmission storage data traditional of records of the design, development, production, production, development, the design, of records all as well as devices medical of distribution and is the information suppliers. Once the parts from changed, be cannot it blockchain a to submitted like 5G, 6G etc., that are going to transform transform going to that are 5G, 6G etc., like for technologies of with the raise health-care adequately not if etc., surgeries instance remote by provided is alternative The safeguarded. is the data/information whereby Blockchain, and immutable protected, cryptographically by be provided cannot Said advantages private. collect, store, and transmit patient-specific data patient-specific and transmit collect, store, such protect to this technology utilize may be that the data may It is likely information. during captured or the device from hacked situation as is the case in every transmission, and transmitted stored data is centrally where to dare cannot We data store. central another to a pacemaker happen if would what imagine that during equipment at a hospital medical even or is the result The thought of is hacked. a surgery be And it could even terrifying. very in itself share their operating data with those responsible with those responsible data operating their share LexOrbis_TPL53_v3.indd 75 08/04/2021 10:57 . 5 CTC Legal Media A narrower form of Public of form narrower A Considering that most of the companies want want the companies Considering that most of the network of nodes follow and enforce through through and enforce nodes follow of the network transaction any before consensus-based majority network. the blockchain onto can be accepted Classification/types: since the has evolved technology The blockchain types and hence different its inception of year of There in the industry. exist now technology blockchain Technologies Blockchain types of four mainly are Federated Hybrid and Public, Private, namely is open network This kind of Public Blockchain: to public and anyone interested to participate participate to interested public and anyone to can get involved. in the transaction Blockchain: Private as consortium (also known blockchain Federated A to approach is an innovative blockchains) such where needs organizations’ solving public and private both require organisations blockchain, In a Federated features. blockchain made are the organizations some aspects of Unlike private. remain while others public, blockchain this type of blockchain, private nature. holds a decentralized still technology from and protected secret be kept the data to Blockchain is Private Blockchain. They are ideal ideal are They Blockchain. is Private Blockchain or company held privately a at using for internal for it use to wants that organization use-cases. is a Hybrid blockchain Hybrid Blockchain: public blockchain. and a private combination of Blockchain: Federated contains specific information such as a financial such as a financial contains specific information on the based information other or transaction the chain. Once a block is added to purpose of it is nearly (users) the participants the chain by it (immutable). mutate impossible to Smart Contracts: the blockchain establish “how” Smart contracts are contracts Smart other. each with work nodes establish rules that code that amount of a small EXPRESSION OF INTEREST (EOI) for Making use of Artificial Intelligence, Blockchain, IoT and other latest technologies in Patent Processing system of IPO No. IPO/POD/EOI/2018/1 Dated: 02/08/2018. the Next Wave of Progress in Life Sciences- Cognizant; Accenture life sciences E-Request for Carly Guenther et.al.- Blockchain: A Catalyst for 1 2 3 Shikha Singh Manisha Singh . Also, 1-2 . 3-4

THE PATENT LAWYER ince the dawn of “Blockchain”, also referred also “Blockchain”, of dawn the ince or Technology Ledger Distributed as to and industry researchers many DLT,

and genomics industries. and genomics al, the pharmaceutical, medic the use of blockchain in breakdown of tive provide an informa and Shikha Singh, of LexOrbis, Manisha Singh We, in this article, will explore the emerging the emerging explore will in this article, We, It has the following basic features: It has the following trends in applications of Blockchain in various various in Blockchain in applications of trends the examine and Lifesciences of disciplines in securing which might be faced challenges in Rights (IPRs) protection Property Intellectual India. experts have studied and speculated its its studied and speculated have experts Real Fintech, industries like various in potential This etc. Sector Insurance Healthcare, Estates, gain traction has and is continuing to technology its immutable, reliable, the globe due to across 74 A Chain of Blocks: Chain of A chain a sequential largely are Blockchains code that includes (blocks) of boxes small of block on data. Each protected cryptographically the block that to the chain includes a reference it and each block the chain before added to was Blockchain is a shared (decentralized), encrypted, (decentralized), is a shared Blockchain which technology ledger immutable, distributed that can transactions of non-repudiation offers intermediary a trusted with the absence of work In network. distributed peer-to-peer, a across that is a technology Blockchain words, simpler share to (so- called nodes) computers allows the without assets exchange and information intermediary. centralized a of need First, let’s learn some basics about Blockchain What it is?

secured, efficient and federated features federated efficient and secured, as such organizations, Government Indian the Department Industry, & Commerce of Ministry and Trade and Internal Industry, of Promotion for its potentials Office, has identified Indian Patent this the benefits of availing and preferred intelligence artificial including other technology (AI) based technologies S

in life sciences in life Trends of Blockchain Blockchain of Trends TRENDS IN BLOCKCHAIN TRENDS LexOrbis_TPL53_v3.indd 74 TRENDS IN BLOCKCHAIN TRENDS IN BLOCKCHAIN

