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The March / April 2020
PatentGLOBAL REACH, LOCAL KNOWLEDGE Lawyer www.patentlawyermagazine.com COVID-19 – patents and vaccinations
ERIC M AS A & Law firm RANKINGS Munir A. Suboh and Felicity Hammond of BSA C A R Ahmad Bin Hezeem & Associates LLP examine the I B B E A N IP issues raised by any potential vaccine for the Coronavirus
Parallel AI Reform petitions tools in Chile Page 30 Page 55 Page 59
CTC Legal Media Editor’s welcome_print_v1_TPL47:Layout 1 22/4/20 09:51 Page 3 EDITOR’S WELCOME
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March / April 2020 The
CAL KNOWLEDGE GLOBAL REACH, LO Patentzine.com Lawyer www.patentlawyermaga COVID-19 – patents and vaccinations Editor’s
RICA ME S A & Law firm RANKINGS welcome C A R N Munir A. Suboh and Felicity Hammond of BSA I B B E A Ahmad Bin Hezeem & Associates LLP examine the IP issues raised by any potential vaccine for the Coronavirus nder normal circumstances, the fact that this issue of The Patent
Reform AI Lawyer features three articles discussing the most topical Parallel in Chile tools Page 59 petitions Page 55 Page 30 CTC Legal Media Usubject of the hour would be something to shout about. Alas, these are not normal circumstances, and so it is with decidedly mixed THE PATENT LAWYER feelings that I present something of a Coronavirus-themed issue. Issue 47 Dr Richard Fawcett, Senior Associate at Powell Gilbert, looks at the IP implications of the UK government’s call for industry to produce has cleared the tower Editor Matt Seex ventilators for COVID-19 patients. As manufacturers scramble to make “Continually push further and without being limited by convention, [email protected] these machines, the usual product safety to prove that the ‘truly special’ can be done, regardless of whether it Publishing Director and regulatory issues still need to be is absolutely necessary to do so. Without a drive towards such Chris Dooley considered, but, asks Richard, will IP rights [email protected] things, the world would solely be functional.” The big hope, present an additional stumbling block? Advertising Enquiries “ The big hope, of course, is that a Katie Kerr (Publishing Executive) of course, The imminent launch of IPC Renew, by IP Centrum, marks the final COVID-19 vaccine will be forthcoming. few weeks of the renewals industry as we’ve all known it to date. [email protected] Dael Carter (Publishing Executive) is that a Any such drug will inevitably face issues [email protected] After five years of the most intense service development COVID-19 relating to patent protection, and the programme imaginable, we are proud to finally introduce to the Faye Waters (Publishing Executive) likely nature of these issues is discussed [email protected] vaccine will be world’s greatest IP formalities professionals, the future of renewals. by Munir A. Suboh and Felicity Hammond Subscription Enquiries of BSA Ahmad Bin Hezeem & Associates. [email protected] forthcoming. Accounts Enquiries Finally, we turn to Minesoft’s Sabelo [email protected] Moyo and Elizabeth Lam, who show us Published by: how, by crunching the patent data, we Follow the launch: @ipcentrum CTC Legal Media Ltd, can extract meaningful and actionable insights into the virus. 23 Hedgers Way, Kingsnorth, ” Sign up for early access: www.ipcentrum.com/renewals Ashford, Kent TN23 3GN Eleven more articles round out this issue, on a variety of topics, from Tel: +44 (0)20 7112 8862 contributors from as far afield as Japan, Chile, Russia, Poland, India, Fax: +44 (0)20 7084 0365 Sweden, and Dubai. Plenty to read, then, if, like us here at CTC Legal Design and Repro by: Media, you find yourself adjusting to life working at home, or under Design and Printing Solutions Ltd Unit 45C, Joseph Wilson Industrial similarly changed and uncertain circumstances. Estate, Whitstable, Kent CT5 3PS We sincerely wish you all the best of health. Printed by: Pureprint Group, Crowson House, Bolton Close, Bellbrook Park, Uckfield, East Sussex TN22 1PH Whilst every effort has been made to ensure that the information contained in this journal is correct, neither Matt Seex the editor, contributors or CTC Legal Media can Editor accept any responsibility for any errors or omissions or for any consequences resulting therefrom. © CTC Legal Media 2020, and contributors. The contents of this journal are protected under the LAUNCH SEQUENCE copyright law of the United Kingdom, the Berne Convention and the Universal Copyright Convention. Mission statement START UPP MIGMIGRATION TESTTES OK PINST 1 P2 PARTNER ONBOARDING CINST 1 CAUTO 1 P2 CLIENT ONBOARDING EPV MIGRATION Any unauthorised copying of the journal may be in The Patent Lawyer educates and informs professionals working in the industry by PPROD ENV P1P PARTNER ONBOO ARDING PAUTOTO 1 G2 PR SEPARATION P1 CLIENT ONBOARDING G2 CR SEPARATION G2 SHUT DOWN breach of both civil and criminal law. Infringers will be prosecuted. disseminating and expanding knowledge globally. It features articles written by people ISSN 2051-3682 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 [email protected] CTC Legal Media your desk via the printed magazine or the website www.patentlawyermagazine.com +44 (0) 207 186 1800 www.ipcentrum.com CTC Legal Media THE PATENT LAWYER 3
IP Centrum.indd 1 24/06/2019 15:10 Contents_TPL47_v3:Layout 1 22/4/20 09:48 Page 4 Contents_TPL47_v3:Layout 1 22/4/20 09:48 Page 5 CONTENTS ContentsMarch / April 2020
6 Meet the Editorial Board Meet our Editorial Board members who help determine the direction of this magazine.
7 News Experts react to “unconstitutional” Unified Patent Court, EPO Patent Index 2019 Annual Report shows that AI is driving growth, and a financial heart attack for drug-firm Amarin.
23 Long-awaited legal changes for Computer Implemented Inventions 10 COVER STORY The role of 59 patents in COVID-19 in Poland Weronika Witkowska, European and Polish Patent Munir A. Suboh and Felicity Hammond of BSA Ahmad Bin Hezeem & Associates LLP examine the Attorney at Patpol, looks at recent efforts to bring 38 Complex protection of IP 50 Comparing patent validity intellectual property issues raised by any potential Polish patent protection for CII in line with other rights to plant varieties in standards in invalidation vaccine for the COVID-19 virus. jurisdictions. Russia and Ukraine actions at the EPO and JPO Maksym Bocharov, Patent and Trademark attorney, Dr. Yoshitaka Sonoda and Alison Santino of Sonoda & 14 IP Law in the time of 27 Biting off more than you and Oksana Karpenko, Russian and Eurasian Patent Kobayashi Intellectual Property Law discuss Attorney at Gorodissky and Partners, discuss the plant contrasting approaches to invalidation actions. Coronavirus – the UK can chew! patent landscape in the two neighboring countries. government’s call for The lure of broad claims may be tempting, but 55 How AI tools will change 42 Outsourcing of IP industry to produce DPS Parmar, Special Counsel at LexOrbis, explains patent practice ventilators for treatment why broad construction might not be the best option. administration – what, Dennemeyer’s Steven M. Shape looks at the role that of COVID-19 patients when, and how? AI technologies can play in patents, and how they can 30 PTAB discretionary Janne Bohm of the IP Station management group support and enhance the work of patent professionals. As the UK manufacturing industry responds to the explains the range of benefits offered by outsourced government’s call for intensive care ventilator institution and parallel IP administration. 59 Chilean IP undergoes production, engineers up and down the country are petitions grappling with issues such as what designs to use, 46 Looking at EU priority in some much-needed and how to source components to meet the David L. McCombs, Theo Foster, Eugene Goryunov, patent law revision challenge of providing over 30,000 working devices in Gregory Huh, Jonathan Bowser, and Calmann ARIPO patent applications Mauro Dellafiori Albala and Daniel de Santiago only a few weeks. Product safety issues will be at the Vítor Sérgio Moreira of Inventa International examines Clements of Haynes and Boone, LLP look at the Villagrán of Dellafiori examine welcome changes fore and clearly there will be regulatory issues to the growing trend in EU priority claims in ARIPO to IP law in Chile. consider. But, asks Dr Richard Fawcett, Senior Patent Trial and Appeal Board’s discretion to deny patent applications and look at which sectors those Associate at Powell Gilbert LLP, will intellectual parallel petitions for an inter partes review trial. applications are most likely to originate from. property rights present an additional stumbling block? 62 Rankings: Americas & 35 Defending the interests Caribbean 18 What do patents reveal Ten of the best law firms from each of the top about Coronavirus? of the Southern Kuzbass American jurisdictions, including Canada, Mexico, and the United States. Minesoft’s Sabelo Moyo and Elizabeth Lam show Coal Company how patent data can be interrogated in PatBase and Roman Larshin of Zuykov and partners discusses PatBase Analytics V3 to extract meaningful and 67 Directory of services a recent patent action in which his firm played actionable insights. An A to Z list of the international law firms who a crucial part. 50 provide IP related services.
4 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 5 NEWS 7 THE PATENT LAWYER THE PATENT A A Hikma spokesman stated: “We are “Amarin “Amarin strongly disagrees with the In a statement, CEO and President of “With AI set to revolutionize not only “The question of how AI use may very very pleased with the court’s decision and are working diligently to gain the of our approval application FDA’s so we can provide patients with this important medicine”. of version a generic ruling and will vigorously available remedies … we plan to pursue fightto all protect our VASCEPA franchise for the benefit of our patients, physicians, the broader healthcare community and our investors. We believe we are favorably situated to obtain an injunction against generic launch pending appeal.” Amarin, John F. Thero, said: Thero, F. John Amarin, those patents were in fact and “obvious” thus invalid. Amarin’s rivals had argued that since fish oil has been usedto treat conditions cardiovascular for more than thirty years, Amarin’s hitherto protected novel. sufficiently not was methodology countless industries but also how IP itself IP how also but industries countless is being created, we may well see AI- related patent numbers continue to rise in the years to impact on EPO filing figures.” increasing come and have an impact on the availability of IP rights is itself an area that is alongside rapidly the growth evolving of AI. WIPO has started a consultation patentability AI-implemented of and AI- on the a hold to issue due is and inventions generated year. this later the on symposium second Practitioners from will be around Europe interest. with great observing this already being tested for other therapeutic other for tested being already uses. In the identified case by the of MIT for the tested being was it halicin, christened molecule team,the and diabetes. use in treating nts concerned, “It’s perhaps not surprising that we are we that surprising not perhaps “It’s “AI has applications across multiple came after two of Amarin’s competitors, Dr Reddy’s Laboratories manufacture Pharmaceuticals, sought to and Hikma and market their in ruled judge federal The their VASCEPA. own versions favor, stating of that while version any generic of VASCEPA infringe upon would the pate indeed sectors, sectors, including the pharma industry. The proliferation of high-quality clinical – data’ ‘big so-called – data scientific and is ripe for quite demonstrated was This mining treatments. for potential a identified that MIT at team a new by recently potential new antibiotic, derived from a which database of molecules was seeing an increase in AI-driven patent filings. AI isfast-evolving a raises untested relatively issues around field and recently Only ownership. and patentability Dr by filed applications rejected EPO the Stephen Thaler, as part of the Artificial Inventor Project, naming an AI he had though inventor, as (‘DABUS’) developed acknowledging that the EPO Boards of the on guidance give to yet have Appeal issue. European and damaging blow for the for blow damaging and EPO patent applications in 2019. EPO patent Germany, applications (with patent the Netherlands, Switzerland, France, among the leading and the UK with the US by countries), followed with 7%, with 12%, China Japan 25%, with 5%. and South Korea – applications in patent driving growth communications patent digital 19.6%, overtaking by applications grew patents. technology medical Amarin’s Amarin’s profit expectations for 2020 VASCEPA, a treatment for cardiovascular for treatment a VASCEPA, Commenting on the report, Penny were, understandably, were, bullish. understandably, However, this new decision has seen the value of Amarin’s shares drop by 60%. The ruling disease that was originally synthesized from fish oils,received FDA approval in “VASCEPA that stating FDA the with 2012, is the first drug approved FDA to reduce risk cardiovascular among patients with into entry Its levels”. triglyceride elevated the pharmaceutical market growth revenue exponential of beginning saw the Amarin for – from $26 million in 2014 to almost $430 million in 2019 with – nearly all the corporation’s the drug. by generated revenue being IN A DECISIVE DECISIVE A IN Irish pharmaceutical giant, a US Federal Court decision has ruled that six patents Amarin owned Corporation, by and used in its successful drug invalid. VASCEPA, are CTC Legal Media CTC Legal EPO Patent Index 2019 – Index EPO Patent growth AI drives THE RECENTLY PUBLISHED one and Gilbert Powell at partner Gilbert, said: litigators, patent foremost Europe’s of Amarin heart attack for Financial Patent Patent Office (EPO) Patent Index 2019 Annual Report contains various headline findings, including: • of in the number growth 4% annual A • 45% of account for now EPO States •AI and 5G are such as Technologies News age 7 Page 52 09: 22/4/20 1 t 2:Layou news_v 47 issue TPL CTC Legal Media CTC Legal Malcolm Dowden –Malcolm Dowden Director, Legal Bond Dickinson Womble in chapter the EU/UK of Malcolm is the author of The Law Association's American Bar the Machines. and Smart Intelligence Artificial – Medvedev Valery & Partners, Gorodissky Russia of and in charge is the Managing Partner Valery is a Russian He in Russia. practice IP the largest Attorney. Patent and Eurasian – Goryunov Eugene Partner, and Boone Haynes in the Intellectual is a partner Goryunov Eugene of in the Chicago office Group Practice Property trial and Boone and an experienced Haynes lawyer. –Maria Zamkova KB, Legal Fenix Sweden Design and is Industrial of Maria has a Master She is an attorney. and trademark a patent Patents. in European expert Daniela is a partner of Trevisan & Cuonzo. & Cuonzo. Trevisan of partner Daniela is a in the Italian matters clients in IP She advises litigation. on patent with a focus jurisdiction, A. Diaz – Enrique Riquelme Goodrich and Intellectual the Industrial is head of Enrique manages the currently Department. He Property and more 3500 trademarks over of prosecution year. per than 1000 patents and Marketing of Director – Durrant Mark Group Communications, Marconi most at Nokia, years Mark spent thirteen Nokia for Communications of as Director recently Marketing of Director is now He Technologies, Group. and Communications at Marconi Su –Eric China HongFangLaw, at HongFangLaw partner Su is founding Eric of China University at the East and studied law engineering at and chemical and Law Politics China. of University the North –Jr. Olivares Sergio Mexico Olivares, winning leads the multi-award Olivares Sergio and is firm Olivares at the law practice patent leading Mexico’s as one of recognized widely attorneys. patent Daniela Ampollini – Ampollini Daniela & Cuonzo, Trevisian Italy Dr. Claudia Tapia – Ericsson, Germany – Ericsson, Tapia Claudia Dr. & Legal IPR Policy of Claudia is Director of She is Chair at Ericsson. Research Academic and Patent the of chair vice and Council 4iP LESI. Licensing of Technology Piotr Dynowski LL.M. – Dynowski Piotr & Bird Bird and head of the IP, co-head of is Partner, Piotr of He is one office. Warsaw at the practice TMT in litigation lawyers and patent the leading IP Poland. Vitor Fidalgo – Fidalgo Vitor International Inventa and matters IP all in specialized Attorney, Patent International. at Inventa Director is the IP Caitlin Heard –Caitlin Heard CMS Partner, is expertise of area principal Caitlin’s litigation. She has patent multi-jurisdictional disputes high-profile of on a number acted areas. technical of a range across Stefan Schohe –Stefan Boehmert & Boehmert at Boehmert & Boehmert. He is partner Stefan with and physics, IT of in the fields works mainly on litigious issues. a focus Noel Courage – Partner, – Partner, Courage Noel LLP Parr & Bereskin attorney and patent is a partner Courage Noel Toronto its in working LLP, Parr & Bereskin at and patenting on focuses practice His office. sciences inventions. life licensing of Pravin Anand – Pravin Anand, India Anand & Anand and of Anand, managing partner Pravin and patent and a Anand, is an advocate attorney. trademark Osamu Yamamoto –Japan Yamamoto & Hara, Osamu Yuasa and a attorney, is a patent Yamamoto Osamu He and Hara. Yuasa of managing partner of in the fields patents in specializes & pharmaceuticals. biotechnology Dr Saiful Khan – Saiful Dr Clarkson Potter at Potter Member and Board a Partner is Saiful the Electronics in both who practises Clarkson and the Design & & Computing Group Group. Engineering Ken Adamo –Adamo Ken USA Attorney IP as lead experience trial extensive has Ken the and courts federal and state before counsel Commission. Trade US International Simon de Banke – Founder & CEO, & CEO, – Founder Simon de Banke Centrum IP the of and CEO is founder Simon de Banke IP Services disruptor IP high-tech-focused Centrum. Vítor Palmela Fidalgo is a Trademark and Trademark Palmela Fidalgo is a Vítor
THE PATENT LAWYER THE PATENT
MEET THE EDITORIAL BOARD EDITORIAL THE MEET 6
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NEWS Experts react to “unconstitutional” MEXICO Unified Patent Court THE FUTURE OF Europe’s Unified Patent Court (UPC) seems increasingly in doubt. First, the British Government confirmed that it would not seek membership of the Court following Brexit, and now Germany’s intended involvement has been deemed “unconstitutional”. The UPC is intended to provide “one-stop” enforcement of Industrial and European Patents. The new system envisaged a European Unitary Patent that would be cheaper to obtain, providing Intellectual Property industry with a more efficient system. The UPC Agreement (UPCA) is open to accession by any Member State. To date, all EU Member States except Spain and Poland have signed the Agreement. The progress of the system had been delayed by a challenge Litigation to Germany’s ratification of the UPC Agreement, filed at the Federal Constitutional Court in 2017. At the time, the agreement had already passed through parliament and the only remaining the UPCA as it amounted to an unacceptable ceding of power to step was for the president to sign the bill. a European institution, the Court of Justice of the European Licensing However, the Federal Court has now held that since the Union. approval of the UPCA had not been passed by the Bundestag “The proponents of the UPC have been keen to emphasise with the necessary two-thirds majority required, ratification was that the UPC was not an EU institution and that any connection Enforcement at odds with German Basic Law. with the CJEU was tangential. This proposition appears to have Commenting on the decision, Alex Wilson, Partner at Powell been roundly rejected by both the reasoning of the German Gilbert, said: “This decision follows hot on the heels of the UK court and the UK government.” government’s recent announcement that it would withdraw from Penny Gilbert, Partner at Powell Gilbert, added: “Quite where Entertainment this leaves the UPC now is completely uncertain. At the very least it seems that there will have to be a new debate and vote by the German parliament, but whether there is still a political and Sport Law will to proceed, and how long that might all take, remains to be seen”. Benjamin Grzimek, Partner at Fieldfisher, commented: "The German Constitutional Court today published its decision that Copyrights the German Act implementing the Unified Patent Court system is unconstitutional. The simple reason: a majority of two thirds in parliament would have been necessary. This means that the German government now needs to decide how to go forward – Enrique A. Diaz [email protected] (5255) 5525 1422 it had already declared to re-evaluate the UPC after Brexit. The big question is whether it is willing and able to organize the necessary majority. Then there will probably be another Jaime Delgado [email protected] (5255) 5207 5324 constitutional complaint! However, I think it's safe to say that we definitely won't see the UP and the UPC for years to come " Finally, in the opinion of Robert Watson, Partner at Mewburn Juan Carlos Suarez [email protected] (5255) 5207 9261 Ellis: “Today’s decision by the German Constitutional Court is an undoubted blow for those driving the UPC project, bringing Guillermo Sosa [email protected] (5255) 5207 7561 further delay to a process that has already encountered significant speed bumps and roadblocks. BIRO OKTROI ROOSSENO, is one of the leading law firms in the Intellectual Property field of Indonesia, which has been established in the “However, the decision does not spell the end of the UPC. It capital city, Jakarta, since 1951. The firm is also one fo the oldest of appears a new attempt to ratify the agreement in the Bundestag e-mail: [email protected] its kind in the country. could be brought forward, but this time requiring a two-thirds Our firm’s scope of works comprises registering, prosecuting, and maintenance of Intellectual Property in Indonesia and abroad, consultant majority. website: www.goodrichriquelme.com services on Intellectual Property, searches, and registration opinions, patent “Encouragingly, the delay may give time to find a resolution to and trademark surveillance and/or infringement investigation of services, checking and managing Patent, Trademark and Copyright portfolio or the location of the Life Sciences part of the Central Division. The individuals/companies, consultant services and legal assistance in nullity agreement currently specifies that this will be in London, which Paseo de la Reforma 265, M2 lawsuit and/or enforcement of Intellectual Property, counsel on litigation and would fall outside the territory covered by the Unitary Patent and investigation related to Intellectual Property matters. the European Union. It seems an amendment to the UPCA could Col. y Del. Cuauhtemoc, 06500 Mexico, D.F. be concluded to relocate this court and then be ratified by the Tel. (5255) 5533 0040, Fax. (5255) 5207 3150 German Parliament, and possibly the other signatory states.”
