The
GLOBAL REACH, LOCAL KNOWLEDGE www.patentlawyermagazine.com May / June 2021 Augmenting your IP portfolio is virtually the only way to compete in AR/VR
TH AM U ER O I S C A Law firm RANKINGS
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP experts Christopher Howes, Zachery Olah, Forrest Jones, and Karthik Kumar, discuss the developments in the augmented and virtual reality sphere with advice for protecting innovation.
Ismat Levin, Automated Inde niteness Synamedia patent analysis Page 60 Page 12 Page 24
Front cover_TPL54_v3.indd 1 22/06/2021 16:22 EDITOR’S WELCOME
The
May / June 2021 GLOBAL REACH, LOCAL KNOWLEDGE www.patentlawyermagazine.com Augmenting your IP portfolio is virtually the only way to compete in AR/VR Editor’s H AM UT ER O IC S A Law firm RANKINGS welcome Finnegan, Henderson, Farabow, Garrett & Dunner, LLP experts Christopher Howes, Zachery Olah, Forrest Jones, and Karthik Kumar, discuss the developments in the augmented and virtual reality sphere with advice for protecting innovation. IndeĀ niteness Automated Page 60 Ismat Levin, patent analysis Synamedia Page 24 ith the global circumstances of the past year limiting our Page 12 activities, it is no surprise that virtual realty has become a
22/06/2021 16:22 greater focus than ever. As consumers, we have technology d 1 W at our fingertips that was mere science fiction only a few decades ago. THE PATENT LAWYER So, what can we expect of the future of augmented and virtual reality, Issue 54 and how can that innovation be protected? Finnegan, Jederson, Farabow, Garrett & Dunner, LLP discuss in our cover story this issue. Editor Our guest interview is Ismat Levin, Senior Vice President, Commercial Faye Waters [email protected] and Group General Counsel at Synamedia. We discuss Ismat’s jump to her in-house counsel position, her Publishing Director Chris Dooley experiences in the technology sphere, [email protected] and how the use of technology is Advertising Enquiries How can that influencing their plans for the future. Katie Kerr (Publishing Executive) “ In addition, read about the potential [email protected] innovation be requirements for compulsory licencing Subscription Enquiries to combat the COVID-19 crisis in India – [email protected] protected? should the government step in? Accounts Enquiries Plus, and update on patent validity in [email protected] Brazil. Published by: We give special thanks to this issue’s CTC Legal Media Ltd, 23 Hedgers Way, Kingsnorth, Women in IP Leadership” segment sponsor Anaqua. We hear from Kristyn Ashford, Kent TN23 3GN Huffman, Paralegal at The Dow Chemical Company, expressing the Tel: +44 (0)20 7112 8862 necessity to never give up, and the importance of equality when it comes Fax: +44 (0)20 7084 0365 to parental leave to benefit the whole family with Ai-Leen Lim, CEO and Design and Repro by: Principal Counsel of AWA Asia. Design and Printing Solutions Ltd Also find part one of our six-part Diversity, Equity, and Inclusion series - Unit 45C, Joseph Wilson Industrial Estate, Whitstable, Kent CT5 3PS a collection of interviews with expert Suzanne Wertheim - chapter 1: an Printed by: anti-bias vision. Pureprint Group, Crowson House, This and more. Enjoy the issue. Bolton Close, Bellbrook Park, Uckfield, We build services for brilliant IP formalities professionals. East Sussex TN22 1PH Whilst every effort has been made to ensure that the information contained in this journal is correct, neither Those who chose their career to do something special. Something that matters. the editor, contributors or CTC Legal Media can accept any responsibility for any errors or omissions or for any consequences resulting therefrom. © CTC Legal Media 2021, and contributors. The Faye Waters, Editor contents of this journal are protected under the copyright law of the United Kingdom, the Berne Convention and the Universal Copyright Convention. Any unauthorised copying of the journal may be in breach of both civil and criminal law. Infringers will Mission statement be prosecuted. The Patent Lawyer educates and informs professionals working in the industry by ISSN 2051-3690 disseminating and expanding knowledge globally. It features articles written by people at the top of their fields of expertise, which contain not just the facts but analysis and opinion. Important judgments are examined in case studies and topical issues are reviewed in longer feature articles. All of this and the top news stories are brought to CTC Legal Media your desk via the printed magazine or the website www.patentlawyermagazine.com
CTC Legal Media THE PATENT LAWYER 3
IP Centrum FP_lhp.indd 1 31/03/2021 09:43 Editor's welcome_TPL54_v1_ONLINE.indd 3 22/06/2021 16:27 CONTENTS May / June 2021 60 The U.S. Patent Office’s 35 Women in IP guidance on indefiniteness Leadership: in AIA post-grant An interview: inspirations, experiences, and ideas proceedings Contents for equality. Haynes and Boone’s experts Eugene Goryunov, Featuring: Kristyn Huffman of David McCombs, Clint Wilkins and Kristina Smith 6 Meet the Editorial Board 15 A quantitative approach to The Dow Chemical Company explain the latest USPTO guidance on indefiniteness. & Ai-Leen Lim of AWA Asia Meet our Editorial Board members who help overcoming § 101 Sponsored by: Anaqua determine the direction of this magazine. 62 Diversity, equity, and rejections inclusion with Suzanne 7 Cover Story: Augmenting Patent eligibility rejections under 35 U.S.C. § 101 Wertheim. Chapter 1: remain a significant issue for the United States Patent your IP portfolio is virtually Office (USPTO). The USPTO has issued multiple an anti-bias vision the only way to compete updates to provide guidance for Examiners on how 41 Rankings: South America In this six-part series Dr. Suzanne Wertheim, of and when to issue § 101 rejections, and there have Worthwhile Research & Consulting, talks to The Ten of the best law firms from each of the top in AR/VR been some improvements in the proper use of such Patent Lawyer about diversity, equity, and inclusion: South American jurisdictions, including Argentina, Finnegan, Henderson, Farabow, Garrett & Dunner, rejections. However, the large volume of rejections what it means; the current challenges; DEI in law; Brazil, Chile, Colombia, and Peru. LLP attorneys Christopher Howes, Zachery Olah, under § 101 certainly exceeds the narrow “exception” gender bias; and what we can all do to improve. Forrest Jones, and Karthik Kumar, discuss the envisioned by the Supreme Court. Without clear developments in the augmented and virtual reality policy guidance for § 101 rejections, the rejections are 48 Compulsory Licensing 65 Directory of services sphere with advice for protecting innovation. often inconsistent, unclear, and subjective. This poses during COVID-19 – An A to Z list of the international law firms who a substantial obstacle to efficient and effective patent a potentiality in India? provide IP related services. 12 An interview with Ismat prosecution. David V. Sanker, Ph.D. and Jillynne Quinn, Levin, Senior Vice Ph.D. propose a quantitative method for responding Manisha Singh & Varun Sharma, of LexOrbis, review to rejections based on alleged abstract ideas. the potential requirement for compulsory licensing President, Commercial given the devastating effects of COVID-19 in India; 48 and Group General how such licensing can be implemented; and the 20 Why the USPTO does not likelihood of government enforcement. Counsel at Synamedia receive Chevron deference Ismat talks to The Patent Lawyer about her David L. McCombs, Joseph Matal & Eugene Goryunov 52 Does a third party infringe experiences as in-house counsel, Synamedia’s of Haynes & Boone explain the difficulties current developments, and her inspirations. a patent right by surrounding Chevron deference and why the USPTO is reluctant to take it into account. conducting clinical trials on an original drug? 24 24 A new dress code for Osamu Yamamoto explains the impact of the recent patent validity in Brazil: Intellectual Property High Court decision, as well as the necessity for reforming the patent the practical effects of the system relating to drug marketing approval in Japan. Supreme Court decision The Brazilian attorney José Carlos Vaz e Dias of the IP 56 Unleashing the full law firm VAZ E DIAS ADVOGADOS addresses the main potential of innovation 56 aspects of the Brazilian Supreme Court decision that data challenged the sole paragraph of Art. 40 and how it affected the patent owners of the pharma business on Ed White, Head of Analytics, IP Group, Clarivate, explains the importance of looking beyond patent the ability to exploit, license, and enforce the patents. volumes and how to extract richer insights from 30 Why automated patent innovation data. analysis can be wrong, 58 Intellectual Property even when it’s right and sports Axel Contreras-Alvarez, former IPR Commercialization Sports are an integral part of everyone’s life. Manager at Ericsson, evaluates the reliability Some people watch athletes, and some are of software and automated analysis for patent athletes themselves. At the same time, sports life is valuation, considering the factors used by algorithms, becoming more comfortable every day thanks to and with an action plan for those wishing to use innovation and creativity in the field. Kristina Mulina, such platforms. of Zuykov and Partners, reports.
4 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 5
Contents_TPL54_v1.indd 4 18/06/2021 13:55 Contents_TPL54_v1.indd 5 30/06/2021 09:30 AR/VR TECHNOLOGY 7 22/06/2021 11:45 THE PATENT LAWYER While many think of AR/VR as being tied to AR/VR as being tied to think of While many their couch, an idea that was science fiction fiction science was couch, an idea that their so long ago. not the remember all the gaming industry—we wildfire— like spread Go Pokémon summer are in this technology developments recent spread AR/VR to possible for making it more a become and industries, various throughout Paired lives. our of part common more much modern to adapt industries to with the need for fter the COVID-19 pandemic struck struck pandemic COVID-19 the fter the globe across people year, last than an escape more in need of were Finnegan, Henderson, Farabow, Garrett & Dunner, LLP attorneysFinnegan, Henderson, Farabow, Olah, Forrest Jones, and Karthik Kumar,Christopher Howes, Zachery in the augmented and virtual reality spherediscuss the developments innovation. with advice for protecting ever. While most people were stuck inside inside stuck were While most people ever. and friends about with family commiserating a exploring were some could leave, when they Through homes. right in their world whole new (AR/VR), people reality virtual and augmented the globe or around nature could experience video game from favorite their into be dropped CTC Legal Media Augmenting your IP your Augmenting portfolio virtually is to way only the compete AR/VR in A Finnegans_TPL54v4.indd 7 08/04/2021 08:51 CTC Legal Media Dr. Claudia Tapia – Ericsson, Germany Claudia is Director of IPR Policy & Legal Academic Research at Ericsson. She is Chair and of 4iP Council and vice chair of the Patent Technology Licensing of LESI. Valery Medvedev – Gorodissky & Partners, Russia Valery is the Managing Partner and in charge of the largest IP practice in Russia. He is a Russian and Eurasian Patent Attorney. Eugene Goryunov – Partner, Haynes and Boone Eugene Goryunov is a partner in the Intellectual Property Practice Group in the Chicago office of Haynes and Boone and an experienced trial lawyer. Maria Zamkova – Fenix Legal KB, Sweden Maria has a Master of Industrial Design and is a patent and trademark attorney. She is an expert in European Patents. Simon de Banke is founder and CEO of the is founder and Simon de Banke IP IP Services disruptor high-tech-focused Centrum. Riquelme Enrique A. Diaz – Goodrich Industrial and Intellectual Enrique is head of the He currently manages the Property Department. trademarks and more prosecution of over 3500 year. than 1000 patents per of Marketing and Mark Durrant – Director Group Communications, Marconi at Nokia, most Mark spent thirteen years Communications for Nokia recently as Director of Director of Marketing Technologies, He is now and Communications at Marconi Group. Eric Su – HongFangLaw, China Eric Su is founding partner at HongFangLaw of and studied law at the East China University at Politics and Law and chemical engineering the North University of China. Sergio Olivares Jr. – Olivares, Mexico Sergio Olivares leads the multi-award winning patent practice at the law firm Olivares and is widely recognized as one of Mexico’s leading patent attorneys. Simon de Banke – Founder & CEO, & CEO, – Founder de Banke Simon IP Centrum David Harper – Cedar White Bradley David is a Partner at CWB, and heads up its regional Patent and IP Disputes teams. With over 12 years of Middle East experience, David has a wealth of regional experience in advising on all aspects of intellectual property law. Vitor Fidalgo – Lecturer at the University of Lisbon Faculty of Law Vitor is also Legal Director at Inventa International, implementing the best IP strategies and enhancing the profitability of assets. Caitlin Heard – Partner, CMS Caitlin’s principal area of expertise is multi-jurisdictional patent litigation. She has acted on a number of high-profile disputes across a range of technical areas. Stefan Schohe – Boehmert & Boehmert He Stefan is partner at Boehmert & Boehmert. mainly works in the fields of IT and physics, with a focus on litigious issues. Noel Courage – Partner, Bereskin & Parr LLP Noel Courage is a partner and patent attorney at Bereskin & Parr LLP, working in its Toronto office. His practice focuses on patenting and licensing of life sciences inventions. Pravin Anand – Anand & Anand, India Pravin Anand, managing partner of Anand and Anand, is an advocate and a patent and trademark attorney. Osamu Yamamoto – Yuasa & Hara, Japan Osamu Yamamoto a patent attorney, Osamu Yamamoto is of Yuasa and Hara. and a managing partner in the fieldsHe specializes in patents of biotechnology & pharmaceuticals. Dr Saiful Khan – Potter Clarkson Dr Saiful Khan – Potter Board Member at Potter Saiful is a Partner and in both the Electronics Clarkson who practises the Design & & Computing Group and Engineering Group. Ken Adamo – IP Attorney USA IP Attorney – Ken Adamo as lead trial experience Ken has extensive courts and the state and federal counsel before Trade Commission. US International Editorial Board for their time and support. Editorial Board for their time and The Patent Lawyer would like to thank the
THE PATENT LAWYER
6 MEET THE EDITORIAL BOARD EDITORIAL THE MEET Editorial Board_TPL53_v1.indd 6 AV/VR TECHNOLOGY AR/VR TECHNOLOGY
work-from-home business models, it is no Résumés surprise that AR/VR is making its way into every Karthik Kumar, Ph.D., is a partner at business from medicine to manufacturing. Finnegan, Henderson, Farabow, Garrett Because of this, it is more important than ever & Dunner, LLP and co-leader of the for companies innovating in this technology firm’s augmented reality/virtual reality space to understand the need for intellectual (AR/VR) industry working group. He property protection. focuses on complex patent litigation and But how to prepare for this new world? The strategic counseling related to emerging savvy should familiarize themselves with the technologies. His litigation practice current IP and technology development trends emphasizes competitor disputes in the AR/VR world across companies large and before U.S. district courts and the U.S. Karthik Kumar small. Viewing these, it quickly becomes clear International Trade Commission (ITC). that thinking about IP now rather than later is Karthik also manages the global patent vitally important for small or mid-sized companies portfolios of several multi-national that want to compete in the AR/VR market. technology companies. He can be reached at [email protected]. Large companies: creating IP war chests & their overlapping Christopher Howes is an associate at technology Finnegan. He has a mixed district court Perhaps it is not a surprise to learn that large, litigation practice that includes patent well-known technology companies have begun and trademark matters. He has to develop and invest money in AR/VR technology. experience drafting requests for In addition to filing patents protecting home- admissions, assisting with discovery, and grown research and development, companies conducting legal research. His technical Christopher Howes are seeking to purchase patents as well. We new mixed reality headset, Hololens 2, with a highlight the importance for mid-sized and small experience extends to the field of have seen industry giants like Apple following focus on implementing mixed reality technology companies of strategically growing their IP aerospace engineering, with a focus in this trend. In fact, since 2015 Apple has acquired in manufacturing, healthcare, and education.7 portfolios while developing and commercializing astronautics. He can be reached at nearly 400 United States patents related to AR/ In arriving at the era of smart glasses, we have They all their technology in order to effectively compete [email protected]. VR technology.1 seen large companies drive the development of “ in the AR/VR market. are or Additionally, other big companies, including AR/VR technology through developments in Forrest Jones is an associate at Microsoft, Alphabet, and Facebook, are also other areas such as gaming. For example, have been Smaller companies: their Finnegan. He focuses on patent litigation, heavily involved in acquiring AR/VR patents. Nintendo’s AR/VR technology dates back to the role in developing important including at the International Trade Since 2015, these four companies alone have first portable console that displayed 3-D rumored improvements to AR/VR Commission (ITC), as well as inter partes acquired over 2,500 United States patents graphics, Virtual Boy, in 1995.8 More recently, it to be technology review (IPR) proceedings before the covering AR/VR technology.2 has acquired over 60 United States patents While many large companies are consolidating Patent Trial and Appeal Board (PTAB) While each of the above-mentioned companies related to AR/VR since 2015.9 Sony’s PlayStation working on their intellectual property in this space, a lot of and appeals before the U.S. Court of are not exclusively focused on the same AR/VR has also driven AR/VR development that could the new development is happening with smaller Forrest Jones developing Appeals for the Federal Circuit. Forrest applications, they all are or have been rumored eventually have larger implications outside of companies. Acquiring IP protection appears to has technical and legal experience in to be working on developing technology related gaming. Sony’s interest in AR/VR technology is technology be one way to help your new company standout. various areas of electrical and computer to smart glasses.3 Facebook showed its interest not only evidenced by their acquisition of over While smart glass technology on its own engineering, including computer in AR/VR early on with its acquisition of the 380 United States patents related to AR/VR related appears nearly ready to shake up our everyday software, signal processing, wireless virtual reality company Oculus in 2014. Facebook since 2015, but also their acquisition of one of the to smart lives, AR/VR technology is expanding, quite networking, power electronics, power is not stopping there, however, as it announced most experienced VR game studios, Insomniac literally, into every business sector imaginable. generation, and consumer electronics in September 2020 that it plans to partner with Games, in 2019.10 glasses. For instance, we have already seen augmented such as televisions, laptop computers, world famous Ray-Ban owner Luxottica in the The business models and approaches taken reality stretch into the medical sector. One smartphones, and gaming systems. He design of smart glasses.4 Google was one of the by the industry leaders mentioned above example related to the medical industry is the can be reached at forrest.jones@ first companies involved in the smart glasses finnegan.com. market with its release of Google Glass in 2013. ” Since then, the company has continued its 1 All references to patent acquisition statistics come from reports 6 https://www.cnbc.com/2021/02/20/apple-facebook-microsoft- Zachery Olah is an associate at development of technology in addition to Zachery Olah provided by Innography (Innography is a trademark of Clarivate and its battle-to-replace-smartphone-with-ar.html; https://www. Finnegan. He focuses on all aspects expanding its market share by acquiring smaller affiliated companies). businessinsider.com/apple-acquires-spaces-virtual-reality-buying- of patent litigation and prosecution in a companies working in this space. For example, 2 Patent Acquisition Breakdown: Microsoft (1,777 U.S. Patents), Alphabet spree-2020-8 (stating that Apple acquired Spaces and NextVR, VR variety of technologies, including last year Google acquired a company called (612 U.S. Patents), and Facebook (384 U.S. Patents). experience creators, in 2020; Akonia Holographic, AR glasses maker, in mechanical systems, medical devices, North, a startup company focused on developing 3 https://www.cnbc.com/2021/02/20/apple-facebook-microsoft- 2018; and Vrvana, AR and VR headset maker, in 2017). biotechnology, aerospace and aviation smart glasses as well.5 Apple is rumored to be battle-to-replace-smartphone-with-ar.html 7 Id.; https://www.microsoft.com/en-us/hololens/industry-education 4 8 systems, materials science, and coming out with its first smart glasses-type https://www.cnbc.com/2021/02/20/apple-facebook-microsoft- https://learn.g2.com/history-of-virtual-reality battle-to-replace-smartphone-with-ar.html; https://www.cnbc. 9 Innography search (Innography is a trademark of Clarivate and its computer security. He can be reached at product and appears to have invested in this com/2021/03/08/mark-zuckerberg-how-smart-glasses-could-help- affiliated companies). [email protected]. realm through its acquisition of augmented combat-climate-change.html 10 Id.; https://www.roadtovr.com/sony-acquires-insomniac-games- 6 reality software and hardware companies. 5 https://www.cnbc.com/2021/02/20/apple-facebook-microsoft- strategic-blow-oculus-studios/ Finally, in November 2019 Microsoft released its battle-to-replace-smartphone-with-ar.html ; https://www.bynorth.com
8 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 9
Finnegans_TPL54v4.indd 8 21/06/2021 12:09 Finnegans_TPL54v4.indd 9 21/06/2021 12:09 AV/VR TECHNOLOGY AR/VR TECHNOLOGY
developments by a company named Taiwan expanding AR/VR technology, their stories are dispute. Additionally, many of the parties property protection will be a must for any Main Orthopaedic Biotechnology Co., Ltd. Taiwan exemplary of how AR/VR development pushes involved with the smartphone wars had existing company seeking to legitimately compete. Main created a line of surgical smart glasses, The forward. And the interest they receive from relationships while also working to extend their The answer For more information on how AR/VR under the brand name Surglasses, supported “ larger companies underlies the need for IP IP portfolios. Google’s acquisition of Motorola “ developers can protect their IP, please see our by at least three granted and three pending U.S. Surglasses protection no matter the size of the company. Mobility to add the hardware IP to Google’s is pursuing various Finnegan blogs and articles posted on patents.11 The Surglasses product offers a Android software is just one well known our website.20 surgical pair of glasses that use mixed reality product Conclusion: the only way to example of these types of relationships.19 IP technology to provide 3D models of the compete is with IP rights Without IP portfolios, many mid- and small- patient’s anatomy while tracking relevant data offers a In the examples outlined in this article, the end sized companies would not have been able to protection. like the trajectory of the surgeon’s instruments.12 surgical products among these companies are focused compete. While their technology was Another company pushing the envelope in on distinct industries, but the technology underlying groundbreaking, larger companies were most the smart glasses space is Mojo Vision. Mojo pair of these AR/VR products is oftentimes not so interested in the IP covering their technology. Vision has been researching and developing a glasses that different. It is apparent that all of these companies Their IP is what led to financial gain when smart contact lens that implements AR/VR are focused on developing technology that either smartphones boomed because they could ” technology and is protected by over 100 patents use mixed immerses the user into a digital environment – license their IP or sell it outright to larger dating back to 2008.13 Specifically, Mojo Vision the case with virtual reality – or projecting companies with the ability to use and produce is using augmented reality, coupled with reality digitally created elements onto the user’s view end user products with that technology. microdisplays and microelectronics, to display technology of the outside world – the case with augmented With such widespread development in the information onto the world in front of the user reality. So, if all these companies are involved in AR/VR technology space and the growing without requiring the user to change their outward to provide different industries but create and develop interest from larger technology companies as Contact facing appearance.14 As you would imagine, this 3D models of possibly overlapping technology, the natural shown by their recent interest in AR/VR patent Finnegan, Henderson, Farabow, technology has not gone unnoticed as evidenced question is this: How does a company protect acquisitions and investments, it is easy to see Garrett & Dunner, LLP by Mojo Vision’s series B round of funding. Mojo the patient’s itself and its potentially global technological why parallels are being drawn between the AR/ 901 New York Avenue, NW, Washington, Vision recently secured investments from large developments? The answer is pursuing IP VR industry and the smartphone industry. Time DC 20001-4413, USA companies like LG Electronics, HP Tech anatomy protection. will tell whether the AR/VR software and Tel: +1 202 408 4000 Ventures, and Google’s Gradient Ventures.15 while One of the most relatable recent big technol- hardware market will become the next big area Fax: +1 202 408 4400 The automotive industry has also welcomed ogical shifts, that some say AR/VR technology for company partnerships and possible www.finnegan.com AR/VR technology into its ultra-competitive tracking has the potential to match,18 was the develop- litigation, but one thing is for sure, intellectual market. Envisics, for example, is utilizing aug- relevant ment of the smartphone. Now that the smartphone mented reality in developing heads-up display has become an everyday accessory, so too technology for the automotive sector. With this data like the have the hundreds of thousands of technological technology, and over 250 patents with more advancements present in each smartphone. than 150 patents pending, Envisics has secured trajectory Each of these developments is protected by investments from companies like Hyundai of the specific individual patents. Mobis and General Motors Ventures during their As this technology became mainstream, we series B funding round.16 The relevant technology surgeon’s saw a technology development trajectory created by Envisics overlays distraction free instruments. similar to the one discussed above where driving information onto the driver’s real-world smaller companies focused on specific view within the field of view. Importantly, this developments and large companies created IP eliminates the need for the driver to take his or war chests to cover their end user products. This her eyes off the road when driving, improving led to massive patent litigation cases known road safety and enhancing the ability to make collectively as the smartphone wars. And, as we 17 ” more informed decisions. saw with the smartphone wars, it is not always While these examples feature just a few the end user product at issue but sometimes smaller companies playing a vital role in the underlying technology at the center of the
11 https://www.surglasses.com/surglasses/index.html; http://patft. 14 Mojo Lens: https://www.mojo.vision/mojo-lens uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fneta 15 https://venturebeat.com/2019/03/19/googles-gradient-ventures- html%2 joins-58-million-investment-in-ar-startup-mojo-vision/ FPTO%2Fsearch-adv.htm&r=0&p=1&f=S&l=50&Query=AANM%2F%22Taiw 16 https://envisics.com/news/automotive-leaders-invest-in-pioneering- an+Main%22&d=PTXT; http://appft.uspto.gov/netacgi/nph-Parser?Sect holographic-technology-company-envisics/; https://techcrunch. 1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch-adv.html&r= com/2021/01/08/holographic-startup-envisics-partners-with- 0&p=1&f=S&l=50&Query=AANM%2F%22Taiwan+Main%22&d=PG01 panasonic-to-fast-track-in-car-ar-tech/ 12 Taiwan Main Features: https://www.prnewswire.com/news-releases/ 17 Envisics website: https://envisics.com/our-story/ breakthrough-in-medical-electronics--a-novel-mixed--augmented- 18 https://www.cnbc.com/2021/02/20/apple-facebook-microsoft- reality-smart-glasses-surgical-navigation-solution-300972026.html battle-to-replace-smartphone-with-ar.html 13 https://spectrum.ieee.org/view-from-the-valley/consumer- 19 https://www.google.com/press/motorola/ electronics/portable-devices/ar-in-a-contact-lens-its-the-real-deal; 20 https://www.finnegan.com/en/insights/articles/utility-patents-what- https://www.fastcompany.com/90441928/the-making-of-mojo-ar- game-developers-should-know.html; https://www.finnegan.com/en/ contact-lenses-that-give-your-eyes-superpowers insights/articles/what-game-developers-should-know.html
