Vol. LV No. 2
June 2020
LES NEWS GLOBAL
Highlights
A D V A N C I N G
Meetings
Societies’ News
T H E
B U S I N E S S
O F
New Members
I N T E L L E C T U A L
Force Majeure Issues—Introduction
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ince the first cases of Covid-19 have been discovered, the outbreak of the coronavirus disease has rapidly caused a global emergency that has involved our lives in numerous ways. Among these is the deep impact on our economies, causing failure to fulfill contractual obligations due to various factors such as the shutdown of business activities and limits to circulation and movement of goods and people. It is therefore important to assess whether the concept of “force majeure” may apply. This assessment should cover what remedies may be provided on the basis of the applicable laws chosen by the parties or found under the rules governing private international law, in particular when agreements do not provide for special clauses with regard to such events. What follows are assessments of the general conditions related to force majeure clauses in various countries. We recommend that LES members perform a similar assessment of the impact of Covid-19 on contracts and remedies in any specific geography to which you may be subject. ■
Force Majeure Issues— United States of America How Force Majeure Is Intended By National Laws? here is no overriding federal law, so this is handled on a state-by-state basis. Most states have some common law that governs impossibility of performance, commercial impracticability, and/or frustration of purpose. The doctrines are generally stated as: “Where, after a contract is made, a party’s performance is made impracticable without his fault by the occurrence of an event the non-occurrence of which was a basic assumption on which the contract was made, his duty to render that performance is discharged, unless the language or the circumstances indicate the contrary.” Restatement (Second) of Contracts, Section 261. For contracts of goods, the Uniform Commercial Code applies: “Delay in delivery or non-delivery in whole or part by a seller...is not a breach of his duty under a contract for sale if performance as agreed has been made impracticable by the occurrence of a contingency the non-occurrence of which was a basic assumption on which the contract was made[.]” Section 2.615. The interpretation of impossibility varies greatly between states and impracticability does not apply in all states, so analysis is required for the specific state of interest. As an extreme, Alabama does not recognize the doctrines. In most instances force majeure contract clauses are used instead of relying on the doctrines. Including a force majeure clause overrides the doctrines.
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Force Majeure Issues, U.S.A., continued on Page 5
P R O P E R T Y
Reviews G L O B A L L Y
The Renaissance Of LESI Through Innovation By Audrey Yap, President, LES International
Dear LESI Family, It is my great pleasure and honor to address you as your LESI President. These are unique times. Given the cancellation of the Berlin Annual Meeting this year, our gathering in Padua Italy, kindly hosted by LES Italy early this year, was all the more precious and meaningful. I was very glad so many LESI leaders were able to attend, so I could share in person my plans. For those who missed out, I have a video for you: https:// www.youtube.com/watch?v=0w3LjGlrmS M&feature=youtu.be The Covid pandemic has upended life as we know it. All of a sudden, the way people move, communicate, work, eat and meet has changed radically. Some feel life is on the “pause button” waiting for actual life to return. We recognize and acknowledge that there is pain out there, not only for the ongoing battle to manage the health of individuals, but also the ripple effect on economies globally. Yet humanity has been guarding against plagues and surviving them for thousands of years. History shows us that crisis often inspires innovation. The word “crisis” in Chinese combines the characters danger and opportunity. The opportunity here is to create. Tectonic shifts in demand and innovation catalyze and spur
President, continued on Page 2
LES Global News—Highlights President, continued from Page 1 the emergence of new inventions and changes in behavior. These innovations are likely to endure beyond this pandemic.