8 THE PATENT LAWYER CTC Legal Media
Goodrich FP_A4.indd 1 06/04/2020 11:17 COVID-19 11 THE PATENT LAWYER THE PATENT non-contentious work, including work, non-contentious As As the issue of COVID-19 also potentially inventor to inventor continue the development of research contributed such an important invention to society. to invention important an such contributed could approach same the life, human threatens be taken by waive to choose could the inventor The vaccination. inventor of an any approved monopoly on the vaccination and it devote to the public reproduction interest. of the approach an such encourage may Governments and reward fair monetary incentives for the contribution to society, that it should not be something that should they seek to from. profit made Volvo their most Accordingly, important invention available to all other competitors to exploit without any financial implication andto patent The purpose. humanitarian purely a serve lapsed in the sacrifice 1970s, but demonstrates this the of discretion the at waived be can thatexclusion commercial Nevertheless, the the rightinventor. fact the patent was of filed means that reward the of reputation is maintained as history can never forget who Résumés A. Suboh Munir which practice, Property Intellectual diverse BSA’s leads Munir and contentious encompasses both names, trade trademarks, of protection works, media complex names. domain and secrets, trade patents, copyrights, Hammond Felicity in 2020 as an LLP Associates & Ahmad Bin Hezeem joined BSA Felicity working has been Felicity practice. Property in the Intellectual Associate and trademark in both since 2016 and has expertise in the Middle East contentious high-profile, of number a to addition in prosecution, patent matters. IP Once the vaccination was declared to be commercialization is Yet not the only option A good example of a company that donated An example of this in practice is in the case of case the in is practice in this of example An CTC Legal Media CTC Legal the patents for the inoculations had been filed long filed been had inoculations the for patents the before the pandemic emerged as there were preemptively, the manufacturers by developed plan. a pandemic preparedness as part of effective, states utilized Advance Agreements with (APA) the Purchase manufacturers and upon clearance from the relevant authorities, the able of to the guarantee were delivery they maximum number of doses some available, with degree of thought. initially as severe as not flexibility was pandemic provided if the an and, for inventors many inventor historically, have made the decision to abandon their right available invention their make and exclusivity to corporates other and competitors, public, the to to use, manufacture, and reproduce, sell in the and public safety. humanity of interests their patent is Volvo, who believed that their three-point seat belt was such a significant of of a cost lower per unit and a more responsive needs. domestic meet to vaccinations of supply and Pandemrix vaccinations, flu swine H1N1 the Celvapan, which were the subject of patent applications filed by Baxters In International respectively. this case, GlaxoSmithKline and age 11 Page 53 09: 22/4/20 1 t 6:Layou _v _TPL47 BSA CTC Legal Media CTC Legal Yet for pharmaceutical companies, vaccinations companies, pharmaceutical for Yet people of number the given vaccination, a For For For states in particular, vaccinations are are are considered one of the pharmaceuticals to develop and most manufacture. expensive Pharmaceutical companies take a huge risk in investing no is there where vaccination all a of development their benefit or successful resources be will they that guarantee into the further add to compensation any from at To all. that materializes later it that possible is it risk, the example, For required. longer no is vaccination the in the case of SARS in 2002, by the time the vaccination reached testing, the trials abandoned were due to lack of affected patients. Whilst it is now clear that lack of demand will risk of burden the COVID-19, for issue an be not absorbed and contribution overall to society is compensation. due economic of worthy vaccines protected patent of Use The most common way of exploiting a patent right is to license the invention to a third party basis, also on so may a that non-exclusive they commercial and procure the invention produce benefit. Typically, this license which of providedamount the is fee, royalty a for in exchange market with accordance in inventor, the by set is demand. that require immunization, it would feasible not for be any one would inventor the Therefore, drug world. the supply manufacturer to manufacturers several to biologics their license A state who then themay of fulfil states. orders can select their own licensed of manufacturer negotiation the for allows which vaccination, the for for illnesses that are not related to infectious lucrative. more be far which may diseases, popular public health tools that are important to incentivize because they require a low level of health expenditure relative to the benefits provided, which inevitably transfers beyond borders. state ” Who will the own rights to the vaccination? Felicity Hammond Felicity Munir A. Suboh Munir “ ith the global number of COVID-19 cases reported by the Health World Organization (WHO) having now
THE PATENT LAWYER THE PATENT
Associates LLP examine the intellectual property issues raised by any by issues raised property the intellectual examine LLP Associates virus. the COVID-19 for vaccine potential Munir A. Suboh and Felicity Hammond of BSA Ahmad Bin Hezeem & Bin Hezeem Ahmad BSA Hammond of A. Suboh and Felicity Munir By By preventing a pharmaceutical company Patent economics are equally applicable to the to applicable equally are economics Patent The monopoly and recognition provided by a by provided recognition and monopoly The Yet in the context of a pandemic, the provision the pandemic, a of context the in Yet This article discusses the role that patents for developing vaccinations. In order to encourage to order In vaccinations. developing for pharmaceutical companies to innovate, exclusively in them support law patent the of provisions invention. their of rewards economic the reaping from receiving their due rewards, states and citizens run alike the risk that a pharmaceutical biologics into resources their shift may company pharmaceutical pharmaceutical industry, which is responsible others from making, using, or selling an invention. invention. an selling or using, making, from others The development of vaccines of development The A patent is a government-endorsed, limited term monopoly on an invention that excludes worldwide worldwide are racing to develop an effective vaccination in the hope that they may be the patent. of way by rights exclusive own to company surpassed two million, the quest for a vaccination who is, question The crucial. more been never has response In vaccination? the to rights the own will companies pharmaceutical many question, this to
in COVID-19 The role of patents patents of The role COVID-19 10 patent patent acts as an innovation, which incentive in to turn benefits encourage thepublic as wider the innovations pass into the public domain. In line with inventors incentives, these without economic that thought theory, it is would not possess the necessary incentive to expenditure and effort, time, requisite the invest market. to bring to inventions new creating into of of exclusive rights to any one party poses an obvious conflict with a state’s publiccommitment: health to immunize as many people as possible. vaccinations of use and development the in play rights can be limited, patent what extent and to necessary. should it be considered W
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BSA IP Protection COVID-19
and the advancement of medical explorations. from the inventor. All that is required is that the Many governments, charitable organizations, inventor is notified as soon as is reasonably and individuals have already pledged millions to practicable. Article 31 has been implemented help support the pharmaceutical companies Such into the National Law of World Trade Organization with the development of a vaccination. Some “ Member States with interpretation permitted at measures donations, such as that from Bill Gates, are given governmental discretion. with the caveat that any resulting vaccination could Since many countries do not have the requisite must remain affordable for the poorest regions manufacturing capabilities to manufacture large in the world. discourage quantities of drugs or vaccinations domestically, inventors the Doha Declaration, a proclamation issued by Illegitimate use of patents the World Trade Organization (“WTO”) Ministerial Yo u Current reports indicate that the Chinese company from Conference in November 2001, permits BrightGene has “successfully copied” Gilead’s submitting compulsory licenses to be issued internationally patented drug Remdesivir, which may or may so that the government can subsequently not be effective against COVID-19. Whilst the their import the drug for use in the domestic market. company has publicly stated that they are not Yet whilst respective governments have the create it intending to sell the drug without a license from invention to power to issue compulsory licenses, they are a Gilead, the fact that the drug was “made” is the public tool that is used prudently by governments due contrary to a core right of International Patent to the potential detrimental implications of Law, as set out in Article 28 of TRIPS: domain. interfering with market conditions. Such measures “A patent shall confer on its owner the could discourage inventors from submitting and we’ll following exclusive rights: 1) to prevent third their invention to the public domain in the first parties not having the owner’s consent from the place, and impact foreign investment. Further, acts of: making, using, offering for sale, selling, as the inventor may not have direct involvement or importing” ” in the manufacture of the vaccine, a state would Since the manufacturing of the drug is without need to consider how well the generic the consent of the patent owner and was not manufacturer would be able to copy the patent protect it. manufactured as a result of a compulsory license, and to what extent they could rely on the the drug has been produced illegally. Whether inventor’s testing, if there was not adequate time any recourse would be taken via the means of to undertake their own. patent litigation is at the sole discretion of the Although the issuance of a compulsory license inventor. However, an inventor would have to denies an inventor their right to a monopoly, wait until the patent has matured to registration TRIPS provides that some compensation must before any claim could be filed. be awarded to the inventor, albeit this may be a Whilst some may take the view that BrightGene’s nominal amount set at the “economic value”. conduct was justified in the circumstances, Since this compensation is likely to be well BSA Offices: there are measures available to governments to below the expected monopoly price, inventors IP law in the Middle At BSA we offer the Abu Dhabi facilitate the use of a patent where it is considered tend to be open to the arrangement of advance East is not straight- latest legal insight Beirut to be in the interests of public health. purchase agreements and licensing contracts Dubai with governments at reasonable prices. forward. and security. Erbil Limitations of patents Muscat In a state of emergency, respective governments Summary Paris Success requires the We can provide you Ras al Khaimah have the authority to temporarily revoke an The full extent of the ramifications of the current Riyadh inventor’s monopoly in order to fulfil its own COVID-19 pandemic are still unknown. Whilst we advice of people on with the competitive Sharjah public health obligations, which essentially cannot be certain who will create the vaccination the ground with an advantage you need converts patent infringement into being a for COVID-19, we can be sure that pharmaceutical Awards: legitimate yet unauthorized use. companies are working tirelessly, with the support extensive knowledge to grow and thrive in Regional Law As per Resolution 58.5 of the World Health of governments and charitable organizations, to of a rapidly changing the Middle East. Firm of the Assembly, Member States are encouraged to develop an appropriate immunization and we environment. Year 2019. “take all necessary measures during a global can be certain that patent law underpins its very pandemic, to provide timely and adequate development. Contact BSA partner Corporate supplies of vaccinations and antiviral drugs, Team of the Lower your risk by Munir Suboh to find Year 2019 using to the full the flexibilities contained in the Agreement in TRIPS”. working with a law out how we can help A compulsory license allows a government to Contact firm that knows how your business. authorize a generic manufacturer to make or BSA Ahmad Bin Hezeem & Associates LLP use an invention for crown benefit without the Tel: +971 4 5285555 to protect your IP; permission of the inventor. As per Article 31 of [email protected] both nationally and Call +971 4368 5555 TRIPS, where there is an emergency, there is no [email protected] internationally. need for the government to seek permission
12 THE PATENT LAWYER CTC Legal Media bsabh.com E-mail. [email protected]
BSA FP.indd 1 22/04/2020 09:55 COVID-19 15 THE PATENT LAWYER THE PATENT Résumé Fawcett Richard Dr litigation and in IP specializes Richard in has an MA He work. advisory and a PhD in Nanoscience. Engineering he spent as a lawyer, qualifying to Prior and periods in the microelectronics as whilst training industries software an engineer. Compensation Compensation is available to a patentee, or The use” “crown exemption can usually only currently faced, where the priority is to respond to is priority the where faced, currently urgently to a public health crisis, this allows and engineering on efforts their focus to parties design activities in the first instance. their exclusive licensee, for lost profits if they had been in a position to existing use own their manufacturing capacity but were denied an opportunity to make relevant products. Even if this is not the case, patentees may be eligible for compensatory payments which negotiated can be with settled dispute, a the of event the in or, department relevant government the Court. by be relied upon in relation to “services of the crown”. To the uncertainty as extent to whether the manufacture of that there ventilators for is use any by s.59, provision, a special the crown” of “services the NHS the Following constitute emergencies. during use for exists Order by emergency” of “period a of declaration ” UK law is UK law to up geared deal with precisely this sort of challenge. Dr Richard Fawcett Richard Dr “ ith thousands of lives at risk, amid and a growing international crisis, key players in UK industry have Fortunately, in Fortunately, relation to patent issues, UK The key requirement for the exemption to As the UK manufacturing industry responds industry manufacturing the UK As care intensive for call the government’s to up and engineers production, ventilator with issues grappling are the country down to use, and how to what designs such as challenge the meet to components source in devices working 30,000 over providing of will issues safety Product weeks. a few only be will there and clearly be at the fore But, asks consider. issues to regulatory at Associate Senior Fawcett, Richard Dr property intellectual will LLP, Gilbert Powell stumbling block? an additional rights present responded rapidly. A A range designs of responded different rapidly. have been put manufacturers ventilator established forward, by designs including existing by designs new and Medical, Smiths and Penlon non-medical manufacturers such as Gtech, Dyson and a team at Andrew Oxford Professor by led University London College, King’s and Farmer. At the time of writing, 10 that, into this days only reported the project, it has been government has already placed an initial order for 10,000 ventilators with Dyson (subject to receiving regulatory approval). The vacuum manufacturer is intending to go further and donate 1,000 more units use for in the UK, and units internationally. 4,000 extra is this law up geared with sort to precisely deal of challenge. The “crown use” exemption to patent infringement, as codified in ss. 55 – 59 Patents Act 1977, allows the Department Health of and industrial any shield to department, Social government Care, or partners that come indeed to their aid any actions. from infringement patent take effect isfor a government departmentto provide a written authorization activities (such as making and selling products) for certain which would otherwise require the permission of the patentee to avoid infringement. Notably this authorization effect. can retrospective In circumstances such as be provided with CTC Legal Media CTC Legal W age 15 age P 10:01 1 22/4/20 t :Layou 2_TPL47 ert_v Gilb ll Powe CTC Legal Media CTC Legal
THE PATENT LAWYER THE PATENT
COVID-19 14
of COVID-19 patients COVID-19 of ventilators for treatment for ventilators industry to produce to industry government’s call for call government’s Coronavirus – the UK – Coronavirus IP Law in the time of time the in Law IP
age 14 age P 10:00 1 22/4/20 t :Layou 2_TPL47 ert_v Gilb ll Powe Powell Gilbert_v2_TPL47:Layout 1 22/4/20 10:01 Page 16 COVID-19 , in Council, authorization may be provided for a any other manufacturer working on such tests, a wider range of purposes including maintaining royalty free license. Don t gamble supplies essential to the life of the community Another coronavirus story that quickly made and securing a sufficiency of supplies essential There is headlines was the use of 3D printing technology to the wellbeing of the community. “ by Italian volunteers to rapidly produce life- very limited The “crown use” exemption has rarely been saving replacement valves for CPAP (continuous deployed in Court proceedings. It featured in a evidence positive airway pressure) ventilator masks. with your IP rights case in the late 90s regarding technology used However, an early report that the quick-thinking to protect Northern Irish police stations from that duo had been threatened with legal proceedings bomb blasts during the troubles. It was also intellectual as a result of copying a design was subsequently used more used successfully in recent months retracted. The manufacturer, Intersurgical, in standard essential patent (SEP) litigation property explained that medical manufacturing regulations against Vodafone. In that case the invention rights have prevented them from handing over manufacturing facilitated priority access by emergency service information to the volunteers. workers to a mobile phone network during an impeded the Most recently it has been reported that AbbVie emergency. won’t enforce patent rights to its HIV therapy Patent rights may be a concern for a company response Kaletra (lopinavir/ritonavir), in the hope that it venturing into an established and unfamiliar to the can be used as a possible COVID-19 therapy. market, but they are not the only type of IP Kaletra is already being used in a number of right to consider. Some components may also COVID-19 clinical studies in COVID-19 patients and Israel be protected by one or more design rights. pandemic. is understood to have started moves to Manufacturers that are unable to source parts compulsorily license the drug prior to AbbVie’s from their normal suppliers in sufficient quantities announcement. AbbVie’s position will free may risk infringement if they make them generic manufacture to increase global supply Since 1950, provides themselves. in the event that Kaletra proves beneficial. Modiano & Partners The risk of facing infringement issues with ” It has also emerged that Gilead agreed to design rights ought not to be as great as with drop the US “orphan drug” designation (which highly specialized assistance on all facets patents. Generally speaking, designs protect the effectively grants a seven-year monopoly) that aesthetic aspects and the overall character of a it recently obtained for remedesivir, another of Intellectual Property Law, physical design where there is scope for design antiviral seen as a potential coronavirus freedom. They are encountered less frequently treatment, following criticism from activists and with more functional designs which lack politicians including Bernie Sanders. Gilead has ǁŝƚŚŽǀĞƌϭϮϬWĂƚĞŶƚͲdƌĂĚĞŵĂƌŬƩŽƌŶĞLJƐ͕ individual character and are based on standard reportedly asked the FDA to withdraw the components, fixtures and fittings. designation and said that it was “waiving all serving more than 6,000 clients worldwide. Nevertheless, a “crown use” exemption which benefits” associated with it. operates in a very similar manner as with patents So, whilst it should be not be a surprise to IP does also exist in relation to UK registered and practitioners to learn that the technologies unregistered designs (First Schedule to the being used to fight COVID-19 are in many cases Registered Designs Act 1949, and ss. 240-244 protected by IP rights, it does not follow that Copyright, Designs and Patents Act 1988). In those rights will hinder the immediate pandemic relation to Community Designs, i.e. EU response. However, what is absolutely clear at registered and unregistered designs, there is this stage is that companies which have been also a “crown use” exemption, but this has much able to invest in developing medicines, narrower scope and only allows authorization for diagnostic tests and medical devices are at the services of the crown that relate to defense or forefront of the global response and offer the security needs. best hope for saving lives and moving countries Thankfully, there is so far only very limited out of lock down. We wish them success! evidence that intellectual property rights have in any way impeded the response to the COVID- 19 pandemic. Concerns were raised by reports last week that an affiliate of the French biotech ƵƌŽƉĞĂŶWĂƚĞŶƚĂŶĚdƌĂĚĞŵĂƌŬƩŽƌŶĞLJƐ company, BioMérieux, involved in developing PCR test kits, had been the target of a patent MUNICH MILAN LUGANO infringement action in Delaware. However, it was subsequently explained that the action, brought by Labrador Diagnostics LLC, related to activities that pre-dated the test kit development project. Contact On discovering that the defendant was playing a Powell Gilbert LLP key role in developing COVID-19 diagnostic https://www.powellgilbert.com/ tests the patentee immediately offered it, and www.modiano.com [email protected] 16 THE PATENT LAWYER CTC Legal Media