10 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 11
Finnegans_TPL54v4.indd 10 21/06/2021 12:10 Finnegans_TPL54v4.indd 11 22/06/2021 11:35 ISMAT LEVIN: SYNAMEDIA
17/06/2021 09:12 13 THE PATENT LAWYER The positive news for our business and sector The other area that we’re focused on is is The other area that we’re focused on A consumer may think that sharing or selling A consumer may think that sharing or selling I think the world has been surprised at how I think the world has been surprised at how robust the workplace has been in these COVID times thanks to technology. We have always been a technology-led organization and have been able to continue to deliver and support our customers throughout through our multiple global sites. We are not all COVID equal and when Europe was gripped in lock down, our Israel colleagues were 90+% vaccinated and able to pick up any slack. Likewise, today we as in Bangalore our colleagues are supporting they battle their worryingly high cases of COVID. is that more people are watching content than ever. It confirms to us that there is a market for and secure the our solutions that monitor delivery of content. And the advertising and important. more ever is this around analytics Can you tell us about any of the of any us about tell you Can current you’re developments on? working at growth opportunities We are always looking sector. We are currently within our industry and revenue additional on heavily very focused for our customers, generating opportunities in the advertising sector: one of them being advertising to specific how they can target of insights from the vast consumers and the use Our customers can be data analytics they have. for more efficient in the way that they charge increaseto them enables it so and do, they what their revenue opportunities. measures. security in anti-piracy improvements of Content is now available through a multitude the as good as only is security and platforms buying weakest link. Our customers spend billions has seen a big change year This last technology, the use of of in terms plans moving your has this changed forward? Despite the uncertain times, we don’t think too much will change, certainly in the next six months. and trademark assignments. They have been in been have They assignments. trademark and rewarding to sectors and it was unrelated for the business! a revenue generator briefly be or making original content, and monetizing and or making original content, and monetizing it is not protecting this revenue stream so that very consumed illegally is important. We are to much at the forefront of finding new ways detect and stop piracy of content. their [Netflix] credentials or Wi-Fi password is not with a friend is a victimless crime but this for this pay all industry the and we and case the indirectly. ” A consumer A consumer think may that sharing or selling their [Netflix] credentials or Wi-Fi password with a friend is a victimless crime but this is not the case and the and we industry all for this pay indirectly. “
by different different by between two between two We don’t have too many instances of We don’t have too many instances of I have, however, had two instances of US And like most tech vendor companies, we have And like most tech vendor Interestingly, ‘Synamedia’ was actually a a Interestingly, ‘Synamedia’ was actually CTC Legal Media Where in the world do you think that think that you do world Where in the the most experiences Synamedia difficulties the most infringement or with IPR? We maintain a patent portfolio for both offensive and defensive reasons. know we that patents our infringing companies of. We prefer to assert our patents only when we must do so to protect our business interests. We’re not looking to directly monetize our focused stay to want We litigation. via patents innovation through revenue generating on incorporated in our products and services. We do have to defend claims accusing our solutions of infringing patents -mostly from NPE’s in the US given our US customer base. companies approaching me for patent licenses As part of the vendor arrangement, our consultant vendor arrangement, As part of the from has evolved As the company Synamedia, Cisco, and then to NDS, to rebranding? go about you did how name, Because we’re not a consumer/ household our in strong incredibly been we’ve and focused seamless a pretty been it’s so identity throughout, unrelated arrangements governed arrangements unrelated contributory liability and sharing of responsibility. of sharing and liability contributory It helps to have good working relations with with It helps to have good working relations tricky your customers when navigating these discussions. the brand side of things tends to be industry transfer. trademark that we already owned for a product came line that we were not using so when we a table out of Cisco, and were sitting around new and asking ourselves what to name our organization, and we had a long list and external that marketing agencies helping us, we realized didn’t we had this rather good name and we and have to go through the clearance issues concerns because we had already held that perfect. was really it So, years. 10+ for trademark In our case, the reputation behind our name is important and that we fiercely guard. developed patents that we were contractually contractually were we that patents developed a ‘work for hire’ pay for. But he had obliged to we owned with us that meant arrangement The facts were the patents he developed. a conflict complicated with indemnity claims that we to deal with patent who, themselves, receive from our customers there are always interestinghave been sued and the indemnity language, conversations around laws where we had to enjoin a third party to our laws where we had to a lot from that process. claim. We all learnt Ismat Levin interview_TPL54_v4.indd 13
17/06/2021 09:12 CTC Legal Media One that stands out relates to an on/off consultant Yes I could and I could do a lot more! for I was given a blank sheet to create a role Never a dull moment! I have a team of seven lawyers, globally, and I’ve had my share of cases including a full blown jury litigation in the US that lasted six weeks, a mediation in Israel, an arbitration in South Korea, and of nuisance patent infringement claims in between. acquisitions ($200M+) and divestitures, managed a case in us about tell you Can handled that you’ve that particular particularly was think you interesting? sole legal in-house resource. I remember saying sole legal in-house resource. I remember we used who also advised our technology vendor. technology our advised also who used we to the CEO at the interview, “You do know that know do interview, “You the at CEO the to and I’m only one-and-a-half-years qualified,” picking is here Everyone worry. “Don’t said, he can the phone up to our expensive City lawyers; these you just be the central person managing costs?.” myself, a team, and a legal function. In hindsight, given. it was the greatest gift to have been grown During my tenure, the business has made organically and expanded internationally, equity raises completed complex integrations, and debt facilities, we were listed on NASDAQ: NNDS for 10 years, we were taken private in Feb 2009 at a $3.6B valuation, acquired in May 2012 by Cisco Systems Inc. (NASDAQ:CSCO) a following November 2018, since and $5B for a privatedivestiture by Cisco, we are once again by owned Limited, Synamedia company, Permira Private Equity. we manage the legal function in-house very effectively doing pretty much everything other than the obvious that call for external resource. ” We want to want We to go be able to one place you that gets the tax, corporate, employment, regulatory advice, etc., all under one roof. Ismat Levin “
. daunting looking at globally and operate through 20+ globally and operate through 20+
THE PATENT LAWYER
e own 830+ granted patents, have 3000 3000 e own 830+ granted patents, have Synamedia’s current developments, and her inspirations.Synamedia’s current developments, about her experiences as in-house counsel,about her experiences as Ismat talks to The Patent Lawyer Back then, I was a newly qualified lawyer working employees There was not much high calibre work in the There was not much high calibre work in the it so qualified had I which into team commercial didn’t seem like I had much to lose by 12 In the early ‘90s when I qualified, the UK was In the early ‘90s when I qualified, the UK was officially in recession and the City was feeling it. What was it that made you decide you made it that was What practice to from private move to in-house? at the city law firm, Dentons. I didn’t realise at at the city law firm, Dentons. I didn’t realise at the time that I accepted the in-house offer that it would be the beginning of a very exciting professional career lasting over 25 years! When did you join Synamedia? join Synamedia? you When did Synamedia is actually not a new company. It may have acquired its name only two years ago but prior to that it was part of Cisco, and prior to that it was a standalone company called NDS and I have been involved in it’s journey since I joined NDS in 1993. technology company, headquartered in London
Can you start by telling us about us about telling by start you Can Synamedia? of provision the in leader global a is Synamedia blue- transformative consumer solutions to our Sky in chip D2C and B2B media customers like just a Europe, Fox, Beln, Liberty Global to name infinite few. As consumers we now have an and amount of choice of content, channels, our platforms and to get our attention, their enable that solutions need customers are a services to stand out. At our heart, we General Counsel at Synamedia at Counsel General Commercial and Group and Group Commercial Senior Vice Vice Senior President, An interview with Ismat Levin, Levin, Ismat with interview An ISMAT LEVIN: SYNAMEDIA LEVIN: ISMAT legal entities. a different opportunity. It was incredibly W initially to think of moving from a well- a from moving of think to initially structured and organized law firm to being the Ismat Levin interview_TPL54_v4.indd 12 OVERCOMING § 101 REJECTIONS 22/06/2021 08:49 15 THE PATENT LAWYER See, e.g., McRO v. Bandai v. McRO See, e.g., 134 S. Ct. 2347 Bank, 134 S. Ct. 2347 CLS v. Alice See (“We have described have at 2354 (“We See Id. he Supreme Court created “judicial “judicial Court created he Supreme and eligibility § 101 patent to exceptions” the judicial for the policy explained T exceptions. exceptions. for that the policy The Court explained (2014). any prevent to was exceptions judicial applying monopolizing an improperly from one patent field. entire this exclusionary the concern that drives Although the pre-emption.”). principle as one of “lost in largely has been policy Court’s Supreme decisions and Circuit some Federal translation,” support for the 2019 Guidance provide as 101 § to exceptions judicial implementing Court. the by intended 837 F.3d 1299 (Fed. Cir. 2016) and and 2016) Cir. (Fed. 1299 F.3d Games, 837 Namco a to’ ‘directed claim is not 2019 Guidance (“a eligible, if and thus is patent exception, judicial the recited integrates whole the claim as a application of a practical into exception judicial use on, or rely apply, will [that] … that exception that imposes in a manner exception the judicial method for responding to rejectionsmethod for responding to ideas.based on alleged abstract Quinn, Ph.D. propose a quantitative David V. Sanker, Ph.D. and JillynneDavid V. Sanker, Ph.D. and efficient and effective patent prosecution.efficient and effective patent Patent eligibility rejections under 35 U.S.C. § 101 remain a significant issuePatent eligibility rejections Office (USPTO). The USPTO has issued multiplefor the United States Patent for Examiners on how and when to issueupdates to provide guidance have been some improvements in the proper§ 101 rejections, and there the large volume of rejections under § 101use of such rejections. However, “exception” envisioned by the Supreme Court.certainly exceeds the narrow for § 101 rejections, the rejections are oftenWithout clear policy guidance subjective. This poses a substantial obstacle toinconsistent, unclear, and CTC Legal Media A quantitative approach approach quantitative A § 101 overcoming to rejections Morgan Lewis_TPL54_v4.indd 15
17/06/2021 09:13 CTC Legal Media And I am inspired by anyone who takes a stand You don’t get to choose your clients; as a clients; as a get to choose your You don’t interesting incredibly an for provides also it But of Cisco, for example, When we were a part in-house lawyer. You’re dealing with everything You’re dealing in-house lawyer. same amount to big, often with the from small because it’s all important. of urgency my clients are the sales sales-led organization, their expectations and team, and managing means that I live with their meeting their targets and deadlines. quarterly target challenges two days are the same. day job because no legal function felt like a Cisco is so big that their subject matter specialists. law firm. We had legal you mine like team smaller Whereas in a privilege of having those really don’t have the your demarcations and it’s a case of rolling up knowing also but it getting on with and sleeves when to ask for and lean on external advice. from? inspiration take you Where do that I take inspiration from the opportunities COVID; technology offers me. More so during learn, I’ve been inspired to push myself to work, in communicate, exercise, and stay in touch it made has different ways because technology to put all so possible. It leaves very little excuse things on the “can’t be done” list! for a worthy cause, particularly at personal cost. for a worthy cause, particularly at personal but a History is full of such inspiring people use workplace leader who can offer clarity and bring passion, trust, and lead by example to goal, is people together towards a common have to lucky been very have I inspiring and worked with a few of those! ” I am inspired by who anyone a stand takes for a worthy cause, particularly at a personal cost. “
- favorite law law favorite
THE PATENT LAWYER
By joining LOT Network, we have an additional an we have Network, LOT joining By For other matters, for example an outsourcing an example for matters, other For We have some very capable firms that have We have some very capable firms that We also use outside firms for most of our patent We have found that over the years, because We have found that We use Clifford Chance for our M&A work, for our M&A work, We use Clifford Chance we’ve had some commercial litigation along the we’ve had some commercial matters can sometimes way - specific employment You have got to be incredibly versatile as an You have got to be incredibly versatile as an 14 Could you tell us about some of the some of us about tell you Could career your in faced you’ve challenges as an in-house lawyer? We respect the principle behind LOT Network We spend a to achieve. it’s trying and what substantial amount of money on R&D, and we do so to license our proprietary solutions to our customers. Threats of patent claims by NPE’s is like companies innovation for nuisance huge a Synamedia. Can you tell us why you recently recently you why us tell you Can Network? joined LOT For M&A, we look for breadth of expertise and For M&A, we look for breadth of expertise foreign office/presence- all under one roof. issue or a material employment issue, I find that working with a niche firm where I can work with a single partner is much more beneficial, so it really does depend on the issue. What do you look for in outside in outside look for you do What used you is it that why and counsel do? you firms that the favored great field expertise and have been very responsive Small to our needs, yet also reasonably priced. time enough to be responsive and at the same to need we resources the have to enough large handle high priority cases efficiently. matters. and they know us, that we know them all well us helps that partnership excellent an got we’ve we pick up quickly when there is something need. We invariably have to for certain areas of of certain areas have to for We invariably of litigation such as M&A, any form expertise, Do you use outside counsel at at counsel outside use you Do Synamedia? ISMAT LEVIN: SYNAMEDIA LEVIN: ISMAT drafting and prosecution. It is very handy to be drafting and prosecution. It is very handy ofable to count on them for very intensive periods the innovation activity without having to commit Company to long term employment costs. firms that we tend to use for for smaller niche use for for smaller niche firms that we tend to layer of protection against the potential threats of costly patent litigation, which is good news for us and for our roster of customers who rely on our world-class products and services. cause us to use outside counsel, especially in cause us to use outside and regulatory matters as different jurisdictions, well. York, and I have and another in New Ismat Levin interview_TPL54_v4.indd 14 OVERCOMING § 101 REJECTIONS OVERCOMING § 101 REJECTIONS
that certain claim features do add substantial antecedent basis for any alleged abstract idea. a few more members of the circle representing Résumés detail beyond the alleged judicial exception. A specific alleged abstract idea is required in claim scope. (Note that any such additional David V. Sanker, Ph.D., Partner, Without an objective measure of what it means order to determine whether the claims “impose elements would be inventions not yet created Morgan, Lewis & Bockius LLC to “impose a meaningful limit on the judicial a meaningful limit.” ““When an because anything covered by the claims and David earned his Ph.D. in Mathematics exception,” this process can go on indefinitely already existing would be prior art under § 102 from UC Berkeley in 1989, then taught with no meaningful advancement of prosecution. The quantitative approach examiner or § 103.) Being very generous on the number of Mathematics and Computer Science We propose a quantitative approach to determines additional not-yet-invented members of the at Holy Names College in Oakland for Policy background objectively assess whether a claim is “directed circle representing claim scope, there are three years. David then went into a In most cases, if a patent claim in fact recites an to” a judicial exception. Consistent with the that a perhaps 10. In this case, the graphical depiction second career in software development, “abstract idea,” there should be plenty of prior policy of the Supreme Court, the 2019 Guidance claim is of the universe of the abstract idea would be: developing software, designing database art to reject the claim under § 102 or § 103. For indicates that a claim is patent eligible when it architecture, and supporting the released David V. Sanker example, if a set of claims were merely directed integrates a judicial exception into a practical directed to software. After twelve years in his second to “collecting, analyzing, and displaying data” application in a manner that “imposes a meaning- career, David returned to UC Berkeley without additional limiting technical features, ful limit on the judicial exception.” See 2019 an abstract for his law degree. David has been with there is plenty of prior art to reject that claim. Guidance, Section II. We propose quantifying idea...the Morgan Lewis since 2005, starting as a There is no need to apply to a judicial exception whether there is a “meaningful limit” by summer associate during law school. to reject such a claim. comparing the number of systems / rejection David was promoted to the partnership We should be listening to the Supreme Court. apparatuses / methods included in the alleged should in 2017. At Morgan Lewis, David has Rather than devising another pathway for “abstract idea” (which in some cases requires practiced both patent litigation and patent rejecting claims in cases where prior art is the patent practitioner to define the alleged identify the portfolio building. Inventions that utilize available, the Court in Alice was focused on abstract idea) to the number of system / Arti cial Intelligence have become an preventing a patent applicant from tying up an apparatuses / methods covered under the abstract With over 1000 elements in the circle increasing proportion of David’s work entire emerging field. Properly applied, the pending claim. Graphically, the Supreme Court idea as it representing the abstract idea and only 10 to build intellectual property protection. analysis provided by the Court addresses situations was concerned about cases where the claimed elements in the circle representing claim scope, In 2018, David was recognized as one Jillynne Quinn where prior art does not yet exist. See Alice 134 matter substantially encompasses an entire is recited... the claims have imposed at least a 99% limit on of the top AI attorneys in California, and S. Ct. at 2354-55 (pointing out that the sole abstract idea: and explain the use of the alleged judicial exception. From David continues to give presentations concern was preemption). In this way, the Supreme an objective quantitative perspective, a 99% on topics related to Arti cial Intelligence. Court intentionally created a narrow judicial why it limit certainly satisfies the criterion for “imposing Because patent-eligibility rejections are exception to address the problem of preemption a meaningful limit on the judicial exception.” Under disproportionately applied to software of fundamental technical building blocks. corresponds the 2019 Guidance, the claim is considered a inventions, David has been developing Consider the earlier Gottschalk case. In to a concept practical application of the alleged judicial strategies to overcome these rejections. Gottschalk v. Benson, 409 U.S. 63 (1972), a patent exception, and thus the claim is patent eligible. application claimed a fundamental computing that the See 2019 Guidance, Section II (“A claim that Jillynne Quinn, Ph.D., Patent Specialist, process of converting between hexadecimal courts have integrates a judicial exception into a practical Stealth Co. (Hex) numbers and binary coded decimal (BCD) application will apply, rely on, or use the judicial Jillynne graduated with a BS in Biology In most numbers. These claims would have effectively identifi ed as exception in a manner that imposes a meaningful from UC Santa Cruz in 2010 and earned “ precluded anyone else from converting between limit on the judicial exception, such that the a Ph.D. in Biophysics from Stanford cases, if Hex and BCD. The Court used the description of In contrast to this scenario, consider a typical an abstract claim is more than a drafting effort designed to University in 2017. From 2018 to 2020, an “abstract idea” to designate claims that tie up § 101 rejection. For example, a § 101 rejection idea”. monopolize the judicial exception”). Jillynne worked at Morgan Lewis as a a patent an entire basic concept. See Id. at 409 (“...[the] may characterize a claim as allegedly directed Even without explicitly referring to this quantitative Patent Agent, focusing on securing patent claim in fact claim is so abstract and sweeping as to cover to an abstract idea such as “collecting, analyzing, methodology, there are multiple cases where rights for inventions in bioinformatics and both known and unknown uses of the BCD to and displaying data.” However, the question of applications have been allowed based on this software user interfaces. Jillynne is now recites an pure binary conversion”). how to describe the size of the abstract idea general approach. This type of argument has working at a startup company to build “abstract A proper § 101 rejection depends upon a clear remains. A person of skill in the art could easily ” succeeded in multiple art units. For example, and manage their patent portfolio. understanding of the alleged abstract idea. identify thousands of distinct ways of implementing Patent No. 10,725,774 evaluated in Art Unit 2192 idea,” there According to USPTO 2016 Guidance, “when an the alleged abstract idea, so suppose the (issued on 07-28-2020) was allowed because examiner determines that a claim is directed to universe for the abstract idea has at least 1000 the Examiner acknowledged that “[t]he alleged a meaningful limit on the judicial exception”) should be an abstract idea...the rejection should identify elements. What about the number of distinct abstract idea of data collection, processing, (emphasis added). plenty of the abstract idea as it is recited...and explain inventive ways covered by the claims? There are and/or organization or arrangement is in no way Unlike rejections under § 102 or § 103, recent why it corresponds to a concept that the courts two cases to consider: either (a) the examiner monopolized or intended to be monopolized by rejections under § 101 have substantially less prior art have identified as an abstract idea”. See 2016 has rejected the claims under § 102 or § 103; or the present claims. See Notice of Allowance objective analysis, typically describing claims at to reject Subject Matter Eligibility Update, Executive (b) there are no prior art rejections. In case (a), Application No. 16/100,100 at page 6. Likewise a high level of generality. For example, an office Summary. However, in some cases an office there is no need to consider the § 101 rejection Patent No. 10,621,599 evaluated in Art Unit 3623 action may assert that the claims merely recite the claim action does not identify any specific abstract because there is a more substantive rejection to (issued on 04-14-2020) was allowed because “collecting, analyzing, and displaying data,” idea, while still referring to “the abstract idea.”1 deal with (and the Supreme Court did not intend elements of the claims “use the judicial exception ignoring specific technical details recited in the under § 102 This limits the ability of patent practitioners to to apply a judicial exception here anyway). In in a manner that imposes a meaningful limit... claims. Such an office action continues by respond meaningfully. In the same way that case (b), there is at least one element of the such that the claim is more than a drafting effort or § 103. 1 https://www.uspto. asserting that the claimed use does not add any patent applicants are required to have circle representing the systems / apparatuses / gov/sites/default/ les/ designed to monopolize the exception.” See substantial detail beyond the judicial exception antecedent basis for any claim element referred methods covered by the claims (i.e., the applicant’s documents/ieg-may- Notice of Allowance, Application No. 15/367,992 itself. In response, a patent practitioner argues to by “the,” patent examiners need to provide proposed solutions). It is possible that there are 2016-memo.pdf at page 8.
16 THE PATENT LAWYER ” CTC Legal Media CTC Legal Media THE PATENT LAWYER 17
Morgan Lewis_TPL54_v4.indd 16 22/06/2021 08:49 Morgan Lewis_TPL54_v4.indd 17 22/06/2021 08:50 OVERCOMING § 101 REJECTIONS
These examples indicate that quantitative that absence of preemption “does not demonstrate descriptions of claim scope can be an effective patent eligibility,” it is incompatible with the clear tool for patent applicants. articulation by the Supreme Court.
The quantitative approach Conclusion provides the right framework to Subject Matter Eligibility under § 101 has been evaluate exceptions to subject unclear, inconsistent, and much more widely matter eligibility used after the Supreme Court’s Alice decision, In Alice, the Supreme Court concisely characterized despite the Court’s clear admonishment to § 101 exceptions, distinguishing between “tread carefully in construing this exclusionary “patents that claim the ‘buildin[g] block[s]’ of principle lest it swallow all of patent law.” The human ingenuity and those that integrate the quantitative approach introduced here is 2 Ariosa Diagnostics, Inc. v. building blocks into something more, thereby Sequenom, Inc., 788 F.3d consistent with the Supreme Court rulings, is ‘transform[ing]’ them into a patent-eligible 1371, 1379 (Fed. Cir. 2015). consistent with the 2019 USPTO Guidelines for invention… The former ‘would risk dispropor- Subject Matter Eligibility, and provides an tionately tying up the use of the underlying’ objective, measurable way to evaluate § 101 ideas … and are therefore ineligible for patent “The views expressed rejections and advance prosecution. protection. The latter pose no comparable risk herein are those of the of pre-emption, and therefore remain eligible authors and do not for the monopoly granted under our patent necessarily reflect the laws.” Alice 134 S. Ct. at 2354-2355 (internal views of Morgan, Lewis & Contact citations omitted). Because the Quantitative Bockius LLP.” Morgan, Lewis & Bockius LLP Approach provides a way to measure the risk of “This article is provided as 1400 Page Mill Road, pre-emption, it implements the Supreme Court’s a general informational Palo Alto, CA 94304-1124 USA holding. Neither the Federal Circuit nor the service and it should not Tel: +1.312.324.1000 USPTO can overrule the Supreme Court. For be construed as Fax: +1.312.324.1001 example, to the extent the Federal Circuit in imparting legal advice on www.morganlewis.com Ariosa Diagnostics v. Sequenom2 suggested that any specific matter.”
