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Amgen v. Sanofi:
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An interview
with the USPTOFiling generative
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September /October 2023

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The Supreme Court
tackles patentenablementfindings in the case
McConkie reviews the
Craig Metcalf of Kirton
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An interview
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Front cover_TPL68_v3

THE PATENT LAWYER
Issue 68

EditorFaye Waterford
faye@ctclegalmedia.com
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ISSN 2051-3690

CTC Legal MediaCTC Legal Media

Editor’s
welcomeW

elcome to our AIPPI 2024 World Congress special edition! For thoseattending, we hope you enjoy your time in Istanbul. If you enjoy thisissue, visit patentlawyermagazine.com to access our latest issue
free upon release.
On May 18, 2023, the US Supreme Court solidified the enablement
requirement in the decided case of Amgen v. Sanofi, concreting that a patent
specification must be sufficiently detailed to enable a person skilled in the art
to make and use the same. Our cover story this issue details the case toprovide key takeaways for future enablement disputes. One not to miss!
Our guest interview this issue is with Kathi
Vidal, Director at the United States Patent
and Trademark Office. Kathi discusses themany highlights from her first year in the
Director’s chair along with key insights into
future developments.
Further, we have details on the successful
launch of the European Unitary Patent Court
including strategic consideration for
enforcement; updates on the recent changes
affecting technology transfer in Brazil; aninformative review of the introduction ofpatent punitive damages in China; a look into the available protection fortraditional knowledge in Africa; an assessment of data asset protections inrelation to AI inventions; and much more!
Our Women in IP Leadership segment features Winnie Tham of Amica Law
and Shu-Pei Oei of Palfinger Europe. Contact us to find out how you can
support the segment, a platform for women to share their experiences toencourage empowerment.
We hope you enjoy the issue, wherever you may be reading from!

“

Welcome to
our AIPPI 2024
World Congress
special edition!

”

Faye Waterford, Editor

Mission statement
The Patent Lawyer educates and informs professionals working in the industry by
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 andopinion. Important judgments are examined in case studies and topical issues arereviewed in longer feature articles. All of this and the top news stories are brought toyour desk via the printed magazine or the website www.patentlawyermagazine.com

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Find out more at www.pureprint.com/sustainability/

THE PATENT LAWYER

3

CONTENTS

Contents
September / October 2023

6

Meet the Editorial Board

36

Meet our Editorial Board members who help
determine the direction of this magazine.

8

Cover Story: Amgen v. Sanofi:
The Supreme Court tackles
patent enablement

Kevin Post, Kevin Angle, and Shong Yin of Ropes &Gray review the available forms of protection fordata assets, considering benefits and limitations
with specific attention to AI.

Craig Metcalf of Kirton McConkie reviews thefindings in the case that has solidified theenablement requirement for pharmaceuticals
in the US patent system.

12

An interview with Kathi Vidal,
Director at the United States
Patent and Trademark Office43

Kathi sits down with The Patent Lawyer to discuss
highlights from her first year as Director, sharing
insights into key developments that are striving fora secure future for the IP field.

16

The new European patent
landscape: what companies
should know
Dr. Michael Rüberg, LL.M., Dr. Dennis Kretschmann
and Dr. Matthias Hofmann detail the successful
launch of the European Unitary Patent Court,
explaining strategic consideration for enforcing
patents across the continent.

21

Technology transfer unlocked
in Brazil: breakthroughs inknowhow and patent licensing
Bruna Valois and Stefany Kokkinovrachos of Vaz E
Dias Advogados & Associados address the recentchanges affecting technology transfer with 10 key
points in favor of patent licensing agreements.

27

What you need to know about
China’s punitive damage forpatent infringement
Lunwei Huang, Partner at Beijing Sanyou IP Agency
Ltd., informs of the patent punitive damage systemthat has been introduced as part of the latest versionof Chinese patent law and provides advice andguidance for patent practitioners.

32

Safeguarding traditional
knowledge in Africa: legal
and ethical challenges

Overview of intellectual
property, contractual, andstatutory frameworks forprotecting data assets
in view of artificial
intelligence applications

Filing generative artificial
intelligence patentapplications at theEuropean Patent Office
Anna Błogowska, Junior Patent Specialist at
Patpol Kancelaria Patentowa, discusses pointers
for the patentability of generative AI in light of therecent boom while assessing the applicabilityof current EPO Guidelines.

46

THE PATENT LAWYER

68

How and why: standard
essential patent licensing
in India

73

76

10 of the best law firms
from each of the top
Asia-Pacific regions.

80

Current practice of patenting
new crystalline forms of
biologically active compounds
in the Russian Federation
Elena Nazina and Lev Zhilin of Gorodissky & Partners
detail the changes to Rospatent’s approach to thepatentability of crystalline forms that are resulting
in the termination of issuance or protection.

CTC Legal Media88

CTC Legal Media

Eurasian Patent Office:further developments inEurasian designs
Dr. Alexey Vakhnin discusses current developmentsof Eurasian Designs at the EAPO with Dr. Grigory
Ivliev, the President of the Eurasian Patent Office.
We are glad to introduce, prepared exclusively for
The Patent Lawyer magazine, the summary of therecent developments of the Eurasian Patent System.

93

Using ‘Common General
Knowledge’ to determine
obviousness
DPS Parmer, Special Counsel at LexOrbis, provides
guidelines for the use of common generalknowledge to support the application andsubsequent approval of a patent in India.

Rankings:
Asia-Pacific

Fair hearing: mapping the
intricacies of natural justice inintellectual property disputes
Tusha Malhotra and Yamini Jaswal of Anand &Anand detail the components of a fair hearing
with reference to various judicial precedents
specific to patent cases.

From past to present:
shifting interpretations of
The Mexican Patent Officeon divisional applications
Sergio Olivares, Daniel Sánchez and Rommy Moralesof OLIVARES compare the new approach todivisional applications implemented with the Federal
Law for the Protection of Industrial Property 2020
with the old to provide guidance for proceeding.

Featuring:
Winnie Tham,
Partner at Amica Law, and
Shu-Pei Oei, Global IP Team
Lead at Palfinger Europe

84

Ranjan Narula and Suvarna Pandey of RNA,Technology and IP Attorneys summarize threerecent decisions addressing the subject ofcontentious issues in SEP litigation.

An interview: inspirations,experiences, and ideas
for equality.

55

Expanding the USPTO’s
Director review process
David McCombs, Eugene Goryunov and Jonathan
Bowser of Haynes Boone evaluate the recent
updates that are set to adjust the procedure andexpand the scope of the Director review process.

Women in IP
Leadership:

Marisol Cardoso, Patent Consultant at Inventa,
details the available protection for traditional
knowledge crucial for the preservation of cultural
heritage and the promotion of fair and equitable use.

466

Potatoes - that’s all you need!
Maria Zamkova, CEO at Fenix Legal, details theweird and wonderful uses and inventions born fromthe humble potato in advance of Sweden’s annual
Potato Day.

49

32

Suspension of examination
for divisional applicationsin Japan while parent
is under appeal
Debora Cheng of Sonoda & Kobayashi Intellectual
Property Law details the process, eligibility,
advantages, and disadvantages of theintroduction of this new practice.

97

Creating patentable
AI inventions according
to EPO standards
Robert Klinski, founder of Patentship, explains thepatentability criteria for filling a grantable application
for AI inventions at the European Patent Office.

102 Directory of services
An A to Z list of the international law firms who
provide IP related services.

THE PATENT LAWYER

5MEET THE EDITORIAL BOARD
Pravin Anand: Managing Partner,
Anand & Anand. India
In a career spanning over four decades,
Pravin has emerged as an IP trailblazer
having strengthened India’s IP
jurisprudence with a practiceencompassing all areas of IP litigation
including patents, copyright, design,trademarks, enforcement and dispute
resolution.

Mark Bloom, CLP®, RTTP™: NSABP
Foundation, Inc. United StatesMark is the Director of Contracts for
the NSABP Foundation, Inc. (Pittsburgh,
PA, USA). The NSABP Foundation isa non-profit research organization thatsponsors and manages clinical trials
focused on treatments for breast andcolorectal cancer.

Rafael oversees the Patent, Trademark,
Copyright, Plant Breeder’s Rights, Internet, andEnforcement Groups. Served in the Mexican
Association for the Protection of Intellectual
Property AMPPI, AIPPI Mexican group. Current
Vice-Chair of AIPPI’s Standing Committee
on PCT. Appointed INTA’s Trademark Office
Practices Committee 2022-2023.

Noel Courage: Partner,
Bereskin & Parr.
CanadaNoel’s practice focuses on the patentingof biotechnological, chemical, andmechanical inventions. He also drafts andnegotiates IP agreements, such as
research collaboration agreements andlicences.

Eugene Goryunov: Partner, Haynes& Boone. United States

Jean-Christophe Hamann – CEO,IPSIDE INNOVATION. France/US

Eugene is an experienced trial lawyer
that represents clients in complex patentmatters involving diverse technologies.
He has extensive experience andregularly serves as first-chair trial counsel
in post-grant review trials (IPR, CBMR,
PGR) on behalf of both Petitioners andPatent Owners at the USPTO.

J.C. is EP Patent Attorney and US Patent
Agent. After working for research andIndustry, J.C. joined French IPSIDE Law
firm in 2009, part of SANTARELLI GROUP
and founded IPSIDE INNOVATION as US
subsidiary.

Stefan Schohe: Partner, Boehmert& Boehmert. Germany

Dr. Claudia Tapia: Director IPR
Policy and Legal Academic
Research at Ericsson. Germany

Stefan works primarily in the fields ofinformation technology, physics andmedical devices for domestic andinternational clients. Apart fromprosecution, a main part of his work islitigation, especially pre-litigation advice,representation of clients in court, andcoordinating international patent
litigation.

Claudia’s main responsibilities relate tostrategy, policy and research in the IP
field. Prior to joining Ericsson, Claudia was
the Director of IP Policy in the department
Patent & Standards Strategy atBlackBerry where she focused on IPR
policies in standards, global patent
policies, as well as licensing and litigation.

Sarah Taylor: Senior PracticeDevelopment Lawyer,
Pinsent Masons’ IP practice. UK

Osamu Yamamoto:Partner, Yuasa & Hara.
Japan

Formerly a practicing patent litigator, she
specializes in European patent matters. Sheadvises and supports her team and clients on
all aspects of patent law and litigation strategy
across all sectors, with a particular focus on
Life Sciences and Technology. Sarah has
written extensively on a wide range of topical
patent matters, including AI and UPC.

Osamu is a patent attorney specializingin the fields of biotechnology,
pharmaceuticals and diagnostics. Osamu
is extensively experienced in all aspect ofpatent issues in these technical fields.

The Patent Lawyer would like to thank the
Editorial Board for their time and support.
6

THE PATENT LAWYERMEXICO

Rafael Beltran: Principal & Partner,
Beltran Fortuny y Beltran Rivera,
S.C. Mexico

CTC Legal Media

Industrial andIntellectual Property
Litigation
Licensing
Enforcement
Entertainment
and Sport Law
Copyrights
Enrique A. Diazediaz@goodrichriquelme.com(5255) 5525 1422

Jaime Delgado

jdelgado@goodrichriquelme.com(5255) 5207 5324

Juan Carlos Suarez

jcsuarez@goodrichriquelme.com(5255) 5207 9261

Guillermo Sosa

gsosa@goodrichriquelme.com(5255) 5207 7561

e-mail: mailcentral@goodrichriquelme.com
website: www.goodrichriquelme.com
Paseo de la Reforma 265, M2
Col. y Del. Cuauhtemoc, 06500 Mexico, D.F.
Tel. (5255) 5533 0040, Fax. (5255) 5207 3150

AMGEN v. SANOFI

Craig Metcalf of Kirton McConkie reviews the findings in the case thathas solidified the enablement requirement for pharmaceuticals in
the US patent system.

On May 18, 2023, the United States
Supreme Court decided the case ofAmgen Inc. et al v. Sanofi et al.1 In thatcase, the Supreme Court addressed the patentrequirement of enablement under 35 U.S.C. 112(a).
Section 112 provides that a patent specification
shall contain a written description of an invention“in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected,
to make and use the same…”
The case arose from a dispute over an Amgen
patent claiming antibodies for use in the treatmentof elevated LDL cholesterol. LDL cholesterol issometimes referred to as “bad cholesterol”
because of its link with cardiovascular disease,heart attacks, and strokes. The antibodies at issue
in this case bind at a precise location on the LDL
molecule called PCSK9 and thereby prevent
impairment of the body’s mechanism for removing
LDL. The antibodies were found to bind PCSK9
in a special region that Amgen referred to as the“sweet spot,” a location where PCSK9 would
otherwise bind LDL receptors. “By binding there,
the antibodies block PCSK9 from binding to LDL
receptors.”2
Both Amgen and Sanofi were working in thisarea of technology, as were other pharmaceutical companies, including Pfizer and Merck.
Amgen and Sanofi both obtained patents covering specific promising antibodies for binding
PCSK9 to lower LDL levels in humans. Amgen’s
patent is US Patent No. 8,030,457, issued October
4, 2011 (the ‘457 patent). Both Amgen and Sanofi
later succeeded in getting FDA approval for
their preferred candidates and began marketing
pharmaceutical products containing the preferredantibodies under the names Repatha and Praluent
respectively.

8

THE PATENT LAWYER

Craig Metcalf

1

2

3

21-757 Amgen Inc. v. Sanofi(05/18/23)
Brief for Petitioners(Amgen), p. 10
US Const. Art. I, section 8,
cl.8.

Following the filing of its original patent application, Amgen again approached the UnitedStates Patent and Trademark Office (USPTO)
and filed two continuation applications relatingback to the original ‘457 patent filings. These applications later matured into US patent numbers
8,829,165 and 8,859,741 (the ‘165 and ‘741 patents).
In addition to claiming specific antibodies as set
forth in the original Amgen ‘457 patent, these newpatents claimed a genus of antibodies definedby the performance of specific functions: binding
to specific amino acid residues on PCSK9, andblocking PCSK9 from binding to LDL receptors.
Upon issuance of the genus claims, Amgensued Sanofi for patent infringement arguing that
Sanofi’s antibody product (Praluent) fell within
the scope of the claimed genus. Sanofi admitted
to infringement, agreeing that its antibody did fallwithin the scope of Amgen’s claimed genus, butargued that Amgen’s genus claims were invalid
for failure to provide enabling disclosure under
35 U.S.C. 112(a). The two then entered extensive
litigation, including two jury trials and two appeals
to the Federal Circuit. Ultimately, the Supreme
Court decided the matter holding that Amgen’s
claims were invalid for lack of enablement.
The Constitution provides Congress with thepower to “promote the Progress of Science andthe useful arts, by securing for limited Times to
Authors and Inventors the exclusive Right totheir respective Writings and Discoveries.”3
The entire patent system has sometimes been
described as a bargain, where an inventor discloses
an invention in exchange for a right to exclude
others from using that invention for a defined
period of time. The basic concept is that theinvention will be adequately disclosed so when
the patent expires, the public will have accessto the previously patented technology. Thus,

CTC Legal MediaCTC Legal Media“

However,when apatenteeexpands
the scope ofthe claims
to coveran entire
genus,
additional
problems incomplying
with theenablement
requirement
present
themselves.

”

4
5
6

7

8

9

Amgen v. Sanofi, Syllabus.
598 U.S. ___ (2023).
O’Reilly v. Morse, 15 How.
62 (1854).
The Incandescent Lamp
Patent, 159 U.S. 465 (1895)
Holland Furniture Co. v.
Perkins Glue Co., 277 U.S.
245 (1928)
Wood v. Underhill, 5 How. 1(1846)

patent using a filament of fibrous and textile
materials.7 Inventors Sawyer and Man obtained
a patent where they disclosed a lamp using
carbonized fibrous or textile material but included
a claim covering fibrous or textile materials
generally. However, the carbon paper material
disclosed in the patent specification did not function well. Thomas Edison entered the scene anddeveloped an incandescent lamp using bamboo
filaments. Sawyer and Man sued Edison for
infringement of their patent. The Court held thatthe patent was not enabled stating, “The factthat paper happens to belong to the fibrous
kingdom did not invent [Sawyer and Man] withsovereignty over this entire kingdom.”
The third case was Holland Furniture.8 In thatcase, the inventor developed a starch furniture
glue that had properties of previously usedanimal glues. The patent’s claims, however, went
beyond the specific glue developed by theinventor and instead claimed all starch glues ofa specific formulation. The glue was claimed
using functional language rather than by defining
physical or chemical characteristics. The Court
held that the claim was not enabled because it
extended beyond the specifications.
In a fourth case, Wood9, a generally defined
claim was upheld. In that case, the patent related
to a method for making bricks from coal dust
and clay. The patent included a general rule
about the proportion of materials to be mixed.
The Court upheld the claim indicating that someminor differences in the proportions are sometimes
required by the nature of the materials used, so
even though the claim was general in nature, it
was adequately enabled.
Turning to the Amgen patent, the Court found it
provided inadequate disclosure to enable a claim
to the entire genus claimed. It was agreed thatthe defined genus was large, possibly including
millions of possible antibodies. Nevertheless,Amgen insisted that its patent enabled the genus.
It is interesting to look at the specific disclosure
provided by Amgen. The Amgen patents eachprovide well over 300 pages of disclosure, which

Résumé
Craig Metcalf is a member of Kirton McConkie’s Intellectual Property
section with experience in litigation, government, utilities, and healthcare.
He has extensive experience in patents, trademarks, and copyrights andhas successfully drafted and prosecuted more than 1,000 US patents
and related foreign counterparts. He has worked in several technology
and industry areas, including medical devices, pharmaceuticals,
biotechnology, automotive, defense, chemicals, materials, mining,
explosives, and environmental.
Craig has been named as one of Utah’s Legal Elite in intellectual
property, is AV rated by Martindale-Hubbell, is a Top-Rated Lawyer by
Martindale-Hubbell, and is recognized by Mountain States Super Lawyers.

THE PATENT LAWYER

9AMGEN v. SANOFIAmgen v. Sanofi: The
Supreme Court tackles
patent enablement

the patentee upholds its end of the bargain.
From the Patent Act’s beginnings, Congresshas sought to ensure the benefit of this bargain
for the public by requiring the patent applicant
to deposit a “specification…so particular…as not
only to distinguish the invention or discovery
from other things before known and used, butalso to enable a workman or other person skilledin the art of manufacture…to make, construct, orused the same” (1 Stat. 110). Over time Congresshas left this “enablement” obligation largely
intact.4
As pointed out in the case’s opinion and briefing,
the current enablement requirement is similar inscope to the original Patent Act of 1790, which
required a patent to contain a “specification inwriting, containing a description…of the thing or
things…invented or discovered…so particular as
to enable a…person skilled in the art…to make,construct, or use the invention.” To enable aninvention, an inventor must provide a description
sufficient that a person of skill in the art canmake or use the invention without “undue
experimentation.”
In cases where the patent claim is directed toa single or limited number of fully definedembodiments, providing a description thatenables the use of the invention may be relatively
straightforward. For example, Sanofi pointed outthat the specific antibodies claimed in Amgen’s
original ‘457 were enabled because there wasadequate disclosure in the patent specification
to allow one of skill in the art to duplicate theclaimed, specific, antibodies of the claims.
However, when a patentee expands the scopeof the claims to cover an entire genus, additional
problems in complying with the enablement
requirement present themselves. As the Supreme
Court pointed out:
If a patent claims an entire class of processes,
machines, manufactures, or compositions ofmatter, the patent’s specification must enable aperson skilled in the art to make and use theentire class. In other words, the specification must
enable the full scope of the invention as definedby its claims. The more one claims, the more one
must enable. (emphasis added).5
The Supreme Court discussed three primarycases to illustrate this point. The first was theinventor Morse.6 In this case, Morse developed
an electromagnetic telegraph. While Morsedescribed specific structures of a telegraphsystem, one of his claims extended to “the useof motive power of the electric or galvanic
current…however developed…” The Court heldthat this claim was overbroad. The claim covered
all means of producing a telegraph, yet Morse
had only described his particular embodiments.
The second case discussed by the Court wasincandescent lamp patent, which involved a

AMGEN v. SANOFI10

In Re Wands, 858 F. 2d 731(Fed Cir. 1988) set forth
eight factors to consider
when deciding whether
claims are enabled andwhether they require“undue experimentation,”
namely (1) the quantity ofexperimentationnecessary; (2) the amountof direction or guidance
presented; (3) the
presence or absence ofworking examples; (4) thenature of the invention; (5)the state of the prior art; (6)the relative skill of those in
the art; (7) the predictabilityof unpredictability of theart; and (8) the breadth ofthe claims.

may come into play in cases like this one. The
Court pointed out that what is reasonable in any
case will depend on the nature of the invention
and the underlying art. The Court stated that
“despite recent advances, aspects of antibody
science remain unpredictable.” The Court
obviously did not accept Amgen’s argumentthat the roadmap rendered the art predictable.
The Court also discussed the use of examples,
stating that it may suffice to give an example (ora few examples) if the specification also discloses“some general quality…running through” theclass that gives it “a peculiar fitness for theparticular purpose,” citing the incandescentlamp case. Amgen’s patents provided examples,but the Court did not address why the examples
were considered insufficient.

Summary
Claiming a genus is a common technique inchemical and biotech patent practice. This technique includes the use of functional language
rather than physical characteristics or chemical
properties. Dealing with an invention that lends
itself to such claims has always presented challenges to chemical and biotech patent practitioners.
For the past 35 years, the factors of In Re Wands
provided requirements guidance.10 The Court

AMGEN v. SANOFI

include extensive data, drawings, sequence listings,
and 26 specific examples of antibodies within
the scope of the genus. As characterized by Amgen,
the patent specification sets out a step-by-steproadmap for generating antibodies within thescope of the genus. Amgen argued that thisroadmap is effective well beyond the 26 specificexamples disclosed. Amgen discussed in its brief
further experimentation, which had produced
an additional 384 antibody candidates. Amgen
also argued that the patent describes how, using
a claimed antibody, it is possible to make additional
antibodies using what they called the “wellknown technique” of conservative substitution.
In addition, Amgen pointed out that the two jury
trials resulted in verdicts upholding the patentson the enablement issue.
Sanofi, on the other hand, argued that Amgen’s
disclosure is only a trial-and-error process andthere is an “astronomically large number” of possible antibodies within the genus. Sanofi further
discussed that antibody science is unpredictable,
even though Amgen argued that its roadmap
never failed to successfully identify viable antibodies. Sanofi argued it is necessary to enable
the full scope of the claimed genus.
The Court ultimately agreed with Sanofi. In
doing so, it discussed some of the factors that

discussed several of the Wands Factors in Amgenv. Sanofi. However, in Amgen v. Sanofi, the Court
provided little specific guidance for drafting avalid application claiming a genus.
The Court emphasized the large number ofpossible embodiments that potentially fall within
the claimed genus. Even though Amgen presented
an extensive disclosure, including examples anda roadmap for locating claimed antibodies, theCourt believed that too much experimentation
was necessary to define the invention’s scope.
The Court stated that Amgen’s disclosure offered“little more than advice to engage in ‘trial anderror.’” The Court held that Amgen’s disclosure
forced scientists to engage in “painstaking
experimentation” to see what works. As a result,
the Court affirmed the holding of the Federal
Circuit that Amgen’s claims were invalid for lackof enablement.

Contact

Kirton McConkie
50 E. South Temple, Ste. 400, Salt Lake
City, UT 84111, US
Tel: +1 801 328 3600
kirtonmcconkie.com

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We’re here to protect it.
From bold technology to inspired creativity, CMS is ready to advise
on and actively defend your ideas, innovation and insight. With over
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see how your best thinking can remain your most valuable asset.

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THE PATENT LAWYER

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that helps clients to thrive throughtechnical rigour, strategic expertiseand a deep focus on partnerships.

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11

AN INTERVIEW WITH KATHI VIDAL, USPTO

Kathi sits down with The Patent Lawyer to discuss highlights from her firstyear as Director, sharing insights into key developments that are striving
for a secure future for the IP field.
Can you describe your pathway into IP andto your current role?
I was interested in everything in High School,especially math and science. I was encouraged
to go into the engineering field because there
weren’t that many women in the field at thetime. I ended up getting a job at General Electricworking in engineering. This was in the early 90’s.
I went through the Edison Engineering Program,which is a program, under Jack Walsh at thetime, where I rotated from one business unit toanother every six months. It gave me a reallywide exposure to different technologies. And it
was at that time that I was also pursuing mymaster’s degree in electrical engineering focusing
on artificial intelligence. I realized that as muchas I liked technology, what I really loved about it
was learning new technologies as opposed todeep diving into one specific area. When it cameto deciding whether to pursue a Ph.D. or to pivot,
I thought about this and the fact that even, as ayoung child, I always loved the law. That’s when
I decided that I’d go to law school and pursue a
career in IP.
Why did you aspire to become the Directorof the USPTO?
I’m the type of person that is happy doing what
I’m doing, and I always put my whole heart andmind into it. I never have a five-year plan; I justwant to do the best that I can and have the mostimpact for other people. When the position of
Director was mentioned to me, I thought about
the possibility of this role, the work that I had

12

THE PATENT LAWYER“

I just want
to do thebest that I
can andhave themost impact
for otherpeople.

”You’ve spent the last year, the first in yourcurrent role as Director, listening andgathering input from stakeholders, via
fireside chats and the ‘Engage with the
Director’ inbox. Can you recall some of theinsights that you found most valuable?
I would say two things really stood out to me:
first, we regularly request public comment, andrecently we did an ANPRM; when we read thecomments, for the most part, they tend to bevery binary because everybody is advocating forexactly what is best for them as a stakeholder
and not looking at the country as a whole. One
thing that really surprised me was that, when we
get people into a room, the conversation is different;
people understand what we need to solve for asa country, people understand what like-mindedcountries are facing, and the importance of an IP
ecosystem that is strong and works for everyone.
Once we have those discussions, we’re really able
to thread the needle. As an example, when I firstcame in as Director, the big issue facing the
USPTO was the SEP policy, whether to continue
with the 2019 policy or move forward with what

CTC Legal MediaWe aredoubling
down on our
pro bono
programs
so that more
people canparticipate
in theinnovation
ecosystemand securepatents even
if they don’t
have thefunding.

”been doing for other people, and how I could
amplify all of that in this position. I also thought
about the challenges our country faces, andother countries face, in terms of innovation andentrepreneurship and solving world problems.
The work our teams at the USPTO have beenable to accomplish in this past year and a quarterhas been incredible. My work as the Director isboth exhilarating and purposeful.

Kathi Vidal“

CTC Legal Mediathe vaccines to market. They also incentivized thecollaboration that was necessary. Because
companies had patents, they felt secure collaborating knowing what each was bringing to thetable. A strong IP ecosystem is what we need
not only for solving problems like those we
faced with COVID, but for job creation, for morestable jobs, for economic growth. When I getout and speak with folks, it’s very clear that,
although people may have different ideas ofwhat an ideal intellectual property system looks
like based on their own experiences, or basedon what may help their particular organization orcompany, everybody’s aligned with our higherlevel mission.
What element or experience in the past year
have you found most rewarding?
One is my visits to schools. Last year, in conjunction
with the National Inventors Hall of Fame® (NIHF),
the USPTO hosted over 280,000 children for
education related to IP and entrepreneurship.
Hearing six to nine year-olds talk about their ideas,
innovations, and the problems they want to solvein the world, giving them exposure to IP, and theknowledge that you can file for a patent at any
age, creates an energy and enthusiasm that is
so infectious. It just reminds me that children are
our future; we need to get out there and makesure that, as much as we’re working on solutions
at all levels, including in higher education, communities, in the military, we first and foremost needto make sure that we’re always there in the schools.
In June, I was at the Pearl Harbor-Hickam militarybase in Hawaii visiting students who were presenting innovations they were working on. One
nine-year-old girl had a phenomenal idea for adissolvable food bag for use in space to prevent
waste in space, and a boy had an idea forswimming gloves that collect plastic particulates
so that you could clean the ocean while you’reswimming. These are just a couple of theremarkable ideas that the students came up
with in a week in preparation for my visit.
Another element that I find really rewarding is
the number of positive comments I get from thepublic relating to specific people at the USPTO;
I can’t tell you how many inventors have named
their patent examiner, thanked me, and asked
me to thank their examiner for their great work.
I started an ‘Engaged the Director’ website so thatanyone could communicate directly with me; I
presumed that I’d get a lot of comments about
improvements, because I asked for those, but what
I didn’t realize was how many comments that I’d
get thanking me and specific employees; that
also gets me really excited. We have great, excellent, committed people here at the USPTO andnothing gives me more joy than to see themrecognized.

THE PATENT LAWYER

13

AN INTERVIEW WITH KATHI VIDAL, USPTO

An interview with Kathi
Vidal, Director at theUnited States Patent
and Trademark Office

was the draft 2021 policy. Looking at the comments,
people were full bore one way or the other on
the matter, but once I got people in a room
together and told them that I’m not here toserve any one interest, I’m here to hear fromeveryone and do what’s best for the country,
people had a lot of great ideas. When we cameto a resolution, by withdrawing the policies, people
understood why we made that decision.
Second, our country, our nation, and I would
apply this to like-minded nations as well, needs
the progress and growth that only IP protections
can provide. It’s what solved the COVID-19 crisis;
it’s how we got vaccines to market so quickly.
Patents incentivized the investments that brought

AN INTERVIEW WITH KATHI VIDAL, USPTO

Most
experts
agreethat fakes
account
for 3.3% toas muchas 7.5% of
global trade
which runs
into thehundredsof billionsof dollars
annually.

”

How do you currently measure the reliabilityof IP rights? And how will the USPTO work topromote efficient delivery of rights?
We have a number of metrics that check quality

14

THE PATENT LAWYER

within the agency on both the trademark andpatent sides of the house; we do regular quality
checks; we measure against statutory provisions;and we have feedback loops between the Patent
Trial and Appeal Board (PTAB) to make sure
we’re continuously learning and with the court
system to make sure we are up to date withcase decisions and potential impact.
I will say that what is equally important is how
people perceive the quality of our work. Are
people relying on the patent system, and is it
incentivizing innovation? Are the inventors werely on investing in the technologies that we’re
incentivizing people to create?
We will continue to work on improving boththe quality and the perceptions of the work that
we’re doing. We are investing in guidance andtraining and developing new tools to make surethat, as technology is evolving and converging
so quickly, we are ahead of the game. On thepatent side, we are using AI for routing andclassification to ensure the patent application is
assigned to an examiner who best understands
the technology. And, we have adapted our practices
so that examiners in one technology field whoare assigned an application that contains multiple
technologies can consult with examiners in othertechnology areas. On the trademark side, we
are using bots and other technological advances
to improve our processes for examination.
What new and persistent threats to rights
do you feel are currently underrepresented
and require more exposure within the
IP community?
One of my biggest concerns is counterfeiting
and piracy. While estimates vary as to the fullscope of counterfeiting for both physical andonline markets, and how much of global trade isin counterfeit goods, most experts agree thatfakes account for 3.3% to as much as 7.5% of
global trade which runs into the hundreds ofbillions of dollars annually and will soon, if notalready, cross the $1 trillion mark per year. Thismeans an astronomical amount of hard-earned
money is just flowing out the door because people
are ripping off products and selling them against
brand owners or content creators. Beyond this,these fake goods are hurting Americans andpeople across the globe every day, whether itbe through fires caused by faulty electronics,
safety devices like fake bike helmets that don’t
work or through medications laced with fentanyl.
We’ve been extremely focused on this; we’reusing awareness campaigns, including the Go for
Real™ campaign. We also work with countries
around the globe and on key trade routes tobuild their capacities and enforcement mechanism.
We work with other agencies in the United Stateson the same. And, we’ve just released a request

CTC Legal Mediafor comments to engage with our stakeholders
on best practices and what more we can do.
We’re also focused on any threat to the
USPTO itself. We’ve had people impersonating
the USPTO in an attempt to obtain money frompeople filing for patents and trademarks, andwe’ve had people who are misusing our processes
for personal monetary gain.
Lastly, we want to protect innovators andentrepreneurs everywhere, so one thing that
we’re looking at is a collaboration with the FBI
and others to make sure that startups andcompanies throughout the country are protectedfrom cyber threats and IP theft. We’re dedicatedto helping people that don’t have the funding to
be fully secure because it can cost a lot of money
to find solutions.
What would you identify as the key elementsof a robust IP ecosystem?
At the end of the day, we need to make sure that
we are protecting the technologies that need to
be protected and supporting innovation while
ensuring that we’re not overprotecting to thepoint where we’re stunting competition. That’s avery difficult line to draw and has become evenmore challenging with AI – determining inventorship if AI enables the invention, what types ofinnovation should be incentivized, what is obvious
and who is a person of ordinary skill in the art
given AI capabilities, and so forth. We need tocontinue to develop a system to support innovationand entrepreneurship, whether through awarding
a patent or registering a trademark, to growbusinesses, a system that people have faith in.
And, those with IP need a reliable and accessible
way of enforcing their IP.
How are you working in response to new andemerging technologies such as AI?
The bottom line is that the USPTO plays animportant role in both incentivizing and protecting
innovation in critical technologies such as AI
and other emerging technologies like quantum
computing, synthetic biology, blockchain, precision
medicine, and virtual reality, and we need to makesure this continues so that these technologies
can be brought to impact. We are working on
policy across the government so that commercial
impact is considered for that which can be
secured through IP – or can be stunted throughIP if it’s not done correctly. We also need to makesure that we’re supporting the full ecosystem so
we’re not only encouraging innovation but also
bringing that innovation to impact.
Under my leadership, we founded an AI/ET(Emerging Technology) Partnership and we areworking with that partnership, with other agencies
and with the Copyright Office to address the hard
issues such as inventorship, obviousness and

CTC Legal Media

person of ordinary skill in the art, in addition topolicies implicating the rights of copyright holders
and rights related to data.
Having compiled invaluable insight over the
past year, what passion project do you havefor the year ahead?
This year is about pushing things over the finish
line and finding ways to have impact at speed
and scale. All of the projects I’m working on are
passion projects, whether it’s trying to evolve
the rules around patents to make them stronger– that’s something we’re looking into in responseto stakeholder feedback – whether it’s strengthening our PTAB procedures, or collecting broad
feedback and distilling it to figure out how we
can thread the needle to make meaningful,sustainable change. We are digging deep whenit comes to AI and are working on inventorshipissues then turning to obviousness and personof ordinary skill in the art. We are focused onstandards and other issues at the intersection of
intellectual property and competition. We arefocused internationally to make sure we workwith like-minded countries and build andsupport strong IP ecosystems that grow jobs inall our nations and solve world problems. And,as I noted early in my term, I am also very
focused on counterfeiting and piracy, not only
because of the economic impact they have on
our nations, but also the harms and deaths theycause. Then, of course, there are other buckets
as well; expanding our bars so that more people
can participate before the USPTO, creating adesign bar that never existed before, expanding
the patent bar into technologies like computerscience that should be readily recognized, toexpanding the PTAB bar.
Then there’s everything that we’re doing aroundinclusive innovation and creating marketplaces
including for green technology. We want to get
out into more communities, and one of our big
focuses is the military, military spouses andveterans. Only by bringing everyone into theinnovation and entrepreneurship ecosystem
and giving them full access and support will all
our nations reach our full potential.

“

We areworkingon policy
across thegovernment
so thatcommercial
impact isconsidered
for thatwhich canbe secured
through
IP – or can
be stunted
through IP
if it’s
not donecorrectly.