Modiana FP.indd 1 22/04/2020 10:06 CORONAVIRUS 19 THE PATENT LAWYER THE PATENT Résumés Sabelo Moyo and Administration Sabelo is an at Executive Marketing International Minesoft joined Sabelo recently Minesoft. College King’s from graduating after in Philosophy. with a degree London in digital experience Sabelo has previous support as customer well as marketing with becoming familiar and is enjoying Intellectual of world the stimulating Property. Elizabeth Lam Support and Elizabeth is a Customer at Executive Marketing International Elizabeth joined Minesoft Minesoft. a Business Degree receiving after shortly Business School. She has Warwick from in Sales and experience previous Packard at Hewlett roles Marketing in start-ups technology and Enterprise AI. and Tech Insurance Analyzing classifications facilitates and enriches and facilitates classifications Analyzing PatBase Analytics allows users to visualize Medicinal Medicinal preparations containing peptides the understanding of technology areas of interest. of areas technology of understanding the (A61K38/00) • Viral antigens (A6K39/12) • Related • (A6K39/12) antigens Viral • (A61K38/00) to viruses • (C07K14/005) Preparing medicinal viral antigen or antibody compositions, virus • vaccines (C12N7/00) Mixtures of e.g. active ingredients without chemical characterization (A61K45/06) This can help users to further for either a more precise narrow-down examination of the in search a broaden can it equally, or landscape, related a review to users prompting of sense the field thatthey otherwise. investigate may not have thought to formats, tabular and graphical in information this to present and interpret to easy data the making in included formats The clients. and colleagues this article are just to available schemes a colour and configurations small sample of the users. pandemic effects Real-time The effect of the global pandemic patent on byofficesof can the grants be number inferred for jurisdictions the over past affectedmonths. In China, for example, there has been a -8%, - 22% and -2% change month-on-month COVID-19 of case from first the when 2019 December was detected in February 2020 when Wuhan, respectively the country to January lockdown. an emergency entered and A61K39/12: 1293 A61K39/12: A61K38/00: 1430 A61K38/00: Coronavirus Coronavirus Worldwide Activity Worldwide Top 5 CPC Sub-Groups by Families by 5 CPC Sub-Groups Top C07K14/005: 1183 C07K14/005: A61K45/06: 1013 A61K45/06: C12N7/00: 1100 C12N7/00: CTC Legal Media CTC Legal reference information to reference form insights into why they are being presented with certain points. Minesoft, as a data major software provider prioritizes industry, property intellectual the within access to accurate, global data for our clients. Analytics PatBase users allows visualize to and jurisdiction, classification, year, into data by drill re-entering By criteria. more and many inventor these datapoints back into a PatBase search at the click PatBase a of we provide users button, and specific information. with exhaustive current of the fields What are interest? The pie chart below shows result set. the for the classification codes top 5 CPC age 19 Page :01 10 22/4/20 t 1 ayou :L _TPL47 _v4 ft Mineso CTC Legal Media CTC Legal countries to combat to coronavirus. to The spike in applications observable in 2002 This query takes advantage of PatBase’s limitless PatBase’s of advantage takes query This AFT = (*corona_virus OR *corona_viruses OR *corona_viruses = (*corona_virus AFT OR OR *corono_virus OR *corona_viral OR *corono_viral *corono_viruses OR orthocoronavirinae OR coronaviridae OR OR coronoviridae OR coronavirinae OR coronovirinae) orthocoronovirinae the WIPO, are order in jurisdictions 10 top The According to figures fromWorld the Health PatBase Analytics can help to gain an command is a new PatBase feature that searches that feature PatBase new a is command across original and machine translated text for documents. patent global of searching better and 2003 could be a result of the initial SARS outbreak of 2002. After 2004, development in but steady pretty been has area technology this next the over surge another have to likely is this couple of years as are COVID-19 combatting processes vaccination new technologies and published. jurisdictions the key are Where filing in? for The heat map above right families patent of number shows by jurisdictions popular the most related left-hand truncation, ensuring that all variations all that ensuring truncation, left-hand of the term are included. the Additionally, AFT to to The coronavirus. search keyword used is as follows: US, China, the EPO, Japan, Canada, Australia, and India. Germany South Korea, Organization, with the exception of Japan, the recorded the of 25% up make featured countries countries with cases of SARS (a coronavirus) between 2002 November and August 2003. In China and cases total 251 had Canada particular, up make also These cases. total 5327 had Rep. P. some of the top patent officesdevelopment globally. As in this international area scale, this is really highlights on the importance placed by all such an viruses. these understanding of a given data set and cross- Elizabeth Lam Sabelo Moyo Coronavirus
THE PATENT LAWYER THE PATENT atent atent information gives us an insight into have countries different which in ways the responded to local, as well as global Most Recent 20 Years by Families & Applications & Families by Years 20 Recent Most
be interrogated in PatBase and PatBase Analytics V3 to extract meaningful extract to V3 Analytics and PatBase in PatBase be interrogated insights. and actionable Minesoft’s Sabelo Moyo and Elizabeth Lam show how patent data can data patent how show and Elizabeth Lam Moyo Sabelo Minesoft’s The graph below depicts application rates In the following sections, PatBase Analytics is Analytics PatBase sections, following the In below for the coronavirus technology area. technology the coronavirus for below • interest? of area this a growing Is • filing in? jurisdictions for the key are Where • interest? current of the fields What are interest? of area Is this a growing and grant rates for patents specificallyrelating used to extract insights and the answer questions
about Coronavirus? about What do patents reveal What do patents CORONAVIRUS 18 events over time. A pandemic of the pandemic proportion of A time. over events of coronavirus affects all areasof life.Here at of tools using to our dedicated are we Minesoft the investigate to visualization and analysis data ways in which accessible feature a Analytics, PatBase global affected. innovation is being by all PatBase users, is an invaluable tool for drilling into data and landscape analyses. This conducting article demonstrates thorough the importance of the across offices patent of activity the examines data interrogation and world in the wake of coronavirus and in recent years. P
age 18 Page :01 10 22/4/20 t 1 ayou :L _TPL47 _v4 ft Mineso Minesoft_v4_TPL47:Layout 1 22/4/20 10:02 Page 20
CORONAVIRUS
Number of Granted CN Patents Monthly
September October November December January February March Don’t miss 2019-2020 31,338 32,548 38,813 35,658 27,737 27,081 the obvious... 2018-2019 36,452 36,293 38,507 29,838 39,230 32,889 43,870
The dotted lines on the graph below are the trend lines of the patent data (solid line). The Number of Granted Patents dotted orange line, showing the linear trend of the number of granted patents in China from September 2018 to March 2019 is upward sloping. The blue dotted line, showing the number of granted patents in China before and during the initial outbreak of COVID-19, shows a linear trend that is downward sloping. Since China was the first country affected by COVID-19, other jurisdictions may also have a declining granted patent count over the following months. So far, the data shows that the ...or the obscure number of granted publications has increased in February 2020 in the US and Japan. Korea and the European Patent Office (EP), appear to be stable. It may be because patent offices in these jurisdictions had more time to prepare for Conclusion nationwide lockdowns, and arranged alternative This article presents one example of how work solutions while the pandemic spread, PatBase and PatBase Analytics can be used to preventing the patent grant number from research a point of interest. Amid the COVID-19 declining. global pandemic, we looked at coronavirus All this data was collected using PatBase. related patents historically, as well as the impact Using the Explore Search tool, we could find the of the virus on patent offices in nationwide exact number of publications matching our lockdowns to demonstrate how powerful patent search queries e.g. (SPUB=(KD=CNB*) AND data can be. PatBase Analytics helps to illustrate (PD=202002)) which searches for Chinese trends over thousands of patents by year, top granted publications from February 2020. assignees and jurisdictions and even prompts narrower interrogation of categories of data through the interactive graphs. The search function Chinese Grants Year Comparison sits on top of a live database of over 130 million documents, growing daily. This upload speed enables real-time global events to be reflected in the data. Users are therefore assured that they potential partners and licensing opportunities are never missing out on important information Identify and can make strategic business decisions using Monitor market trends and key competitors the data with confidence. To learn more about PatBase visit Avoid infringement and parallel development www.minesoft.com/patbase. with Minesoft’s web-based patent solutions
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Minesoft FP.indd 1 22/04/2020 10:08 CII 23 THE PATENT LAWYER THE PATENT Résumé Witkowska Weronika holds an MSc in electronics Weronika and Electronics of the Faculty from Warsaw the of Technology Information She graduated Technology. of University at the Studies Property Intellectual from worked she Formerly University. Warsaw Examination at the Patent as an examiner Office Patent the Polish Department of Division). Engineering (Electrical in almost all has been involved Weronika court administrative important Polish computer-implemented to cases relating in joined Patpol Weronika inventions. the Polish of 2010. She is a member Trademark and Patent of Association AIPPI. as well as Attorneys are new, which involve an inventive step and step an inventive involve which new, are application. industrial of susceptible which are The well-established, non-favorable view The well-established, view of non-favorable the Polish Patent Office towards CII practice was practice CII towards Office Patent Polish the based on the assumption hand, other the on but invention; the of definition that there is no its inherent feature is its technical character. according to Moreover, said practice, technical by defined is solution the if granted is character technical features. interpretation of All Article 52(1) of the European this Patent Convention. And it should be sounds so, since in However, identical. is 24 Article like of wording the Poland an objection character based of on this provision was raised. lack of technical ” Almost all national CII cases ended with a decision refusing patent protection. Weronika Witkowska Weronika “ everal everal amendments were introduced to the Industrial Property in force into entered which 2019, October Law (IPL) in Weronika Witkowska, European and Polish Patent Attorney at Patpol, Patpol, at Attorney Patent Polish and European Witkowska, Weronika line in CII for protection patent Polish bring to efforts recent at looks jurisdictions. with other It should be noted that, since 2004, both the Almost all national CII cases ended with a the of – regardless be granted shall Patents which inventions any for – technology of field CTC Legal Media CTC Legal areas of the IP law became very desirable, so that so desirable, very became law IP the of areas last long. did not process the legislative why is national and European accessible persons for seeking patent protection routes have European the only now, been until However, Poland. in could costly, more times several is which route, result in obtaining patent protection in Poland CII. for decision refusing patent As protection. a legal basis, Article 24 of Article 24 is as follows: the of wording IPL was used. The Long-awaited legal Long-awaited Computer for changes Inventions Implemented in Poland the of history The included. be can (CII) Inventions amendments relating to computer implemented inventions starts in April 2018, when the Polish government initiated the work of a group of communities interested in the development of 2018, November In Poland. in intelligence artificial the called unofficially - report a prepared team the “White Paper” - containing recommendations Suddenly Poland. in field this of future the about for protection the patent lack of of the problem neglected been had which route, national via CII for several years, was raised. It was reasoned that there was no future for Polish AI in Poland without available national patent protection for it. The decision to amend the was IP law taken. at Fortunately, that time, amendments in other February February 2020. The amendments multiple aspects relate of IP in Poland, among which to patent protection of Computer Implemented S age 23 age P 10:02 1 22/4/20 t :Layou 3_TPL47 ol_v PatP 22/04/2020 10:11 Celebrating 54 years 54 years Celebrating in IP of leadership expertise protection in Poland intellectual Comprehensive services: protection property Patents Supplementary Protection Certificate Utility models marks Trade Designs Industrial Oppositions, cancellations, and infringements revocations IP research IP strategy management IP portfolio indications Geographical plant varietes New
+48 22 546 91 00 [email protected]
20 300 + marks and Trade designs registered on behalf of clients
Patents obtained Patents on behalf of clients 9 900 + Professionals 90+ Years of activity Years 54 PATPOL.PL T E Patpol Kancelaria Patentowa sp. z o.o. sp. Patentowa Kancelaria Patpol St. Nowoursynowska 162J, Poland Warsaw, 02-776 Patpol FP.indd 1 CII 25 ” THE PATENT LAWYER THE PATENT This would be a huge practical change in the pre-grant prosecution of the CII patent application via national route. “ +48 22 5469149 +48 To To summarize, we should hope that the [email protected] Contact & Patent and Polish - European Patpol Attorneys Trademark Tel: independence of the Polish law was was emphasized independence the of Polish law and the correctness of verdict Polish recent The confirmed. again was practice Patent Office basic that hope gives 2664/17 GSK II case the in end. the in respected be will rights constitutional It seems that, since 2004, the existence of two possible routes resulting in obtaining identical patent rights in Poland, but not based on the same interpretation of the law, is incompatible with the provisions of Article 2 in conjunction with Article 64.2 of the Constitution of Poland. the violates it others, among that, argue can One principle of social justice and the right to equal protection for the ownership of property rights in patent a obtaining from entities preventing by a national procedure before the Polish Patent Office for aninvention covering a solution that has an indirect impact on physical matter, and technical a solves it as character technical a has problem or produces a further effect, technical while simultaneously allowing the existence in the Polish legal turnover of patents having an granted in a impact matter, indirect on physical procedure before the European Patent Office, for unattainable are reasons economic for which economically disadvantaged hope entities. We that be this will in considered kind argument of the future by the Polish administrative courts reconsider and that the will Polish Patent Office his standpoint Unfortunately, the majority of also Polish CII have nor Office Patent Polish the in to neither filed been old to the European Patent Office, which CII is a huge cases. and the economy. industry Polish loss for with along Poland, in law IP the to amendments more favorable recent court significantly affect verdicts, the will definition understood as “technical” by the Polish Patent of is what Office, andwill result cases. greater a new in in least at CII, for protection of chance receiving The above-mentioned amended provisions national the before cases CII old for However, of nature the technical both of “Examination and the the applicant by the solution filed including the patentability, for prerequisites the solution concerned of non-obviousness account the into be made taking should the of 1 paragraph 52 Article of interpretation Article 27 section 1 of Munich Convention, as the EPO Guidelines relating well TRIPS, as in Examination for (Guidelines examination to Office) and the EPO Patent the European jurisprudence practice.” This is an optimistic change after several court several after change optimistic an is This CTC Legal Media CTC Legal CII product category of CII claims of category product only present are if accompanied by a computer implemented method, or a programmable device claim, and if they features are than the ones which characterize an not accompanying method characterized or device claim. This is by the in examiners the for obvious been has it why other European Patent Office that the category product CII has an better position especially auxiliary in civil disputes. In role, consequence, as a rule, for character technical providing the CII product was category acknowledged if the CII method or CII device was of technical product CII the Poland, in Meanwhile, character. and separately assessed was claims of category within program computer a as always regarded the meaning of copyright. Theoretically, this change. should now eliminate ultimately the discrepancies so far signaled practitioners by between the rights of the from resulting possession entrepreneurs of the only However, patents. Polish and European passing of time will allow us to asses definitely the the Polish OfficePatent practice of has how changed. Introduced amendments relate to February 27 after or on filed applications patent 2020. In consequence, one has to wait around eight to 11 months firstresultthe when very for firstpreliminary opinions along report for CII cases search will with be issued. It should be has report search no now until that emphasized been issued for CII. The Polish Patent Office argued that no search in the state of the namely non-invention, art for performed be should character. technical no having solutions for also This would be of prosecution pre-grant the in change practical a huge and route. via national application the CII patent long-awaited administrative courts, the battle does not end. One of has case The recent ago. years 20 over filed application case relates the court at least 5 times. In its to to been brought a GSK II no. patent (case 2019 November 13 dated verdict 2664/17) the Supreme Administrative Court stated: cases between 2015-2017 in which an age 25 age P 10:03 1 22/4/20 t :Layou 3_TPL47 ol_v PatP CTC Legal Media CTC Legal However, in Poland it was also problematic to problematic also was it Poland in However, Since 2004, a lot of European patents validated patents European of lot a 2004, Since obtain patent protection for a software solution a software for obtain patent protection “computer a for namely category, product the in program product” or or “computer program” “a computer readable carrier”. Every attempt to receive national patent The failed. category this reason was for the old protection in that stated which IPL the of 28 Article this of wording in Poland contained such claims. The discrepancies The claims. such contained Poland in between the rights arising from validated Polish European patents and were even more visible. It should be noted that, in practice, the computer programs are excluded from patenting from excluded are programs computer As as a being consequence, non-inventions. an the was raised for invention lack objection of of CII product There was category. no symmetry provisions, Convention Patent European the with according to which only computer programs which are computer programs “as such” are excluded from patenting. Now the clause “as IPL, the of (2) 28 Article in added been has such” bringing Polish with into law almost conformity all exclusions within the Convention. European Patent
What changed, then? more Here, explanations technical one. Such understanding was excluding was understanding Such one. technical elements or steps defining features definition by law in supported was This solution. software a of by the wording of Article 33 (3) of the Polish Industrial Law in which it was stated by what kind of which (4) 33 features Article then is It claims. in described an invention Article of wording new should The amended. been has be 33(3) of the IPL eliminates a requirement affectdirectly the matter to giving placefor non- physical software relating features. In this way, a describing features technical of understanding method or a device with software should be in involved line with European Patent Office practice. One should that know Article 24 of the was IPL amended in 2019. not are required. understanding the meaning One of “technical feature” simple via protection obtain to impossible was it meant difference in the national route for a method or device with software involved. According to Polish Patent to directly relating feature a only practice, Office the matter or physicality was considered as a ” THE PATENT LAWYER THE PATENT
CII 24 Until now, the only European could route result in patent protection in Poland for CII. “
age 24 age P 10:03 1 22/4/20 t :Layou 3_TPL47 ol_v PatP BROAD CLAIMS 27 bar (Plant THE PATENT LAWYER THE PATENT ascertain infringement by (defendant) sold various various corn sold (defendant) The Dekalb atents atents are the tools of domination in the patent The products. innovative of market system provides direct incentives for the The Plant Genetic '236 patent claimed modified claimed patent '236 Genetic Plant The genetically genetically engineered corn made by Dekalb, claims. broad the all invalidated court the Genetic Systems v. Dekalb Genetics Corp. 175 F. 2000). 7, Sep Decided 2001) Conn. (D. 246 2d Supp. gene. Broad claims and enablement Broad If the patentee chooses to rely be the inviting unknowingly construction, he may on a broad enablement, as such problems validity unavoidable and turn be out obvious to these claims may or lack novelty in view of the existing drafting clever When a classic prior case of disclosure. art of the broad claims for genetically engineered plants and seeds (US was 5,561,236) presented before the court to the containing cells plant and seeds, plants, creation of a new product, but it may not require not may it but product, new a of creation get to form commercialized a in be to inventions patent protection. Public disclosure invention is the primary to requirement get of the the using, making, from others preventing of benefit and selling the patented invention. There is no limit statutory on drafting limitations a of claim, which in claims may ways multiple as are there be interpreted by the courts. The infringement analysis may be carried out under traditional peripheral claiming analysis or central claiming method or the other court-made classic doctrines such as literal meaning or pith and marrow or law of equivalents or doctrine of reverse equivalent. It is normally understood that where made the a inventor major advance what over was known, previously the scope of protection is believed variations. to many cover to claims the of language expand from the If, on the other hand, the contributions of the patentee are trivial, it is restricted to such an the within falling embodiments even that extent the within fall not may claims the of words literal others. exclude right to patentee's P The lure of broad claims may be tempting, but DPS Parmar, Special Counsel Special but DPS Parmar, be tempting, may claims broad of The lure be the best option. not construction might broad why explains at LexOrbis, CTC Legal Media CTC Legal Biting offBiting than more chew! can you age 27 Page :03 10 22/4/20 t 1 ayou :L _TPL47 s_v 5 Orbi Lex .. 15/11/2019 10:1815/11/2019 10:18 ZÜRICHZÜRICH PERUGIA PERUGIA Other offices:Other offices: SAN MARINO MARINO SAN SAN www.glp.eu www.glp.eu in your pocket pocket your your in in EU IP Codes Codes IP IP EU EU The only app to consult and get and get app to consult app to consult The onlyThe only updated on the European IP law IP law on the European on the European updated updated GLP being a top-level European player. European player. GLP being a top-level GLP being a top-level The commitment of the Group has led toThe commitment of the Group has led to GLP S.r.l. GLP S.r.l. Via di Corticella 181/4Via di Corticella 181/4 40128 BOLOGNA 40128 BOLOGNA Tel Tel +39 051 328365 +39 051 328365 +39 051 4173102 +39 051 4173102 Fax Fax E-mail [email protected] E-mail [email protected] The quality of our services and our ability to achieve our our The quality of our services and our ability to achieve The quality of our services and our ability to achieve services for a structured protection of intellectual property of intellectual property services for a structured protectionservices for a structured protection both as plaintiff and defendant – throughout the world. – throughout the world. lawsuits – both as plaintiff and defendantlawsuits – both as plaintiff and defendant has been offering a complete range of of GLP has been offering a complete range GLP has been offering a complete range more than 50 years more than 50 years For For Our Clients range from artisans to some of the Top Companies on thethe Companies on Companies on of the Top of the Top from artisans to some from artisans to some Our Clients range Our Clients range list, for whom we provide initial consultancy and support in consultancy and support in 500 list, for whom we provide initial 500 list, for whom we provide initial Forbes Forbes Clients' high objectives make us leaders in this field at worldwide level. in this field at worldwide level. us leaders us leaders Clients' high objectives make Clients' high objectives make Your European European Your Your IP Partner IP Partner GLP S.r.l. GLP S.r.l. Viale Europa Unita 171Viale Europa Unita 171 UDINE UDINE 33100 33100 Tel Tel +39 0432 506388 +39 0432 506388 +39 0432 507735 +39 0432 507735 Fax Fax E-mail [email protected] E-mail [email protected] mobile mobile first ever first ever solution.solution.