Your earthly point of contact for international patent filing on all relevant continents.
18 THE PATENT LAWYER CTC Legal Media
Morgan Lewis_TPL54_v4.indd 18 22/06/2021 08:50 Dennemeyer FP.indd 1 28/06/2021 11:54 CHEVRON DEFERENCE
22 17/06/2021 09:18 21 band framework.” framework.” Chevron THE PATENT LAWYER F.C.C. v. Fox Television Stations, Inc., 556 U.S. 502, 515 (2009). Id. at 981. U.S. Telecomm. Ass’n v. F.C.C., 825 F.3d 574 (D.C. Cir. 2016). Intell. Prop. L. Bus. Law., section 5:33 (2019-2020 ed.) (“[E]very defendant is entitled to argue that a patent is invalid and unenforceable, regardless of how many times the validity and enforceability has been previously litigated against other defendants.”). Ad Hoc Shrimp Trade Action Committee v. United States, 596 F.3d 1365, 1372 (Fed. Cir. 2010). National Home Equity Mortg. Ass’n v. Office of Thrift Supervision, 373 F.3d 1355, 1360 (D.C. Cir. 2004). But in 2018, the F.C.C. changed its changed its But in 2018, the F.C.C.
23
545 U.S. 967 (2005). 21 22 23 19 20 18 Résumés McCombs David Boone partner at Haynes and David is a serving as with 35 years of experience many leading primary counsel for identified as corporations. He is regularly attorneys one of the most active Patent Trial and appearing before the Appeal Board. Goryunov Eugene at Haynes and Eugene is a partner years of experience Boone with nearly 15 in complex patent representing clients litigation matters involving diverse technologies, from consumer goods to high tech, medical devices, and therapeutics. Matal Joseph Joseph is a partner at Haynes and Boone whose practice focuses on USPTO post- issuance proceedings and Federal Circuit appeals. He previously served as both the U.S. Patent and Trademark’s Acting Director and Acting Solicitor. But that was hardly the end of the matter. In the matter. of the end hardly was But that regulations to again define broadband as an as an again define broadband to regulations the of a construction – service” “information “[a]n initial agency interpretation is not instantly instantly not is interpretation agency initial “[a]n a is not and that “inconsistency in stone,” carved the agency’s analyze declining to basis for the under interpretation broad included that way a in service” cations 2015, the F.C.C. again defined “telecommuni- again 2015, the F.C.C. – an interpretation that the courts again that the courts again – an interpretation upheld. ” That the That AIA does the not give Director or the Board the power to interpret statutory provisions. Blonder-Tongue Labs., Inc. v. U. of Ill. Found., “
Suprema, Inc. v. International Trade Comm’n, 796 F.3d 1338, 1349 (Fed. Cir. 2015). See Dillinger France S.A. v. United States, 981 F.3d 1318, 1325 (Fed. Cir. 2020); Wind Tower Trade Coal. v. United States, 741 F.3d 89, 97- 100 (Fed. Cir. 2014). See 402 US. 313, 329 (1971) (noting that litigants “who never appeared in a prior action may not be collaterally estopped without litigating the issue. They have never had a chance to present their evidence and arguments on the claim.”); Windy City, 973 F.3d 1352. Ford Motor Co. v. United States, 809 F.3d 1320, 1324-25 (Fed. Cir. 2016). Id. Hymas v. United States, 810 F.3d 1312, 1320-21 (Fed. Cir. 2016). 18
11 12 13 14 15 16 17 20 court’s court’s
Chevron the Supreme Court the Supreme 21 as a telecommunications is that when the when the is that Chevron , recognizing that “[a]n that “[a]n , recognizing Chevron The Federal Circuit, too, has accepted has accepted too, Circuit, The Federal 19 See id. at 1341-42 (Reyna, J., concurring in part). Sledge v. Department of Justice, 786 Fed App’x 1006, 1013-14 (Fed. Cir. 2019). National Org. of Veterans Advocates, Inc. v. Sec’y of Veterans Affairs, 809 F.3d 1359, 1364- 65 (Fed. Cir. 2016). Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (2017). See id. at 1350. Balestra v. United States, 803 F.3d 1363, 1371- 73 (Fed. Cir. 2015). See id. at 1355 (Taranto, J., dissenting); id. at 1360 (Hughes, J., dissenting). See id. at 1323-24 (Opinion of O’Malley, J.). Fitzgerald v. Department of Homeland Security, 837 F.3d 1346, 1356-57 (Fed. Cir. 2016). Just how far this can go is illustrated by the the by go is illustrated this can far Just how One implication of One implication of
973 F.3d 1321 (Fed. Cir. 2020).
long-running feud over whether broadband broadband whether over long-running feud CTC Legal Media 1 2 8 9 3 4 5 6 7 10 blessed this change of heart, emphasizing that heart, emphasizing blessed this change of agency’s interpretation is not merely highly highly merely not is interpretation agency’s in the deference entitled to or persuasive through Instead, law. the of interpretation final agency’s the transubstantiation, legal an act of a to relegated The courts are opinion is the law. the whether policing of role secondary strictly a meaning leadership has selected agency’s that is reasonable. the meaning of leadership changes, agency’s Courts applying too. change can law the interpretation “[a]n agency’s that clear made have a statute of past understanding that the agency’s interpretation.” its current “is no obstacle to service qualifies internet of a statute is entitled to no less deference . . . no less deference to is entitled a statute of time.” over changed has it because simply its inter- that reverses Although an agency are that there “must show a statute of pretation – it must at policy” the new for good reasons changing is it that awareness “display least demonstrate need not – “it example for position,” the for that the reasons satisfaction a court’s to the for reasons the than better are policy new old one.” years Two service. an information service or was 1996 of Act Telecommunications the after Communications the Federal law, signed into is a that broadband Commission determined in the defined as service” “telecommunications common-carrier to (and thus subject statute fees). pricing and access obligations and special course and reversed the F.C.C. In 2002, however, as an “information broadband reclassified Ass’n Telecomms. Cable & In National service.” Servs., Internet X Brand v. this aspect of this aspect of and change its position” to is permitted agency Haynes Boone (2)_TPL54v2.indd 21 17/06/2021 09:18 15 16 in Chevron receive receive deference,” the the deference,” CTC Legal Media 14 (the USPTO’s parent parent USPTO’s (the 13 Even other bureaus within the bureaus other Even a special need for stability 12 17 can introduce into the the into can introduce Chevron The long-term nature of a patent and its its and patent a of nature long-term The much how just emphasis bears thus It The government-benefits determinations determinations government-benefits The that is allowed patent A different. are Patents The answer is suggested by a passage in in passage a by suggested is answer The agency) and other agencies when addressing addressing when agencies other and agency) infringement questions patent meaning of a statute. Under this doctrine, an this doctrine, an Under a statute. meaning of validity, regardless of the patent owner’s success owner’s patent the of regardless validity, actions. in prior the course over be reconsidered to propensity creates life its of law. patent substantive the of interpretation the inconstancy Quoting a footnote in the government’s brief brief in the government’s a footnote Quoting the whether question the reserve to sought that §§ 101–105 “35 U.S.C. understanding of agency’s Chevron be entitled to would matter.” is no small that “this noted drily panel Circuit Federal which the for remedies and trade no are deference agencies other gives routinely those cases, the parties to important to doubt that matters one-off generally are but they once. review only will agencies and courts established by were that the standards under can and year in one Circuit the Federal the courts and the to return will frequently those standards of reapplication for agency does one return decades. Nor two the next over is that defendant every – matter the settle visit its contest the right to has sued on a patent deference. Why is the USPTO alone excluded alone excluded is the USPTO Why deference. bounty? ’s Chevron from highlighted case that in panel The . City Windy how address” to refuses that “the government of review our into extend “would deference far provisions.” patentability of interpretations Commerce Department Commerce Wildlife Service. Wildlife Chevron Chevron Eugene Goryunov Joseph Matal David L. McCombs 3 9 adopted Customs Customs 10 4 decision, for decision, for 1 and the Fish and and the Fish and the Treasury Depart- the Treasury 7 11 6 Aqua Products Aqua review claim amendments without amendments claim review
the Office of Personnel Management, Personnel the Office of THE PATENT LAWYER Facebook, Inc. v. Windy City Innovations, Innovations, City Windy v. Inc. Facebook, But Judge Reyna’s swing-vote concurrence concurrence swing-vote Judge Reyna’s But here is no disputing that the Federal Federal the that disputing no is here grants its in parsimonious been has Circuit rulemaking. USPTO to deference of 8 In “additional views,” the three-judge panel panel the three-judge views,” In “additional 2 5
is reluctant to take it into account.is reluctant to take it into explain the difficulties surrounding Chevron deference and why the USPTOexplain the difficulties surrounding David L. McCombs, Joseph Matal & Eugene Goryunov of Haynes & BooneDavid L. McCombs, Joseph This lack of deference to the USPTO’s the USPTO’s to deference This lack of Skepticism of USPTO rulemaking and inter- rulemaking USPTO of Skepticism In its en banc ment, concluded that the AIA does not give the the give does not AIA concluded that the interpret to the power the Board or Director legal and thus all provisions, statutory must be the agency by conclusions reached de novo. reviewed and Border Protection, and Border 20 the Department of Veterans Affairs, Veterans the Department of interpretation of statutes would likely come as a likely would statutes of interpretation the under agencies that are the other surprise to The jurisdiction. appellate Circuit’s Federal reasonable to defers routinely Circuit Federal by adopted that are the law of interpretations Justice, the Department of LLC. is broad enough to allow the agency to establish to the agency allow enough to is broad amendments. for proof of a burden in last again on display was authority pretive year’s And a five-judge plurality went even further, further, even went plurality And a five-judge authorization the statutory whether questioning amendments for and procedures” set “standards to the statutory framework for amendments, and and amendments, for framework statutory the required. was rulemaking APA held that a new a regulation that sets the burden of proof for all all for proof of that sets the burden a regulation AIA in amend) to motions (including motions trials. had agency The amendments. addresses T deference not receive receive not Why the USPTO does USPTO the Why DEFERENCE CHEVRON faulted the agency for not having “fully considered” considered” “fully having not for agency the faulted example, a majority of the court held that the the that held court the of majority a example, for proof of a burden create cannot agency partes inter adopting a formal regulation that expressly that expressly regulation a formal adopting Haynes Boone (2)_TPL54v2.indd 20 CHEVRON DEFERENCE
statute that the courts also (again) upheld.24 period of lax eligibility standards at the USPTO And recent reports indicate that the new were thus followed by a stricter interpretation of Administration is poised to once again change the law, it is entirely possible that tens of thousands the meaning of “telecommunications service” – “It is likely or even hundreds of thousands of once valid the fifth interpretation in the history of the 1996 patents could suddenly find themselves invalid. Act and the third in the last six years.25 Although that the The Federal Circuit has noticed the USPTO’s it would be foolish at this point to predict when Federal departures from its § 101 case law, initially this back and forth might end, judicial precedent issuing rebukes that were almost fatherly (“While is clear that either agency definition of Circuit will we greatly respect the PTO’s expertise on all “telecommunications service” can properly be continue matters relating to patentability . . . “)28 but that regarded as “the law” under Chevron. have become frostier over time.29 The court Whatever disruptions Chevron may be to closely knows how Chevron works. And it is aware of the causing for the telecommunications industry, headaches that even judicially imposed changes such an approach to defining a law’s meaning question in patent law have created, despite the fact that would create utter bedlam for patents. every Federal judges are replaced much more different issues. The passions and disagreements over the gradually than agency heads are. proper construction of 35 U.S.C. § 101, for example, USPTO Given these circumstances, it is likely that the one simple solution. are at least as intense as those over the claim to Federal Circuit will continue to closely question regulatory status of broadband. Nor is there any every USPTO claim to rulemaking authority, and more reason to expect that agency officials rulemaking that Chevron deference will remain absent from would restrain themselves and forego the its review of the agency’s legal interpretations.30 opportunity to periodically reinterpret the law. authority. Despite its current exclusion from Chevron’s For more than 50 years, GLP has been offering a complete range of grace, the USPTO has sought to bend the services for a structured protection of intellectual property, by providing strategic 26 meaning of § 101, issuing binding guidance to consultancy, filing patent applications, registering trademarks, designs and models examiners that omits several exceptions to eligibility that are identified in the Federal ” in more than 160 countries all over the world, including Italy. Circuit’s jurisprudence.27 Whatever one’s view of the policy merits of Contact The GLP Group – through its six offices located in Milan, Udine, Bologna, Perugia, the USPTO’s current interpretation of § 101, if it Haynes and Boone Zürich and San Marino – stands as a strategic, precise and reliable partner, supporting its were entitled to Chevron deference, so too 180 N LaSalle Street, Suite 2215 would be the interpretations adopted by the Chicago, IL 60601, USA Clients in the complex and articulated path that leads to innovation and its protection. agency’s next leader. And any new approach, so Tel: +1 312.216.1620 long as it were a reasonable construction of the www.haynesboone.com Our Clients range from artisans to some of the Top Companies on the statute, would become the law of patents. If a Forbes 500 list, for whom we provide initial consultancy and support in lawsuits – both as plaintiff and defendant – throughout the world.
24 Mozilla Corp. v. F.C.C., 940 F.3d 1 (D.C. Cir. Interval Licensing LLC v. AOL, Inc., 896 F.3d with our caselaw, it is our caselaw, and the The quality of our services and our ability to achieve our 2020). 1335 (Fed. Cir. 2018). The guidance also omits Supreme Court precedent it is based upon, 25 Tony Romm, “Pressure Builds on Biden, the eligibility exceptions for patents that that must control.”) (citation omitted). Clients’ high objectives make us leaders in this field at worldwide level. Democrats to Revive Net Neutrality Rules,” claim only an effect or result, see, e.g., 30 Although a trademark can become Washington Post, Jan. 27, 2021. Internet Patents Corp. v. Active Network, Inc., “incontestable” and thus immune to The commitment of the Group has led to GLP being a top-level European player. 26 See 2019 Revised Patent Subject Matter 790 F.3d 1343, 1348 (Fed. Cir. 2015); University distinctiveness challenges after five years, Eligibility Guidance, Jan. 7, 2019, at https:// of Florida Research Found., Inc. v. General see Park’N Fly v. Dollar Park and Fly, 469 tinyurl.com/y357cdhc. Electric Co., 916 F.3d 1363, 1368 (Fed. Cir. U.S. 189, 196, 205 (1985)—a broad immunity 27 The guidance does not incorporate the 2019), or for patents that claim only a prior- equivalent to insulating a patent against Federal Circuit’s exception to eligibility for art functionality in a field of use. See, e.g., obviousness challenges—the Federal Circuit inventions that “merely select[] information, ChargePoint, Inc. v. SemaConnect, Inc., 920 nevertheless holds the reins of statutory by content or source, for collection, analysis, F.3d 759, 763-64 (Fed. Cir. 2019); Content interpretation just as tightly in Lanham Act Your European and display.” Electric Power Group, LLC v. Extraction and Transmission LLC v. Wells cases as it does in patent cases. See In re IP Partner Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir. Forney Industries, 955 F.3d 940, 944-45 2016). Under this exception, claims are 2014). (Fed. Cir. 2020); In re The Newbridge Cutlery ineligible if they are directed to selecting 28 Cleveland Clinic Found. v. True Health Co., 776 F.3d 854, 857 (Fed. Cir. 2015). This is media content for the information that it Diagnostics, 760 Fed App’x 1013, 1020 (Fed. perhaps a reflection of trademarks and displays, see, e.g., Affinity Labs of Texas, LLC Cir. 2019). patents’ cohabitation of the same agency, 29 v. DIRECTV, LLC, 838 F.3d 1253, 1256 (Fed. Cir. See, e.g., cxLoyalty, Inc. v. Maritz Holdings Inc., and the courts’ tendency to read into Via L. Manara 13 Viale Europa Unita 171 Via di Corticella 181/4 Other offices: 2016); Intellectual Ventures I LLC v. Capital 986 F.3d 1367, 1375 n.1 (Fed. Cir. 2021) trademark law whatever has been deemed 20122 MILANO 33100 UDINE 40128 BOLOGNA PERUGIA One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. (“[USPTO] guidance is not, itself, the law of necessary for patents. See, e.g., Herb Reed ZÜRICH 2015), or if they are directed to displaying patent eligibility, does not carry the force of Enters., LLC v. Florida Entm’t Mgmt., Inc., 736 Tel +39 02 54120878 Tel +39 0432 506388 Tel +39 051 328365 SAN MARINO information in a way that aids human mental law, and is not binding on our patent F.3d 1239, 1249 (9th Cir. 2014) (extending the Fax +39 02 54121214 Fax +39 0432 507735 Fax +39 051 4173102 processing. See, e.g., Trading Techs. Int’l v. eligibility analysis. And to the extent the standard for patent injunctions to trademark E-mail [email protected] E-mail [email protected] E-mail [email protected] www.glp.eu IBG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019); guidance contradicts or does not fully accord cases).