The parties involved were the Cantonal Hospital Genomic drugs open the world of genetic data Medical devices, it was noticed that China and Winterthur, the Cantonal Hospital Baden, the for providing an apposite diagnosis, prognosis, US are major filers. University Children’s Hospital Zurich and the and appropriate treatment of several genetic Figure 4 represents data of blockchain based Spitalregion Fürstenland Toggenburg, Anandic “Once a diseases. Using genetic engineering/genomic patent applications filed in the field of genomics. System Medical, ITRIS Medical and Xatena AG. techniques, an individual’s genetic information Figure 5 represent data of blockchain based This project was conducted as a trial. block is is profiled to determine their susceptibility to a patent applications filed in the field of medical added to the disease and appropriate treatment options for devices. Pharmaceutical Sector their personalized medicine. However, the increase The above indicates that Indian applicants The importance of blockchain in pharmaceutical chain by the in genetic data also comes with some problems need to focus on this area of technology for industries is majorly for drug discovery, records participants such as data storage/management, access, obtaining patents so that contribution of India management, provenance, handling patient sensitive security, and privacy. Blockchain comes here for towards providing Patent Protection can be data, disintermediation, and internal process (users) it rescue in a similar way as described supra. acknowledged globally. management1. By genomic mapping, scientists/researchers The technology finds its use in each of is nearly can gain a better understanding of the mechanisms Patentability of blockchain related invention the above-mentioned use cases. The major impossible involved in thousands of these rare diseases in India: advantages which one may speculate from and common medical conditions. Poor access Since it is basically an algorithm, Blockchain implementation of such technology is reduction to mutate it. and non-interplay of such data has always been technology will face challenge pertaining to in counterfeited drugs, timely auditing and and continues to be, a problem in healthcare. Section 3 (k) of the Patents Act, 197011w, if claimed streaming of the non-valid batches, obviating Sometimes, genomic data does not have a as lone. However, if it is worked with a hardware regulatory delay, ensuring reputation in market, 77 https://indianexpress.https://indianexpress. clearly identified owner, rendering such information then such system is patent eligible subject and most importantly saving lives. com/article/business/com/article/business/ susceptible to random sharing, creating privacy matter in India. Based on similar concept, drug-procurement-via- Big Pharma companies like Pfizer, Amgen and ” issues for the actual owner. This large volume of Figure 3 medical device which will be based on blockchain-at-govt- Sanofi are working to leverage to blockchain available genetic data, in the absence of strong hospitals-in-one-hospitals-in-one- technology. Use cases range from storing patient year-7224433/year-7224433/ systems for security and authentication, poses Blockchain technology in general and Blockchain Figure 4 health data safely, to speeding up clinical trials, 88 Ijazul Ijazul HaqHaq et.et. al.al. ,, 20182018 genuine concerns which can be addressed by based medical devices. and ultimately lowering drug development costs. 99 “Realizing “Realizing thethe potentialpotential ofof the blockchain technology. Gladly, as per recent piece in the Indian Express7 blockchain technologies in In the year 2018, Mapmygenome, an Indian Worldwide: on March 12, 2021, it has been reported that state genomics Halil Ibrahim based molecular diagnostics company has A basic search conducted on Derwent Innovation Ozercan,1 Atalay Mert and central government hospitals may be able Ozercan,1 Atalay Mert tied up with Digital DNAtix Ltd, an -based reveals that most of the blockchain related Ileri,2Ileri,2 ErmanErman Ayday,1Ayday,1 andand to get an assurance of the authenticity and blockchain genetics company to give a fillip to patent applications are filed by Alibaba Group Can Alkan1 1Department of quality of medicines procured in bulk using the Computer Engineering, the way people can use their personal genome Holding Ltd. followed by IBM, Accenture, 10 Government e-Marketplace (GeM), as GeM aims Bilkent University, Ankara data in healthcare . Microsoft etc. to use blockchain technology in ensuring 06800, Turkey; Intellectual Property Rights safeguards such The graph in Figure 3 depicts top filers in the traceability of these medicines from the point of 2Department2Department ofof ElectricalElectrical innovative technology and hence enhance domain of blockchain technology: supply to their final destination. Engineering and Computer development and evolution of the same. In a simple search on World Intellectual Science, Massachusetts A brief representation of how blockchain Science, Massachusetts Property Organisation (WIPO) Portal related to InstituteInstitute ofof Technology,Technology, works in pharma industry is provided in Figure 28. Patent filing trends: blockchain based inventions in Genomics and Cambridge, Massachusetts 02139, USA. India: Genomics: 1010 https://www.https://www. As per an Article dated May 17, 20194, it was Figure 5 The researchers/scientists and scientific institutes thehindubusinessline.thehindubusinessline. shown that nearly 112 patent applications were are also leveraging Blockchain technology for com/news/indian-israeli-com/news/indian-israeli- published till that date and contribution of Indian enhancing resource-sharing (both computation firms-in-blockchain-tech-firms-in-blockchain-tech- applicants was approximately 39 in number. tie-up-for-genetics/ and storage), facilitate decentralized data distribution, tie-up-for-genetics/ Guessing that most of the application were filed article24622745.ecearticle24622745.ece promote collaborative work, and provide in the field of electronics/computer sciences, 1111 https://ipindia.gov.in/https://ipindia.gov.in/ 9 genome privacy . writereaddata/Portal/ it seems a decent number. However, scope of IPOAct/1_31_1_patent-act-IPOAct/1_31_1_patent-act- improvement certainly exists in terms of increase Figure 2 1970-11march2015.pdf1970-11march2015.pdf in number of patent applications related to

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Blockchain technology will be considered adopt blockchain technology for monitoring patentable. In any event grant of patent medical devices for the improved and efficient protection will depend on qualification of other treatment. patentability criteria such as novelty, inventive “The thought step and industrial applicability. Method of identifying biomarkers related to a of the rare disease utilizing blockchain based genomic result is in tools and developing a drug for treatment of the same can be considered patentable. However, itself very there are possibilities that such subject matter terrifying. may be objected under Section 3 (i) of the Patents Act, 197010, which precludes from patentability method of treatment. This issue can be delt with on a case-by-case basis. different issues. The Takeaway: ” Graphics as supplied by authors Blockchain technology is gradually increasing one simple solution. hold in pharmaceutical, medical, and genomics industries it maybe that soon all industries will be utilizing blockchain for various use cases. It is Contact observed that inclusion of such technology is LexOrbis embraced by not only enterprises but Indian 709-710, Tolstoy House, Government bodies as well. Though we have 15-17 Tolstoy Marg, For more than 50 years, GLP has been offering a complete range of some good news with respect to utilization of New Delhi – 110001, India services for a structured protection of intellectual property, by providing strategic blockchain in drug procurement by the Indian Tel: +91 23716565 consultancy, filing patent applications, registering trademarks, designs and models Hospitals (mentioned above). However, as [email protected] attempted by Hospitals in Switzerland (informed www.lexorbis.com in more than 160 countries all over the world, including Italy. supra), we hope that Indian Hospitals will also The GLP Group – through its six offices located in Milan, Udine, Bologna, Perugia, Zürich and San Marino – stands as a strategic, precise and reliable partner, supporting its Clients in the complex and articulated path that leads to innovation and its protection.

Our Clients range from artisans to some of the Top Companies on the Forbes 500 list, for whom we provide initial consultancy and support in lawsuits – both as plaintiff and defendant – throughout the world.