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Since 2012 regulations on Industrial Property in one Property in one Property in one on Industrial on Industrial regulations regulations the brand new version of the the new version of new version of the brand the brand and Italian and Italian all the European all the European app to consultapp to consult — — 2.0 by GLP 2.0 by GLP to EU IP Codes to EU IP Codes Welcome Welcome one simpleone simple different different different GLP FP.indd 1GLP FP.indd 1 BROAD CLAIMS 29 ” THE PATENT LAWYER THE PATENT The lure of lure The broad is claims tempting but a cautious approach should be adopted. “ Contact LexOrbis Counsel Special DPS Parmar, [email protected] certain: that drafting of specification playsused terms the of a interpretation in role dominant in the claims. The specification ishighly always to relevant claim construction and is the single best guide to the meaning of a claim term in dispute. There exists between a the gulf of disclosed normally patentee The product. commercialized difference invention and the has the ability to claim rights significantly over the meet to disclosed been has what than more requirement of disclosure. Armed with a negative a with Armed disclosure. of requirement persuaded are patentees others, prevent to trait they than more off bite to drafters patent the by limits the of crafting to comes it when chew can of claims. The lure of broad claims is tempting but a cautious approach should be adopted. without claims broader draft should drafter The embodiments narrower claiming of track losing that may be important. commercially Such an approach would provide a stronger patent to defend and enforce even when later. invalidated claims are the broad and examples and case” case” or lack of get for patentability for get “in vivo” vivo” “in Mayne genetically engineered genetically case, the Federal Circuit Dekalb Mayne Mayne fatal to the broad claims and made these made and claims broad the to fatal . In both of these cases, one thing is Kai adequate support or enablement as seen in the in seen as enablement or support adequate “Plant Genetic a Therefore, case”. broad claim CTC Legal Media CTC Legal claims as anticipated by Kai. The PTAB and court and PTAB The Kai. by anticipated as claims gave the claims their broadest reasonable term ‘in vivo’ in general means in the living body living the in means general in vivo’ ‘in term of a plant or animal....". Both of proved these findings the by intended was perhaps which interpretation, case. claims in this the broad of drafting clever remarks Cautionary The clever drafting of broad claims for clients sometimes backfires. The drafters should be more careful while drafting broad claims. broader claim A may suffer anoverlap issue with prior art as seen in the “ tar vulnerable a become could and validity court the case, genetic plant the In proceedings. attacks during specification the in given examples the on relied infringement to claim broad the of scope the limit to dicots for The dicots only. monocot plants (Corn) were found to be not infringing the “plant genetic” patent limited to dicots. In the in the provided compositions” “pharmaceutical of specification andfound the claims anticipated by relied on the definition of of definition the on relied age 29 Page :04 10 22/4/20 t 1 ayou :L _TPL47 s_v 5 Orbi Lex viz about Mayne contended CTC Legal Media CTC Legal Mayne t, a diluent, a filler, a diluent, a t, essentially essentially of colouring agent, a , which discloses administering discloses which , : Kai 927 F.3d 1232 (Fed. Cir. 2019) the the composition exhibits certain with with challenge to patent Merck confronted the confronted Merck patent to challenge A pharmaceutical composition, pharmaceutical A consisting 9. of essentially drug; antifungal an azole about 100 mg of and having acidic polymer[s] more one or and groups; functional additional more one or optionally the group from selected ingredients a disintegran consisting of an inert solid matrix, a an inert solid carrier, lubricant, a glidant, a ammonia, an water, pigment, a flavour, chloride, methylene and agent, alkaline a the composition provides vivo in wherein at least 100 ng/ml, after of mean CMAX state. in the fasted administration In this case, the Board (PTAB) gave the claims the gave (PTAB) Board the case, this In Claim 9, read as Claim 9, read In the In that the claimed pharmaceutical composition is composition pharmaceutical claimed the that non-toxic, and that its in vivo pharmacokinetic parameters are limited to humans only. argued that, because the embodiment in the specification is from a human trial, the claims humans. to should be limited 100 100 mg of the azole antifungal drug MFB-1041 to dogs, in solid dispersion with hydroxypropyl methylcellulose phthalate carboxymethyl cellulose (“CMEC”). HP-55 and (“HP-55”) CMEC “are both in patent the ’745 as qualifying or the counter, the In polymers.” patentee their broadest reasonable interpretation. Substantial interpretation. reasonable broadest their evidence supports the Board's findings based on the extrinsic supported its construction that freedom from evidence, which toxicity is not part of the claims. further So far, as the covers it concerned, is Vivo in term the of sweep term the of definition the of view in also, animals in provided the specification which "[t]he states Broad claims and anticipation claims and anticipation Broad In another recent example of broad claims claims challenged the all that ruled court Federal of U.S. Patent No. 6,881,745 (the ’745 patent) were unpatentable as anticipated or obvious. pharmaceutical a patent ’745 the in claims Mayne composition consisting drug and at least an antifungal 100 azole mg of one polymer having acidic functional groups, wherein vivo. in pharmacokinetic properties Mayne Mayne Pharm. Int’l Pty. Ltd. v. Merck Sharp Dohme & Co., and seed claims) was pruned to dicot plants The only. Court ruled that the reach of US 236 the as such monocotyledons to extend not does products. accused corn viz Plant Plant Genetic
gene, in some cases bar "a seed of the plant of Claim 8." Claim of plant the of seed "a and dicotyledonous plants and plants dicotyledonous and
in the capacity as a selectable marker. Résumé DPS Parmar Mr heads the Intellectual DPS Parmar Mr practice (IPAB) Board Appellate Property Since joining the IPAB at LexOrbis. group in instrumental in 2011 he has been insightful and writing path breaking issues. law decisions on Indian patent legal These include establishing subject matter, positions on excluded and disclosure applications, divisional joining IPAB, Before requirements. with the Indian Patent worked Parmar He years. 27 over for Office (IPO) World India at the represented (WIPO) Organization Property Intellectual at the programs follow-on and attended Offices. Patent Japanese and European of in the recognition instrumental was He the under and IPEA IPO as the 15th ISA also He (PCT). Treaty Cooperation Patent Intellectual the as the head of served (IPTI). Institute Training Property “A plant cell having a heterologous DNA having a heterologous cell plant “A its genome; said DNA into integrated stably fragment DNA comprising a heterologous acetyl an having protein a encoding a which inactivates activity transferase in said cell.” inhibitor synthetase glutamine The principle Claim1 read as The principle Claim1 read The Parties refer to the second group of Claim 8, which is representative of claims 1 claim the cells of which consists of plant “A and infection to which is susceptible and and Agrobacterium by transformation thereafter.” regeneration capable of Claim 9 claims 9 Claim The plaintiffan suffered enablement stigma monocotyledons requirement requirement for all type of plants serving subsets. First, two claims and into 1-5 10- down tissue cell, the call Parties the what comprise 11 claims'). cell `the (hereinafter claims culture and group This claims. seed” and “plant the as claims includes Claims 8-9 and 12-15. reads: 12-15, products and conducted research into which corn which into research conducted and products plant cells contain the and 8-9, 1-5, claims infringe products defendant's break claims of group This patent. '236 the of 10-15 the exclusivity of Claims 8-9 and 12-15 (the plant (the 12-15 and 8-9 Claims of exclusivity the Specifically, the plaintiffs alleged that the on broad claims to such an extent all broad Claims 1-5 and that 10-11 (the cell claims) the were invalidated by the court as (the plaintiff) failed to prove the enablement ” THE PATENT LAWYER THE PATENT
BROAD CLAIMSBROAD 28 There is no statutory limit on drafting limitations of a claim, as there are multiple in ways which claims be may interpreted the by courts. DPS Parmar DPS “
age 28 Page :03 10 22/4/20 t 1 ayou :L _TPL47 s_v 5 Orbi Lex PARRALLEL PETITIONS 31 Harmonic Intel VLSI Corp. Intel v. THE PATENT LAWYER THE PATENT IPR2019-01416, Paper 10 IPR2019-01416, Paper Pfenex Inc. v. Glaxosmithkline v. Inc. Pfenex Samsung Electronics Co. v. Co. Samsung Electronics denied denied one of two petitions had more success. Two petitions had more success. Two 19 15 18 Weber, Inc. v. Provisur Technologies, Provisur v. Inc. Weber, 16 14 Petitioner Petitioner filedtwo petitions based on https://www.uspto.gov/TrialPracticeGuide IPR2019-00733, Paper 13 (Oct. 17, 2019) (granted for 2019) (granted 17, 13 (Oct. Paper IPR2019-00733, 17 The Petitioner in in Similarly, Applying the same logic but to a different ut not the other. The Board explained The that explained ut Board “[t]his not the other. different prior art Thedifferent grounds. Board instituted both, noting that Patent Owner disputed the combinability of the for one references ground b NuCurrent, Inc. NuCurrent, challenged the same claims of a patent but under different prior art grounds. Board The instituted both petitions, observing that “disclose[d] that grounds art prior asserted petitions the the of the [] claimed patent in features different was petition one in reference primary The ways.” “generally focused on an inductor structure,” petition other the of reference primary the while operating for circuitry and “methods on focused inductors.” Inc., obviousness for case the that implies difference presented in the two petitions different is with materially wholly different strengths and weaknesses.” in Board the outcome, Biologicals SA and instituted only one of the petitions. The Board observed that, other than provide not does conclusory “Petitioner argument, attorney any meaningful explanation as the of complexity or length, specificity, to number, why the claims . . . justifiesof our review both petitions.” Petitioner’s argument was further undermined because some challenged claims were in both duplicative be to appeared what under petitions grounds. because because the differencesbetween the grounds were not “sufficientlymaterial tooutweigh the Patent and Board the to costs and inefficiencies , 815 F.3d 1356, 1367 (Fed. Cir. 2016). Cir. 1356, 1367 (Fed. Inc., 815 F.3d Tech., Avid Inc. v. “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” an IPR proceeding.” institute compelled, to but never is permitted, “[T]he PTO at 2019), available CTPG at 59-60 (Nov. Consolidated. Guides, Inc., Rovi v. LLC See, e.g., Comcast Cable Commc’ns, (denied). 25, 2020) 11 (Feb. Paper IPR2019-01417, (granted); 11, 2020) (Feb. § 42.15(a)(3). C.F.R. See, e.g., 37 § 42.24. C.F.R. See 37 Inc., Techs. IPA v. See, e.g., Google LLC 16, 2019) (denied); 8 (Oct. Paper 20, and 21), IPR2019-00735, claims 1-12, claims 1, 2, 4, 5, and 7), for (granted 13, 2020) 11 (Jan. IPR2019-01194, Paper LLC, Tech. 18, and 20). claims 13, 14, 17, for (granted 13, 2020) 11 (Jan. IPR2019-01195, Paper 16, 2019). 12 (Oct. IPR2019-00810, Paper 14-15. at Id. 11, 2020). 13 (Mar. IPR2019-01538, Paper 11, 2020); 14 (Mar. Paper IPR2019-01537, 14 at 67. Paper IPR2019-01537, 7 Paper IPR2019-01471, claims 1-9); for (denied 11, 2020) 7 (Feb. Paper IPR2019-01470, claims 10-20). for (granted 11, 2020) (Feb. 7 at 13. Paper IPR2019-01470, 1, 2019). 13 (Nov. IPR2019-01018, Paper 1, 2019). (Nov. 13 at 6-7 see also IPR2019-01019, Paper Id. at 5-6; 15 IPR2019-00860, Paper 13 (Sept. 25, 2019) (granted); IPR2019-00858, Paper on rehearing). (granted 2020) 7, (Feb. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Gregory Huh Gregory Bowser Jonathan Calmann Clements Bumble Petitioner 11 Dropbox, Inc. Dropbox, Petitioner filed Petitioner 9 and this factor may 12 8 Petitioner Petitioner filed two petitions, 13 10 But having numerous claims in a challenged There are exceptions, however, to the have contributed to the Board’s determination. the Board’s to contributed have CTC Legal Media CTC Legal Challenging the same claims art prior on different is petitions parallel of use common second The a to challenges independent multiple present to among challenges splitting When claims. of set multiple petitions, the likelihood of grounds the where multiple increase to tends institutions are differences those and different materially are well-explained. A lack of explanation, on the hand, other can be detrimental. In WhitServe v. LLC, necessary were petitions two that argued Petitioner because of the number, specificity,and length of the challenged claims. The Board disagreed expired. Petitioner then challenged all 89 claims 89 all challenged then Petitioner expired. across five petitions. The duplication only among challenge repeated the be to appears petitions the of an independent claim dependent so claims could that be challenged. all The of its Board instituted all five petitions, finding that Petitioner’s actions were reasonable in view of could Owner Patent claims of number large the have asserted, its refusal to dispute, streamline and its “failure to a the proffer stipulation that may narrow the at the Board. parties” dispute between the Petitioner that likelihood reasonable a established would prevail with respect to the challenged claims.” patent patent is not a getting for prerequisite multiple petitions instituted. For example, in LLC, Group, Match v. Inc. Trading generally favorable treatment petitions of addressing multiple distinct claim LLC, 2017 Uniloc v. Corp. Microsoft sets. In filedtwo parallel petitions, one challenging claims 1-9 and the second challenging claims 10-20. In what outcome, the appears Board instituted only the petition to be “find not did it because 10-20 claims challenging a minority persuasive Petitioner’s argument that ‘no claim is being challenged in both petitions,’” stating that “[s]uch reasoning would justify as is many which patent, a in claims are there as petitions It untenable.” should be noted that challenged claims 1-9 were not asserted against Petitioner in a co-pending litigation, each challenging all 20 claims of the patent. two two petitions to challenge 12 claims (with each petition addressing just six claims). The Board found that institution on both in “distinct petitions is petition each because appropriate was that no claim is addressed in both petitions.” Denying one of the petitions “would leave one set of claims determination that Petitioner unaddressed, has more than despite our age 31 Page :13 10 22/4/20 t 1 ayou :L _TPL47 _v3 LLP Boone Haynes 5 For 6 but patents 4 CTC Legal Media CTC Legal 3 Microsoft Corp. v. IPA Technologies IPA v. Corp. Microsoft The Board may exercise its discretion its exercise may Board The 2 Patent Patent Owner accused Petitioner of 7 Parallel petitions usually relate to one another one to relate usually petitions Parallel art; or prior art. prior using different sought filingPetitioners to have justify multiple and deny institution of one or more parallel petitions if unpersuasive. explanation the Board finds Petitioner’s can have far more claims. Petitioners sometimes Petitioners claims. more far have can turn to parallel petitions to challenge claims more than would otherwise PTAB’s word fitcount limit for a withinsingle petition. the Parallel Parallel petitions challenging different claims avoid duplicating issues between proceedings institution. of likelihood greater a have and in one of these ways: ways: these in one of • claims using the same different challenging • claims overlapping) challenging the same (or degrees varying with reasons many for petitions of success. Specificexamples and the Board’s below. discussed further are responses claims in Challenging different petitions different The rules PTAB’s tend to presume that an IPR will challenge 20 claims, or fewer a succinct explanation of the differences between differences the of explanation succinct a the petitions, why the issues addressed by the differencesare material, and why Board the should exercise its additional petitions if discretion it identifies one petition to U.S.C. 35 under institute burden petitioner’s satisfies that 314(a).” § example, example, in Inc., infringing infringing “one or more claims” of a patent with 89 claims. Petitioner sought to streamline the dispute, but Patent Owner refused to engage before Petitioner’s one-year IPR time bar had Eugene Goryunov Eugene Theo Foster David L. McCombs David 1
THE PATENT LAWYER THE PATENT he Patent Trial and Appeal he Board (PTAB) Patent Trial has broad discretion to deny institution of an IPR trial even where Petitioner
Résumés Haynes at attorneys all are authors The in all and specialize and Boone LLP and district court trials PTAB aspects of techniques. resolution and dispute at the Patent Trial and Appeal Board’s discretion to deny parallel petitions parallel deny to discretion Board’s Appeal and Trial at the Patent trial. review partes an inter for Jonathan Bowser, and Calmann Clements of Haynes and Boone, LLP look LLP and Boone, Haynes Clements of and Calmann Bowser, Jonathan David L. McCombs, Theo Foster, Eugene Goryunov, Gregory Huh, Gregory Goryunov, Eugene Theo Foster, L. McCombs, David The USPTO’s Consolidated Trial Practice Guide Trial Consolidated The USPTO’s petitions in the order in which it wishes which the it in petitions Board in the order to consider the merits, if the (2) and petitions, the of Board any institute to uses discretion its when there is a dispute about priority date requiring date priority about dispute a is there when arguments under multiple prior art references.” Petitioner bears the burden to multiple petitions explain challenging the same patent why are necessary by providing “(1) a ranking of the (CTPG) (CTPG) instructs that “one petition should be sufficient to challenge the claimsof a patent in may however, petitions, Parallel situations.” most be appropriate “when the patent or owner litigation in claims of has number large a asserted in response to developments in an earlier-filed co-pending litigation, or and IPR (2) proceeding parallel petitions that are filedby generally the article This time. same the near or at entity same petitions. parallel category: latter the addresses same or different entities in sequence, sometimes sequence, in entities different or same Exercise of this discretion has been prevalent in prevalent been has discretion this of Exercise situations where multiple petitions are filed against the same patent. Multiple typically fall petitions into one of petitions two “follow-on” that are filed eitherby the categories: (1) parallel petitions parallel institution and institution PTAB discretionary PTAB PARALLEL PETITIONS PARALLEL 30 has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. T
age 30 Page :12 10 22/4/20 t 1 ayou :L _TPL47 _v3 LLP Boone Haynes Haynes Boone LLP_v3_TPL47:Layout 1 22/4/20 10:13 Page 32
PARALLEL PETITIONS
Owner” of two proceedings. The Board 16 IPR2019-00860, Paper 15 asserted prior art. In what appears to have been determined that Petitioner’s second-ranked at 12. a unique situation, the Petitioner in Apple Inc. v. 17 petition (asserting anticipation) did not present IPR2019-01464, Paper 10 Firstface Co.26 filed two parallel petitions, both (Feb. 20, 2020); IPR2019- sufficiently material differences over its first- challenging the same claims on the same prior 01465, Paper 10 (Feb. 20, ranked petition (asserting obviousness over the 2020). art but under different claim construction same reference). The Board stated that a 18 IPR2019-01465, Paper 10 at positions. The Board instituted only one of the “different statutory basis for asserting that art” 10. petitions but explained that it was doing so did not, in its view, “justify the additional burden 19 IPR2019-01027, Paper 12 because it agreed with one of Petitioner’s of a second petition directed to the same claims.”20 (Nov. 13, 2019). proposed constructions and disagreed with the 20 Id. at 12-14. other. While the Board instituted only one IPR, it 21 IPR2019-01037, Paper 9 Multiple grounds susceptible to appeared to approve of the Petitioner’s strategic (Dec. 4, 2019); IPR2019- different patent owner defenses 01038, Paper 9 (Dec. 4, approach. The Board was “not persuaded that Material differences between two grounds for 2019). both petitions should be denied because Petitioner unpatentability do not have to relate to the 22 IPR2019-01038, Paper 9 at filed two petitions premised on different possible substantive teachings of the prior art. Instead, 21. claim interpretations.”27 they may involve ancillary issues, such as the 23 IPR2019-00290, Paper 15 provability of a reference as a printed publication. (July 5, 2019) (granted), Conclusion IPR2019-00291, Paper 16 In Google LLC v. Realtime Adaptive Streaming The likelihood of multiple institutions of parallel (July 5, 2019) (denied), 21 LLC, Petitioner filed two petitions, one based IPR2019-00292, Paper 16 petitions tends to coincide with the quality of on a Swedish master’s thesis and the second (July 5, 2019) (granted), Petitioner’s explanation for why multiple based on an IEEE journal article from the same IPR2019-00293, Paper 16 petitions are necessary. Petitioners seeking to author. The Board instituted both petitions (July 5, 2019) (denied). file parallel petitions should provide compelling finding that the “potential dispute over the prior 24 IPR2019-00292, Paper 16 at reasons, taking into account issues of fairness, art status” of the master’s thesis “justif[ies] the 19. timing, and efficiency. The examples provided in 25 CTPG, at 61; see, e.g., second petition.”22 the CTPG and the cases discussed above can IPR2019-00688, Paper 11 On the other hand, in Comcast Cable (Sept. 9, 2019) (granted for help guide practitioners to put their petitions in 23 Communications, LLC v. Veveo, Inc., Petitioner first-ranked petition) and the best position for favorable consideration by filed four petitions, each presenting different IPR2019-00689, Paper 11 the Board. prior art grounds. The Board instituted only two, (Sept. 9, 2019) (denied for explaining that “the potential to antedate a second-ranked when This article reflects only the present personal reference” in Petitioner’s first-ranked Petition Patent Owner stipulated it considerations, opinions, and/or views of the would not attempt to warranted institution of a second petition, but authors, which should not be attributed to any disqualify a reference in 24 not more than that. Patent Owner can defeat first-ranked petition). of the authors’ current or former law firm(s) or Petitioner’s justification for filing parallel petitions 26 IPR2019-00612, Paper 11 current or former clients. based on disputed prior art status by stipulating (Aug. 5, 2019) (granted); that it will not dispute the prior art status of an IPR2019-00611, Paper 11 asserted reference.25 (Aug. 5, 2019) (denied). 27 IPR2019-00612, Paper 11 Competing claim construction at 8. Contact positions Haynes and Boone, LLP Not every instance of multiple petitions involves https://www.haynesboone.com/ differences in either challenged claims or
32 THE PATENT LAWYER CTC Legal Media
Barreda Moller_FP_NEW.indd 1 07/04/2020 09:24 RUSSIA 35 THE PATENT LAWYER THE PATENT In accordance with Article 1345 of the Civil of intellectual property. This is also true of patent of true also is This property. intellectual of Code Civil the of 4 Part 72, Chapter which to law, is devoted. Federation the Russian of Code, patent rights shall be applicable to such subject matters of models. intellectual utility and designs industrial inventions, property as ” Inventors of are aware for need the patenting. Roman Larshin Roman “ ne of the priority objectives of Russian Federation state policy is to stimulate the use and development and research Résumé Larshin Roman in the and partners and he is specialized at Zuykov is a lawyer Roman provides his activities, he In the course of property. intellectual of area rights on the of the protection to clients on issues related support to legal individualization. means of and equivalent activity intellectual of results of the interests in representing experience has considerable Roman general courts and courts of in arbitration companies and foreign Russian in Federation, the Russian Court of jurisdiction, including the Supreme as well as property, intellectual of the protection to related disputes Court. City cases in the Moscow "anti-piracy" participation in Roman Larshin of Zuykov and partners discusses a recent patent action patent a recent and partners discusses Zuykov Larshin of Roman part. a crucial played which his firm in According According to Rospatent, 35,511 applications to largely corresponds legislation civil Russian results results of intellectual labor and innovation in advanced industries. This was confirmeddelivered who by Putin, Vladimir President Russian the Address to the Federal Assembly of the Russian Federation: technological problems, we shall continue “To to solve develop the research infrastructure, including complex the megascience class. I am of sure the targets that the opportunity equipment to and work ambitious on to tasks is unique undertake an incentive science”. go into people to young for the talented most for the registration of inventions were filed in 2019 and 34,008 patents were obtained as a result. More than 6,900 in registered the fieldof industrial designs, and applications were 5,395 subject This patented. matters were data indicates that inventors are aware of the need for patenting. After all, for the effective useof intangible resources, it is necessary to provide them. for regime protection legal appropriate an field the in treaties international of provisions the CTC Legal Media CTC Legal Defending the interests the Defending Kuzbass the Southern of Company Coal O age 35 age P 10:14 1 22/4/20 t :Layou 1_TPL47 kov_v Zuy 29/04/2019 12:53 Ukraine 01135, Ukraine, Kiev, 01135, Ukraine, e-mail: [email protected] Tel+Fax: +38 044 501-16-37 044 +38 Tel+Fax: 25 Chornovola Str., Suite 168 Str., 25 Chornovola PATENTS Kazakhstan AGREEMENTS 10th Floor, Suite 33, 10th Floor, e-mail: [email protected] Tel+Fax: +7 727 312-16-37 727 +7 Tel+Fax: 050043, Kazakhstan, Almaty, 28 Ryskulbekova Str., Block 4, Str., 28 Ryskulbekova zuykov.com Belarus e-mail: [email protected] 23/1 Pobediteley Avenue 23/1 Pobediteley Tel+Fax: +375 17 204-16-37 17 +375 Tel+Fax: 220004, Republic of Belarus, Minsk,
TRADEMARKS IP LITIGATION IP KAZAKHSTAN & OTHER CIS COUNTRIES OTHER & KAZAKHSTAN
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PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT AND DATA WHOLE: THE OF PARTS TWO PROTECTING IP SERVICES IN RUSSIA, BELARUS, UKRAINE, IP SERVICES e-mail: [email protected] 129090, Russia, Moscow, Tel+Fax: + 7 (495) 775-16-37 (495) 7 + Tel+Fax: Grokholskiy per., d. 28, 2nd floor per., Grokholskiy Zuykov.indd 1 RUSSIA 37 ” THE PATENT LAWYER THE PATENT The legislator gives to powers the patent holder to choose the methods of defense and restoration. “ Russia, 129110 Russia, Thus, the Court of Appeal agreed with the The above example of the judicial practice application subject matters. the of in the number an increase leads to in this field. disputes contain the provisions some states norms of violations, describing the signs and kinds of and restoring of ways as the well as in rights. However, violated the defending and correctly such provisions apply to order a certain to have it is necessary justifiably, qualifications. skills and of level the of subject matter the registered of holder the patent of validity is the law patent document The protection him. to granted time and cancelled at any be disputed may the grounds period. One of validity during its invalid can be declared which the patent for of that the subject matter is the fact the criteria with comply does not patenting patentability. of the rights from the exclusive of termination and Rospatent with filing of moment the use of this regard, In the patent. granting was which for the patent the subject matter, be cannot invalid, declared subsequently violation. be the law to recognized Contact and partners LLC Zuykov address: Mail 165 Box P.O. Moscow, 129090 Moscow, Office: Russia, d. 28, 2nd floor per., Grokholskiy +7-495-775-16-37 Fax: Tel.+ www.zuykov.com accordingly, the accordingly, exclusive right of Krivoshapko A.V. to the indicated invention is absent, the court’s opinion on the absence of the grounds for upholding the to claims of A.V. Krivoshapko defense the regarding Kuzbass” “Southern PJSC of the exclusive right to the invention for damages recovering No., patent by certified “XXX” the illegal use of the invention, prohibiting its use and compelling to violation is correct.” decision on the committed publish the court’s point of the view of first-instance courtand the and lawyers of partners, Zuykov and it ordered that the decision of the Mezhdurechensk City Court of 23 April 2019 in case No. (2- 2-3/2019 appeal be upheld, and Krivoshapko’s 137/2018) dismissed. conclude the following: us to allows • in a constant growth The data reflects • the patents of in the number The increase • legislation and the legal The international • the the most important points for One of • the entail shall patent the Cancelling “On Some Issues of their point of view, the representatives the view, of point their of an incorrect interpretation of the norms of the the norms of of interpretation an incorrect were they law; and procedural substantive aimed at misleading the court, and therefore, be upheld. to ought not the appeal Krivoshapko referred to the availability of the availability to referred Krivoshapko in the invention rights to exclusive but this patent with the patent; accordance on 29 Rospatent by invalid declared was 2018. May meant dismissing the claims. circumstances the refuted patent the of cancellation The the plaintiff. claims lodged by Considering Considering the dispute on the merits, the Rospatent. by invalid declared Court Property the Intellectual SIP-359/2018, Rospatent. of upheld the decision Court and the Supreme the the Plenum of Court of Arbitration the Supreme Plenum of 5/29 2009 No. 26 March Force into with the Entry Arising in Connection The Russian Code the Civil of Part Four of at the in force was which , Federation” judicial the disputed adopting moment of the declare decision to act, Rospatent’s of on the date force came into invalid patent entail Such a decision shall adoption. corresponding the and patent the cancelling filing the of right at the moment exclusive a Therefore, with Rospatent. application the utility the use of for actions persons’ is subsequently which for model, the patent as be recognized cannot invalid, declared the person for the rights of violation of the registered. was whom the patent The Kemerovo Regional Court Regional The the found: Kemerovo “As On 23 April 2019, the Mezhdurechensk City The lawyers of Zuykov and partners, who of Southern Kuzbass pointed out that: out pointed Southern Kuzbass of CTC Legal Media CTC Legal support • based on were the appeal of The arguments • the claims lodged, of the legality of proof As • these one of of proof The absence of Property Court, the decision of Rospatent remained Rospatent of decision the Court, Property resumed. were proceedings case the and valid, first-instance courtcircumstances: noted the• previously was following the invention for The patent • No. 2019 in case April 10 its decision of By • of Resolution of 54 Paragraph to According Russian Russian Federation patent No. for the group of inventions “XXX” is declared invalid in full and, Court of the Krivoshapko’s Kemerovo Region claims dismissed in appealed. Thus, the decision of the Intellectual full. Krivoshapko Property Court was appealed pursuant to the cassation proceedings, and the decision of the Mezhdurechensk City Court was appealed by Krivoshapko. the Southern of interests represented Kuzbass, considered the appeal to be unreasonable. In age 37 age P 10:16 1 22/4/20 t :Layou 1_TPL47 kov_v Zuy CTC Legal Media CTC Legal Thus, the cases for one patent were Krivoshapko Krivoshapko filed a statement of claim, violation, and indicate decision on the court’s and (Krivoshapko); right holder the actual and invention; using the patented roubles. 451,877,920 Here Here is an interesting case in the practice of The individual received (Krivoshapko A.V.) a On 29 May 2018 the Patent Office declared Court) was of direct importance for the objectivity of the resolution of the dispute considered by to proceedings the regard, this In court. another the resolve conflictbetween Krivoshapko and Southern Kuzbass were suspended until the Intellectual Property Court determined result, As a decision. Office’s the Patent of legality the according to the decision of the Intellectual independent claims did meet not the patentability appealed Krivoshapko step”. “inventive criterion the declare to Court Property Intellectual the to decision of the Service Federal for Intellectual invalid. Property considered simultaneously in decision the time, same the two At instances. judicial different of one of the courts (the Intellectual Property the Mine Ventilation Air”. Subsequently, Krivoshapko Subsequently, Air”. Ventilation Mine the patent the to rights exclusive his that considered had been violated by the Southern the of settlement prejudicial Kuzbass a As Company. Coal company the to appealed Krivoshapko dispute, with a claim for damages, Southern however, fact the of absence the to due refused Kuzbass violation. of that the court: requesting • publish the to Kuzbass oblige Southern • heating unit the air of the operation prohibit • damages in the amount of recover the lawyers of Zuykov and partners that has problem. the above to features similar patent for the Method invention “A for Heating Krivoshapko’s Krivoshapko’s patent invalid. Justifying decision, stated Rospatent that the in invention the the form in which it had been described in the ” In such situations, the insistence and self-initiated activity of the patent holder ends in lengthy judicial proceedings. “ insufficient competence, insufficient onclude a license agreement,
THE PATENT LAWYER THE PATENT to five million roubles determined at the roubles determined million five to a the court on the basis of of discretion violation; the of nature the utility the invention, the use of right of design determined the industrial or model which in the the price, on the basis of is usually circumstances comparable the use of the legal for charged or model utility invention, correspondent the used by way design in the industrial violator.”