”

Contactwww.uspto.gov

THE PATENT LAWYER

15

AN INTERVIEW WITH KATHI VIDAL, USPTO“

Turning to the 2022-2026 Strategic Plan,
can you tell us about:
How will you work to drive inclusive US
innovation and global competitiveness?
There are two main components to that goal: first,
we need to drive more innovation from more
people, including those already innovating; second,
we need to focus on driving innovation in key
technology areas. To do this, we are doubling
down on our pro bono programs so that more
people can participate in the innovation ecosystemand secure patents even if they don’t havethe funding. We are expanding our patent andtrademark resource centers at universities andlibraries around the country so people can go totheir local library and get help securing a trademark or patent. We’re offering a lot more programs
to meet people where they are. For example,
with Secretary of Commerce Gina Raimondo, I
founded the WE (Women Entrepreneurship)
initiative where we are focusing on bringing great
content to women who are interested in becoming
entrepreneurs. We’ve just started a mentoring
program for women too.
We have written an IP identifier tool for those
thinking about starting a business, and we’re trying
to transform the way that we conduct businessso that we appear less like a government institution
and more like a user-friendly business that’s
here to help. One of the things that we’re looking
at is what we send to people who first communicate
with us. Do we just send them a formal filing
receipt, or do we welcome them and let themknow about all of the resources that are available
to make them successful?
We also need to focus on key technology
areas, I just got back from hosting the IP5
meeting with the other four largest IP offices in
the world – Europe, Japan, Korea, and China –where the focus was on climate change. We’ve
put together a pamphlet that let’s everybody
know what the five offices are doing to incentivize
and drive innovation in the climate space and tobring that innovation to impact. We are focusing
on key technologies that will solve for world
problems but also on new and emerging technologies including artificial intelligence, andtechnologies such as pharma where people arebringing life-saving drugs and solutions to themarket.
As to AI, we’ve developed a new AI/ET technology
partnership because we want to use data andinput from stakeholders when creating solutionsin the space; we’re engaged with the community
regularly.

NEW EUROPEAN PATENT LANDSCAPENEW EUROPEAN PATENT LANDSCAPE

The new European
patent landscape: whatcompanies should know
Dr. Michael Rüberg, LL.M., Dr. Dennis Kretschmann and Dr. Matthias Hofmanndetail the successful launch of the European Unitary Patent Court, explaining
strategic consideration for enforcing patents across the continent.

A

fter more than 50 years of preparatory workand numerous setbacks, the European
Unitary Patent system entered into force
on June 1, 2023. For the IP world, this is a projectof the century, both in terms of its long and eventful history and its far-reaching effects. It has thepotential to fundamentally enhance the enforcement of patents in Europe and offers market
participants numerous new options.
The European Unitary Patent system comprises
on the one hand a new “European patent withunitary effect” (UP) in all participating EU member
states, and on the other hand a new Unified Patent
Court (UPC), which will decide on these unitary
patents, but ultimately also on all conventional
European patents (EP, or so-called “bundle
patents”).

Dr. Michael Rüberg, LL.M.

Standardized patent protection
in all participating EU countries
The aim of the Unitary Patent system is to establish
a more uniform approach to the enforcement anddefense of European patents in the various EU
member states. The already centralized grant andopposition procedures at the European Patent
Office (EPO) remain unchanged for this purpose.
However, the new system adds centralized postgrant infringement and revocation procedures.
In the new system, it is possible to file a request
for unitary protection with the EPO for each
European patent instead of validating the patentindividually in several countries. The unitary effectleads to unitary protection in all participating EU
countries (17 countries at the start of the system,
aimed at including, eventually, all EU member
states). Therefore, only one common annual fee
will have to be paid to the EPO to maintainprotection in all these countries. The unitary patent
will coexist with national patents and traditional
bundle patents.

16

THE PATENT LAWYER

Dr. Dennis KretschmannThus, once the patent has been granted by
the European Patent Office, the applicant will
have the choice of whether to opt for the new
Unitary Patent, or not. However, it is important tonote that the new patent system does not only
affect newly granted patents. All validations ofexisting bundle patents in countries that have
ratified the UPC Agreement are also subject tothe jurisdiction of the UPC – and are so by default.
However, during a transitional period of at least
seven years, patent owners can individually remove
their patents from the UPC system - the socalled “opt-out”. Then, only national courts willcontinue to have jurisdiction over these patents.
Patent owners can also re-enter under certain
conditions after they have opted out by withdrawing the opt-out. During the transition period,
there will also be an option to continue to bringpatent litigation before national courts for patents
that have not been opted out.
As of August 2023, about one third of all European
patents and applications had been opted out of thejurisdiction of the Unified Patent Court (UPC). While
this is a figure far from being insignificant, it needs
to be considered that it also leaves the remaining
two-thirds to the present jurisdiction of the
UPC.

Strategic considerations for
enforcing patents before the UPC

Dr. Matthias Hofmann

Holders of traditional bundle patents (EP) are now
faced with the question, with immediate effect andcontinuing during the entire transitional phase,
whether and under which circumstances theyshould enforce the IP rights in question before
the UPC, or whether preference should not begiven to national proceedings. The same applies,
and will apply even beyond that date, to ownersof parallel national patents and Unitary Patents(UP). For the owners of traditional bundle patents(EP), this question should best be asked at an

CTC Legal Media“

During the transition period,
there will also be an option
to continue to bring patent
litigation before national
courts for patents that havenot been opted out.

Résumés

”Dr. Michael Rüberg, LL.M., Attorney at Law
Michael Rüberg is an attorney at law with many years of experience inpatent litigation. In cooperation with patent attorneys from various
technical fields, he and his team of attorneys represent clients before
all infringement courts and in parallel litigation. At the same time,
Michael Rüberg is involved in the coordination of numerous major
patent litigation proceedings, also on an international level.
Dr. Dennis Kretschmann, Patent Attorney
Dennis Kretschmann focuses on the development and management ofpatent portfolios in the areas of physics, optics, electrical engineering,
IT, and software. He represents clients in examination proceedings
before German and international patent offices. Dennis Kretschmannalso has wide expertise in patent litigation matters. He regularly
conducts patent infringement and nullity proceedings before theGerman courts, and often coordinates cross-border infringement cases.
Dr. Matthias Hofmann, Patent Attorney
Matthias Hofmann focuses on examination, opposition, and appeal
proceedings before the European Patent Office and the German
Patent and Trade Mark Office. Most of his work is related to computerimplemented inventions, in particular relating to artificial intelligence.
He has in-depth technical expertise in the fields of machine learning,
medical imaging, video and image processing, computer architecture,telecommunications, and bio-informatics (computational genomics).

CTC Legal MediaTHE PATENT LAWYER

17

NEW EUROPEAN PATENT LANDSCAPE

18

THE PATENT LAWYER“

Patentapplicants
now havevariousoptions for
obtainingpatentprotection
in oneor moreEuropeancountries.

”

this risk can be mitigated by skillful filing strategies,
in particular by exploiting the possibility of obtaining
national property rights in parallel – a possibility
that has been newly created for Germany, so thatit does not necessarily have to discourage theuse of the new jurisdiction.
One disadvantage of the new system, and thisapplies equally to all areas, is of course its novelty
as such. This entails the unpredictability of certain
decisions due to the lack of real precedents in theinitial phase of the UPC, as well as the likelihoodthat in the initial phase almost any decision, eventhose of a purely procedural nature, can beappealed as long as there is no established caselaw practice to guide the way in this respect.
The general reluctance to be among the firstto test the system seems to be confirmed by therather low number of initial cases brought with
the UPC (about 25, as of August 2023). Also, mostof these cases have been brought in the German
local divisions, with the apparent hope of being
able to rely on the well-established German caselaw in patent matters for those areas of current
uncertainty. While the first decisions by theGerman local divisions have just recently (as ofAugust 2023) been handed down (on preliminary
injunction requests), most cases will not be
decided before mid-2024, so that only the
UPC’s own case law will start to develop. From
those preliminary injunction requests decided
already, one may draw the conclusion that thejudges will, as expected and at least initially,follow their national tradition and concepts, tothe extent allowed for in the new system.
Another factor to be weighed up when deciding
on whether to use the UPC will certainly be thecosts associated with enforcement, which cannot
be reliably estimated at present due to a lack ofpractice. However, it is probably quite certain
that, due to the challenges posed by the new
system to the conduct of proceedings, the legal
teams in the UPC will be larger than in national
proceedings, as a result of which the costs willconsiderably exceed at least one national proceeding as a comparative figure. Whether andto what extent this will also apply to parallel
national proceedings in multiple jurisdictions
remains to be seen. In certain constellations,however, the traditional approach of a lawsuit inGermany, for example, followed by an out-ofcourt settlement for the whole of Europe is likely
to remain the preferred path, also from a cost
perspective.
So, in summary, there is no clear “yes” or “no” tousing the new system. For some companies, “waitand see” may be the ideal way to gain initialorientation. However, whether the early phaseof the system does or does not also offer realentrepreneurial opportunities should at least be
considered.

CTC Legal Medianational
courtsnational validationtranslation if
necessary

EP application

only if no
opt-out

3 months

Search andExamination
Procedure

NEW EUROPEAN PATENT LANDSCAPE

early stage during the transitional phase since
there is a risk that the potential opponent mayotherwise take over the decision-making (ofwhether to stay in the UPC or opt-out) by simply
filing suit (in the form of a declaratory action for
non-infringement or a validity attack) in the system
to which the EP is currently assigned.
Companies must therefore know about thefactors to be considered when deciding for oragainst national jurisdiction in comparison with
the new UPC and how these should be weighted
in each case. Depending on the industry, this is
likely to be done with different emphases andfrom different perspectives. For example, one of
the great promises of the new system is thepossibility of obtaining a uniform injunction for
the first time across all countries (in the case ofa UP for all member states of the UPC, in the caseof an EP for all validation states that are also
members of the UPC). Also, one other important
promise is to recover damages uniformly and for
all countries in question. Compared to the conventional model of exemplary enforcement ofpatents in only one or two core markets, such as
Germany in particular, this is of particular interestand importance if the distribution structure of
the infringer gives reason to assume that they
will continue the infringement outside the coremarket in question, i.e., to simply “duck away” fromthe enforcement.
In this regard, the UPC’s simultaneous enforceability of an injunction and, where applicable, aseizure order, results in considerable commercialpressure on the infringer, in particular as no shiftingof manufacturing and/or distribution to otherrelevant markets in Europe will be allowed for. Thispressure, in most cases, will apply immediately
following a first-instance decision, which will bedeclared provisionally enforceable as a rule before
the new unified court. Not least for this reason, the
new system will also be attractive to those companies whose goal is not to obtain or defend an
exclusive market position, but who primarily
want to monetize the IP right in question.
In addition, for those patent owners who, due
to their own local manufacturing and/or sales
activities, seek an exclusive position in one of theEuropean countries that are traditionally rather
reluctant or inexperienced in enforcing patents(sometimes also referred to as “patent-poor countries”), will see in the UPC a welcome opportunity
to put competitors in their place even outside theusual core markets.
On the other hand, companies whose products
are covered by only individual patents (such as
pharmaceutical companies), will probably beafraid of the centralized, all-national parts of the
EP or the entire UPC and will carefully consider
whether a corresponding counter-reaction shouldbe triggered by an action before the UPC. However,unied patent
court„bundle patent“
in up to 39 countries
GRANT
unitary eﬀect
1 monthunied patent
court

request +translation„unitary patent“in 17 countries
request for searchand examination
DE application

dormant for up to 7 years

search / examination

Considerations on patentapplication practice withregard to the UPC
Patent applicants now have various options for
obtaining patent protection in one or more
European countries.
Anyone who only needs protection in one or two
European countries achieves this most costeffectively via national patent applications. German
patent applications in particular, with an application
fee of EUR 40 and an examination and search feeof EUR 350, remain very attractive.
Applicants seeking patent protection in three
countries are likely to achieve their goal mostefficiently with a classic European bundle patent.
With an opt-out, they prevent the bundle patent
from being destroyed in one fell swoop before
the UPC, but by withdrawing the opt-out they
still keep open the option of suing before the
UPC themselves.
Once protection is sought in four or morecountries, the Unitary Patent will usually be theleast expensive option – which is confirmed by
the fact that about 25 % of all European patents
granted in June and July 2023 have been given,
upon applicants’ request, unitary effect.
Although the unitary patent cannot be removed
from the jurisdiction of the UPC, it can be combinedwith a national patent, for example in Germany.
An interesting filing strategy can therefore be to
file a European and a German patent applicationin parallel. In the case of the German patent

CTC Legal Media“

Althoughthe unitary
patentcannot beremovedfrom thejurisdictionof the UPC,
it can be
combinedwith anational
patent.

”GRANT

national
courtsapplication, the filing of the request for examination
can be waived for seven years, so that the applicant
does not incur any costs during this time, apartfrom the filing fee and the (small) renewal fees.
Especially when protection is sought in several
countries, the Unitary Patent offers a cost-effectiveway (compared to the previous European bundle
patent) to obtain patent protection in the territoryof 300 million inhabitants. Thus, there is considerable hope and trust that the Unitary Patent
system will also be a success internationally.

Contact

BOEHMERT & BOEHMERT
Anwaltspartnerschaft mbBPettenkoferstraße 22,80336 Munich, Germany
Tel: +49 89 55 96 80
Fax: +49 89 55 96 85 090
info@boehmert.dewww.boehmert.com

THE PATENT LAWYER

19

zuykov.com

IP LITIGATIONPATENTS

Bruna Valois and Stefany Kokkinovrachos of Vaz E Dias Advogados &Associados address the recent changes affecting technology transfer
with 10 key points in favor of patent licensing agreements.

T

TRADEMARKS

Russian Federation

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he end of 2022 brought significant andhighly anticipated changes that made thetechnology transfer environment in Brazil
more flexible and less dependent on stateauthorizations. On 30 December 2022, Federal
Law 14,286/2021 came into force one year after
its publication, which revoked 14 federal laws andover 40 regulations regarding foreign exchange
controls, making more flexible remuneration
remittances overseas. In addition, Provisional
Measure 1,152 of 28 December 2022 was publishedby the President of Brazil, and it was converted
into a Federal Law by Law 14,596 of 15 June 2023,
implementing the transfer price mechanism inBrazil, which directly affects licensees’ ability to
use the payment of royalties for tax deductibility
purposes.
As a result of the new law coming into force,on 30 December 2022, the Brazilian Patent andTrademark Office (BPTO) published the minutesof an Internal Meeting held on 28 December 2022,
convened by the institute’s presidency, which,amongst addressing procedural recordation
matters, recommended the acceptance of knowhow licensing. Additionally, the BPTO sought tostreamline and facilitate the procedure and formalities for the recordation of licensing agreements,aligning the new procedures with the demandsof a modernized technology market. These
recommendations were incorporated in the
BPTO’s Ordinances 26 and 27 of 11 July 2023,
thereby revoking the previous Ordinances 70
and 199/2017.
This article aims to briefly address the recentchanges and for this purpose depicts 10 of the

CTC Legal Media“The
benefit ofadopting abundleagreementis thefact that thelicensor will
be able tochargeroyalties
fromdifferent
rights but
always indiversetimes.

”

most relevant points that evidence the parties’
freedom to contract in patent licensing agreements,
the remaining required formalities and legal
inconsistences applicable to such agreements.

1. Accelerating royalty
remittances: removing
unnecessary layers at
the Central Bank and BPTO
Concerning the procedure and government
approvals for licensing agreements, Law 14,286/
2021 has phased out the requirement to register
these agreements before the Brazilian Central
Bank (BACEN) and recordation at the BPTO for alicensee to proceed with royalty remittances
overseas to licensors. Therefore, licensees may
now remit royalties at any commercial bank byevidencing the amount due for royalty payment
and the withheld income tax. This new proceduresignificantly speeds up the operationalizationand timeframe for remittances abroad sincea layer of governmental approvals has been
eliminated.
Notwithstanding, recordation of licensing
agreements at the BPTO is still required under
Articles 62 and 211 of the Industrial Property Law
and specific taxation. Therefore, recordation isrequired for the following purposes: (i) effectiveness of the agreement before third parties,
especially if licensor has granted exclusive rights
and licensee is required to enforce in court suchrights, or when the granted rights encompass
licensee’s ability to defend or join licensor indisputes involving the licensed patents or trademarks in courts against infringers; and (ii) qualify

THE PATENT LAWYER21TECHNOLOGY TRANSFER UNLOCKED IN BRAZILIP SERVICES IN RUSSIA, EURASIA, UAE
AND CIS COUNTRIESTechnology transfer
unlocked in Brazil:
breakthroughs in knowhow and patent licensing

TECHNOLOGY TRANSFER UNLOCKED IN BRAZIL

2. Empowering patent filing:
if it is not protected in Brazil,
you cannot license it

Bruna Valois

Stefany Kokkinovrachos

The filing of a patent application at the BPTO is afundamental step to protect an invention, especiallyto secure exclusive rights, for commercial exploitation, and to prevent third parties from using, selling,or producing their creation without authorization.
It should be highlighted that the PCT filing ofa patent application is a way to facilitate patent
protection in various countries around the world
through a centralized request submitted to theWorld Intellectual Property Organization (WIPO)
and corresponding national phase entry. Thus, only
the PCT filing does not directly secure the applicant
a patent filing in Brazil. The applicant must proceedwith the “national phase entry” and obtain a patentapplication number to consolidate the local filing.
Further to that, it is noteworthy that as of the
publication of this article, the prevailing rules on
remittances are that only patents duly granted
are entitled to royalty remittances, although the
exploitation of patent applications can generateroyalties. Collection of royalties in patent applications, in this case, may involve the opening ofan escrow account in Brazil where the collectedamounts will be deposited until the licensed
patents are duly granted, when remittances will
be permitted. Thus, the general rule now is thatpayments abroad for the exploitation of patentapplications are not permitted.

Résumés
Bruna Valois, Associate at Vaz e Dias Advogados & Associados
Bruna is an attorney-at-law and has specialized in international
business transactions since 2014. She conducts the preparation andnegotiations for commercial agreements in the technology sphere,
especially in relation to matters such as technology transfer, licensingof industrial property rights, copyright agreements, merchandising,research and development, franchising, distribution, confidentiality
agreements, and other agreements involving the exploitation of
intellectual property rights.
Stefany Kokkinovrachos, Associate at Vaz e Dias Advogados &Associados
Stefany is an attorney-at-law and focuses on administrative and court
procedures in patents, industrial design, and software. Additionally,
she works in the intersection between technological innovation anddigital law, especially in matters linked to Blockchain, NFTs and data
privacy protection with the elaboration of strategies and policies forthe protection of confidential information and elaboration of strategic
alliances in the technological field, advising national and international
clients regarding intellectual property and digital law.

22

THE PATENT LAWYER

Given that the BPTO recently decided to allow
collection and remittances of royalties abroadfrom trademark applications, such inconsistency
raises concerns as there is no normative or legal
justification for such a hindrance related to patentapplications. This situation presents a discriminatory
legal treatment towards patent applications, while
also constituting an unwarranted interference inthe contractual relationship between private
parties.
When questioned, the BPTO stated that they had
merely followed the decisions of the Internal
Meeting held on 28 December 2022, wherein
the possibility to extend payment of royalties forthe exploitation of patent and industrial design
applications was discussed, but not approved.
This matter deserves close monitoring, and webelieve it is necessary to submit a formal request
for the BPTO to reconsider such restrictive andoutdated interpretations.

3. To infinity and beyond?
Do not overextend your license
Article 2 of Ordinance 26/2023 establishes thatthe maximum contractual period of a patent
license cannot exceed the period of the related
patent protection. The duration of the patent
protection is determined by the Industrial
Property Law, which according to Article 40 willbe 20 years as from the date of the patent filingin Brazil.
We should recall that the Supreme Court
issued a decision on 6 May 2021, which declared
unconstitutional the sole paragraph of Article 10of the Industrial Property Law and therefore
eliminated the 10-year minimum period fromthe date of patent grant. The effects of theSupreme Court’s decision were already addressedin The Patent Lawyer publication,1 but we briefly
highlight that different rules apply to specificsituations. For example, granted patents benefitingfrom the exceptional and revoked period of
the Sole Paragraph of Art. 40 of the IP Law may
be licensed to the last day of the maximum
10-year period of patent protection. New patentapplications filed at the BPTO after 14 May 2021
and granted after the said date, the maximum
patent validity and licensing will be 20 years
from filing.
Moreover, bundle agreements comprising
the licensing of patents, know-how, trademarks
and the rendering of technical assistance to thelicensee are accepted for recordation. The
benefit of adopting a bundle agreement is thefact that the licensor will be able to charge
royalties from different rights but always indiverse times. Therefore, matching the licensing
with the industrial property rights is of theessence to prevent the overextension of thelicense.

CTC Legal Media“
4. Breaking barriers:
flexible royalty rates
between related parties
Another significant development in
the technology transfer scenario thatstems from Federal Law No. 14,286/2021
is the parties’ freedom to set the royalty
rates in cases where the foreign licensor andthe local licensee hold a controlled-controlling
relationship. Article 50 of Law 8,383/1991
formerly restricted the payable royalties toa foreign licensor on the fiscal deductibility
ceilings stipulated by Ministerial Ordinance436/1958, which ranged from 1% to 5% of
the net revenue derived from the sales of thelicensed product, contingent on the specific fieldof activity. For instance, patent licensing within
the oil and gas industry would grant licensees
the opportunity for deductions of the royalty
remittances up to 5% of the net revenue. This
amount was used as a maximum royalty charge
for licensing of related companies.
This freedom for the parties to negotiate anddetermine royalty rates has successfully bridged thegap in treatment between agreements involving
related and unrelated contracting parties, as theprevailing laws no longer impose limitations on
setting royalties and remittances abroad when
the parties are related. Accordingly, under the
new ruling, the remuneration to a foreign licensor
will no longer be bound by fiscal deductibility
ceilings. Remuneration will be established on
customary and prevailing market and industry
prices, or through negotiations based on theparties’ bargaining powers.

5. Transfer price is now aprevailing taxation rule
Federal Law 14,596 of 15 June 2023 determined
the new transfer pricing rules that are alignedwith the standards of the Organization for
Economic Cooperation and Development (OECD)and adopted the “arm’s length principle” for

CTC Legal Media

cross-border transactions involving
related companies. The transfer
pricing rules reach out to royalties
and therefore the pricing for licensing
technology between a parent and its
subsidiary or affiliate company should be
set as though they were not related. The
prices commonly practiced in the international
market should prevail and further to that the
fiscal deductibility rules set out by Normative
Ordinance 425 of 1958 that limit licensee’s
deductions from royalty will not be applicable.
Although the new transfer price ruling will bein effect from January 2024, foreign licensors may
choose to adopt them from now on during theirlicensing relationship with their local subsidiary.

Article 2 ofOrdinance
26/2023
establishes
that themaximum
contractual
period ofa patent
licensecannotexceed theperiod ofthe related
patentprotection.

”

6. Know-how licensing is a reality
Know-how licensing is classified as a type oftechnology transfer agreement that permits
unpatented technology to be exploited by alicensee. Up to Ordinance 26/2023, the BPTO
adopted a very restrictive attitude for the recordation of these agreements since the agency
understood that know-how did not generate aproperty right to the owner (licensor). Therefore,
its disposal to a licensee meant the effective
transfer of rights without the possible return of
the know-how to the licensor after the contractual
relationship ended. In practical terms, the BPTO
demanded the elimination of covenants or wordingthat would demand the licensee to cease the useof the technology when termination derived fromthe licensor’s fault. Further to that, recordation

1

VAZ E DIAS, José Carlos.
“A New Dress Code forPatent Validity in Brazil:
the Practical Effects of theSupreme Court Decision”.
The Patent Lawyer – May/
June 2021. Pages 24-29.

THE PATENT LAWYER23

TECHNOLOGY TRANSFER UNLOCKED IN BRAZIL

licensee for tax deductions on the remitted
amount to licensor, which is still mandatory until
the end of 2023.

TECHNOLOGY TRANSFER UNLOCKED IN BRAZIL

The transfer
pricing
rules reachout toroyalties
andtherefore
the pricing
for licensing
technology
between a
parent andits
subsidiaryor affiliatecompany
should be
set asthough they
were notrelated.

”7. Trade secret is now secretin licensing
Under the new recordation ruling provided by
Ordinances 26 and 27/2023, confidentiality clauses
are fully accepted in licensing agreements withno restrictions. This is a particular relevant development in know-how licensing, since the BPTO did
not accept clauses in the know-how licensing
agreement that stipulated confidentiality for aperiod longer than five years as from the date of
information disclosure or the agreement’s
termination.
In view of the new ruling, contractual clauses
dealing with confidentiality issues are now
accepted without time limitations insofar as theinformation is classified as a trade secret, prevailingthe provisions of Items XI and XII of Article 195 of
the Industrial Property Law. In this regard, it isalways important to recall that trade secretdemands in compliance with three essential

requirements, as follows: (a) the information musthave commercial value; (b) the information underprotection must be new and confidential and (c)the holder of the information may evidence thatit has taken measures to make the information
secret, such as adopting confidentiality agreements.

8. Navigating the differences:
technical assistance v.
specialized professional
technical services
Agreements of a technical assistance nature andthose involving specialized technical services
have significant differences, especially regarding
their recordation at the BPTO that may be relevant
for foreign investors. Technical assistance refers
to agreements in which one company provides
knowledge, technical support, or training to anothercompany with the objective to effectively transfer
knowledge. Therefore, these agreements necessarily involve the transfer of know-how, the disposalof complementing technology under a patent
license through service rendering, or specifictechniques to improve the production, operation,or performance of certain products or processes.
As per Article 211 of the Industrial Property Law,
technical assistance agreements are subject torecordation before the BTPO.
On the other hand, specialized professional
technical services pertain to agreements in which
a company or person provides highly specialized
technical services or consulting to anothercompany, without involving the disposal of technology, training, teaching, or know-how supply
in general, even if the service is rendered withthe purpose of enabling or facilitating the use ofa patent or manufacturing process. Such services
involve commercial agency and logistics services,preventive maintenance or repair services,
refurbishment provided on equipment or
machinery, supervision services for assembly or

disassembly, and installation of equipment or
machinery, broad consulting services, among
others. They are enlisted by BPTO Resolution
156 of 9 November 2015 and therefore they are
not subject to prior recordation at the BPTO,
which further eases the possibility of remitting
remuneration overseas for service rendering.

9. Recordation formalities:
lessened but still required
Normative Ordinances 26 and 27/2023 set out theformalities that the contracting parties will needto comply with for the purpose of recording
licensing agreements at the BPTO, as follows:
1) Patent licensing agreements need to
be executed by the contracting parties,
observing the peculiarity that digital
signatures without certification provided
by public and private organizations thatassure the veracity of the signaturesby public and private organizations(so-called ICP Brazil) are now accepted.
To evidence the veracity of the digital
signatures, the contracting parties are
to provide an extract that detects andconfirms that the signatures are reallyof those who sign the agreement.
2)

Notarization of the signatures issued bya notary public and the Apostille underthe Hague Convention are no longer
requirements when adopting the digital
signatures. However, these formalities
are to be complied with when thesignatures are placed by hand.

3)

Execution of the agreement by two
witnesses is no longer required when
one of the parties is Brazilian andtherefore the licensing agreement is
executed in Brazilian territory. However,when the licensor and licensees areforeign parties and execution takes
place outside Brazilian territory, theexecution of the agreement by two
witnesses is required.

4)

The initials of the contracting parties oneach page of the agreement wereregarded as an unnecessary formality
and therefore the requirement was
revoked by Ordinances 26 and 27/2023.

10. Fostering innovation:embracing ownership ofimprovements in licensing
agreements
The Industrial Property Law explicitly stipulates
in its Article 63 that any improvements made to24

THE PATENT LAWYER

CTC Legal MediaCTC Legal Mediaa licensed invention will be considered theproperty of the party who effectively conceived it.
Therefore, if the licensee develops any improvements to the licensed invention, the ownership of
those improvements will rest with the licensee,
regardless of any contractual provision to thecontrary. Consequently, Article 63 prevents thepresumption that such improvements automatically belong to the licensor.
Nevertheless, article 63 opens the opportunity
for the contracting parties to negotiate a grantback clause and set the licensor’s priority rightto obtain a license to use any improvements ordevelopments resulting from the licensee’s useof the licensed patent. This clause may serve as
an incentive for the parties to share knowledge
and invest in further advancements. Therefore,
the licensor and the licensee possess the liberty
to determine the terms and conditions of thelicensing agreement, provided that they adhere to
the general principles of good faith and contractual
balance, and do not violate any laws or regulations regarding the economic order and freecompetition.

Concluding Comments
The recent novelties and subsequent regulatory
adjustments have significantly transformed thelandscape of patent licensing and technology
transfer in Brazil, leading the way for a more
flexible environment, making it easier for national
companies to invest in foreign patent and technology transfer. Moreover, the new procedures
provide various advantages and opportunities
that foster a more efficient and open environment,
encouraging collaborations, and embracing
modern practices in patent licensing, technology
transfer, and, consequently, innovation.
The ongoing evolution of these regulations will
likely continue to attract investments and further
establish Brazil as a destination for industrial
property ventures.

“

The licensor
and thelicenseepossess theliberty todetermine
the terms
andconditionsof thelicensingagreement,
providedthat they
adhere to
the generalprinciples
of goodfaith andcontractual
balance.

”

Contact

Vaz e Dias Advogados & Associados
Rua da Assembleia 10 – Section 2422
Centro – Rio de Janeiro/RJ, Brazil
Tel: +55 21 3176 6530
Fax: +55 21 3176 6528
mail@vdav.com.br
www.vdav.com.br

THE PATENT LAWYER

25

TECHNOLOGY TRANSFER UNLOCKED IN BRAZIL“

would be limited to a period of five years with apossible additional period of up to five years uponjustification, which restricted royalty remittances.
After this period, the technology would be regarded
as fully and permanently transferred to the local
licensee.
Such restrictions finally ended on 11 July 2023
with Article 2, Item III, letter A. of Normative
Ordinance 26/2023, since the BPTO recognized
the possibility of recording know-how licensing.
The argument was grounded on the fact thatsuch kind of licensing would be considered as a
non-typical agreement dealt with adequately
under Articles 104 and 425 of the Civil Code.
Therefore, recordation of know-how licensing isfully accepted, which means that greater contractual period and clauses determining the licensee’s
obligation to cease the use of the know-how
licensing with termination will be fully accepted
if set by the contracting parties.

PUNITIVE DAMAGES: CHINA

What you need toknow about China’s
punitive damage forpatent infringement
Lunwei Huang, Partner at Beijing Sanyou IP Agency Ltd., informs of thepatent punitive damage system that has been introduced as part of thelatest version of Chinese patent law and provides advice and guidancefor patent practitioners.

P

unitive damage for patent infringement,
which was introduced along with the newversion of the Chinese patent law, is oneof the latest developments of the intellectual
property system of China.

Résumé

History of China’s punitive
damage system
In the background of strengthening the protectionof intellectual property rights, China has gradually
established the punitive damage system for IP
rights. As a timeline, in 2013, punitive damage

Lunwei Huang

Lunwei Huang is a partner and seniorpatent attorney at Beijing Sanyou IP
Agency Ltd., a full-service IP law firm
founded in 1986 in Beijing, P.R. China.
With over 20 years’ experience in the
IP industry, he has wide-ranging
expertise, including patent prosecution,
invalidation, reexamination,
administrative and infringement litigation,patent search and analysis in the fields ofsemiconductor, telecommunication,
electronics, and computer systems, etc.
Author email: lunwei.huang@sanyouip.com“

At last, punitive
damage is introduced
into the amended
Patent Law, whichcame into effect as ofJune 1, 2021.

CTC Legal Media”THE PATENT LAWYER

27

PUNITIVE DAMAGES: CHINA

In principle, there are three ways todetermine the base damage, whichis the actual amount of losses sufferedby the plaintiff, the amount of profits
obtained by the defendant from
infringement, and a multiple oflicensing fees.

”

for trademark infringement was first introduced
into the Chinese Trademark Law, then the multipleof punitive damage was increased from “one tothree times” to “one to five times” in the amended
Trademark Law and the Anti Unfair Competition
Law which were both issued in 2019. In the “Civil
Code”, which came into effect as of January 1,
2021, it is stipulated that “in case of intentional
infringement of the intellectual property rights
of others, and the circumstances are serious,
the infringed party has the right to request
corresponding punitive damages.”. In March 2021,

28

THE PATENT LAWYER

If it is difficult to determine the losses of theright holder, the benefits obtained by the
infringer, and the patent licensing fee, thecourt may determine a damage of not lessthan 30,000 yuan but not more than
five million yuan based on factors such as
the type of patent right, the nature andcircumstances of the infringement.
The damage should also include thereasonable expenses paid by the rightholder to stop the infringement act.”
According to Article 71 of the Chinese Patent
Law and the Supreme Court’s Judicial Interpretations, for the punitive damage to be applicable,
two conditions need to be met: the infringement
is intentional, and the circumstance is serious.
The Judicial Interpretations make it clear thatto determine whether the infringement is intentional, factors such as the type of intellectual
property, status of the IP right, popularity of therelated product, and the relationship between
the defendant and the plaintiff or interested
parties need to be comprehensively considered.
The Judicial Interpretations further lists, nonexhaustively, five specific scenarios that can beconsidered “intentional”:
1. The defendant continues to conduct the
infringement act after being notified orwarned by the plaintiff or interested party;2.

3.

The defendant has such relationships
with the plaintiff or interested party aslabor, labor service, cooperation,
licensing, distribution, agency, or
representative, and has had access tothe infringed intellectual property rights;

4.

The defendant has business dealings
with the plaintiff or interested party, or
has conducted negotiations with theplaintiff or interested party to reach acontract, and has had access to theinfringed intellectual property rights;

5.

The defendant commits piracy or
counterfeiting of registered trademarks.

Conditions for the punitive
damage to be applicable
Article 71 of the Chinese Patent Law is the legal
basis of patent infringement damage, it reads:“The damage for infringement of patentrights shall be determined based on theactual losses suffered by the right holder
due to the infringement or the benefits
obtained by the infringer from theinfringement; If it is difficult to determine thelosses of the right holder or the benefits
obtained by the infringer, it shall bereasonably determined by referring toa multiple of the patent licensing fee. For
intentional infringement of patent rights, if
the circumstance is serious, the damage
may be determined between one and fivetimes the amount determined according to
the above method.

CTC Legal MediaThe defendant or its legal representative
or manager is the legal representative,
manager, or actual controller of theplaintiff or interested party;

Although the Judicial Interpretations are notdedicated to patent issues, the above-listed
scenarios one-four are applicable to patent
infringements.
While as to whether the circumstance isserious, the Judicial Interpretations specifies the

CTC Legal Media“

If it isanticipatedthat punitive
damage isapplicable,
claim itwhen filinga lawsuitagainst the
infringer.

”

factors to be comprehensively considered, suchas the means and frequency of infringement, theduration, geographical scope, scale, consequences of the infringement, and the actions of theinfringer in the litigation process. Further, theJudicial Interpretations lists, non-exhaustively,
six scenarios that can be considered “serious”:
1. The defendant conducts the same orsimilar infringement act again after
being subjected to administrative
penalty or court judgment for
infringement;
2.

The defendant commits infringements
of intellectual property as a profession;

3.

The defendant has behaviors of forgery,
destruction, or concealment of evidence
of infringement;

4.

The defendant refuses to comply witha preservation ruling;5.

The profit gained from the infringement
or loss suffered by the infringement issignificant;

6.

The infringement may endanger
national security, public interests, or
personal health.