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LexOrbis_TPL53_v3.indd 78 08/04/2021 15:04 DATA DRIVEN TECHNOLOGY 12/04/2021 09:36 81 THE PATENT LAWYER op 10 applicants account applicants 10 op At a simple level, we can expect the level of of the level can expect we a simple level, At that course observe this, one can of Beyond seems standardisation mentioned above, As corporate entities. The t The entities. corporate families patent 4IR of a quarter nearly for The behaviour the period 2011-2016. in submitted taking a are that these companies suggests establish intellectual to approach proactive preserve help them to will rights that property navigate as they position market their improve or markets existing their of the transformation both technology disruptive of and the emergence competition. new and future look like? What does the some patterns us insight into gives study The EPO’s 4IR technologies. for activity past patenting of these patents, from forward project we But if expect? we might what accelerate. continue to to activity patenting growth the considers much of The EPO study at the that are be in areas seen to already life technological their of stage “emerging” acceleration “further states, the report As cycle. penetration and market activity in inventive before years, few in the next can be expected development technological the speed of to way the on point inflection an reaches maturity”. technological hence and activity patenting in increase an lead eventually to is likely numbers now patent in contentious increase a commensurate to like? look that might What matters. will the landscape where be one area to likely interconnected new as evolve to be forced The litigation of market. come to technologies in manner and the patents essential standard and licensed is enforced are which they patenting of The high levels topic. a hot already entities, especially corporate large of activity suggest that this may technologies, in the core in strongly feature to litigation is likely type of As share. market for vie companies as future become items consumer and more more ” Résumé Partner Johnson, Richard Richard Johnson is a partner and qualified patent attorney in the Engineering team at specialist European IP firm Mewburn Ellis. He is also the firm’s Chairperson, responsible for all partnership business as well as being a member of the Management Board. Richard develops and manages IP portfolios for clients in the UK and abroad, contributing to and assisting in the formulation and execution of their IP strategies. He also handles patent prosecution at the European Patent Office and UK Intellectual Property Office for a wide range of both European and international clients. Richard specializes in medical devices, computer data storage, mobile handset technology and artificial intelligence. The main The main source of patenting activity are US Europe, and Japan. “ inventions provide an interesting an interesting provide inventions their generic applicability can make them can make generic applicability their From a geographical perspective, the EPO’s the EPO’s perspective, a geographical From that a large also indicates The EPO study The enabling technologies sector also also sector The enabling technologies application perspective, a patenting From patent how monitor to be interesting will It CTC Legal Media that rely on communication between a wide wide a between on communication that rely technological of the pace If devices. of variety one can speculate is maintained, development in standards new of on the establishment existing of update or the revision addition to by dominated market In a future standards. assist position may patent a strong standards, a significant market establishing or in protecting activity for these sub-sectors will follow a a follow will these sub-sectors for activity seen in the the growth to trajectory similar data security. of established market already The main surprises. yield any does not study and US Europe, are activity patenting of source China and Korea from growth However, Japan. for although in the data examined is notable, in a concentrated was that growth the study countries. of number small is activity in patenting the growth of proportion of number small in a relatively concentrated share, which may go some way to explain the explain to way go some which may share, sector. seen in this levels activity increased the on yet not although growth, strong exhibits and application sectors. same scale as the core at the heart however are technologies Enabling technologies These revolution. this technology of are application agnostic, in that they are different of being utilised in a range capable of data include scenarios. Important examples and security. intelligence artificial analytics, seen conundrum. On the one hand it can be that an artificial example for Take valuable. extremely performance with improved tool intelligence data sets. In principle it is applicable on large to bioinformatics fields, from of range vast in a application is potentially driving. Each autonomous opportunity. commercialisation an independent established hand, the absence of On the other the generic solutions in some of for markets a more encourage may this sector under areas strategy. patenting application-focussed changes as specialised in this sector activity such as sub-sectors in the newer markets data analytics and massive intelligence artificial patenting that possible is It mature. more become agnostic Mewburn Ellis_TPL53_v1.indd 81 12/04/2021 09:35 CTC Legal Media As one might expect, the EPO study shows shows the EPO study might expect, one As remarkable shows also study the EPO However, sector in the core patents that It is likely which data can be handled or manipulated, and manipulated, which data can be handled or represent which technologies, application (iii) the data. the specific end uses for in the third activity rise in patenting a dramatic the protect businesses seek to as sector, the into technologies smart integrating of results is particularly Growth markets. in their products devices personal of in the sub-sectors marked vehicles smart phones), enterprise, example, (for and technology) cars and related (self-driving Things). of home (the Internet Here sector. technologies in the core growth and software. connectivity are areas the critical the technological reflects only This not an but also gives in these areas, developments importance of the commercial indication of these underpinning technologies. standards various to include those that relate space. and telecommunication in the ICT technology, of and adoption spread the rapid technologies for relevant and is particularly are divided into three sectors: (i) core technologies, (i) core sectors: three divided into are and infrastructure underlying to relate which (ii) enabling data communication techniques; the means by which provide technologies, ” Application agnostic inventions an provide interesting conundrum. Richard Johnson “ umans generate a mind-boggling a mind-boggling umans generate explosion This data each day. amount of to innovators in data has stimulated

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the corresponding growth of patent activity and ideas for the future.the corresponding growth Richard Johnson, of Mewburn Ellis, discusses data driven technology,Richard Johnson, of Mewburn Given the likely commercial importance of some of importance commercial the likely Given 80 The headline figures from the EPO study are are the EPO study from The headline figures across is significant growth There unsurprising. However, 4IR technologies. to fields relating all to growth this overall down the EPO breaks The 4IR technologies insights. further provide Growth in patent activity related areas. The European Patent Office (EPO) Patent The European areas. related in patenting trends of published a study recently so-called 4IR to in fields relating activity the patenting how that revealed technologies is affected. world of these dramatic technological developments, developments, technological these dramatic of has been there it is no surprise that in parallel in activity in patenting uptick a remarkable various strands of technology. We live in a world in a live We technology. of strands various technology smart and interconnectivity where and at the heart become ubiquitous set to are Industrial “Fourth The term live. we way the of wide- describe the rapid, is used to Revolution” driving changes that are technological ranging economy. a data-driven us towards H Revolution the Fourth Industrial Industrial Fourth the patenting activity in activity patenting Developments in Developments DATA DRIVEN TECHNOLOGY DRIVEN DATA develop new ways of harnessing massive data, harnessing massive of ways new develop in transformation a seen has turn in which Mewburn Ellis_TPL53_v1.indd 80 AI IN LEGAL SERVICES 08/04/2021 11:11 83 THE PATENT LAWYER . 4 https://papers.ssrn.com/sol3/papers.cfm?abstract_ id=3688896 https://ktn-uk.org/news/shining-a-light-using-ai- to-transform-the-legal-sector/ 2020/10/29/lawtech-patent-filings-jumped-to-all- time-high-in-2019-397-40190/ coronavirus-speeds-up-artificial-intelligence- adoption-in-the-legal-profession- mfbk07p0v#:~:text=The%20number%20of%20 patents%20filed,report%20published%20this%20 week%20reveal. artificial-intelligence-english-law#:~:text=The%20 proposed%20research%20will%20 explore,transform%20how%20the%20economy%20 operates. to-transform-the-legal-sector/ artificial-intelligence-english-law#:~:text=The%20 proposed%20research%20will%20 explore,transform%20how%20the%20economy%20 operates. 2020/10/29/lawtech-patent-filings-jumped-to-all- time-high-in-2019-397-40190/ coronavirus-speeds-up-artificial-intelligence- adoption-in-the-legal-profession- mfbk07p0v#:~:text=The%20number%20of%20 patents%20filed,report%20published%20this%20 week%20reveal. id=3688896 https://ktn-uk.org/news/shining-a-light-using-ai- https://papers.ssrn.com/sol3/papers.cfm?abstract_

