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 MEET THE EDITORIAL BOARD AR/VR TECHNOLOGY Ken Adamo – IP Attorney USA Simon de Banke – Founder & CEO, Ken has extensive trial experience as lead IP Centrum counsel before state and federal courts and the Simon de Banke is founder and CEO of the US International Trade Commission. high-tech-focused IP Services disruptor IP Centrum. Augmenting your IP Dr Saiful Khan – Potter Clarkson Enrique A. Diaz – Goodrich Riquelme Saiful is a Partner and Board Member at Potter Enrique is head of the Industrial and Intellectual Clarkson who practises in both the Electronics Property Department.