22 THE PATENT LAWYER CTC Legal Media
Haynes Boone (2)_TPL54v2.indd 22 17/06/2021 09:18 PATENT VALIDITY BRAZIL 22/06/2021 10:59 25 local local THE PATENT LAWYER (USTR) to unilaterally impose impose unilaterally to (USTR) authorized the United States Trade Trade States the United authorized Legally speaking, this minimum patent period patent minimum this speaking, Legally build trust of to stringent measures Therefore, Representative further adopted a leading strategy to attempt to to attempt to a leading strategy adopted further make to structure change the Paris Convention policy Brazil’s to and compatible it flexible of the decrease was The result development. languid a due innovation on investment under Brazil placing and rights IP of protection 1974 of Act Trade the Section 301 of the list of that prevailing policy was the reduction of patent patent of reduction the was policy prevailing to closed and eyes companies foreign rights of of exploitation of in favor infringement sanctions to end practices that hamper trade trade hamper that practices end to sanctions investments. and restrict States with the United on laws previous from revived was guarantee Decree- and 1945 of 7,903 Decree-Law - patents on that it 1967 – and improved 254 of Law on grounded extension patent allowed patent that prevented events exceptional exploitation the adequate and/or prosecution of including lack patent, the granted of and inputs, importation restrictions production that public services of inefficiency existing also secure to was The concern the patent. affected owners. patent for exploitation adequate utmost importance of was investments foreign period The exceptional field. in the intellectual at that time. scenario fits the existing companies. At the international arena, Brazil Brazil arena, international the At companies. ” Stringent to measures build trust of foreign investments of was utmost importance in the intellectual field. “
These indeed reinforced the rights of patent patent the rights of These indeed reinforced tackle to adopted not was trend This new CTC Legal Media subject matters, the adjustment of the rules to the rules to of the adjustment subject matters, for forfeiture patent and licensing compulsory term patent of adoption non-use and the in 1994. no. 1,355 Decree by in Brazil in the international and placed Brazil owners regarding country scenario as a respectful Brazil rights. However, property intellectual a minimum protection and secured further went sole the to According owners. patent for period period a Law, IP the of 40 Article of paragraph invention of patents for years less than 10 not prevail. will the grant from work, backlog of a patent and exactly directly which 1996 (period under since back in 1991 to the based on order property one If patents. of strengthening looks back in time during the one may 80’s, through 1970’s Brazil’s that remember A little bit of history A little bit the inclusion Law, the IP of provisions Among the as patentable technology fields of in all inventions of regarded were practices international to levelled The proposed changes. as the most significant Law IP the by modifications implemented law the minimum 1996, followed from that dates implemented Agreement TRIPS the rules set out by counted patents model utility for years and seven and elaboration), discussion under was Law the IP The issue. an not was backlog BPTO’S the implemented in fact was term patent exceptional intellectual a new to compromise Brazil’s reinforce to Vas a Dias_TPL54_v6.indd 25 22/06/2021 10:59 including CTC Legal Media were the pharma were ted from the filing date. from ted will follow a validity time frame time frame validity a follow will ne of the most important icons of the most important icons of ne of greater to commitment Brazil’s back property intellectual of protection Accordingly, patents granted by the Brazilian the Brazilian by granted patents Accordingly, Following up this decision, the judges of the up this decision, the judges of Following This decision has set out a new dress code for for code dress new a out set has decision This in the 1990’s was challenged, having been been challenged, having was in the 1990’s the Supreme by unconstitutional declared Law the IP from Court and eliminated Federal minimum 10-year so-called the 2021: 6, May last the under grant patent of date the from period Law the IP article 40 of of sole paragraph 14, 1996). on May enacted 9,729 Law (Federal from as (BPTO) office Trademark and Patent a during protection receive will 2021 14, May established by Art. 40 of the IP Law, which is 20 Law, the IP of Art. 40 established by a for years 15 and invention of patent for years Exceptions will no longer be accepted, be accepted, no longer will Exceptions the boundaries of Court set out further Supreme identification the including decision, the of effects be retroactive. will which the effects situations in of by affected directly areas the technical of Two tunc) (ex effect the retroactive healthcare. to business and those related O independently filing, of the date period from 20-year where including situations encumbrances, any of prosecuting further from prevented is BPTO the reasons. other or application, the patent granted since patents in Brazil, protection patent the BTPO by coun patent, model utility the effects on backlog of work for patent prosecution. patent for work on backlog of the effects ” José Carlos Vaz e Dias 20 years for 20 years patent of invention and 15 years for a utility model patent. “
THE PATENT LAWYER
José Carlos Vaz e Dias, Senior Partner e Dias, Senior Vaz Carlos José José Carlos Vaz e Dias is an attorney-at- law and has specialized in patent and investment foreign and matters trademark law since 1993. His activities are focused on providing legal support and wishing companies foreign to consultancy to invest in Brazil, especially in the field of technology and in support of trademark protection and litigation. One of his areas of expertise is participation in the negotiation and drafting of franchising, distribution and licensing agreements and joint-venture and other commercial intellectual exploit to aim that agreements property rights in the Brazilian territory. Most recently, José Carlos Vaz e Dias has been working extensively on matters related to Brazil’s Innovation Law. He has coordinated several research and development agreements involving Brazilian research centres and national and foreign companies, while also providing support on intellectual property matters and fiscal law. José Carlos Vaz e Dias holds both a master’s (LLM) and a PhD in law from the University of Kent in Canterbury, United Kingdom. Résumé and enforce the patents. the patent owners of the pharma business on the ability to exploit, license,the patent owners of the decision that challenged the sole paragraph of Art. 40 and how it affecteddecision that challenged ADVOGADOS addresses the main aspects of the Brazilian Supreme CourtADVOGADOS addresses The Brazilian attorney José Carlos Vaz e Dias of the IP law firm VAZ E DIASThe Brazilian attorney José
24 Supreme Court decision Supreme the practical effects of the of effects the practical patent validity in Brazil: in validity patent A new dress code for for code dress new A PATENT VALIDITY BRAZIL VALIDITY PATENT Vas a Dias_TPL54_v6.indd 24 PATENT VALIDITY BRAZIL 22/06/2021 11:00 27 ” THE PATENT LAWYER This means This means that patents in these technical fields will face immediate of reduction the patent term. “
ex since it will remain remain will since it currently challenge challenge currently granted patents due to due to patents granted unconstitutionality of the the of unconstitutionality sole paragraph of Art. 40 of Art. 40 of of sole paragraph the IP Law, since the Supreme since the Supreme Law, the IP Court decision resolves the the Court decision resolves constitutionality issue. Moreover, issue. Moreover, constitutionality the Supreme Court’s decision will be will decision Court’s the Supreme retroactive to existing granted patents patents granted existing to retroactive “Furthermore, I confirm: the impact of this I confirm: the impact of “Furthermore, and decision on the products and equipment processes pharmaceutical with use in health, for materials and/or a imply necessarily not will tunc effects, overthrow, patent the periods for the exclusivity ensured art. 40, from in the caput of for provided The Justice Rapporteur was careful on preventing careful was Justice Rapporteur The any attempt to make the unconstitutional the unconstitutional make to attempt any issue against the Patent decision as a political the health those affecting especially System, the of in page seven stated He system. and the effects addressing minute Rapporteur’s the decision, as follows: modulation of (products or processes) in the pharma business processes) or (products healthcare and equipment for and materials in these technical This means that patents use. the of reduction immediate face will fields if be in public domain will They term. patent the period as from surpass the 20-year they the for reason justifying The date. filing and pharma the on effects retroactive has been the public interest areas healthcare which is deeply on the public health, grounded COVID-19. by affected
currently benefiting currently period will continue to continue to will period Besides taking into consideration the arguments the consideration into taking Besides This general rule does not apply to lawsuits lawsuits to apply rule does not This general CTC Legal Media of the General Federal State Attorney, voting in voting Attorney, State Federal the General of the Rapporteur the unconstitutionality, favor at the regime similar of the inexistence raised jurisdictions. and other Agreement TRIPS the 6, 2021 the 11 judges of on May Therefore, declared Session Plenary under Court Supreme Article 40 of the sole paragraph unconstitutional votes. nine of on the majority Practical effects of the decision? How retroactive is the decision? the decision, of up the contents Following 14 (publication date May from granted patents will the BPTO by onwards judgment minutes) of years 20 a period of for and effective valid be as from years, 15 for patents model and utility the by is complemented This rule the filing date. patents valid that decision an adequate infrastructure for patent patent for infrastructure an adequate stringent also are There examination. motions future ground that may arguments persisting backlog to by applicants affected by in case prosecution speed up the the BPTO make and the backlog followed not the commands are Rapporteur The field. technical any in persists the decision open future and arguments parti- ANVISA’s of request unconstitutionality which indeed prosecution, cipation in the patent speed and promotes prosecution the lowers be seen. to yet This is an issue inefficiency. from the exceptional the exceptional from produce effects in regard to third parties until parties until third to in regard effects produce the Therefore, period. validity the of day last the only affect will the sole paragraph of revocation as from the BPTO by granted that are patents 14. May courts that 2021 at the federal 7, April filed up to Vas a Dias_TPL54_v6.indd 27
22/06/2021 11:00 CTC Legal Media Although these commands are of limited order, order, limited of Although these commands are When the rendered decision on the uncon- decision on When the rendered The Federal General Public Attorney further further Attorney Public General The Federal mong others. Accordingly, it was affirmed that thewas it Accordingly, mong others. determined that the Brazilian Health Regulations Health that the Brazilian determined criteria examination its publishes (ANVISA) Agency Article under patents of during the prosecution Law. Property the Industrial 229-C of Justice Rapporteur was focused on the inefficiency on the inefficiency focused was Justice Rapporteur greatly were which activities, the BPTO’s of that the the understanding influenced by by be mitigated could faster move to inability further was It term. patent the exceptional validity patent out that the additional pointed attitudes. delaying applicants’ to contributes was period validity exceptional the Therefore, violation a and backlog patent the to interrelated art. 27 of Principle and also of the Isonomy of TRIPS. Article 40 of the sole paragraph of stitutionality the thereon, be adopted to and procedures thecommanded specifically Rapporteur Justice within (i) measures: the following adopt to BPTO with the hiring of proceed period to a one-year for compose the staff people to technical new adopt to priority (ii) give prosecution; patent the on impact to solutions technological backlog; (iii) give the existing of reduction in streamline prosecution patent priorities to matter that the same technical prevent to order examinations different by with diversely is dealt that document recovery prioritize and (iv) it Moreover, prosecution. patent jeopardize infringe temporary patent protection (art. 5, item item 5, (art. protection patent temporary infringe the public administration of efficiency XXIX), the intellectual of function social the 37), services (Art. period stimulates validity that the exceptional argued a services. In fact, the BPTO’s of inefficiency the discussed by the arguments of deal great since the BPTO does not have financial autonomy autonomy financial have does not since the BPTO messages clear are them, they some of adopt to on the construction of government the Federal to fact the sole paragraph secured an indetermined secured the sole paragraph fact property rights (Art.5, Item XXIX combined with with combined XXIX (Art.5, Item rights property of duration III), and adequate Item Art. 170, LXXVIII), Item 5, (Art. procedure administrative a of delays the period, subject to validity patent the Isonomy it harms prosecution, the patent services. administration Principle that rules the the of rupture of is also the the allegation There derived system patent the Principle of Isonomy seeks that Agreement TRIPS the Art. 27 of from all to protection patent equal secure to Thus, the fields. and technical inventions inconsistencies creates period exceptional the patentees of all not terms, since, in practical that the use it, considering entitled to are specific to only applies years 10 backlog over behind adequate fields that fall technical examination
with
Prior to October 2018, when the BPTO commenced when the BPTO 2018, October to Prior But what were the reasons behind challenging the reasons were what But The sole paragraph of Art. 40 of the Industrial the Industrial Art. 40 of of The sole paragraph the adoption in 2019 of the “Backlog Combat Combat the “Backlog of in 2019 the adoption find the prosecution to uncommon not was it Plan”, Why eliminate the exceptional minimum patent duration rule if backlog is still a reality? exist still there efforts, herculean BPTO’s the Despite prosecution applications under 143.816 patent applications that and, among them, 8.837 prosecution period of surpassed the 10-year 2021 12, March of publication the up following the of decision the in (mentioned BPTO the by holds still the BPTO Therefore, Court). Supreme and long-lasting battle against the an intense backlog. patent taking into Article 40, of the sole paragraph an issue? backlog is still account that the patent filed at the was grounded The court procedure Public General the Federal Court by Supreme ADIN 5529. reference in 2016 under Attorney the violation of the was The justifying reason as the sole Constitution insofar 1988 Federal to understood was Article 40 of paragraph delays on the prosecution of patents at the BPTO. patents of on the prosecution delays years. 14 12 or to up reaching patents of in the data specified the BPTO’s to According the average Court decision, Supreme recent applications patent of examination the for time time frame The average in 2006. years 10.6 was Telecommunication, in 2020. years 7.9 to dropped have inventions mechanic and pharmaceutical lack the BPTO’s due to been the most affected technical including reduced infrastructure, of examination effective and absence of examiners time the average Accordingly, procedures. telecommunication of examination for frame biopharmaceuticals years, 10.1 is still inventions years. and mechanics 8.8 years 9.9 up to reach secure to role a relevant played Law Property for exploitation patent period for an adequate the structue of the lack of by those affected to rights detains patentee the Although BPTO. infringement losses and damages from obtain Law IP the of 44 Article of terms the under application is the the date from (initiated infringement litigation may published), patent The is granted. a patent after commence only remittances royalty applies to same requirement a Therefore, licensing. patent from overseas is important. patent granted The minimum patent grant period patent grant The minimum backlog BPTO’s patent and the patent period for a minimum of the guarantee If foreign gain trust of to a measure at first, was, rights investors, it was evidenced as a useful tool to to tool a useful as evidenced was it investors, the from derived effects the harmful mitigate backlog the patent solve to project a pilot ” THE PATENT LAWYER
26 The revocation of the sole paragraph will affect patents only that are granted by the BPTO as from 14. May PATENT VALIDITY BRAZIL VALIDITY PATENT “ Vas a Dias_TPL54_v6.indd 26 PATENT VALIDITY BRAZIL 22/06/2021 11:00 29 ” THE PATENT LAWYER Such courtSuch procedure will not be affected by the Supreme Court decision. “
l 10 years of of years 10 l t benefit from the additional the additional t benefit from +55 21 3176-6530 Last but not the least, developments of the decision of the least, developments Last but not Contact ASSOCIADOS & ADVOGADOS E DIAS VAZ 10, Section 2422 Centro Assembleia da Rua Brazil Janeiro/RJ, Rio de Tel [email protected] www.vdav.com.br/en/ Final concluding comments Final concluding the Court decision, the Supreme of view In been has term patent period for exceptional have will patents All Law. IP the from eliminated contin- any of independently the same term, the patent of the prosecution gencies affecting the decision does affect application. Moreover, tha patents granted the pharma- to those related period except and equipment and materials industry ceutical rights in patentee’s Asserting use. health for consideration into take should therefore Brazil Court. the Supreme the rules set out by the dichotomy of view in be followed to yet required are the exceptiona the end of between and the persisting backlog (although term patent reduced in the last years). in the last reduced
affected by by affected retroactive effects of the Supreme the Supreme of effects retroactive consumers) will not be entitled to seek be entitled to not will consumers) challenged at the federal courts under courts under challenged at the federal of the unconstitutionality of the grounds the IP 40 of Article of the sole paragraph term the patent have will Law years 20 to reduced automatically the filing date. from counted proceeds in court after May 14, 2021. Such 14, 2021. May in court after proceeds the by affected be not will procedure court court The state Court decision. Supreme damages losses and secure will decision use during the period an unauthorized for 14. May to prior 5) currently that are patents Granted The Judge Rapporteur confirmed expressly that confirmed expressly Judge Rapporteur The The decision provides assurances to patentees patentees to assurances The decision provides Court decision. CTC Legal Media Therefore, licensees, defendants, third parties third licensees, defendants, Therefore, (including the exploitation from derived values of the refund against the Supreme Court decision. Supreme the unconstitutional declaration of the additional the additional of declaration the unconstitutional of acts consummated preserve will term patent from parties third on effects their and patentees period. exceptional the from benefiting patents the patents indemnification of or Vas a Dias_TPL54_v6.indd 29 22/06/2021 11:00 CTC Legal Media calculation of royalties from patent patent from royalties calculation of at the recorded license agreements 8, 2021. April place till take may BPTO calculated/ from overseas Remittances place at any take may royalties collected in deposited values time, including the account in Brazil. escrow Court procedure at the state courts due to to due courts state the at procedure Court patent violation when infringement: takes 8, 2021 but patentee April place before Royalties on patent licensing agreement: agreement: licensing patent on Royalties license patent from royalties of calculation BPTO the at recorded yet not agreement 8, April be permissible in principle until will since the licensed patent after 2021 not the of Remittance be extinct. will 8, 2021 may April to period prior calculated time. place at any take due courts state the at procedure Court to patent when violation infringement: may 8, 2021, patentee April occurs before time any at procedure court initiate limitations of of up the statute following date, infringement the as from years five Law. the IP Article 225 of as set out by 8, 2021 unauthorized April After on pharma and the patent of exploitation period during the exceptional healthcare violation. be considered no longer will will be secured by the patentee until the the until patentee the by secured be will for period, except the exceptional end of and pharma industry in the patents use. health for materials and equipment in the pharmaceutical patents Granted and and processes) field (products health use: for and materials equipment 20 of period a for be will rights patentee’s the patent If date. the filing as from years period, the exceptional from is benefiting as become extinct will rights patentee’s the injunction to 8, 2021 (due April from The Justice Rapporteur). the by granted patents model utility to same rules apply in the pharma business and equipment health use. for and materials courts due to patent infringement when infringement patent courts due to court 8, 2021: April before violation occurs the by be affected not will procedure Court decision and therefore Supreme on court the state decisions issued by losses and secure will infringement use. patent an unauthorized damages for Existing court procedures at the state state the at procedures court Existing Royalties on patent licensing agreements: agreements: licensing patent on Royalties 4.5) 4.2) 4.3) 4.4) 4.1) 4)
to patent infringement during the patent to initiate may period: patentee exceptional time following at any court procedures years five limitations of of up the statute as set out date, the infringement as from The decision Law. the IP Article 225 of by secure will court the state issued by the losses and damages for the patent. use of unauthorized the patent of exploitation commercial Royalties on patent licensing agreements: agreements: licensing patent on Royalties place take may royalties Collection of the exceptional the end of until normally in the patents for except term, patent and equipments and pharma industry use. Royalty health for materials at place take may overseas remittances calculated are when royalties time any period, during the additional and collected values the of including remittances in Brazil. account an escrow in deposited Granted patents benefiting from the benefiting from patents Granted of the sole paragraph of period exceptional (excluding Law the IP Art. 40 of patents): pharmaceuticals and health care the exceptional rights under the patentee’s the last to and effective valid be will period period of the maximum 10-year of day the use, Therefore, protection. patent of licensing, and enforcement exploitation, The same rule maintained. are rights patent patents. model utility applies to New patent applications filed and granted patent New 14, 2021: the patent May after the BPTO by filing and from years 20 be to will term filing date. the from years 15 to model utility before May 14, 2021 and granted after after 14, 2021 and granted May before be will term the patent the said date: filing and utility from years 20 to limited filing. from years 15 to model the filing date of the patent application application patent the of date filing the and 15 invention, of in case years, (20 model), a rule that utility in case of years, in this decision and untouched remains the 1988 under protection that ensures Agreement.” TRIPS Constitution and the 3.2) Court procedure at the state courts due due courts at the state Court procedure 3.2) Patent: the of exploitation and Use 3.3) 3.1) 3) Looking at the Supreme Court decision under Court decision under at the Supreme Looking 1) filed at the BPTO applications Patent 2) a strict practical viewpoint, the following the following viewpoint, a strict practical into should be taken and guidance directions the limits of asserting for consideration as follows: in Brazil, rights patentees’ ” THE PATENT LAWYER
28 The decision provides assurances to patentees against the retroactive effects of the Supreme Court decision. PATENT VALIDITY BRAZIL VALIDITY PATENT “ Vas a Dias_TPL54_v6.indd 28 AUTOMATED PATENT ANALYSIS AUTOMATED PATENT ANALYSIS
big data. In a broad sense, they all refer to the Factor Definition as frequently used acquisition of measurable information from the by the platforms patents. Patents are publicly accessible, but a Why automated patent computer cannot understand them as they are. Backward citations Number of patents cited as prior art It is necessary to break down the patent into a in a patent document. group of less complex pieces of information which can be individually assessed. I refer to Citations to non-patent literature Number of scientific sources analysis can be wrong, these pieces of information as factors. (non-patents) cited as prior art in a Factors are not new to the field; they have patent document. been used to benchmark patents even before Forward citations Number of citations received from the automated platforms appeared (for instance, later patents. by Larry M. Goldstein). But nowadays, factors are even when it’s right used to simplify the patents in order for a computer Claims Number of claims in a granted to be able to analyse them. It is worth noting patent. Axel Contreras-Alvarez, former IPR Commercialization Manager at Ericsson, that not all platforms use the same factors. Some platforms use more or less factors than Essentiality Declarations Identifies whether the patent has evaluates the reliability of software and automated analysis for patent others, and some even come up with new been declared as potentially factors by further subdivision or combination of essential towards a Standards valuation, considering the factors used by algorithms, and with an action known factors. In all cases, it is important for the Development Organization (SDO). plan for those wishing to use such platforms. users to pay attention to which factors are used by the platform at hand. An example of a factor Family size Number of granted or pending is the number of ‘backward citations’ in a patent, applications which share a common onnectivity is changing our comm- in particular for the negotiation of the licenses. that is, the number of other patents that are priority application (usually in unication dynamics. Long gone are the With the recent boom of artificial intelligence cited in a specific patent. When referring to the different countries). days when the only function of a phone (AI), attention has been drawn to analytics and number of other patents which cite the patent in C Grant lag Number of days elapsed between was to make calls. Nowadays, we can share other automated methods to help in the question, the factor is called ‘forward citations’. the filing and the granting of a pictures and videos with our friends, calculate generation of said information. This has created Another factor is the so-called ‘grant lag’, which patent. our time of arrival to any destination, order food a market for computer platforms which offer refers to the number of days elapsed since the and get it delivered to our door, join business automated patent analysis and valuation. application date of the patent until the grant Legal status Specifies whether the patent is conferences, etc. Connectivity is also spreading Automated patent valuation platforms can date. There are many examples of factors, the pending, granted, lapsed, or to all kinds of devices, not only our phones provide quick results, and the process is also most popular ones are listed right. abandoned. are connected but also the lights, the TV, the less expensive compared to human expert Computers can quickly analyse these factors coffee machine, and the cars1, to name a few. analysis, but its reliability is questionable. In fact, from a multitude of patents. Sums, comparisons, Licensing Whether the patent has been These complex fast-developing cutting-edge Axel Contreras-Alvarez although the software for automated analysis averages, and trends can be obtained from portfolios previously licensed. technologies enabling connectivity are the result has experienced a fast-paced development in or even entire technical fields in a matter of Opposition or Litigation Indicates if a patent has survived of years of work and heavy R&D investments in the recent years, its implementation in the legal seconds. Errors in the computation are close to opposition or litigation procedures. innovation. This is why they are typically protected field has been limited, mainly because this non-existent thanks to the power of computers. by patents, which may be licensed. We live in an requires legal knowledge and other forms of All the obtained information can be useful and, Ownership Rating of a patent based on who the era of technology licensing. advanced abstract thinking which the as previously mentioned, the factors have been holder is and whether there have Both licensors and licensees understand that algorithms are not yet capable of. used as benchmarks for several years already. been ownership changes. a timely valuation of the technologies is crucial, Nevertheless, such platforms are already The recent increased efficiency of software and being used in the patent licensing environment, hardware makes it possible to extract those Term Number of days left until the patent’s a context which demands both technical and factors from multiple patents in a shorter time 20-year lifecycle lapses. legal proficiency. Moreover, the information that and then analyse them according to the Résumé these platforms generate is accessible not only platforms’ algorithms. However, the analysis is Technological scope Number of distinct four-digit IPC Hector Axel Contreras is former IPR We live in to industry stakeholders but also to other not about entire patents with context and subclasses in which a patent was Commercialization Manager at Ericsson “ relevant factors such as policy makers. For details, but about the simplified factors. The idea classified by its corresponding patent Hector is currently focused in technology an era of these reasons, it is important that both users behind is that those factors may be able to tell us office. standardization and patent licensing in and service-providers are aware of the benefits, whether the patent in question is valuable or not. the telecommunications sector. Has a technology the capabilities, and the limitations of these background in informatics and a master’s licensing. tools2. Equally relevant would be to understand Searching for value Even when the company providing the platform degree in Intellectual Property and how the information provided by the platforms After identifying the factors, the second is aiming for transparency, they frequently present Competition Law at the Munich should be interpreted. In order to answer this, important question is: are those factors truly the factors as direct indicators of value (or lack Intellectual Property Law Center, where we need to look at how the results are being indicators of patent value? To answer this, we of it) based on simplified, and sometimes- he is now a tutor for the current students. obtained. need to look at how they are interpreted. One undisclosed, assumptions. As an example, when Also acquired experience as obstacle is that, in some cases, it is challenging analysing the backward citations some IP 1 https://www.bbc.” entrepreneur, patent agent and lecturer. Patent factorization to know how the platforms are processing the specialists argue that a high number may reflect com/news/av/ Passionate for new technologies, digital business-30786714 For the first step, we need to ask the following: information because it is protected as a trade that the owner of the patent possesses expertise transformation, and cycling. 2 https://papers.ssrn.com/ what data do these platforms analyse? We often secret, thus the description of the process is not in the field. It may also reflect that the invention abstract=3658631 hear terms such as analytics, text mining, and accessible to users. is an incremental innovation of a market-proven
30 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 31
Ericsson_TPL54_v3.indd 30 17/06/2021 09:37 Ericsson_TPL54_v3.indd 31 17/06/2021 09:37 AUTOMATED PATENT ANALYSIS AUTOMATED PATENT ANALYSIS
technology, which may make those inventions Some of the factors can be directly obtained from processing such a heterogeneous source frequently present the factors as direct valuable. However, other IP experts argue that a from patent offices or the patent documents will likely be impacted by the parameters and indicators of value (or lack of it) based high number of backward citations may also themselves, but other factors require external assumptions that are applied to the data in on simplified, and sometimes-undisclosed, mean that the patented invention was created “Thus, information which is not always accessible. The order to analyse it. For example, when more and “First, there assumptions. Although these platforms can in a field where there is more competition and availability of this external information represents more parameters for analysis are added, there correctly process some factors in a quick this would result in less market opportunities, automated another obstacle in the correct assessment of is a risk to produce an algorithm that corresponds is not manner and generate metadata which could be making the patent less valuable. In real world, platforms the patents because there may be time - or precisely to the data set which is being used as enough very useful for the industry (e.g. by identifying as these examples show, the relation between quantity - constraints. For instance, in the case the training model, but which does not fit other patents which survived nullity actions), some the factors and the real value of the patent is offering of ‘forward citations’, a patent that was published data sets. An algorithm is typically developed information other results provided by these platforms usually more complex than what the platforms data and a long time ago will be more often cited than a (or trained) with the intention to generate publicly should be taken with prudence and caution. typically assume. more recently granted patent. As a result, the accurate results over a wider data population, Unfortunately, there is no factor that is reliable The discrepancies in how the factors are analysis score of earlier-published patents would be and its performance is measured in a test with a available to for all cases. Even the ones with the strongest interpreted affect the results calculated by the overinflated, while the value of most recent control data set. Eventually, the algorithm can connection to value, suffer from issues that platforms. In other words, even when the computing on 5G innovations would not be accurately reflected. accurately pinpoint the “correct” patents within create a prevent their applicability in some circumstances. is correctly done, the theoretical assumptions standards Another example is the ‘opposition or litigation’ the control data set, but when faced with a reliable This variation in the reliability of the factors behind it might be inaccurate. This is evident factor. On the one hand, the fact that a patent different group of patents it may fail to identify makes human involvement necessary for a with simple numerical factors, as is the case of are likely survived opposition/litigation can be a reliable any “correct” patents at all. This happens dataset trustable result of the process. Moreover, users citations, and further issues arise with more to provide indicator of value. On the other hand, there is because the program was created to identify about patent should know that a platform applying a higher complex factors such as essentiality for standard only a limited amount of data related to this details and nuances specific to the control test, number of factors does not necessarily provide essential patents (SEPs), which no platform has inaccurate factor because, in practice, very few patents are but which are not general rules for the value, the the most accurate results. For example, if weight been able to address. Current platforms that try opposed or litigated. Therefore, the impact of identification of correctness. This phenomenon is placed on unreliable factors or the wrong to use essentiality as a factor, rely on declarations results. these factors on the results is limited. is known as overfitting and is often observed information algorithm is used, the results will be wrong. of potential essentiality made by the patent owners Machine-learning approaches have been when analysing data sets which were created is scarce The users must pay attention to the factors towards standard development organizations. equally unable to provide consistently favorable with objectives different than software analysis, analysed and to how the information is processed, These self-proclaimed declarations reflect only results because of two main reasons. First, there such as patent databases. The opposite effect, and difficult so they can evaluate whether the information is potentially essential patents and patent applications3, is not enough information publicly available to underfitting, can also happen causing the to gather. relevant for their specific scenario and needs. which do not necessarily result in a SEP. A genuine ” create a reliable dataset about patent value, the algorithm to fail in the obtention of the desired Fortunately, the platforms can be useful for 3 https://www.iam- essentiality check involves over 40 hours of expert information is scarce and difficult to gather. The results. It is usually a result of an oversimplified certain cases (e.g., a general analysis before a media.com/frandseps/ analysis per patent, and current technology has second issue is that patents are, by definition, model which leaves out important parameters merger) even if the results are not sharply transparency-iot-licensing not been able to perform it. Thus, automated 4 https://www.iam-media. technically unique and they are shaped by the in the analysis. precise. In other scenarios however, a more platforms offering data and analysis on 5G com/frandseps/5g- peculiarities of jurisdiction-specific laws and ” careful assessment may be required. The more standards4 are likely to provide inaccurate results. decision-making-full-facts regulations. The results which can be obtained Conclusions complex the assessment is (e.g., in essentiality In sum, patent value is complex and depends determination where technical and legal on the specific situation of each negotiation. knowledge are involved) the less reliable an Factor Usability as value indicator Availability of information Even the same patent can be perceived as automated system will be. having different value by different individuals in Backward citations No Good different circumstances. Automated platforms
Citations to non-patent literature No Limited Action plan Forward citations Context-specific Delayed • Automated platforms aim to assess patent value by breaking down Claims No Good the information from patents into less-complex pieces called factors. Essentiality Declarations Weak, as it only considers a declaration Very Limited • Factors are presented as direct indicators of value (or lack of it) of potential essentiality towards an SDO based on simplified assumptions. These assumptions can be Family size Strong (But relies on previous assessment Good inaccurate. In the real world, patent value is complex and by the owner) context-dependant.