This leads to significant financial costs for both for costs financial significant to leads This Article 1252 of the Civil Code outlines the ways the outlines Code Civil the of 1252 Article violating it. of a threat create the right or Article 1252 of 4 of Paragraph to according Code. the Civil with an indication of violation committed the right holder. the actual Under Article 1406.1 of the Civil Code, instead Code, Civil the of 1406.1 Article Under “1) thousand roubles ten in the amount from 2) the of value the in double the amount of Thus, in the case of violation, the legislator The problem is that the person holding the situations, the insistence and self-initiated activity self-initiated and insistence the situations, of the patent holder ends in lengthy judicial proceedings. damages huge of occurrence the to and parties in the of event a suspension in of manufacture, intellectual of matter subject disputed the which is used. property patent holder shall be entitled to grant the right to right the grant to entitled be shall holder patent use, illegal its of case the in and patent, the use his rights and interests. defend to has powers namely: can lodge claims, holder the patent • the right. of On the recognition •violate the actions that of On suppression • On damages. • the tangible medium of withdrawal On • decision on the court’s of On the publication The right of authorship and the exclusive The rights authorship right and of the exclusive into come shall matter subject registered the to the of certification the of moment the from force patent holder’s rights by issuing a patent. The RUSSIA 36 of of a claim damages, for the patent holder shall compensation: for claim a lodge to powers have the choose to holder patent the to powers gives depending restoration and defense of methods to and violation, the of nature and degree the on implementation and damages. demand their to due perhaps patent, firstly assumes that there is illegal useof the subject matter belonging to him, in respect of which it has been necessary consent and to c to obtain violated his the of restoration the for applies he and he lodges claims that are And, secondly, rights. disproportionate to the nature of the alleged violation. In turn, the who lawyers, specialize in have intellectual property, specific knowledge and are sure that there is no violation. In such
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PLANT PATENTS eleonimages / Shutterstock.com / eleonimages 39 THE PATENT LAWYER THE PATENT Résumés Bocharov Maksym at Practice Patent of is Head Maksym and and Partners (Ukraine) Gorodissky All-Ukrainian the of Vice president He Attorneys. Patent of Association advises clients on modern patent the most effective for strategies rights in intellectual of protection His particular CIS and Europe. Ukraine, of is in the field interest professional basic of including production chemistry, chemicals, and inorganic organic gases, plastics and resins, industrial and preparations pharmaceutical experience has extensive medicines. He IP of and enforcement in prosecution clients of interests rights and represents Office. Patent the Ukrainian before Oksana Karpenko Patent and Eurasian Oksana is a Russian Search Patent She is a Senior Attorney. and Partners Expert at Gorodissky she conducts patent where (Russia) with a and abroad in Russia searches foreign or Russian to according report professional particular Her standards. sciences, life of is in the field interest and including biotechnology pharmaceuticals. ” thsd.ha, for Planted area for cereal cereal for area Planted and leguminous crops wheat, (winter/spring barley, winter/spring grain, peas, oat, for maize is 15279.4 etc.) (sunflower crops industrial winter beans, seeds, soya and colza, sugar rapeseed etc.) seeds mustard beet, roots is 9026.0 thsd.ha, for vegetables and tubers, melons and food tomatoes, (potatoes, pumpkins, watermelons, beet, cabbage, carrot, cucumbers and gherkins) fodder is 1820.6 thsd.ha, for thsd.ha. is 1715,7 crops Hundreds of applications are filed annually. 2 “ , The proper notification of the Ukrainian Institute Ukrainian the of notification proper The Ukrainian Ukrainian law provides for substantive The Russian and Ukrainian patent systems CTC Legal Media CTC Legal for Plant Varieties Examination is the due document due the is Examination Varieties Plant for materials seedling of samples on Customs the for imported to Ukraine for the testing. Therefore, registration of each variety requires planning a strategy in order to provide the seeds or plant important also is It growing. start to timely materials to note that growing stations for substantive examination are located in regionsdifferent of on Ukraine, each farmland namely, tree of zones: steppe forest-steppe, “Polesye”), (Ukr. area forest subject matters. In some cases, patent protection be available will (also as known “plant patents”) usefulness based either on trials or on expert of genera and species on depending evaluation economic possessing varieties plant The plant. the usefulness are included in a special register - the State Register for Selection Achievements Permitted Use For (National List). This register protected. not are that varieties plant include may examination examination of plant varieties (including DUS- testing). If accepted, a substantive examination is carried seedlings (incl. out material related and documents based on material provided for substantive examination the application may PVO the necessary, If keeping). further and reports. DUS test foreign accept and results of examination of the same variety significantly. vary may stipulate that plant varieties and methods for obtaining them are unpatentable biological age 39 age P 10:17 1 22/4/20 t :Layou 5_TPL47 ky_v diss Goro CTC Legal Media CTC Legal acquired acquired shall be a clone, line, embodiments of a to variety, which In Russia, the examination for distinctness, The PVR in Ukraine is a subject to the special the to subject a is Ukraine in PVR The rights may be first-generation hybrid, and population. A variety A population. and hybrid, first-generation shall be considered suitable for the acquisition is variety the when rights property intellectual of distinct, new, uniform, and stable (according to the features denoted by a certain genotype or genotypes). combination of carried is variety plant of stability and uniformity for Testing and Protection of Selection Achievements Selection of Protection and Testing for and species some for and (Gossortcommission), genera by the breeders (the applicants) on the additional The guidelines. test national the of basis criteria to be checked with respect to varieties plant are their “economic usefulness”, and only those plant varieties which requirement are permitted meet for use this in Russia. Gossortcomission assesses the economic be provided only for species and genera included genera and species for only provided be in the special list approved by of Agriculture the of the Ministry Russian Federation. The provides countries two the of each of legislation for protection of intellectual personal property rights to non-proprietary plant varieties, Proprietary intellectual property rights to plant varieties (attested by a patent), and rights to market the plant variety List). National the on variety plant the (equivalent of register of the The various Commission the by authorized institutions the by out the agricultural potential of the country. Naturally, country. the of potential agricultural the the reform will agricultural sector, and so issues of protection change significantly of intellectual property rights related to plant the important. become extremely varieties law of Ukraine “On protection of rights to plant Under varieties”. the Civil Code of the Russian Federation, plant varieties can be protected as can and selection the achievements protection reading reading of a draft law on land market. In the opinion of Bank, the World the land will reform promote economic the growth, improve living enhance and people, Ukrainian the of standards of wheat: of million ha, Cereals and leguminous Cereals occupied crops 46.8 million ha, including 28.1 million ha 15.8 - winter spring - 12, 3 million ha. barley for area Planted 8.8 million ha, corn - was - 2.6 million ha, rye 872 thsd.ha, rice - 194 thsd.ha, and oats - 2.6 million ha. 1 Oksana Karpenko Maksym Bocharov Maksym in 1 expenses. varieties to varieties ten ten thousand of applications of plant breeders Ukrainian Ukrainian State in in Ukraine. Both 79559 thsd.ha 2 27841.7 27841.7 thsd.ha of of the state. Recently, Ukrainian ne of the main challenges created by a the ne by main of challenges created rising global population is maintaining food This security. might be supported
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discuss the plant patent landscape in the two neighboring countries. in the two landscape patent discuss the plant Maksym Bocharov, Ukrainian Patent and Trademark attorney, and Oksana attorney, Trademark and Patent Ukrainian Bocharov, Maksym Partners, and at Gorodissky Attorney Patent and Eurasian Russian Karpenko, Russia Russia and Ukraine are both for well-known Today in 10 Ukraine, there are approx. million Today registers registers each contain more than are are filed annually;Russian and by by increasing crops. Many researchers believe we need that to double production crop global by 2050. Despite the active development of president Volodymyr Zelensky initiated changes initiated Zelensky Volodymyr president 2019 November 13 on and sector agrarian the in the Ukrainian parliament approved the first rights protection (PBR). Hundreds rights protection National National companies and institutions as well as Zwaan Rijk (e.g. companies international foreign ha of arable farmland, possession most of which is in Seeds B.V. in Seeds Ukraine B.V. and Syngenta AG, BASF, Monsanto in Russia) apply for Zaadteelt en Zaadhandel B.V, RAGT 2n, Syngenta RAGT B.V, en Zaadteelt Zaadhandel countries are members of the International Union (UPOV) Plants of Varieties New of Protection the for plant for protection legal provide and their growing tradition and growing their rich resources. natural According to the State Statistic Services of the crops agricultural of area planted the countries, under the harvest in 2019 is and animals to constantly-changing environments. constantly-changing to animals and Creation of a new plant lot of time and money as well as variety considerable requires a aimed be to selection the effort; and knowledge at breeding or discovering and developing a features. with the desirable variety in genome editing technology, conventional breeding and selection still plays an important role in the agriculture sector, since keeping genetic diversity is crucial for adapting plants recombinant DNA technology and recent success recent and technology DNA recombinant Russia and Ukraine and Russia rights to plant varieties in varieties plant rights to Complex protection of IP of protection Complex PLANT PATENTS 38 plant varieties of different genera and species maize, peas, (wheat, soya, beet,sunflower, and criteria.. which met patentability others) many compensate for breeders’ and investors’ and breeders’ for compensate Russia and O
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for plants as such. In Ukrainian practice, patent it is permitted to associate a trademark, trade protection for plants obtained by essentially name, or other similar indication with a registered biological processes is available in some cases, variety denomination, but the denomination Russia and provided that claims include a nucleotide must nevertheless be easily recognizable. The “ sequence, an amino acid sequence, and other rules for the denomination in both jurisdictions Ukraine characteristics necessary for identification by correspond to article 13 of the UPOV Convention. are both technological means (by genetical/biochemical Under the Russian practice, the fact of registration or other complex methods) and provided that of a new plant variety and entry of its name in well-known these characteristics are not related to obtained the State Registers does not lead to acquisition plants belonging to limited groups as cultivated of exclusive rights for the denomination, but for their plants within a species, and may extend to the prevents registration of the identical or similar growing entire species and/or higher taxonomic groups name as a trademark in respect of the similar of plants. Usually during examination of such goods or services by the third parties. tradition patent applications applicants should file strong Intellectual property objects such as patents, and rich arguments in response to preliminary refusals. plant varieties' patent, and trademarks may be Some cases are successfully considered at the included in the Ukrainian Customs Register in natural Board of Appeal after final refusal. order to control the importation or exportation Traditionally, the development of genetic of goods. The Russian legislation makes no resources. engineering methods has allowed for patent provision for the possibility of including patents protection of engineered plants as inventions or plant varieties into the Russian Customs both in Russia and Ukraine, provided that all Register but allows trademarks to be included patentability requirements are fulfilled, and the in the Register. claims include sufficient sets of technical Significant reform of Ukrainian legislation on ” features for their identification, and the features land market creation declared by the Ukrainian or traits acquired by the transgenic plant. Some president, harmonization of Ukrainian law with specific issues are also connected with use of the law of European Union which was started plant varieties that were obtained with the use after adoption of the Association Agreement of genetic constructs. Amendments to the Law between the Ukraine and the European Union, of Ukraine “On the State Biosafety System for and the future establishment of a High Court on the Creation, Testing, Transportation and Use of Intellectual property, all open a new page in the Genetically Modified Organisms (GMO)” in case protection of intellectual property rights related to of adoption by the Ukrainian parliament agricultural production in Ukraine. International prescribe the creation of an examination body, sanctions against Russia have led to a significant which will issue the permission for filing of the drop of inflow of foreign investments in the application of the new genetic construct into the agricultural sector; however, one must admit State register. Registration of the construct Russia’s potential in organic farming. We cannot should further allow obtaining GMO varieties discount the existing possibility of expansion of that will enjoy the protection as a plant variety the cultivated land area using some of the idle obtained by traditional selection. Currently, the land on the Russian territory. Many national and central executive authorities maintain State foreign companies have already protected their registers of GMOs available on official websites. rights in Russia and Ukraine. Complex protection In 2016, the growing and production of GMOs of intellectual property rights to plants with use was banned on Russian Territory. Currently, the of all the above-mentioned mechanisms is a very State Register for Selection Achievements Permitted powerful instrument for doing and developing For Use does not include any genetically modified agricultural business in both countries. plant varieties, and under the Federal Law of the Russian Federation No. 149- FZ “On seed growing” importing and growing seeds of genetically modified plants is prohibited in Russia (except for examination and scientific research purposes). Under the legislation of both countries, and to comply with the UPOV Act, the variety shall be designated by a denomination which will be its generic designation. The denomination must Contact enable the variety to be identified and the Gorodissky & Partners variety shall be registered anywhere under the Maksym Bocharov same denomination. The variety shall be offered [email protected] for sale or marketed exclusively under the Oksana Karpenko granted denomination, even after the expiration [email protected] of the breeder's right in that variety. In that case
40 THE PATENT LAWYER CTC Legal Media
Gorodissky_FP.indd 1 30/04/2019 15:39 OUTSOURCING 43 THE PATENT LAWYER THE PATENT It is especially pleasing for us at IP at us for pleasing especially is It This goes with together the above, Often, outsourcing used to be a way to simply to way a be to used outsourcing Often, The amount work of and available resources What to think about when think about What to outsource to choosing Outsourcing paralegal services is simple, still for are there However, IT. to compared example good you reasons why should take great care when choosing a supplier, so as to ensure you well-prepared. are cut costs. Other beneficialeffects have already they they become less vulnerable as the supplier guarantees In delivery. other words, no matter have to partner the what, outsourcing it is up to the resources in place with expertise within the the area, necessary knowledge of service the deliver to able the be to and assignment, in the time specified. is rarely static, but this is something you longer no need to consider when you outsource. The resources required to deliver the service procured is what you are paying for – in our experience, one outsourced equivalent of 1.5 hours’ hour in-house time at is the client. the recruitment resource-heavy and time to end An processes. often is reason this that out point to wish we but cited as one of the advantages gained from outsourcing. Looking for the right personnel is increasingly becoming is it and consuming time know-how. expert with paralegals find to difficult Both the interview process and there Plus, time. takes subsequent personnel new of training is no guarantee how long company. your with stay will question the individual in Additional know-how, superior quality energy. and fresh Station to see our clients enjoying additional benefits from their decisionto outsource.For example, they often note their This energized. is an team effectthat should not be is re- underestimated. Heading your company’s IP administration is task responsible and the it is to create not easy a comprehensive perfect department in-house. closely Working and with external experts often inspires your own and the transfer, is knowledge personnel; there total quality standard of the team’s work also improves. ” Résumé Bohm Janne and has management team Station's IP of Bohm is a member Janne his In addition to digitization journey. been heading up the company’s extensive of years he has many administration in IP expertise services, outsourcing of in management and development experience industry. the IT from mainly There has There not been a particularly high demand for outsourcing in the IP sector to date. “ When companies When cost-efficient as well. as cost-efficient At present, the most compelling most the present, At IP administration to adapt to changes to adapt to administration IP flexibility and simplicity. It far is easier for At At IP Station, common reasons that we hear As outsourcing suppliers focus on specific Administration Administration work can also be divided into outsourcing the that say clients Station IP Many outsourced outsourced in the outside world compared to when this CTC Legal Media CTC Legal Advantages of outsourcing of Advantages flexibility. Greater reasons why our clients choose to outsource are resources for need The in-house. managed is work and changes know-how time, over maybe due contract, business big a winning acquisition, an to The opportunity losing an or important customer. to scale means example, up that and for down, companies can increase or resources, acquire reduce or divest skill human sets, add or easily. and quickly service the of parts eliminate vulnerability. and risk Reduced outsource all or part of their IP administration, incoming correspondence, to advanced paralegal advanced to correspondence, incoming provides supplier the where filing, as such services process. entire the assistance throughout administration is IP Why being outsourced? increasingly Many parts of traditional IP management have the example, for outsourced, be to able been long or validations, EP fees, renewal of management searches. However, the ability to procure the outsourcing assistant of and services paralegal has significantly in improved recent times and the benefitsare verylargely the same as for sectors. within other services are that many companies are wrestling with expertise, availability, as such issues HR-related Naturally, workloads. to changes unplanned and there is almost always more become to services a desire for these flexibility greater them gives administration IP of in fluctuations to sensitive less them makes and workloads and to personnel changes. Other clients quite simply view it as manage deliver to always they ensure to policy an insurance for it do they that say also clients Several time. in greater a them gives it reasons; strategic purely opportunity not only to focus on business, but also their that they gain expertise that core contributes to faster processing, higher quality gains . financial and, to know-how, they can ensure such expertise is always cutting edge, continuously improving, and that this of own their area develops further expertise. For the client, this eliminates most internal personnel administration processing, and frees up time for monitoring, control and instead. development different levelsof expertise. These levels can basic from and extend docketing monitoring of age 43 Page 20 10: 22/4/20 1 t :Layou 7_TPL47 on_v Stati IP CTC Legal Media CTC Legal Resource consulting Resource as a expert know-how offers The supplier team own your service to supplementary basis. on an hourly administrators, of Case-based services the supplier where services Volume to and is expected case per charges your than efficiently manage this more personnel. own This This article takes a closer look at the issues • need to consider for outsourcing to be successful. be to outsourcing for consider to need What is outsourcing? external an commissioning means it simply, Very party to take care of one part of a company’s When it administration, comes operations. to IP in most cases, these services can be divided categories: different two into • growing growing interest in outsourcing IP administration, largely concerned with the processes around patents. around outsourcing IP administration and the benefits thisoffers toIP Law firms andpatent departments. also We outline what companies advantages in outsourcing – and there is now a is now – and there in outsourcing advantages Janne Bohm Janne hy don’t hy more companies outsource some, more or administration? This all is naturally of a their IP