We only need to look at the past to assure us of this. In the 1930s, the radio was invented and became the primary source of news and entertainment. In the 1940s, in the midst of world wars, the GAS MASK became a household essential! The government was taking no chances and everyone had to have one. Fines were issued for non-compliance—sound familiar? Out of the great depression came innovations like instant coffee, produced by Nestle amid a glut of coffee beans. During this period, DuPont invented nylon, a low cost material that revolutionized clothing, parachuting and rope making. Fast forward, we see that out of the rubble of the dot-com bust of 2001 came Google and eBay. Google transformed search & advertising; eBay’s auction gave rise to p-to-p e-commerce, while SARS first catalyzed China’s online business and mall and Alibaba’s fortune. It also saw the launch of Facebook. When the iPhone first came out in 2007, most people were just using the phone to TALK to people. 13 years later we can’t live without our smartphones! Social media, Pinterest, Instagram and Twitter came alive. After the financial crisis of 2008, AirBnB and Uber were created, responding to financially stretched consumers eager to save on accommodation and commuting, which shows how innovation is not limited to technology changes but also ways of doing business. How do we re-write 2020? In the last four months, Covid-19 has triggered a tidal wave of innovation around the world. Robots to disinfect from the U.S., drones to detect body temperature for Covid hotspots from Australia, remote monitoring from Israel, labs on a chip for accelerated Covid-19 testing in ten minutes by Singapore. China and Korea use sophisticated positioning technology to map and identify risk areas to carry out relief and rehabilitation efforts—they harness AI and satellite technology. WuChang Hospital, China Mobile and Cloud Minds came together to make hospital facilities completely smart and digital. Robots are used for everything from preparing meals in the hospital to diagnosis. Tencent and Alibaba developed color-coded health rating systems to track millions via smartphone apps. Singapore, Poland, South Korea and the U.S. also use smart phone tracking. Korea used AI to develop a test kit within a week which was certified by the EU. Japan, which owns half the global market share in the sensor market, has rolled out touchless/contactless technology. Innovation includes pivoting and repurposing. Vehicle manufacturers Tesla/GM repurposing idle factories to make ventilators; Ford/Volkswagen manufacturing PPE and face masks from air bags; distillers, brewers and fragrance companies making hand sanitizers; medical professionals harnessing telemedicine; schools providing homebased learning with a vengeance! These players, having acquired such expertise and adjusted and expanded their customer base, may continue with these innovations long after Covid-19. This is only the beginning… 2
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LESI needs to remain nimble and respond to these changes. Innovation will gird global economies for the future. My theme is Renaissance of LESI Through Innovation. Innovation and IP must remain critical pillars of LESI, and we must press on with these efforts through my three task forces, which were established to move this agenda forward: High Growth Enterprises (HGE-—focusing on SMEs which represent a huge potential for the future growth of LES) LESI Innovation Trends (LIT—important new areas of technology that will light our path ahead) LESI Industry IP Festival (LIIF—integrating IP with the life of business) In brief, the HGE task force will focus on high growth enterprises as we recognise that innovation and the need for IP is not restricted in size or type of company, but by their potential to grow. This task force will be engaging High Growth Enterprises, particularly their decision makers, on the topic of the use of IP for business growth. Please look out for the special edition of les Nouvelles to be published in June 2020, which is a collaborative effort between the EPO and LESI on this subject. The LIT task force will be our think tank for identifying new content and emerging areas of IP law and technology innovation sectors to assist LESI in channelling our energies into these areas of interest, whether for publication, seminars/webinars or discussion forums. The LIIF task force focuses not only on education, but also on bringing interested parties together to further IP licensing and collaboration. And so the theme for my term will be a call to action: LET’S INNOVATE! I have chosen the following logo to represent it: As you can see, the letters L, E, S, I are embedded in the tag-line, just as the capacity to innovate is within us in LESI. The logo calls for a change in our paradigm, recalling how Galileo’s astronomical observations helped to change the scientific understanding of our solar system, that rather than the Earth being at the centre, the Earth and the planets revolve around the Sun. In the same way, the theme of innovation for LESI is also aimed at shifting our focus to innovative startups and SMEs using IP for business growth. The vertical lines of increasing height on the top right of the logo evoke a sense of growth. I believe that with our shift in focus and strategy, LESI will experience not only renewed growth, but a true Renaissance that will have lasting impact. And lastly, the fiery colors I have chosen for the logo represent our energy and passion for our LES, our mission, and the good we can do in the world. We need a comprehensive strategy to deal with this changing global landscape. To do this we need to ask the right questions: What strategic changes are needed to not only remain relevant, but strengthen our dominant position in advancing President, continued on Page 3
LES Global News—Highlights
Tribute to Larry Plonsker By Fiona Nicolson
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n February, at the LESI Winter Planning Meeting in Padua, I was privileged to be able to make a presentation to Larry Plonsker to acknowledge his 15 years as the editor of les Nouvelles and LES Global News. For those who were not present in Padua, I would like to record the sincere and heartfelt appreciation of the LES family to Larry for his efforts over those years. As you would be aware, les Nouvelles is one of the jewels in the LES crown and is regarded both within and outside the LES community as a valuable re- Dana Colarulli, Larry Plonsker and source for high quality information and David Massey at the LESI meeting in articles relating generally to intellectual Padua, Italy. property and technology transfer. One clear reason for that status is the quality of service provided by Larry as editor. As with all good editors, he made the publications better than they would have been without his contribution. As I remarked in Padua, the first issue which he edited was published in March, 2005, since then he has managed the publication of 57 issues totalling more than 5,700 pages of reading material. Importantly, Larry encouraged and oversaw the introduction of a “double blind” peer review system which is extremely important for acceptance in the academic and scientific communities. Larry also encouraged the removal of the “blue pages” from les Nouvelles, the creation of LES Global News and the electronic distribution of that publication. All of this was achieved with a lot of hard work, but a minimum of fuss. As Rodney DeBoos, on behalf of the Editorial Review Board has said, Larry was a dream to work with; there was rarely a question he could not answer and almost nothing that he would not do to make the life of the ERB members easier.