https://www.law.ox.ac.uk/unlocking-potential-

https://www.law.ox.ac.uk/unlocking-potential- https://www.law.com/legaltechnews/ https://www.law.com/legaltechnews/ 3 4 1 2 3 4 1 2 Due diligence and contract analytics in due diligence lawyers of AI can augment the role the identification Automating review. and contract https://www.thetimes.co.uk/article/lawtech- tools to be developed for a machine supported a machine supported for be developed to tools and difficult during emotional opinion’ ‘second negotiations https://www.thetimes.co.uk/article/lawtech- Résumés Challenge Director Browning, Stephen Stephen is the Director of the Next Generation Services Challenge at projects supports that fund £20m a (UKRI), Innovation and Research UK that help the UKs Financial and Professional services industries to use technologies such as artificial intelligence and data analytics to develop the next generation of services. Manager Shipman, Project Luke Luke supports the management of the Next Generation Services Challenge at UKRI. Having worked in R&D in a range of industries over the past eight years, he joined UKRI in 2019 to support the UK government’s mission to raise investment on R&D to 2.4% of GDP by 2027. Luke Shipman Stephen Browning . the they they 3 w, still still w, universal across universal this, for no this, for . A key enabler for Legaltech for enabler key A . 1 his past Autumn, the fast rise of Legaltech Legaltech rise of the fast Autumn, his past has been years filings in recent patent reported widely to explore the potential and limitations of and limitations of the potential explore to 2 Stephen Browning, Challenge Director, and Luke Shipman, Project Manager, and Luke Shipman, Project Challenge Director, Stephen Browning, IP, and the in the legal sector, and in the current uses of AI of UKRI explore into its use.prospects of further developments Legal, like many professional services is is services professional many like Legal, CTC Legal Media Artificial Intelligence Artificial services in legal Discovery: Technology assisted review discovery of up the process speed AI can greatly digitalised With more cases. support legal to learning machine than ever, available information and flag through filter to models can be trained cases many As a case. to information relevant uniqueness of hold some level Focussed resolution. dispute or negotiation, and using a small, real-world law on family initially demonstrate been able to have data set, they detect AI and machine learning to of the ability enable will work Their behaviours. coercive T data of has been the development innovation (AI) technologies. Intelligence Artificial and requiring work, intensive knowledge by dominated workforce. its for specialist training of years many for has held a high bar involved The complexity technological of but the level reach, AI to with a coupled years in recent advancement has entrepreneurs and researchers of wave new support the effectively AI can now meant that and efficiently more work to lawyers of role University The clients. their to value greater deliver a research been conducting have Oxford of English AI for of on “Unlocking the Potential project Law” discuss the most established use cases for AI in discuss the most established use cases for applications. legal cases in certain fields, Transparently Ltd have have Ltd Transparently fields, certain in cases AI techniques the application of investigated to augment data to conversational of analysis the discussion, during any professionals legal of role Some principles however can be Some principles however using AI in support of legal services and in their services and in their legal AI in support of using Lawyering” “Augmented on paper recent require some level of re-training for each case for re-training of some level require UKRI_TPL53_v3.indd 83

12/04/2021 09:36 the s the CTC Legal Media Unwired Unwired Planet v Patenting strategies are likely to focus on on focus to likely are strategies Patenting One justification for the patent system is its system the patent One justification for Contact Ellis Mewburn Tower City Street Basinghall 40 5DE EC2V London Kingdom United 7776 5300 (0)20 +44 Tel: 111 4455 (0)330 +44 Fax: [email protected] www.mewburn.com commercialisation of technical ideas acros technical of commercialisation entire sphere of 4IR technologies. The strong The strong 4IR technologies. of sphere entire communications fields of the existing link to patenting how of hint a give computing and be executed. will strategies families multiple patent of assembling thickets opportunities, commercialisation around patents. flagship single than seeking rather Conclusions the of a snapshot provides study The EPO’s in play to likely are importance that patents Supreme finds support in the UK Such a strategy patenting of the acceleration basis. In this context, well-settled. However, as smart technology smart technology as However, well-settled. the line lives, our aspects of all infiltrates may non-technical and technical between and hence open blurred, become increasingly challenge. to Court’s recent decision recent Court’s that the court recognised where (2017), Huawei license on a portfolio to practice it is industry the EPO’s on by reported in the areas activity continue. to set seems study of in the stimulation and promulgation role study The EPO’s innovation. technological for relevant remains role this that suggests a period of head into we age, as the current to that is likely advancement technological the globe. impact across a transformation have ” But if we we But if project forward from these patents, might what expect? we “ lying lying should, influence questions

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Furthermore, as 4IR technologies are data- are as 4IR technologies Furthermore, Aside from patent litigation, one can also ask patent from Aside A similar burst of litigation may be expected be expected litigation may burst of similar A framework, which requires computer-implemented which requires framework, is character” “technical have to inventions scrutiny on the mechanism by which the the which on the mechanism by scrutiny and non- patentable EPO distinguish between under The EPO’s subject matter. patentable activity includes a large proportion of computer- of proportion includes a large activity a European From inventions. implemented increased of the prospect this raises perspective, of inventorship and hence patent ownership. It ownership. and hence patent inventorship of are tools AI-based that case the already is product making significant contributions to As fields. of range wider in a developments to the extent become ‘normal’, AI-tools such constitutes problems solve use to which their be increasingly to is likely activity inventive scrutinised. patent that resulting based, it is inevitable intelligence could, or intelligence technology concepts. Whether this type of this type of Whether concepts. technology non-practising by be dominated will litigation new of the creation arise from will entities or be seen. to remains economic sub-sectors poses 4IR technologies of the advent whether itself. law patent questions for fundamental with by being grappled already One topic artificial which to extent the is offices patent that seek to commercialise, across a range of of a range across commercialise, that seek to that encompass generic enabling patents markets, an advantage over direct competitors. However, competitors. direct over an advantage entities of the emergence one can also envisage licences where standard-essential technologies standard-essential where licences items consumer within larger implemented are cars). (in this instance technologies the application of areas various in a point to developed are products as sector, we Here market. launched to are they where application- include to disputes expect can obtain to seek parties where litigation, specific in communication under various standards, so standards, various under in communication for operates licensing how of the question the Düsseldorf Already arises. these items questions several Court has referred Regional to seeking EU the of Justice of Court the to for the line might be drawn where clarify interconnected and hence capable of engaging capable of and hence interconnected DATA DRIVEN TECHNOLOGY DRIVEN DATA 82 Mewburn Ellis_TPL53_v1.indd 82 AI IN LEGAL SERVICES AI IN LEGAL SERVICES