Grant lag No Good • With current technology, automated platforms are insufficient for a more complex assessment, such as determining the essentiality Legal status Weak (But works as a filter) Good but requires frequent updates of a patent.
Licensing Strong Very limited • Caution and scrutiny are crucial for users when using information from automated platforms, especially if the information is going Opposition or Litigation Strong Limited and difficult to extract to be used in negotiations, policy-making or other practices with wide-reaching repercussions. Ownership No Good • Transparency from service providers is fundamental, the details The views expressed herein are those of Term Weak Good about what information is processed and how it is interpreted the author alone and do not necessarily Technological scope No Good allows users to make better use of this kind of tools. represent Ericsson’s views.
32 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 33
Ericsson_TPL54_v3.indd 32 17/06/2021 09:37 Ericsson_TPL54_v3.indd 33 17/06/2021 09:37 Women in
IP SERVICES IN RUSSIA, UKRAINE, BELARUS, IP Leadership KAZAKHSTAN & OTHER CIS COUNTRIES Celebrating achievements and continuing PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT the empowerment of women IP LITIGATION PATENTS
TRADEMARKS AGREEMENTS
Russia Belarus Kazakhstan Ukraine Sponsored by 129090, Russia, Moscow, 220004, Republic of Belarus, Minsk, 050043, Kazakhstan, Almaty, 01135, Ukraine, Kiev, Grokholskiy per., d. 28, 2nd floor 23/1 Pobediteley Avenue 28 Ryskulbekova Str., Block 4, 25 Chornovola Str., Suite 168 Tel+Fax: + 7 (495) 775-16-37 Tel+Fax: +375 17 204-16-37 10th Floor, Suite 33, Tel+Fax: +38 044 501-16-37 e-mail: [email protected] e-mail: [email protected] Tel+Fax: +7 727 312-16-37 e-mail: [email protected] e-mail: [email protected]
zuykov.com We give special thanks to Anaqua for their dedication and support in continuing the empowerment of women in IP by facilitating this opportunity.
Zuykov.indd 1 29/04/2019 12:53 Women in IP cover_TPL54_v1.indd 35 17/06/2021 09:46 WOMEN IN IP LEADERSHIP This segment is dedicated to women working in the IP industry, providing a platform to share real accounts from rising women around the globe. In these interviews we will be discussing experiences, celebrating milestones and Kristyn Huffman: Paralegal, achievements, and putting forward ideas for advancing equality and diversity. The Dow Chemical Company By providing a platform to share personal experiences we aim to continue the empowerment of women in the world An interview: inspirations, experiences, and ideas for equality of IP. ristyn is currently a Paralegal in Intellectual at a young age as well, but when I was little he This segment is sponsored by Anaqua, who, like Property Law at The Dow Chemical worked for Phillips 66 (now Conoco-Phillips). He The Patent Lawyer, are passionate to continue KCompany. She primarily works on patent retired from Conoco-Phillips after 35+ years. My the empowerment of women. Anaquas’ sponsorship preparation and prosecution. Kristyn also works parents inspire me EVERY DAY. on numerous non-routine technology agreements Another big inspiration for my career was my enables us to remove the boundaries and offer such as consulting and license agreements grandma and grandpa. My grandma would take this opportunity to all women in the sector. We give special relating to her designated businesses. my dad and some of his brothers to go pick thanks to Anaqua for supporting this project and creating Kristyn started working in Intellectual Property cotton in fields when he was little. He told me Law for Dow as a college co-op in 2008. After he remembers her pulling him along the rows the opportunity for women to share their experiences, her co-op time expired, she was asked to return of cotton on her sack as she picked. My grandpa allowing us to learn from each other, to take inspiration, and started working as a contractor in March was such a hard worker. My grandpa would and for continuing the liberation of women in IP. 2009, during which time Kristyn was able to Kristyn Huffman take my dad to work when he was little too, but obtain her Associates of Science degree from working with my grandpa in construction is what Brazosport Community College in Office Admin- stood out the most to my dad. My dad says he Sponsored by istration and Management. A couple years later could never take breaks. He had to prove he was in 2011, Kristyn was offered a full-time job with a hard worker. I see myself in my grandparents a Dow as an office professional. She became part “I think the lot. All of my dad’s checks went to my grandparents of Dow’s education program and in December to help with bills and putting food on the table. 2016, obtained her Bachelor of Science in Legal biggest Studies degree from the University of Houston challenge How have you found the pathway to your – Clear Lake. Shortly after obtaining her degree current position? And can you offer advice Kristyn was promoted to a Paralegal. All the while that I have from your experience? It is our privilege to support this issue’s Women in IP becoming a wife and mother. faced is I worked really hard to get my current position “ as a Paralegal. I worked my way up from a college segment for The Patent Lawyer Magazine. We look What inspired your career? myself. co-op to a Paralegal. It took me nearly 10 years I come from a hard working family. My parents to get there, but I was determined. When I started forward to reading and learning more from other women encouraged me to work at a young age. If I didn’t I can get my legal studies degree, I worked full-time and get involved in extracurricular activities in school, pretty went to school at night. I only took two classes in the industry and value their perspectives. At Anaqua, I had to get a job. I remember wanting to go out a semester so you can imagine how long it took anxious we expect and encourage different viewpoints and with my friends and my dad told me no. He told me to obtain my degree. I had a great support me I couldn’t go out on the river until I had a job. when it system, especially when I became pregnant experiences to enable our team to see the world more I came home with a job that day. My parents still with my daughter. I ended up registering for fall tell that story. It’s an ongoing joke that they comes classes. I registered for the most difficult classes clearly and embrace the opportunities around us. think I threw out all my job applications out the and found out I was pregnant (after I had already window of my car. Ever since then, at 17, I have to being paid for school). There was no turning back. The Diversity and inclusion foster an enriched, innovative, held a steady job. my own next spring, I still registered for classes knowing My parents have always told me to work hard I could give birth at any time. I was due at the collaborative, and supportive work environment – a key for what you want in life. I had the resources cheerleader. end of April and I knew I could try to get one and support so I had nothing holding me back. I class in. I was almost done with the semester component to a successful future. remember my family saying that a job is a job. when my daughter decided to come a couple There wasn’t a job that was too big or too small. weeks early. I had to tell my professor that I had I was told to go to work, get the job done, and my baby and she left a quiz open so I could take come home. My parents both worked at a ” it the next day! Nancy Hegarty, Vice President of Marketing, Anaqua young age. I remember my mom telling me she Once my daughter was born, I knew I had to ” worked at 16 in retail. My mom also took some keep going. I had to prove to myself that it was If you would like the opportunity to share your experiences with business courses in college because she knew possible to continue. My husband took care of she wanted to work in an office. My mom is still our daughter while I went to school at night. Women in IP Leadership, would like to nominate an individual to be involved, working at Brazosport Community College today, There were many tears (from all of us, ha!), but or would like to learn more about sponsorship, please contact our Editor. while my dad is retired. My dad started working I felt accomplished. Once my leaders promoted
36 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 37
Women in IP_reverse cover_TPL54v1.indd 36 17/06/2021 09:48 Women in IP_Kristyn Dow Chemicals_v2.indd 37 23/06/2021 09:28 WOMEN IN IP LEADERSHIP 17/06/2021 10:06 39 THE PATENT LAWYER Mentoring is so important not only for the for the Mentoring is so important not only mentee, but also for the mentor – providing differing perspectives and approaches. see in the to like you would What changes and diversity equality regarding industry IP years? five in the next I would like to see a shift towards the Scandinavian/ real-life examples of what is possible. So definitely greater representation of women in senior leadership roles. I also strongly believe that unconscious bias in the workplace remains a barrier to career advancement/progression. IP firms that engage in mitigation through recognition, transparency and accountability can help to lessen and ultimately remove this workplace bias. colleagues feel they can thrive and have the ability colleagues feel they can thrive and have the background. and to do so, regardless of gender And aspirations? career future your What are them? achieve to work you will how time to I would like to dedicate more of my acting as a mentor, inspiring younger generations to from diverse backgrounds and helping them to do catapult within the IP industry. I would like fullest what I can to help them rise to their potential, both within themselves and professionally. Nordic model of joint parental leave. I have an as out plays how this firsthand witnessed effective equalizer, ensuring men and women have access to the same opportunity in terms of time-off. It also forces the same impact on career regardless of sex. If this model were to be replicated on a larger scale in the legal and IP industry, it would definitely help to promote gender equality. of think the empowerment you do How in can be continued and expanded women sector? the IP I think seeing women in senior leadership roles provides empowerment through inspiration and practices and carries out a comprehensive comprehensive a out carries and practices employees’ experience of examination of the past the Over workplace. the in pride and trust achieved exceptional three years, we have of results in the trust index. I am really proud where the fact we have created a workplace ” I would like like I would to dedicate more of my time to acting as a mentor. “ inter- i-Leen Lim leads AWA’s Asia practice as i-Leen Lim leads AWA’s managing CEO and Principal Counsel, Kong and its its headquarters in Hong An interview: inspirations, experiences, and ideas for gender equality. inspirations, experiences, An interview: CTC Legal Media nationally, with a special focus on China market nationally, with a special focus on China IP strategy. management and entry, brand wholly owned Chinese IP consultancy in Beijing.wholly owned Chinese in She is admitted as an advocate and solicitor Hong Singapore and is qualified to practice in than Kong and the United Kingdom. For more portfolio IP on advised clients she has years, 23 management in China, in Hong Kong and Ai-Leen Lim: CEO and CEO Lim: Ai-Leen Asia AWA Counsel, Principal A for Ai-Leen has been consistently recognized and awards from her work through rankings leading industry publications including World Chambers and Partners, The Legal 500, Most Trademark Review and Managing IP. Leader recently she was listed as a WTR Global 2020 by World Trademark Review. greatest your be to consider you would What so far? career your in achievement - an We partner with Great Place to Work® organisation that completes a detailed evaluation of AWA Asia’s management, organisational Women in IP_AWA Asia__1pp r.indd 39
17/06/2021 10:00 by Minda by Minda THE PATENT LAWYER Sponsored by Sponsored The Memo: What Women of Color Need to Need Color of Women What Memo: The challenging to me. Just when I feel like I have all to me. Just when I challenging them, complete to knowledge the needed of have always new pops up. My parents something woman in our depart- questions. There is another agreements. license in expert an is that ment I look up to her in I am in awe of her knowledge. so many ways. you like to see in the IP What changes would equality and diversity in industry regarding the next five years? way to see change is to I feel like the best is needed. Working acknowledge that change for the company I work for has really opened the my eyes. We work with people all around other, world. Not one person is the same as the have but our work brings us together. We reallyEmployee Resource Groups (ERG) that have three helped me grow as a person. I have joined and so far which include my heritage (Hispanic Affinity Latin Network), an ally (Global African I Network), and Women’s Inclusion Network. would like to continue to see the development of across the world. The more we are accepting in. others, the better world we will be living How do you think the empowerment of in women can be continued and expanded the IP sector? being One of the main things I have learned by It is in an ERG is that we cannot do things alone. important to find allies and mentors. Networking group is important. I read a book in our ERG called Know to Secure a Seat at the Table Hart. The chapter that stands out the most is Hart. The chapter that stands out the most is Chapter two: Building Your Squad. We spend so much time at work. We talk to so many people your to networking Use world. the around advantage. told me that everyone has room to grow. grow. to room has everyone that me told continue to ask the hard To achieve this, I will
If I had any advice from my experience, it experience, it advice from my If I had any absolutely right. 13 years in the same department same the in years 13 right. absolutely and I learn something new every day. In the future, I would love to become an expert in license agreements. I work in a business where I do a lot of license agreements and they are people outside of my department. I was watching was I department. my of outside people a virtual meeting one day and they mentioned my name! I had been helping out with trying to get some COVID-19 relief agreements out in a timely manner and got the praise. Sometimes it can be a little hard to get the recognition outside of my department. When I think of how my job works, I feel like I am in the background. No one really sees what I do. Most people see the finished product and not how that finished product got there. I felt like I had accomplished a lot that day. What are your future career aspirations? And how will you work to achieve them? This is a hard question. One of my bosses once told me that there was a learning curve for Intellectual Property. That learning curve was was she thought I time, the At years. five-seven being hard on me. I know now that she was me, I knew all the time away from home was from home was all the time away me, I knew worth it. can either keep to not give up. You would be or just get the job coming up with excuses, friends has two children done. One of my best inspiration. I told her it’s so and told me I was her feel so accomplished, and worth it to finish. You is proud of me. I know my whole family you faced? And how What challenges have them? have you overcome that I have faced is I think the biggest challenge anxious when it comes myself. I can get pretty The way I have to being my own cheerleader. is by been able to overcome this challenge me talking to my leader. My leader encourages my to speak up and become more visible within I care department. I am very much an introvert. in about what others think and I hate being of work trouble. I am a perfectionist. The quality in day is important to me. When I get flustered relax. to day work, I have to remind myself to I feel My leader is also a woman so sometimes much, like I can tell her anything (maybe too gain ha!). I feel like she has helped me well. confidence in myself and I am doing so my in paralegals newest the of one being For senior group, I often get questions from paralegals which makes me feel good. What would you consider to be your greatest achievement in your career so far? in my I think one of my biggest achievements from career has to be getting acknowledgment ” CTC Legal Media
38 The more The more are we of accepting the others, better world will be we living in. WOMEN IN IP LEADERSHIP IN IP WOMEN “ Women in IP_Kristyn Dow Chemicals_v2.indd 38 The
GLOBAL REACH, LOCAL KNOWLEDGE I would not www.patentlawyermagazine.com LAW FIRM go back to RANKINGS 2021 South America
any other A comprehensive list of the 10 most well-respected law firms patent from the South America region. management software. D WIN AR NIN W G A NINA HILL CORPORATE IP ADMINISTRATOR LAW FIRM EMERSON ELECTRIC CO. 2021
CTC Legal Media THE PATENT LAWYER 41
Anaqua FP.indd 1 08/04/2021 15:25 TPL54_Rankings cover.indd 41 17/06/2021 11:17 SOUTH AMERICA PATENT RANKINGS 2021 17/06/2021 12:58 43 THE PATENT LAWYER ÒƥéÏÛïæéÁìÛôãæ +55 11 2155 - 9500 ÌéèîßðãÞßéÔìïáïÛó +598 2626 - 2304 ÑãéÞßÉÛèßãìéÁìÛôãæ +55 21 2237 - 8700 ÁìÛíŪæãÛÁìÛôãæ +55 61 3433 - 6694 SOLUTIONS FOR A WORLD WHERE WHERE A WORLD FOR SOLUTIONS IS WORTHWHILE INNOVATION SIEMSEN WE ARE DANNEMANN With 120 years’ experience, Dannemann Siemsen ãíìßàßìßèÝßêéãèîãèÈÏæÛñàéìéààßìãèáÛĔìíîìÛîßíßìðãÝß ãèêÛîßèîĔæãèáíîìÛÞßçÛìåìßáãíîìÛîãéèíÞßíãáè êìéîßÝîãéèÝéêóìãáâîîìÛÞßíßÝìßîíÛèÞãèîâßßèîãìß êìéÝßííéàíéàîñÛìßìßáãíîìÛîãéèÓâßĔìç íßòêßìãßèÝß ÛææéñíãîîéÞßðßæéêîâßçéíîÝéçêìßâßèíãðßíîìÛîßáãßí ãèîâßêìéîßÝîãéèéàêÛîßèîíàìéçîâßĔìíîÛêêæãÝÛîãéèîé éêêéíãîãéèÛàîßìáìÛèîãèáßèíïìãèáîâßÜßíîæßáÛæÜÛÝåãèá íïêêéìîßÞÜóÛçïæîãÞãíÝãêæãèÛìóîßÛçéàßæßÝîìãÝÛæ ßæßÝîìéèãÝçßÝâÛèãÝÛæÝâßçãÝÛæÛèÞîßæßÝéççïèãÝÛîãéèí ßèáãèßßìíêâÛìçÛÝãíîíÛèÞÜãéæéáãíîíÛçéèáéîâßìí matters disputes Domain Name Domain Name Enforcing IP Rights IP Enforcing Digital Law related related Digital Law LITIGATION Anti-piracy programs programs Anti-piracy Digital Law Privacy and Privacy SMART Data Protection STRATEGY Managing IP Rights IP Managing SOLUTIONS Brazil Bolivia WWW.MONTAURY.COM.BR SPACE TO FILL BRAZIL: RIO DE JANEIRO | SÃO PAULO | SÃO BRAZIL: RIO DE JANEIRO Patents Trademarks Industrial Designs Industrial PROSECUTION CTC Legal Media Bhering Advogados Daniel Law Dannemann Siemsen Advogados Di Blasi Parente & Associados Gruenbaum, Possinhas & Teixeira Guerra IP Gusmão & Labrunie Kasznar Leonardos de Mello Montaury Pimenta Machado & Vieira Vaz e Dias Advogados & Associados Bolet & Terrero & Nishizawa (BAQSN) Quintanilla Soria Bufete Aguirre & Asociados Cervieri Monsuárez C R & F Rojas Abogados Ferrere Abogados Guevara & Gutiérrez Landivar & Landivar Moreno Baldivieso Orpan Sociedad Civil W A Mendez & Asociados TPL54 rankings - South America v1.indd 43 18/06/2021 16:44 CTC Legal Media Argentina Throughout the next few pages, you will view a comprehensiveThroughout the next law firmslist of the 10 most well-respected from country and company order.South America, in alphabetical from a multifaceted methodology,Our focused list is derived industry research and feedback fromwhich uses months of esteemed connections around theour readers, clients, and world. All firms but are are ranked top 10 in their jurisdiction to avoid bias. displayed alphabetically Beccar Varela Berton Moreno IP ClarkeModet Estudio Chaloupka Hausheer Belgrano & Fernandez Marval O’Farrell & Mairal Noetinger & Armando O’Conor & Power Ojam Bullrich Flanzbaum Palacio & Asociados
THE PATENT LAWYER
42 SOUTH AMERICA PATENT RANKINGS 2021 RANKINGS PATENT AMERICA SOUTH TPL54 rankings - South America v1.indd 42 SOUTH AMERICA PATENT RANKINGS 2021 17/06/2021 13:01 45 THE PATENT LAWYER Paraguay Guyana SPACE TO FILL Abente Stewart Abogados Bareiro Modica Abogados Berkemeyer (BKM) Cervieri Monsuárez & Asociados Ferrer Abodados Mersan Abogados Olmedo Abogados Peroni Sosa Tellechea Burt & Narvaja Vouga Abogados Zacarias & Fernandez Cameron & Shepherd Cameron Dentons Attorneys at Law Fraser, Housty & Yearwood, Hughes, Fields & Stoby Jamela A. Ali, Attorney-at-Law Kyte Small Barker London House Chambers McDoom & Company Satram & Satram Templar Chambers Colombia Ecuador SPACE TO FILL CTC Legal Media Baker McKenzie Brigard & Castro Castellanos & Co Cavelier Abogados Dentons Cardenas & Cardenas Goméz-Pinzón Abogados Lloreda Camacho & Co OlarteMoure & Asociados Posse Herrera Ruiz Vera Abogados Asociados Bermeo & Bermeo Bermeo & & Bustamante Bustamante CorralRosales Fabara Abogados Falconi Puig Abogados Julio C Guerrero B & Ponce Pérez Bustamante Romero Corral Abogados Quevedo & Ponce Tobar ZVS TPL54 rankings - South America v1.indd 45 17/06/2021 12:59
CTC Legal Media Chile In September/ SPACE TO FILL To advertise contactTo advertise October 2021 issue of October 2021 [email protected] The Patent Lawyer Magazine The Patent Rankings: Asia Pacific Asia Rankings: Albagli Zaliasnik SpA Alessandri Beuchat, Barros & Pfenniger Carey Covarrubias & Cia Claro y Cia Johansson & Langlois Sargent & Krahn Silva Villaseca Abogados
THE PATENT LAWYER
SOUTH AMERICA PATENT RANKINGS 2021 RANKINGS PATENT AMERICA SOUTH 44 TPL54 rankings - South America v1.indd 44 SOUTH AMERICA PATENT RANKINGS 2021
Uruguay
Bacot & Bacot BERGSTEIN Cervieri Monsuárez & Asociados Patent and trademark Cikato Abogados Fernández Secco & Asociados prosecution and litigation. Ferrere Abogados Fischer Abogados 46 years of professional Fox & Lapenne Pittaluga Abogados practice in all areas of Vanrell IP IP practice representing clients from several Peru countries. BARLAW - Barrera & Asociados Barreda Moller Durand AbogadosSPACE TO FILL Address: Manuel Almenara 265, Lima 18, Peru Espinosa Bellido Abogados Telephone: + 51 1 447 2454 Estudio Colmenares & Asociados Email: [email protected] Estudio Muñiz Website: www.pierola-asociados.com Osterling Abogados Linkedin: https://pe.linkedin.com/in/josedepierola Pierola & Asociados Contact: Jose de Pierola Rodrigo Elías & Medrano Valencia Law Office
46 THE PATENT LAWYER CTC Legal Media
TPL54 rankings - South America v1.indd 46 17/06/2021 13:02
COMPULSORY LICENSING StanislavSukhin / Shutterstock.com / StanislavSukhin 17/06/2021 11:36 49 THE PATENT LAWYER Varun Sharma, Associate Partner Associate Sharma, Varun Varun holds a Bachelor of Technology (B.Tech.) degree in Electronics & Communications and a degree in Law from Delhi University. His experience includes appearing before various Courts of Law in India, Intellectual Property Appellate Board, and various other tribunals and adjudicatory bodies. Particular to the field of Intellectual Property Rights, his experience includes drafting, filing and prosecuting patent, trademarks, design, and copyright applications for various multi-national companies. He was also selected by the Government of India for training of Patent Experts (IPPE 2011) conducted by Japan Institute of Invention and Innovation and Japanese Patent Office. He underwent training programs for 21 days in Tokyo, Japan, covering all aspects of Patent law such as drafting, prosecution, enforcement and commercialization of Patents. Apart from his afore-mentioned domains, Varun has also worked on the prosecution of various patent applications before the United States Patents and Trademarks Office and European Patent Office. ” The Supreme Court raised concern on shortage of and vaccines essential drugs, especially those that are at the core of the COVID treatment protocol but, protected under patents in India. “
licence under licence the under patent a compulsory licence in licence in a compulsory Résumés Partner Managing Singh, Manisha Manisha is a founder and the Managing Partner of the firm. She overviews and supervises all practice groups at the firm. Manisha is known and respected for her deep expertise on prosecution and enforcement of all forms of IP rights and for strategizing and managing global patents, trademarks, and designs portfolios of large global and domestic companies. Her keen interest in using and deploying the latest technology tools and processes has immensely helped the firm to develop efficient IP service delivery models and to provide best-in-class services. She is also known for her sharp litigation and negotiation skills. She has been involved and successfully resolved various trademarks, copyright, and design infringement and passing off cases in short timeframes and in the most cost efficient manner, applying out-of-box strategies and thinking. She is a member of several international IP associations, such as AIPLA, AIPPI, APAA, ECTA, FICPI, INTA, LESI, MARQUES, and actively participates in the committee works of these organizations. The legislative scheme of the Patents Act, Act, Patents the of scheme legislative The The Controller shall, on application made at any at made application on shall, Controller The In settling the terms and conditions of a licence a of conditions and terms the settling In CTC Legal Media of making, using, offering for sale, selling, or or selling, sale, for offering using, making, of the patented those purposes, for importing the promotion to contribute Patents invention. welfare social and growth economic innovation, of private both in promoting instrumental and are and public interest. contains mechanisms that can circumvent 1970, certain rights in exclusive the patentee’s the the act allows of Section 92 circumstances. grant to government Court is which the Supreme public interest, “If 92 reads, suggesting. Section the central government is satisfied, in respect of any patent emergency, national of circumstances in force, in case in or urgency, extreme of circumstances in or necessary is it that use, non-commercial public of that compulsory licences should be granted at any time after the sealing thereof to work the invention, it may make a declaration to effect, by that notification in the official gazette, and thereupon the following provisions shall have say: that is to effect, interested, person any by notification the after time manufactured articles the that secure to endeavour grant to the grant applicant a as he thinks fit; and conditions on such terms granted under this section, the Controller shall under the patent shall be available to the public patentees the with consistent prices, lowest the at deriving a reasonable advantage from their rights.” patent LexOrbis_TPL54_v3.indd 49 17/06/2021 11:35 CTC Legal Media It is important to first understand what the what the understand first It is important to right to an exclusive gives a patent of Grant protection in furtherance of public health objectives. of in furtherance protection Court also pointed TRIPS, the Supreme Apart from the Indian under provided out the flexibilities on the provisions especially 1970 Act, Patents national of license in face a compulsory of grant The Court urgency. and extreme emergency Government Central the that out pointed also use any certain companies to can authorize the government” the “purpose of for patents law. the Patent under to relating laws in Indian patent are provisions any licensing and on the use of compulsory also We government. of the purpose for patent compulsory of grant of trend the see to need then it could be debated licensing in India. Only licensing is a compulsory of grant whether ensure to the Government for tool useful protection patent or public interest of protection public interest challenge to pose any does not distribution of equitable and expedient or and drugs. vaccines essential who do parties, third prevent to the patentee the act from the patentee, consent of have not the Central Government, the Court indicated indicated Court the Government, Central the might Government the that avenues few public interest. in mind the keeping consider, concerned mainly was Court The Supreme and production that challenges any about drugs COVID patented critical distribution of To in India. laws patent due to might face Court such challenges, the Supreme overcome in detailed flexibilities of utilization suggested Intellectual of Aspects Related Trade the (TRIPS) that carve Agreement Rights Property patent and limitations out of out exceptions Varun Sharma Manisha Singh