Calculation of the amount ofpunitive damage
According to Article 71 of the Chinese Patent
Law and the Judicial Interpretations, the amountof punitive damage is to be determined as abase damage multiplied by a multiple.
In principle, there are three ways to determine
the base damage, which is the actual amount oflosses suffered by the plaintiff, the amount of
profits obtained by the defendant from infringement, and a multiple of licensing fees. The
plaintiff may request the court to determine thebase damage by adopting any one of thesethree ways as per their applicability. However, if
all these three ways for determining the basedamage are not applicable, the court may reject
the plaintiff’s request for punitive damage.
As a negative example, in a design patent
infringement case judged by the Beijing IP
court, the punitive damage requested by theplaintiff was rejected, as the plaintiff failed tosubmit any evidence of the actual loss suffered fromthe infringement, and the benefits obtained by the
defendant from the infringement cannot be determined from the evidence on record, furthermore,
the involved patent has no history of licensing.
The statutory damage cannot serve as a basefor punitive damage. The theory is that the statutory
damage is determined by comprehensively

THE PATENT LAWYER

29

PUNITIVE DAMAGES: CHINA“

China’s Supreme Court issued the Judicial
Interpretations on Application of Punitive Damage
in Litigation of Intellectual Property Right Infringements, which stipulates specifically the conditions
for the application of punitive damage and methods
for determining the amount of punitive damage.
At last, punitive damage is introduced into theamended Patent Law and Copyright Law, which
both came into effect as of June 1, 2021. Up tothis point, China established a relatively comprehensive and complete punitive damage system
for intellectual property.
Before June 1, 2021, on which the amended
patent law came into force, China followed theso-called make-whole principle. Just as stipulated
in the patent law before the amendment, “theamount of damage for patent infringement shallbe determined based on the actual losses
suffered by the patentee due to the infringement”.
The make-whole principle means that, theoreticallythe damage ruled by the court can cover theactual loss of the patent right holder caused byinfringement, however in practice, it is often difficult
to provide adequate evidence for determining
the actual loss suffered by the right holder. As aresult, a majority of China’s patent infringementcases end up in statutory damage, which is determined by the judge at his discretion when the rightholder fails to provide evidence for determining
the loss suffered due to the infringement, theinfringer’s profit from the infringement, and thelicensing fees of the patent right, and in manycases is significantly lower than the actual loss.
Therefore, there was a long-standing outcry about
patent infringement that the cost is too high forprotecting one’s patent right while is too low for
the infringers.
The punitive damage system, along with othernew features in the latest version of the Chinese
Patent Law, bring changes to this situation.

PUNITIVE DAMAGES: CHINA

Examples of courts’ rulings
involving punitive damage

30

THE PATENT LAWYER

The court
won’t rule
punitivedamage if
the plaintiff
does notrequest it.

”

The punitive damage system is going to bringchanges to the patent ecology of China, andaccordingly, the patent practitioners need to get
prepared for this punitive damage system.
For the patent right holder, more leverage may
be gained from the punitive damage to deter
potential infringements. To take advantage of thepunitive damage, it is advisable to, before filingan infringement lawsuit against the infringer,
collect evidence that can prove the intentionality
and seriousness of the infringement, with reference
to the standards introduced above.
If it is anticipated that punitive damage isapplicable, claim it when filing a lawsuit against
the infringer. Anyway, the court won’t rule punitive
damage if the plaintiff does not request it.
In addition, it is crucial to collect evidence andmaterials for determining the base damage,bearing in mind that only the actual amount oflosses suffered by the plaintiff, the amount of
profits obtained by the defendant from the infringement, and the licensing fees of the involved patentcan be served as the base damage, excluding
the statutory damage.
On the other hand, the defendant or anyone
alleged of patent infringement needs to bewary of the punitive damage. For example, if an
infringement warning letter is received from apatentee, it is advisable to conduct an infringement analysis in a timely manner, and, if theanalysis indicates a rather high possibility of
infringement, it is prudent to stop implementing
the involved patent immediately to avoid anintentional infringement.
In addition, it is advisable to conduct an FTO
search before launching a new technology. The
FTO search helps to eliminate any risk of patent
infringement, and, even if there are any patents
missed in the FTO search, an FTO report furnishedby a third party indicating the to-be-launched
technology does not infringe any known patents
is perfect evidence of non-intentionality of any
potential infringements, and therefore avoiding
the punitive damage.

For more than ﬁve decades, GLP
has been offering a complete range ofservices for the structured protection of
intellectual property.
Our Clients range from artisans
to some of the Top Companies on theForbes 500 list, for whom we provide
initial consultancy and support inlawsuits – both as plaintiff anddefendant – throughout the world.

Patents
Trademarks
Designs
IP Strategy
Online Brand Protection
Legal Actions & Contracts

The quality of our services,commitment of our team andability to achieve our Clients'
highest objectives, led GLP
to be a world-class leader
in the IP business.

XT
NE

Since punitive damage was introduced into China’s
patent system, there has been an increasing
number of court rulings involving punitive damage.
For example, in a design patent infringementcase judged by Shenzhen intermediate court,
the plaintiff and the defendant are both online
store operators, and the plaintiff is the holder ofa design patent. The plaintiff accused thedefendant of infringing the design patent andhas raised a number of complaints in the online
mall, however, instead of stopping the infringement, the defendant continued selling theinfringing goods by simply changing to other
URLs, and this process lasted for more than
three years. Based on these facts, the court
determined that the infringement was intentional
and the circumstance was serious, and ruled apunitive damage of two times.
In another patent infringement case, theplaintiff sued the defendant for two times. For
the first lawsuit, the two sides reached a settlement which included stopping infringement
and paying damage by the defendant, however,the defendant continued selling the infringing
goods after the settlement, and then the plaintiff
sued the defendant for the second time andrequested punitive damage. In the first instance,
the court did not rule on punitive damage, thenthe plaintiff appealed to the Supreme Court. In
this case, the Supreme Court ruled punitive
damage by reasoning that the infringer has
reached a settlement to stop the infringementwith the patent holder, but sells the same infringing
product again; it can be determined that the
infringement is intentional and the circumstanceis serious, and thus punitive damage is applicable.
In addition, the Supreme Court ruled that the amountof damage agreed in the earlier settlement canbe taken as a base for the punitive damage.

“

Advice to patent practitioners

Pushing
forwardthe world’s
greatest
innovators.

Our mission at GLP is to provide top level
intellectual property services to the bestcompanies in the world.

196
7

considering many factors including intentionality
and seriousness of the infringement, and therefore the statutory damage alone may have apunitive nature. In addition, the expenses incurredby the plaintiff for stopping the infringement acts
cannot be included in the base damage.
Further, it is also stipulated that if the court orders
the defendant to provide the account books andmaterials related to the infringement, but thedefendant refuses to provide or provides fakeaccount books and materials without justified
reasons, the court can determine the base of thepunitive damage by referring to the plaintiff’s
claims and evidence.
As to the multiple, it is to be determined bytaking into account factors such as the level ofthe defendant’s subjective fault and the seriousness of the infringing act.

Your European
IP Partner

Contact

Beijing Sanyou Intellectual Property
Agency Ltd.
16th Fl. Block A, Corporate Square,
No.35 Jinrong Street, Beijing, 100033,
P.R.China
Tel: +86 10 88091921, 88091922
sanyou@sanyouip.com

CTC Legal Media

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IPR FOR TRADITIONAL KNOWLEDGE
IPR FOR TRADITIONAL KNOWLEDGE

Safeguarding traditional
knowledge in Africa: legal
and ethical challenges
Marisol Cardoso, Patent Consultant at Inventa, details the available
protection for traditional knowledge crucial for the preservation of cultural
heritage and the promotion of fair and equitable use.

Africa covers about one-fifth of the total
land surface of the Earth and is home
to a rich and diverse animal, plant, andmarine biodiversity. Africa is also a land rich incultural diversity and Traditional Knowledge (TK),
i.e., the ancestral knowledge passed down fromgeneration to generation.
TK can be found in several contexts, fromagriculture to medicine and cosmetics. However,since this invaluable heritage holds promising
opportunities, especially for biotechnologicalinnovation, its preservation and recognition facelegal and ethical challenges.

Legal framework:
Various African countries have implemented laws,
regulations, and policies aimed at safeguarding
TK, by covering aspects such as access to natural
resources, fair and equitable use of knowledge,
and participation of local communities in decisionmaking related to the exploitation of the knowledge.
Intellectual property protection:
Traditional knowledge and traditional culturalexpressions are products of creative intellectual
activity and therefore fall within the scope of
intellectual property. Even though TK as such knowledge that has ancient roots and is often
oral - is not protected by conventional intellectual
property (IP) systems, innovations based on TK
can be protected as patents, utility models,trademarks, industrial designs, and geographicalindications.
Patent protection covers products or processes
that provide a new way of doing something, forexample, new tools and techniques for hunting
or agriculture. Distinctive Indigenous words, names,and symbols can be protected as trademarks.
Industrial design rights can be used to protect
handicrafts, such as jewelry, to textile and fabric32

THE PATENT LAWYER

Marisol Cardoso

Résumé
Marisol Cardoso
is Patent Consultant
at Inventa. She
works mainly on
patent registration,
drafting, andprotection
applications.
Author email:mcardoso@
inventa.com

designs. The geographical indication provides
the holders of traditional knowledge with means
to differentiate their product from a competitor
by highlighting its link with the geographicalarea from which it comes.
African IP landscape encompasses tworegional offices (the African Regional Intellectual
Property Organization – ARIPO – and the African
Intellectual Property Organization – OAPI), which
provide practical ways to use the patent system
and mitigate the burdensome acts and high costsof filing independent applications in a pluralityof countries.
ARIPO is mandated under the Swakopmund
Protocol on the Protection of Traditional Knowledge
and Expression of Folklore to protect TK holders
against any infringement of their rights and protect
expressions of folklore against misappropriation,
misuse, and unlawful exploitation. The Protocolhas been in force since May 11, 2015, and has
eight contracting states: Botswana, Malawi,
Namibia, Rwanda, Gambia, Liberia, Zambia, andZimbabwe.
Even though OAPI is committed to contributing
to the promotion and protection of the expressionof cultural and social values, there is no regulationor protocol in force today.

culture) and harvested material (cut flowers, fruit,
foliage) of the new variety over a period of time.
However, not all African countries have a sui
generis system designed to reflect the particularitiesof breeding, cultivation, and use of new varietiesof plants. Currently, only Morocco, Tunisia, Egypt,
South Africa, Kenya, Tanzania, and OAPI (with its
17 Member States from West and Central Africa)
have joined the Union for the Protection of New
Varieties of Plants (UPOV).

Plant breeders’ rights
Many plant-based technologies justify the commercial interest in natural medicinal resources
and associated traditional knowledge used in
the development of new plant varieties.
Plant varieties can be protected by an alternative
sui generis system called Plant Breeders Rights(PBR) or Plant Variety Rights (PVR), wherein thecultivar must be new, distinct, uniform, and stable.
The rights are granted to the breeder and givethem exclusive control over the propagating
material (including seed, cuttings, divisions, tissue

International agreements:
Various international agreements, such as theConvention on Biological Diversity (CBD) and the
Nagoya Protocol, provide legal boundaries forthe protection of traditional knowledge and accessto genetic resources.
The CBD is a multilateral treaty that covers
biodiversity at all levels (ecosystems, species,and genetic resources) and which aims to develop
national strategies for the conservation andsustainable use of biological diversity. With 196
nations, the CBD has near universal participation

CTC Legal Media

Trade secret
The concept of a trade secret is to protect
confidential information (i.e., undisclosed knowledge) that would give a competitive advantage
to a company, for example, a manufacturing
technique or the components of a composition.
As regards traditional knowledge, the understanding is divided: while some people agree thatthe knowledge maintained within a community
could be considered a trade secret, others argue
that the secrecy requirement is not fulfilled
once the information is disclosed amongst theindividuals of such a community. Another point
relies on the fact that, even though TK has culturalvalue, the information must have commercial value
to be eligible for protection as a trade secret.

CTC Legal Media“

Patentprotection
coversproducts orprocessesthat provide
a new wayof doing
something,for example,
newtools andtechniquesforhunting or
agriculture.

”among the countries of the United Nations.
The Nagoya Protocol is a supplementary agreement to the CBD and provides a transparent
legal framework for the effective implementationof one of the three objectives of the CBD: the fairand equitable sharing of benefits arising out of
the utilization of genetic resources.

Ethical framework:
African ethical frameworks prioritize the idea thattraditional knowledge belongs to the communities
that have generated and nurtured it. This further
involves acknowledging the spiritual, historical,
and social significance of the traditional practices,
ensuring they are treated with sensitivity andrespect.
Due to this fact, decisions about the use, sharing,and management of TK should be made collectively by the community and any commercialization
or utilization must lead to tangible benefits for thecommunities that contributed to the knowledge.
Obtaining informed consent from the indigenous
communities before using their TK is a central
issue to be addressed. Such a measure ensuresthat the communities are aware of how theirknowledge will be used, and they have the rightto approve or reject such usage.
In the same way, collaborative research
involving indigenous communities is encouraged.
Incorporating indigenous perspectives canfoster mutual learning and, at the same time,
guarantees that research and documentation of
traditional knowledge are done in consultation
with and approval from the community.
The pursuit of harmonious collaboration between
researchers, governments, and local communities
is a way to make it possible for TK holders toreceive fair recognition for their contributions tohumanity’s scientific and cultural heritage. The
objective is not related solely to the protection

THE PATENT LAWYER

33

IPR FOR TRADITIONAL KNOWLEDGE“

itself, but also to ensuring that no commercial
use is carried out without prior consent and fairbenefit-sharing.
TK databases
The importance of preserving traditional knowledge
for future generations involves strategies todocument, protect, and pass on the information.
Some African countries have created registries
and databases where the communities canregister their Traditional Knowledge and medicines.
In this way, documented evidence of the ownership and existence of this knowledge isestablished.
The National Indigenous Knowledge Management System (NIKMAS1), for example, is responsible
for the recording, storing, management, anddissemination of Indigenous Knowledge (IK)
and related information in South Africa. Up to themoment, the system has registered 33 communities
and over 2400 IK holders.
The Ghanaian Indigenous Knowledge ofMedicinal Plants2 aims to identify, capture, document,
and digitize indigenous knowledge, on forest foods
and medicinal plants. The project, which aims topreserve IK information and explore its importancein livelihood and socio-economic development
in Ghana, embraced nine communities.
At a regional level, the PROTAbase3 is a
repository of around 7,000 useful plants in tropical
Africa. It details their scientific and vernacularnames, geographical distribution, properties, anduses, including diagrams and images.

Other issues to address:
Cultural appropriation
The traditional knowledge is subject to cultural
appropriation when members of a majority group

34

THE PATENT LAWYER

Plant
varieties
can beprotected
by analternative
sui generis
systemcalled Plant
Breeders
Rights (PBR)
or Plant
Variety
Rights(PVR).

”

adopt cultural elements of a minority group in
an exploitative, disrespectful, or stereotypicalway.
The African traditional knowledge represents
a living repository of centuries-old wisdom,
acquired through intimate relationships with theland, biodiversity, and ancestral practices. Cultural
appropriation from such TK allows mass-produced
products to flood the market and compete withproducts that were legitimately produced bysuch communities, which are “prevented” fromcommercializing their culture in their own ways
and for the benefit of their own families.
Exploitation and biopiracy
Biopiracy, the unauthorized appropriation of
traditional knowledge and genetic resources offarming and indigenous communities, continues
to be a significant threat.
Apart from the effects on biodiversity (such as theextinction of existing species and deforestationof the wildlife), the biopiracy undermines therights of local communities due to the gaining of
exclusive monopoly control through patents or
intellectual property by an external entity.
Thus, strengthening patent examination
procedures to prevent the grant of unjustified
patents based on existing traditional knowledge
is essential.

Conclusions:
The protection of the traditional knowledge derived
from African ancestral wisdom is crucial not only
for the preservation of cultural heritage but also
for the promotion of fair and equitable use, as
well as sustainable development.
Developing robust and enforceable legal
frameworks, construed with ethical principles,
requires establishing sui generis systems or
adapting existing laws to accommodate the uniquefeatures of TK.
By respecting the rights of local communities
and fostering collaboration, this legacy willcontinue to thrive and contribute to the wellbeing of people not only in Africa, but all over
the world.

Contact

1
2

3

https://nikrs.dst.gov.za/
https://www.csir-forig.
org.gh/tikfom/database
https://prota.prota4u.org/

Inventa
Alameda dos Oceanos 41K-21,
Parque das Nações, 1990-207 Lisbon,
Portugal
Tel: +351 213 150 970
info@inventa.com
www.inventa.com

CTC Legal MediaPROTECTING DATA ASSETS

Kevin Post, Kevin Angle, and Shong Yin of Ropes & Gray review the available
forms of protection for data assets, considering benefits and limitations withspecific attention to AI.

Data’s value has been increasing as everlarger data sets are required to train
large language models used in machinelearning (ML) and artificial intelligence (AI). For
example, OpenAI’s GPT-3 model was trained on
45 terabytes of data.1
Recognizing this value, several online
platforms have implemented technical and legal
measures to protect their data. In early 2023,
Reddit updated its terms of service to preclude“training a machine learning or AI model.”2 Twitter
has limited the number of posts accessible byusers to 2,400/day to limit server “strain” andreduce harvesting of its data.3
This paper examines various frameworks
for protecting data against this backdrop ofcompeting interests. For discussions herein, data
sets are generally classified into: (a) public data
(e.g., publicly accessible from a website); and (b)restricted data (e.g., restricted behind credentialed
portals or by agreement).

Intellectual property rights
A first category of protection for data is derived
from intellectual property rights, namely copyrightand trade secrets.

36

THE PATENT LAWYER

“

To be
protectable
under
copyright,
data mustreflect somemodicum of
creativity.

”

Copyright
Copyright protects creative expression and allows
a proprietor to control the reproduction, distribution, and preparation of derivative works. A data
proprietor may assert copyright infringement tocurb unauthorized uses of individual data records
and compilations of data in both public data andrestricted data. However, the data proprietor
must have sufficient rights in the data to havestanding to assert copyright infringement andmust show that the data is protectable bycopyright.
To be protectable under copyright, data mustreflect some modicum of creativity. Purely
functional or factual data records (such as
experimental data) are less likely to be protectableby copyright. On the other hand, user-generated
content, alone as individual records or combined
and made accessible as a compilation throughan online platform, may reflect the minimum
needed creativity.4 Even if the platform proprietor
wants to use copyright to restrict the copying ofuser-generated content from its platform, it may
do so only if the users, with whom the copyright
initially vests, have assigned sufficient rights tothe platform proprietor to do so.5

CTC Legal MediaPROTECTING DATA ASSETS

Overview of intellectual
property, contractual, andstatutory frameworks
for protecting data assets
in view of artificial
intelligence applications

Trade secrets
Trade secrets generally protect information that
has independent economic value derived from its
secret status. Trade secrets are often intertwinedwith contractual confidentiality obligations with analleged misappropriating party. As such, trade
secrets are often actionable only against a party
that is in contractual privity with the data proprietor.
Trade secret protection may be asserted overrestricted data that is already subject to confidentiality provisions, both as individual records or
as a compilation. On the other hand, trade secretprotection is less likely to apply to indi-vidual
records of public data, which are typically madeaccessible through online platforms. But a
database of records of public data may beprotected by trade secret, even if individual
records are not.6
For example, a court noted that “taking enoughof [the database’s information] must amount tomisappropriation of the underlying secret at somepoint,” and distinguished between “implicit
permission to access as many quotes as humanly
possible” from “collect[ing] more quotes than any
human practically could” by a robot.7
Even if a database of records may be protectable
by trade secret, a proprietor must demonstratethat reasonable steps were taken to protect theconfidentiality of the database. For example,
a database was not subject to trade secretprotection where the contents of the databasehad been previously distributed 2,500 times inprinted form with insufficient restrictions.8

Contractual protections
A second category of protection for data is derived
from contract law. Access to data, whether
through online platforms or commercial engagements, is governed by agreements between thedata proprietor and the data user. These are often
deployed on online platforms as terms of use
agreements, acknowledged during an enrollment
process. Data proprietors may assert breach ofcontact claims based on alleged violations ofrestrictive covenants in these agreements.
Success of such assertions varies widely
depending on the terms of the agreement, andthe manner by which the agreement was allegedly
assented. For example, click-wrap agreements
are more likely to be enforceable due to affirmative
assent and notice, compared to shrink-wrap orbrowse-wrap agreements. Courts havedetermined that contractual restrictions against
copying of data from a website for commercial
purposes are enforceable where a user
sufficiently assented to the terms.9
Contracts can be customized between parties
and therefore may specify restrictions that are notfully captured within intellectual property rights
discussed above. For example, a data proprietor

CTC Legal MediaTHE PATENT LAWYER

37

PROTECTING DATA ASSETS

Kevin Post is a partner in Ropes & Gray’s
intellectual property litigation practice in
New York. Kevin works extensively withhigh-technology and life science
companies handling their complex
patent disputes. He has litigated patent
cases in nearly every significant patentjurisdiction in a variety of technical fields,
including cellular telecommunications,networking, electronics, computer
systems and software, networkarchitecture and security, e-payments,
e-commerce, imaging systems, GPStechnology, process control systems,
mechanical devices, pharmaceuticals,
and biotechnology. Kevin has tried
multiple cases involving standardessential patents and FRAND licensing
issues, including breach of contract
cases.
Kevin Angle is counsel in the data,
privacy & cybersecurity group based in
Ropes & Gray’s Boston office. He
represents a broad range of companies
on privacy and cybersecurity matters,
guiding clients through the existing
patchwork of US federal and state laws
as well as the European Union’scomprehensive General Data Protection
Regulation (GDPR) and otherinternational privacy and cybersecurity
laws. Kevin also advises clients on
privacy and cybersecurity matters arisingin complex corporate transactions,
helping clients to realize the value ofdata and protect it post-close, along withassisting clients in responding to data
security incidents ranging fromransomware to payment card theft in
both the United States and multijurisdictional settings.
Shong Yin is an associate in Ropes &Gray’s intellectual property litigation
practice in Silicon Valley. His practiceincludes patent, copyright, trade secret,and data privacy matters. In patentmatters, his experience spansprosecution, litigation, and licensing.
Shong leverages a combination of deep
technical knowledge with legal analysis
to advise clients on complex issues at
the intersection of law and hi-tech.

38

THE PATENT LAWYERKevin Post

Kevin Angle

Shong Yin
Ropes & Gray summer associates
Tianqin Zhao, Alexandra Sahara,
and Lisabelle Panossian contributed
to this article.

may rely upon contracts to assert a breach of a
restriction against copying in cases where the data
proprietor may not have sufficient rights to usergenerated content to assert copyright
infringement.10
However, because contracts are customizable,
they should be carefully tailored to preserve
rights and remedies. For example, broad mutual
limitation of liability provisions would limit a data
proprietor’s recovery of monetary damages.11
Data proprietors may tailor provisions to avoid
having to elect among different causes of action.
For example, courts have determined that breachof contract claims are not pre-empted by copyright
infringement actions, where the breach of contract
claims include an additional element thatprohibited certain acts in copying andreproduction beyond what were governed bycopyright law.12

state, personal jurisdictional concerns over alleged
unauthorized uses would need to be investigated.
Common law trespass has also been asserted
by data proprietors against alleged unauthorizedusers. However, courts have analyzed these
trespass theories using a similar framework as theanti-hacking statutes. For example, courts havedeclined to find violations of trespass where there
was no actual harm to underlying computer
systems, regardless of whether public data16 or
restricted data17 was in dispute. The courts haveAnti-hacking statutes andcommon law trespass
A third category of protection for data arises fromanti-hacking statutory rights and common law
trespass rights. Anti-hacking statutes are intended
to protect computer systems from unauthorizedaccess. The relevant federal statute is theComputer Fraud and Abuse Act (CFAA),
accompanied by several state statutes including
the California Comprehensive Computer Data
Access and Fraud Act (CDAFA), Florida Computer
Abuse and Data Recovery Act (CADRA), and theVirginia Computer Crimes Act (VCCA).
The CFAA precludes access to a protectedcomputer in a way that “exceeds authorizedaccess,” or “without authorization.” However, thescope of these protections has been limited
through a series of court decisions. In 2021, the US
Supreme Court curtailed the scope of “exceeds
authorized access”13 by determining that violationsof contractual restrictions were not actionable
under “exceeds authorized access.” In 2022, theNinth Circuit determined that the CFAA likely
would not prohibit the access of public data,
though it left open the possibility that the CFAA
could prohibit improper access to restricted data.14
The recoverable remedy under the CFAA has also
been limited to costs of investigation, to preclude
recovery of consequential harms such as
misappropriation of data as a result of the
improper access.
State anti-hacking statutes, in contrast to the
CFAA, may provide additional remedies in addition
to the CFAA’s recoverable costs of investigation,and may also include additional elements against
unauthorized data users. For example, one court
has determined that an alleged violation of thestate anti-hacking statute was still actionable,
even while dismissing an alleged violation of the
CFAA.15 However, because the statutes vary by

CTC Legal Media

also distinguished between the harms of trespass,compared to other common law claims such as
conversion.18

Data protection frameworks
require tailoring
A summary of the various data protection frameworks and associated tradeoffs is provided
in the table below. The strategy for dataprotection and assessment of risks will likely betailored to the specific context of the data

IPcopyright

IP-tradesecretContract

CFAA

State Law
AntiHacking

CommonLaw
Trespass

Public Data

Y

N

Y

N

VariesN

Restricted Data

Y

Y

Y

Y

Y

Y

Data Record

Varies bydata type

Varies bydata type

Y

Y

Y

Y

Database

Y

Y

Y

Y

Y

Y

Contractal
Privity

N

Y

Y

N

N

N

CTC Legal MediaTHE PATENT LAWYER

39

PROTECTING DATA ASSETS

Résumés

PROTECTING DATA ASSETS

2

Courts have determinedthat contractual
restrictions against
copying of data from a
website for commercial
purposes are enforceable
where a user sufficiently
assented to the terms.

”

3

4

5

6
7
8

9

proprietor or data user.
For example, if the data proprietor is seeking
to protect public data, the proprietor may opt forprotection based on copyright and contractual
restrictions, rather than trade secrets. If the
proprietor is seeking to protect public data
against users without contractual agreements
in place, it may elect to do so primarily based on
copyright, but after ensuring that it has sufficientrights to the disputed data.
The contours of these various frameworks
have been reflected in past and pending disputes.
For example, in the hiQ v LinkedIn dispute,
LinkedIn had sought to stop hiQ from copying
public and restricted user profiles from LinkedIn’ssite. Although a series of decisions determinedthat hiQ’s acts were not violations of the CFAA,
the court ultimately determined that hiQ’s
activity could be breaches of contract, unlessdefenses of estoppel applied.19
Recent litigation around data rights in thecontext of artificial intelligence platforms also
demonstrates the recognition of data’s value
and risks arising from the various data protection
frameworks. One class action has relied upon40

THE PATENT LAWYER

Brown, Tom, et al. “Language models are few-shot learners.” available
online from https://arxiv.org/abs/2005.14165.
See Reddit Data API Terms last Revised April 18, 2023 available online at
http://web.archive.org/web/20230418234231/https://www.redditinc.
com/policies/data-api-terms, at Sections 2.4 User Content, 3.2
Restrictions (“You must not … train a machine learning or AI model
without the express permission of rightsholders in the applicable User
Content”).
See “About Twitter limits” available online at http://web.archive.org/
web/20230401055003/help.twitter.com/en/rules-and-policies/twitterlimits.
Craigslist Inc. v. 3Taps Inc, 942 F. Supp. 2d 962 (2013) (Craigslist, aproprietor of a platform that provided user-generated advertisements,sought to restrict competitors from copying the advertisements from
Craigslist’s platform to repost on the competitor’s sites for commercial
use. The court determined that there was sufficient creativity in theindividual user-generated postings, and the compilation user postings asreflected by its organization of records, to have copyright protection.).
But see id. (the court also determined that Craigslist’s terms of use wereinsufficient to confer rights from the users to Craigslist to provide
standing to assert copyright infringement over certain advertisements.).
Compulife Software, Inc v. Newman, 959 F.3d 1288, 1314 (11th Cir. 2020).
Id.
Events Media Network, Inc. v. Weather Channel Interactive, Inc., No. CIV.
13-03 RBK/AMD, 2015 WL 457047, at *10 (D.N.J. Feb. 3, 2015).
See Chegg, Inc. v. Doe, No. 22-CV-07326-CRB, 2023 WL 4315540, at *4(N.D. Cal. July 3, 2023) (Defendant “likely breached Chegg’s terms,
resulting in damage to Chegg.”); see also Sw. Airlines Co. v. Kiwi.com, Inc.,
No. 3:21-CV-00098-E, 2021 WL 4476799, (N.D. Tex. Sept. 30, 2021)(determining that Defendant had knowledge of and assented tocontractual terms in multiple ways, including by agreeing to plaintiff’s
terms when purchasing tickets from plaintiff’s website).

10

11

12
13
14

15
16

17

18

19

20
21

See hiQ Labs, Inc. v. LinkedIn Corp., No. 17-CV-03301-EMC, 2022 WL
18399982, at *8 (N.D. Cal. Nov. 4, 2022) (determining that “hiQ breached
LinkedIn’s User Agreement both through its own scraping of LinkedIn’s site”
but declining summary judgment due to disputes over legal defenses).
Events Media Network, Inc. v. Weather Channel Interactive, Inc., No. CIV. 13-03
RBK/AMD, 2015 WL 457047, at *14 (D.N.J. Feb. 3, 2015).
Bold Ltd. v. Rocket Resume, Inc., No. 22-cv-01045-BLF (N.D. Cal. June 22, 2023).
Van Buren v United States 141 S. Ct. 1648 (2021).
hiQ Labs, Inc. v. LinkedIn Corp., 31 F.4th 1180 (9th Cir. 2022); see also
Convoyant LLC v. DeepThink LLC, 2021 WL 5810638 (W.D. Wash. 2021)(granting summary judgment of no violation of public data, denying
summary judgment of no violation of private data).
See Carfax, Inc. v. Accu-Trade, 2022 WL 6 57976 (E.D. Virginia 2022).
See Am. Airlines, Inc. v. Red Ventures LLC, 4:22-cv-0044-P (N.D. Tex. July 15,2022) (“more recent cases acknowledge that intangible property is notcontemplated by Texas common law trespass claims”).
See Iacovacci v. Brevet Holdings, LLC, No. 1:18-CV-08048-MKV, 2023 WL
2631966, at *9 (S.D.N.Y. Mar. 24, 2023) (Trespass to chattels “does notencompass an electronic communication that neither damages therecipient computer system nor impairs its functioning.”); InfoTek Corp. v.
Preston, 626 F. Supp. 3d 885, 895 (D. Md. 2022) (defendant’s intrusion did not
impair plaintiff’s system, deprive plaintiff from accessing their own systemor any other part of plaintiff’s network; or “diminish the value of plaintiff’s
possessory interest in its computer network).
See Pragad v. Davis, 2023 N.Y. Slip Op. 31209 (N.Y. Sup. Ct. 2023) (“‘trespass
to chattels’ often include[s] interference that causes damage to computer
systems or involves the sending of unsolicited content.”; court found acts
instead gave rise to misappropriation).
hiQ Labs, Inc. v. LinkedIn Corp., No. 17-CV-03301-EMC, 2022 WL 18399982, at*8, 10 (N.D. Cal. Nov. 4, 2022).
Doe v. Github, Inc. et al, Lead Case No. 4:22-cv-06823-JST (N.D. Cal.).
Sarah Silverman et al v. OpenAI, Inc., Case No. 3:23-cv-03416 (N.D. Cal.).

contractual obligations to allege that OpenAI,
the company that developed ChatGPT, breachedterms and conditions of open-source softwarefrom a GitHub repository that was used to train
ChatGPT.20 Another class action against OpenAI
has asserted copyright infringement based onalleged unauthorized creation of derivative
works by ChatGPT from training data that allegedly
included original works of the plaintiffs’ class ofauthors.
Moving forward, data protection strategies
and assessments of data risks will require
careful consideration of various frameworks
tailored to relevant contexts and use cases.

Contact

Ropes & Gray (New York)
1211 Avenue of the Americas,
New York, NY 10036-8704, US
Tel: +1 212 596 9000
www.ropesgray.com

CTC Legal MediaCTC Legal MediaTHE PATENT LAWYER

41

PROTECTING DATA ASSETS“

1

Anna Błogowska, Junior Patent Specialist at Patpol Kancelaria Patentowa,
discusses pointers for the patentability of generative AI in light of the recent
boom while assessing the applicability of current EPO Guidelines.

T
PAT E N T S
I P S T R AT E G Y
IP INFRINGEMENTS

he rapid development of Artificial Intelligenceof different types can be easily observed
and has been heavily covered by different
media, with generative AI (namely an AI that isable to generate, on its own, i.e., unassisted by ahuman user beyond initial parameters, an output,
wherein said output might include images orcomplex text based on the data AI wastrained on but not identical to said data)
drawing special attention in most recent
years, due to rising popularity of suchinventions as ChatGPT, Stable
Diffusion, Midjourney, and various
other text and image-generating programs.

IP PORTFOLIO MANAGEMENTTRADEMARKSUTILITY MODELS

Anna Błogowska

The patent landscape clearly reflects thesedevelopments. According to the World Intellectual
Property Office’s (WIPO) statistic presented in
one of the documents from the 6th session of
WIPO Conversation on IP and Frontier Technologies,
the last six years marked an increase of over
700% in AI-related patent applications submitted.
This increase in AI implementation across allindustries is being followed by European law
regulations, as the European Patent Office (EPO)
Guidelines for Examination (further referred toas EPO Guidelines or Guidelines) update from2022 noticeably modified the Mathematical
Models-related section. The European Union isin the process of creating legislation for its member
states, with the Artificial Intelligence Act (the AI Act)
having been voted in by the European Parliament
just last June and now proceeding to a further
stage, with the aim of reaching the final form of
the proposed law by the end of this year.
The AI Act concerns itself mainly with ensuringthat AI technologies will be implemented safely
and with respect to fundamental human rights,

Résumé

INDUSTRIAL DESIGNSAnna Błogowska is a Junior Patent Specialist
for Patpol Kancelaria Patentowa, with her
work focusing on the fields of Electrical andPower Engineering and Telecommunication
technologies. She conducts patent and priorart searches and validation filings before the
PPO and assists Patent Attorneys withpreparing and filing of patent applications.