of problematic terms and obligations within understand the cost and resource requirements organisation whereas others such as Moorcroft royalties from digital exploitation of songs. contract portfolios can help lawyers to better for their work. Frontier Labs Ltd6 are combining LLP’s “ContrAI” platform and Kennedys Law’s manage the risks. For example, Orbital Witness human centred design and artificial intelligence “Kennedys IQ” have created Lawtech spinouts What’s next for Legaltech? Ltd5 have developed a platform that uses AI “A platform to create a system that augments and guides to foster innovation. “Applying Whilst it is encouraging to see the rapid techniques to extract and analyse legal rights Legal experts when forecasting the costs of Smaller firms, however, are at risk of being left emergence of Legaltech solutions in recent and obligations related to property and land, to that uses AI legal cases. behind. Oxford Brookes and Sheffield University machine years, there is still a long way to go to fully unlock generate standardised risk reports, speeding up techniques have been running design sprints for mid-sized learning the potential of AI in legal services. Enabling the time in which lawyers can identify legal Adoption of LegalTech law firms to help them overcome firm-level responsible access to data and addressing the risks, during the conveyancing process. to extract Whilst the areas of potential for AI in Legal challenges to implement AI technologies. They algorithms broader human behavioural barriers will pave and analyze Services have rapidly expanded, many firms are have also developed a business model to the the way for more sophisticated and accurate Legal Research adopting at a slower pace. A survey conducted innovation toolkit to help firms in thinking about solutions to be developed. What we have seen Applications have emerged for legal research to legal by the University of Oxford on Solicitors in innovation in relation to the use of AI. large-scale so far has been largely focussed on using AI to support decision making processes. For example, England and Wales7 found that just 27% of replace existing ways of working within law Solomonic Ltd have been applying machine learning rights and respondents use AI for legal research, 16% for due Skill gaps, fear and mistrust of collection firms, the next frontier will be the re-invention of algorithms to the large-scale collection of accurate obligations. diligence and only 12% use AI for e-discovery, technology and data concerns of accurate the law firm as a whole, the opportunity for new data from court documents. By methodically e-disclosure or technology assisted review.8 fuel conservative approaches. data-driven business models within legal services analysing and indexing court documents based We may still be at the start of the Legaltech Technological skills are an underlying challenge data from is yet to be exploited and if the barriers are on a large number of criteria, their platform innovation journey with plenty more opportunities for many sectors. For law, the University of Oxford court overcome, we may start to see broader disruption enables legal professionals to speed up litigation to come and indeed there are signs that the have been investigating the training needs of and transformation within the legal sector. research and provide structured insights to law pandemic has already caused an acceleration the future lawyer and have implemented a degree documents. To support this transformation, UKRI in ” 9 firms and the organisations who get into disputes in the use of technology within firms . However, module that brings lawyers and computer scientists partnership with KTN, have set up a UK wide to improve the outcomes for them. barriers still remain that will need to be overcome. together. The team are now investigating how network, AI for Services18, to bring together AI & Oxford Brookes and Sheffield university have their training packages can be applied for Data high growth entrepreneurs with leading Billing and utilisation been running a research project on Innovating continuous professional development. professionals and academics working in the On the business side of law, AI can facilitate the Next Generation Services through Collaborative The problem with data is a systemic issue that ” professional and financial services sectors. The planning process for legal teams, this can help Design10, in their paper on “AI in the Legal Sector, requires significant work to overcome. As it stands, network facilitates diverse connections helping both the lawyers but also the client to Pressures and challenges for transformation”11 large quantities of data are inaccessible. Without businesses to find the right partners to they discuss some of the internal barriers that access to this data, the training of AI models is undertake research and development activities, are slowing down the rate of adoption. significantly hampered or all together stopped. and act as a network of networks to share Issues such as privacy, accessibility, and inter- learnings, discuss common challenges and About A reactive mindset and operability will need to be addressed to fully further encourage innovation transfer. UK Research and Innovation (UKRI): resistance to change reduce unlock the next phase of innovation. Genie AI UK Research and Innovation (UKRI) is the opportunities for innovation Ltd13 are working with law firms and academics to largest public funder of research and These barriers are very human in nature and as develop solutions with enhanced explainability 5 https://www. innovation in the UK, with a budget of such require the consideration of behaviour to and anonymisation protocols to address privacy orbitalwitness.com/ over £8bn. It is composed of seven overcome them. Some Legaltech firms have concerns and help users to understand machine 6 https://frontierlabs.co.uk/ disciplinary research councils, Innovate 7 https://www.law.ox.ac.uk/ acknowledged that it will not be sufficient to learning models’ recommendations whilst UK and Research England. sites/files/oxlaw/oxford_ simply develop the technology, Legatics Ltd in RegulAItion Ltd14 are developing a state-of-the- We operate across the whole country and lawtech_adoption_and_ partnership with Academics and large law firms art data access solution based upon federated work with our many partners in higher training_survey_report_18_ have been utilising behavioural change science, learning that allows for algorithms to draw education, research organizations march_2.pdf specifically Self-Determination Theory to support insights from an organisation’s data without 8 https://www.law.ox.ac.uk/ businesses, government, and charities. the development and adoption of AI microservices. removing the data from the organisation. sites/files/oxlaw/oxford_ 13 https://www.genieai.co/ Our vision is for an outstanding research lawtech_adoption_and_ 14 https://regulaition.com/ and innovation system in the UK that training_survey_report_18_ Unique and enduring management The role of data technologies 15 https://assets.publishing. gives everyone the opportunity to march_2.pdf structures disincentivise change. in IP protection service.gov.uk/ contribute and to benefit, enriching lives 9 AI for Service Report: 95% Partnership structures have traditionally dominated The Intellectual Property Office themselves government/uploads/ locally, nationally and internationally. of respondents to a survey the legal sector, and these have often been have engaged with the application of AI to system/uploads/ Our mission is to convene, catalyze and in July 2020 expect to see identified as less conducive to innovation. Without enhance the online IPR filing process15, having attachment_data/ a substantial acceleration file/887907/aI-assisted- invest in close collaboration with others to a single decision maker, and high autonomy commissioned Cardiff University to conduct a in adoption in the next patent-prior-art-searching- build a thriving, inclusive research and expected across the partners with differing feasibility study16 for a solution to allow applicants three to four years. feasibility-study.pdf innovation system that connects 10 https://www.nextgenpsf. objectives can lead to resistance in investment to better understand the likelihood of their 16 https://assets.publishing. discovery to prosperity and public good. co.uk/ and implementation of new technologies. application being accepted prior to applying by service.gov.uk/ UKRI continues to support the research 11 https://academic.oup. The Legal Services Act 2007 enabled alternative developing AI to compare their Right to other government/uploads/ and innovation community to navigate the com/cjres/ business structures, and for non-lawyers to be registered Rights. system/uploads/ transitions associated with the exit of the article/13/1/135/5716343 able to manage firms which has paved the way Beyond AI, Lexblock Ltd17 are developing attachment_data/ 12 https://www.sra.org.uk/ file/887907/aI-assisted- UK from the EU. To keep up to date for the development of multidisciplinary teams. blockchain technology to serve as an immutable sra/how-we-work/ patent-prior-art-searching- please visit our dedicated pages. https:// Whilst take up of these structures has been record of IP ownership for music creators and reports/statistics/ feasibility-study.pdf 12 www.ukri.org/research/international/ regulated-community- strong , partnership structures still endure. Some song writers. By doing so they are seeking to 17 https://www.lexblock. ukri-eu-exit/ statistics/ large firms with plentiful resources have improve the protection of underlying intellectual com/ data/solicitor_firms/ managed to build development teams into their property and reduce the cost of collection of 18 http://aiforservices.org/

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O’Conor & Power Landivar & Landivar O’Conor & Power’s trademark and patent practice Established by Gaston Landívar Iturricha in 1962, group has wide experience in handling portfolios for Landívar & Landívar is a pioneer firm in the field of DREON international and domestic companies in Industrial Property in Bolivia. Our international In DREON IP we specialize in Brazil National Phase of and Latin America. Our services in the region include reputation was gained through a competent and PCT international patent applications, and industrial searches, filing and registration strategies, prosecution, complete legal service in our area of specialization, design and trademark applications. opposition, renewals, settlement negotiations, and an excellent and professional team with no litigation, enforcement and anti-counterfeiting comparison in our country. We have a thorough 20-year background in all procedures, recordal of assignments, licences, Address: Av. Arce 2618, Columbia Bldg., 8th floor, proceedings before Brazil Industrial Property Office, registration with the National Custom Administration Office 802. La Paz, Bolivia, South America representing a broad range of clients from all over the and general counselling in IP matters. Tel/Fax: 591-2-2432362 / 2113157 world. Keeping knowledge up to date with the latest Address: San Martín 663, 9th Floor, Website: www.landivar.com developments of the field and offering close personal (C1004AAM) Buenos Aires, Argentina Email: [email protected] attention to the client are our major concerns. Tel/Fax: 005411 4311-2740/005411 5368-7192/3 Contact: Martha Landivar, Michele Arteaga Website: www.oconorpower.com.ar Website: www.dreon.com Email: [email protected] Email: [email protected] Contact: Santiago R. O’Conor, Managing Partner E-mail: [email protected] Contact: Marcelo Dreon The CHINA CZECH REPUBLIC GUATEMALA

PatentGLOBAL REACH, LOCAL KNOWLEDGE Lawyer www.patentlawyermagazine.com The Patent Power 50 will highlight leading ANSEN Patent Law Office Cermak a spol Lexincorp Corporate Patent In-house lawyers, Established in 1999, is a Chinese intelltual property ermák a spol. is a leading IP law firm in the Czech A leading Central American law firm with 7 offices Č law firm located in Beijing, China, with good Republic and Slovakia, providing services in all areas located in the major cities throughout the region.