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There There has not been a particularly high Janne Bohm of the IP Station management group explains the range of the range explains group management Station the IP Bohm of Janne IP administration. by outsourced offered benefits In principle, most companies in every sector multifaceted question. One quick answer is that is answer quick One question. multifaceted only a limited number of suppliers can offer a services. such professional of range broad date, to sector IP the in outsourcing for demand which has meant little opportunity to make a strategic strategic choice. But – at a when time everything is changing at pace an – ever-faster all sectors and businesses are demands. At facing IP Station, we can clearly see an ever-increasing increased interest and tremendous curiosity all outsourcing what of terms in sector the from for mean would administration IP their of parts or them. are looking closely at ways of becoming more efficient. The questionof whether to outsource or activities business non-core of parts different keep them in-house is always on the agenda. Cleaning, fruit baskets, coffee service, payroll, accounts, HR matters and invoicing examples of services where we can often are see all when, and how? and when, administration – what, – administration Outsourcing of IP of Outsourcing OUTSOURCING 42 W
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been noted in this article and it is important to your supplier at the sharp end is an emphasize that, primarily, outsourcing is effectively excellent insurance policy for you. The a strategic partnership that should lead to: length of the trial period can vary but There are • Increased quality assurance and level of tends to be 2–3 months. If the supplier is “ expertise. unwilling to agree to a trial period, you strong • Increased focus on core business. may wish to consider why, and whether reasons why • Increased competitiveness. or not this is the right partner for you. Any successful outsourcing of IP administration 5. Exit plan you should is dependent on choosing a partner whom you Not every relationship lasts forever, so can trust and rely upon. Choose a supplier with make sure you and your partner both take great documented experience, one that you feel know what will apply in the event of a care when comfortable with. You need to feel that the possible separation. supplier is someone you can communicate with This is a common mistake (as people do choosing a easily and efficiently, that there is a personal not usually think about the end at the supplier. chemistry between you, and that you have share start), and something that is often ignored, values with. This means that the partnership has but make sure you include agreed every chance of working. Below are five success procedures for an exit. In most cases, this factors that should ensure that outsourcing your is a pretty straightforward, but think IP administration will be successful. through whether this should be ” 1. Decide what is to be outsourced, and specifically addressed in the agreement. define this This is something that is best done What is the best time to start together with your outsourcing partner. the outsourcing of your IP Talk through what should be case- administration? based and what should be time-based. You may not feel any need to do this at the This enables the supplier to properly moment, but sometimes the timing can be plan for the specific resources and skills especially good for your business, for example, that will be required to deliver efficient when: services to you. • You are streamlining certain roles during Certain things that should perhaps not organizational changes. be outsourced will vary from • In the case of mergers, the entire organization to organization. Contact department needs to be reviewed and with the end customer is sometimes changed. one such area. In this example, the type • If personnel that manage IP administration of customer contact in question will today are going to leave and you are not in a probably be the determining factor in position to employ new staff. how well defined the assignment is. • You have taken the strategic decision to 2. Do not focus blindly on price alone focus on your core business and want to It is better to also look at the big picture reduce your own administration. and the benefits for your business as • You wish to mitigate risk and avoid any a whole and make your outsourcing concerns about leave and personnel partner part of your business - this will changes. pay dividends. IP administration is No matter what you decide to outsource, it is something that can have significant important to take a diligent approach. It is all consequences if it does not work well. about your company and its business activities. This is something everyone in this sector You therefore need to take your choice of is fully aware of. Having the expertise, outsourcing partner seriously, no matter what experience, and procedures in place level task you are commissioning them to minimizes any interruptions. perform. The lowest cost solution may well be 3. Do not put all your eggs in one basket the best, but do not be fixated on price alone. Whether you are looking to outsource The most important thing is that you can rely on all or parts of your IP administration, your new partner, and that they perform their outsourcing everything in one go is not services properly. recommended. It is better to start small and gradually scale up. This reduces the risk and builds experience. Contact 4. Test period Janne Bohm, IP Station Always start with a test period to [email protected] fine-tune procedures and test your Tel: +46 70 731 49 21 supplier. Agreeing a trial period to test
44 THE PATENT LAWYER CTC Legal Media
Patent42 FP.indd 1 23/04/2020 11:19 ARIPO 47 THE PATENT LAWYER THE PATENT pest attractant or plant or pest attractant of activity regulatory growth compounds or chemical preparations dental, or toilet purchases toilet dental, or Specific therapeutic activity activity Specific therapeutic compounds or chemical of preparations medicinal plant growth attractants, regulators Peptides Biocidal, pest repellant, Preparations for medical, for Preparations Biocides, pest repellants or or Biocides, pest repellants Heterocyclic compounds Heterocyclic Fraction (%) Fraction Others 186 18.8 100 IPC Main Counting (%) IPC Class Accumulated Description A61K 278C07D 28.1 199 28.1 20.1 48.2 A61P 156 15.8 64.0 A01N 127C07K 12.8 26A01P 76.8 17 2.6 1.7 79.5 81.2 Figure 1: Trending of filing of AP patents claiming an EU priority claiming an EU patents AP filing of of Trending 1: Figure 2009 from published priority EU an claiming patents AP in identified IPC Class Main 2: Table 2019 to According According to both methods, there is no The most frequent countries of origin referred origin of countries frequent most The database ARIPO the used have we addition, In in to order Moreover, identify some variables Concerning Concerning the Designation of Member States CTC Legal Media CTC Legal that influence the decision of selecting Designated selecting of decision the influence that States by an applicant, we have Pearson correlation coefficients and calculated Spearman Rank correlation bycoefficientsreferring to the number of patents for each Designated State, variables following the and 5, Table to according related to each one of the ARIPO’s signatories countries: Gross domestic Population; GDP per capita (Purchasing power product (GDP); parity; international (GII). Index Innovation dollars); and Global correlation driving the selection of a certain Designated State according its GII. Moreover, the between correlation positive weak a is there number of patents and the GDP per capita for each Designated State. However, the results show statistically significantand patents of number the between coefficientscorrelation of the population (Pearson correlation coefficient of 0.55 and coefficientof0.77) and between the number of Spearman Rank correlation core businesses are presented in Table 3. Table in presented are businesses core to by the applicants of AP patents claiming an The United 4. Table in presented are EU priority States results come about from ARIPO patent from come applicants the wherein applications, in filed was document priority a and country this orPatent Patent Office the a National European 1. Table in mentioned country a from Office referred patents AP 1035 of set the for identify, to in Figure 1, the profileto order in of 5, Table thein presented states, member designation of contribute to the identificationapplicants European the to of interest of jurisdictions the main patents. AP the of when the applicant be done it by shall process, the patent application is filed.ARIPO If decides designated each inform shall it patent, a grant to state of the fact that a patent make may state a wherein granted, application be to about is a written communication to ARIPO, reporting that if a patent is granted ARIPO, by the patent shall have no effect in said state. The written communication from a state to ARIPO must be submitted before the expiration of 6 months from the date of the notificationby ARIPO and is that the must invention be based on grounds not patentable in with accordance the provisions nature the of because or Protocol, Harare the of be cannot because a patent or the invention, of the under effect no has or granted, or registered the of expiration After that of state. law national said 6 months, ARIPO shall grant the have patent, which states those in effect have shall which communication. written contrary any made not age 47 Page 21 10: 22/4/20 1 t :Layou TPL47 5_ ta_v Inven t CTC Legal Media CTC Legal to pharmaceutical to The top 10 most frequent applicants of AP The trend of AP patents claiming patents EU AP priorities in of The trend and technologies main the identify to order In The most frequent IPC (International Patent The results of our research indicate a growing a indicate research our of results The and agrochemical industries. The chemical are to referred C07K IPC and C07D classes main as example, for uses, have may that compounds active ingredients compositions. agrochemical in pharmaceutical or patent publications and their respective main Table 2. The data indicates that a significant number significant a that indicates data The 2. Table documents patent referred of Methodology and results Methodology priorities EU the of origins European 20 top The in AP patents were identifiedusing the Espacene patents database and is presented in Figure 1. the searching after obtained were results These ARIPO database for patents claiming priorities 1 Table in listed jurisdictions the from originated time this During 2019. to 2009 from published and is 1035. patents AP of number period, the total an claiming patents AP by to referred applicants published patents AP 888 of set the priority, EU the of means by obtained and 2019 to 2009 from Espacenet database was inputted PatentInspiration. tool free analysis patent into the Classification) Main Classes presentedare in is sought. The ARIPO system does not replace systems. national applications patent filed in of the trend number priority. EU an claiming patents) (AP ARIPO before The main technological fields observed are related to the pharmaceutical industry and the agrochemicals industry. The applicants major are European corporations with sectors. industrial a respective in their presence global the last years has ten been identified in ARIPO the database and are presented in Table 1. The search statement has comprised AP patent publications having priority from a European Patent Organization (EPO) Member State and published from 2009 to 2019, which in resulted 888 documents. Vítor Sérgio Moreira Moreira Sérgio Vítor 44.013.1 44.0 11.9 57.1 7.3 69.1 5.0 76.4 18.6 81.4 100 100 193 1038 elated elated to patents, CodeEP - EU PriorityGB (%) 457 FR 136 (%) Fraction DE 124 IT 76 52
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Résumé Moreira Sérgio Vítor background solid His International. Inventa at Engineer Patent a is Vítor patent all of care take enables him to Engineering in Chemical such as pharmaceutical, oil, expertise, of areas in several procedures industries. and biotech petrochemical n this article, we aim to identify the profile of the aim profile n identify we to this article, patent applications filedbefore the African Regional Intellectual Property Organization EU priority claims in ARIPO patent applications and looks at which sectors and looks at applications patent ARIPO claims in EU priority from. originate to most likely are those applications Vítor Sérgio Moreira of Inventa International examines the growing trend in trend the growing examines International Inventa of Moreira Sérgio Vítor ARIPO was created by the Lusaka Agreement Lusaka the by created was ARIPO Priority Origin Priority Country documents AP EPO Fraction Accumulated Kingdom United France Germany Italy Others Sum designate designate those member states where protection trademarks, trademarks, and other IP rights. In respect to patents, ARIPO is empowered to grant patents and administer (1984). such Protocol Harare the of States Contracting rights on behalf ARIPO applications of require the applicant to (ARIPO) in which priority is claimed via a document a via claimed is priority which in (ARIPO) originating from a Member European State Patent (EU priority). Office In doing intend so, to acquire we more information about the main technological fields and applicants from Europe that seek patent protection with the ARIPO. of states member for organization intergovernmental an is It (1976). cooperation in matters r
ARIPO patent applications ARIPO patent Looking at EU priority in priority at EU Looking ARIPO 46 Table 1: EU priorities origins in AP patents AP 1: EU priorities origins in Table I
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Table 3: Most frequent applicants in AP patents claiming an EU priority published Table 5: Designated States for AP patents claiming an EU from 2008 to 2018 priority
Applicant Count Fraction Accumulated Core Business Regional Office / Number Number (%) Fraction (%) Designated State of of Patents Patents SERVIER LAB 38 3.8 3.8 Pharmaceutical (%)
JANSSEN 30 3.0 6.9 Pharmaceutical ARIPO 1035 100 PHARMACEUTICA NV Kenya (KE) 832 80.4
SYNGENTA 23 2.3 9.2 Agrochemicals Tanzania (TZ) 756 73.0 PARTICIPATIONS AG and seeds Mozambique (MZ) 734 70.9 BAYER IP GMBH 23 2.3 11.5 Pharmaceutical Ghana (GH) 695 67.1 & life sciences Zimbabwe (ZW) 666 64.3 UNILEVER NV 22 2.2 13.8 Consumer goods Zambia (ZM) 655 63.3
TIBOTEC PHARM LTD 21 2.1 15.9 Pharmaceutical Uganda (UG) 643 62.1 Sudan (SD) 613 59.2 BASF AG 19 1.9 17.8 Chemicals Namibia (NA) 610 58.9 BAYER CROPSCIENCE 19 1.9 19.7 Agrochemicals AG and seeds Botswana (BW) 606 58.6
ENI SPA 17 1.7 21.5 Oil and Gas Malawi (MW) 592 57.2
BOEHRINGER 17 1.7 23.2 Pharmaceutical Kingdom of 576 55.7 INGELHEIM INT Eswatini (SZ) Gambia (GM) 576 55.7 Table 4: Number of hits according the country of origin of the Applicant Lesotho (LS) 573 55.4
Country Counting Fraction Accumulated Sierra Leone (SL) 572 55.3 (%) Fraction (%) Liberia (LR) 299 28.9
Germany 150 17.2 17.2 Rwanda (RW) 168 16.2
France 130 14.9 32.1 São Tomé and 15 1.4 Príncipe (ST) United Kingdom 92 10.5 42.6
Switzerland 83 9.5 52.1 applicants and patent documents related to the Finland 58 6.6 58.8 pharmaceutical (IPC classes A61K and A61P), agrochemical (IPC class A01N), and oil and gas Netherlands 54 6.2 64.9 industries. Amongst the Designated States in Italy 50 5.7 70.7 ARIPO, Kenya, Tanzania and Mozambique appear in the top 3 of the most wanted countries Belgium 43 4.9 75.6 for seeking patent protection by European United States 37 4.2 79.8 Applicants. Population and GDP are the variables associated with the process of deciding upon a Sweden 36 4.1 84.0 Designated State by an applicant. Others 140 16.0 100
patents and the GDP for each Designated State Contact (Pearson correlation coefficient of 0.59 and Inventa International Spearman Rank correlation coefficient of 0.86). Alameda dos Oceanos, 41, K21 Parque das Nações Conclusion 1990-207 Lisbon The number of AP patents claiming an EU Tel: (+351) 213 150 970/1 priority has grown in the last 10 years, from [email protected] about 50 patent publications in 2008 to over 140 www.inventa.africa in 2017. These results show a prevalence of
48 THE PATENT LAWYER CTC Legal Media
UTPS_FP_RHP.indd 1 20/04/2016 12:13 JAPAN 51 THE PATENT LAWYER THE PATENT According According to the JPO Status Report 4 Résumé Law IP Sonoda & Kobayashi is a leading Sonoda & Kobayashi firm, established in 1998 law IP Japanese firm The Tokyo. central in located and of with the specific intention founded was with a firm law IP Japanese a creating stress-free foster mindset, to global exceptional communication and provide services. Since then, Sonoda & Kobayashi unique A this goal. true to has stayed have and high standards philosophy represent exclusively to the firm allowed and domestic companies leading global and to enterprises, wide spectrum of in a the most trustworthy become one of and the prosecution for Asia firms in property intellectual of enforcement rights. Statistical Aspects of Studied of Aspects Statistical Actions Invalidation at filed Actions Nullity targets study present The the JPO in 2014. The targeted population was chosen for the sake of granted of validity JPO the rulings regarding by precision as recent from expected be can decision a where patents the EPO. European European Patent invention claimed the that require to interpreted Convention (EPC) be supported are by the prohibit the introduction of new matter by the specification and to amendments in view of the original disclosure. Furthermore, the claimed invention must be those for unambiguously and directly supported skilled in the art the knowledge. However, manner in which the having common general rules are applied to actual cases seems to be more stringent in the EPO than in the This JPO. claim the of evaluation the in applied also is rule for claim the denied EPO the wherein priority for priority when considered not the to be supported directly and claimed unambiguously by the prior application. In the invention is case where the JPO maintained the without patent amendments and EPO revoked the counterpart, the EPO denied the effectiveness of the claim step for inventive an lacked patent the that decided priority and consequently in view of a publication which was published filing actual the before but date priority the after the patent. of in Europe date 2019, two hundred fifteenActions Nullitywere filed at the JPOof Board a by decisions Actions in Nullity hundred 2014. Among two them, Appeals of the JPO were identified. Within the For Nullity Actions filed at Actions Nullity For JPO in 2015, a large the Oppositions range of European their decisions for been not have counterparts yet. finalized Dr. Yoshitaka Sonoda Yoshitaka Dr. Alison Santino 4 in Japan in ) are challenged in 3 (i.e., patents claiming priority Number of Requests for Nullify Actions Nullify for Requests of Number Our Our general impression, from this above Both the Japanese Patent Law and the CTC Legal Media CTC Legal front of the Board of Appeals of the Japan Patent Japan the of Appeals of Board the of front Office (JPO) and European the 2019, PatentReport Status JPO the to According (EPO). Office two hundred Actions Nullity were filed in 2014 were counterparts European their of twelve and subject to Oppositions at the EPO. cases, more than In one patent most application had been filed in the JPO or EPOfor each invention studied and more than one Japanese Nullity Action/European Opposition Invalidation Action) had been (hereinafter filedjurisdiction. in each described studied population outcome of is Invalidation Actions that at the the compared patentee tends to be for harsher the EPO (1) precisely, More JPO. the at outcome the with in one case, the EPO invalidated a European patent while the JPO decided to maintain its counterpart patent without amendments; (2) in patents European invalidated EPO the cases, six while the JPO maintained their counterparts although after amendments; (3) in three other cases, the EPO maintained patents only after amendments while the JPO decided that their counterparts were amendments. There valid were only the wherein EPO JPO and findings coincided in even two cases without maintaining the patents, and there situation was found no where the JPO stricter rendered a decision than Divergence in rulings appears to be primarily that based of on the the variation regarding disclosure requirements EPO. and freedom to amend claims jurisdictions. between Summary The purpose of this study is to compare the standards for invalidating counterpart patents a patent when to the same applications age 51 age P 10:22 1 22/4/20 t :Layou 5_TPL47 hi_v bayas Ko da & Sona CTC Legal Media CTC Legal 2 This This significant difference in percentage of Firstly, some observers note a tendency to This brings us to a second question: how dropped, from 231 Nullity Actions filed in 2015 to 2015 in filed Actions Nullity 231 from dropped, 112 filed in 2019. Inwords,other approximately 0.06% of granted patents in 2019 have been Conversely, Action. Nullity a through challenged according to the European Annual Patent Report Office’s of Oppositions increased over 2019, the last 4,061 to decade 2009 in the patents challenged 2,695 (from number of in 2018), and the percentage of patents challenged at the EPO largely exceeded that of Japan with approximately 3.18% of opposed. patents granted challenged patents may be explained factors. by of number a avoid conflict when observing relatively the non-litigious character of Japanese is Japanese society. industry interconnected; Moreover, competitors in one fieldmay of avoidance be partners an to leading field distinct another in open conflict in order not to harm relations. Finally, the success rate of Nullity Actions in partially might which limited, somewhat is Japan explain why the number of Actions Nullity filed small. is relatively year per JPO the and of when standards are EPO similar measured by the question, this answer to order In challenges? the followed outcome conclusions, its summarizes first article of by validity an analysis comparing the standards during validity invalidation proceedings in for front of the Board of Appeals of the Japan Patent Office (JPO) and European the Patent (EPO) Office through the examination of one family. patent a of study case is no one-to-one Two additional case additional Two been carried studies have have wish to you out. If do not information, more contact us. to hesitate there Accordingly, between correspondence patents the counterpart studied. Nullity Actions rather than rather Actions Nullity Japan are Oppositions in EP analogous to more Oppositions because Japan lack Oppositions in and proceedings oral little opportunity provide to the demandant for arguments the to respond holder. the patent of 2 3 1 and 1 in 2015 to in Japan in 異�申�” “ Nullity Nullity Actions can be Number of Requests for Oppositions for Requests of Number
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THE PATENT LAWYER THE PATENT
n n Japan, two ways are to offered interested parties seeking to challenge a patent. After being briefly abolished in 2003, Japan the Property Law discuss contrasting approaches to invalidation actions. invalidation to approaches discuss contrasting Law Property Dr. Yoshitaka Sonada and Alison Santino of Sonada & Kobayashi Intellectual Sonada & Kobayashi Santino of Alison Sonada and Yoshitaka Dr.