S U P P L E M E N TA R Y P R O T E C T I O N
C E R T I F I C AT E

PAT P O L . P L
CTC Legal MediaTHE PATENT LAWYER

43

GENERATIVE AI PATENT APPLICATIONSFiling generative artificial
intelligence patentapplications at theEuropean Patent OfficeGENERATIVE AI PATENT APPLICATIONS

so its focus is obviously different from the intellectual property laws. The Act explicitly mentions
the generative AI, mentioning training of themodels and training data, with broader mentionof generated content.
The EPO Guidelines parts dedicated to theComputer Implemented Inventions (CII) (Part F-IV
3.9) (as a number of AI-related inventions would
be considered a CII invention by the EPO) anddedicated to the mathematical methods (PartG-II 3) do not mention generative AI by name,but it should be clear, that the generative AI falls
within the scope of solutions mentioned withinthose parts. All kinds of AI applications are being
filed with the EPO and are being considered inrelation to the CII or mathematical model part of
EPO Guidelines. The more notable cases in thepast include the DABUS case, in which the EPO
refused to consider generative AI as the inventor,
and the examination of the application EP
03793825.5, which prompted the G1/19 decision,
where analysis of the use of AI tools for simulations was the point of contention (albeit theG1/19 precedes the 2022 update and was thereason for some of the changes). However, there

44

THE PATENT LAWYER“

All kindsof AI
applications
are being
filed with
the EPO andare being
considered
in relation
to the CII ormathematicalmodel partof EPO
Guidelines.

are no Guideline sections where the generative
AI is explicitly mentioned, although the term isbeing used in EPO’s Board of Appeals decisions.
So how can one strategize when preparing an
AI-implementing European Patent Application,
especially one that focuses on AI generative
properties?
While an abstract AI algorithm itself cannot
be patented, as it falls under Article 52(2)(a) of
the European Patent Convention, which excludes
abstract mathematical methods from patentability,
it can be considered a part of the invention if
certain conditions are met, for example when there
are other elements, devices or steps included in
the scope of protection of the invention.
Simply pairing an AI algorithm with a computing
device and achieving “further technical effect” bythis pairing would satisfy the requirement oftechnical character of the invention, therefore
satisfying the requirement of patentability. Evenso, it is the examination of the invention in termsof novelty and inventive step that is the real obstacle
in obtaining an AI-related patent. While for novelty,
evidencing that there are no identical solutions
known in the relevant state of the art might be

CTC Legal Mediaeasier to achieve, the inventive step is harder toprove.
Only features possessing technical character cancontribute towards inventive step, but the nontechnical features are also considered if they
contribute towards the technical effect. The AIrelated features, to be examined for inventive
step, just as any other features in the claims,
should contribute towards technical effect. There
are several approaches to consider when assessing technical character and technical effect of
the invention. As mentioned above, it is possible
to pair the algorithm with the device which provides
further technical effect, but other approaches
are possible:
Application – the AI algorithm is used ina way that contributes to the technicalprocess, such as piloting or monitoring.
However, it is important, that the feature
is described in a specific manner, forexample pointing out the goal of theoperation, as a description too general
might result in insufficient disclosure or
disregarding it as having concrete
technical character;

CTC Legal MediaThe AI Act
concerns
itselfmainly withensuringthat AI
technologies
will beimplemented
safelyand with
respect tofundamental
humanrights, so
its focus isobviously
different
from theintellectual
property
laws.

”

Contact

Patpol Kancelaria
Patentowa sp. z o.o.
Nowoursynowska
162 J
02-776 Warsaw,
PolandTel: +48 22 546 9100
patpol@patpol.pl
https://patpol.pl

Implementation – the AI algorithm ispurposefully designed for specificimplementations, such as theclassification of received data, and saidclassification step (its results) is further
used in the technical process;-Interaction with the real world – theeffect of the algorithm work interacts
with the real world by providing resultsthat could be considered as technical.

The analysis of Board of Appeals decisions
concerning AI shows that a significant amountof the decisions issued in recent years refused grantof the patent based on a lack of inventive step.
With inventions employing generative AI models,the issues of novelty and inventive step are evenmore complicated than with standard AI; the model
learns on known data, similarly to traditional AI
but the whole idea behind these models has
the goal of limiting human user input required toreceive desired output in mind, with any inventive
process usually being executed in previous stepsof the model.
There are different aspects to keep in mind at
the stage of drafting claims for the invention thatuses generative AI that can maximize chances ofsuccess, such as including information regarding
data processing or training methods used by
the AI, and evidencing in the description (or later
during examination stage, if necessary) that either
processing of said data by the model or trainingof the model is inventive. Proving that the generated
content on its own is inventive would pose abigger challenge and could open the invention
to the questions regarding technical effects of
the invention, so the above-mentioned implementation approach, where the output would befurther used in technological process and provingthat this process is inventive, would work better.
No matter the approach chosen by the
Applicant, current Guidelines provide a framework that can be used when preparing patentapplications relating to inventions using generative AI. Therefore, assuming that the proper
requirements are met, it is possible to obtain thedesired protection.
Nevertheless, with the recent focus on generative
AI in general and in the context of Intellectual
Property - the upcoming September WIPO sessionof Conversation will concern Generative AI and
IP and China recently announced implementationof Interim Measures for the Administration ofGenerative Artificial Intelligence Services; one might
wonder if the 2024 update to the EPO Guidelines
will comprise changes targeted at generative AIor will the current EPO Guidelines be considered
as sufficient framework in this rapidly changing
field.

THE PATENT LAWYER

45

GENERATIVE AI PATENT APPLICATIONS“-PATENTING POTATOESMaria Zamkova, CEO at Fenix Legal,
details the weird and wonderful uses andinventions born from the humble potato inadvance of Sweden’s annual Potato Day.

OMaria Zamkova“

However,
this plant isuseful for somuch morethan just
food.

46

THE PATENT LAWYER”

n October 26, when the potatoes are
freshly harvested, the yearly traditional
Potato Day is celebrated in Sweden. It isorganized by the Potato Academy in connection
with the Potato Industry Foundation.
The academy’s motto is “For the potato in time”.
So, what is so special about potatoes?
The potato, originating in the Bolivian-Peruvian
Andes region around 10,000 years ago (according
to Wikipedia), arrived in Europe, via Spain and
the British Isles, by the end of the 16th century.
Today, it is the world’s fourth most importantfood crop, according to the CABI Digital Library.
In Sweden, the potato was first mentioned inprint in 1658, when the botanist and professor of
medicine Olof Rudbeck (1630–1702) published a
Latin text listing the plants in Uppsala University’s
botanical garden, which he had recently founded,with “botanical plants” brought from the Netherlands. Rudbeck classified the plant, Solanum
tuberosum, as both an ornamental and edible
plant.
However, this plant is useful for so much morethan just food. Some practical examples foundwhen searching on the Internet:
Fertilize plants: just make a hole in alarge potato and pop a geranium stem
inside and the potato will help the plant
get off to a great start, whether
independent of where it is planted;-

Soothe burns: apply a slice of raw potato
in a compress to help relieve a minor
burn;

-

Remove rust: cut a potato in half, dip thecut side in baking soda and then rub the
baking soda-covered side against therust spot;

CTC Legal Media

Avoid fogging up the bathroom mirror:
Cut a potato in half, rub the cut surface
against the mirror and let the juice dry
thoroughly before showering.

-

Potato face mask: puree some raw
potato with water to form a paste, thenspread over your face. Leave for aroundhalf an hour, then rinse off thoroughly.

-

Remove broken light bulbs: Cut a potato
in half, then press gently onto theremaining glass and carefully unscrew.

-

Stop ice forming on windshields andglass cold frames: just rub a potato on
the glass during winter.

-

Reduce puffy eyes: a perfect alternative
to the traditional cucumbers – put slices
of raw potato around the eyes.

-

Soothe itchy skin: apply sliced raw
potato under a compress until theitchiness is relieved.

-

Stamps: halve a potato, pat the cut ends
dry, press your chosen cutter into the cut
end of one of the potato halves, remove thecutter from the potato – You have a stamp-

Soothe a headache: try massaging yourtemples with slices of raw potato.
(Sources: netto.se, ruralsprout.com, cookist.com,
bbcgoodfoood.com, etc)
Well, while many of the abovementioned
examples are old traditional folk uses, which are
not always fully scientifically tested (but work
well in practice), and not patent protected, there
is a lot of intellectual property protection where
potatoes are the main (or at least important)ingredient.
Some examples (around 600) are listed at JUSTIA
Patents (patents.justia.com), and a search in the
Swedish PTO’s database gives close to 4,300
examples of patents associated with potato
biotechnology or other technical solutions related
to potatoes.

Potato-based vodka
As noted, potatoes came to Sweden in the 17th
century, but were initially not much appreciatedas food, other than for livestock and poor farmers.
That changed in 1746 when Countess Eva Ekebladinvented potato flour (to be used for makeup)
and a productive way to make potato-based
vodka (“brännvin”). She wrote to the Swedish
Royal Academy of Sciences and presented her
inventions, which resulted in her being elected

CTC Legal Media“The Swedish
PTO’s
database
gives close
to 4,300
examplesof patents
associatedwith potato
biotechnology
or othertechnical
solutionsrelated topotatoes.

”

two years later – at the age of 24 – as the firstfemale member of the Academy.
Her inventions were very important: when thespirit was now made from potatoes, the traditional
grain could instead be used for more generaluseful things, like bread. And using potatoes as
an arsenic-free powder became very popular ata time when powdering the face and wig was anecessary part of the daily dressing routine forboth men and women from the upper class.
It is rumored that Mrs Ekeblad decorated her
wig with potato flowers, thereby also showing
the possible use of potatoes in the fashionindustry of the future.
Today, Swedish vodka is back to being madewith traditional grain (rye, wheat, barley), like theinternationally famous vodka ABSOLUT. Potato
is more common in Norway and Poland. However,there is a new local Swedish vodka made of 100%
Swedish potatoes, from Bergslagens Destilleri.
The trademark is, of course: GOLDEN POTATO.
Potato-based inventions are continuously
seeing the daylight in today’s Sweden.

Potato-based vaccine
In 2004, at the University of Uppsala, Sweden,
the researcher Niclas Rydell doctorate on thedevelopment of a new, drinkable vaccine against
diphtheria (“Development of a New Oral Vaccine
against Diphtheria and the Study of its Immunogenicity in Mouse and Man”, ISBN 91-554-6069-0).
Diphtheria is a bacterial disease that spreads inmuch the same way as the common flu, that is,through mucous membranes in the mouth andnose. The disease is serious and often leads todeath. The best protection is preventive vaccination.
But today’s diphtheria vaccine must be injected.
A potable vaccine would make mass vaccinations
easier and less expensive, and at the same time
provide better protection against the disease.
Rydell’s solution is based on a genetically modified
variant of the traditional bacterial toxin. The

Résumé
Maria Zamkova is CEO at Fenix Legal,
has a Master of Industrial Design and isa patent attorney and registered EUIPO
trademark and design attorney. Maria is
an expert in European Patents, assisting
national and international clients in IPDD,
and is a frequent lecturer in “IP andbusiness strategies”. She is a Member ofthe Board of the Association of Swedish
Patent Attorneys (SPOF). Maria has got
the Acquisition International Annual
Leading Adviser Awards as a Leading
European IP Law Adviser of the Year
2023.

THE PATENT LAWYER47

PATENTING POTATOES

Potatoes - that’s
all you need!

-PATENTING POTATOES

Women in
IP Leadership

substance is 99% identical to the original
bacterial poison, but without the toxic effect. It
has then been linked to porous microparticles
of starch. The particles make the response fromthe body’s immune system stronger and theprotection better, at least as long as the vaccine
is tested on mice. When tested on healthy humanvolunteers, the protective effect disappeared,
likely – according to Rydell – because the starch
particles break down in the digestive system.
The idea is however still alive, and modified versions
are being tested.

Celebrating achievements and continuing
the empowerment of women“Potato Plastic”
In 2018, the Swedish industrial designer Pontus
Törnqvist, was the Sweden National winner of
the James Dyson Award for his “Potato Plastic”.
The fast-food industry consumes massive volumesof single-use plastic every year – and researchers
calculate it often takes 450 years for plastic todecompose after serving human needs for an
average of just 20 minutes. In Sweden, around
40% of plastic packaging is recycled. This meansthat 60%, or 98,550 tonnes, is still not taken careof. Much ends up in the oceans and causes greatdamage. At the same time, the plastic that isincinerated contributes to greenhouse gases
and global warming. There is indeed a need foralternative solutions. Törnqvist developed amaterial that is similar to plastic but consists ofpotato starch and water. With the help of heat, a
thick liquid is created that can be placed in molds.
Through further heating, the material takes on amalleable solid form. The material is perfect for
use in disposable items that do not require along service life, such as eating utensils,condiment bags, and to replace plastic straws.
“My aim with this project was that we should
question the way that we are using and producing
plastic, and therefore illustrate an example of amaterial that could work as a substitute material
for it. This material is made of what comes fromour earth, and it can later on just as well end up
in the soil without any risks to nature,” said
Törnqvist when he received the award.

Potato-based ice cream
One of the most recent examples of potato-based
inventions is the company Veg of Lund AB’s
Swedish patent (SE 2250375-9) for a vegetable
ice cream, based on a combination of potatoes,
rapeseed oil, and a vegetable protein in the formof a frozen emulsion.
Professor Eva Tornberg, founder of Veg ofLund, said in a press release,“The fact it is basedon such an everyday crop as potatoes shows
the uniqueness and strength of the patent.”
This is not the first potato invention from Vegof Lund. The company has also a patent for aplant-based potato drink, “vegan potato emulsion”

48

THE PATENT LAWYER“

Potato-based
inventionsarecontinuously
seeing thedaylight
in today’s
Sweden.

”(EP3687298), trademarked as DUG and available
in food stores around Europe. As to the summaryof the invention: “It has surprisingly been provided
according to the present invention a vegan, potato
emulsion which is an excellent substitute for milk.
The potato emulsion has similar properties tomilk and can be consumed as such or used as
an additive in a drink such as tea or coffee”.

Potatoes as fuelAnd food becomes gas, which runs factories forthe manufacture of food, whose remains becomegas which... The Swedish potato chip factory
Estrella in Angered outside Gothenberg, is theleading producer with millions of snack bags yearly.
The chip factory has switched from natural gas
to biogas and reduced its carbon dioxide emissions
by 92% since 2017. In addition, the potato residues
from chip production contribute to increased
biogas production.
So, have that in mind next time you buy potatoes.
It is not just for making pommes frites. You candrink it, clean your car, reduce your puffy eyes,
and get a clear bathroom mirror. Make sure you
have potatoes in your home. That’s all you need.

Contact

Fenix LegalÖstermalmstorg 1, 3tr., 114 42
Stockholm, Sweden
info@fenixlegal.eu
www.fenixlegal.eu

CTC Legal MediaThis segment is dedicated to
women working in the

An interview: inspirations, experiences, and ideas for equality.

IP industry, providing aWinnie Tham is a Director of Amica
Law LLC, and has been practicing in
the intellectual property field since1993. Winnie is an advocate and solicitor of theSupreme Court of Singapore and a registeredpatent attorney (Singapore). She was admitted
to the Bar in 1993 winning the Justice Tan Ah TahPrize for Professional Ethics. She has also attaineda Bachelor of Laws (Hons) and is admitted to
the Supreme Court of Victoria in Australia.
She has a multi-disciplinary background, encompassing both legal and technical expertise. She
has a particular specialization in life sciences
and pharmaceuticals as she holds a Bachelor of
Science (Pharmacology & Biochemistry), in addition
to her law degree, and regularly advises on patentand regulatory matters. However, her experience
in intellectual property spans various industries
including pharmaceuticals, technology, retailand fashion, hotels and the food and beverageindustry.

platform to share realaccounts from rising womenaround the globe. In theseinterviews we will be
discussing experiences,celebrating milestones andachievements, and putting
forward ideas for advancing
equality and diversity.
By providing a platform toshare personal experiences
we aim to continue theempowerment of womenin the world of IP.

If you would like the opportunity to share your experiences with
Women in IP Leadership, would like to nominate an individual to be involved,
or would like to learn more about sponsorship, please contact our Editor.
50

THE PATENT LAWYERWOMEN IN IP LEADERSHIP

Winnie Tham:
Director, Amica Law

CTC Legal Media

What inspired your career?
I had already set my sights on a career in law
when I was in secondary school, and this was
reinforced in school when I did a short stint in alaw firm as part of my work experience. However,beyond that, I did not know what area of law I
wanted to specialize in. I was in a double degree
program at university, studying Bachelors of
Science and Law, and ultimately it was my science
degree that determined my field in law. Whilst I
thought I might go into corporate law, every law
firm I interviewed with steered me towards
intellectual property because of my science
degree, and the possibility that I could be not
only a lawyer, but also a patent agent. I wasfortunate that the partners interviewing me werepassionate about intellectual property and took
the time to talk to me about a career in this area.
Looking back, I think I was quite curious andhad lots of questions, but they were very kindand hopefully took it as enthusiasm!
After that, I did some of my own investigationin the field and decided that it might be aninteresting area to specialize in. The rest is

CTC Legal Media

history, and I have never looked back on thatpivotal decision.

“

Juggling afamily andcareer is
tough,
especially
if you aretrying to be
the best you
can beat both.

”How have you found the pathway to yourcurrent position? And can you offer advice
from your experience?
Looking at my own pathway, I have learned thatyou should always keep an open mind, andwhatever opportunities come your way, seize
the day. Treat others as you think they would liketo be treated and always put in your best effort.
People around you recognize the effort and it
stands you in good stead.
Also, don’t be discouraged when things seemto be going awry; there is usually a silver lining
behind the cloud. It may sound like a cliché, butlife is really a journey. The quote by Robert Frost
encapsulates my career – “two roads diverged
in a wood and I – I took the one less traveled by,
and that has made all the difference”.
What would you consider to be your greatest
achievement in your career so far?
There are always challenges along the way, as weevolve in our careers. First, there is the road topartnership and proving yourself in the workplace
It takes hard work and a little bit(or maybe a lot!)of luck. Juggling a family and career is tough,especially if you are trying to be the best you
can be at both. Having a strong support system
is important. It is fortunate that in Singapore, it is
not too difficult to bring in domestic help andwith family support, it does allow you to focus
on your career at the same time.
I think it is important to enjoy your work andfind fulfillment in what you do. If you are just in
it for the money, you are more likely to burn out
before you reach your potential. And work hardand smart because that is unavoidable if you
want to reach your goals.
In terms of career, I think founding Amica Law
LLC in 2006 with three other colleagues frommy previous firm is the highlight of my career andhas probably been the biggest challenge of mycareer as well. It is a true test of your lawyering andmanagement skills, and also the relationship

THE PATENT LAWYER

51

WOMEN IN IP LEADERSHIP

I would
really like to
see moreawareness,training,
and policies
for firms tocreate more
workplaces
that reflect
the desire tobe equal,
diverse, andinclusive.

”

What are your future career aspirations? And
how will you work to achieve them?
At this time in my career, my aspirations are to
see Amica Law grow from strength to strength.
When we first began the Firm, survival was key.
Now, as our Firm has consolidated and expanded,
it is really about planning for the future andsuccession in the Firm and ensuring that the
groundwork is properly laid.
What changes would you like to see in the IP
industry regarding equality and diversity inthe next five years?
I think the IP industry is doing quite well in termsof equality and diversity for women but there isalways room for improvement. The legal sectorin Singapore has pretty even numbers of men
and women, and to this end, I have been fortunate
not to face obstacles in my career simply
because of gender. In my own firm, the founding
directors are balanced between males andfemales, as well as in management. I think theseaugurs well for the future. However, this is notnecessarily the case in other firms, and it would
be good to see more women holding management
positions at the executive committee level.
However, if we look at equality and diversity
from the perspective of minorities, gender diversity,and being more inclusive for people with disabilities,
this may not come as naturally in the workplace.
I would really like to see more awareness, training,and policies for firms to create more workplaces
that reflect the desire to be equal, diverse, andinclusive.

is really important for the empowerment of
women in the IP sector, and more broadly, theworkplace.
I also think positive policies that are institutionalized in firms are vital because they educate
the management and staff as to what sorts of
behavior are acceptable and can influence
perceptions of how they see women in the workplace. This is a dynamic process because, as
progress is made and social mores may change,
the workplace needs to keep up.
At the community level, we need to alsoemphasize the message in schools and universities
that women’s roles in the workplace need not
be confined because of their gender. In the legal
sector, I think we are well on the way, but if we lookat the STEM area, there is an underrepresentationof women as inventors and in management
roles. This is where role models are important,to lead the way and show that it can be done.
Finally, in my own personal experience, it isdifficult to be a “superwoman” and do everythingat home and excel at work. And women should
not have that burden on them. I think it is key tohave a good support network that enables women
to focus on their careers as well. It really takes
a village.
Finally, it is also important for women to consider
the needs of their colleagues and workplace,and there has to be some give and take. In thisway, a culture of trust and respect can be
developed, which is absolutely essential to pave
the way for women’s empowerment.

CTC Legal MediaAn interview: inspirations, experiences, and ideas for equality.

S

hu-Pei Oei is a European Patent Attorneybased in the DACH region, and Global IP
Team Lead at Palfinger Europe. In addition
to holding a master’s in IP Law and Management(LLM) from CEIPI, Shu-Pei is a qualified ISO 9001
Quality Management lead auditor. Her thesis on“Risk Management Practices and their Applicationsin Intellectual Property and Trade Secrets
Management” has highlighted the need forstandards in IP leadership and management.
Shu-Pei is an appointed Chair of the Committee‘Risk Management’ at I3PM (International Instituteof Intellectual Property Management). She holds
a Ph.D in Engineering (Cambridge) and degrees
in Electrical and Electronics Engineering (M.Sc,
BEng) from Stanford and UCL.
What inspired your career?
My first encounter with IP was in the UK, when I
had the chance to intern at a Patent Attorneyfirm in London. It was 2008-2009, around thetime of the global financial crisis. I was nearing
the end of a PhD in Engineering at Cambridge,
and the thought of finally being able to put
knowledge to practice was an appealing one.
Although the ad in the careers magazine had
described patent attorney life quite well, I
remember being anxious at the thought ofentering the legal profession. I didn’t feel brainy
enough to be a lawyer, yet, I couldn’t abandon the
feeling that patent law would suit me rather well.
So, I embarked on the journey to find a firm thatwould accept me as an intern. It was important
to me to get a fair assessment of my strengths
before I took the plunge.
How have you found the pathway to yourcurrent position? And can you offer advice
from your experience?
The first indicator that I was on the right track was
the buzz I felt after the internship. I had received
sufficient positive affirmation from the partners
to take it further. But more importantly, I felt ahappiness while working on patent cases that I
had never felt while working in a lab. It sounds
cheesy, but it is true. When you’re finally doing
what you’re meant to be doing, everything feels
right.

How do you think the empowerment of
women can be continued and expanded in
the IP sector?
I was privileged to have a strong female mentor
as a role model in my legal career, and this reallyshaped me and provided opportunities. As aresult, I always felt that I had every opportunity
available to me, and I could achieve my goals
based on my abilities and merit. In my view, this52

Shu-Pei Oei: Global IP Team
Lead, Palfinger Europe

THE PATENT LAWYER

CTC Legal Media“The second
piece ofadvice I canoffer is tonegotiate
for the lifethat youknow will
fulfill you.

”So, the first piece of advice I can offer others is
to rely on both your inner voice and external validation when making choices. While it may havebecome a trend to choose one exclusively over theother, both can play a part in achieving successand satisfaction. The inner voice sets the direction
for where you want to go, while external voices
provide pathways and options for you to get there.
The success of the internship gave me confidence to expand my career search to more places,such as Singapore, London, Germany and Australia.
It also emboldened me to apply to larger firms.
I ended up in Munich, Germany, where I learned
German, trained for the European Qualifying Exam
(EQE), passed it several years later, and becamea patent attorney. I stayed on the rather predictable
Tao of the patent attorney for 11 years until myinner voice started vocalizing again.
This time, it was telling me that my other humanfaculties weren’t being exercised fully in that role.
It soon became clear that being in-house, in aperson-oriented organization, was where I wanted
to direct my expertise and energies. When the
inner voice starts speaking, it is usually a matterof time before I act on it. But the trouble is, thateven with a pretty loud inner voice, I learned
that children are louder. And this time, I had twoof them to contend with!
It took a little longer to negotiate the change withmy family, but the change eventually did happen.
So, the second piece of advice I can offer is tonegotiate for the life that you know will fulfill you.
When you’ve succeeded, grasp the opportunity,and go onward.
What challenges have you faced? And how
have you overcome them?
At 21, I had to cope with the death of a parent
while in a foreign country. It was a simple phone
call telling me that my father had passed suddenly
two weeks before my final exams. A decade later,
I saw another parent through end-of-life care. It
affected my morale and how I viewed my life in an
overseas country. Despite this, I returned toGermany to rebuild and sit for the EQE.
Becoming a first-time parent and raising children
in a foreign country, all while trying to keep my career
alive, is still by far the greatest challenge I face,

THE PATENT LAWYER

53

WOMEN IN IP LEADERSHIP“

you have with your employees and clients. Apartfrom that, you have employees who depend on
you as well and you can’t let them down. It’s an
exciting and invigorating experience, and sometimes more than a little daunting. I never cease
to be grateful for the people around me, myemployees, clients, and friends who put their faithand trust in you. Although we are now in our
17th year, it still seems like yesterday when we
first announced the opening of the Firm.
Another highlight is my appointment to theIntellectual Property Office of the Singapore Boardof Directors. It is a great honor to serve, and I feelthat it has really added a new dimension to mycareer.

WOMEN IN IP LEADERSHIP“

Becoming
a first-timeparent andraisingchildren in
a foreigncountry, allwhile trying
to keep mycareer alive,
is still by far
the greatest
challenge
I face.

”because it is an amalgamation of all the missing
pieces from the past that I wish I could have had.
Coping with prematurely missing pillars, such as
identity, roots, family ties and support, can be rather
challenging for a young woman.
My story is not unique, as most of us face questions
and doubts about parenthood, identity, mortality,
invincibility, and loss, sooner or later. But I guess
what makes it quite rare is to have met and overcome
these challenges so early on- in my early thirties.
When it comes to overcoming uncomfortablesituations, I give myself time to sort out my desires,and sources of regret and grief. Then, I try to makedecisions that are in sync and authentic with mybeing. This process allows me to make life choices
I can live with, accept trade-offs, and to perform
my responsibilities with peace of mind.
What would you consider to be your greatest
achievement in your career so far?
Fully bridging and overcoming “the motherhood
penalty” is something I am particularly proud of.
I feel comforted that I have been able to do thisquite quickly, and I want to help more women do
the same. Overcoming the motherhood penalty
isn’t an award or prize for “best patent attorney” oranything glitzy. To me, it simply means that I haveexceeded my own expectations, and I can standshoulder to shoulder again with the peers I started
out with. It’s an amazing feeling to be back in thegame.
As an introvert, I rely on my intuition and inner self
to set both personal and professional goals, while
ignoring external hype. It is nice to know that
this intuition led me to become Singapore’s firstfemale European Patent Attorney, purely by accident.
What are your future career aspirations? And
how will you work to achieve them?
I will stay in the IP profession and continue to leador contribute, wherever needed.
In recent years, it has become clear to me that
the IP tech community urgently needs professionals
who can gel and execute. To me, that means not
only being proficient in technology, business, anddifferent aspects of law – which is challenging
enough! We also have to hone our decision-making
skills, and organize data and people in a way thatjives with the organization.
Yep. Shimmying and jiving with the organization
are words I never thought I’d publish in a Patent
Lawyers magazine, but here we go.
On a personal note, I’ll keep up-skilling because
I value competency-based leadership, and likemany women out there, I still tend to over-prepare
when I lead.
I will also keep learning from other experts,
particularly senior IP experts. There are many tolearn from.

54

THE PATENT LAWYERTheWhat changes would you like to see in the IP
industry regarding equality and diversity inthe next five years?
The tech IP industry is known to be quite maledominated, rather competitive, and at times,
intimidating. It is not unusual for people to speak
dismissively of one another. I would like to seeless of that, because it can create an anxious
environment for newcomers.
It can also be quite hard to find information in
the IP industry, unless you’re plugged into a
good network. I think all newcomers to the IP
industry would benefit from an IP environmentthat is more open, less intimidating, and thatprioritizes information sharing.
If we can agree on the basic tenets that would
address skill shortages in general, we might thenbe able to have a proper discussion on how tobridge gaps brought on by our preferences anddifferences.
Meanwhile, I encourage minorities to be fearless
when seeking out information, and never let a
couple of bad experiences define your future.
There are many good people in the tech IP industry
who are willing to help you. You might just haveto poke the bear a little bit.

GLOBAL REACH, LOCAL KNOWLEDGE
www.patentlawyermagazine.com

LAW FIRM
RANKINGS 2023
Asia-Pacific

A comprehensive list of the
10 most well-respected law firms
from the Asia-Pacific region.

How do you think the empowerment of women
can be continued and expanded in the IP sector?
I would really like to see more career acceleration programs for mature women in organizations,
including the IP sector. It’s such an obvious demographic that needs help, yet for some reason they
have been left off the radar. I love that we areseeing more young leaders programs emerging.
Yet, ironically, they are usually directed at an age
where women are focused on family life. While
many YLPs do not have a strict age cut-off, theneeds of youth and mature women are rather
different.
I would support schemes where more help isgiven to mature women returning to the workforce.
Particularly in terms of relationship-building andleadership mentorship.
I would also like to bring attention to organizations like Young Members Congress (YMC) of
the Licensing Executives’ Society (LES) and theInternational Institute of Intellectual Property
Management (I3PM), which I am involved in. In
recent times, they have been active in extending
their reach to a wider demographic. There aremany supportive people in IP to be found there.

CTC Legal MediaCTC Legal MediaTHE PATENT LAWYER

55

ASIA-PACIFIC RANKINGS 2023
ASIA-PACIFIC RANKINGS 2023

Throughout the next few pages, you will view a comprehensive
list of the 10 most well-respected law firms from Asia, inalphabetical country and company order.
Our focused list is derived from a multifaceted methodology,
which uses months of industry research and feedback fromour readers, clients, and esteemed connections around theworld. All firms are ranked top 10 in their jurisdiction but are
displayed alphabetically to avoid bias.

China
Beijing Sanyou IP Agency
CCPIT Patent & Trademark Law Office
Chang Tsi & Partners
China Patent Agent (H.K) Ltd.
Han Kun Law Offices
IP March
Liu Shen & Associates
Unitalen Attorneys at Law
Wanhuida Intellectual Property
ZY Partners

SPACE TO FILL

56

THE PATENT LAWYER

CTC Legal MediaCTC Legal MediaTHE PATENT LAWYER

57

ASIA-PACIFIC RANKINGS 2023

AllensAshurstClayton Utz
Corrs Chambers Westgarth
Davies Collison Cave
Gilbert + Tobin
Griffith Hack
Herbert Smith Freehills
Jones Day
Spruson & Ferguson

Hong Kong
Baker McKenzie
Bird & Bird
Deacons
Hogan Lovells
Jones Day
SIPS – Simone Intellectual Property Services
Tiang & Partners
Wenping Patent & Trade Mark Agent LTD.
Wilkinson & Grist
Vivien Chan & Co.

Indonesia
Am Badar & Am Badar
AMR Partnership
Biro Oktroi Roosseno
FAIP Advocates & IP Counsels
Hadiputranto, Hadinoto & Partners
Januar Jahja & Partners
K&K Advocates
PRAWIRANEGARA International Patent & Trademark Law
SKC Law
Tilleke & Gibbins

SPACE TO FILL

  

India
Anand & Anand
KAnalysis
Kan and Krishme
Krishna & Saurastri Associates
L. S. Davar & Co.
Lakshmikumaran & Sridharan
LexOrbis
Obhan & Associates
Remfry & Sagar
R. K. Dewan & Co.
LS Davar FP_NEW.indd 1

01/09/2023 10:11

Nepal
Apex Law Chamber
Imperial Law Associates
JANAK BHANDARI & ASSOCIATES
Khurana & Khurana
Neupane Law Associates
Pioneer Law Associates
Pradhan & Associates
Prime Law Associates
Sinha Verma Law Concern
Solar Law Associates

New Zealand
AJ Park
Catalyst IP
Chapman Tripp
CreateIP
Dentons Kensington SwanHenry Hughes IP
Hudson Gavin Martin
James & Wells
Simpson Grierson
Tompkins WakeSPACE TO FILL

58

THE PATENT LAWYERASIA-PACIFIC RANKINGS 2023

Australia

CTC Legal MediaCTC Legal MediaUTPS_FP_RHP.indd 1

20/04/2016 12:13

Pakistan
Abu-Ghazaleh Intellectual Property | AGIP
Absam IPS
Ali & Associates
Bharucha & Co.
Codex & Co.
Liaquat Merchant Associates
Raza & Associates
United Trademark & Patent Services
Vellani & Vellani
Zafar & Associates

Singapore
Allen & Gledhill
Amica Law
Baker McKenzie Wong & Leow
Bird & Bird ATMD
Donaldson & Burkinshaw
Drew & NapierFrancine Tan Law Corporation
Mirandah Asia
Ravindran Associates
Shook Lin & Bok

SPACE TO FILL

THE PATENT LAWYER

59

ASIA-PACIFIC RANKINGS 2023

3$7(1775$'(0$5.

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SPACE TO FILL

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Abe, Ikubo & Katayama
Anderson Mori & Tomotsune
ASAMURA IP P.C.
Hiroe and Associates
KubotaNakamura & Partners
Ohno & Partners
Sonoda & Kobayashi
TMI Associates
Yuasa and Hara&+,1$

2024 LAW FIRMRANKINGSNOMINATIONS
OPEN

VietnamAnnam IP & Law
ASL LAWc
Elite Law
Gintasset
INVESTIP
Pham & Associates
Rouse
Tri Viet & Associates
Vision & Associates
WINCO

SPACE TO FILL

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60

THE PATENT LAWYER

CTC Legal MediaCTC Legal MediaTHE PATENT LAWYER

61

ASIA-PACIFIC RANKINGS 2023

3$7(176

Japan

ASIA-PACIFIC RANKINGS 2023

Julius and Creasy is one of the oldest civil law ﬁrms in Sri Lanka.
Founded in 1879, the ﬁrm has established itself on rich tradition
and the highest professional principles. Julius and Creasy’s wealthof expertise and experience in a wide range of different ﬁelds ofLaw.
We have a specialized IP department and advise on all aspects ofIntellectual Property matters such as contentious as well as noncontentious matters.
We represent clients both at the National Intellectual Property
Ofﬁce in opposition proceedings and in infringement proceedings
before Courts,
We have substantial portfolio of patents including PCT applications
ﬁled in Sri Lanka. We have trained staff for Patent drafting. We
also ﬁle design applications for overseas clients in Sri Lanka andfor Sri Lankan clients overseas. We also advise on copyrightissues including reviewing of copyright agreements and advise
publishers. We engage ourselves in IP due diligence work and alsoﬁle applications for registration at the Sri Lanka Customs.