0 professionals, and teams from around reputation in professional service, competitive price of IP law, including patents, trademarks, utility models, LEXINCORP has specialized in providing legal and high quality management. ANSEN is specializing industrial designs, unfair competition and others. We advisory to our domestic and international clientele the world, across a multitude of sectors. in providing both domestic and international clients have a qualified team of lawyers for both IP prosecution for more than 40 years. Our regional practice has professional service in the fields of the patent, and litigation including litigation in court. Our strengths evolved to integrate processes, services, knowledge, trademark, copyright as well as IP litigation in China. is a unique combination of experienced and qualified business, values and solutions to provide the highest Our goal is to recognize the game changers, Our attorneys and engineers have had extensive patent attorneys and lawyers. quality results operated as a single, fully integrated experience in technical fields of new material, Central American firm with over 80 lawyers. movers, and shakers who are really making mechanical, electrical & electronics, communication, Address: ermák a spol, Elišky Peškové 15 Address: 9a Avenida 14-78 zona 10, Guatemala, computer science, food, biotechnology and agriculture Č 5 150 00 Praha 5, Czech Republic. Guatemala, C. A. a difference to our industry. engineering etc. Tel/Fax: (502) 2246 3000 / (502) 2333 5980 Website: www.cermakaspol.com Tel: +86 10 82837725/6 Website: www.lexincorp.com Being highlighted in The Patent Power 50 is not an award, Website: www.citicip.com Email: [email protected] Email: [email protected] [email protected] it is a great commendation and a testament to the work Email: [email protected] Contact: Dr. Karel Cermak - Managing Partner Contact: Xiaojuan Zhang and Lin XU Dr. Andrea Kus Povazanova - Partner Contact: Mr Gonzalo Menéndez G., Ms Gina Roca those and their companies are doing to help each sector innovate and grow. It acts as a much-needed reminder of all the great things we are achieving in the world of HONDURAS INDIA INDIA technology and innovation and shines a spotlight on those who are transforming the IP world in which we live. Nominations for leading corporate patent in-house BUFETE MEJIA & ASOCIADOS Chandrakant M Joshi Excellon IP counsel and professionals are now open! Visit www. Our law firm has been exclusively practicing Intellectual EXCELON IP is a full-service Intellectual Property A full-service Intellectual Property law firm covering: Property Rights matters since 1968. Today, Mr. Hiral Solutions Provider, guiding clients ranging from patentlawyermagazine.com/nomination-form/ to make your Honduras and Central America offering a convenient Chandrakant Joshi heads the law firm as the senior most early-stage start-ups to MNCs across several and cost-effective regional service. The firm services Attorney. It represents clientele spread over 35 countries. industries in protecting their intellectual property in nominations. include filing, prosecution, maintenance, enforcement The law firm conducts search, undertakes registration, India and across the globe. Established with our and defense of all types of intellectual property. post-registration IP management strategies, IP valuation, intellectual capital in the field of IP rights, we are Sponsorship opportunities are also available. Furthermore, the firm has strong litigation and The infringement matters, domain name disputes and cyber a one-stop escape for all IP related matters. arbitration capabilities and is known for handling law disputes of patents (including PCT applications), We have blend of experience including technical Please contact us to fi nd out more. complex litigation matters as well as infringement trademarks, industrial designs and copyrights. as well as IP laws and that makes us different. and anti-counterfeiting actions before all Courts, We believe in customer centric approach and always Administrative Offices and Customs authorities. Address: Solitaire - II, 7th Floor, Link Road, [email protected] Malad (West), Mumbai - 400 064, India committed to provide customized solution suitable Tel: +504 25507744 / +1 (914) 4125719 Tel: +91 22 28886856 / 57 / 58 / 64 for client requirement and need. [email protected] Fax: +1 (718) 7322118 Fax: +91 22 28886859 / 65 Website: www.bufetemejia.com Tel: +91 951233 2604 Website: www.cmjoshi.us

Patent Power Patent [email protected] Email: [email protected] Website: https://excelonip.com/ Email: [email protected] / [email protected] / Contact: Ricardo Anibal Mejia Mejia Email: [email protected] [email protected] / [email protected] / & Blanca Rebeca Mejia Lozano Contact: Sanjaykumar Patel [email protected] (Founder- Principal IP Attorney)

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INDIA INDIA INDIA PAKISTAN PAKISTAN PHILIPPINES

LexOrbis Mehta & Mehta Associates Bharucha & Co. United Trademark & Patent Romulo Mabanta Buenaventura LexOrbis is a highly specialised, market-leading IP Mehta & Mehta Associates (Gurgaon, INDIA) is Established in 1948, Bharucha & Co. is one of the Services Sayoc & de Los Angeles boutique fielding a sizable team of 9 partners, L.S. DAVAR & CO. a full-service boutique IP Law Firm, providing Filing, leading Intellectual Property law firms in Pakistan 85 lawyers and over 60 patent attorneys and is amongst International Intellectual Property Attorneys Founded in 1902, the firm is now 114 years old. A We are India’s oldest Intellectual Property and Litigation Prosecution and Litigation services in respect of providing full range of IP services including all the fastest growing IP firms in India having offices at specialising in Trademarks, Patents, Designs, full-service IP firm, it has pioneered in Intellectual Firm. Since 1932, we have been as a trusted IP partner Patents (in different fields of science and engineering), aspects of patents, trademarks, designs, copyright, 3 strategic locations i.e. Delhi, Mumbai and Bengaluru. Copyrights, Domain Name Registration, Litigation & Property law practice, and some of its key cases of Global Large and Mid-size companies and foreign IP Trade Marks, Designs and Copyright. The Firm assists domain names, licensing, franchising and litigation. The firm is a one stop shop for all Intellectual Property Enforcement services. decided by the Philippine Supreme Court have been law firms. We have been widely acknowledged by Govt. both national and international clientele, from different The firm is ranked among the leading law firms in related needs and provides practical solutions and Address: 85 The Mall Road, Lahore 54000, Pakistan featured in Philippine Reports, formerly the repository of India. In the last 90 years, we have retained number geographical locations and backgrounds for all IP Asia by most of the prestigious legal referral guides. services for various legal issues faced by technology Tel: +92 42 36285588, +92 42 36285590, of the decisions of the Philippine Supreme Court, and one position in India in not only filing the Patents, related contentious and non-contentious matters. Address: F-7/1, Block 8, K.D.A Scheme 5, companies, research institutions, universities, +92 42 36285581, +92 42 36285584 now in the Supreme Court Reports Annotated Designs, Trademarks, Copyright, and Geographical Address: Mehta & Mehta Associates, Mehta House, Kehkashan Clifton, Karachi, Pakistan. broadcasters, content developers and brand owners. Fax: +92 42 36285585, +92 42 36285586, (SCRA). Indications but also in getting the grants. B-474, Sushant Lok-1, Sector-27, Tel: +92-21-3537 9544 Tel: +91 11 2371 6565 +92 42 36285587 Address: 21st Floor, Philamlife Tower, 8767 Paseo Gurgaon-122002, NCR, India Fax: +92-21-3537 9557-58 Fax: +91 11 2371 6556 Tel: 033- 2357 1015 | 1020 Website: www.utmps.com & www.unitedip.com de Roxas, Makati City 1226 Philippines Tel: +91-124-410 8474, 410 8475 Website: www.bharuchaco.com Website: www.lexorbis.com/ Fax: 033 – 2357 1018 Email: [email protected] Tel/Fax: (632) 5559555; (632) 8134558; Fax: +91-124-410 8476 Email: [email protected] Email: [email protected] Contact: Yawar Irfan Khan, Hasan Irfan Khan (632) 8103110 Website: www.lsdavar.org.in Website: www.mehtaip.com Contact: Mohammad Fazil Bharucha, Abdul Aziz Contact: Manisha Singh, Managing Partner Website: [email protected] Email: [email protected] Email: [email protected] [email protected] Email: [email protected] Contact: Dr Joshita Davar Khemani Contacts: Dr. Ramesh Kr. Mehta, Founder Abhai Pandey, Partner Contact: Rogelio Nicandro; Joaquin V. Sayoc [email protected] Mrs. Dahlia Chaudhuri Ankush Mehta, Principal Attorney