According According to the Japan Patent Office Status at the EPO and JPO and at the EPO invalidation actions actions invalidation validity standards in standards validity Comparing Comparing patent JAPAN 50 Patent Patent OfficeOpposition Proceedings (JPO) reintroduced any third party interested in revoking a patent Patent within six months following its publication. In parallel, adopted as another procedural the on focus will article This patent. a challenge method to outcomes of Nullity Actions in Japan Opposition proceedings in filedEurope against the same inventions. Announcement Advance an and 2019 of Report in February 2020, since the reestablishment of Opposition proceedings in 2015, the number of Actions Nullity filed at the JPO has significantly I
age 50 age P 10:22 1 22/4/20 t :Layou 5_TPL47 hi_v bayas Ko da & Sona JAPAN 53 0 0 0 to Invalidate to JPO Decision JPO THE PATENT LAWYER THE PATENT 6 0 0 With to Maintain to JPO Decision JPO Amendments The overall trend is harsher decisions upon The observed outcome from this study may Contact Intellectual Sonoda & Kobayashi Law Property 3401, Shinjuku Mitsui Building Suite Nishi-Shinjuku, Shinjuku-ku, 2-1-1 163-0434 Japan Tokyo, +81-3-5339-1093 Tel: www.patents.jp [email protected] Patent Office and Japan Patent Office during Patent during Office Patent Japan and Office Patent conducted was The research Trials. Invalidation using data on Actions filedNullity at the JPO in 2014 which had European counterparts which Opposition Proceedings. subject to also were Invalidation Actions before the EPO than the JPO. Indeed, in seven decision invalidation cases an issued EPO the studied, out of twelve patent the maintain to decided JPO the whereas either with or without amendment. As can be seen on the below table, less decision a issued among never JPO the population, the same EPO. the than patentee the to favorable be explained by and interpretation application of similar rules. It the divergence along requirements disclosure the that appears in the with the freedom to amend claims may differ between each variation can jurisdiction, be observed in the treatment of as to likely more seems EPO The priority. for claims significant deny claims for priority in the event that the supported as regarded not is invention claimed and directly obviously by the prior application. lack a find to EPO the to lead can reasoning This of inventive step in view of a publication which but before date the priority published after was patent the of Europe in date filing actual the 1 3 2 Without to Maintain to Amendment JPO Decision JPO ” With Without to Maintain to to Maintain to to Invalidate to Amendment EPO Decision EPO Decision EPO EPO Decision EPO Amendments The manner the in which rules are applied seems to be more stringent in the EPO than in the JPO. “ On the European side, an Opposition was filed was Opposition an side, European the On The No. ‘466 Japanese patent has claims which CTC Legal Media CTC Legal towards the requirements that the claimed feature claimed the that requirements the towards unambiguous and direct a in supported be must disclosure. the original by manner Conclusion The aimed study insight present to on provide the European the at outcomes between discrepancies and enablement. However, the Board of Appeals of the Board and enablement. However, rejected all the arguments the by Demandants amendment. without the patents and maintained decided. been had Actions Nullity above-described Although the Opposition was the continued Appeals of subsequently Board the withdrawn, Opposition of its own accord and held that the channel ‘measuring 1 Claim in “feature technical performance of a least two subcarriers of the not was system’ wireless the in used subcarriers originally disclosed, thereby extending subject-matter of the European patent beyond the the content of the application as claimed filed.” The invention purportedly exceeded the disclosure of the application as filed because value SINR that specifies specification the while measured, be must subcarrier every and each of the that claim the recites performance channel of at least two Furthermore, the Board subcarriers of Appeals recites “it are measured. cannot be seen technically how by measuring subcarriers, two only of performance cannel the pertaining the to plurality information feedback can be provided.” cluster of largely express the same idea patent, European ‘314 as No. revoked the of recited 1 Claim in although the Japanese language is not precise with of to objects. regard the singularity/plurality the none Opponents of raised lack of However, support and the Board Appeals of did not pay had it although matter the to attention particular lack the because support examiner to discretion of support was argued Itfeature. isof technical a different although for by the Opponents course unknown how the Board Appeals of of the JPO would have ruled on this issue if the manner. explicit an in raised was support of lack However, the case clearly shows a stringent approach by the Board Appeals of of the EPO by by an counterpart individual patent No. against 2,367,314, after the the European age 53 age P 10:23 1 22/4/20 t :Layou 5_TPL47 hi_v bayas Ko da & Sona CTC Legal Media CTC Legal Three Three Nullity Actions were filed against the Demandants: NEC, ZTE and Additionally, Huawei. the same entities filed Actions against the Japanese No. Patent family three other Nullity Invalidations the of course the During 4,201,595. actions, the Demandants invention claimed the that argued cited and documents thirty-three lacked inventive step, novelty, support, clarity the citations and reasons for each decision. for the citations and reasons Case study subcarrier-cluster adaptive with “Ofdma by loading” and selective configuration Inc. Adaptix, Sixteen Japanese patents were granted to the a through invention main above-described and divisional applications. Eight of their European counterparts were granted by the EPO. Five Actions were filedNullity against theJapanese patent family No. 4,213,466. The JPO held in all five actions that the attacked patent should be Opposition An amendments. no with maintained was filed against the European application counterpart No. by 10,175,770 a different entity than the Demandants in the Japanese Nullity The Actions. documents the cited by European Opponents were mostly differentThe EPO held JPO. the before documents cited from the that the claim for priority for patent was invalid and a document, which was the European published after the priority date but the before constitute to deemed was date, filing European prior art. The inventive step of the European denied. thereby was patent Japanese Patent No. 4,213,466 by three Method of Analysis of Method The study examines decision made by the Board comparing by Actions Invalidation the on Appeals of ” ” Competitors in one field be may partners another. in “ in Europe Number of Requests for Oppositions for Requests of Number
THE PATENT LAWYER THE PATENT
Although twelve inventions along with their two hundred patents targeted by Nullity Actions, Nullity by targeted patents hundred two European have to found were patents forty-nine counterpart patents, and twelve of them had received Oppositions in the EPO. Furthermore, in many of the studied patents, a plurality of patents has been granted from application and an Invalidation Actions have original not in patents the of all against brought been always the family. objective the studied, been have patents family Japanese seventy-two patent families involved patents and eighty-two European nineteen Nullity Actions filed patents, in the JPO and forty-eight European Oppositions. In addition, the fact that one or more Invalidation Actions necessarily not does family a to filed been have mean that all of the patents in the family have been attacked. JAPAN 52
age 52 age P 10:22 1 22/4/20 t :Layou 5_TPL47 hi_v bayas Ko da & Sona AI 55 THE PATENT LAWYER THE PATENT ocused on patent infringement ocused on patent The Dabus applications question effectively The comments covered a range of issues in WIPO’s Draft Issues Paper, with particular attention particular with Paper, Issues Draft WIPO’s being inventions the implications being of paid to autonomously generated by AI. While some maintain that this possibility is not something the into come has question the pressing, is that spotlight lately with the name that inventions filing two for applications patent of numerous as the inventor. a machine called “Dabus” inventors as named be can non-humans whether published decisions Two applications. patent on so far (by the EPO and UK IPO) have accepted these in inventor the indeed was machine the that as classified be cannot it that say but cases two been have cases Both laws. existing under such those as well as decisions, these and appealed, on light more shed should jurisdictions, other in and important question. this interesting states, states, more than 100 organizations, and over 100 individuals. Among the companies made that submissions were BlackBerry, Robert Bosch, Ericsson, Huawei, IBM UK, Intel, Merck, Tencent. Philips, Siemens, and Résumé M. Shape Steven who has engineer and electrical attorney patent is a registered Steven high-stakes in complex, companies technology preeminent represented and trademark patent litigation and foreign Property Intellectual represented has successfully since 1982. Steven matters prosecution f business litigation clients in complex claims, unfair claims, copyright Act Lanham and claims, trademark claims, and related secret trade advertising, competition claims, false of in a number as counsel has served antitrust and business causes. He aspects of in all experience and bench trials and has extensive jury injunctions, summary Court litigation including preliminary Federal and Circuit the Federal Appeals for the Court of judgments and appeals to represented has Steven Office. Trademark and Patent States the United Grant (IPR) and Post Review Partes (Inter proceedings clients in post grant Commission (ITC). Trade (PGR) and the International Review Steven M. Shape Steven s echnologies based on AI significantrole in patent practice will and, in play a growing the manage to helping particular, Dennemeyer’s Steven M. Shape looks at the role that AI technologies can AI technologies that Shape looks at the role M. Steven Dennemeyer’s patent of work the enhance and support can they how and patents, in play professionals. Part of that uncertainty may be that, while AI- while that, be may uncertainty that of Part In the recent IP Trend Monitor Survey conducted Survey Monitor Trend IP recent the In by the Dennemeyer Group and CTC Legal Media, Legal and CTC Group the Dennemeyer by CTC Legal Media CTC Legal More More than half of respondents said they were useful enough currently is there whether sure not it impact the and AI about available information have. will based tools can assist greatly in professionals delivering results for clients, they also raise will be questions needed about whether reforms to laws, regulations, and processes. Moreover, people way the in changes to lead may tools AI work and even in the type of work Unlike they almost any other technology, therefore, do. AI raises fundamental questions about both IP practice. and IP policy policy patent and AI and Governments patent offices WIPO by – led – are working already to identify and map out aspect other and patents for challenges policy the How AI tools will change will tools AI How practice patent now initiatives other and These enforcement. and commonplace. become soon will developed being two-thirds of respondents, and 69 percent of patent specialists, put AI ahead of issues all in impact terms its of work on in likely IP other the next fiveTasksyears. such as IP portfolio management, patent searching, and annuity identified as likely were in payments, particular, to be affectedand automation tools. A significant majorityof by AI,would AI and automation that said respondents machine learning, the improve ofefficiency IP services.However, the also a survey revealed degree of uncertainty. demand for patents to protect complex increasingly inventions. We are already seeing some new tools emerging that support patent prosecution, searching, portfolio management, of of IP in light of recently advancements launched a consultation in on IP policy AI. WIPO member 22 from responses received and AI and T age 55 age P 10:23 1 22/4/20 t :Layou 5_TPL47 Dennemeyer_v 23/04/2020 14:47
dennemeyer.com
The Dennemeyer Group offers services for services offers Group The Dennemeyer of management and protection the global rights. Property Intellectual your
since 1962 since Protecting ideas ideas Protecting Dennemeyer FP.indd 1 AI 57 ” THE PATENT LAWYER THE PATENT Some providers offer now AI-based patent drafting. “ +1 312 380 6500 +1 Some practitioners, however, are still skeptical still are however, practitioners, Some [email protected] Contact LLC Associates, & Dennemeyer 1500 Plaza, Suite Riverside 2 North 60606 Chicago, IL Tel: about the impact of AI, and some understandably some and AI, of impact the about their and work their to threat a poses it that fear skills. However, it is increasingly clear that AI accuracy efficiency, greater to promises deliver of number The work. patent to transparency and to continues year each filed applications patent percent 4 grew EPO the at applications increase; increases biggest the with example, for 2019, in more ever this In Korea. and China from coming complex world, AI-based tools will become essential to ensure that the to relevant remains the and effectively functions patent system needs. industry’s can There There have long been tools available to Because Octimine’s searches are based on Dennemeyer of co-founder the Pötzl, Mathias Looking ahead, such technologies Looking as Octimine Using sophisticated algorithms, Octimine can Octimine algorithms, sophisticated Using CTC Legal Media CTC Legal will also transform patent monitoring. For example, For monitoring. patent transform also will alerts can be provided weekly returning only can results be Such results. powerful search new networks neural the as Octimine, with achieved results and portfolio particular the by trained are from previous alerts. This technology powerful to tailored highly are that alerts in results provides information, targeted provides needs, user’s the and time saves to would have be that spent on relevance. limited of documents through sifting patents for Opportunities AI is transforming many aspects of our daily lives, including the way we work, shop, travel and entertain ourselves. The patent practice is quickly. coming is change the and exception, no in learning machine of use much see didn’t “We awareness But 2015. about until practice patent and years four past the over increased really has month,” every better and better getting now is it Mathias Pötzl. says Case study: Dennemeyer Octimine Dennemeyer Case study: An example of the opportunities presented by AI technology is Octimine, a Group. the Dennemeyer by service provided patent insight organize and identify relevant information in patent documents, but these generally on rely classification systems and Booleansearches. Octimine, however, uses machine learning to natural using semantically search to users enable language text in a variety of formats and, to refine with Searches filters. the the scope search of example, for results, search 1,000 these in information to show who has filed the most applications, who is collaborating with whom, and most significantly. developing which are technologies classification, patent than rather information textual it can identify documents beyond the limits of the normal classifications. This increases the chances that relevant results will be returned. Octimine can also be customized synonyms by that using are common for relevant all that a ensure to technology or particular industry considered. are results Octimine AI GmbH, said enables that machines the and some of the search of a lot over take to find can machines “Such humans: from analysis but they quickly documents pretty the relevant cannot replace a patent searcher completely. machine a for hard very still is interpretation Legal do.” to also be made using patent publication numbers. publication patent using made be also from publications similar most 1,000 the identify a database of more than 120 the illustrate million graphically also can It documents. patent age 57 age P 10:24 1 22/4/20 t :Layou 5_TPL47 Dennemeyer_v In many fields In many CTC Legal Media CTC Legal Going even further, with further, Going even valuation: analyze to AI can be used data, appropriate strength their evaluate and portfolios patent AI tools The areas. in particular weakness or in grow will assist such an evaluation to is collected, data sophistication as more claim scope, the including details regarding the of disclosures and overall ownership art universe. prior growing in made advances Thanks to Translation: already are AI systems language recognition, something translation, used in patent widely the given important that has become more documents in of growth exponential For and Korean. languages such as Chinese the by (developed Translate Patent example, is based on neural EPO and Google) and includes machine translation initial documents in 32 languages. Despite now professionals patent many skepticism, this software. by generated trust translations While and prosecution: Drafting applicants patent communication between the electronic, mostly now is and offices writing and preparing of process actual However, manual. applications is still patent patent AI-based offer now providers some a most of deliver to which promises drafting, when the application patent completed information certain with is provided system the complexities Given about the invention. people have many law, patent of will about these services, but it reservations and develop they see how to be interesting the supplement can they extent what to attorneys. patent of work and review: drafting Contract are analysis based on text AI tools law, of documents and compare being used to required. changes that are or errors identify area, in the patent be relevant will These on assignments, in agreements particularly and licensing remuneration, employee transfer. technology litigation is often Patent resolution: Dispute and in jurisdictions document-intensive and disclosures required are there where e-discovery obligations, discovery significant millions of even in thousands or can result to be formats having files in diverse and accurately that quickly Tools analyzed. text, from information relevant extract will, images, audio, databases and the like AI valuable. become increasingly therefore, aspects of in other a role also play may tools and outcomes litigation, such as predicting is There quantifying damages awards. whether as to however, doubt, considerable replace be able to ever will computers judges. or humans as advocates • • • •
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Here Here are some of the ways that AI can be searching: Patent mapping the thinks about filing a patent, to landscape and establishing the freedom this can be almost Yet essential. are operate the number given do manually impossible to which are art, prior and other patents of tools can AI day. every significantly growing documents, relevant the most help identify and based on pertinent information, professionals save to these results prioritize This can results. irrelevant time reviewing infringement quality assist in performing essential as in providing well as analysis, and quality the improve to information to vital applications – all your of validity and business risk. minimizing legal and analysis Risk management, patent AI, however, anoffers extra dimension. AI, Using however, AI tools can provide significant benefits to These policy questions are extremely important, extremely are questions policy These Other Other topics covered in the submissions to estimated 120 million patent documents available documents patent million 120 estimated in many different languages, and the number growing every day, AI essential to may keeping the soon business of patents become manageable and efficient. used: • • Patent Patent work is highly technical and involves a This deadlines. strict and data of volume significant means it can benefitgreatly from computing tools. Indeed, software has long been used by managing as such tasks for professionals patent annuity payments and communicating with offices. patent sets of with large algorithms, and sophisticated words or images recognize can systems AI data, (even language understand spoken), or (written in specialized contexts) and recommend and learning machine on based decisions or make outcomes. previous assist inventors and third parties in navigating the ever-growing world of patents. With an and it will take time to fully address them in a balanced way on a worldwide basis. meantime, AI’s impact on In the practical aspects the is increasing. work patent of AI in patent of Some examples practice WIPO included patentable subject matter, non- matter, subject patentable included WIPO obviousness, and the “person skilled in the art” test and which disclosure – are fundamental of all to the patent These system. and other relevant policy questions will be fully studied WIPO, by which will produce a revised written analysis later Other this patent year. offices,such as the EPO and USPTO, are also conducting studies changes whether at looking events hosting and regulations. and laws patent to made be to need ” THE PATENT LAWYER THE PATENT
AI 56 The Dabus applications effectively question whether non-humans can be as named inventors. “
age 56 age P 10:23 1 22/4/20 t :Layou 5_TPL47 Dennemeyer_v CHILE 59 THE PATENT LAWYER THE PATENT This article will focus mainly on two modifications two on mainly focus will article This that improvements important most the of One within the Bill that will and improve strengthen in Chile. law patent regarding provisions will be introduced in outdated order IP to legislation is correct that alternative the better a of is action This action. usurpation the patent established is which remedy, the to regards with in article 50 letter a) of the current the allows Industrial only action existing The Law. Property the of holder right legitimate or inventor rightful patent to file an opposition action against a ” The Bill seeks to strengthen currentthe framework. “ age 59 Page :49 15 n July 2018 the Chilean government proposed a Bill in Congress to partially and swiftly amend Chile's Industrial Mauro Dellafiori Albala and Daniel de Santiago Villagrán of Dellafiori of Villagrán de Santiago Daniel Albala and Dellafiori Mauro in Chile. law IP changes to welcome examine Property Law (Law No. 19.039). This Bill includes Bill This 19.039). No. (Law Law Property legal provisions that international treaties signed with would the European allow several Union to be strengthen the executed. current institutional Intellectual The Bill seeks property framework, to the improve protection to of the rights it enshrines, and establish more registrationeffective procedures. Currently the Bill has been remitted to the Senate undergoing and is discussion and Chile. in legislation proper become can it formal before revision CTC Legal Media CTC Legal Chilean IP undergoes IP Chilean much-needed some revision law patent O 1 23/4/20 t :Layou 4_TPL47 ori_v afi Dell 22/04/2020 10:26 C HANISM FOR HANISM AC CHCH ORI AOORI VITAL MECH DEDELDEL S A VITAL MECH S A VITAL TO PROTECT I PROTECT TO DIVIDU NDN EED TO EE 'HOODȴRULRHUVDZLGHUDQJHRIΖ3 SURWHFWLRQDQGΖ3VHUYLFHVDURXQG WKHZRUOGGXHWRWKHLUEURDG FRUUHVSRQGHQWVQHWZRUNWKDWKDV EHHQIRVWHUHGSURIHVVLRQDOO\IRU RYHU\HDUV7KHUHIRUHPDNLQJLW WKHODZȴUPȇVFRQYLFWLRQWRHQGXUH DVDFRPSHWLWLYHDQGUHOLDEOHFKRLFH IRULWVQDWLRQDODQGLQWHUQDWLRQDO FOLHQWVUHJDUGLQJWKHVXUYHLOODQFHRI WKHLUΖQWHOOHFWXDO3URSHUW\$VVHWV 2XUȴUPVWULYHVRQNHHSLQJD SURIHVVLRQDODQGKHDOWK\ UHODWLRQVKLSZLWKRXUFOLHQWV2QHRI RXUȴUPȇVSULPDU\JRDOVLVWR PDLQWDLQDKLJKOHYHORIFOLHQW FRQȴGHQWLDOLW\HQJDJHLQ WUDQVSDUHQWSUDFWLFHVDQGGHOLYHU DQHɝFLHQWDQGVXSHULRUOHJDO VHUYLFH OF IND PERTY IS PERTY I IN 1986 RI IN 1986, D RI IN 1986, THE NEE LAFIORI Santiago, Chile Santiago, TUAL PROPE TTUAL TT EE C www.dellafiori.cl ECT E DE D ALON CRE Alonso de Córdova 5320, oficina 303, Las Condes, Las Condes, oficina 303, 5320, Alonso de Córdova HE C BY GRES THA ON TH