No. 371, R A De Mel Mawatha, P O Box 154, Colombo 3, Sri Lanka
Tel: +94 11 2422 601-5, +94 11 2421 056; Fax: 94 11 24466 663
Email: anomi@juliusandcreasy.lk; pts@juliusandcreasy.lk
website: www.juliusandcreasy.com

62

THE PATENT LAWYERASIA-PACIFIC RANKINGS 2023

Sri Lanka

South Korea

D.L. & F. De Saram
F. J. & G. de Saram
IP Chambers
John Wilson Partners
Julius & Creasy
LegalBase
Neelakandan & Neelakandan
Nithya Partners
Sudath Perera Associates
Varners

AIP Patent & Law Firm
Bae, Kim & Lee
DARAE Law & IP Firm
FirstLaw P.C.
Kim & Chang
Lee & Ko
Lee International
Yoon & Lee International Patent & Law Firm
Yoon & Yang
YulchonPhilippines

Taiwan8EM[ERȒ'LMREȒ.ETERȒ9RMXIH7XEXIW

4EXIRX1SRMXSVMRK

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8VEHIQEVO%TTPMGEXMSRWACCRALAW
Bengzon Negre Untalan
Castillo Laman Tan Pantaleon & San Jose
Cruz Marcelo & Tenefrancia
Federis & Associates
Hechanova Group
Quisumbing Torres
Romulo Mabanta Buenaventura Sayoc & De Los Angeles
SyCip Salazar Hernandez & Gatmaitan
Villaraza & Angangco (V&A)

SPACE TO FILL

CTC Legal Media

Baker McKenzie
Deep & Far
Formosa Transnational
Giant Group
Lee and Li Attorneys-at-Law
SUNDIAL Intellectual Property Law Firm
Tai E International Patent & Law Office
Top Team International Patent & Trademark OfficeTsai, Lee & Chen
Tsar & Tsai Law Firm

-RJVMRKIQIRX%REP]WMW

0MXMKEXMSR6IPEXIHXS-4ERH'ST]VMKLXSPACE TO FILL

4%8)28 86%()1%6/
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KKM$KMERXKVSYTGSQX[[[[KMERXKVSYTGSQX[ѠчѱύξчၡΟࢤ27ဦ13ኴ! ཰఼୍ࡴ‫ޕ‬᛽ౢ៾ϐҙፎǵߟ៾Ϸນ೜
13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.
Tel: 886-2-25856688
Fax: 886-2-25989900/25978989
Email: email@deepnfar.com.tw www.deepnfar.com.tw

IP

CTC Legal MediaTHE PATENT LAWYER

Prosecution
Infringement
Litigation
63

ASIA-PACIFIC RANKINGS 2023
ASIA-PACIFIC RANKINGS 2023

ThailandAnanda Intellectual Property
Domnern Somgiat & Boonma
ILCT
LawPlus
Rouse
Satyapon & Partners
SCL Nishimura & Asahi
Tilleke & Gibbins
TMP Intellectual Property
ZICO IP

Malaysia
Henry Goh & Co
Lee Hishammuddin Allen & Gledhill
MarQonsult
Patentsworth International
Rahmat Lim & Partners
Shearn Delamore & Co.
SkrineTay & Partners
Wong Jin Nee & Teo
Wong & Partners

Skrine is one of the largest legal firms in Malaysia, with a IP K EY PR ACT ICE AR EAS
sterling global reputation, a wide range of highly-regarded
IP Registration and Prosecution
practice groups to meet the increasingly diverse needs of
IP Litigation and Enforcement
clients, a commitment to talent development, and alumni
Anti-Counterfeiting
who are making a difference in the world.

Professional  Practical  Prompt  Proactive

Patents | Trademarks | Copyrights |In an increasingly borderless and competitive world, where
the law is challenged in new ways daily, Skrine remains
resolutely committed to its founding principles:

Prosecution | Enforcement | Litigation

W isdom. Fortitude. Ingenuity.

“One of the Top 10 Patent firms in Thailand 2023 ”

PAT EN T

CTC Legal Media

LawPlus Ltd.
Unit 1401, 14th Fl., 990 Abdulrahim Place, Rama IV Rd.
Silom, Bangrak, Bangkok 10500, Thailand
Tel: +66 (0)2 636 0662
www.lawplusltd.com

Charmayne O ng

K hoo Guan H uat

T +603 2081 3736
E co@skrine.com

T +603 2081 3737
E kgh@skrine.com

K uek Pei Y ee

Jillian Chia

T +603 2081 3853
E kpy@skrine.com

T +603 2081 3882
E jc@skrine.com

GLO B AL N ET W O R K
Skrine is the sole Malaysian member of two leadinginternational legal networks, namely Lex Mundi and thePacific Rim Advisory Council (PRAC).

Contacts: Kowit Somwaiya
kowit.somwaiya@lawplusltd.com
Prasantaya Bantadtan
prasantaya.bantadtan@lawplusltd.com

THE PATENT LAWYERK EY PAR T N ER S

Skrine's patent prosecution team comprises lawyers andparalegals who are trained in the law and science. The firm
regularly advise and handle patent filings and prosecutions
for local and foreign clients in a myriad of industries,
including automotive, oil & gas, telecommunications,
pharmaceutical,
medicaldevices,
agriculture
andmanufacturing. The team also provides support to the IP
litigation team in complex patent infringement andinvalidation suits.

by The Patent Lawyer Magazine Law Firm Rankings 2023

64

Branding, Franchising and Licensing
Privacy and Data Protection
Product Law
Technology, Media and Telecommunications

CTC Legal MediaCTC Legal Media

CO N T ACT US
Level 8 Wisma UOA Damansara
50 Jalan Dungun, Damansara Heights
50490 Kuala Lumpur
Malaysia

T +603 2081 3999
F +603 2094 3211
E skrine@skrine.com

For more information
about Skrine, visit
www.skrine.com.

THE PATENT LAWYER

65

USPTO’S DIRECTOR REVIEW PROCESSDavid McCombs, Eugene Goryunov and Jonathan Bowser of Haynes Boone
evaluate the recent updates that are set to adjust the procedure andexpand the scope of the Director review process.

In United States v. Arthrex, Inc.,1 the US Supreme
Court held that the USPTO Director must havethe authority and opportunity to unilaterally
review a PTAB final written decision before thatdecision becomes the final decision of the agency.
Consistent with Arthrex, the PTAB implemented
an interim Director review process.2 On July 24,
2023, after nearly two years of experience and in
response to comments the USPTO received
from various stakeholders, the USPTO updated
the Director review process by expanding its
scope and adjusting its procedure to match.3
The underlying purpose of Director review isto resolve issues that might not be germane forappeal – either because of a different standardof review or other issues that might otherwise
be unappealable – but nevertheless implicate

David McCombs

RésumésDavid McCombs is a partner at Haynes
and Boone with 35 years of experience
serving as primary counsel for manyleading corporations. He is regularly
identified as one of the most active
attorneys appearing before the Patent
Trial and Appeal Board.

Eugene Goryunov

Eugene Goryunov is a partner at Haynes
and Boone with nearly 15 years ofexperience representing clients incomplex patent litigation matters
involving diverse technologies, fromconsumer goods to high tech, medical
devices, and therapeutics.
Jonathan Bowser
Jonathan focuses his practice on patent
litigation disputes before the PTAB andfederal district courts, and related
appeals before the Federal Circuit.

66

THE PATENT LAWYER

Jonathan Bowser

the resolution of the specific case or would address
broader legal issues. Director review may be initiatedsua sponte by the Director or requested by aparty to a PTAB proceeding. While the original
Director review process was limited to review offinal written decisions, the revised process allows
parties to seek review of the PTAB’s “(1) decision
whether to institute a trial, (2) final written decision,or (3) decision granting a request for rehearing.”
Expansion of the Director review process tocover institution decisions is a big deal at least
because, absent Director review, institution
decisions are unappealable.
Turning to the specifics of the revised Director
review process, a request can be made for any
issue(s) addressed in a PTAB institution decision,
final written decision, or rehearing decision. If
the request is directed to the PTAB’s decision
whether to institute a trial or a decision granting
rehearing of such a decision, the review “shallbe limited to decisions presenting (a) an abuseof discretion or (b) important issues of law or policy.”
Both “discretionary and merits-based issues may
be raised” in the review request and issues of law
or policy are reviewed “de novo.” On the other
hand, if the request is directed to the PTAB’s final
written decision or a decision granting rehearingof such a decision, the review shall be limited todecisions presenting (a) an abuse of discretion,(b) important issues of law or policy, (c) erroneousfindings of material fact, or (d) erroneous conclusions of law. All issues raised are reviewed“de novo.”
It is expected that most Director reviews will
be conducted upon request by one of theparties to a PTAB proceeding, but the Director
has the authority to sua sponte initiate a review.
In the case of sua sponte initiation, the PTAB will
issue a notice to the parties informing them thata Director review will be initiated prior to either
party filing of a notice of appeal or the lapse of
the time for filing such a notice, whichever issooner. As a general matter, Director review is

CTC Legal MediaCTC Legal Media

1
2

3

4

5

6

141 S. Ct. 1970 (2021).
USPTO implementation of
an interim Director review
process following Arthrex,
available at: https://www.uspto.gov/patents/
patent-trial-and-appealboard/procedures/
uspto-implementationinterim-director-review.
Revised Interim Director
Review Process, available
at: https://www.uspto.
gov/patents/ptab/
decisions/revised-interimdirector-review-process.
37 C.F.R. §§ 42.71(d)(1)42.71(d)(2).
https://www.uspto.
gov/patents/patenttrial-and-appeal-board/
status-director-reviewrequests
Neurocrine Biosciences,Inc. v. Spruce Biosciences,
Inc., PGR2021-00088 &PGR2022-00025.

This article reflects only
the present personalconsiderations, opinions,
and/or views of theauthors, which should not
be attributed to any of theauthors’ current or prior
law firm(s) or former orpresent clients.

appropriate, delegate authority to the PTAB
panel to handle routine interlocutory matters or
attend to matters outside of the intended scopeof review.
A decision from the Director review process ofa final written decision is appealable as any other
PTAB final written decision. But a decision
reviewing a decision on institution is not appealable.
The revised process allows a party to seek
rehearing of a Director review decision, regardless of the decision the Director reviewed. The
moving party must show that the Director’s decision“should be modified” but the USPTO notes thatrehearing requests “should be rare…and only forvery focused purposes.”
Since its inception, Director review decisions
have been entered in 25 cases, with some cases
receiving multiple decisions.5 In short, the process
is being used more than many have expected.
Indeed, on August 4, 2023, shortly before this article
was submitted for publication, the Director decided
Neurocrine Biosciences, Inc. v. Spruce Biosciences,Inc. under the USPTO’s revised procedure.6 There,
the PTAB denied institution of a PGR trial findingthat Petitioner failed to meet the threshold requirement of prevailing on its anticipation, obviousness,
and written description challenges. Petitioner
filed a request for rehearing and requested review
by the PTAB’s now-retired Precedential Opinion
Panel (POP). The Director took advantage of therevised, expanded scope of Director review tosua sponte review the PTAB’s decision denying
institution of a PGR trial. The Director vacated the
PTAB’s decision finding that the panel incorrectly
applied controlling law. This is just the most recent
example of the Director vacating or correcting what
she perceived to be an incorrect application of law.
The USPTO has yet to finalize the Director
review process and issue a final set of rules
and procedures governing its administration.
Practitioners should nevertheless monitor how
the Director is addressing cases to make sure they
are up to speed on the current state of the law
and application of various USPTO procedures.
The Director review process was a very useful
tool when it was initially created in 2021. It has
become even more useful and powerful since
the USPTO revised the procedure governing
Director review and expanded its scope toinclude decisions on institution.

Contact

Haynes and Boone
180 N LaSalle Street, Suite 2215
Chicago, IL 60601, USA
Tel: +1 312 216 1620
www.haynesboone.com

THE PATENT LAWYER67

USPTO’S DIRECTOR REVIEW PROCESS

Expanding the USPTO’s
Director review processintended to review the record to decide whether
a particular PTAB panel’s decision should besustained. The Director may, however, elect toaccept briefing by the parties on the subject of
the review and, where appropriate, order oral
argument. This may be particularly helpful when
the review is aimed at a legal issue or the Director
is reviewing an issue that has broad-reaching
implications for the PTAB as a whole.
To request Director review, a party (and only aparty) to the proceeding must concurrently (1) filea Request for Rehearing by the Director and (2)send a notification of the Request for Rehearing
by the Director by email to Director_PTABDecision_
Review@uspto.gov, copying counsel for all parties.
The page limit for the request is 15 pages.
The deadline for filing a Director review request
is the same as filing a request for rehearing:
within 30 days of entry of a final written decision,
within 30 days of entry of a decision denying
institution, or within 14 days from the entry of adecision whether to institute trial.4 The Director
has the authority to extend the request deadline
for good cause, and a request for Director review
resets the time for appeal or civil action.
Once a party has requested review, a Directorcreated Advisory Committee will advise the Director
on whether the decision merits review. The
Committee includes at least 11 members andincludes representatives from various USPTO
business units. Typically, the Committee will include
members from: the office of the Under Secretary(but not including the Director or Deputy Director),
the PTAB (but not including members of the panelthat originally issued the decision on review), theOffice of the Commissioner of Patents (but notincluding the Commissioner for Patents or any
person involved in the examination of the challenged patent), the Office of the General Counsel,
and the Office of Policy and International Affairs.
While not all members of the Committee arenecessary to render a recommendation, a quorumof at least seven members must be present.
Director review begins when the Director (withthe help of the Committee) has either approveda party’s request or initiated review sua sponte. As
with sua sponte Director review, parties may notinclude new evidence or arguments in a request,
but the Director may ask for additional briefing,allow the submission of new evidence, and evenorder oral argument, when appropriate. Third
parties are not permitted to request Director review
or participate in the review process, unless the
Director specifically invites a third party to participate.
It is important to note that a granted Director
review does not automatically stay the underlying
proceeding. The Director may, however, stay thecase if necessary. In any case, the Director
maintains authority over all issues in the caseduring the pendency of review but may, where

SEPS IN INDIA

Ranjan Narula and Suvarna Pandey of RNA, Technology and IP Attorneys
summarize three recent decisions addressing the subject of contentious
issues in SEP litigation.

S

tandard Essential Patent (SEP) regime
envisages a candid and transparent
negotiation between a willing licensor(patentee) and willing licensee (implementer).
The regime incorporates mutual reciprocal
obligations on both the essential patent holder
and the implementer. It is not a ‘one-way street’
where obligations are cast on the essential patent
holder alone, rather it is important that both parties
should agree to avoid any conflicts and legal
proceedings in the future about royalty payments,
etc. However, the determination of royalty is acontentious issue. Often the negotiations failand parties land in Court(s) for determining royalty.
Whether the royalty calculation should be basedon chipsets or the end-device price is a contentious
issue. SEP holders argue that Chipsets constitutea small portion of mobile phones. The hardwareand other software technologies form a majorpart of the smartphone so royalty calculation
should be based on end-device price. In manycases, the implementor would challenge thevalidity of the patent in question as part of theroyalty negotiation process. The complaints arealso filed before the Competition Commissionof India (CCI) to probe the conduct of the SEP
holder and its dominant position while negotiating
terms and the grant of license.
The courts are mindful of the need to balance
the rights of SEP holders by providing themadequate monetary compensation with those of

68

THE PATENT LAWYER

Ranjan Narula

implementors to use the SEPs. The Courts in
SEP cases do make a conscious attempt not topass interim injunction against an implementer
until a final decision has been taken on all relevant
issues, while at the same time providing appropriatemonetary security and protection to SEP holders
in the form of a pro-tem deposit.
Our article summarizes three recent decisions
on the subject addressing the contentious issues
in SEP litigation. All the cases had come up in
Appeal before the Division Bench (two judge
bench). Therefore, binding on the Single judges
in the IP Division. The decisions also provide clarity
on the SEP landscape.

The court held that the payment of pro-tem
security is the implementer’s obligation even in
the negotiation phase. To balance the equities, theIndian court has the power to pass a pro-tem
order, if the facts so warrant. The Court outlined
the situations for payment of pro-tem order tobe passed by the Court:•
If the negotiations between the parties
fail, it does not mean that an
implementer can continue to derive
benefits by using the technology of theStandard Essential Patent proprietor
in the interregnum without making
any payments for such use.
•

The Court also noted that nearly two
years have elapsed since the institutionof the suit, and not a ‘single farthing’has been paid by Oppo. Consequently,
to balance the equities between theparties, this Court has the power to passa pro-tem order being a temporary
arrangement without a detailed
exploration of merits if the facts sowarrant.

•

The Court also relied on Ericsson v.
Intex, CS(OS) 1045/2014 where the Delhi
High Court Rules governing patent suits,2022 has recognized the concept ofpro-tem security and has held that the
Courts have the power to pass deposit
orders even on the first date of hearing
if the facts so warrant.

Oppo against Nokia

Suvarna Pandey

In this case, an appeal was filed by theappellant-plaintiff (‘Nokia’) challenging the order(dated 17 November 2022) passed by the Single
Judge of the Delhi High Court dismissing Nokia’s
application for the interim payments by Oppo.
Nokia, in its appeal, sought directions asking:a) Oppo to deposit interim security of an amountbased on either the latest counteroffer madeby it for a global license of Nokia’s portfolio ofStandard Essential Patents; orb)an amount equivalent to the royalty paid
under the Agreement executed between
the parties proportionate to the ratio of thenumber of devices sold by Oppo in India

CTC Legal Media•The Court opined that a pro-tem
security order cannot be linked to an
injunction order because, unlike an
injunction order, it does not stop or
prevent the manufacturing and sale ofinfringing devices. The intent of a protem security order is to either ensure
maintenance of status quo or to retain
the Courts’ power and ability to pass
appropriate relief at the time of thedecision of the injunction application. In
the facts of the present case, the protem security order does not confer any
advantage upon Nokia as it only
balances the asymmetric advantage

CTC Legal Media“

Whetherthe royalty
calculation
should be
based onchipsetsor theend-device
price is acontentious
issue.

”SEPS IN INDIA

How and why: standard
essential patent
licensing in India

vis-à-vis the number of devices soldglobally.

Résumés
Ranjan Narula, Managing Partner
Board Member, International
Trademark Association (INTA)
Ranjan founded the specialist IP law firm,RNA, in 2004, and is now its Managing
Partner. He has 27 years’ post qualification
experience working on contentious andnon-contentious IP and Technology issues.
Ranjan has been practicing as an advocate
and patent attorney since 1991 handling awide range of IP, IT, and technology matters
including IP management issues, strategic
advice on IP clearance, acquisition, andenforcement. Ranjan has worked in-houseand in private practice including a stint withinternational IP practice heading its India
operations. In 2019, Ranjan was invited tojoin the INTA Board of Directors.
Ranjan has been ranked as a leading IP
practitioner by various publications
including WTR 1000, IP Star (Managing IP),WIPR leaders, Who’s Who legal, Asia IP
experts, and others. Ranjan is regularly
invited to speak by Universities andchamber of commerce on IP issues. He has
authored several articles and papers on key
IP issues that are published by IP magazinesand blogs such as IAM, World Trade Mark
Review, Bloomberg, Lexology, IP Kat etc.
Suvarna Pandey, Associate Partner
Suvarna is a registered patent agent and alaw graduate. Having been in the practicefor around 13 years, her specialties include
patent searches, patent drafting, andproviding patentability and infringement
opinions. She is also involved in patent
prosecution proceedings at the patentoffice, opposition and other invalidity
proceedings. She is specialized in thedevelopment and strategic management ofpatent portfolios in areas that include
Biotechnology, chemical, andpharmaceutical inventions. She has beenadvising clients on global patent strategy
including PCT applications and national
phases in designated countries.
Suvarna has also authored various articles
and delivered training sessions in thedomain of Indian Patent practice.

THE PATENT LAWYER

69

SEPS IN INDIAThe order
establishes
that SEP
holders
can ask the
Court for the
direction of
a “Pro-tem
security
deposit”
duringthe initialstages evenwhen thematter is
not dealt
with indetail by
the Court.

”•

The Court further directed Oppo todeposit the money in Court, which will
be reimbursed to Oppo should it
succeed at the interim or final stage.

•

The Court allowed Nokia’s appeal to set
aside the challenged order. The Court
also directed the respondent to depositthe ‘last paid amount’ attributable to
India i.e., 23% of the last paid amountunder the 2018 Agreement within fourweeks.

The order establishes that SEP holders can
ask the Court for the direction of a “Pro-tem
security deposit” during the initial stages evenwhen the matter is not dealt with in detail by the
Court. On the point of prima facie infringement
by Oppo, the Court importantly mentioned thatan injunction can be secured, even if theinfringement of one patent is established either
prima facie or at the final stage. Thus, to restrain
the sale of an infringing device, an SEP holder
does not have to base its case on each of thethousands of patents that it owns and are usedin the product; it can do so by showing that one
or a handful of representative patents are infringed.
This is a welcoming move for SEP holders.
Oppo has since filed an Appeal against theorder in Supreme Court, establishing their case.
However, the Supreme Court refused to disturb
the findings of the High Court and simply extended
time for Oppo to comply with the High Court
order on pro-tem deposit by 25 August.

Intex to pay royalty for useof Ericsson’s SEPs:
In this case, Ericsson (SEP holder) had broughta suit against Intex seeking royalties on Fair,
Reasonable and Non-Discriminatory (FRAND)
terms for the use of its patents as prolonged
negotiations had failed. The Court, after hearing
both parties, held that:
1. Ericsson’s eight suit patents were prima
facie valid and essential, and Intex has
prima facie infringed Ericsson’s patents.
2.

70

THE PATENT LAWYER

Ericsson demonstrated prima facie
compliance with its FRANDcommitment
and Intex’s act of prolonging pre-suit

SEPS IN INDIA“

negotiations and thereafter initiatingproceedings against Ericsson before theCompetition Commission of India (CCI)and Intellectual Property Appellate Board(IPAB) during licensing negotiations
prima facie showed its unwillingness to
execute a FRAND license.

that an implementer has over a standard
essential patent holder.

3.

Chipset basis for the calculation ofRoyalty cannot be accepted and thepractice of royalty calculation on theend-device price is non-discriminatory.

Finally, the Court directed Intex to pay 50%
royalty at the interim stage and balance 50% by wayof a bank guarantee.
Cross Appeals were filed by both Ericsson andIntex against the Single Judge decision to theDivision Bench of the Delhi High Court.
•
Ericsson in its Appeal had prayed that
Intex be directed to pay the entire
royalty amount and not split as a bankguarantee and royalties.
•

Intex on the other hand argued that:oA single judge could not have passed
a direction to pay as well as deposit
royalty at the interim stage since
standard essential patent owners’ only
entitlement, even according to the law
laid down by foreign Courts, is royalties
at the end of the trial.

o

In standard essential patent mattersno injunction can be granted, even if
an implementer is an unwilling licensee.

The four-factor test to be satisfied is not madeout in this case (i) the asserted suit patents are infact standard essential patents, (ii) the technology
used by the implementer infringes the standard
essential patents, (iii) the royalty rate at whichpatentee is willing to license its standard essential
patents are FRAND, and (iv) the implementer isunwilling to take the license at the FRAND rate.
Finally, the Court found that Ericsson had shownin its cross-appeal that “the terms suggested by
Ericsson are prima facie FRAND terms” and that“to ensure parity with other implementers, Intex
must pay in full for the past use of the standard
essential patents.” The Court based its decisionin part on the fact that the “telecom industry has

CTC Legal Media

overwhelmingly accepted Ericsson’s standard
essential patents” and “more than one hundred
licenses have been executed by Ericsson for thesame technology globally, and similar implementers are paying royalty in accordance withthe terms suggested by Ericsson.” The Court did
not discuss those licensing terms beyond noting
at the outset of its decision that the lower Court
rejected Intex’s argument that the royalty baseshould be the chipset, not the end product, where
the lower court “held that the chipset basis forcalculation of royalty cannot be accepted andthe practice of royalty calculations on the enddevice is non-discriminatory.” The Court ultimatelyordered that “Intex [to] pay the entire royalty
amount to Ericsson within four weeks.”

Role of the CCI in SEP cases
When a patent is issued in India, and thepatentee asserts such rights, can the Competition
Commission of India (CCI) inquire into the actionsof such patentee in exercise of its powers under
the Competition Act, 2002 (“Competition Act”)”
This was dealt by the Division Bench of Delhi

CTC Legal MediaHigh Court in an appeal by Ericsson on a complaint
made by Micromax and Intex that Ericsson was
imposing conditions for licensing certain SEP” inthe field of telecommunications that are not fair,reasonable, or non-discriminatory. A similar question was raised by Monsanto as the Court had
observed there was no bar in law to proceedings
initiated by CCI for violation of Section 3 and 4 of
the Competition Act (Section 3 essentially bars
agreements which will have an adverse effect oncompetition and Section 4 bars any enterprisefrom abusing its dominant position).
The Division Bench (two-judge bench), in theiranalysis, discussed that “the Competition Act is a
general legislation pertaining to anti-competitive
agreements and abuse of dominant position”.
The Court also opined that for deciding anapplication for compulsory licensing, the controller
is empowered by the Patents Act to consider
the reasonability of conditions imposed in alicense agreement. Chapter XVI of the Patents
Act (relating to Working of Patents, Compulsory
Licenses, and Revocation) is a complete code,on all issues pertaining to unreasonable conditions“

To balance
the equities,
the Indian
court hasthe power
to pass a
pro-temorder.

”THE PATENT LAWYER

71

SEPS IN INDIA

Therefore,a pro-tem
deposit oran interim
calculationof royalty isessential toincentivize
companies
to innovate.

”

To sum up
The courts by the above decisions have tried tosimplify the a) royalty calculation b) made it clearthat pending challenge to the Patent pro-tem
deposit can be ordered by the court c) the Patents
Act is the relevant statute to decide on issues
pertaining to unreasonable conditions in agreements of licensing of patents, abuse of status asa patentee, inquiry in respect thereof, and relief
to be granted.
Overall, the jurisprudence, including the enforcement of SEPs with these series of judgements
would be simplified and in line with the standtaken by the courts in other countries. It was alsomuch needed as the Court noted in Ericsson v
Intex case the fact that the judge-population
ratio is extremely poor in India, expeditious disposalof patent suits cannot be expected at the costof other suits. Therefore, a pro-tem deposit or aninterim calculation of royalty is essential toincentivize companies to innovate.

Contact

RNA, Technology and IP Attorneys
401-402, 4th Floor, Suncity Success Tower,
Sector – 65, Golf Course Extension Road,
Gurgaon - 122 005,
National Capital Region (Haryana), India
Offices: Delhi | Chennai
Tel: +91 124 429 6999
info@rnaip.com
www.rnaip.com

From past to present:
shifting interpretations of
The Mexican Patent Officeon divisional applications
Sergio Olivares, Daniel Sánchez and Rommy Morales of OLIVARES compare
the new approach to divisional applications implemented with the Federal
Law for the Protection of Industrial Property 2020 with the old to provide
guidance for proceeding.

T

he coming into effect of the Federal Law
for the Protection of Industrial Property(FLPIP) on November 5, 2020, was a turning
point that brought substantial changes to Mexico’s
Industrial Property law, particularly concerning thepractice with respect to divisional applications, marking the beginning of a new approach in this field.
Divisional applications play a crucial role inintellectual property protection by allowing
applicants to pursue distinct inventions separate
from those claimed in the initial application andany prior divisional applications. In this regard, it
is important to consider that Mexican law only
recognizes divisional applications, unlike the US
law where continuation or continuation in part
applications exist as well.
Before the FLPIP was enacted, the submission
date of a divisional application was one of themost important points to bear in mind. Divisional
applications could be filed as long as the parent
case was still pending, regardless of whether
said parent case was a divisional application orwhether the initial application was pending or
had already been granted.
Nonetheless, the implementation of the current
law imposed new constraints and additional
requirements for applicants to contemplate whenfiling one or more divisional applications, which
directly impact the two types of divisional applications recognized by IMPI, those voluntarily
submitted, and those submitted in response toa lack of unity of invention objection.

Voluntary divisional applications
Voluntary divisional applications are commonly used

72

THE PATENT LAWYER

CTC Legal MediaCTC Legal Media“

If the patentapplicationencompasses
multipleinventions
not linked by
the same
inventive
concept, theapplicantcan even filea single
divisional
application
pursuing
several oftheseinventions.

”when the applicant wishes to pursue a different
scope, seek protection for a different invention,or simply as a strategy to maintain the pendencyof the patent family.
Unlike the abrogated law, which was silent on
voluntary divisional applications, the current law
does so by stating that a pending initial patentapplication can be voluntarily divided. However, thisprovision does not extend to divisional applications.
Voluntary divisional applications can be submitted
at any time and up until before the grant fee payment
or the issuance of the notice of denial, with no limit
imposed on the number of divisional applications
that may be submitted. Taking this provision into
consideration, it becomes possible to submit multiple voluntary divisional applications, each directed
to a different invention or group of inventions, alldirectly derived from the initial application while
it remains pending.

Divisional applications submitted
by request of IMPI
Mexican legislation stipulates that a patent application should refer to one invention or a groupof inventions sharing a single inventive concept.
This requirement of unity of invention involves
having a clear relationship between the essential
technical features present in the invention or groupof inventions, contributing to the state of the art.
During the substantive examination process, if
it is found that the patent application fails to comply
with the unity of invention requirement, IMPI issues
an office action requesting the applicant to limit theclaims to the main invention and submit one or moredivisional applications for the remaining inventions.

THE PATENT LAWYER73

DIVISIONAL APPLICATIONS: MEXICO“

in agreements of licensing of patents, abuse ofstatus as a patentee, inquiry in respect thereof,
and relief to be granted. Therefore, the court
concluded that the Patents Act should be invokedwhile dealing with anti-competitive agreements
and abuse of a dominant position by a patentee
while exercising his rights under the Patents Act.

DIVISIONAL APPLICATIONS: MEXICO

Résumés
Sergio Olivares joined OLIVARES in 1987 and has been practicing
intellectual property law for more than three decades. He has been apartner since 1994 and Chairman of the firm’s Management Committee
since 2009. He is proficient across all areas of IP law, but works mostclosely with the firm’s Patent Group. Sergio is highly recommended byleading industry publications and directories as a leader in IP. He has
been integral to OLIVARES’ expansion into new and innovative practiceareas; has been at the helm of cases that are helping to shape thestandard for evaluating inventive step and novelty for pharmaceuticalpatents; and was involved in a landmark Supreme Court case thatchanged the landscape for unfair competition enforcement in Mexico.
Sergio received his J.D. from the Universidad Intercontinental in 1991
and graduated from the Franklin Pierce Center for Intellectual Property
in 1993.
Daniel Sánchez joined OLIVARES in 2000, became a partner in 2011,
and co-chairs the firm’s Litigation and Patent Teams. He is one of theleading intellectual property and administrative litigators in Mexico
and is recognized by industry rankings and publications including
Chambers Latin America, IAM Patent 1000, and WTR 1000. As one of
the few regulatory and administrative litigation experts in Mexico,
Mr. Sanchez guided the development and implementation of arevolutionary and proprietary software system that replicates the drug
naming and labeling approval process within COFEPRIS, Mexico’s
health ministry. This drastically improves the accuracy of advice about
whether clients’ marketing authorizations can and will be approved.
He also has led Olivares’ team in obtaining alcoholic beverageadvertisement approvals from COFEPRIS, has authored various articles
on IP and Life Sciences-related matters, and he has lectured on IP
topics in both national and international forums.
Rommy Morales boasts over 16 years of experience in intellectual
property, with a specialization in patent prosecution, IP litigation,and plant variety protection. She is renowned for accurately identifying
clients’ needs and subsequently developing and implementing
strategies tailored to the protection of their industrial property rights.
Rommy provides technical and legal advice to national andinternational clients in the pharmaceutical, biotechnology, and chemicalindustries. Her advice covers the preparation, filing, prosecution,
granting, and enforcement of patents, including patentability andvalidity opinions, as well as freedom-to-operate analyses.
In her role, Rommy Morales supervises the team responsible for filingand prosecuting patent applications. Owing to her distinguished reputation
as a biologist and her extensive experience in the field, she also leads thedepartment dedicated to plant variety protection in Mexico.
Rommy has participated in numerous legal proceedings related
to life sciences, including litigation cases involving pharmaceuticalproducts of significant commercial interest.

74

THE PATENT LAWYERWhen faced with the unity rejection,
applicants have several routes to consider. One
option is to maintain the claims focused on theinvention of interest while eliminating the remaining
claims. Applicants have the opportunity to pursue
these eliminated claims through one or moredivisional applications, which must be submitted
along with the response to the office action
objecting to the unity of invention.
If the patent application encompasses multiple
inventions not linked by the same inventive
concept, the applicant can even file a single
divisional application pursuing several of theseinventions. This would trigger a new unity of
invention objection, thereby providing a newopportunity to submit cascade divisional applications in the future.
Alternatively, applicants can choose to submit
arguments to persuade the examiner that theclaimed invention(s) are indeed related by thesame inventive concept. Another viable approachis to make amendments to the claims, ensuring
compliance with the unity of invention requirement
without the need to submit divisional applications.

Restrictions for subject-matterthat can be pursued in divisional
applications
At the time of submission, every divisional application must include the specification, claims,
drawings, and sequence listings (where applicable),along with the official filing fee payment. These
divisional applications are not allowed to introduce
new subject matter or broaden the scope of theoriginal case.
Divisional applications must pursue a different
invention from the one claimed in the initial
application and any other previous divisional
applications. While the law does not define
what is understood by a “different invention”, thelaw does set a clear boundary: a patent will not
be granted for subject matter that is alreadyprotected by another patent or for non-substantial
variation, regardless of whether the applicant
remains the same.
As a consequence, IMPI could reject a divisional
application seeking protection for a non-substantial
variation of the subject matter claimed in the initial
application or applications within the same family,
although the claimed matter is not identical, butthere is overlapping subject matter.
Another significant limitation found in the current
law is that once an invention or group of inventions
is no longer claimed when a division takes
place, it cannot be claimed again in the initial
application or the one that triggered thedivision.
It is important to highlight that these limitations
apply not only to patent applications but also toutility model and industrial design applications.

CTC Legal Media

Cascade divisional applications
Before the entry into force of the LFPPI, cascade
divisional applications were accepted by IMPI aslong as the immediate predecessor application
was still pending, regardless of the status of theinitial application or the generation of theimmediate predecessor (e.g., first-generation,
second-generation, etc.).
Nevertheless, a substantial restriction wasincorporated into the current law, as it stipulates
that divisional applications cannot consist of thedivision of other divisional applications unlessthey are deemed appropriate by IMPI or filed in
response to a unity objection. Failure to meetthis condition results in the application not
being recognized as a divisional, depriving it of
the legal filing date or priority rights of theapplication from which it seeks to derive. Instead,
it will be treated as an independent application
filed on the date it was submitted to IMPI, which
would finally lead to the refusal of the application
due to lack of novelty in view of the publicationof the initial patent application.
Regardless of the major limiting factor discussed
above, the transitional articles of the new law
provide an exception. They state that patent,utility model, or industrial design applications thatwere pending at the time of the law’s enactment
would continue to be prosecuted in accordancewith the provisions in force at the time they werefiled.
Considering the above, the limitations imposedon cascade divisional applications should apply
solely to initial (root) applications filed on or afterNovember 5, 2020. In contrast, any applications
that remained pending and were filed before
this date should be prosecuted according to theprovisions outlined in the preceding law.
However, the authorities’ interpretation of theaforementioned legal provisions has been
uncertain, as IMPI has adopted a series of varying
criteria over time. This has led to a shifting landscape for divisional patent applications. The following
section will explore the evolution of IMPI’s interpretation and the impact it has had on theprosecution of cascade divisional applications.
Analyzing the journey of cascade divisional
applications: where do we stand now?
Despite the provisions contemplated of the
new law and the provisions established in ourconstitution that indicate that laws cannot beapplied retroactively to the detriment of theapplicant, since November 5, 2020, and forapproximately one year thereafter, IMPI rejectedvoluntary cascade divisional applications, eventhose that derived from applications prosecuted
under the previous law.
These cascade divisional applications were
not recognized as divisional patent applications
but considered as independent applications

CTC Legal Media

Sergio Olivares

Daniel Sánchez

Rommy Morales

under the premise that the prosecution of theirinitial parent case had already been concluded.
In other words, divisional applications that derived
from an initial application filed under the previous
law were being analyzed by IMPI according to
the new law just because they were filed afterNovember 5, 2020, instead of using the law
applied to the initial application.
Given the significant impact of this uncertain
criteria on Mexico’s patent system, OLIVARES, in
conjunction with various affiliated associations,promoted a shift in criteria for proper interpretationof the legal framework by the authority. As aresult of these efforts, in 2022, IMPI began accepting
cascade divisional applications deriving fromthose filed under the previous law.
Unfortunately, this revised approach did notlast long, since recently, IMPI reverted to its
original position, dismissing voluntarily submitted
cascade divisional applications once again. Thistime, the authority is grounding its arguments
on a court decision, asserting that a divisional
application cannot be accepted once the prosecution of the parent application has concluded. As
a consequence, litigation on these matters will
be necessary.
This prevailing scenario could have a profound
impact on the patent landscape since it raises
the potential for initiating legal actions by third
parties seeking the nullity of cascade divisional
applications that had been previously acceptedby IMPI. Parties may challenge the validity ofthese divisional applications based on the IMPI’s
interpretation of the law. Moreover, it could set
a precedent, questioning the legitimacy of othercascade divisional applications, even those granted
under different interpretations of the law.
Facing this uncertainty of IMPI’s criteria,predicting the future of divisional applications
becomes quite challenging. Therefore, it isessential to stay aware of this evolving patent
landscape. This will enable patent holders toadapt and formulate appropriate strategies forthe timely filing of divisional applications.