INDIA INDIA LUXEMBOURG RUSSIA RUSSIA SWEDEN

Y. J. Trivedi & Co. Patent 42 Sojuzpatent Vakhnina and Partners Fenix Legal The firm is elated to have completed 50 years in the practice Patent 42 is a law firm acting in Industrial Property. Sojuzpatent is the oldest leading IP law firm on the One of the leading IP firms in Russia. Advising our Fenix Legal, a cost-efficient, fast and professional of IPR Law (full service) with offices in Mumbai, Delhi and Our job is to help and assist companies and territory of the former USSR, with seven offices in clients on all aspects of IP in Russia, Ukraine, Patent and Law firm, specialized in intellectual Jaipur. The firm has a strong base of well-credentialed legal entrepreneurs in protecting and defending their Russia, and associates in all the neighboring ex-USSR countries and Baltic States. Using our own property in Europe, Sweden and Scandinavia. Our and technical professionals offering quality services in all investments in innovation and creation. countries. We employ more than 150 people, trademark search engine. Services: Patents, consultants are well known, experienced lawyers, areas of IPR. Whether working on a precedent-setting case If innovation is first of all a state of mind, it is also including 50+ patent attorneys and litigation lawyers, trademarks, designs, utility models, copyright, European patent, trademark and design attorneys, or preparing opinions, the firm endeavours to be innovative a necessity and a source of development and growth to achieve seamless prosecution and successful litigation and enforcement. Members of Russian PA business consultants, authorized mediators and in its approach and adopt pragmatic strategies to meet its for your company. Investments carried out to develop litigation. We offer everything you may need for Association, INTA, AIPPI, LESI, ECTA, PTMG, GIPC. branding experts. We offer all services in the IP field client’s interest. Through interdisciplinary collaboration and new products or new activities deserve to be protecting your IP in the whole region. Address: Bld. 6, Preobrazhenskaya Pl., Moscow, including trademarks, patents, designs, dispute specialized experience in its clients' industries, the firm protected.seeking to protect valuable original Address: Myasnitskaya St., 13, Bldg. 5, Moscow, 107061, Russia resolution, , copyright, domain names, IP provides effective solutions that aligns with clients’ short- creations. 101000, Russia Tel: +7-495-231-4840 Due Diligence and business agreements. term and long-term business objectives. Address: 34, rue Dicks Tel: +7 495 221 88 80/81 Fax: +7-495-231-4841 Tel: +46 8 463 50 16 Address: 2nd Floor, City Square Building, L-4081 Esch-sur-Alzette Fax: +7 495 221 88 85/86 Website: www.vakhnina.com Fax: +46 8 463 10 10 Opp. Kashiram Hall, Polytechnic, Luxembourg Website: www.sojuzpatent.com Email: [email protected] Website: www.fenixlegal.eu Ahmedabad – 380 015, Gujarat, India Tel: +352 691 999 350 Email: [email protected] Contact: Dr. Tatyana VAKHNINA Email: [email protected] Tel: +91 79 26303777, 26305040 Fax: +352 24 61 10 10 Contact: Svetlana Felitsina, Managing Partner Dr. Alexey VAKHNIN Contacts: Ms Maria Zamkova Website: www.yjtrivedi.com Email: [email protected] Tatiana Petrova, Head of Trademark Mr Petter Rindforth Email: [email protected] Department Contact: Mr. Jatin Trivedi

MACAU MEXICO NIGERIA TAIWAN, ROC TAIWAN R.O.C. TAIWAN, ROC

IPSOL Goodrich Riquelme Asociados Aluko & Oyebode Deep & Far Attorneys-at-law Giant Group International Patent, LEWIS & DAVIS IPSOL is a key service line focused on the planning, Our staff of attorneys, engineers and computer We are a full-service law firm focusing on patent Deep & Far attorneys-at-law deal with all phases of Trademark & Law Office LEWIS & DAVIS offers all services in the IPRs field, registration and management of trademark, patent specialists help adapt foreign patent specifications and prosecution rated for Patent Contentious by Managing laws with a focus on IPRs, and represent some Giant Group is specialized in domestic and international including prosecutions, management and litigation of and other IP rights portfolios, offering solutions that claims to Mexican law, secure patent inventions and Intellectual Property. The Firm was named Law Firm of international giants, e.g. InterDigital, MPS, Schott patent application, litigation and licensing, as well as Trademarks, Patent, Designs and Copyright, and enable to maximize the protection of your IP assets in trademark registrations and maintain them by handling the Year 2015 and Intellectual Property & Technology Glas, Toyo Ink, Motorola, Cypress. The patent trademark and copyright registration. Regardless of payment of Annuity and Renewal fee. Our firm assists Macau and worldwide. the necessary renewals. Our computer system, which Team of the Year 2017 by Law Digest Africa Awards. attorneys and patent engineers in Deep & Far whether you are seeking legal protection for a piece of both domestic and international clients in Taiwan, Address: Avenida da Praia Grande, 759, 5° andar, is linked to the Mexican Patent and Trademark The Firm was also named the Law Firm of the Year normally are generally graduated from the top five intellectual property, or being accused of infringing China, , Macau and Japan. Our experienced someone else's intellectual property, you can deal with this Macau Department, permits us to provide our clients with a 2016 and Intellectual Property Team of the Year 2017 universities in this country. More information attorneys, lawyers, and specialists provide professional complex area of law successfully through Giant Group. Tel: (853) 2837 2623 timely notice of their intellectual property matters. We by ESQ Nigerian Legal Awards. We will continue to regarding this firm could be found from the website services of highest quality while maintaining costs at Fax: (853) 2837 2613 also prepare and register license agreements. advise clients on patent strategy in Nigeria, Ghana, above-identified. Tel: +886-2-8768-3696 efficient level with rational charge. OAPI and ARIPO. Fax: +886-2-8768-1698 Website: www.ipsol.com.mo Address: Paseo de la Reforma 265, M2, Col. Y Del. Address: 13 Fl., 27 Sec. 3, Chung San N. Rd., Tel: +886-2-2517-5955 Website: www.giant-group.com.tw/en Email: [email protected] Cuauhtemoc, 06500 Mexico, D.F. Address: 1 Murtala Muhammed Drive, Ikoyi, Taipei 104, Taiwan Fax: +886-2-2517-8517 Email: [email protected] Contact: Emalita Rocha Tel: (5255) 5533 0040 Lagos, Nigeria Tel/Fax: 886-2-25856688/886-2-25989900 Website: www.lewisdavis.com.tw Fax: (5255) 5207 3150 Tel: +234 1 462 8360 / +234 806 680 3387 Website: www.deepnfar.com.tw Contacts: Marilou Hsieh, General Manager, Tel: +886-911-961-128 Email: [email protected] Website: www.goodrichriquelme.com Website: www.aluko-oyebode.com Email: [email protected] Email: [email protected] [email protected] Email: [email protected] Email: [email protected] Contact: C.F. Tsai, Yu-Li Tsai Amanda Kuo, Manager Contact: Lewis C. Y. HO Contact: Enrique Diaz [email protected] Tel: +886-2-87683696 #362 David M. C. HO Email: ediaz@ goodrichriquelme.com Contact: Uche Nwokocha, Partner Email: [email protected]