cognizance Re: Distribution of of Distribution Re:
THE PATENT LAWYER he advent of the second wave of of wave the second of he advent pandemic in India has been the COVID the positivity which increased devastating,
likelihood of government enforcement.likelihood of government of COVID-19 in India; how such licensing can be implemented; and theof COVID-19 in India; how requirement for compulsory licensing given the devastating effectsrequirement for compulsory Manisha Singh & Varun Sharma, of LexOrbis, review the potentialManisha Singh & Varun Sharma, Despite earnest efforts, the situation did not not did situation the efforts, earnest Despite Although the Supreme Court recognized that Court recognized Although the Supreme The entire machinery has been facing the the facing been has machinery entire The 48 this, the Supreme Court took suo motu Court took this, the Supreme Writ Suo Motu the situation and instituted of 20201-In of 3 no. Petition (Civil) Essential Supplies and Services during Pandemic. during Services and Supplies Essential on shortage concern Court raised The Supreme drugs, especially and essential vaccines of treatment COVID the of core the at are that those in India. patents under but, protected protocol in an equitable and expedient manner in the the in manner expedient and equitable an in the uncontrolled by this crisis created of face has been The Government patients. rise of new introducing tackle this situation by trying to including capacities the enhancing policies, more procuring centres, vaccination up setting to states entire locking down and even vaccines virus. the COVID-19 of curb the spread patients. Considering the COVID for well augur issue of disseminating COVID vaccines and drugs vaccines disseminating COVID issue of are and Favipiravir Tociluzumab, Remdesivir, been drugs that have those patented some of protocol. treatment included in the COVID be to action the decision on the course of with vests crisis present the tackle to adopted
translated into large numbers of patients requiring numbers of large into translated for and treatment hospitalisation immediate on mounted pressure Consequently, COVID. such facilities medical infrastructure, healthcare and availability oxygen, of supply as beds in ICU, drugs. COVID critical of T potentiality in India? potentiality during COVID-19 – a COVID-19 during Compulsory Licensing Compulsory COMPULSORY LICENSING COMPULSORY rate above 30% in April-May 2021. With a With a 2021. April-May 30% in above rate rate 3 billion, this positivity 1. over population of LexOrbis_TPL54_v3.indd 48 COMPULSORY LICENSING COMPULSORY LICENSING
drug Nexavar in 2012. In another recent decision, that are in shortage and there is no possibility Lee Pharma, a Hyderabad based pharmaceutical that the patentee, with the license arrangements company was refused a compulsory license for already in place, can fulfil the increased AstraZeneca’s drug Saxagliptin. There has been “Invoking demand. It is also important to determine the one more unsuccessful attempt for compulsory real reasons for shortage. Because if the licensing made by BDR Pharma for BMS’s Dasatinib. the powers shortage is due to lack of raw materials, import We see from above instances that although under restrictions or due to other reasons, adding provisions for granting compulsory license have more manufacturers in India would multiply the existed in patent law for several decades, they Section 92 problem rather than providing a solution. It is have never been invoked by the Central is a policy important to obtain the real reason of shortage Government. Even on the request of generic and take steps accordingly. Undoubtedly, public manufacturers, compulsory license has been decision of interest is paramount and between patent granted just once. In most of the cases, the protection and public need, the scales weigh in generic manufacturers enter licensing the Central favour of public need in these hours of crisis. arrangements with the patentees to manufacture Government. the patented article in India and meet the requirements of the public. Having said that, in view of the unprecedented situation faced by the country due to COVID, the Supreme Court’s Contact suggestion on invoking emergency provisions ” LexOrbis on compulsory licensing is a necessary welfare 709/ 710, Tolstoy House, concern in case there is a real shortage of 15-17, Tolstoy Marg, New Delhi – 110 001, critical COVID drugs and vaccines. India The Central Government can invoke the Tel: +91 11 2371 6565 emergency powers to circumvent the rights Fax: +91 11 2371 6556 granted to a patentee. However, it is necessary [email protected] that the Government should invoke these www.lexorbis.com powers only on those critical drugs and vaccines
Section 92 empowers the Central Government a) That the reasonable requirements of the to march over the patent rights of a patentee public with respect to the patented and offer licenses to anyone interested in invention have not been satisfied; manufacturing and selling the products or use b) That the patented invention is not the process protected under the patent. As the available to the public at a reasonably Supreme Court rightly pointed out, invoking the Only then affordable price; powers under Section 92 is a policy decision “ c) That the patented invention is not of the Central Government, for which the it could be worked in the territory of India. Central Government is accountable before the Parliament. This power is like several other debated Seeking a grant of a compulsory license is sovereign powers vested upon the Central whether considered as a last resort, made only when Government like waging war, imposing a state prior attempts to obtain a voluntary license from of emergency etc., which are to be used with grant of the patentee have failed. The Controller, if extreme deterrence. This is the reason that the satisfied on any of the above grounds, may Central Government has never invoked this compulsory grant a license upon such terms as he may power to grant compulsory licenses under licensing deem fit. The terms and conditions on which a these provisions till date. compulsory license can be granted are provided Invoking powers under Section 92 is one way is a useful in Section 90. The licensee is expected to work to grant compulsory licenses under the Patent tool for the the patented invention to the fullest extent and law in India. Apart from the Central Government, apart from a reasonable profit, the licensee any person interested, which means any person Government should ensure availability of the patented article or company engaged in the same field as that to the public at reasonably affordable prices. of the patent can apply for a compulsory license to ensure The license granted is non-exclusive, the right from the Controller of Patents. Section 84 protection of the licensee is non-assignable and the provides that, at any time after the expiration of license is for the balance term of the patent three years from the date of the grant of a of public unless a shorter term is consistent with public patent, any person interested may make an interest. interest. application to the Controller for grant of The first and only compulsory license granted compulsory license on a patent on any of the in India under Section 84 has been to a generic following grounds: drug manufacturer NATCO for the patented
50 THE PATENT LAWYER ” CTC Legal Media CTC Legal Media THE PATENT LAWYER 51
LexOrbis_TPL54_v3.indd 50 22/06/2021 11:52 LexOrbis_TPL54_v3.indd 51 17/06/2021 11:37 INFRINGEMENT: CLINICAL TRIALS
17/06/2021 13:18 53 THE PATENT LAWYER tent right infringement infringement right tent or research purposes.” The aim of The aim of purposes.” research or working of the patented invention for for invention the patented of working the article is to realize harmonization between a harmonization between realize the article is to to in order right and public interest, patent the purpose of accomplish the fundamental to thereby inventions, (“encouraging Act Patent industry” of the development to contribute a scope of However, Act). the Patent (Article 1 of is not purposes” research or “experimental a regard, In this Act. in the Patent stipulated is that a scope of theory accepted commonly be should purposes” research or “experimental of aimed at “advancement acts to limited technology.” generic drugs In case of “simplified generic drugs, a In the case of data showing includes that merely application” biological equivalence, etc. with reference to the to with reference etc. equivalence, biological that “a patent right shall not be effective against against effective be not shall right patent “a that the data that have been submitted by an originator an originator by been submitted data that have 1999 in Court ruled Supreme The sufficient. is fall approval generic marketing for that tests patented the of “working of category the under purposes” research or experimental for invention and Act, the Patent of Article 69, par.1 in set forth approval generic drug for tests such therefore a pa constitute do not 16, 1999). April Judged on 153; (1998 (Ju) No. Court judgment did not this Supreme However, “experimental under what acts falls clear make the of par.1 69, Article in purposes” research or mainly made a decision but rather Act, Patent the patent of duration of viewpoint the from held that Court the Supreme right. Specifically, chemical produce to it is prohibited “if within a patent fall drugs that substances or to unable being party third a in result will it right, experimental experimental ” According to this IPHC judgment, a third party can freely conduct clinical trials on original any drugs within the scope of a patent right, duringeven the term of the patent right. “
34.5) and and 34.5) γ The defendant, a Japanese subsidiary of of subsidiary Japanese a The defendant, CTC Legal Media Tokyo DC and IPHC Decisions between no dispute was there In this lawsuit, “T-VEC whether the parties on the issue of since right,” the patent the scope of belongs to judged DC Tokyo The it. admitted defendant the as innovator T-VEC trials for that the clinical do not the defendant by drug conducted clinical the that stating right, patent the infringe right patent a of exemption the under trials fall research or “experimental of in the category the 1 of Article 69, par. in stipulated purposes” July judged on 1409, 31 (Wa) (Heisei Act Patent trial, appeal The IPHC, in a subsequent 22, 2020). 2 (Ne) DC decision (Reiwa Tokyo the supported 9, 2021). 10051; judged on February purposes research or Experimental stipulates Act the Patent 1 of Article 69, par. Case T-VEC Amgen conducted and Europe, In the U.S. Administration) and Drug (Food FDA Inc., received (European 2015, and EMA in October approval 2015, in December approval Agency) Medicines T-VEC. for in a bridging study Amgen Inc., conducted The data. clinical based on these foreign Japan District Tokyo the before filed a lawsuit patentee claiming that Court against the defendant virus a using Japan in conducted trials clinical the violated the patent within the scope of to the defendant and requested right, patent virus etc. the suspend use of corresponding U.S. and European patents. Amgen patents. and European U.S. corresponding (herpes simplex virus type-1 (HSV-1) attenuated attenuated (HSV-1) virus type-1 (herpes simplex ICP34. 5 (� deletion of functional by the license for trials under clinical ICP47) Yuasa & Hara_TPL54_v2.indd 53 , 30/06/2021 09:28 Δ CTC Legal Media 34.5 gene and ICP6 gene. 34.5 gene and ICP6 gene. γ an application for marketing approval for for approval marketing for an application Δ 28, 2020. G47 glioma on December type of malignant brain tumor. The group group The tumor. brain malignant of type Claim 1 of the patent reads “A herpes simplex simplex herpes “A reads the patent Claim 1 of U.S. two filed by was The application virus G47 has developed group The patentee submitted submitted malignant system relating to drug marketing approval in in approval marketing drug to relating system Japan. approved in Japan. This can be seen as a successful Japan. in approved academia-led drug discovery. of example Virotherapy Patent virotherapy method of “a to relates 4212897 No. JP cells which cancer in Virotherapy, cancers.” for on only viruses that multiply with infected are has cells, cancer destroy to cells, cancer Several attention. been attracting recently Japan. in developed being drugs are virotherapy within the BstEII - virus comprising a deletion said of the BamHI x fragment of fragment EcoNI the claimed herpes of An example virus.” having HSV an is (HSVs) viruses simplex gene. ICP47 mutations of inactivated After University. and Georgetown corporations university Japanese a the inventors, of filing, one a obtain the right to to succeeded professor, became the applicant, and thereafter patent, the patent of date The registration the patentee. is date 2008, and the expiration 7, is November 2022. 27, March as well gene deletion as which includes ICP47 modifications of From around 2015, the group started a phase II started 2015, the group around From glioblastoma, the indication of for Japan in study a will be the first virotherapy product to be be to product virotherapy be the first will Osamu Yamamoto n February 9, 2021, the Intellectual 9, 2021, the Intellectual n February decided (IPHC) Court High Property a third trials by that conducting clinical
THE PATENT LAWYER
Résumé Partner Yamamoto, Osamu Mr. Yamamoto is a patent attorney and a partner of Yuasa & Hara. He has extensive experience in pharmaceutical and biotechnology research and development at a chemical company for ten years before specializing in intellectual property. He has represented a variety of companies in the fields of pharmaceuticals, biotechnology, diagnostics, and food and beverages. He is experienced in all aspect of patent issues, including filing patent applications, dealing with Office Actions, providing expert opinions, defending or attacking patent rights in invalidation trials and oppositions, and patent infringement litigations. system relating to drug marketing approval in Japan. system relating to drug marketing High Court decision, as well as the necessity for reforming the patentHigh Court decision, as well Osamu Yamamoto explains the impact of the recent Intellectual PropertyOsamu Yamamoto explains I explain below impacts of the IPHC decision, impacts of below I explain party to obtain marketing approval as an original as an original approval marketing obtain to party 2 right (Reiwa a patent infringe drug does not a this IPHC judgment, to According 10051). (Ne) trials on conduct clinical can freely party third a patent within the scope of drugs original any right. In the patent of during the term right, even marketing can obtain party some cases, a third the patentee. to prior approval the patent reforming for as the necessity well as 52
O on an original drug? on an original conducting clinical trials clinical conducting infringe a patent right by right by infringe a patent Does a third party party third a Does INFRINGEMENT: CLINICAL TRIALS CLINICAL INFRINGEMENT: Yuasa & Hara_TPL54_v2.indd 52 INFRINGEMENT: CLINICAL TRIALS INFRINGEMENT: CLINICAL TRIALS
administration, dosage, indication and effect” on even higher than those of biopharmaceuticals Inventor / patentee which the registration of the patent term such as antibody pharmaceuticals. Therefore, it extension was based, as well as substantially is inevitable that the timing of commercialization Filing patent Clinical Marketing Expired / the same “products.” This means that the scope A third party of such biopharmaceuticals with marketing Invention application Patented tests approval Extended “ of the extended patent right is limited to the approval will be close to the expiration of the specific product and substantially the same potentially patent term. This means that even if innovative Scope of products. From this aspect, if the patent term is could obtain new drugs, especially biopharmaceuticals, are extended extended, it is highly unlikely that the extended developed, protection under a patent right is Scope of patent patent right will cover the implementation of marketing not sufficient. patent T-VEC in which gene modifications and approval Those who have been developing innovative indications are different from those of virus new drugs make large up-front investments while G47Δ. This is quite different from the case of a prior to a bearing extremely high risks. It is important to generic drug in the 1999 Supreme Court secure opportunities for these drug developers Clinical Marketing Produce patentee. Third party decision, in which if the patent term is extended, to recoup their investment. In order to properly tests approval and Sell it is not possible to manufacture and sell a ensure incentives to develop innovative drugs, generic drug during the extended term. the patent system relating to pharmaceuticals use the invention even after expiration of a research purposes set forth in Article 69, par.1 of should be drastically overhauled. patent right for a certain time period. This would the Patent Act” is questionable, in particular as Necessity of reform be contrary to the fundamental premise of the to why the issue “experimental or research As mentioned above, the Tokyo DC and the ” patent system, which enables any person to The purposes or not” was judged mainly from the IPHC judgments themselves might be Contact freely use a patented invention after expiration “ viewpoint of duration of the patent right. reasonable in light of the 1999 Supreme Court Yuasa & Hara of a patent right.” patentee decision. If so, my opinion is that the patent Section 206, Shin-Otemachi Building filed a Enormous disadvantage to patentees system in Japan relating to pharmaceuticals 2-1, Otemachi 2-chome, Chiyoda-ku Case of original drugs Compared with the case of a generic drug, namely needs to be reformed. Tokyo 100-0004, Japan The plaintiff argued that “the clinical trials of this lawsuit the 1999 Supreme Court case, disadvantages to In this case, G47Δ is the first virotherapy Tel: +81 3-3270-6641 case are for an innovator bio-pharmaceutical, before the patentees resulting from the decisions are enormous. product to be put into markets in Japan. For [email protected] and are different from those for a generic drug In spite of duration of a patent right, any third such unprecedented innovative biopharmaceuticals, www.yuasa-hara.co.jp in the case of 1999 Supreme Court judgment.” Tokyo party can conduct clinical trials. This means that regulatory hurdles for marketing approval are However, the Tokyo DC and the IPHC rejected there is a possibility that a third party potentially the plaintiff’s arguments stating that contents of District could obtain marketing approval prior to a experiments for market approval should not be Court patentee. Particularly, in case of innovative bio- affected with regard to judgment of “experimental pharmaceuticals having efficacy for many or research purposes,” and judged that the against the indications, it is unrealistic for patentee to be clinical trials to obtain market approval for an defendant able obtain marketing approval for all possible innovator drug are within the range of the 1999 indications during the term of a patent right. Supreme Court judgment. In other words, the claiming Therefore, in such a case, there is a real probability Tokyo DC and the IPHC followed the 1999 that a third party will conduct clinical trials for Supreme Court judgment stating that the that clinical different indication(s) from a patentee’s interests, clinical trials necessary for obtaining marketing trials and obtain marketing approval in advance of a approval of an original drug also fall under the patentee. category of “experimental or research purposes” conducted In addition, in a case of orphan drugs and in a under Article 69, par.1 of the Patent Act. in Japan case where a third party precedes a patentee in clinical trials, it may become extremely difficult Problems using a for a patentee to secure sufficient subjects for Experimental or research purposes? establishing a clinical trial. It appears incomprehensible that clinical trials virus within necessary for obtaining marketing approval of the scope of Patent term extension original drugs fall under the category of In Japan, a patent term extension system that “experimental or research purposes” under the patent allows extension of a patent term for up to five Article 69, par.1 of the Patent Act. However, given violated the years was introduced in 1987. the precedent of the 1999 Supreme Court The plaintiff argued that even if a patent term judgement concerning a generic drug, it is patent right. is extended, the extended patent right would difficult to find a reason that clinical trials for likely not cover T-VEC, and that would allow original drugs do not fall under the category of the defendant to manufacture and sell T-VEC “experimental or research purposes.” In that immediately after expiration of the original term sense, the decisions of the Tokyo DC and the of the patent. This argument is based on the IPHC are reasonable. Rather, the 1999 Supreme ” IPHC Ground Panel judgement issued on Court judgment “tests for application of a January 20, 2017 (Heisei 28 (NE) 10046)) that the generic drug fall under the category of working extended patent right covers only the “product” of the patented invention for experimental or (medicine) specified by the “ingredient, quantity,
54 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 55
Yuasa & Hara_TPL54_v2.indd 54 17/06/2021 13:18 Yuasa & Hara_TPL54_v2.indd 55 17/06/2021 13:18 INNOVATION DATA INNOVATION DATA
Pandemic-driven innovation home that would prevent effective remote Unleashing the full potential The crises of the past decades show that working. In order for digital transformation to adversity often spurs innovation. It is hardly gather pace, innovations in connectivity – from surprising that the pandemic has unleashed a cloud and collaboration technologies to 5G – wave of transformational innovation, particularly in are key. 4 of innovation data medical and biotechnology and pharmaceuticals. https://www.weforum. org/agenda/2020/04/ 3D printed handsfree door openers and basic Fragmentation and the need for coronavirus-covid19- 4 ventilators were produced early in the pandemic collaboration pandemic-gadgets- Ed White, Head of Analytics, IP Group, Clarivate, explains the importance and COVID vaccines have been developed at The EPO’s Patent Index for 2020 has spotlighted innovation-technology/ impressive speed. More recently, Japanese innovation growth areas based on patent 5 https://www.nasdaq. of looking beyond patent volumes and how to extract richer insights from scientists developed a special syringe that can activity, but the broader context is missing. A com/articles/japans- innovation data. draw seven doses from Pfizer/BioNTech vaccine deeper and considered approach by leaning on terumo-says-makes- vials5. advanced IP data provides that, transforming syringe-to-draw-7-doses- from-pfizer-vaccine- According to a survey we conducted last information to powerful insights. vials-2021-03-08 6 decade of consecutive, annual growth Patent selectivity, not volume, May , innovation is crossing boundaries with Through such an approach, our Top 100 Global 6 https://clarivate.com/ 13 in patent application activity worldwide matters 23% of respondents indicating their innovations Innovators report last year revealed a picture derwent/campaigns/the- A came to a sudden halt in 2020. The Patent volume is a simple quantitative measure. were being re-purposed beyond their primary of a fast-moving global and interconnected impact-of-covid-19-on- pandemic has upended many aspects of What it tells us is that companies are filing for industry. The top new markets for these re- innovation ecosystem marked by fragmentation innovation/?campaign business, including patent activity. Filings at the patent protection, the representation in various purposed innovations mirror the fields experiencing and need for collaboration. Innovation is being name=Derwent_ European Patent Office (EPO) may have dipped sectors and how filing activity across sectors the highest levels of inventions according to the incubated in smaller companies, with the Top COVID_19_Survey_Apr_ IPS_ just 0.7% last year but findings from the World compare. As a measure on its own, patent volume EPO Patent Index – medical and bio-technology, 1,000 entities’ share of inventions in Derwent Global_2020&campaignid= 1 Intellectual Property Organization (WIPO) revealed offers no richer insight. It does not shed any light and pharmaceuticals. World Patents IndexTM (DWPI) decreased from 7014N000001rS7t&utm_ a 3% drop in filings globally. on companies’ innovation culture or inventiveness, For example, researchers at the University of 27% to 18% over a six-year period. At the same campaign= While broad insights can be extracted from nor their positions within the wider market. South Australia are developing a drone7 that can time, the average number of listed inventors per Covidsurveyreport&utm_ analyzing patent filing activity as revealed by A case in point is our Top 100 Global Innovators™ remotely detect temperature, heart and respiratory DWPI patent record rose from 2.84 (in 2014) to source=blog&utm_ 2 medium=owned the EPO’s latest Patent Index , increasingly, Ed White report, which celebrates companies and institutions rates, as well as coughing and sneezing of 2.99 (in 2019). 7 organizations are looking for more. With the at the pinnacle of the global innovation people in crowds. This “pandemic drone” could Despite being physically more distant, https://www.unisa.edu. au/research/covid-19/ complexities of today’s business environment landscape. Our latest Top 100 Global InnovatorsTM3 become a useful pandemic screening tool. The innovators have demonstrated remarkable resilience disease-fighting-drones/ exacerbated by the pandemic, businesses seek report revealed a steady decline in overall patent United States Food and Drug Administration and and ingenuity, working, and collaborating more 8 https://ncats.nih.gov/ deeper intelligence and the ability to connect volumes among Top 100 recipients since 2014. the National Center for Advancing Translational seamlessly than ever before and COVID-related covid19-translational- different data points that can translate into actionable This might appear to be a dichotomy and is at Sciences created CUREID8, a platform that allows research is a prime example. approach/collaboration insights that support faster, better decisions. odds to the surge in patent activity until 2020. clinicians to share medical information and 9 https://www.shrm.org/hr- However, by applying a sophisticated view of patent identify new treatments for repurposed medicines. Real-world pressures and faster today/news/hr-news/ information, and considering the influence, Adversity has, and continues to, spark ingenuity. innovation cycles Pages/Study-Productivity- Shift-Remote-Work- novelty and commercialization potential of In a market that is more fluid than ever before, COVID-Coronavirus.aspx companies’ patented research, we provided a Digitization and workplace businesses face growing real-world pressures, 10 https://www. measure of the ideation culture that produced transformation accelerate from faster innovation cycles, greater competition, financialexpress.com/ those patents. Among the world’s most The acceleration of digitization is another and the need to uncover new markets. The industry/technology/ innovative companies, patent selectivity, not tangible impact of pandemic. Spurred by stay challenge to many is to not just survive, but google-extends-work- volume, is what truly matters. and restricted travel measures that continue to thrive, in the most turbulent of times. By unlocking from-home-option-for- persist, digital transformation is happening not the full value of innovation data, organizations employees-till- september-2021/2149750/ just at the workplace but is far-reaching, impacting are armed with actionable insights that can help 11 https://www.mckinsey. how we learn, interact with others, and shop. them quickly discover new opportunities, bring com/featured-insights/ Contrary to concerns at the outset of pandemic products to market faster, or take the right risks. future-of-work/whats- that remote working could lead to a decline in next-for-remote-work-an- productivity, a Mercer survey9 revealed that remote analysis-of-2000-tasks- workers were as productive or able to increase 800-jobs-and-nine- Résumé productivity. Much has being written about tech countries 12 https://news.stanford. Ed White, Head of Analytics, IP Group giants such as Twitter and Google offering edu/2020/06/29/ at Clarivate their employees the option to work from home snapshot-new-working- 10 1 https://www.wipo. Ed is a global leader in providing trusted forever . home-economy/ int/pressroom/ insights and analytics to accelerate the However, obstacles remain. The potential 13 https://clarivate.com/ en/articles/2020/ pace of innovation. Ed is a thought leader of remote working tends to be higher in news/new-clarivate- article_0027.html in the field of intellectual property advanced economies and for specific analytics-report-reveals- 2 https://www.epo.org/ analytics and works to track and occupations, according to the McKinsey Global Contact emergence-of-market- about-us/annual-reports- disrupters-is-fragmenting- measure innovation activity. Prior to Institute11. Even among advanced economies Clarivate statistics/statistics/2020. global-patent-landscape- html holding this role, Ed was Director, Patent such as the United States, connectivity remains www.clarivate.com diluting-leading- 12 3 https://clarivate.com/top- Analytics at Clarivate. an issue as new Stanford research showed that Author: [email protected] innovators-invention- 100-innovators/ 35% of Americans have poor Internet access at market-share/