Contact

OLIVARES
Pedro Luis Ogazón 17, San Ángel,Álvaro Obregón, 01000 Ciudad de
México, CDMX, Mexico
Tel: + 52 (55) 5322 3000
www.olivares.mx

THE PATENT LAWYER

75

DIVISIONAL APPLICATIONS: MEXICO

The first invention pursued in the claims is
considered the main invention, which according
to the current law should be examined on the
merits. However, in practice, IMPI usually allows
applicants to claim the invention of interest,
even if it does not always correspond to themain invention.

COMMON GENERAL KNOWLEDGE

DPS Parmer, Special Counsel at LexOrbis, provides guidelines for the useof common general knowledge to support the application and subsequent
approval of a patent in India.

T

he term ‘Common General knowledge’(CGK), though not found in the patent act
and patent rule, is extensively relied uponin patent refusal reasoning and as grounds forinvalidation of patents. What constitutes CGK
remains elusive to understand at the time whenthe examiner/controller undertakes the exercise
to look into the known aspects of the invention.
The examiner in general is believed to have thebackground knowledge in the relevant art which
they might have gained through, or are expected
to have gained through, the study of basic handbooks and textbooks. What appears in thesetextbooks or handbooks is believed to be theundisputed knowledge that can qualify for being
used to find obviousness in any invention.

DPS Parmer

RésuméDPS Parmar, Former Technical Member (Patents), erstwhile
Intellectual Property Appellate Board Special Counsel, LexOrbis
DPS Parmar heads the Patents Contentious Practice Group at LexOrbis.
After joining the IPAB as a Technical Member (Patents) in 2011, he has
been instrumental in writing some path breaking and insightful decisions
on Indian patent law issues. These include establishing legal positions
on excluded subject matter under Section 3(d), 3(i), and 3(k), divisional
applications, disclosure requirements under Section 8, working
statements and compulsory license, to name a few. Before joining IPAB,
Mr. Parmar worked with the Indian Patent Office (IPO) for over 27 years
and had played a vital role both at the administrative and policy levels.
He represented India at various rounds of discussions organized by theWorld Intellectual Property Organization (WIPO) and attended follow-on
programs at the European and Japanese Patent Offices. He wasinstrumental in the recognition of IPO as the 15th ISA and IPEA under the
Patent Cooperation Treaty (PCT). He also served as the head of theIntellectual Property Training Institute (IPTI) in Nagpur, which was
responsible for providing training to new examiners at the IPO.

76

THE PATENT LAWYER

Additionally, the knowledge commonly known andgenerally accepted by the large majority of thosein the art may come from various sources likeresearch papers, articles in journals, and magazines
widely circulated among the subscribers. The later
content, though widely circulated, alone would
not make this content CGK. More so, the knowledge
known to the workers that is available within closed
walls of an industrial unit or research lab would
not qualify as CGK.
Another pertinent point relating to the CGK isoften raised that the CGK is not static, and it keeps
on changing. It is true that CGK is not always stable
and can switch to create new common knowledge.
A well-known example in this regard often quoted
is that for centuries it was common knowledge
in Europe that the Sun revolved around the Earth,but after years of arguments, it is now common
knowledge that the Earth revolves around theSun. So, what was once considered common
knowledge amongst a group, society, orcommunity may later turn out to be false. Having
said that, does it mean that CGK has no role toplay in the determination of obviousness during
the analysis of an invention for purpose section
2(1) (j), (ja), and section 2(l)?

Common general knowledge v.
common belief
Patent analysis by an examiner is usually done
to prove certain facts based on known facts.
Legally speaking, it is hard to define fact from
common belief. Basically, common belief canbe easily defined as its only requirement is for amajority of people within a specific group,
community, or society to believe something to
be true. On the other hand, CGK, in addition tomeeting this requirement, should also be fact. It
may be noted that, depending on the context

CTC Legal Media

Common general knowledge
and anticipation
Rules relating to the determination of anticipation
are contained in Chapter VI (section 29-section34) of the Patents Act, 1970 which states what is
not an anticipation. There is nothing in this chapterthat points towards CGK to state as a reason todeny a patent on the grounds of novelty. However,when it comes to grounds of opposition under
section 25 (1) (c) (inter alia publicly known inIndia),25 (2) (d) (inter alia publicly known in India),
and invalidation under section 64 (e) (inter alia
publicly known in India) the question of common
knowledge comes to the forefront. Regarding
an investigation by an examiner, section 13 states“[…] anticipated by publication in India or elsewherein any document,” which means the examiner’s
investigation is limited to published documents.
However, when it comes to the revocation of apatent, the invention may be hit by what is‘publicly known in India’ before the priority dateof the application.

Combining common generalknowledge with prior art
for inventive step
‘Inventive step’ is defined under section 2(1) (ja)which states it “means a feature of an invention
that involves technical advance as compared tothe existing knowledge […] and that makes theinvention not obvious to a person skilled in the Art.”The ‘existing knowledge’ referred to here does
include the CGK and the prior art and nothingelse. Therefore, for inventive step analysis, theinvestigation into both would be mandatory.
Further, for an objection of lack of inventive step,
the relevant CGK is that knowledge which is
known at the priority date of the claim in question.
This means when the claim in question is filedby the applicant. The first reported case on theuse of CGK for investigating the question of
inventive step was Automatic Coil Winder Co Ld.
v. Taylor Electrical Instruments Ld. (1944) 61 RPC
41 at page 43) where the Canadian court
classified ‘common general knowledge’ as thatknowledge which every worker in the art may be
expected to have as part of their technical equipment. It is compounded by training, experience,
observation, and reading. In this case, the court
accepted the evidence of Dr Eccles, who could
rely on his teaching experience. In relation to proofof exitance of CGK in patent matters a passage

CTC Legal Media“In the legal
setting,
rules ofevidence
generally
excludehearsay,
which maydraw on“facts”
someonebelievesto be“commonknowledge”.

”

from Terrell on Law of Patents, 16th Edition, isworth noting, which states that:“Proof of common knowledge is given by
witnesses competent to speak upon thematter, who, to supplement their own
recollections, may refer to standard works
upon the subject which were published at thetime and which were known to them. In orderto establish whether something is common
general knowledge, the first and mostimportant step is to look at the sources fromwhich the skilled addressee could acquire his
information.
The publication at or before the relevant dateof other documents such as patent
specifications may be to some extent prima
facie evidence tending to show that thestatements contained in them were part of thecommon knowledge, but is far from complete
proof, as the statements may well have been
discredited or forgotten or merely ignored.
Evidence may, however, be given to prove thatsuch statements did become part of thecommon knowledge.”
In a court situation, CGK may be establishedby the direct evidence of a person skilled in the art,
but such advice is usually unavailable during theexamination of the application to ascertain its
patent eligibility.

Evidentiary proof of CGK isnecessary
It is common to raise the objection based on CGK
at the stage of FER in India and other jurisdictions.
But when the applicant’s reply is received andthe existence of CGK is contested, it is necessarythat the contention of the examiner is supported
by direct material evidence. The Australian Patent
Office manual issued guidelines on use of CGK
and particularly suggested that the examiner
give evidence in support of CGK:
“Note, however, that when respondingat further report stage, depending on theevidence and argument supplied by theapplicant, it may be appropriate to support
further arguments on the nature of thecommon general knowledge, by reference
to written material.”
In the absence of such guidelines, the Controllers
in India are inclined to raise objections, like prior
art read with common general knowledge, to makethe invention obvious by treating themselves asa person skilled in the art and who possess thecommon knowledge. Obviously, the result ofsuch objection may lead to the refusal of apatent and that is what happened in the AGFA
NV case where a patent was refused on thisground. Delhi High Court, while disposing of theappeal in AGFA NV v. Asstt. Controller P&D(C.A.(COMM.IPD-PAT) 477/2022), 2 June 2023, laid

THE PATENT LAWYER

77

COMMON GENERAL KNOWLEDGE

Using ‘Common
General Knowledge’ todetermine obviousness

and professional setting, many techniques may
be employed in response to the question of
distinguishing truth from fact in matters thathave become CGK. However, in the legal setting,rules of evidence generally exclude hearsay,
which may draw on “facts” someone believes tobe “common knowledge”.

COMMON GENERAL KNOWLEDGE

the rules in relation to the situations where proofin the form of evidence would be necessary tosupport the objection of exitance of CGK.
Justice Amit Bansal examined the use ofcommon knowledge in the context of patentlaw in various jurisdictions including India andruled that:“37. In the present case, however, theController has failed to give any sourceof the common knowledge that has been
considered. Therefore, it cannot be construed
as to what precise element of ‘common
general knowledge’ has been consideredalong with the cited prior art to claim that the
combination of the teachings of the prior art
and the ‘common general knowledge’ led to afinding of lack of inventive step.”
The Delhi High Court relied on Terrel (parareferred ante) and observed that:“34. […] for the Controller to rely on ‘common
general knowledge’ as a ground for refusinga patent application, it is essential to specify
the source of the said knowledge. It would
be essential that the said source of the‘common general knowledge’ would havebeen published before the priority date of
the patent application. In addition, the factthat a theory or principle or knowledge has

78

THE PATENT LAWYER

become common knowledge needs to be
substantiated by some evidence. The said
evidence could be in the form of references
to the ‘common general knowledge’
textbooks or research articles or standard
documents.”

Cautionary remarks

Contact

LexOrbis709/ 710,
Tolstoy House,
15-17, Tolstoy Marg,New Delhi- 110001
mail@lexorbis.com
www.lexorbis.com

The value of CGK for the purpose of raisingobjections at the FER stage cannot be denied. But
when the existence of such knowledge is disputedby the applicant in the reply to FER, the examiner/
controller would now be required to provide thesubstantive proof that could be in the form ofreferences to CGK in textbooks, research articles,
or standard documents. It is important to notethat the Delhi High Court allowed the grant of
the patent in the AGFA case for lack of evidence
on CGK. Since this ruling on common generalknowledge is binding on the IPO, CGPDTM may
issue suitable guidelines to stay in tune withinternational practice on this issue. Expert
opinion would be useful to deal with objections
raised under section 2(1) (ja) where the examiner/
controller uses CGK to prove obviousness of theclaimed invention.

CTC Legal MediaPATENTABILITY OF CRYSTALLINE FORMS: RUSSIA
PATENTABILITY OF CRYSTALLINE FORMS: RUSSIA

Current practice ofpatenting new crystalline
forms of biologically
active compounds inthe Russian Federation
Elena Nazina and Lev Zhilin of Gorodissky & Partners detail the changes
to Rospatent’s approach to the patentability of crystalline forms that are
resulting in the termination of issuance or protection.

A

patent in the Russian Federation can beobtained both in accordance with thenational patent legislation in the Federal
Service for Intellectual Property (Rospatent), or/and in accordance with the Eurasian patentlegislation in the Eurasian Patent Office (EAPO).
Obtaining a patent for such inventions as agroup of compounds, an individual chemicalcompound, or salts, esters, isomers thereof, as wellas crystalline forms of the compound became
possible in 1991 with the entry into force of the
USSR Patent Law.
Until recently, the requirements and approaches
for the examination of such inventions, in particular crystalline forms, were the same for national
and Eurasian applications and were harmonizedwith many other jurisdictions.
The crystalline form of a compound in comparison with its amorphous form, as a rule, has anumber of physicochemical properties providing
it with certain advantages that make it possible
to obtain, store, and use the drug more efficiently.
However, obtaining the crystalline form of abiologically active substance, both the first andsubsequent, is a complex process with unpredictable results. Despite the fact that various
methods of obtaining crystals are generally known,
due to the many factors affecting the formationof a crystal and its growth, knowledge of thestate of the art does not allow the inventor to
predict in advance with confidence not only the80

THE PATENT LAWYERElena Nazina

Lev Zhilinconditions of obtaining a crystal, but even thepossibility of formation of the crystal of a particularcompound, not to mention physicochemical
properties of the resulting crystalline form.
Such principle was adhered to by Rospatent
when examining inventions related to the crystalline forms of known compounds. The same isalso adhered to by the EAPO up to date.
To obtain a national patent in Russia for the
crystalline form of a known compound, it waspreviously sufficient to indicate and confirm thatthe crystalline form is new and has some improved
properties, such as solubility, non-hygroscopicity,
stability, etc., compared with the known crystalline
form(s) or amorphous form of the compound.
Such information is still sufficient for obtaining apatent for a new crystalline form for the Eurasianapplication.
Rospatent’s approach has changed dramaticallywith the introduction of the following regulationsin 2021 for some inventions:
Item 83 of the Rules:
Not to be recognized as conforming to thecondition of the inventive step, inventions whichin particular are based on:- the creation of a chemical compound that is aform of a known chemical compound (inparticular, isomer, stereoisomer, enantiomer,
amorphous or crystalline form) or its derivative(in particular, a salt, solvate, hydrate, complex

CTC Legal Media

compound or ester), if such compound does notexhibit new qualitative or quantitative
properties in comparison with known
compound, which are not obvious for a
specialist explicitly from the state of the art.
Item 55 (6) of the Requirements:
To confirm the possibility of implementing an
invention related to a substance, the following
information is provided:6) if the invention relates to a chemicalcompound that is a form of a known
chemical compound (in particular, anisomer, stereoisomer, enantiomer,
amorphous or crystalline form) or its
derivatives (in particular, salt, solvate,
hydrate, complex compound or ester), theninformation is provided about its
new qualitative or quantitative properties
in comparison with known compound,which are not obvious for a specialist
explicitly from the state of the art as wellas the data reliably confirming such newproperties.
As can be seen, the additions introduced
relate to the need to identify new properties forthe forms or derivatives of the compound incomparison with properties known for the compound that do not follow explicitly from the stateof the art for a specialist.

CTC Legal Media

Résumés
Elena Nazina, Partner, Chief of Сhemical & Life Science
Department, Russian & Eurasian Patent Attorney
Elena joined Gorodissky & Partners in 1999 and was promoted topartner in 2004. She is skilled in general organic, bio, agricultural, andpetrochemistry, and also in pharmaceutics, perfumery, and cosmetics.
She has vast experience in counseling Russian and foreign companies
in the fields of pharmaceuticals, animal drugs, crop protection, and oil
and gas refining on forming patent strategies in Russia and abroad.
Elena represents clients before the Russian PTO and commercial
courts, and also the Russian IP Court in objection cases against patent
grants, court cases on infringement, etc. She also provides technicaland legal evaluations for clients.
Lev Zhilin, Russian and Eurasian Patent Attorney
Lev graduated from the People’s Friendship University of Russia in
2005. Till 2007 he worked as a patent expert in the Russian PTO.
Since 2007 he has been with Gorodissky & Partners where he deals
with the representation of Russian and foreign pharmaceutical, food,cosmetics, and chemical companies before Russian and Eurasian
PTOs, and advises on patenting strategy in Russia and Eurasia. His
areas of particular experience include: biologically active substances,in particular; drugs, veterinary drugs, detergents, disinfectants,
cosmetics, perfumes, and their use; targeted medical products, meansof diagnostics; treatment, prevention, and diagnosis methods. Lev
represents clients before the Russian & Eurasian PTO in objection
cases against patent grants.

THE PATENT LAWYER

81

PATENTABILITY OF CRYSTALLINE FORMS: RUSSIA-82

THE PATENT LAWYER

It is well known that the crystalline forms ofcompounds are obtained in order toimprove various physico-chemical
properties, for example, stability, solubility,
hygroscopicity, etc.;-

The state of the art discloses the generalprinciples and methods for obtaining
polymorphs with the necessary
characteristics;-

The discovery of a new form of a known
compound with a known activity is not

CTC Legal Mediasufficient for such form to meet of theinventive step patentability condition;-

Improvement of stability, solubility,
bioavailability, non-hygroscopicity andothers cannot be recognized as an
unexpected technical result for a new
crystalline form;-

There is no data in the application materials
confirming the achievement of an
unexpected technical result in terms oftreatment when using the claimed
crystalline form;-

An invention based on the choice of optimalor operating values of parameters is notrecognized as conforming to the conditionof the inventive step, if the influence of theseparameters on the technical result is known,
and if the choice can be made by the usual
trial and error method or by using
conventional technological methods.

Thus, Rospatent believes that no technical results
for a new crystalline form, apart from improved
biological activity/therapeutic effect, can serve
as a basis for recognizing its inventive step dueto the fact that general methods for obtaining
crystals are known and it is obvious to thespecialist that: crystalline form of the compoundmight have improved physicochemical properties,
how to obtain new crystal forms with the expected
improved physicochemical properties, which, infact, deprives such an invention of the inventive
step.
The absence of experimental data confirming
the improved biological activity/therapeutic
effect of the new crystalline form in the applicationmaterials on the date of its filing with Rospatent
may serve as a serious obstacle to obtaining apatent. The submission of such data during theexamination of the application (which is allowedby national legislation) is currently consideredby Rospatent as an “indication of the technicalresult that is provided by the invention and is not
related to the technical result disclosed in theoriginal application documents”. As a result, suchdata is often rejected by Rospatent, eventhough the relationship of biological activity/
therapeutic effect with biological availability
and solubility is obvious to a specialist.
At the same time, the process of obtaining a
new crystalline form is recognized by Rospatent
as an invention having an inventive step.
The current position of Rospatent has led to that,starting from the middle of 2021, the issuance ofpatents for inventions related to new crystalline
forms of compounds, hydrates, solvates, cocrystals, has essentially ceased.

CTC Legal MediaAt the moment, the Chamber of Patent Disputesof Rospatent (CPD)/which is the first (administrative) instance for considering appeals against
Rospatent’s decisions, fully supports Rospatent’s
position and none of the appeals filed against
decisions to refuse to grant patents for new crystalline forms of a known compound has beensatisfied by CPD at the moment.
A certain optimism is caused by the positionof the Intellectual Property Rights Court (IPC)
and the IPC Presidium, which clearly disagreewith Rospatent’s position on the discussed issue,
which is reflected in the decisions that haveentered into force at the moment on several
appeals against the decisions of the Rospatent(CPD) on the retention of Rospatent’s decisions
on crystalline forms. However, since the consideration of appeals is still ongoing in the IPC, it is
too early to judge the prospects for patent
protection of crystalline forms in Rospatent.
It should be noted that to date, the position of
the EAPO with respect to the inventions relatingto crystalline forms differs significantly from thecurrent position of Rospatent. The EAPO issues
patents for new crystalline forms of known biologically active compounds that exhibit any properties
improved in comparison with that of the previously
known form/forms of the compound.
Thus, when deciding to file a new applicationin Russia for an invention directed to a new
crystalline form of a known compound, the applicant should carefully consider the choice ofpatenting procedure, taking into account the factthat without experimental data in the applicationmaterials contained on the date of its filing,
confirming the improved biological activity/
therapeutic effect of the new crystalline form incomparison with that of the known forms of thecompound, obtaining a patent for a crystalline
form in Rospatent is not guaranteed.
If an application for a new crystalline form has
already been filed with Rospatent, taking into
account the current position of Rospatent
regarding the patentability of new crystalline forms,
behind which, in fact, the goal is to terminate
the issuance of national patents for crystalline
forms, as well as, in light of the pending proceedings
currently taking place in the CPD and IPC on
applications related to crystalline forms, themain recommendation for the applicant may be
to maintain the application in Rospatent in force.
This can be done, in particular, by submitting adivision application(s) in anticipation of a possible
change in the position and practice of Rospatent.

“

Startingfrom themiddle of2021, theissuance ofpatents forinventions
relatedto new
crystalline
forms ofcompounds,
hydrates,solvates,co-crystals,
hasessentiallyceased.

”Contact

Gorodissky &Partners
B. Spasskaya Str., 25,
bldg 3,
Moscow 129090,
RussiaTel: +7 495 937 6116
pat@gorodissky.com
www.gorodissky.com

THE PATENT LAWYER83

PATENTABILITY OF CRYSTALLINE FORMS: RUSSIA

Thus, in essence, the regulations were supplemented by the requirements for the listed subjectsof the invention, which were actually applied by
Rospatent when evaluating the inventive step
thereof.
It is quite obvious that the amended
regulations do not limit new qualitative andquantitative properties, of the new crystal form,
which ensures that this form corresponds to theinventive step. Therefore, the amendments madesuggest that the crystalline form of the compound
may have any new properties related to bothbiological activity and physicochemical propertiesof the crystalline form, such as stability, nonhygro-scopicity, solubility, uniform particle size
distribution, etc.
Consequently, said amendment in the regulations allow the applicant to provide data confirming
those properties that were discovered anddeclared by the applicant in the description of
the application as a technical result achieved
during the implementation of the invention.
However, the current practice of Rospatentshows that, apparently, the introduction of theabove requirements was used by Rospatent totighten the requirements for establishing thepatentability of crystalline forms, which inessence led to the termination of granting
patents for inventions related to new crystalline
forms of known compounds.
Despite the absence of any grounds in theamended requirements, Rospatent believes
that the new crystalline form of a biologically
active compound, both the first and subsequent,can be recognized as having the inventive step
only if it has unexpectedly improved biologicalactivity compared to the known non-crystalline
and/or crystalline form of the compound.
As for other new improved and non-obvious
properties of the new crystal form, namely, physicochemical properties, from the point of view of
Rospatent, such properties are obvious to a
specialist in the art.
Common arguments and conclusions of
Rospatent experts used to deny the inventive
step of new crystal forms are the following:FAIR HEARING IN INDIA

Tusha Malhotra and Yamini Jaswal of Anand & Anand detail the components
of a fair hearing with reference to various judicial precedents specific topatent cases.

Reasoning is the life of law and helps in theobservance of the law of precedent. It is amandatory requirement of procedural
law and an indispensable part of the basic ruleof law. A litigant has a legitimate expectation of
knowing reasons for the rejection of their claim,
and a court’s failure to give reasons amounts tothe denial of justice. A reasoned judgment isprimarily written to clarify one’s thoughts, communicate the reasons for the decision to theconcerned, and provide appropriate considerationby the appellate/higher court.1
In its broadest sense, natural justice may
simply mean, “the natural sense of what is rightand wrong” and in its technical sense it is often
equated to ‘fairness’.2 By developing the principles
of natural justice (hereinafter referred to as ‘PNJ’),
the Courts have devised guiding factors for afair administrative procedure.
The PNJ are rooted in three cornerstones.
Firstly, nemo judex in causa sua, the ‘rule against
bias’ which means that no person shall be a
judge in their own cause. This guarantees thatany authority entrusted with a hearing andjudgment is impartial and acts without bias.
Secondly, audi alteram partem, the ‘right to fairhearing’ which creates an obligation on the
adjudicating authority to hear the party concerned since no person should be censured unheard.
Thirdly, the ‘rule of speaking order/reasonedorder’ or ‘the rule of reasoning’, which imposes a
duty on the authority to give reasons in supportof the decision delivered by it.
In the year 1962, the Hon’ble Supreme Courtof India3 embarked on an expansionist course

84

THE PATENT LAWYER

Tusha Malhotra

Yamini Jaswal

wherein it recognized the nature of the rightaffected and the power conferred on the authority
with respect to the right of fair hearing given to
the party concerned. Thereafter, several Courts
have evolved the jurisprudence to reach a stageof universalization of the principals involved inhearings before the Courts as it insists that fairplay applies to all proceedings, whether administrative or quasi-judicial in nature.
In the present article, the authors have endeavored to briefly encapsulate the components offair hearing and the various judicial precedents,
particularly in the intellectual property spherewith a special focus on patent cases.
a. Notice: It simply means making
something known, of what a person
was or might be ignorant of before.
Any proceeding taken against
a person without notice to them
violates natural justice4. A notice, to bevalid and effective, must be properly
served on the concerned person. The
notice must give the individual
concerned sufficient time to enable
them to prepare their defense and filetheir objections.5 A notice not specifying
the grounds is bad and would vitiate theentire proceedings.6 The statutory
provisions may ordinarily prescribe theform in which the notice is to be issued
to the affected party.
b.

Disclosure of materials to the party:
The general principle is that no material
should be relied on against a person,

CTC Legal Mediac.

Hearing: Lord Morris emphasized in
Ridge v. Baldwin8 that the essential
requirements of natural justiceat least include that before someone
is condemned, they should havean opportunity to defend themselves.

d.

Receiving evidence in the presenceof the other party: Ordinarily, in an oral
hearing, the ideal procedure is to takeevidence against the party concernedin their presence.9

e.

Receiving evidence produced by theconcerned person: A basic principleof natural justice is that a party shouldhave the opportunity to adduce all
relevant evidence on which they rely.10

f.

Right to counsel: In a case wherecomplicated questions of law and fact
arise, where evidence is elaborate and theparty concerned may not be ina position to meet the situation themselves
effectively, denial of legal assistance may
amount to denial of natural justice. In India,
certain statutes recognize the right to be
represented through a lawyer.

g.

“

”

Tusha Malhotra is a partner at Anandand Anand. She has over 15 years ofexperience as an Intellectual Property
Litigator. She has been actively involved
in several phenomenal landmarks thathave changed the face of Indian IP
Jurisprudence. The portfolio of clients
serviced by her includes mostly the SIG
clients of the firm panning over various
industries including pharmaceutical,
telecom, FMCG, luxury fashion,
electronics etc.
Author email: tusha@anandandanand.com
Yamini Jaswal is an Associate at Anand& Anand with two years of experience inlitigation of core and complex aspects ofIntellectual Property. She joined the firmin 2021 after graduating law school in
2020. She represents several clients,
majorly from the pharmaceutical industry
in patent litigations. She is also engaged
in advisory and transactional work
related to complicated IP issues. Practicearea/industry focus: patents, trademarks,
and copyright litigation.

decision, the provision is treated as mandatory
and thus, the failure to give reasons would befatal to the action taken. The statutory duty torecord reasons for a decision can be enforced
through a writ of mandamus. The recording of
reasons ensures that the authority applies its
mind to the case and that the reasons which
impelled the authority to take the decision inquestion are germane to the content and scopeof the power vested in the authority.13
It is not required that the reasons should be as
elaborate as in the decision of a Court of law.
What is necessary is that the reasons are clear
and explicit so as to indicate that the authority has

Scrutiny of natural justiceby administrative andquasi-judicial authorities

CTC Legal Media

Résumés

A litigant
has alegitimate
expectationof knowing
reasons forthe rejectionof theirclaim, anda court’s
failure to
give reasonsamounts tothe denialof justice.

Reasoned decision: In Breen vs. A.E.U11,
Lord Denning has emphasized thatgiving reasons for a decision is
one of the fundamentals of goodadministration and it is a safeguard
against arbitrariness on part ofthe decision maker. Further, every
quasi-judicial order must be supported
by reasons.12

In light of the evolution of the jurisprudence onfair hearing and corresponding judicial precedents,
the principles of natural justice, while not enshrined
under any law expressly, have been sufficiently
effectuated and upheld. In the wake of the recent
abolition of the Intellectual Property Appellate
Board (hereinafter referred to as ‘IPAB’), thedecisions of the examiners under different statutory
bodies have come under the scrutiny of the Courts
which has effectively and fairly provided theaggrieved parties with a forum to seek remedy
for technical, reason-based defaults and lapses
by such authorities.
Adequacy of reasons: When a statute imposes
the requirement of giving reasons for taking a

FAIR HEARING IN INDIA

Fair hearing: mapping
the intricacies of natural
justice in intellectual
property disputes

without them being given an
opportunity of explaining them.7

1

2
3
4
5
6
7
8
9
10
11
12

13

Assistant Commissioner, Commercial Tax Department, Works Contract and Leasing,
Kotaa vs. Shukla and Brothers, (2010) 4 SCC 785
WADE & FORSYTH: Administrative Law, 9th Edn., 2005, p.440
Board of High School vs. Ghanshyam Das, AIR 1962 SC 1110: 1962 Supp (3) SCR 36
Abdul Ghaffar vs. State of U.P., AIR 1984 All 283
AIR 1982 MP 59
Wirenetting Stores vs. Delhi Development Authority, (1969) 3 SCC 415
State of Madhya Pradesh vs. Chintaman, AIR 1961 SC(1964) AC 40
Roshan Lal vs. Ishwar Dass, AIR 1962 SC 646
Union of India vs. T.R. Verma, AIR 1957 SCC 882(1971) 2 QB 175
Siemens Engineering and Manufacturing Co. of India Ltd. vs. The Union of India,
AIR 1976 SC 1785
Collector of Monghyr vs. Keshav Prashad, AIR 1962 SC 1694

THE PATENT LAWYER

85

FAIR HEARING IN INDIA“

It, therefore,cannot beleft to theapplicant todeduce as
to what is
the known
substance
andthereafter
give efficacy
data.

opposition. Therefore, holistically read,the impugned order suffered from legal
infirmities, being a non-speaking andunreasoned order, besides there being
violations of principles of natural
justice.20
iii.

”

iv.

v.
ii.

86

Notice of amendment of original
claims: Interestingly, in another case,the Hon’ble Delhi High Court observedthat even if the amendment was trivial
or insignificant in the perception of thepatentee, it may not have been so, forthe opponent and given an opportunity,
it may have been able to justify the

THE PATENT LAWYER

Reasoned and speaking order whilerefusing patent applications: A
Co-ordinate Bench of the Hon’ble Delhi
High Court21 remanded the matter backto the Competent Authority for freshconsideration on the ground that thedecision refusing to grant the patent
was unreasoned. Reliance was placedon the judgments of the Supreme
Court22, wherein it was categoricallyheld that passing of a reasoned and a
speaking order is an integral part of theprinciple of audi alteram partem and theapplication of mind and recording of
reasoned decision are the basic
elements of natural justice. There can be
no doubt that scrupulous adherence tothese principles would be required
while rejecting patent applications.
Identification of known substancethrough notice: In another case23,
the Patent Office rejected the patentapplication on the grounds of
non-patentability under Section 3(d)of the Patents Act, 1970. However, theimpugned order was rendered in theabsence of the proper identification of
the “known” substance in the hearing
notice and without affording a proper
opportunity for the applicant to respondto the same. Therefore, the High Court
set aside the order and granted a fair
opportunity to the applicant to respondand held that if an objection under
Section 3(d) was to be raised, the precondition would be the identification of
the “known” substance which could
have been specifically mentioned in the
hearing notice itself. It, therefore, cannot
be left to the applicant to deduce as towhat is the known substance andthereafter give efficacy data.
Reasoning must be discernible: The
Hon’ble Delhi High Court, in anothercase24 noted that no elaboration orreasons were given for lack of inventive
step in the refusal order. It emphasized
the degree of elaboration required for a
speaking order. It held that it is not thelength of the order that matters. However,
it is necessary that the deciding factors

CTC Legal Mediaand reasoning must be discernible fromthe order which comes to a conclusion of
grant or rejection.
vi.

Real prejudice caused to thecomplainant: In another case before
the Hon’ble Delhi High Court25, it wasupheld that for the application of theconcept of fair play, there must be
flexibility. There must also have beensome real prejudice caused to thecomplainant and there is no such thing asa merely technical infringement of natural
justice. Further, in the said judgement it
was held that a Writ petition is not
maintainable if the petitioner has alreadyavailed an alternative remedy.

“

The Courts
havereaffirmedthat natural
justice is
not a fixed
but flexible
concept.

”vii. Order to include grounds of refusal/
acceptance and the material relied
upon: In another case26 before the
Hon’ble Delhi High Court, wherein apetition was filed challenging the orderof the Registrar of trademarks by the
Petitioner for the rejection of a
trademark ‘RELAXEDFIT’. The Hon’ble
Court directed the Learned Registrar of
Trademarks to pass an order as per theconditions under Section 18(5) of theTrade Marks Act containing the grounds
for refusal/conditional acceptance andmaterial used by him in arriving at his
decision to the applicant. Ultimately, theLearned Judge passed orders toproceed with the registration of thePetitioner’s mark.
viii. Application of mind to be clear fromthe order: In a very recent order27, theCourt has held that intellectual property
rights are priceless, and are required tobe scrupulously safeguarded. The entire
industry is affected by a decision either
to grant, or to refuse, a patent, and, ineither case, the commercial andfinancial ramifications are huge. Incisive
examination of the objections in the
FER, and the response of the patentapplicant thereto, must be manifest
from the order passed by the Controller.
There is no scope for any short shrift inthe matter. At the very least, applicationof mind to the objections contained in
the FER, vis-à-vis the defense of thepatent applicant thereto, must be
manifest from the decision of theController.
ix.

Patent Office to pass a speaking order:
In several decisions28 passed by the

CTC Legal Media

Hon’ble Delhi High Court, it has been
held that the Patent Office is required topass a speaking order analyzing what isthe existing knowledge and how thesubject invention lacks inventiveness inlight of the prior art.
In view of the above discourse, the applicationof natural justice is to be regarded as a rule, its
non-application, an exception, in administrative
proceedings. Over a period of time, the Courts
have reaffirmed that natural justice is not a fixed
but flexible concept, there is no invariable
standard of fair hearing, and each case has tobe decided on its own merits.