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OUNDED OUNDED O OGNIZES T OGNIZES FOUNDED BY ENRIQUE DELLAFIORI IN 1986, DELLAFIORI ACTIVELY ACTIVELY 1986, DELLAFIORI DELLAFIORI IN ENRIQUE BY FOUNDED BASED ON THE CREATIVE CAPACITY OF INDIVIDUALS AND SOCIETY. OF INDIVIDUALS CAPACITY CREATIVE ON THE BASED CO CHILE’S PROGRESS, ALONG WITH THE NEED TO PROTECT INNOVATIONS INNOVATIONS PROTECT TO WITH THE NEED ALONG PROGRESS, CHILE’S )RURYHU\HDUVWKHȴUPKDVEHHQ KDVEHHQUHQRZQHGIRUGHOLYHULQJD SHUVRQDOL]HGH[FOXVLYHDQGHɝFLHQW VHUYLFHZLWKKLJKO\FRPSHWLWLYHUDWHV 2XUH[SHUWLVHLQΖ3DQGΖ3UHODWHG PDWWHUVFRYHUVWKHIRRG SKDUPDFHXWLFDODXWRPRELOHZLQH DJULFXOWXUHWHFKQRORJ\DQGWKHIDVKLRQ LQGXVWULHV 'HOODȴRULLVGHGLFDWHGVROHO\WR SURYLGLQJVHUYLFHVLQWKHDUHDRI ΖQWHOOHFWXDO3URSHUW\DQGΖQGXVWULDO 3URSHUW\LQWKHEURDGHVWVHQVH LQFOXGLQJ WUDGHPDUNVSDWHQWV GUDZLQJVDQGLQGXVWULDOGHVLJQVXWLOLW\ PRGHOVFRS\ULJKWDQGUHODWHGULJKWV WUDGHVHFUHWVΖQWHUQHWFRQWUDFWXDO LVVXHVQHZWHFKQRORJLHVXQIDLU FRPSHWLWLRQGDWDSURWHFWLRQDQGRWKHU UHODWHGPDWWHUV RECOGNIZES THAT INTELLECTUAL PROPERTY IS A VITAL MECHANISM FOR MECHANISM IS A VITAL PROPERTY INTELLECTUAL THAT RECOGNIZES Dellafiori FP.indd 1 CHILE 61 ” THE PATENT LAWYER THE PATENT This type of This type application already exists in comparative law. “ te with international with te that that are incorporated in the Bill We We are certain that these and other Contact Dellafiori [email protected] [email protected] improvements improvements will make Chile’s patent prosecution procedures prosecution patent Chile’s make will up-to-da and efficient more requirements. protection IP some time, and they efficient aim and to stronger ensure protection. IPR more changes These will other and universities, start-ups, entrepreneurs, be market. in the Chilean actors relevant most welcomed by in. If Notwithstanding Notwithstanding the foregoing, the provisional Regarding Regarding the expression "completely", the An important aspect to highlight is the fact Finally, the Bill establishes that the term of This type of application already exists in These are, by far, the most important CTC Legal Media CTC Legal application, application, for example, it is not necessary to include a summary of the description of the invention and a list invention, of claims a full (art. 43). Likewise, the declarations of novelty, inventive step and industrial application of the invention referred to in art. 44 of the current Industrial Property Law. We estimate that the period of one year that the Law will grant the applicants is sufficient for them to with comply these requirements and thus submit their final patent applications. If the application definitive is patent not filed within not application is considered patent provisional oneyear, the be filed. to patent application must include a document in Spanish or English that describes the invention clearly and so completely, that the invention can be carried out by a person skilled in the technical area which the application is immersed necessary, at least one drawing must be filed. At filed. be must drawing one least at necessary, the end of the period of a year, the definitive application must be filed in Spanish. patent National Association of Intellectual Property that clear made be it that recommends (ACHIPI), but described, clearly be should application the considering not that "completely", it is a stage application. the final to prior that the definitivepatent application will retain order in application provisional the of priority the if determine and art the of state the compare to the application has and novelty inventive step. an contains application definitive the if However, extension of the modified the patent, provisional the in described scope of the contents will have, for all legal purposes, invention the and application definitive the of filing the of date one. the provisional not validity of the definitive patent application will be calculated from the application. patent provisional filing date of the comparative law, being particularly used by patent American States. United the in applicants legislation also considers the term of one year does and application patent definitive the file to not require formalities to enable compliance the filing of provisional with patent applications. excessive Their establishes the legislation effective also filing patent, making it the date of priority provisional date of the the definitive patent application, which will be the requirement be to able analyze to essential of and novelty inventive step from the prior art date. that before established improvements made to Chilean patent law in age 61 age P 10:28 1 22/4/20 t :Layou 4_TPL47 ori_v afi Dell CTC Legal Media CTC Legal Under the bill, provisional patent applications patent provisional bill, the Under It is essential to note that to file a provisional In our professional judgement, the legal Another shortcoming is that with the present made were point this regarding Observations This remedy should be the mirror image of A second improvement of extraordinary egulated under our current legislation. In practice, In legislation. current our under egulated possibility possibility of patentfiling applications provisional not is which Bill, the of 24 number 1 article under r by Chilean universities and research centers that have increasingly the advantages of become protecting their inventions aware provisional through products) and/or (procedures of applications. patent will allow the inventors' right of priority to be for a “reserved” period of twelve months. After this period is the over, applicant must formally request the definitive patent application before the Chilean Patent Office (National Industrial Property Institution). However, the provisional a of priority the claim cannot application patent previous application as in inventions. new applicable for making it only other countries, patent application, inventors will not need to comply with all the legislation requirements that mandates our for a regular patent scenario regarding the action being brought before civil courts with no intellectual property due decision, legislative myopic a seems trajectory to the fact that the reasonable and competent organ in this matter would be the Property Industrial Tribunal, which has a proven track record in passing judgments in IP matters. The usurpation action can be throughout exercised registration. the patent of term validity the possibility the Bill, the of bis 50 article of wording filingof this action when is considered the only patent is already granted, and is not enshrined opposition an in brought be can which right a as during instance any at better, even or, procedure the prosecution procedure before the Patent Institution). Property Office (Industrial Property Intellectual of Association National the by (ACHIPI), which proposed that this must holder be or able to exercise inventor the rightful action at any moment of the procedure, not granted. be to patent the for wait to having the one enshrined in section 8 of the German Patent Act by which the party aggrieved by usurpation can require the patent applicant to patent the of grant the to right the him to assign in the case of a patent with application. Jointly, the granted, been has which patent a to regards the of proprietor the require can party aggrieved patent the to within transfer patent, a time limit the of grant the of publication after years two of patent. relevance that is sanctioned by the Bill is the this legal instrument has been strongly requested strongly been has instrument legal this ” The periodThe of one year is sufficient for them to comply. Daniel de Santiago Villagrán de Santiago Daniel Mauro Dellafiori Albala Dellafiori Mauro “
THE PATENT LAWYER THE PATENT
Daniel de Santiago Villagrán Villagrán de Santiago Daniel in the attorney an associate was Daniel Patents, the to Cia & Silva firm law and Copyright Trademark, Innovation, he legally an associate, As departments. advised startups, national, and the companies regarding multinational intangibles, risk their of protection management, business models, and he addition, In matters. law corporate centers, research universities, counseled actively was he Jointly, and incubators. concerning the in negotiations involved rights in and related copyright of defense and musical the film, artistic, literary industries. Résumés Albala Dellafiori Mauro national and international advises Mauro in the filing and companies and clients patents, trademarks, of prosecution matters corporate and names, domain industrial and intellectual to related also leads the litigation Mauro property. firm, participating in a the department of the trials before of number large in Chile and hearings office trademark Tribunal Property the Industrial before a high with Court and the Supreme success. of percentage However, as established in article 50 bis of the of bis 50 article in established as However, This action would leave the rightful inventor The essential right which the usurpation A compensation for the corresponding damages corresponding the for compensation A that this usurpation causes the rightful holder or holder rightful the causes usurpation this that the Bill. under is also permitted inventor normed be will action the Bill, Property Industrial against when brought court procedures civil by patent. a granted certain patent application, or an invalidation action invalidation an or application, patent certain against patent registration, in order to impede the patent from being conceded or to annul a patent. granted all, at right no with holder right legitimate the or destroying all means for protection, due to the invalidation of the said patent application or conceded patent. In terms, practical this action is not intended to restitute the rights to rightful the inventor or right holder, making it very ineffective a measure and remedy for IPR protection. action will confer the legitimate right holder is that he will be entitled to request the usurped the to transfer proceed to rights patent in order the avoid will which behalf, their on rights the of the public domain. into falling from invention CHILE 60
age 60 age P 10:28 1 22/4/20 t :Layou 4_TPL47 ori_v afi Dell THE AMERICAS & THE CARIBBEAN RANKINGS 2020 63 THE PATENT LAWYER THE PATENT North America - East Coast America - East North Coast West America - North USA: USA: USA: SPACE TO FILL SPACE Ballard Spahr Ballard Colburn Cantor West & Fenwick & Dunner Garrett Farabow, Finnegan, Henderson, Fish & Richardson & Lardner Foley Kirkland & Ellis & Neustadt Maier Oblon, McClelland, Fox & Goldstein Kessler, Sterne, Wilmerhale Cooley Tangri Durie Gibson, Dunn & Drutcher Day Jones Olson & Bear Knobbe Martens Smith Mckool & Foerster Morrison & Sutcliffe Orrick, Herrington Hastings Paul & Sullivan Urquhart Quinn Emanuel VIRGIN ISLANDS (UK) ROAD TOWN, TORTOLA VG1110 TORTOLA TOWN, ROAD E-MAIL: [email protected] we've got this. P.O. BOX 3534 BOX P.O. Panama The Caribbean SPACE TO FILL SPACE Take a load off... Take With a genuinely intimate knowledge of knowledge intimate genuinely a With the local community, we can represent anyone interested in doing business in the British Virgin Islands. CAPITOL CHAMBERS CAPITOL 22 TEL. 284.494.2518 EXT. CTC Legal Media CTC Legal Alfaro, Ferrer & Ramírez Ferrer Alfaro, & Fábrega Arias Fábrega & Contreras Noriega Arosemena Candanedo Bufete CLD Legal Benedetti Estudio & Noriega Guinard Alemán & González-Ruiz Icaza & Moreno Molino Jiménez & Morgan Morgan Farmer Gittens Clarke DunnCox Ferraiuoli HSM IP + Co JD Sellier Abogados Miniño Associates & Mosko & Co Nunes, Scholefield, DeLeon IP Outten & Smith Thornton age 63 Page 29 10: 22/4/20 1 t 3:Layou icas_v e Amer - Th ngs ki ran TPL47 CTC Legal Media CTC Legal 221 Ponce de León Avenue 221 Ponce 5th Floor 00917 Puerto Rico Hato Rey, 787.766.7000 Tel: 787.766.7001 Fax: [email protected] Guatemala Honduras SPACE TO FILL SPACE SPACE TO FILL SPACE ECIJA & Bodán García Asociados y Melara Arias BLP Asociados Carrillo & Law Central Consortium Legal Dentons & Fernandez Fernandez Lexincorp S.C. & Mayora, Mayora Abogados Palomo Castillo Love Aguilar Arias BLP Casco Bufete Asociados & Mejía Bufete Casco & Casco Zacapa Muñoz Dentons Canada
THE PATENT LAWYER THE PATENT
THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2020 RANKINGS PATENT CARIBBEAN THE & AMERICAS THE 62 Smart & Biggar Torys Gowling WLG Gowling Fulbright Rose Norton Ridout & Maybee Bereskin & Parr Bereskin Gervais Ladner Borden Goodmans Aitken Klee Aitken Neidrauer Belmore Throughout the next few pages, you will view a comprehensive view will you pages, few the next Throughout Americas the firms from law well-respected the 10 most list of order. and company country alphabetical and the Caribbean, in methodology, a multifaceted from list is derived focused Our our from and feedback research industry which uses months of world. the connections around clients, and esteemed readers, displayed but are jurisdiction their top 10 in ranked firms are All bias. avoid to alphabetically
age 62 Page 29 10: 22/4/20 1 t 3:Layou icas_v e Amer - Th ngs ki ran TPL47 TPL47 rankings - The Americas_v3:Layout 1 22/4/20 10:30 Page 64
THE AMERICAS & THE CARIBBEAN PATENT RANKINGS 2020
Rankings: South America In May/June 2020 issue of The Patent Lawyer Magazine To advertise contact [email protected]
Mexico
Arochi & Lindner Basham Ringe y Correa Becerril Coca & Becerril YOUR IDEAS. Calderón & De La Sierra Dumont Goodrich Riquelme y Asociados PROTECTED. Hogan Lovells BSTL OLIVARES Santamarina y Steta Uhthoff Gómez Vega & Uhthoff
64 THE PATENT LAWYER CTC Legal Media
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CHINA CZECH REPUBLIC GUATEMALA
ANSEN Patent Law Office Cermak a spol Lexincorp 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. 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 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 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. 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 150 00 Praha 5, Czech Republic. Guatemala, C. A. engineering etc. Tel/Fax: (502) 2246 3000 / (502) 2333 5980 Website: www.cermakaspol.com Tel: +86 10 82837725/6 Website: www.lexincorp.com Website: www.citicip.com Email: [email protected] Email: [email protected] Email: [email protected] Contact: Dr. Karel Cermak - Managing Partner [email protected] Contact: Xiaojuan Zhang and Lin XU Dr. Andrea Kus Povazanova - Partner Contact: Mr Gonzalo Menéndez G., Ms Gina Roca
HONDURAS INDIA INDIA
BUFETE MEJIA & ASOCIADOS Chandrakant M Joshi Mehta & Mehta Associates Our law firm has been exclusively practicing Mehta & Mehta Associates (Gurgaon, INDIA) is A full-service Intellectual Property law firm covering: Intellectual Property Rights matters since 1968. Today, a full-service boutique IP Law Firm, providing Filing, Honduras and Central America offering a convenient Mr. Hiral Chandrakant Joshi heads the law firm as the Prosecution and Litigation services in respect of and cost-effective regional service. The firm services senior most Attorney. It represents clientele spread Patents (in different fields of science and engineering), include filing, prosecution, maintenance, enforcement The over 35 countries. The law firm conducts search, Trade Marks, Designs and Copyright. The Firm assists and defense of all types of intellectual property. March / A undertakes registration, post-registration IP both national and international clientele, from different Subscribe now! pril 2020 Furthermore, the firm has strong litigation and management strategies, IP valuation, infringement geographical locations and backgrounds for all IP arbitration capabilities and is known for handling matters, domain name disputes and cyber law related contentious and non-contentious matters. PatentGLOBAL REACH, LOCAL KNOWLEDGE Lawyer complex litigation matters as well as infringement disputes of patents (including PCT applications), www.patentlawyermagazine.com and anti-counterfeiting actions before all Courts, Address: Mehta & Mehta Associates, Mehta House, trademarks, industrial designs and copyrights. A subscription to The Patent Lawyer Administrative Offices and Customs authorities. B-474, Sushant Lok-1, Sector-27, Address: Solitaire - II, 7th Floor, opp. Infinity Mall, Gurgaon-122002, NCR, India COVID-19 – patents Tel: +504 25507744 / +1 (914) 4125719 Link Road, Malad (West), Mumbai - Tel: +91-124-410 8474, 410 8475 magazine will ensure that you and Fax: +1 (718) 7322118 400 064, India Fax: +91-124-410 8476 and vaccinations Website: www.bufetemejia.com Tel: +91-222-888 6857/+91-222- 888 6856 Website: www.mehtaip.com your colleagues have detailed Email: [email protected] Fax: +91-222-838 9839 Email: [email protected] Contact: Ricardo Anibal Mejia Mejia Website: www.cmjoshi.us Contacts: Dr. Ramesh Kr. Mehta, Founder & Blanca Rebeca Mejia Lozano information on all the most important Email: [email protected] Ankush Mehta, Principal Attorney developments within the international patent law industry. INDIA LUXEMBOURG MACAU The Patent Lawyer magazine is dedicated only to the patent industry Patent 42 IPSOL MERICA and is written by patent experts for Munir A. Suboh and Felicity Hammond of BSA A S & Law firm Patent 42 is a law firm acting in Industrial Property. IPSOL is a key service line focused on the planning, Ahmad Bin Hezeem & Associates LLP examine the RANKINGS Our job is to help and assist companies and registration and management of trademark, patent C patent professionals worldwide. A IP issues raised by any potential vaccine for the CoronavirusR entrepreneurs in protecting and defending their and other IP rights portfolios, offering solutions that I B N B E A investments in innovation and creation. enable to maximize the protection of your IP assets in A subscription includes a hard copy If innovation is first of all a state of mind, it is also Macau and worldwide. a necessity and a source of development and growth Address: Avenida da Praia Grande, 759, 5° andar, for your company. Investments carried out to develop Macau new products or new activities deserve to be and an electronic copy which can be Parallel Tel: (853) 2837 2623 petitions AI protected.seeking to protect valuable original Fax: (853) 2837 2613 Page 30 tools Reform creations. read easily on your smartphone or Page 55 in Chile Website: www.ipsol.com.mo Page 59 Address: 34, rue Dicks Email: [email protected] tablet. L-4081 Esch-sur-Alzette Contact: Emalita Rocha CTC Legal Media Luxembourg Tel: +352 691 999 350 Fax: +352 24 61 10 10 Tel: +44 (0)20 7112 8862 Fax to: +44 (0)20 7084 0365 E-mail: [email protected] Email: [email protected]
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MEXICO MEXICO CITY NIGERIA SWEDEN TAIWAN, ROC TURKEY
Goodrich Riquelme Asociados Aluko & Oyebode Fenix Legal Deep & Far Attorneys-at-law Destek Patent Our staff of attorneys, engineers and computer We are a full-service law firm focusing on patent Fenix Legal, a cost-efficient, fast and professional Deep & Far attorneys-at-law deal with all phases of We are a multinational legal practice that has specialists help adapt foreign patent specifications and TOVAR & CRUZ IP-LAWYERS, S.C. prosecution rated for Patent Contentious by Managing Patent and Law firm, specialized in intellectual laws with a focus on IPRs, and represent some provided full range Intellectual Property services claims to Mexican law, secure patent inventions and We are a specialized legal firm providing intellectual Intellectual Property. The Firm was named Law Firm of property in Europe, Sweden and Scandinavia. Our international giants, e.g. InterDigital, MPS, Schott including trademarks, patents, designs, plant variety trademark registrations and maintain them by handling property and business law services. Founded in 2009. the Year 2015 and Intellectual Property & Technology consultants are well known, experienced lawyers, Glas, Toyo Ink, Motorola, Cypress. The patent protection and more since 1983. With more than the necessary renewals. Our computer system, which The purpose is that our clients not only feel safe, Team of the Year 2017 by Law Digest Africa Awards. European patent, trademark and design attorneys, attorneys and patent engineers in Deep & Far 200 qualified in-house staff, including 50 patent and is linked to the Mexican Patent and Trademark besides satisfied since their business needs have been The Firm was also named the Law Firm of the Year business consultants, authorized mediators and normally are generally graduated from the top five trademark attorneys, we are able to assist domestic Department, permits us to provide our clients with a resolved, so, our professional success is also based on 2016 and Intellectual Property Team of the Year 2017 branding experts. We offer all services in the IP field universities in this country. More information and international clients worldwide. providing prompt response and high quality, timely notice of their intellectual property matters. We by ESQ Nigerian Legal Awards. We will continue to including trademarks, patents, designs, dispute regarding this firm could be found from the website Address: Eclipse Business D Blok No:5, ISTANBUL personalized service. “Whatever you need in Mexico, also prepare and register license agreements. advise clients on patent strategy in Nigeria, Ghana, resolution, mediation, copyright, domain names, IP above-identified. Tel: +90 212 329 00 00 we can legally find the most affordable way” Address: Paseo de la Reforma 265, M2, Col. Y Del. OAPI and ARIPO. Due Diligence and business agreements. Address: 13 Fl., 27 Sec. 3, Chung San N. Rd., Website: www.destekpatent.com Cuauhtemoc, 06500 Mexico, D.F. Tel: 525556611278 Address: 1 Murtala Muhammed Drive, Ikoyi, Tel: +46 8 463 50 16 Taipei 104, Taiwan Email: [email protected] Tel: (5255) 5533 0040 Website: www.tciplaw.mx Lagos, Nigeria Fax: +46 8 463 10 10 Tel/Fax: 886-2-25856688/886-2-25989900 Contact: Claudia Kaya Fax: (5255) 5207 3150 Email: [email protected] Tel: +234 1 462 8360 / +234 806 680 3387 Website: www.fenixlegal.eu Website: www.deepnfar.com.tw ([email protected]) Website: www.goodrichriquelme.com [email protected] Website: www.aluko-oyebode.com Email: [email protected] Email: [email protected] Murat Bürkev Email: [email protected] [email protected] Email: [email protected] Contacts: Ms Maria Zamkova Contact: C.F. Tsai, Yu-Li Tsai ([email protected]) Contact: Enrique Diaz [email protected] Mr Petter Rindforth Simay Akba Email: ediaz@ goodrichriquelme.com Contact: Elsa Cruz, Martin Tovar Contact: Uche Nwokocha, Partner ([email protected])
PAKISTAN PAKISTAN PHILIPPINES Uganda UKRAINE UK / Europe
Bharucha & Co. United Trademark & Patent Romulo Mabanta Buenaventura SIPI Law Associates Pakharenko & Partners Maucher Jenkins Established in 1948, Bharucha & Co. is one of the Services Sayoc & de Los Angeles SIPI Law Associates is a boutique commercial law Pakharenko & Partners provides full IP service coverage Maucher Jenkins is a leading Anglo-German leading Intellectual Property law firms in Pakistan practice in Uganda, with a bias to Intellectual Property in Ukraine, CIS countries and Baltic states and has Intellectual Property firm with multiple offices in the International Intellectual Property Attorneys Founded in 1902, the firm is now 114 years old. A providing full range of IP services including all Law. Our IP advisory services cover all transactional offices in Kyiv and London. We pride ourselves on an UK, Germany, Switzerland and China. We represent specialising in Trademarks, Patents, Designs, full-service IP firm, it has pioneered in Intellectual aspects of patents, trademarks, designs, copyright, aspects of Patents, Trademarks, Copyright, Industrial exclusive expertise and experience in the fields of IP many well-known companies and brands globally and Copyrights, Domain Name Registration, Litigation & Property law practice, and some of its key cases domain names, licensing, franchising and litigation. designs, Trade Secrets and licensing aspects. The firm law, anti-counterfeiting and anti-piracy, pharmaceutical advise on the respective legal systems, business Enforcement services. decided by the Philippine Supreme Court have been The firm is ranked among the leading law firms in philosophy is based on providing first class legal services law, competition law, advertising and media law, cultures, and the economic and cultural distinctions featured in Philippine Reports, formerly the repository Asia by most of the prestigious legal referral guides. Address: 85 The Mall Road, Lahore 54000, Pakistan based on the integrity of our staff, giving our clients corporate law, litigation and dispute resolution. between the UK and Germany for both national and Tel: +92 42 36285588, +92 42 36285590, of the decisions of the Philippine Supreme Court, and Address: F-7/1, Block 8, K.D.A Scheme 5, sound legal and timely advice, as well as holding our Address: P.O.Box 78, 03150 Kyiv, Ukraine European filings. +92 42 36285581, +92 42 36285584 now in the Supreme Court Reports Annotated Kehkashan Clifton, Karachi, Pakistan. clients’ information in the utmost confidentiality. Visiting: Business Centre 'Olimpiysky', Tel: +44 (0)207 931 7141 Fax: +92 42 36285585, +92 42 36285586, (SCRA). Tel: +92-21-3537 9544 Address: PO BOX 4180, KAMPALA, UGANDA 72 Chervonoarmiyska Str., Kyiv 03150, Fax: +44 (0)207 222 4660 +92 42 36285587 Address: 21st Floor, Philamlife Tower, 8767 Paseo Fax: +92-21-3537 9557-58 Visiting: Jocasa House, Third Floor, Unit 5 Plot Ukraine Website: www.maucherjenkins.com Website: www.utmps.com & www.unitedip.com de Roxas, Makati City 1226 Philippines Website: www.bharuchaco.com 14 Nakasero Road. Tel/Fax: +380(44) 593 96 93 Email: [email protected] Email: [email protected] Tel/Fax: (632) 5559555; (632) 8134558; Email: [email protected] Tel/fax: +256 393 272921/ +256 414 +380(44) 451 40 48 Contact: James Cross (Partner) Contact: Yawar Irfan Khan, Hasan Irfan Khan (632) 8103110 Contact: Mohammad Fazil Bharucha, Abdul Aziz 235391 / +256 752 403 763 Website: www.pakharenko.com Hugh Dunlop (Partner) Website: [email protected] Website: www.sipilawuganda.com Email: [email protected] Reuben Jacob (Partner) Email: [email protected] Email: [email protected] Contact: Antonina Pakharenko-Anderson Contact: Rogelio Nicandro; Joaquin V. Sayoc Contact: Paul Asiimwe; Dinnah Kyasimiire Alexander Pakharenko
RUSSIA RUSSIA UNITED STATES VIETNAM VIETNAM To list
your firm in Sojuzpatent Vakhnina and Partners Young & Thompson ELITE LAW FIRM Pham & Associates Sojuzpatent is the oldest leading IP law firm on the One of the leading IP firms in Russia. Advising our Young & Thompson, established in 1903, is a full ELITE LAW FIRM, with a team having solid expertise in Established in 1991, staffed by 110 professionals territory of the former USSR, with seven offices in clients on all aspects of IP in Russia, Ukraine, service intellectual property law firm focusing on U.S. a broad range of Intellectual Property, provides including 14 lawyers and 34 IP attorneys, this section, Russia, and associates in all the neighboring ex-USSR countries and Baltic States. Using our own patent and trademark prosecution of the highest quality professional and highest quality in IP matter in Vietnam Pham & Associates is one of the largest legal countries. We employ more than 150 people, trademark search engine. Services: Patents, while maintaining costs at a moderate level. Young & as well as many countries around the world such as practices in Vietnam specialized in IP. The firm is including 50+ patent attorneys and litigation lawyers, trademarks, designs, utility models, copyright, Thompson has been recognized as an industry leader Laos, Cambodia, Myanmar, Thailand… Optimizing one of the biggest filers of patents, trademarks and to achieve seamless prosecution and successful litigation and enforcement. Members of Russian PA for innovation in new technologies and procedures, client’s benefits is our top goal. We commit to obtain IP industrial designs each year and has been renowned please email litigation. We offer everything you may need for Association, INTA, AIPPI, LESI, ECTA, PTMG, GIPC. being among the first law firms adopting a paperless rights for our diverse cilents by expeditious solutions for appeals, oppositions, court actions and handling protecting your IP in the whole region. Address: Bld. 6, Preobrazhenskaya Pl., Moscow, workplace, and co-developed an automated solution for and in the most effective way. IP infringements. The firm also advises clients in Address: Myasnitskaya St., 13, Bldg. 5, Moscow, 107061, Russia creating and executing all workflows. Address: 255 Hoang Van Thai Street, all aspects of copyright law. katie@ 101000, Russia Tel: +7-495-231-4840 Address: 209 Madison Street, Suite 500, Thanh Xuan District, Hanoi, Vietnam Tel: +84 24 3824 4852 Tel: +7 495 221 88 80/81 Fax: +7-495-231-4841 Alexandria, VA 22314 Tel: (84-24) 37373051 Fax: +84 24 3824 4853 Fax: +7 495 221 88 85/86 Website: www.vakhnina.com Tel: 703-521-2297 Fax: (84-24) 37373056 Website: www.pham.com.vn ctclegalmedia.com Website: www.sojuzpatent.com Email: [email protected] Fax: 703-685-0573 Website: lawfirmelite.com Email: [email protected] Email: [email protected] Contact: Dr. Tatyana VAKHNINA Website: www.young-thompson.com Email: [email protected] Contact: Pham Vu Khanh Toan, Managing Partner Contact: Svetlana Felitsina, Managing Partner Dr. Alexey VAKHNIN Email: [email protected] Contact: Mr. Nguyen Tran Tuyen – Managing Partner/ General Director Tatiana Petrova, Head of Trademark Contact: Andrew Patch Patent and Trademark Attorney Tran Dzung Tien, Senior IP Consultant Department
68 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 69 Better Together Become a member of the International Trademark Association community and enjoy these exclusive benefits!
Belonging to Stopopp BBeingBeBeineine INTA Means… Connections with global brand owners and intellectual property professionals a BankBanBank Reliable, in-depth legal resources
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