56 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 57
Clarivate_TPL54v3.indd 56 17/06/2021 12:39 Clarivate_TPL54v3.indd 57 17/06/2021 12:40 IP IN SPORT
17/06/2021 12:22 59 THE PATENT LAWYER Design also plays an important role in sports, an important role Design also plays presented the examples can see from you As Contact and Partners Zuykov 28, Moscow, pereulok, Grokholskiy 129090, Russia 495 775-16-37 +7 Tel: 495 775-16-37 +7 Fax: [email protected] www.zuykov.com/en above, innovative technologies, usually protected protected usually technologies, innovative above, to sport of level the taken have patents, by horizons new allow and heights, unprecedented mass and professional. sports, both for Strong, durable, light-weight innovative composite innovative light-weight durable, Strong, shoes sports in used those as such materials, cycling helmets for like gear protective and other recognizable easily highlight and make possible to and skiing, make sports safer and reduce the the and reduce safer sports and skiing, make at all lovers and sports’ athletes for injury risk of levels. the in increasing role a decisive as it plays product a of marketability and value commercial the design, it is Thanks to sporting event. or Adidas, example, For goods on the market. any the most and Puma athletic shoes are Nike, their yet recognizable, and easily sought after to and try with each other companies fight patents. challenge each other’s that follow the curve of the foot and reduce the and reduce the foot of the curve that follow when running. impact on joints and ligaments ” Athletics records were measured to the nearest 0.0001 seconds, using a radio signal from an official chronograph and a quartz oscilloscope. “
. When we talk about time in modern sports, talk about time in modern sports, we When In modern sports, athletes’ achievements are are achievements In modern sports, athletes’ CTC Legal Media Breguet. As time went on, watchmakers perfected watchmakers on, went time As Breguet. measure possible to was In 1862, it products. their 0.0025 seconds in the 400m freestyle by the USA the Patrick family subsequently opened hundreds opened hundreds subsequently the Patrick family . States in Canada and the United ice arenas of with frozen ice rinks natural to an alternative As polymer ice rink made of came a synthetic water Synthetic years. 40 over which has been in use for easier cheaper, be even to proven ice rinks have therefore are and reliable, and more operate to world. the common around becoming increasingly we understand that an athlete can be a fraction can be a fraction understand that an athlete we time in winning. In fact, from a second away of in seconds in be measured sports first began to at the equestrian competitions in England. 1731 used in equestrian be to The first chronograph times the record to seconds two with sports, made until not was competitors, the two of Abraham-Louis watchmaker the Swiss 1820 by to 1/5th of a second, in 1902 a new standard was was standard new a in 1902 second, a of 1/5th to was set on 0.1 second, since 1930 the accuracy Olympics City 0.01 seconds, and at the Mexico athletics 0. Since 1973, reached in 1968 it already 0.0001 the nearest to measured were records an official from signal seconds, using a radio the At oscilloscope. quartz a and chronograph example, for Games, Olympic Munich 1972 of Tim McKee beat Sweden of Larsson Gunnar once again the importance of prove Such facts modern technology. capabilities the by solely determined no longer used. the technology but also by the athlete, of shoes use professional athletes example, For Zuykov_TPL54v1.indd 59
25/06/2021 13:10 CTC Legal Media Modern technology allows people to engage people to allows technology Modern However, it is not so long ago that the first long ago that the first so it is not However, at a match attend cannot fans if Nowadays, corners of the world will not only be able to watch to able be only not will world the of corners and replays watch time, in real the sporting event their share to able be also but close-ups, it is whether friends, with their impressions sport. other any or skating, figure biathlon, soccer, the of regardless year time of sport at any in any in summer. skating figure example season, for with artificial ice rink That said, the first indoor Frank brothers built in 1912 in Canada by was ice and many Joe, father Patrick and their and Lester owners can display a TV picture, ensuring viewers ensuring picture, TV a can display owners financiers believed that the Patrick family would would that the Patrick family financiers believed The wrong. were but the financiers go bankrupt, in this innovation, a lot invested Patrick family an whopping $110,000 at the time for a paying Not 4,000 spectators. of with a capacity ice rink a second organized the brothers there, stopping the which during the construction of arena, unit refrigeration the largest engineers created This rink and paid $210 thousand. world in the than 10 thousand people host more able to was that so profitable was The business at a time. do not miss the most interesting events of the of events interesting miss the most do not scoreboards Modern competition and matches. about the information the statistical all display the competition. of and the course participants minimum information: displayed scoreboards And the teams. of and the names the score stadium of era a new 1961 came after only Bayard Americans Robert “when scoreboards, the patented and discovered Pittman Gary and parallel in However, technology. LED infrared used in still were with LEDs, incandescent bulbs Summer 1980 the At time. long a for stadiums helped to these boards in Moscow, Olympics but the competitions, from the broadcasts show . white” and in black only Thanks to it. watch can still the stadium, they remotest the in sports lovers technology, digital Kristina Mulina
THE PATENT LAWYER ecently, the popularity of a healthy a healthy of the popularity ecently, sports in and for in general lifestyle occupy sports and increasing, is particular
Work experience • 2012–2015 — Lead engineer-patent expert of the Federal State Unitary Enterprise “Central Research and Development Establishment of Chemistry” Accomplishments In 2014 Kristina passed training courses of the Russian State Academy of Intellectual Property that evidenced by certificate of advanced training “Intellectual property in innovative activity of the enterprise”. Résumé Attorney Patent to Assistant Mulina, Kristina In 2012 Kristina graduated from Bryansk State University named of I.G. Petrovsky and gained a Specialist degree in “History” with knowledge in English language. In 2012 she gained a Specialist degree of Patent (second higher education) in Bryansk State University named of I.G. Petrovsky. In Zuykov and Partners she: • Manages records on applications for inventions, utility models, industrial designs, and computer programs; • Specializes in preparation of responses to inquiries and notification of the formal examination, annual renewal fees on patents for inventions, utility models and industrial designs; • Conducts correspondence with clients; • Performs other duties of a patent specialist. Kristina Mulina, of Zuykov and Partners, reports. Kristina Mulina, of Zuykov more comfortable every day thanks to innovation and creativity in the field. innovation and creativity every day thanks to more comfortable and some are athletes themselves. At the same time, sports life is becoming the same time, sports life athletes themselves. At and some are Sports are an integral part of everyone’s life. Some people watch athletes, life. Some people watch integral part of everyone’s Sports are an Modern technology plays an important role in an important role plays technology Modern stadiums and arenas large all virtually Today, 58
are equipped with video screens on which event which on video screens with equipped are R
and sports and Intellectual Property Property Intellectual IP IN SPORT IN IP more and more of modern people’s time. At At time. people’s modern of more and more more becoming is life sports time, same the innovation the to thanks day every comfortable made in this field. and creativity day, use these benefits every we sports, but as much it affects how of aware always not are we lives. our and improves Zuykov_TPL54v1.indd 58 INDEFINITENESS INDEFINITENESS
standard in AIA proceedings with the Phillips claim construction standard.13 Résumés The U.S. Patent Office’s The result: according to the memorandum, Eugene Goryunov is a Partner in the two indefiniteness standards – In re Packard and Intellectual Property Practice Group in Nautilus – created “confusion” in AIA proceedings the Chicago office of Haynes and Boone. because these proceedings apply the same guidance on indefiniteness claim construction standard as U.S. district David McCombs is a Partner in the courts. Parties in AIA proceedings were left to Dallas office of Haynes and Boone. argue either indefiniteness standard, or both.14 in AIA post-grant proceedings The solution: the memorandum states that the Clint Wilkins, Ph.D., is a Partner in the original reasoning for employing two different Dallas-North office of Haynes and indefiniteness standards in AIA proceedings no Eugene Goryunov Boone. longer made sense in view of the single unifying Haynes and Boone’s experts Eugene Goryunov, David McCombs, Clint Wilkins claim construction standard between AIA Kristina Smith is an associate in the proceedings and civil actions.15 Therefore, the Intellectual Property Practice Group in and Kristina Smith explain the latest USPTO guidance on indefiniteness. USPTO elected to adopt the Nautilus standard the Dallas-North office of Haynes and for indefiniteness for AIA proceedings. The Boone. n January 6, 2021, the U.S. Patent and requires that a patent include “one or more memorandum reasons that harmonizing the Trademark Office (USPTO) issued a claims particularly pointing out and distinctly operable indefiniteness standard will ensure a Omemorandum entitled “Approach to claiming the subject matter which the inventor reliable and consistent approach that is both 5 Indefiniteness Under 35 U.S.C. § 112 in AIA Post- 1 https://www.uspto. or a joint inventor regards as the invention.” efficient and fair, thereby increasing the integrity Contact Grant Proceedings.”1 The memorandum sets gov/sites/default/ Under the AIA regime, indefiniteness can be of AIA proceedings at least in part because the Haynes and Boone forth binding guidance outlining the USPTO’s les/documents/ asserted as an affirmative ground in PGR and PTAB and U.S. district courts often analyze the 180 N LaSalle Street, Suite 2215 approach to analyzing claims for indefiniteness Inde nitenessMemo.pdf CBMR proceedings and can further be asserted same claims in parallel proceedings.16 Chicago, IL 60601, USA in all America Invents Act (AIA) post-grant (hereinafter, “Memo”). to challenge claims proposed in a motion to David McCombs Tel: +1 312.216.1620 2 The Memorandum was review proceedings: inter partes review (IPR), amend in any AIA proceeding, including IPR. For appeal purposes, the www.haynesboone.com issued under the USPTO’s Memorandum removes confusion post grant review (PGR), and covered business Standard Operating The memorandum notes, however, “confusion” 2 method review (CBMR). Procedure 2 and is signed has developed at the Patent Trial and Appeal as to which indefiniteness by Under Secretary and Board (PTAB) as to the proper indefiniteness standard the PTAB should apply A uniform “indefiniteness” Director Andrei Iancu, standard that is to be applied in AIA proceedings.6 The USPTO’s memorandum is expected to standard promotes consistency Commissioner for Patents In 2014, in In re Packard, the Federal Circuit resolve existing confusion in AIA proceedings. It across all forums Andrew Hirshfeld, and affirmed the operating USPTO indefiniteness should be noted, however, that the Chief Administrative Patent The memorandum clarifies that the Patent Trial standard: “[a] claim is indefinite when it contains memorandum will likely only bind the PTAB. Judge Scott Boalick. 7 and Appeal Board (PTAB) will apply the 3 572 U.S. 898 (2014). words or phrases whose meaning is unclear.” The Federal Circuit has determined that USPTO indefiniteness standard promulgated by the U.S. Memo at 5. The USPTO applied this standard during patent guidance documents, such as the memorandum Supreme Court in Nautilus, Inc. v. Biosig Instruments, 4 Memo at 5. examination, examination appeals, and AIA at issue, “does not carry the force of law.”17 Inc.3 There, the Court held that “a patent is 5 35 U.S.C. § 112(b). proceedings.8 At that time, the USPTO applied the Instead, the Federal Circuit will likely “apply Clint Wilkins invalid for indefiniteness if its claims, read in 6 Memo at 4. broadest reasonable interpretation (BRI) claim [Federal Circuit] law and the relevant Supreme 7 light of the specification delineating the patent, 75 F.3d 1307 (Fed. Cir. 2014) construction standard in all matters before it.9 Court precedent, not the Office Guidance.”18 (per curiam). and the prosecution history, fail to inform, with Later that same year, the U.S. Supreme Court Nevertheless, by adopting U.S. Supreme Court 8 Memo at 2-3. reasonable certainty, those skilled in the art 9 Memo at 3. in Nautilus affirmed the operating indefiniteness precedent for indefiniteness in AIA proceedings, about the scope of the invention.” As of 2018, the 10 Nautilus, 572 U.S. at 901. standard applied in civil actions by U.S. district appeals of those proceedings should be more claim construction standard is the same for AIA 11 415 F.3d 1303 (Fed. Cir. courts: “[A] patent is invalid for indefiniteness if its predictable going forward. proceedings and civil actions in, for example, 2005) (en banc). claims, read in light of the specification delineating U.S. district courts. Adopting the Nautilus standard 12 Ex parte McAward, Appeal the patent, and the prosecution history, fail to for AIA proceedings would “align” the indefinite- No. 2015-006416, 2017 WL inform, with reasonable certainty, those skilled in 3947892 (PTAB Aug. 25, ness inquiry across all forums where indefiniteness the art about the scope of the invention.”10 U.S. 2017). can be asserted, thereby “promot[ing] consistency Memo at 3-4. district courts, then and now, apply the claim 4 and efficient decision making.” 13 Changes to the Claim construction standard articulated in Phillips v. 11 Construction Standard for AWH Corp., which requires that words of a claim Kristina Smith The Memorandum clarifies the Interpreting Claims in Trial be given their ordinary and customary meaning. PTAB will use the same Proceedings Before the The memorandum asserts that different 17 indefiniteness standard as Patent Trial and Appeal indefiniteness standards made sense initially In re Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020) Board, 83 FR 51340 (Oct. 11, (holding USPTO guidance on subject matter eligibility the courts because of the different claim construction 2018). is not binding); see also Cleveland Clinic Found. v. True Because the indefiniteness inquiry is an important standards employed by the USPTO and U.S. 14 Memo at 4. Health Diagnostics LLC, 760 F. App’x 1013, 1020 (Fed. 12 part of AIA proceedings, there is a need for 15 Memo at 5. district courts. In late 2018, however, the USPTO Cir. 2019) (non-precedential) (same). consistent legal standards. The Patent Act 16 Memo at 5. elected to replace the BRI claim construction 18 In re Rudy, 956 F.3d 1383.
60 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 61
Haynes Boone (1)_TPL54v1.indd 60 17/06/2021 13:05 Haynes Boone (1)_TPL54v1.indd 61 17/06/2021 13:06 DIVERSITY, EQUITY, AND INCLUSION
17/06/2021 12:50 63 THE PATENT LAWYER I’ll give you a very linguistic example: in grad Basically, it’s where everyone feels seen, feels seen, it’s where everyone Basically, have people workplace, optimized the in And I will From an anthropological perspective, make this plan, do you even have enough people who can accurately identify bias? Do you have people who have a vocabulary that lets them productively talk about bias? No? Then you are isn’t plan the Creating to fail! yourself up setting step one. It’s step three. Step four is implement the plan. But step one, where we begin, is educate people to see and understand bias, and to learn how to do real perspective taking. Because our lived experiences are so different that it trains us to see the world differently. school, I learned about a tribe in South America where their verbal grammar changes depending your company, etc. I call it the optimized workplace. etc. I call it the optimized your company, Where people are able to heard, and valued. and aren’t being make real contributions belong. they like feel people where is It blocked. you’re So, safety. psychological of levels high course a create and mistake a admit to to able able to point out correction. And you’re and give them clean somebody else’s mistake, feedback. You can have and useful critical without the opposite of dissent and discussion which is a highly toxic psychological safety, time. workplace where you feel unsafe all the are Very frankly, there are a lot of people that training stuck in workplaces like that. Anti-bias and at is one way to go into a toxic workplace make it least try to educate people on how to less toxic. workplace place in the What can be put into and inclusion? diversity facilitate to And This is a huge question. It’s seriously huge. the people who work in DEI are constantly to work collaborating, sharing information, trying out best practices. one-size-fits-all strategy, no there’s that you tell their because groups of people end up with own cultures and subcultures, and this includes to groups of people who have come together of work at a law firm or some other kind organization. But there are some universal an things. Maybe it’s because I come from educational background, but I do see education facilitate to ways foremost and first the of one as diversity and inclusion. What I’ve learned is people come to me and they’re like: I want to make a plan; I want to implement the plan; I want to move the needle. And I’m like: So, to groups of belonging, whether it be family, friend family, be it whether belonging, of groups your law firm, your organization, group, a band, on the phase of the moon. They use a different suffix if the moon is full, if it’s new, if it’s waxing, or if its waning - this is just part of their understanding of the world. These are people ” I decided toI decided call it anti- bias training because I I realized dealing was with a lot of cognitive biases as well. “ I call my workshops “anti-bias training.” There training.” “anti-bias workshops my call I because training anti-bias say to like also I Let me tell you about the goal of anti-bias So, I thought, ‘what if I could help people and ‘what if I could help So, I thought, CTC Legal Media suddenly there was protests around the country, suddenly there was protests around the country, calling for real justice, and the end of harmful So this and unfair treatment of Black people. to landed on companies as well, who started bias feel pressure to think about unfairness and of their in terms of their employees, in terms people client base, and in terms of really seeing good and making their experience equally across all different identity groups. work. are a lot of different names for this kind of In the US, most common right now is Diversity, people Equity and Inclusion, or DEI. Some the include the word ‘belonging,’ and others training word ‘justice.’ I decided to call it anti-bias of lot a with dealing was I realized I because cognitive biases as well. And because, to be frank, sometimes you have to convince people that this work is necessary. That it isn’t just a nice-to-have, but is actually a have-to-have. One real obstacle is that, in general, the upper echelons of companies are people who haven’t had to deal with pervasive, ongoing, everyday bias. So they don’t feel it the same way that people at lower levels, in different groups, do. bias feels like a concrete problem that people know exists. And they know that bias is bad, so they understand they need to devote time and energy into anti-bias work. training. I did a lot of research on: what is the best possible workplace culture? What do the or goals business teach who people organizational culture or organizational behavior see as most important and best practices? I used an anthropological lens, and I human foundational very some with up came principles which I think are actually true for all educate them so they can make sure that that sure make can they so them educate that their good a better job, they’re doing good impact?’ are actually becoming intentions years ago that I left UCLA It’s already almost 10 consulting and research own my started I and company. training what anti-bias us to explain you Can is? have been realizing that A lot of companies doing as good a job as they they have not been a lot of reflection started in should be. In the US, Some people refer to this May and June 2020. and many of us in the as “after George Floyd,” Peoplefield are calling it “the Great Awakening.” using were stuck at home in the pandemic, and video to connect with their family, friends, of loved ones. And suddenly, here was a video It made George Floyd being killed by the police. and it hard to ignore for so many people, Diversity (1)_TML3_v5.indd 63
22/06/2021 16:13 CTC Legal Media The other thing was that Los Angeles, and Los Angeles, and The other thing was that So I thought that, since I was good at intro- One parallel to how we are with bias is our because that’s where most linguistic anthropologists take to happen to had then, and you back were that a class like mine in order to get information better you could use for the rest of your life to understand the world around you. I had California generally, is very diverse and out students, who were quite stellar, who went bias into the working world and encountered that for some reason I hadn’t been expecting, it. And I myself had encountered even though their stories were upsetting. level teaching, it would be more useful for me in my goal of making the world a better place if could I workplace training. to over switched I start by taking my research knowledge, along with the teaching tricks I’d figured out, and build workshops for companies. I could create training that would guide people to better understand their actions, and to help them better align their actions with their intentions. So people like my former students, who were amazing, could go into less-biased workplaces and thrive. posture. Sometimes we have this idea that we ourselves see we then and posture good have in a photo or video and it’s actually terrible! We’re all hunched over from all this computer work. We do that a lot with our talk and actions too: we have this idea that we’re getting certain to be them messages across because we know true in our heads, but we’re actually not doing a great job of it and things aren’t landing the way that we want. Wertheim, I still remember this thing and it came Wertheim, I still remember this thing and in handy today.” So, I began to feel frustrated frustrated feel to began I So, today.” handy in that that there was so much useful information very was locked behind academic walls. It felt university, elite an to go to had you unfair that Dr. Suzanne Wertheim
r. Suzanne Wertheim is a national expert on language and bias. A former professor of linguistic anthropology, she began of linguistic anthropology, she began
about her DEI work and research, which THE PATENT LAWYER
and what we can all do to improve. and what we can all do to what it means; the current challenges; DEI in law; gender bias;what it means; the current about diversity, equity, and inclusion: about diversity, to The Patent Lawyer Consulting, talks earch & of Worthwhile Res series Dr. Suzanne Wertheim, In this six-part I was teaching classes and I was changing I was teaching classes and I was changing Suzanne kindly spoke with The Trademark Dr. Wertheim is a thought leader in the the Dr. Wertheim is a thought leader in 62 North America and Europe, presenting research onNorth America and Europe, presenting research language and gender, cross-cultural encounters,
After faculty positions at Northwestern, University D Chapter 1: an anti-bias vision 1: an anti-bias Chapter with Suzanne Wertheim. Wertheim. Suzanne with Diversity, equity, and inclusion and equity, Diversity, DIVERSITY, EQUITY, AND INCLUSION AND EQUITY, DIVERSITY, Can you tell us why you Can you you decided us tell why to start your had in mind? you vision business and the own called Linguistic in a field I was a professor Anthropology, which most people have not heard of, so they think it’s very exotic or esoteric. But it is actually studying one of the most the talking, people things: human foundational social meaning of their language, and how their language relates to the world around them. how people saw the world: that was my goal, and it was working. My undergrads would email me years after taking classes and say, “Professor will be featured over the next six issues. and anthropology and artificial intelligence. She and anthropology and artificial intelligence. has done fieldwork with speakers as diverse as Tatar nationalists in the former Soviet Union, and central California, in Native Americans comedians in Los Angeles. Dr. Wertheim now applies academic knowledge and expertise to real-world problems in the workplace, including legal workplaces. Lawyer her research on language, culture, and diversity her research on language, Ph.D. at UC Berkeley, where she received her of Maryland, and UCLA, she left academia to to academia left she Maryland, and UCLA, of found Worthwhile Research & Consulting. Diversity, Equity, and Inclusion space. In addition and to educating thousands of college students been workshop participants, Dr. Wertheim has an invited and keynote speaker throughout Diversity (1)_TML3_v5.indd 62 TPL DOS 4pp RHP Start_TPL54:Layout 1 17/6/21 13:32 Page 65