Contact

Anand & AnandFirst Channel Building Plot No. 17A,
Sector 16A, Film City, Noida,
Uttar Pradesh 201301, India
Tel: +91 120 405 9300
email@anandandanand.com
www.anandandanand.com

14
15
16
17
18
19

20
21
22

23
24
25

26
27

28

Imperial Chemical Industries Ltd vs. Registrar of Trademarks, AIR 1981 Del 190
Bhagat Raja vs. Union of India, AIR 1967 SC 1606
Sri Rama Vilas Services vs. Chandrasekaran, AIR 1965 SC 107
Nagendra Nath Bora vs. Commissioner, Hills Division, AIR 1958 SC 398
Jagannath vs. Union of India, AIR 1967 Del 121
Natco Pharma Limited vs. Assistant Controller of Patents & Designs and Ors., Neutral
Citation: 2023/DHC/000268
Best Agrolife Limited vs. Deputy Controller of Patents and Anr., AIR 2022 (NOC 784) 369
Agriboard LLC vs. Dy. Controller of Patents Neutral Citation: 2022/DHC/001206
Assistant Commissioner, Commercial Tax Department vs. Shukla and Brothers, (2010)4
SCC 785 and Manohar vs. State of Maharashtra & Ors., AIR 2013 SC 681
DS Biopharma Limited vs. Controller of Patents Neutral Citation: 2022/DHC/003563
Gogoro Inc vs. Controller of Patents, Neutral Citation: 2022/DHC/003259
Haryana Pesticides Manufactures Association vs. Willowood Chemicals Private Limited,
Neutral Citation: 2022/DHC/3562
Skechers, USA INC II vs. Union of India and Ors. Neutral Citation: 2022/DHC/2633
Dr. Sapna Nangia vs. The Assistant Controller of Patents and Designs, C.A. (COMM IPDPAT) 10/2022. Neutral Citation: 2023/DHC/1283
Impact Selector International LLC vs. Controller of Patents C.A.(COMM.IPD-PAT) 138/2022,
Auckland Uniservices Limited v. Assistant Controller of Patents and Designs C.A. (CommIPD-Pat)8/2022, N.V. Satheesh Madhav and Anr. v. Deputy Controller of Patents andDesigns 2022 SCC OnLine Del 4568 and Alfred Von Schukmann v. The Controller Generalof Patents, Designs and Trademarks and Ors C.A.(COMM.IPD-PAT) 435/2022

THE PATENT LAWYER

87

FAIR HEARING IN INDIA

given due consideration to points in controversy.
Recording of reasons guarantees consideration,
introduces clarity, and minimizes chances ofarbitrariness.
A mere repetition of the statutory language inthe order does not make the order a reasoned
one.14 The Indian Supreme Court has stated that
it is not necessary for the authority to ‘write out
a judgement as courts of law do’.15 However, atleast an ‘outline of process’ of reasoning mustbe given.16 Further, administrative orders may
not require as detailed reasons as court
judgments, but they must still be supported byrationality.
The Indian Supreme Court feels that the
judicial review over adjudicatory bodies would
be very much weakened if such bodies do notgive reasons for their decisions.17 Also, if lower
authorities do not give reasoned decisions thenthe higher authorities cannot effectively review
their decisions. Thus, failure to give reasons bylower adjudicatory bodies effectively deprives
the person affected of their right to seek review
at a higher level even when they have a statutory
right to do so.18
The Hon’ble Apex Court and the High Court ofDelhi, have delivered well-reasoned and landmark
decisions wherein they have elaborately expounded upon the principles of fair hearing, whileemphasizing the sufficiency of reason in manyorders.
i.
Transparency and clarity whileconsidering claims: In a case, theHon’ble High Court of Delhi has heldthat in contentious patent disputes,
given the seriousness and sensitivityof the issues involved, the Courts aresupposed to lend their imprimatur toa proper procedure, or it would open
floodgates for misuse. It may lead to the
Patent Office unilaterally hearing one ofthe parties in the absence of the otherand proceeding to take a decision. What
may transpire during such a hearing
would remain entirely a matter ofconjecture. Such procedure cannot
be permitted, if the rule of law is to beobserved. Transparency and clarity as
to what claims are being considered by
the Patent Office ought to be clearly
elaborated in its order.19

FURTHER DEVELOPMENTS IN EURASIAN DESIGNS

Dr. Alexey Vakhnin discusses current developments of Eurasian Designs
at the EAPO with Dr. Grigory Ivliev, the President of the Eurasian Patent
Office. We are glad to introduce, prepared exclusively for The Patent Lawyer
magazine, the summary of the recent developments of the Eurasian Patent
System.
Mr. Grigory Ivliev, last year you became theHead of the Eurasian Patent Office (EAPO).
Could you tell our readers what kind oforganization it is? What role does it play inthe modern world of intellectual property?
What countries are currently represented init?
The Eurasian Patent Organization is anindependent, intergovernmental organization
established under the Eurasian Patent Convention.
Next year the EAPO will celebrate its 30th
anniversary. Currently, it is one of the mostsuccessful and major integration projects in theEurasian space.
The Eurasian Patent Organization consists ofeight states: Turkmenistan, the Republic of
Belarus, the Republic of Tajikistan, the RussianFederation, the Republic of Kazakhstan, theRepublic of Azerbaijan, the Kyrgyz Republic,
and the Republic of Armenia. The Organization
has thus become one of the largest regional
patent systems in the world to provide legal
protection for inventions and industrial designs on
the vast territory of the Eurasian continent,
which covers more than 21 million km2 with a
total GDP of about 1.8 trillion dollars and a
population of more than 810 million people.
The Eurasian patent is valid on the territory ofeight EAPO Member States. This is a cost-effective
and simple procedure for obtaining protection
by filing one application in one language and paying
one set of fees. The patent does not require additional validation in the EAPO Member States. The
regional legal protection reduces impediments
to mutual trade and promotes economic activity

88

THE PATENT LAWYER

Dr. Alexey Vakhnin

Dr. Grigory Ivliev

in the region.
The users of the Eurasian Patent System areapplicants from more than 130 countries. More than
500 Eurasian patent attorneys represent theirinterests. I would like to mention that the EAPO
started to cooperate with the Assembly of Eurasian
Patent Attorneys in April this year. The Assembly
has become an important source of informationon law enforcement practice and the needs ofapplicants, businesses, and inventors, as well asa platform for the formation of a consolidated
opinion of patent attorneys on the improvementof regulations and approaches to examination.
The EAPO implements Patent Prosecution
Highway (PPH) programs under bilateral agreements with a number of patent offices (Japan (JPO),
the People’s Republic of China (CNIPA), the Republicof Korea (KIPO). Currently, we are negotiating withthe patent offices of India and Brazil.
Since July 1, 2022, the EAPO has been functioning
as an International Searching Authority and an
International Preliminary Examining Authority
within the PCT system. The patent offices of sevencountries have already recognized the EAPO as
a competent ISA.

Could you please describe the mainfeatures of filing a Eurasian industrial
design application?
In order to obtain legal protection for an industrial
design simultaneously in the territory of sevenstates, it is necessary to file only one Eurasian application in one language. Such Eurasian applications
may include up to one hundred industrial
designs from one class of the International
Classification for Industrial Designs (ICID). At thesame time, these designs do not necessarily
have to be interconnected by a single creative
concept. Each design can have its own features.
When applying for a Eurasian industrial design
patent, the “Single Window” principle applies. It
means that all stages of examination and grantingof a unitary patent are carried out at the Eurasian
Patent Office (EAPO) with the payment of one setof fees in one currency. If necessary, only one
patent attorney is appointed to deal with the EAPO.
As for similarities, the registration procedurein the EAPO, as in many national offices, consistsof a preliminary examination and a substantive
examination, as well as the registration of theindustrial design and the granting of a patent in thecase of a favorable decision. One of the proceduralfeatures is the mandatory publication of the Eurasian

The Protocol to the Eurasian Patent
Convention (EAPC) on the Protection ofIndustrial Designs (Protocol to the EAPC)
was signed in 2019. What guided the EAPC
member states when they signed thisdocument?
This was a step to improve the regional system
for the legal protection of intellectual property
for the benefit of users of our system from all

CTC Legal MediaFURTHER DEVELOPMENTS IN EURASIAN DESIGNS

Eurasian Patent Office:further developments
in Eurasian designs

over the world. I would like to mention thatapplicants from more than 130 countries use theEurasian regional system. Currently, they can use
different mechanisms for obtaining an industrial
design patent in the Eurasian space, depending on
their business interests and development strategy.
It is possible to choose a national registration
system, obtain national patents in several states,
use the regional system for protection by obtaining
a single Eurasian patent, or use the Hague System
for the International Registration of Industrial
Designs.
An applicant can initiate an international patenting procedure by selecting the jurisdictions
they are interested in. However, it is important torealize that each patent office will make a separate
decision in accordance with the requirements ofnational legislation.
Armenia, Azerbaijan, Belarus, Kazakhstan,
Kyrgyzstan, Russia, and Tajikistan are the Member
States of the Protocol to the EAPC. In this case,if you obtain a Eurasian patent, you receive legal
protection in the territory of seven states.

“

The regional legal protection
reduces impediments tomutual trade and promotes
economic activity.

Résumé

”Dr. Grigory Ivliev is EAPO President. He is a Former Head of theFederal Service for Intellectual Property (Rospatent).
Eurasian Patent Office (EAPO) is an executive body of the Eurasian
Patent Organization, administering the regional patent registration
system, covering eight countries of the Eurasian region.
Member States: Armenia, Azerbaijan, Belarus, Kazakhstan,
Kyrgyzstan, Russia, Tajikistan, Turkmenistan.
Objects for IP rights protection: inventions and industrial designs.

application.
When is an application for a Eurasianindustrial design patent published in
the public access?
The application is published after the completionof a preliminary examination with a successful
outcome. After publication, third parties, including
national patent offices of the States Parties to

CTC Legal MediaDr. Alexey Vakhnin is a Eurasian Patent Attorney, Patent andTrademark Attorney of the Russian Federation.
Dr. Vakhnin is a Council member of the recently founded Assemblyof Eurasian Patent Attorneys; vice-president of the Chamber of Patent
Attorneys of the Russian Federation; member of INTA, FICPI, AIPPI,LES Russia/LESI, PTMG, ECTA, etc.
Alexey is Partner and Managing Director of Vakhnina and Partners.

THE PATENT LAWYER

89

FURTHER DEVELOPMENTS IN EURASIAN DESIGNSWhat are the grounds for invalidating a
granted Eurasian industrial design patent?
For example, the existence of information confirmingthat an industrial design does not meet the patentability criteria, where the design has been previously
disclosed and is not new or original. The patent
may then be invalidated by the EAPO under theadministrative revocation procedure.
To what extent does such a system meet theinterests of the applicant?
It fully meets the interests of all market participants.
The applicant undergoes a fairly rapid registration
procedure by using the Eurasian system. At thesame time, stakeholders, whose rights or interests
may be affected, have an opportunity to present
their views on a particular industrial design using
the mechanisms of “pre-registration” and “postregistration” opposition.
How do such approaches correlate with
global practice?
Different approaches to the registration of industrial
designs are applied worldwide. There are registration,
examination, and partial registration systems.
Approaches in line with current trends werechosen when creating the Eurasian system. As I
have mentioned earlier, industrial design, alongwith a trademark, plays an important role inbusiness strategy, promoting products, andstrengthening market positions. Therefore, longterm examinations that include information
searches in both patent and non-patent data
sources can be a significant obstacle for businesses.
Deep search significantly influences the durationof examination and the timeframe for deciding
on the application, but it cannot completely exclude

90

THE PATENT LAWYER“

The
Eurasiansystemfor theregistrationof industrial
designs
is a very
convenient
tool for thecentralizedrecording ofagreements
concerning
the disposalof one’s
exclusive
right.

”

the possibility of disputes.
The evaluation of the “originality” of an industrial
design is always subjective in all offices aroundthe world. The positions of market participantsin supplementing the registers of protectedindustrial designs with new solutions contributeto the formation of a balanced system for theprotection and enforcement of intellectual property
rights. In turn, the administrative dispute resolution
procedure in the EAPO reduces the burden on
the judicial and competent authorities of the
EAPC Member States.
In general, the procedure based, inter alia, on the
opposition system encourages applicants and rightholders to be more careful in developing theirdesigns and to treat their exclusive rights seriously.
Could you please provide an example?
For example, products designed for interior
decoration, such as cornices, moldings, skirting
boards, and decorative panels, have been patented
under the Eurasian system. This year, these Eurasianpatents have been subject to an administrative
revocation. Some patents have been invalidated
on the basis of evidence collected by a third
party. One patent has been upheld on the basisof the patent owner’s position and analysis of all
the arguments presented. Some of the oppositions
are under consideration. There are examples of
oppositions filed after the publication of Eurasianapplications. During the substantive examination,a favorable decision was made in one case, andin another, a decision was made refusing the
grant of a Eurasian patent.
Thus, both the examination and the collegium
thoroughly examine both the arguments ofmarket participants, who state their position on
the patentability of the industrial design, and of
applicants and patent owners, who use theEurasian patent system.
Another characteristic of the Eurasian patent
procedure is the following. We examine whether
the industrial design does not belong to solutions
whose essential features are obviously not derived
from the creative nature of the product’s features.
This enables us to exclude or minimize the riskof obtaining exclusive rights and, consequently,
the monopoly on apparently non-original products
due to the possible lack of oppositions.
Our system also allows for the mediation of
disputes in connection with the use of a copyrightobject in an industrial design that is known on
the territory of at least one of the EAPC Member
States and whose rights arose before the priority
date of the industrial design. We are now studying
the possibility of settling disputes through mediation in cases where the industrial design involves
an element confusingly similar or identical to
the trademarks of other persons or where theindustrial design completely embodies another

CTC Legal Media

person’s trademark.
How does the Eurasian system handle
the transfer of rights?
The Eurasian system for the registration ofindustrial designs is a very convenient tool forthe centralized recording of agreements concerning
the disposal of one’s exclusive rights. The exclusive
right to an industrial design protected by a Eurasianpatent, as well as the right to an industrial design
protected by a national patent, may be transferred
to another person by agreement or become asubject of pledge. The right to use a protectedindustrial design may be granted through license
agreements. Since the Eurasian patent is valid
on the territory of seven Eurasian states, it can bea convenient tool for a patent owner to centrally
control and record the results of the managementof their intangible assets in Eurasia.
The EAPO frequently deals with agreementson the transfer of the right to obtain a Eurasianindustrial design patent, agreements on thetransfer of an already registered exclusive right,
and license agreements for the use of industrial
designs protected by Eurasian patents.
It demonstrates that industrial designs are not
only patented but also actively used by patent
holders as an intangible asset.
Are there any other arguments that may
inspire businesses to obtain Eurasianpatents?
When a Eurasian patent is obtained, the patent
owner receives industrial design protection forfive years with no annual maintenance required,
which is very convenient.
The term of a Eurasian patent is calculated
from the filing date of the Eurasian applicationand may be extended for each subsequent fiveyear term. The maximum term of a Eurasian patent
may be 25 years from the filing date of the Eurasianapplication.
What are the available options for applying
for a Eurasian industrial design patent?
We pay great attention to the development ofour digital services so that applicants can interact
with our Office easily. A Eurasian application canbe submitted either on paper or in electronic
form. Electronic Eurasian applications are submitted
through the EAPO-ONLINE system. It enables
us to register the date of application receipt, monitor
the current status of the application file, andreceive notifications on receipt of new correspondence from the EAPO.
How popular is the Eurasian system forregistration of industrial designs withapplicants?
We are recording a steady growth in the number
of applications thanks to our advantages, which

CTC Legal Media“

When aEurasian
patent is
obtained,
the patentownerreceives
industrial
designprotection
for five years
with noannualmaintenancerequired.

”include coverage of an entire region with a single
application, ease of processing, rapid registration,
cost and time savings, and centralized asset
management.
The EAPO started receiving applications on
June 1, 2021. While we received 92 applicationsfor 190 industrial designs from June to December
2021, in 2022 we received 233 applications for639 industrial designs in 12 months.
The number of applications has more thandoubled if we compare the figures for the firsthalf of 2022 with those for the same period in
2023. The number of industrial designs is also
increasing. In the first half of 2022, the EAPO
received 65 applications for 236 industrial designs,
while in the same period in 2023, it received 143
applications for 328 industrial designs. The EAPO
has granted 320 Eurasian patents containing
808 industrial designs so far.
The geographic diversity of applicants is
expanding. The EAPO has received applications
from residents of 24 countries. These include both
EAPC Member States and other jurisdictions, suchas the USA, Germany, Turkey, Singapore, Finland,
China, and others.
What are the upcoming development
prospects of the regional system forindustrial design protection?
We expect Turkmenistan to join the system in
the near future. And our system, as well as thesystem for the legal protection of inventions, will
be valid for all eight EAPC Member States. We
also intend to join the Hague System for theInternational Registration of Industrial Designs.
Then potential applicants from all over the world
will be able to specify a whole region as theintended territory of protection when filing one
Hague application with the International Bureau

Contact

EAPO - Eurasian Patent Organization
M. Cherkassky per. 2, Moscow,
109012, Russia
Tel: +7 495 411 6150 — EAPO Hotline
hotline@eapo.org
Vakhnina and Partners,
Patent and Trademark Attorneys
Preobrazhenskaya pl., 6, Moscow,
107061, Russia
Tel: +7 495 946 7075
ip@vakhnina.ru

THE PATENT LAWYER

91

FURTHER DEVELOPMENTS IN EURASIAN DESIGNS

the Protocol to the EAPC, may, within two months
from the date of publication of the Eurasianapplication, file an opposition against the grantof a Eurasian patent if it is provided for by thenational legislation.
This stage of the so-called “pre-registration
opposition” is also part of the substantive examination. The EAPO conducts the examination with
due regard to the opposition against the grantof a Eurasian patent.
At the same time, some of the examinations
provided for in the Patent Regulations to the EAPC
(Patent Regulations), are carried out ex officio,
i.e., without additional requests by third parties.
In particular, industrial designs are subject toexamination even if there are no oppositions
from third parties, if they include official and state
symbols or cultural heritage items, if the productappearance is contrary to public interests or the
principles of humanity and morality, or if all its
features are solely driven by the product’s
technical function.

Debora Cheng of Sonoda & Kobayashi Intellectual Property Law details theprocess, eligibility, advantages, and disadvantages of the introduction ofthis new practice.

T

he concept of a divisional application within
the Japanese patent system is partially akinto that found in other legal jurisdictions,e.g., trademark and design. Article 44 of the Patent
Act outlines the procedure for dividing patentapplications, allowing applicants to create newpatent applications from portions of an original
application containing multiple inventions. Whena division occurs, the new application is retroactively considered to have been filed at thesame time as the original application. This divisional
application mechanism is designed to offer
maximum legal protection for inventions within
patent applications that lack unity, in line withthe overarching purpose of the patent system– to grant exclusive rights for a set duration in
exchange for public disclosure.
Notably, the strategic utilization of divisional
applications in Japan offers several advantages.

CTC Legal MediaIn cases where an original application is rejected,
including instances of a “Decision of Rejection”
or Final Office Action, the disputed inventions
can remain in the original application and becontested via written opinions or amendments.

Résumé
Debora Cheng

Debora Cheng is a New Zealand Lawyer
in the International Affairs Department at
Sonoda & Kobayashi Intellectual
Property Law. She graduated from the
University of Auckland Law School andwas admitted as a Barrister and Solicitorof the High Court of New Zealand in
October 2022.
Author email: dcheng@patents.jp

THE PATENT LAWYER

93

DIVISIONAL APPLICATIONS: JAPANSuspension of examination
for divisional applicationsin Japan while parent
is under appeal

DIVISIONAL APPLICATIONS: JAPANNew practice: suspension of
examination for divisional
applications

Decision of
Rejection
Original
Application

䞉Decision to Grant
䞉Appeal Decision䞉Appeal Withdrawal, etc.

AppealandDivisional

Suspension of
Examination
30 days

5 daysRequest for
Examination

ResumeExamination
End of Suspension Period

Timeline of the suspension of examination for a divisional application.

Beginning April 1, 2023, the Japan Patent Office(JPO) introduced a new practice pertaining todivisional patent applications, allowing applicants
to suspend the examination of a divisional patentapplication while the parent (original) application
remains under appeal. This suspension remains
in effect until three months following the conclusionof a pre-appeal reexamination or an appeal
examination pertaining to the parent application.
Importantly, this new practice applies solely todivisional applications for which a Request for
Examination is submitted on or after April 1, 2023.
In the realm of Japanese patent practice, since
there is no guarantee under the Patent Act thatan opportunity for filing a divisional application
is obtained during an appeal, in many cases, thefinal opportunity to file a divisional application is
the same period in which an appeal can be filed
against the rejection decision for a parent
application by the Examiner2. As such, it is common
for applicants considering an appeal to simultaneously consider the filing of a divisional application
as a precautionary measure to mitigate risk.

94

THE PATENT LAWYER

application. This option becomes available when
the divisional application is filed after the issuanceof a Decision of Rejection concerning the parent
application. This suspension of examination falls
under the provisions of Patent Law Article 54,
Paragraph 1. The suspension remains in effect until
three months after the conclusion of a pre-appeal
reexamination or appeal examination relating to
the parent application.
1

2

An improper division is, forexample, when the division
is made at an inappropriate
time, or when thedivisional application
introduces new matter thatis not present in theoriginal application.
On the other hand, if an
Office Action is issued
during a pre-appeal
reexamination or an
appeal examination, adivisional application canbe filed in the response
period.

Criteria for eligibility andprocedural steps
Several criteria govern the eligibility of patentapplications for the new practice of suspension:
1. The subject applications must be
divisional applications filed after theissuance of a Decision of Rejection by
the Examiner in relation to the parent
application.
2.

Waiting for the outcome of preliminary
examination or examination by the Boardof Appeal should be deemed suitable.

To request suspension, the following procedural
steps are required:
1. Submission of a petition outlining thecircumstances necessitating thesuspension of examination in line with
Article 54, Paragraph 1 of the Japanese
Patent Law.
2.

Provision of a statement in a specified
format, explaining the circumstancesleading to the request for suspension of
examination as per Article 54, Paragraph
1 of the Japanese Patent Law.

Following the request forsuspension

3 months

Request for
Suspension

4.

The parent application must be pending
preliminary examination or undergoingappeal examination by the Board of Appeal.

Both procedures 1 and 2 described above
must be done within five working days from thefiling of the request for examination for thedivisional application. Note that the request forsuspension incurs no JPO official fees.

4 months

Divisional
Application

3.

An Appeal must have been filed against
the rejection imposed on the parent
application.

CTC Legal Media

Once the request for suspension of examination
is made and accepted, the examination of thedivisional application will be suspended until
three months after the below-mentioned scenariosof 1 or 2 as long as the appeal is not dismissed
or withdrawn:
1. A Decision to Grant is issued for theparent application based on the
preliminary examination;
2.

“

The
introductionof the optionofsuspending
examination
for divisional
applicationsin Japanmarks asignificant
improvementin thepatent filingsystem.

”Strategic implications andconsiderations

CTC Legal Media

Moreover, applying for the suspension of adivisional patent application can be useful inmaximizing time for amending divisional applications for certain filing strategies, including:•
When industrial standards are underdiscussion but yet to be finalized,
keeping a divisional application pending
until the finalization of standards allows
for subsequent adjustments to claims.
•

For pharmaceutical inventions where theauthority acknowledges the effectivenessof the same compound/molecule fordifferent indications one by one, keeping
a patent with the first indication pending
until the subsequent indications areauthorized allows amendments to bemade to target the authorized indications
through divisional applications.

Disadvantages:
Delayed rights acquisition: the suspension
approach precludes the early acquisition ofrights for the divisional application.

Cost: the official fee for the examination of adivisional application must be paid before theappeal result is issued. As the fee is calculated
based on the number of claims, it isrecommended to reduce the number of claims
to one, which can be later increased after the
result of the appeal is revealed, so long as theamendment is submitted before the first Office
Action is issued.

It is crucial to note that retracting a Request
for Suspension of Examination is not permitted.

Advantages:
1. Informed decision-making: applicants
gain the ability to tailor their divisional
application based on the outcome ofthe parent application’s rejection appeal,thus devising a more efficient andeffective overall strategy.

Enhanced examination efficiency: thedivisional application’s examination canbe conducted with greater efficiency, as
the examiner can take the results of theparent application’s reexamination orappeal into account. As such, thispotentially reduces the burden of
examination on the applicant’s side.

Waiting period: despite substantially determining the divisional application’s claims, theapplicant must wait for the parent application’s
outcome.

The first Appeal Decision is issued
concerning the appeal; or

The new practice of suspending examination fordivisional applications introduces several advantages and disadvantages, influencing the strategies
adopted by applicants:

2.

Contact

Sonoda & Kobayashi
Intellectual
Property Law
Shinjuku Mitsui
Building, 34th floor
2-1-1 Nishi-Shinjuku,
Shinjuku-ku Tokyo
163-0434, Japan
info@patents.jp

The introduction of the option of suspending
examination for divisional applications in Japan
marks a significant improvement in the patentfiling system. By offering the option to defer examination until the resolution of a parent application’s
appeal, this practice allows for greater examination
efficiency as well as enabling applicants to makemore informed decisions and devise more efficientfiling strategies.

THE PATENT LAWYER95

DIVISIONAL APPLICATIONS: JAPANHowever, as both the divisional and parent
applications are processed concurrently by the
JPO, there is a possibility that a first Office Action
is issued for the divisional application before theoutcome of the appeal for the parent applicationis revealed. This forces applicants to address thedivisional application’s Office Action without thebenefit of knowing the result of the parent
application’s appeal. This predicament is lessthan optimal, as most applicants prefer to handle
the two cases sequentially, where they wait on
results from the parent application first and modify
or withdraw the divisional application based on
those results.
Under the new practice introduced by the
JPO, applicants can request the suspension ofsubstantial examination for a divisional patent

Simultaneously, inventions unaffected by therejection grounds can be separately filed in adivisional application.
Another advantage to divisional application,
also found in other jurisdictions, is the ability tosecure a retroactive effect, where the divisional
application is treated as though it were filed
concurrently with the original application. Failure
to attain retroactive effect due to an improper
division1 results in the application being treatedas filed on the division’s actual filing date, depriving
it of the benefits associated with the original filingdate.

Robert Klinski, founder of Patentship, explains the patentability criteria
for filling a grantable application for AI inventions at the European
Patent Office.

A

I serves as a powerful catalyst fortechnology as it enables myriads of new
applications requiring specificallyarranged processing platforms. The real-world
impact of AI is best demonstrated with a look at
the stock market: a multi-month bear market has
been reversed on a dime with the publication of
ChatGPT, a pre-trained AI language model thatgives a first glimpse into the AI universe. The technology sector, in particular the chips manufacturer,
has switched into turbo-mode in expectation of
new market opportunities.
AI is clearly a disruptive technology that has
already entered the technology growth stage andcaptured the attention of R&D departments in a
majority of technology companies. The financial
sector, notably hedge funds like Citadel, is fuelingthis development with massive investments in
AI-related technologies.
The flip side of this disruptive, parabolic
development of AI technologies is that not only
R&D departments but also patent offices havebeen “caught cold” as to how to handle AI-related
technologies.
The crucial question for the assessment of
whether an AI invention is patentable or not
is whether an AI invention is allocated in atechnical domain, i.e., serves a technical problem.
Unfortunately, different patent offices have different
answers to this question, which makes establishinga unified AI patenting strategy difficult.
For example, the USPTO and the JPTO currently
deploy a less restrictive approach to assess thepatentability of AI inventions. The most recent
patent grants show that AI core inventions havealready been patented in the USA and Japan.
In contrast, the EPO holds a rather restrictive
stance and assesses AI-implemented inventions
in general and AI core inventions in particular,

CTC Legal Media“

Most recent
patentgrants showthat AI core
inventions
havealreadybeen
patentedin the USA
and Japan.

”

which may result in a situation where the same
AI invention will be patented at the USPTO and
JPTO but rejected by the EPO.
More specifically, the EPO requires that a patentable invention make a reproducible contribution
to the technical solution of a technical problem.
Therefore, AI core inventions addressing, forexample, AI structures as such, are regarded by
the EPO as non-patentable mathematical methods
that are not associated with any technical purpose.
On a side note, the often-overlooked reproducibility requirement prevents patenting AI “blackbox” implementations at the EPO.
Surprisingly, the often-overlooked key hurdle
for obtaining an AI patent at the EPO is inventive
step. In this regard, the EPO has developed aunique problem-solution approach, requiring thatan invention involving an inventive step must technically solve a technical problem. For example, asoftware invention solving an accounting problem
with accounting methods does not per se involvean inventive step because neither accounting nor
accounting methods serve a technical purpose.
The situation gets, however, more complicatedwhen a software invention is technical, which isoften the case with AI inventions. Who would denythat AI controlling an autonomous industrial
truck does not serve a technical purpose?
In these situations, the EPO makes use of theprinciples for assessing inventive step of software
inventions set forth by EPO’s landmark decision
T 0641/00, often referred to as COMVIK-decision,
stating: “an invention consisting of a mixture oftechnical and non-technical features and having
technical character as a whole is to be assessedwith respect to the requirement of inventive
step by taking account of all those features
which contribute to said technical character
whereas features making no such contribution

THE PATENT LAWYER

97

CREATING PATENTABLE AI

Creating patentable
AI inventions according
to EPO standards

CREATING PATENTABLE AI

Résumé
Robert Klinski is a German andEuropean patent, trademark, and design
attorney, and the founder of Patentship.
He studied electrical engineering andtelecommunications at the Technical
University Hamburg-Harburg andreceived his PhD with honors from theTechnical University of Munich in thefield of statistical signal processing intelecommunications. He was a scientificresearcher at the Fraunhofer Instituteand an engineer at Siemens AG in thefields of wired and wirelesscommunication systems, and he ismentioned as an inventor in several
patents relating to telecommunications.
Dr Klinski has worked in the IP field since
2002 and has extensive experience in IP
prosecution, IP litigation, IP harvesting,and creating IP on demand in the fields
of digital signal processing, 5G, theInternet of Things (IoT), AI, fintech,
security, and blockchain. In his recent 5G,SIM, IoT, security, and fintech projects,
he supported his clients by harvesting
more than 300 inventions. Dr Klinski also
actively supports international
investment firms in IP-backed start-up
incubation and IP generation on demand.
Patentship is a medium-sized patent law
firm based in Munich, specializing invalue-oriented, results-driven patentdrafting, prosecution, litigation, andinvention harvesting in various
jurisdictions and across a wide range oftechnologies, such as electricalengineering, telecoms, and information
systems, software, mechanicalengineering, automotive, chemistry, andbiotech. Patentship’s clients include
national and international research
institutes, medium-sized companies, andglobal players listed in the Fortune 500
and Forbes 100 rankings.

“

AI
application
includestwo phases:
the first
phase isthe trainingof an AImodel withtraining
data toobtaina trained
AI model;the second
phase is the
deploymentof thetrained AI
model toachieve a
certain task.

”

1.

Robert Klinski

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THE PATENT LAWYER

as an example a computer system with a processor
implementing an AI core to classify data records
received from an autonomous truck over a communication interface. The EPO would probably
ignore the feature referring to the AI core classifying
data records when assessing the inventive step,and examine the claim remainder, i.e., a computer
system having just a processor and an interface
without any further functionality. Clearly, such a
computer system stripped of any functionality
forms common knowledge and does not involvean inventive step.
Nevertheless, AI inventions are patentable at the
EPO, provided you know exactly how to draft
sustainable AI claims. In other words, expert claim
drafting is essential for obtaining an AI patent.
As to patenting AI, it should be noted thatevery AI application includes two phases: thefirst phase is the training of an AI model withtraining data to obtain a trained AI model; thesecond phase is the deployment of the trained
AI model to achieve a certain task.
Usually, these phases are separated from eachother, which is best shown with: the developmenttraining of the AI model behind ChatGPT is performed by the OpenAI LP, i.e., a profit-oriented
company. The resulting, trained AI model isprovided by the OpenAI LP as a software productto its users who deploy the trained AI modelin various applications. Clearly, the OpenAI LP
generates revenue by providing the trained AI
implementation to its users. In fact, developing
and training the AI model is comparable toprogramming a software product. Usually, the training phase per se does not form a paid service.
Rather, the users are paying for the use of theimplemented software product.
The above example provides a first hint
towards generating valuable AI patents: Training
an AI model with training data and deploying thetrained AI model for a technical purpose shall, if
feasible, be claimed separately with distinct setsof claims. Clearly, there are scenarios as wellwhere an AI model is trained and utilized by acustomer, for example when an AI model controlling a robot is trained during robot operations. In
such exceptional cases, training and deploying
an AI model should be claimed within the same
set of claims.
Patenting the training of AI models
with data
In order to obtain a patent directed to training AI,
the characteristics of data used for training the
AI model are decisive for obtaining a patent at
the EPO. In this context, please recall that the
EPO does not consider AI models patentable assuch. However, training an AI model with specificdata for a specific technical task, i.e., specificallyprovisioning an AI model, is considered by the

CTC Legal MediaCREATING PATENTABLE AI

cannot support the presence of inventive step.”
As a result, despite the possible technicalcharacter of an invention as claimed, the EPO canjust ignore or blend out particular claimed featuresof a claim that do not appear to contribute toa technical solution to a technical problem. Thismay have unexpected consequences for theassessment of an inventive step, in particular, if
the ignored claim features are actually essential
to define an invention this thereby renders theremaining claim plain common knowledge. TakeEPO as a technical purpose and therefore accessible to patent protection.
Interestingly, the EPO makes a distinction where
the data used for training an AI model originates
from. Clearly, the AI models can be trained on
the basis of simulated data originating, e.g., froma simulated digital twin of an environment. For
example, an AI model for controlling the operationsof an autonomous industrial truck in an environment can equally be trained with “real world data”
originating from sensing the environment orwith simulated data originating from simulationsof a digital twin of the real-world environment.
Training the AI model with simulated datais actually a computer simulation of a technicalsystem. Such a computer simulation is, according
to the EPO (decision G 001/19), not sufficient toovercome the patentability hurdle of the EPO. In
consequence, AI inventions directed to training
an AI model upon the basis of a computer
simulation of a physical system such as anenvironment may be considered by the EPO as
non-patentable.
Conversely, physical interaction with the “realworld”, such as the environment of an autonomous truck, when training an AI model may rendera corresponding invention patentable. Thisimplies, for example, that the training data used
for training an AI model shall directly originate

CTC Legal Media“The same
AI invention
may beconsideredpatentable
or notpatentableby the EPO
dependingon the way
the data
utilized fortraining an
AI model isgenerated.

”from, e.g., physical measurements of the physicalenvironment, which may be taken by the autonomous industrial truck when moving within thatenvironment. Paradoxically, the same AI invention
may be considered patentable or not patentableby the EPO depending on the way the datautilized for training an AI model is generated.
2.

Patenting specifically adapted
AI implementations
A second cluster of AI inventions that are patentable
at the EPO addresses AI that is specifically adapted
to solve a technical problem in the context of atechnical application. An example of a patentable
AI application is the specific use of a neuralnetwork in a heart monitoring apparatus for the
purpose of identifying irregular heartbeats. Here,AI is a tool deployed in the context of a technicalapplication.
The above examples of patentable AI inventions may serve as a blueprint for patenting AI at
the EPO. Take as an example a hypothetical IP
portfolio that should be developed to cover AI
control of movements of autonomous industrial
trucks in a closed indoor environment, e.g., anindustrial storage area. Such autonomous trucks
are prone to collisions with other autonomous
trucks and with storage disposed in the area.
Moreover, the environment layout may change

THE PATENT LAWYER

99

CREATING PATENTABLE AI

due to storage disposed of by the industrial trucks
in the storage area.
Clearly, the AI model used for controlling autonomous trucks must be trained specifically withregard to the storage area. Unfortunately, a digitaltwin of the storage with simulated autonomous
trucks could render the inventions directed totraining the AI model not patentable.
For this reason, the data for training the AI model
should be collected during the operation of
the autonomous trucks in order to obtain apatentable invention. This restriction appears tobe acceptable as it reflects dynamically changing environments in our simplified example.
In order to provide the data for training the AI
model, the autonomous trucks can be equippedwith a positioning system indicating current
positions as well as movements of the autonomous trucks. Moreover, the digital trucks shallalso send position information indicating the current
position of disposed storage goods forming an
obstacle for the industrial trucks. On the basis ofsuch information, the AI model can dynamicallybe trained and adapted to the changing environment for controlling the movements of theautonomous trucks. The benefit of AI is clearly
the ability to react quickly to changing environments without the necessity of running complex
optimization algorithms to find optimum routes
for autonomous trucks in rapidly changing
conditions.
In the above example, the dynamically trained
AI model is specifically deployed to control theoperations of the autonomous trucks todetermine the most efficient truck movements
within the storage area based on the actual
position information of the autonomous trucks
and the disposed storage goods. This requires
interaction with the “real world” which may
render the AI implementation patentable.
A further enhancement of the above idea could
be the deployment of a 5G network architecture
to provide fast communications to a server
implementing the AI control. Such a specific networkarchitecture could be implemented as a 5G
network slice providing the necessary functionality
to dynamically train an AI model for autonomous
truck control. Such a specifically designed 5G
slice could implement a patentable businesscase by providing the 5G slice functionality as aservice for dynamically controlling autonomous
trucks in indoor environments.
The above example may serve as a blueprint
for systematically generating valuable AI
inventions that are possibly patentable at the
EPO despite its currently restrictive stance on AI.
With this knowledge, you can design and patenta sustainable IP portfolio worldwide that cancover future AI applications.