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TURKEY UGANDA UKRAINE

Destek Patent SIPI Law Associates Pakharenko & Partners Industrial and We are a multinational legal practice that has provided full SIPI Law Associates is a boutique commercial law Pakharenko & Partners provides full IP service coverage range Intellectual Property services including trademarks, practice in Uganda, with a bias to Intellectual Property in Ukraine, CIS countries and Baltic states and has patents, designs, plant variety protection and more since Law. Our IP advisory services cover all transactional offices in Kyiv and London. We pride ourselves on an Intellectual Property 1983. With more than 200 qualified in-house staff, aspects of Patents, Trademarks, Copyright, Industrial exclusive expertise and experience in the fields of IP including 50 patent and trademark attorneys, we are able designs, Trade Secrets and licensing aspects. The firm law, anti-counterfeiting and anti-piracy, pharmaceutical to assist domestic and international clients worldwide. philosophy is based on providing first class legal services law, competition law, advertising and media law, Address: Maslak Mah. Büyükdere Cad. No: 243 based on the integrity of our staff, giving our clients corporate law, litigation and dispute resolution. Kat:13 Spine Tower Sariyer/Istanbul sound legal and timely advice, as well as holding our Address: P.O.Box 78, 03150 Kyiv, Ukraine Tel: +90 212 329 00 00 clients’ information in the utmost confidentiality. Visiting: Business Centre 'Olimpiysky', Website: www.destekpatent.com Address: PO BOX 4180, KAMPALA, UGANDA 72 Chervonoarmiyska Str., Kyiv 03150, Litigation Email: [email protected] Visiting: Jocasa House, Third Floor, Unit 5 Plot Ukraine Contact: Claudia Kaya 14 Nakasero Road. Tel/Fax: +380(44) 593 96 93 ([email protected]) Tel/fax: +256 393 272921/ +256 414 +380(44) 451 40 48 Murat Bürkev 235391 / +256 752 403 763 Website: www.pakharenko.com ([email protected]) Website: www.sipilawuganda.com Email: [email protected] Simay Akba Email: [email protected] Contact: Antonina Pakharenko-Anderson ş ([email protected]) Contact: Paul Asiimwe; Dinnah Kyasimiire Alexander Pakharenko Licensing

UNITED STATES VIETNAM VIETNAM Enforcement

Entertainment Young & Thompson Annam IP & Law ELITE LAW FIRM Young & Thompson, established in 1903, is a full ANNAM IP & LAW is one of the most professional ELITE LAW FIRM is born to provide professional and service intellectual property law firm focusing on U.S. Intellectual Property & Law Firms in Vietnam, qualified legal services in the field of Intellectual patent and trademark prosecution of the highest quality member of APAA, INTA and VIPA. We provide our Property and Business Law in Vietnam as well as many and Sport Law while maintaining costs at a moderate level. Young & clients with a full range of IP services to protect their countries around the world such as Laos, Cambodia, Thompson has been recognized as an industry leader inventions, trademarks, industrial designs and related Myanmar and . Delivering success, effectiveness for innovation in new technologies and procedures, matters not only in Vietnam, but also in Laos, and safety to our clients is the ultimate goal of ELITE being among the first law firms adopting a paperless Cambodia, Myanmar and other jurisdictions. We also LAW FIRM. workplace, and co-developed an automated solution for provide our clients with legal advices on Finance and Address: 255 Hoang Van Thai Street, creating and executing all workflows. Corporate and Business Law. Copyrights Thanh Xuan District, Hanoi, Vietnam. Address: 209 Madison Street, Suite 500, Tel: (84 24) 3718 6216 Tel: (84-24) 37373051 Alexandria, VA 22314 Fax: (84 24) 3718 6217 Fax: (84-24) 37373056 Tel: 703-521-2297 Website: https://annamlaw.com/ Mob: (84) 904110976 Fax: 703-685-0573 Email: [email protected] Website: www.lawfirmelite.com Website: www.young-thompson.com [email protected] Email: [email protected] Email: [email protected] Contact: Le Quoc Chen (Managing Partner) Contact: Mr. Nguyen Tran Tuyen Contact: Andrew Patch Dzang Hieu Hanh (Head of Trademark Enrique A. Diaz [email protected] (5255) 5525 1422 Department) Jaime Delgado [email protected] (5255) 5207 5324 VIETNAM Subscribe now! Juan Carlos Suarez [email protected] (5255) 5207 9261 A subscription to The Patent Lawyer magazine will ensure that

you and your colleagues have detailed information on all the Guillermo Sosa [email protected] (5255) 5207 7561 Pham & Associates most important developments within the international patent Established in 1991, staffed by 110 professionals including 14 lawyers and 34 IP attorneys, law industry. Pham & Associates is one of the largest legal practices in Vietnam specialized in IP. The firm is The Patent Lawyer magazine is dedicated only to the patent one of the biggest filers of patents, trademarks and e-mail: [email protected] industrial designs each year and has been renowned industry and is written by patent experts for patent for appeals, oppositions, court actions and handling IP infringements. The firm also advises clients in professionals worldwide. website: www.goodrichriquelme.com all aspects of copyright law. A subscription includes a hard copy and an electronic copy Tel: +84 24 3824 4852 Fax: +84 24 3824 4853 which can be read easily on your smartphone or tablet. Website: www.pham.com.vn Paseo de la Reforma 265, M2 Email: [email protected] Contact: Pham Vu Khanh Toan, Managing Partner Tel: +44 (0)20 7112 8862 Fax to: +44 (0)20 7084 0365 General Director Col. y Del. Cuauhtemoc, 06500 Mexico, D.F. Tran Dzung Tien, Senior IP Consultant E-mail: [email protected] Tel. (5255) 5533 0040, Fax. (5255) 5207 3150

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