DIVERSITY, EQUITY, AND INCLUSION To enter your firm in the Directory of Services section please email [email protected] DIRECTORY OF SERVICES
who pay attention all the time to the phases of racial bias is so profound when it comes to the moon, whereas the rest of us don’t have to distribution of work assignments. I hear so many Directory of Services do it. stories where some people are taken under a One of the A lot of people have lived lives that have senior person’s wing and get plum assignments, “ made other people’s experiences invisible to but others struggle to get good work. And ARGENTINA BOLIVIA BRAZIL most useful them, and it often means that bias doesn’t feel gender or race are pretty clearly playing a role. things we real. What I find is that there are a lot of people Also, how do you make sure that promotions for whom this feels politically correct or are equitable? Again in law, this is horrifically can do is get whimsical. Or they think that people are being bad – all you have to do is look at what the people to a oversensitive. I find that many of the people results are! What are the numbers for who O’Conor & Power Landivar & Landivar with these judgments come from a place of starts out at the bottom rung and who makes it O’Conor & Power’s trademark and patent practice Established by Gaston Landívar Iturricha in 1962, place where group has wide experience in handling portfolios for Landívar & Landívar is a pioneer firm in the field of DREON sincere misunderstanding, along with a lack of to the higher levels? The numbers speak for international and domestic companies in Argentina Industrial Property in Bolivia. Our international In DREON IP we specialize in Brazil National Phase of they feel knowledge. So in my introductory anti-bias themselves. And then we can end up with what and Latin America. Our services in the region include reputation was gained through a competent and PCT international patent applications, and industrial searches, filing and registration strategies, prosecution, complete legal service in our area of specialization, design and trademark applications. training, I work to educate people so they start we call a tautology, which is basically “well it’s opposition, renewals, settlement negotiations, and an excellent and professional team with no comfortable to see: here’s what bias looks like; here are the this way because it’s this way.” So people end litigation, enforcement and anti-counterfeiting comparison in our country. We have a thorough 20-year background in all procedures, recordal of assignments, licences, Address: Av. Arce 2618, Columbia Bldg., 8th floor, proceedings before Brazil Industrial Property Office, talking frameworks of bias; here are the ways it shows up thinking something like, “well if it’s all white registration with the National Custom Administration Office 802. La Paz, Bolivia, South America representing a broad range of clients from all over the up; here’s what to look for. men at the top of law firms it must be because and general counselling in IP matters. Tel/Fax: 591-2-2432362 / 2113157 world. Keeping knowledge up to date with the latest about things, Address: San Martín 663, 9th Floor, Website: www.landivar.com developments of the field and offering close personal Another problem is that there is a lot of they’re the best.” And this bias feeds into hiring (C1004AAM) Buenos Aires, Argentina Email: [email protected] attention to the client are our major concerns. and where terminology that I think is quite accurate but and work assignments and promotion decisions, Tel/Fax: 005411 4311-2740/005411 5368-7192/3 Contact: Martha Landivar, Michele Arteaga Website: www.oconorpower.com.ar Website: www.dreon.com doesn’t lead to good results when you’re trying and it becomes this repeating cycle. How do Email: [email protected] they Email: [email protected] to bring awareness of bias. If you tell somebody, you break that cycle? By looking, very Contact: Santiago R. O’Conor, Managing Partner E-mail: [email protected] Contact: Marcelo Dreon understand ‘that was racist’, ‘that was sexist’, or ‘you’re scientifically, at the little distortions that happen. that they’re racist’, ‘you’re sexist’ - it may be true, but you’re These distortions make it so that some people not going to get anywhere. They’re just going to have a terrible headwind that is slowing them CHINA CZECH REPUBLIC GUATEMALA going to get defensive, feel attacked, and shut down. I down, while there are other people with a think it’s very important to have vocabulary that tailwind that keeps on pushing them along. make makes it easier to have these conversations. They may be doing good work but they’ve got mistakes. People who are resistant to DEI work will work + tailwind. So we need find the often say, “I don’t want to lower the bar,” when circumstantial stuff and make it so that that 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 the topic comes up of diversifying a candidate tailwind and headwind is the same for everyone. 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. pool for new hires and bringing more diversity And to make things more equitable, we also 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 to an organization. For example, “You say it’s not need to look for the people that have pushing 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 ” good that all our engineers went to Stanford into a headwind for some time and get them 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 and we need to get more non-Stanford people back in a more appropriate and fair position. It’s Our attorneys and engineers have had extensive patent attorneys and lawyers. quality results operated as a single, fully integrated in here, but we don’t want to lower the bar.” It’s a serious and lengthy process, and it requires 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, really common to hear, especially if there is a many small, dedicated actions and iterative fixes. computer science, food, biotechnology and agriculture Č 150 00 Praha 5, Czech Republic. Guatemala, C. A. goal of bringing in more women, of any race, or engineering etc. Tel/Fax: (502) 2246 3000 / (502) 2333 5980 Website: www.cermakaspol.com people of color. It’s terrible logic, and suggests Join us in The Patent Lawyer July/August for Tel: +86 10 82837725/6 Website: www.lexincorp.com Email: [email protected] Email: [email protected] that by looking for somebody who isn’t in the Chapter 2. Website: www.citicip.com Email: [email protected] Contact: Dr. Karel Cermak - Managing Partner [email protected] dominant group, you’re going to get someone Contact: Xiaojuan Zhang and Lin XU Dr. Andrea Kus Povazanova - Partner Contact: Mr Gonzalo Menéndez G., Ms Gina Roca who is not competent or not qualified. It’s a dangerous association and link. So, with this as a common background, I like to joke that I DO Contact HONDURAS INDIA India want to lower the bar. But only in the sense of Worthwhile Research & Consulting lowering the bar for talking about bias. Because www.worthwhileconsulting.com that bar can be really high. People are really [email protected] scared of saying and doing the wrong thing, of https://www.linkedin.com/in/suzanne- looking stupid, of being accused of being a wertheim-ph-d-1508464/ BUFETE MEJIA & ASOCIADOS Chandrakant M Joshi Excelon IP Our law firm has been exclusively practicing Intellectual Our law firm is headed by Mr. Sanjaykumar Patel A full-service Intellectual Property law firm covering: bigot or racist or sexist. So one of the most Property Rights matters since 1968. Today, Mr. Hiral who is Principal IP Attorney and having 16+ years Honduras and Central America offering a convenient Chandrakant Joshi heads the law firm as the senior most of experience in the Intellectual Property field for useful things we can do is get people to a place and cost-effective regional service. The firm services Attorney. It represents clientele spread over 35 countries. different countries. He was listed as Top 100 IP include filing, prosecution, maintenance, enforcement where they feel comfortable talking about things, The law firm conducts search, undertakes registration, leaders of India. He is a registered IP Startup and defense of all types of intellectual property. post-registration IP management strategies, IP valuation, Facilitator by Gov. of India and active member of and where they understand that they’re going Furthermore, the firm has strong litigation and infringement matters, domain name disputes and cyber “IP Collegium” of JIII (Japan Institute for Promoting arbitration capabilities and is known for handling to make mistakes. law disputes of patents (including PCT applications), Invention & Innovation), Tokyo. We provide a wide complex litigation matters as well as infringement trademarks, industrial designs and copyrights. range of service related to Patent, Trademark, Design Once you’ve gotten people to a place where and anti-counterfeiting actions before all Courts, and Copyright for India including PCT application, they can identify and discuss bias, it’s time for Administrative Offices and Customs authorities. Address: Solitaire - II, 7th Floor, Link Road, Malad (West), Mumbai - 400 064, India Madrid application along with Novelty search, Tel: +504 25507744 / +1 (914) 4125719 the next steps. Then you must move to systemic Tel: +91 22 28886856 / 57 / 58 / 64 landscape search. Fax: +1 (718) 7322118 Fax: +91 22 28886859 / 65 action plans, and make sure there is accountability Website: www.bufetemejia.com Tel: +91 951233 2604 Website: www.cmjoshi.us Email: [email protected] Website: https://excelonip.com/ for those action plans. For example, look at Email: [email protected] / [email protected] / RESEARCH & CONSULTING Contact: Ricardo Anibal Mejia Mejia Email: [email protected], [email protected] [email protected] / [email protected] / work assignments: how can you make work & Blanca Rebeca Mejia Lozano Contact: Mr. Sanjaykumar Patel [email protected] (Founder- Principal IP Attorney) assignments equitable? In law, gender bias and
64 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 65
Diversity (1)_TML3_v5.indd 64 22/06/2021 16:13 TPL DOS 4pp RHP Start_TPL54:Layout 1 17/6/21 13:33 Page 66 TPL DOS 4pp RHP Start_TPL54:Layout 1 17/6/21 13:34 Page 67
To enter your firm in the Directory of Services section please email [email protected] To enter your firm in the Directory of Services section please email [email protected] Directory of Services Directory of Services DIRECTORY OF SERVICES
INDIA INDIA INDIA PAKISTAN PAKISTAN PHILIPPINES
LexOrbis Mehta & Mehta Associates Bharucha & Co. United Trademark & Patent Romulo Mabanta Buenaventura LexOrbis is a highly specialised, market-leading IP Mehta & Mehta Associates (Gurgaon, INDIA) is Established in 1948, Bharucha & Co. is one of the Services Sayoc & de Los Angeles boutique fielding a sizable team of 9 partners, L.S. DAVAR & CO. a full-service boutique IP Law Firm, providing Filing, leading Intellectual Property law firms in Pakistan 85 lawyers and over 60 patent attorneys and is amongst International Intellectual Property Attorneys Founded in 1902, the firm is now 114 years old. A We are India’s oldest Intellectual Property and Litigation Prosecution and Litigation services in respect of providing full range of IP services including all the fastest growing IP firms in India having offices at specialising in Trademarks, Patents, Designs, full-service IP firm, it has pioneered in Intellectual Firm. Since 1932, we have been as a trusted IP partner Patents (in different fields of science and engineering), aspects of patents, trademarks, designs, copyright, 3 strategic locations i.e. Delhi, Mumbai and Bengaluru. Copyrights, Domain Name Registration, Litigation & Property law practice, and some of its key cases of Global Large and Mid-size companies and foreign IP Trade Marks, Designs and Copyright. The Firm assists domain names, licensing, franchising and litigation. The firm is a one stop shop for all Intellectual Property Enforcement services. decided by the Philippine Supreme Court have been law firms. We have been widely acknowledged by Govt. both national and international clientele, from different The firm is ranked among the leading law firms in related needs and provides practical solutions and Address: 85 The Mall Road, Lahore 54000, Pakistan featured in Philippine Reports, formerly the repository of India. In the last 90 years, we have retained number geographical locations and backgrounds for all IP Asia by most of the prestigious legal referral guides. services for various legal issues faced by technology Tel: +92 42 36285588, +92 42 36285590, of the decisions of the Philippine Supreme Court, and one position in India in not only filing the Patents, related contentious and non-contentious matters. Address: F-7/1, Block 8, K.D.A Scheme 5, companies, research institutions, universities, +92 42 36285581, +92 42 36285584 now in the Supreme Court Reports Annotated Designs, Trademarks, Copyright, and Geographical Address: Mehta & Mehta Associates, Mehta House, Kehkashan Clifton, Karachi, Pakistan. broadcasters, content developers and brand owners. Fax: +92 42 36285585, +92 42 36285586, (SCRA). Indications but also in getting the grants. B-474, Sushant Lok-1, Sector-27, Tel: +92-21-3537 9544 Tel: +91 11 2371 6565 +92 42 36285587 Address: 21st Floor, Philamlife Tower, 8767 Paseo Gurgaon-122002, NCR, India Fax: +92-21-3537 9557-58 Fax: +91 11 2371 6556 Tel: 033- 2357 1015 | 1020 Website: www.utmps.com & www.unitedip.com de Roxas, Makati City 1226 Philippines Tel: +91-124-410 8474, 410 8475 Website: www.bharuchaco.com Website: www.lexorbis.com/ Fax: 033 – 2357 1018 Email: [email protected] Tel/Fax: (632) 5559555; (632) 8134558; Fax: +91-124-410 8476 Email: [email protected] Email: [email protected] Contact: Yawar Irfan Khan, Hasan Irfan Khan (632) 8103110 Website: www.lsdavar.org.in Website: www.mehtaip.com Contact: Mohammad Fazil Bharucha, Abdul Aziz Contact: Manisha Singh, Managing Partner Website: [email protected] Email: [email protected] Email: [email protected] [email protected] Email: [email protected] Contact: Dr Joshita Davar Khemani Contacts: Dr. Ramesh Kr. Mehta, Founder Abhai Pandey, Partner Contact: Rogelio Nicandro; Joaquin V. Sayoc [email protected] Mrs. Dahlia Chaudhuri Ankush Mehta, Principal Attorney
INDIA INDIA LUXEMBOURG RUSSIA RUSSIA SWEDEN
Y. J. Trivedi & Co. Patent 42 Sojuzpatent Vakhnina and Partners Fenix Legal The firm is elated to have completed 50 years in the practice Patent 42 is a law firm acting in Industrial Property. Sojuzpatent is the oldest leading IP law firm on the The team of Vakhnina and Partners, one of the leading Fenix Legal, a cost-efficient, fast and professional of IPR Law (full service) with offices in Mumbai, Delhi and Our job is to help and assist companies and territory of the former USSR, with seven offices in IP firms in Russia, comprises of highly-qualified patent Patent and Law firm, specialized in intellectual Jaipur. The firm has a strong base of well-credentialed legal entrepreneurs in protecting and defending their Russia, and associates in all the neighboring and trademark attorneys, lawyers and technical property in Europe, Sweden and Scandinavia. Our and technical professionals offering quality services in all investments in innovation and creation. countries. We employ more than 150 people, experts. We represent our clients' interests in Russia consultants are well known, experienced lawyers, areas of IPR. Whether working on a precedent-setting case If innovation is first of all a state of mind, it is also including 50+ patent attorneys and litigation lawyers, and at Eurasian Patent Office, and also cooperate with European patent, trademark and design attorneys, or preparing opinions, the firm endeavours to be innovative a necessity and a source of development and growth to achieve seamless prosecution and successful partners and associates in other Eurasian countries as business consultants, authorized mediators and in its approach and adopt pragmatic strategies to meet its for your company. Investments carried out to develop litigation. We offer everything you may need for Georgia, Ukraine, Belarus, Kazakhstan, Armenia, branding experts. We offer all services in the IP field client’s interest. Through interdisciplinary collaboration and new products or new activities deserve to be protecting your IP in the whole region. Azerbaijan, Kyrgyzstan, Turkmenistan, Uzbekistan, including trademarks, patents, designs, dispute specialized experience in its clients' industries, the firm protected.seeking to protect valuable original Address: Myasnitskaya St., 13, Bldg. 5, Moscow, Moldova, Tajikistan, as well as Baltic states. resolution, mediation, copyright, domain names, IP provides effective solutions that aligns with clients’ short- creations. 101000, Russia Member of INTA, FICPI, AIPPI, LESI, ECTA, PTMG Due Diligence and business agreements. term and long-term business objectives. Address: 34, rue Dicks Tel: +7 495 221 88 80/81 Address: Moscow, Russia Tel: +46 8 463 50 16 Address: 2nd Floor, City Square Building, L-4081 Esch-sur-Alzette Fax: +7 495 221 88 85/86 Tel: +7-495-946-7075, +7-495-231-4840 Fax: +46 8 463 10 10 Opp. Kashiram Hall, Polytechnic, Luxembourg Website: www.sojuzpatent.com Fax: +7-495-231-4841 Website: www.fenixlegal.eu Ahmedabad – 380 015, Gujarat, India Tel: +352 691 999 350 Email: [email protected] Website: www.vakhnina.ru Email: [email protected] Tel: +91 79 26303777, 26305040 Fax: +352 24 61 10 10 Contact: Svetlana Felitsina, Managing Partner Email: [email protected] Contacts: Ms Maria Zamkova Website: www.yjtrivedi.com Email: [email protected] Tatiana Petrova, Head of Trademark Contact: Dr. Tatyana VAKHNINA Mr Petter Rindforth Email: [email protected] Department Dr. Alexey VAKHNIN Contact: Mr. Jatin Trivedi
MACAU MEXICO NIGERIA TAIWAN, ROC TAIWAN R.O.C. TAIWAN, ROC
IPSOL Goodrich Riquelme Asociados Aluko & Oyebode Deep & Far Attorneys-at-law Giant Group International Patent, LEWIS & DAVIS IPSOL is a key service line focused on the planning, Our staff of attorneys, engineers and computer We are a full-service law firm focusing on patent Deep & Far attorneys-at-law deal with all phases of Trademark & Law Office LEWIS & DAVIS offers all services in the IPRs field, registration and management of trademark, patent specialists help adapt foreign patent specifications and prosecution rated for Patent Contentious by Managing laws with a focus on IPRs, and represent some Giant Group is specialized in domestic and international including prosecutions, management and litigation of and other IP rights portfolios, offering solutions that claims to Mexican law, secure patent inventions and Intellectual Property. The Firm was named Law Firm of international giants, e.g. InterDigital, MPS, Schott patent application, litigation and licensing, as well as Trademarks, Patent, Designs and Copyright, and enable to maximize the protection of your IP assets in trademark registrations and maintain them by handling the Year 2015 and Intellectual Property & Technology Glas, Toyo Ink, Motorola, Cypress. The patent trademark and copyright registration. Regardless of payment of Annuity and Renewal fee. Our firm assists Macau and worldwide. the necessary renewals. Our computer system, which Team of the Year 2017 by Law Digest Africa Awards. attorneys and patent engineers in Deep & Far whether you are seeking legal protection for a piece of both domestic and international clients in Taiwan, Address: Avenida da Praia Grande, 759, 5° andar, is linked to the Mexican Patent and Trademark The Firm was also named the Law Firm of the Year normally are generally graduated from the top five intellectual property, or being accused of infringing China, Hong Kong, Macau and Japan. Our experienced someone else's intellectual property, you can deal with this Macau Department, permits us to provide our clients with a 2016 and Intellectual Property Team of the Year 2017 universities in this country. More information attorneys, lawyers, and specialists provide professional complex area of law successfully through Giant Group. Tel: (853) 2837 2623 timely notice of their intellectual property matters. We by ESQ Nigerian Legal Awards. We will continue to regarding this firm could be found from the website services of highest quality while maintaining costs at Fax: (853) 2837 2613 also prepare and register license agreements. advise clients on patent strategy in Nigeria, Ghana, above-identified. Tel: +886-2-8768-3696 efficient level with rational charge. OAPI and ARIPO. Fax: +886-2-8768-1698 Website: www.ipsol.com.mo Address: Paseo de la Reforma 265, M2, Col. Y Del. Address: 13 Fl., 27 Sec. 3, Chung San N. Rd., Tel: +886-2-2517-5955 Website: www.giant-group.com.tw/en Email: [email protected] Cuauhtemoc, 06500 Mexico, D.F. Address: 1 Murtala Muhammed Drive, Ikoyi, Taipei 104, Taiwan Fax: +886-2-2517-8517 Email: [email protected] Contact: Emalita Rocha Tel: (5255) 5533 0040 Lagos, Nigeria Tel/Fax: 886-2-25856688/886-2-25989900 Website: www.lewisdavis.com.tw Fax: (5255) 5207 3150 Tel: +234 1 462 8360 / +234 806 680 3387 Website: www.deepnfar.com.tw Contacts: Marilou Hsieh, General Manager, Tel: +886-911-961-128 Email: [email protected] Website: www.goodrichriquelme.com Website: www.aluko-oyebode.com Email: [email protected] Email: [email protected] [email protected] Email: [email protected] Email: [email protected] Contact: C.F. Tsai, Yu-Li Tsai Amanda Kuo, Manager Contact: Lewis C. Y. HO Contact: Enrique Diaz [email protected] Tel: +886-2-87683696 #362 David M. C. HO Email: ediaz@ goodrichriquelme.com Contact: Uche Nwokocha, Partner Email: [email protected]
66 THE PATENT LAWYER CTC Legal Media CTC Legal Media THE PATENT LAWYER 67 TPL DOS 4pp RHP Start_TPL54:Layout 1 17/6/21 13:35 Page 68
To enter your firm in the Directory of Services section please email [email protected] Directory of Services MEXICO
TURKEY UGANDA UKRAINE
Destek Patent SIPI Law Associates Pakharenko & Partners Industrial and We are a multinational legal practice that has provided full SIPI Law Associates is a boutique commercial law Pakharenko & Partners provides full IP service coverage range Intellectual Property services including trademarks, practice in Uganda, with a bias to Intellectual Property in Ukraine, CIS countries and Baltic states and has patents, designs, plant variety protection and more since Law. Our IP advisory services cover all transactional offices in Kyiv and London. We pride ourselves on an Intellectual Property 1983. With more than 200 qualified in-house staff, aspects of Patents, Trademarks, Copyright, Industrial exclusive expertise and experience in the fields of IP including 50 patent and trademark attorneys, we are able designs, Trade Secrets and licensing aspects. The firm law, anti-counterfeiting and anti-piracy, pharmaceutical to assist domestic and international clients worldwide. philosophy is based on providing first class legal services law, competition law, advertising and media law, Address: Maslak Mah. Büyükdere Cad. No: 243 based on the integrity of our staff, giving our clients corporate law, litigation and dispute resolution. Kat:13 Spine Tower Sariyer/Istanbul sound legal and timely advice, as well as holding our Address: P.O.Box 78, 03150 Kyiv, Ukraine Tel: +90 212 329 00 00 clients’ information in the utmost confidentiality. Visiting: Business Centre 'Olimpiysky', Website: www.destekpatent.com Address: PO BOX 4180, KAMPALA, UGANDA 72 Chervonoarmiyska Str., Kyiv 03150, Litigation Email: [email protected] Visiting: Jocasa House, Third Floor, Unit 5 Plot Ukraine Contact: Claudia Kaya 14 Nakasero Road. Tel/Fax: +380(44) 593 96 93 ([email protected]) Tel/fax: +256 393 272921/ +256 414 +380(44) 451 40 48 Murat Bürkev 235391 / +256 752 403 763 Website: www.pakharenko.com ([email protected]) Website: www.sipilawuganda.com Email: [email protected] Simay Akba Email: [email protected] Contact: Antonina Pakharenko-Anderson ş ([email protected]) Contact: Paul Asiimwe; Dinnah Kyasimiire Alexander Pakharenko Licensing
UNITED STATES VIETNAM VIETNAM Enforcement
Entertainment Young & Thompson Annam IP & Law ELITE LAW FIRM Young & Thompson, established in 1903, is a full ANNAM IP & LAW is one of the most professional ELITE LAW FIRM is born to provide professional and service intellectual property law firm focusing on U.S. Intellectual Property & Law Firms in Vietnam, qualified legal services in the field of Intellectual patent and trademark prosecution of the highest quality member of APAA, INTA and VIPA. We provide our Property and Business Law in Vietnam as well as many and Sport Law while maintaining costs at a moderate level. Young & clients with a full range of IP services to protect their countries around the world such as Laos, Cambodia, Thompson has been recognized as an industry leader inventions, trademarks, industrial designs and related Myanmar and Thailand. Delivering success, effectiveness for innovation in new technologies and procedures, matters not only in Vietnam, but also in Laos, and safety to our clients is the ultimate goal of ELITE being among the first law firms adopting a paperless Cambodia, Myanmar and other jurisdictions. We also LAW FIRM. workplace, and co-developed an automated solution for provide our clients with legal advices on Finance and Address: 255 Hoang Van Thai Street, creating and executing all workflows. Corporate and Business Law. Copyrights Thanh Xuan District, Hanoi, Vietnam. Address: 209 Madison Street, Suite 500, Tel: (84 24) 3718 6216 Tel: (84-24) 37373051 Alexandria, VA 22314 Fax: (84 24) 3718 6217 Fax: (84-24) 37373056 Tel: 703-521-2297 Website: https://annamlaw.com/ Mob: (84) 904110976 Fax: 703-685-0573 Email: [email protected] Website: www.lawfirmelite.com Website: www.young-thompson.com [email protected] Email: [email protected] Email: [email protected] Contact: Le Quoc Chen (Managing Partner) Contact: Mr. Nguyen Tran Tuyen Contact: Andrew Patch Dzang Hieu Hanh (Head of Trademark Enrique A. Diaz [email protected] (5255) 5525 1422 Department) Jaime Delgado [email protected] (5255) 5207 5324 VIETNAM Subscribe now! Juan Carlos Suarez [email protected] (5255) 5207 9261 A subscription to The Patent Lawyer magazine will ensure that
you and your colleagues have detailed information on all the Guillermo Sosa [email protected] (5255) 5207 7561 Pham & Associates most important developments within the international patent Established in 1991, staffed by 110 professionals including 14 lawyers and 34 IP attorneys, law industry. Pham & Associates is one of the largest legal practices in Vietnam specialized in IP. The firm is The Patent Lawyer magazine is dedicated only to the patent one of the biggest filers of patents, trademarks and e-mail: [email protected] industrial designs each year and has been renowned industry and is written by patent experts for patent for appeals, oppositions, court actions and handling IP infringements. The firm also advises clients in professionals worldwide. website: www.goodrichriquelme.com all aspects of copyright law. A subscription includes a hard copy and an electronic copy Tel: +84 24 3824 4852 Fax: +84 24 3824 4853 which can be read easily on your smartphone or tablet. Website: www.pham.com.vn Paseo de la Reforma 265, M2 Email: [email protected] Contact: Pham Vu Khanh Toan, Managing Partner Tel: +44 (0)20 7112 8862 Fax to: +44 (0)20 7084 0365 General Director Col. y Del. Cuauhtemoc, 06500 Mexico, D.F. Tran Dzung Tien, Senior IP Consultant E-mail: [email protected] Tel. (5255) 5533 0040, Fax. (5255) 5207 3150
68 THE PATENT LAWYER CTC Legal Media 2021AIPPI World Congress Online
2021 AIPPI World Congress Online October 15 – 22, 2021
JOIN US
Early Bird Discount Available until 24 August! www.aippicongress.org
AIPPI FP.indd 1 18/06/2021 09:29