“

The EPO
does notconsiderAI modelspatentableas such.

Contact

PATENTSHIP
Patentanwaltsgesellschaft mbH
Elsenheimerstr. 65 80687 Munich,Germany.
Tel: +49 89 75 969 8690
www.patentship.eu”

World’s Largest Associationof IP Professionals

We offer exclusive benefits to our members around the world,
including networking opportunities, Practice Guides and other resources,
cutting-edge content, and professional development.

Join us!

Become a member and benefit from our discountregistration rate for our Annual Meeting and other events.

Learn more at www.inta.org/joinus
100

THE PATENT LAWYER

CTC Legal MediaTo enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

Directory of Services

Directory of Services

ARGENTINA

ARMENIA

BAHRAIN

India

INDIA

O’Conor & Power

Vakhnina & Partners

United Trademark &Patent Services

Excelon IP

LexOrbis

O’Conor & Power’s trademark and patent practice grouphas wide experience in handling portfolios for internationaland domestic companies in Argentina and Latin America.
Our services in the region include searches, filing andregistration strategies, prosecution, opposition, renewals,
settlement negotiations, litigation, enforcement andanti-counterfeiting procedures, recordal of assignments,
licences, registration with the National Custom
Administration, general counselling in IP matters, andcounselling in IP matters in Argentina and the region.
Address: San Martín 663, 9th Floor,(C1004AAM) Buenos Aires, Argentina
Tel/Fax: 005411 4311-2740/005411 5368-7192/3
Website: www.oconorpower.com.ar
E-mail: soc@oconorpower.com.ar
ocp@oconorpower.com.ar
oconor@oconorpower.com.ar

The team at “Vakhnina & Partners” comprises of highlyqualified patent and trademark attorneys and lawyers.
Major areas of expertise of our patent team: Chemistry,
Pharmaceuticals, Biotechnology, Biochemistry, Life
Science etc.
We handle our clients’ cases in Armenia, Russia,
Kyrgyzstan, at Eurasian Patent Office, and cooperatewith partners and associates in other Eurasian countries:
Georgia, Belarus, Kazakhstan, Azerbaijan, Turkmenistan,
Uzbekistan, Moldova, Tajikistan.
Our attorneys are members of INTA, FICPI, AIPPI, LESI,ECTA, PTMG.
Address:
Tel:
Email:
Website:Contact:

Yerevan, Republic of Armenia+374 91 066393
Armenia@vakhnina.com
http://about.vakhnina.com
Dr. Alexey Vakhnin, Partner

International Intellectual Property Attorneys
United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.
Address:

Website:Email:
Contact:

United Trademark & Patent Services
Office 21, Sabha Building No. 338
Road 1705, Block 317 Diplomatic Area,
Manama, Bahrainwww.utmps.com
Bahrain@unitedtm.com &unitedtrademark@unitedtm.com
Talal F.Khan & Mr Imad

BOLIVIA

COLOMBIADJIBOUTI

Landivar & Landivar

VERA ABOGADOS ASOCIADOS S.A.

United Trademark &Patent Services

Established by Gaston Landívar Iturricha in 1961,
Landívar & Landívar is a pioneer firm in the field ofIntellectual Property in Bolivia. Our international
reputation was gained through a competent andcomplete legal service in our area of specialization.
Our firm has grown into a Chain of Corporate Legal
Services and Integral Counseling, with the objective of
guiding national and international entrepreneurs andbusiness-people towards the success of their activities.
Address:

Tel/Fax:
Website:Email:
Contact:

Arce Ave, Isabel La Catolica Square,Nº 2519, Bldg. Torres del Poeta,
B Tower, 9th floor, off. 902. La Paz,
Bolivia, South America+591-2-2430671 / +591 79503777
www.landivar.com
ip@landivar.com - info@landivar.com
Martha Landivar, Marcial Navia

DOMINICAN REPUBLIC

WDA International Law Firm

Intellectual Property
For over 25 years we have provided excellence inIntellectual Property protection to worldwide renowned
companies including the most iconic pharmaceutical,
beauty and clothing, beverages and motion picturescompanies.
Our main practice is devoted to Intellectual Property
which specializes in docketing maintenance oftrademarks and patents and litigation attorneys ofhigh profile IPR infringements, border protection andcounterfeiting cases in Dominican Republic.
Tel:
Website:Email:
Contacts:

809-540-8001
www.wdalaw.com
trademarks@wdalaw.com
LIC. Wendy Diaz
LIC. Frank Lazala
Whatsapp: 829-743-8001

102

THE PATENT LAWYERVERA ABOGADOS was founded 50 years ago to attend
to legal needs of the business sector in the area of IP.
Today they provide their services to all fields of law.
The law firm is a reference in the Andean community
and they are part of international associations suchas INTA, ASIPI, ABPI and ASPI. They were ranked in
2023 by Leaders League as a highly recommended
Colombian law firm and in addition, they are a memberof PRAGMA, the International Network of Law Firms.
The law firm currently has direct offices in Colombia
and Ecuador.
Tel:
Website:Email:
Contact:+57 60-1 3176650+57 60-1 3127928
www.veraabogados.com
info@veraabogados.com
Carolina Vera Matiz,
Natalia Vera Matiz

Excelon IP is a boutique IP law firm headed by
Mr. Sanjaykumar Patel who is Principal IP Attorney andhaving 17+ years of experience in the Intellectual
Property field. He was listed as Top 100 IP leaders ofIndia. He is a registered IP Startup Facilitator by Gov.
of India and active member of“IP Collegium” of JIII (Japan Institute for Promoting
Invention & Innovation), Tokyo. We provide a wide
range of service related to Patent, Trademark, Design
and Copyright for India including PCT application,
Madrid application along with Novelty search,landscape search and IP Strategy.
Tel:Website:Email:
Contact:+91 951233 2604
https://excelonip.com/
ipr@excelonip.com, sanjay@excelonip.com
Mr. Sanjaykumar Patel(Founder- Principal IP Attorney)

INDIA

United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.

Website:Email:
Contact:

United Trademark & Patent Services
Djibouti Branch Djibouti, Rue Pierre
PascalQ.commercial Imm, Ali
Warki, Djibouti
www.utmps.com
Djibouti@unitedtm.com &unitedtrademark@unitedtm.com
Imad & Faima Al Heyari

LEBANON

Ideas Trademarks Guatemala, S.A.

Chandrakant M Joshi

Vakhnina & Partners

United Trademark &Patent Services

Address:
Tel:
Fax:
Website:Email:

Solitaire - II, 7th Floor, Link Road,
Malad (West), Mumbai - 400 064, India+91 22 28886856 / 57 / 58 / 64
+91 22 28886859 / 65
www.cmjoshi.com
mail@cmjoshi.com / cmjoshi@cmjoshi.com /patents@cmjoshi.com / designs@cmjoshi.com /trademarks@cmjoshi.com

CTC Legal MediaWe handle our clients’ cases in Kyrgyzstan, Russia,
Armenia, at Eurasian Patent Office, and cooperate withpartners and associates in other Eurasian countries:
Georgia, Belarus, Kazakhstan, Azerbaijan, Turkmenistan,
Uzbekistan, Moldova, Tajikistan.
Our attorneys are members of INTA, FICPI, AIPPI,LESI, ECTA, PTMG.
Address:
Tel:
Email:
Website:Contact:

Bishkek, Kyrgyz Republic+996-551-655-694
ip@vakhnina.com
https://www.vakhnina.com
Dr. Alexey VAKHNIN and
Mr. Vlad PEROVCTC Legal Media033- 2357 1015 | 1020
033 – 2357 1018
www.lsdavar.com
mailinfo@lsdavar.in
Dr Joshita Davar Khemani
Mrs. Dahlia Chaudhuri

United Trademark &Patent Services

KYRGYZSTAN

The team at “Vakhnina & Partners” comprises of highlyqualified patent and trademark attorneys and lawyers.

Tel:
Fax:
Website:Email:
Contact:

Y. J. Trivedi & Co.

INDIA

Our law firm has been exclusively practicing Intellectual
Property Rights matters since 1968. Today, Mr. Hiral
Chandrakant Joshi heads the law firm as the senior mostAttorney. It represents clientele spread over 35 countries.
The law firm conducts search, undertakes registration,
post-registration IP management strategies, IP valuation,
infringement matters, domain name disputes and cyberlaw disputes of patents (including PCT applications),
trademarks, industrial designs and copyrights.

We are India’s oldest Intellectual Property and
Litigation Firm. Since 1932, we have been as atrusted IP partner of Global Large and Mid-size
companies and foreign IP law firms. We have been
widely acknowledged by Govt. of India. In the last
90 years, we have retained number one position inIndia in not only filing the Patents, Designs,
Trademarks, Copyright, and Geographical Indications
but also in getting the grants.

JORDANGUATEMALA

IDeas is a firm specialized in the defense of intellectual
property rights, offering advice on all kinds of issues
related to them and in the management of portfolios of
distinctive signs and patents, at competitive prices, in
the Central American and Caribbean region.
IDeas is focused on meeting the needs and solving the
problems of its clients, setting clear expectations andobtaining creative solutions with minimal exposure andcost-effective. Proactivity has determined our constant
growth and modernization, maintaining a high standardof quality and satisfaction in our professional services.
Tel:+502 2460 3030
Website: https://www.ideasips.com/?lang=en
Email:
guatemala@ideasips.com
Contact: Gonzalo Menéndez, partner,
gmenendez@ideasips.com
Gustavo Noyola, partner,
noyola@ideasips.com

L.S. DAVAR & CO.

INDIA

The firm is elated to have completed 50 years in the practiceof IPR Law (full service) with offices in Mumbai, Delhi andJaipur. The firm has a strong base of well-credentialed legal
and technical professionals offering quality services in allareas of IPR. Whether working on a precedent-setting case or
preparing opinions, the firm endeavours to be innovative in its
approach and adopt pragmatic strategies to meet its client’s
interest. Through interdisciplinary collaboration andspecialized experience in its clients’ industries, the firm
provides effective solutions that aligns with clients’ short-termand long-term business objectives.
Address: 2nd Floor, City Square Building,Opp. Kashiram Hall, Polytechnic,
Ahmedabad – 380 015, Gujarat, India
Tel:+91 79 26303777, 26305040
Website: www.yjtrivedi.com
Email:
jatin@yjtrivedi.com
Contact: Mr. Jatin Trivedi

International Intellectual Property Attorneys

Address:

LexOrbis is a highly specialised, market-leading IP
boutique fielding a sizable team of 9 partners,
85 lawyers and over 60 patent attorneys and is amongst
the fastest growing IP firms in India having offices at
3 strategic locations i.e. Delhi, Mumbai and Bengaluru.
The firm is a one stop shop for all Intellectual Property
related needs and provides practical solutions andservices for various legal issues faced by technology
companies, research institutions, universities,
broadcasters, content developers and brand owners.
Tel:+91 11 2371 6565
Fax:
+91 11 2371 6556
Website: www.lexorbis.com/
Email:
mail@lexorbis.com
Contact: Manisha Singh, Managing Partner
manisha@lexorbis.com
Abhai Pandey, Partner
abhai@lexorbis.com

INDIA

International Intellectual Property Attorneys
United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.
Address:

Website:Email:
Contact:

United Trademark & Patent Services
6th Floor, Burj Al Ghazal Building,
Tabaris, P. O. Box 11-7078, Beirut,
Lebanonwww.utmps.com
lebanon@unitedtm.com &unitedtrademark@unitedtm.com
HanadiInternational Intellectual Property Attorneys
United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.
Address:

Website:Email:
Contact:

United Trademark & Patent Services
Suite 7, 2nd Floor, Chicago Building,
Al Abdali, P.O. Box 925852, Amman,
Jordanwww.utmps.com
jordan@unitedtm.com &unitedtrademark@unitedtm.com
Mrs Fatima Al-Heyari

LUXEMBOURG

YOUR IP
Patent42

Representation for Europe and Luxembourg,
France and Belgium.
Patent 42 is a law firm acting in Industrial Property.
Our job is to help and assist companies andentrepreneurs in protecting and defending theirinvestments in innovation and creation.
If innovation is first of all a state of mind, it is alsoa necessity and a source of development and growthfor your company. Investments carried out to develop
new products or new activities deserve to beprotected.seeking to protect valuable original creations.
Address:
Tel:
Website:Email:

BP 297, L-4003 Esch-sur-Alzette,
Luxembourg(+352) 28 79 33 36
www.patent42.com
info@patent42.com

THE PATENT LAWYER 103

DIRECTORY OF SERVICES

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

Directory of Services

Directory of Services

MACAU

MEXICOMALAYSIAPOLANDPOLAND

QATAR

IPSOL

Goodrich Riquelme Asociados

Adastra IP

LION & LION Kancelaria
Patentowa Dariusz Mielcarski

Sigeon IP, Grzelak & Partners

United Trademark &Patent Services

IPSOL is a key service line focused on the planning,registration and management of trademark, patentand other IP rights portfolios, offering solutions thatenable to maximize the protection of your IP assets in
Macau and worldwide.
Address:
Tel:
Fax:
Website:Email:
Contact:

Avenida da Praia Grande, 759,
5° andar, Macau(853) 2837 2623
(853) 2837 2613
www.ipsol.com.mo
ip@ipsol.com.mo
Emalita Rocha

MEXICOTOVAR & CRUZ IP-LAWYERS, S.C.

We are a specialized legal firm providing intellectual
property and business law services. Founded in 2009.
The purpose is that our clients not only feel safe,
besides satisfied since their business needs have been
resolved, so, our professional success is also based onproviding prompt response and high quality,
personalized service. “Whatever you need in Mexico,
we can legally find the most affordable way”
Tel:
Website:Email:
Contact:

525528621761 & 525534516553
www.tciplaw.mx
ecruz@tciplaw.mx
mtovar@tciplaw.mx
contactus@tciplaw.mx
Elsa Cruz, Martin Tovar

NIGERIA

Aluko & Oyebode

The Intellectual Property practice at Aluko & Oyebode isrecognised in handling patents, trademarks, copyrights,
designs, and related IP litigation in Nigeria. The Firm’s IP
team has an extensive trial experience and provides anincomparable expertise in a variety of IP matters, including
clearance searches, protection, portfolio management, use
and enforcement of trademarks, copyright, patents, design
and trade secrets, licensing, technology transfer,
franchising, media law, packaging, advertising, labelling,
manufacturing and distribution agreements, and productregistration with the National Agency for Food and Drug
Administration and Control (NAFDAC).
Tel:+234 1 462 8360
Website: www.aluko-oyebode.com
Email:
ao@aluko-oyebode.com
Contacts: Uche Nwokocha, Partner
Uche.Nwokocha@aluko-oyebode.com
Mark Mordi, Partner
Mark.Mordi@aluko-oyebode.com

104

THE PATENT LAWYER

Our staff of attorneys, engineers and computer
specialists help adapt foreign patent specifications andclaims to Mexican law, secure patent inventions andtrademark registrations and maintain them by handlingthe necessary renewals. Our computer system, which
is linked to the Mexican Patent and Trademark
Department, permits us to provide our clients witha timely notice of their intellectual property matters.
We also prepare and register license agreements.
Address:
Tel:
Fax:
Website:Email:
Contact:
Email:

Paseo de la Reforma 265, M2, Col. Y Del.
Cuauhtemoc, 06500 Mexico, D.F.
(5255) 5533 0040
(5255) 5207 3150
www.goodrichriquelme.com
mailcentral@goodrichriquelme.com
Enrique Diazediaz@ goodrichriquelme.com

Adastra IP is a full service IP firm with offices across theSouth East Asia, India and Australia with a full team oflegal and technical specialists to handle drafting,responses and filings for Trademarks, Patents andDesigns with emphasis on value and service for ourclients. In addition, we have IP analytics and IP valuation
capabilities aside from prosecution work to support ourclients’ IP needs.
Tel:
Website:Email:
Contact:+60322842281
www.adastraip.com
info@adastraip.com
Mohan K.
Managing Director

We offer:a full range of services related to patents,
utility models, designs and trademarks in Poland
as well as Community Designs andEuropean Trademarks in the EU
cooperation with patent agencies in all PCT countries
preparation of patent applications from scratch
for filing in the USA
validations of EU patents in Poland,annuity payments
Tel:
Website:Email:
Contact:+48 663 802 804
www.LIONandLION.eu
patent@lionandlion.eu
Dariusz Mielcarski,
Patent and Trademark Attorney

Sigeon IP, Grzelak & Partners are professionals
specializing in the protection of intellectual property
rights, as well as in broadly defined patent, trademark,design, legal, IP- related business, management andstrategic consulting. Thanks to the close cooperation
within one team of the Polish and European Patent &Trademark Attorneys, Attorneys-at-Law and businessadvisors, we offer the highest quality “one-stop-shop”
service in Poland and Europe.
Tel:
Fax:
Website:Email:
Contacts:+48 22 40 50 401/301+48 22 40 50 221
www.sigeon.pl/en
ip@sigeon.pl
anna.grzelak@sigeon.pl (patents,
management & international cooperation)
tomasz.gawrylczyk@sigeon.pl(trademarks, designs & legal)International Intellectual Property Attorneys
United Trademark and Patent Services is a leading firm oflawyers and consultants specializing in Intellectual Property(IP) Rights and Issues. Our services include searching, filing,prosecution, registration, licensing, franchising, transfer oftechnology, arbitration, dispute resolution, enforcement &litigation, anti-counterfeiting, due diligence and counselling.
Address:

Website:Email:
Contact:

United Trademark & Patent Services
Ahmed Al-Misnad Building, Building No. 241,
2nd Floor, Office 9, Street No. 361,
Zone No. 37, Mohammad Bin Thani Street,
Bin Omran P.O.Box : 23896 Doha
www.utmps.com
qatar@unitedTM.com &unitedtrademark@unitedtm.com
Ahmed Tawfik & M.Y.I. Khan

MEXICO

MOROCCORUSSIASAUDI ARABIASRI LANKA

Uhthoff, Gómez Vega & Uhthoff, S.C.

United Trademark &Patent Services

Vakhnina and Partners

United Trademark &Patent Services

United Trademark &Patent Services

United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.

Major areas of expertise of our patent team: Chemistry,
Pharmaceuticals, Biotechnology, Biochemistry, etc.

United Trademark and Patent Services is a leading firm oflawyers and consultants specializing in Intellectual Property(IP) Rights and Issues. Our services include searching, filing,prosecution, registration, licensing, franchising, transfer oftechnology, arbitration, dispute resolution, enforcement &litigation, anti-counterfeiting, due diligence and counselling.

United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.

Address:

Our attorneys are members of INTA, FICPI, AIPPI, LESI,ECTA, PTMG.
Address: Moscow, Russia
Tel:+7-495-946-7075
Website: https://www.vakhnina.com
Email:
ip@vakhnina.com
Contact: Dr. Tatiana VAKHNINA
Dr. Alexey VAKHNIN

Uhthoff, Gómez Vega & Uhthoff, S.C. is the clear leader of theIP firms in Mexico. For over a century the firm has been
providing legal services to clients both domestically andaround the globe. The firm is one of the most prestigious andrecognised law firms in the country, with an undeniable trackrecord of success across a spectrum of services in an arrayof different industries. The combined expertise at the firm, notonly in delivering the legal services clients expect, but in doing
so with the insight and awareness of what drives clients’
passion for innovation is what sets the firm apart.
Address: AV. Paseo de la Reforma 509 22nd floor
Col. Cuauhtemoc, 06500 Mexico City
Tel:
52 (55) 5533 5060
Website: https://en.uhthoff.com.mx/
Email:
mailbox@uhthoff.com.mx
Contact: Javier Uhthoff, Senior Partner
J.uhthoff@uhthoff.com.mx
Eugenio Pérez, Partner
eugenioperez@uhthoff.com.mx

International Intellectual Property Attorneys

Website:Email:
Contact:

United Trademark & Patent Services
58, rue Ibn Battouta 1er étage,
no 4. Casa Blanca, Morocco
www.utmps.com
morocco@unitedtm.com &unitedtrademark@unitedtm.com
Yawar Irfan Khan

The team at “Vakhnina & Partners” comprises of highlyqualified patent and trademark attorneys and lawyers.

We handle our clients’ cases in Russia, Armenia,
Kyrgyzstan, at Eurasian Patent Office, and cooperatewith partners and associates in other Eurasian countries:
Georgia, Belarus, Kazakhstan, Azerbaijan, Turkmenistan,
Uzbekistan, Moldova, Tajikistan.

International Intellectual Property Attorneys

Address:

Website:Email:
Contact:

United Trademark & Patent Services
30th Street, Olaya Opposite to Madarris Al
Mustaqbil, P.O. Box 15185, Riyadh 11444,
Kingdom of Saudi Arabia
www.utmps.com
saudia@unitedtm.com &unitedtrademark@unitedtm.com
Dr.Hasan Al Mulla &Justice R Farrukh Irfan Khan

International Intellectual Property Attorneys

Address:
Website:Email:
Contact:

U.T.P.S Lanka (Pvt) Ltd
105, Hunupitiya Lake Road,
Colombo – 2, Sri Lanka
www.utmps.com
srilanka@unitedtm.com &unitedtrademark@unitedtm.com
Krishni & M.F. KhanOMAN

PAKISTANSWEDENTAIWAN, ROC

TAIWAN R.O.C.

United Trademark &Patent Services

United Trademark &Patent Services

Fenix Legal

Deep & Far Attorneys-at-law

Giant Group International
Patent, Trademark & Law Office

United Trademark and Patent Services is a leading firm oflawyers and consultants specializing in Intellectual Property(IP) Rights and Issues. Our services include searching, filing,prosecution, registration, licensing, franchising, transfer oftechnology, arbitration, dispute resolution, enforcement &litigation, anti-counterfeiting, due diligence and counselling.

United Trademark and Patent Services is a leading firmof lawyers and consultants specialising in Trademarks,
Patents, Designs, Copyrights, Domain Name
Registration, Litigation & Enforcement services.

Address:

Tel:

International Intellectual Property Attorneys

Website:Email:
Contact:

United Trademark & Patent Services
Suite No. 702, 7th Floor, Commercial
Centre, Ruwi Muscat, Sultanate of Oman,
P. O. Box 3441, Postal Code 112 Ruwi,
Sultanate of Oman
www.utmps.com
oman@unitedtm.com &unitedtrademark@unitedtm.com
S.Maqbool & T.F. Khan

International Intellectual Property Attorneys

Address:

Fax:
Website:Email:
Contact:

85 The Mall Road, Lahore 54000,
Pakistan+92 42 36285588, +92 42 36285590,+92 42 36285581, +92 42 36285584+92 42 36285585, +92 42 36285586,+92 42 36285587
www.utmps.com & www.unitedip.com
unitedtrademark@unitedtm.com
Yawar Irfan Khan, Hasan Irfan Khan

CTC Legal Media

Fenix Legal, a cost-efficient, fast and professional
Patent and Law firm, specialized in intellectual
property in Europe, Sweden and Scandinavia. Ourconsultants are well known, experienced lawyers,
European patent, trademark and design attorneys,business consultants, authorized mediators andbranding experts. We offer all services in the IP field
including trademarks, patents, designs, dispute
resolution, mediation, copyright, domain names,
IP Due Diligence and business agreements.
Tel:
Fax:
Website:Email:
Contacts:+46 8 463 50 16+46 8 463 10 10
www.fenixlegal.eu
info@fenixlegal.eu
Ms Maria Zamkova
Mr Petter Rindforth

CTC Legal Media

Deep & Far attorneys-at-law deal with all phases oflaws with a focus on IPRs, and represent someinternational giants, e.g. InterDigital, MPS, SchottGlas, Toyo Ink, Motorola, Cypress. The patent
attorneys and patent engineers in Deep & Far normallyare generally graduated from the top five universities
in this country. More information regarding this firm
could be found from the website above-identified.
Address:
Tel/Fax:
Website:Email:
Contact:

13 Fl., 27 Sec. 3, Chung San N. Rd.,
Taipei 104, Taiwan
886-2-25856688/886-2-25989900
www.deepnfar.com.tw
email@deepnfar.com.tw
C.F. Tsai, Yu-Li Tsai

Giant Group is specialized in domestic and international
patent application, litigation and licensing, as well as
trademark and copyright registration. Regardless ofwhether you are seeking legal protection for a piece ofintellectual property, or being accused of infringing
someone else’s intellectual property, you can deal with thiscomplex area of law successfully through Giant Group.
Tel:
Fax:
Website:Email:
Contacts:+886-2-8768-3696+886-2-8768-1698
www.giant-group.com.tw/en
ggi@giant-group.com.tw
Marilou Hsieh, General Manager,
Tel: +886-911-961-128
Email: marilou@giant-group.com.tw
Amanda Kuo, Manager
Tel: +886-2-87683696 #362
Email: amandakuo@giant-group.com.tw

THE PATENT LAWYER 105

DIRECTORY OF SERVICES

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

ip@vakhnina.com
www.vakhnina.com
ip@vakhnina.com+7-495-946-7075
www.vakhnina.com
ip@vakhnina.com

Directory of Services
TAIWAN, ROC

TANZANIATÜRKİYE

LEWIS & DAVIS

United Trademark &Patent Services

Destek Patent

LEWIS & DAVIS offers all services in the IPRs field,
including prosecutions, management and litigation ofTrademarks, Patent, Designs and Copyright, andpayment of Annuity and Renewal fee. Our firm assists
both domestic and international clients in Taiwan,
China, Hong Kong, Macau and Japan. Our experienced
attorneys, lawyers, and specialists provide professional
services of highest quality while maintaining costs at
efficient level with rational charge.
Tel:
Fax:
Website:Email:
Contact:+886-2-2517-5955+886-2-2517-8517
www.lewisdavis.com.tw
wtoip@lewisdavis.com.tw
lewis@lewisdavis.com.tw
Lewis C. Y. HO
David M. C. HO

International Intellectual Property Attorneys
United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.
Address:
Website:Email:
Contact:

United Trademark & Patent Services
Shauri Mayo Area, Pugu Road,
Dar-Es-Salaam, Tanzania
www.utmps.com
tanzania@unitedtm.com &unitedtrademark@unitedtm.com
Mr Imad & Fatima Al Heyari

Address:
Tel:
Website:Email:
Contact:

Spine Tower Saat Sokak No: 5 Kat:13
Maslak-Sarıyer / İstanbul - 34485 Türkiye+90 212 329 00 00
www.destekpatent.com
global@destekpatent.com
Simay Akbaş
(simay.akbas@destekpatent.com

UKRAINEVIETNAM

United Trademark &Patent Services

Pakharenko & Partners

Annam IP & Law

International Intellectual Property Attorneys
United Trademark and Patent Services is a leading firmof lawyers and consultants specializing in Intellectual
Property (IP) Rights and Issues. Our services include
searching, filing, prosecution, registration, licensing,franchising, transfer of technology, arbitration, dispute
resolution, enforcement & litigation, anti-counterfeiting,due diligence and counselling.
Address:

Website:Email:
Contact:

United Trademark & Patent Services
Suite 401-402, Al Hawai Tower,
Sheikh Zayed Road, P.O. Box 72430,
Dubai, United Arab Emirates
www.utmps.com
uae@unitedtm.com &unitedtrademark@unitedtm.com
M.F.I. Khan, SM. Ali & Maria Khan

VIETNAM

ELITE LAW FIRM

ELITE LAW FIRM is very pleased to assist our esteemedclients in Registration of their Intellectual property rights
Safely, Effectively and Handle IP Rights disputes Quickly
So that Clients can Do Business Strongly andSuccessfully Develop.
Tel:
Hotline:Website:Email:
Contact:(+84) 243 7373051(+84) 988 746527
https://lawfirmelite.com/
info@lawfirmelite.com
Nguyen Tran Tuyen (Mr.)
Patent & Trademark
Attorneytuyen@lawfirmelite.com
Hoang Thanh Hong (Ms.)
Manager of IP Division
honght@lawfirmelite.com

106

THE PATENT LAWYER

Address:
Visiting:
Tel/Fax:
Website:Email:
Contact:

P.O.Box 78, 03150 Kyiv, Ukraine
Business Centre ‘Olimpiysky’,
72 Chervonoarmiyska Str., Kyiv 03150,
Ukraine+380(44) 593 96 93+380(44) 451 40 48
www.pakharenko.com
pakharenko@pakharenko.com.ua
Antonina Pakharenko-Anderson
Alexander Pakharenko

VIETNAM

Pham & Associates

Russia, Armenia, Kyrgyzstan

Destek Patent was established in 1983 and has beena pioneer in the field of Intellectual Property Rights,
providing consultancy services in trademark, patentand design registrations for almost 40 years.
Destek Patent provides its clients with excellence in
IP consultancy through its 16 offices located in
Türkiye, Switzerland, Kazakhstan, UAE and the UK.
Besides its own offices, Destek Patent also provides
IP services in 200 jurisdictions via its partners andassociates.

U.A.E.

Pakharenko & Partners provides full IP service coveragein Ukraine, CIS countries and Baltic states and has
offices in Kyiv and London. We pride ourselves on an
exclusive expertise and experience in the fields of IP law,anti-counterfeiting and anti-piracy, pharmaceutical law,competition law, advertising and media law, corporate
law, litigation and dispute resolution.

ANNAM IP & LAW is one of the most professional
Intellectual Property & Law Firms in Vietnam, memberof APAA, INTA and VIPA. We provide our clients with afull range of IP services to protect their inventions,trademarks, industrial designs and related matters not
only in Vietnam, but also in Laos, Cambodia, Myanmar
and other jurisdictions. We also provide our clientswith legal advices on Finance and Corporate andBusiness Law.
Tel:
Fax:
Website:Email:
Contact:(84 24) 3718 6216
(84 24) 3718 6217
https://annamlaw.com/
mail@annamlaw.com.vn
annamlaw@vnn.vn
Le Quoc Chen (Managing Partner)
Dzang Hieu Hanh (Head of Trademark
Department)

VIETNAMTri Viet & Associates
Tri Viet & Associates is a registered and fully licensed IP& LAW FIRM based in Hanoi, Vietnam. The firm provides
a full range of IP services, strongly focuses on PATENT
and PCT services, in a wide range of industries andmodern technologies, in Vietnam, Laos, Cambodia,
Myanmar, and other jurisdictions upon client’s inquiries.
Tri Viet & Associates is a member of AIPPI, INTA,
APAA, VBF, HBA, VIPA.

Tel:
Fax:
Website:Email:
Contact:

Tel:
Fax:
Website:Email:
Contact:
Linkedin:Dr. Tatiana Vakhnina
Dr. Alexey Vakhnin
Dr. Elena Utkina
Dr. Alexey Vakhnin
Dr. Elena Utkina
Dr.Founder,
TatianaVakhnina
Dr.M.D.
AlexeyVakhnin
Elena
UtkinaDoctorof Law,
PhD (Medicine,
Biochemistry, Dr.PhD
in Chemistry.

Dr. Tatiana Vakhnina

Founder, Doctorof Law,
Honorary
advocate of theDoctorof Law,
RussianFederation.
HonoraryFounder,
advocateofthe
Honorary advocate of theRussian Federation.
Russian Federation.

M.D. PhDBiotechnology).
(Medicine, Biochemistry,
M.D. PhD (Medicine, Biochemistry,
Biotechnology).

PhD in Chemistry.
PhD in Chemistry.

Biotechnology).

Russian Patent and Trademark
Russian Patent and Trademark
Russian Patent Attorney,
Attorney, Eurasian Patent Attorney
Attorney, Eurasian Patent Attorney
Eurasian Patent Attorney
Russian Patent
TrademarkPatentandandTrademarkRussianPatentAttorney,
Attorney,
Russianand
Patentand Trademark Russian
RussianPatentTrademarkRussian Patent
Attorney,Attorney,
Eurasian
PatentAttorneyEurasian
Attorney
PatentAttorneyEurasian
PatentAttorney
Attorney,Eurasian
PatentAttorneyEurasian
PatentSpecializes
in trademarks,
andAttorney,
Specializes
inPatent
Medicine,
Biotechnol-EurasianSpecializes
inAttorney
Chemistry,

Established in 1991, staffed by 110 professionals
including 14 lawyers and 34 IP attorneys, Pham &Associates is a leading IP law firm in Vietnam. The firmhas been being the biggest filers of patents,
trademarks, industrial designs and GIs each year
and renowned for appeals, oppositions, court actions,
out-of-court agreements and handling IP infringements.
The firm also advises clients in all aspects ofcopyright and other matters related to IP.
+84 24 3824 4852
+84 24 3824 4853
www.pham.com.vn
hanoi@pham.com.vn
Pham Vu Khanh Toan, Managing
Partner,
General Director
Tran Dzung Tien, Senior IP Consultant

Russia,Armenia,
Kyrgyzstan+7-495-946-7075
www.vakhnina.com
Russia,Armenia, Kyrgyzstan+7-495-946-7075+84-24-37913084+84-24-37913085
www.trivietlaw.com.vn
info@trivietlaw.com.vn
Nguyen Duc Long (Mr.), Managing Partner –Reg. Patent & Trademark Attorneyhttps://www.linkedin.com/in/
longnguyen-tva

CTC Legal Media

patents in mechanical and electricalogy, Biochemistry, Pharmacology,

Biochemistry, Pharmacology,

Specializes
in trademarks,
Specializes
in Medicine,
Biotechnol- Specializes
Specializes
ininChemistry,Specializes
intrademarks,
and and Specializes
in Medicine,
BiotechnolChemistry,engineering.
Pharmaceuticals.
Pharmaceuticals.
patents
inmechanicalandelectricalogy,
Biochemistry,
Pharmacology,
Biochemistry,
Pharmacology,
patents in mechanical and electrical ogy, Biochemistry, Pharmacology,
Biochemistry, Pharmacology,
engineering.
Pharmaceuticals.
Pharmaceuticals.
engineering.
Pharmaceuticals.
Pharmaceuticals.

Eurasian and Russian Patent and Trademark Attorneys
Eurasian and Russian Patent and Trademark Attorneys

Eurasian and Russian Patent and Trademark Attorneys

EAPO | Armenia | Azerbaijan | Belarus | Georgia
EAPO| Armenia| Azerbaijan || Belarus
Kazakhstan| Kyrgyzstan
Moldova| Georgia| Russia
EAPO|
Armenia|
Azerbaijan|
Belarus|Georgia
Kazakhstan|
Kyrgyzstan|
Moldova|
RussiaTajikistan | Turkmenistan | Uzbekistan
Kazakhstan| Kyrgyzstan| Moldova| Russia
Tajikistan| Turkmenistan| Uzbekistan

Tajikistan Russia:| Turkmenistan
Kyrgyzstan:
Armenia: | Uzbekistan

Contacts: ip@vakhnina.com
Russia:Contacts: ip@vakhnina.com
Russia:am@vakhnina.com
Armenia:
am@vakhnina.com

Armenia:

kg@vakhnina.com
Kyrgyzstan:
kg@vakhnina.com

Kyrgyzstan:

Our attorneys are members of INTA, FICPI, AIPPI, LES Russia/LESI, PTMG, ECTA, Chamber of Russian Patent Attorneys
Contacts:
Our attorneys are
members of INTA, FICPI, AIPPI, LES am@vakhnina.com
Russia/LESI, PTMG, ECTA, Chamber of kg@vakhnina.com
Russian Patent Attorneys
ip@vakhnina.com
Vakhnina FP_ TPL.indd 1

21/07/2023 16:56

Vakhnina FP_ TPL.indd 1
21/07/2023 16:56
Our attorneys
are members of INTA, FICPI, AIPPI, LES Russia/LESI, PTMG, ECTA, Chamber of Russian Patent Attorneys