Larry Plonsker, continued from Page 4 President, continued from Page 2 the business of IP? What should take priority? Where shall we invest our efforts most? How do we build solid collaborations that support our goals and endure? We cannot fight tomorrow’s wars with yesterday’s strategies. It is important for each of us to have a sense of ownership of this great association LESI, as this creates and allows for a tremendous sense of empowerment among the members. This very sense has enabled LESI in the past to produce some of the most thought-provoking forward-looking strategies and management tools for IP. I believe that LESI’s greatest strategic advantage is that it has access to IP’s best and brightest. We deal not only with IP, which is one of the most forwardlooking categories of law, but the business of IP, which provides the economic motivation to generate and protect our IP assets. Corporate wealth is built on these critical IP assets. Our organization LESI is therefore one of the future. The diversity of our membership allows for building ever stronger IP ecosystems to feedback, in a loop, for our members. We can be a movement, an unstoppable force for IP in each of the communities and industries we represent and work in. Let us therefore prepare ourselves for this great renaissance of LESI. LET’S INNOVATE!
Inside LES Global News Highlights –Pages 1-23, 39 Society News, Committee Reports –Pages 25, 27-32, 34-37
Meetings & Delegates, Advertisers –Pages 24, 26, 33, 38-43
Quick Links: www.lesi.org www.lesi.org/les-nouvelles www.lesi.org/les-societies www.les-europe.org www.les-asiapacific.org
Call For Content We request contributions from all societies and individuals about important events, changes in the law in your country or region, conferences, annual meetings, board changes, and the like from your society. You can submit articles or announcements to the editor or use the form on the website at the following address: www.lesi.org/lessocieties/les-global-news/submission-form. Deadlines: January 15, April 15, July 15 and October 15 Editor: David Drews, 9320 Chesapeake Drive, Suite 110, San Diego, CA 92123 Tel: +1-858-603-8825 • E-mail: editor@lesi.org Copyright ©2020 Licensing Executives Society International
LESI Board members with Mayor Giordani of Padua. The meeting was hosted in a beautiful hall of the Municipality of Padua.
June 2020
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LES Global News—Highlights
LES International Calendar Meetings & Events 2020 September 17
LES France's 50th Anniversary! POSTPONED
Paris
September 22
LES Scandinavia Annual Conference 2020 POSTPONED
Helsinki
October 18-21
LES 2020 Annual Meeting
Philadelphia
November 2
LES Britain & Ireland LES100 Training Course
Scotland
November 3
LES Britain & Ireland Annual Conference 2020
Scotland
November 6
LES Britain & Ireland LES100 Training Course
London
LES ANZ Annual Conference 2020
Christchurch
2021 April 7-9
Larry Plonsker, continued from Page 3 Carla Blackman from Design Interface, who publishes les Nouvelles and LES Global News, commented that: “Larry always kept to the schedule and got us articles in plenty of time to do our job of design and layout. I could rely on him to turn around approved pages in a few days. His legal expertise and knowledge about licensing was a great resource. He also handled the contributing writers and LES executives with finesse. I will miss working with him and wish him well in his future pursuits.” …and so will we all. I would also like to thank Larry’s wife, Sharon, for her contribution to LES as a regular accompanying person and participant in LES social activities and as a support for Larry. I look forward to catching up with them once the current pandemic has passed and life returns to normal. In the meantime, on behalf of the LES family, I extend my heartfelt thanks to Larry for his excellent contribution to the Society. ■ 4
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Dispute Resolution Committee Our Work Over The Past Two Years 1. We accomplished a study on International Patent Enforcement covering many jurisdictions, which was published in les Nouvelles December 2018. 2. We accomplished a study on International Design Law covering many jurisdictions, which was published in les Nouvelles March 2020. 3. A committee member, Sergey Vasiliev, published an article on Patent Litigation in Russia in les Nouvelles in 2019. 4. A committee member, Elena Martini, served as a speaker in the framework of the Padua Winter Planning Meeting on “Top 10 Litigation cases in Europe on Licensing contracts.” 5. The committee organized two workshops relating to items 1 and 2 above for the LESI Annual Meeting to be held in Berlin this spring. However, since the LESI Annual Meeting was canceled, we will present those workshops at the next possible LESI Annual Meeting. 6. Call for volunteers: As one of our next projects, we would like to provide a similar “theme issue” study (see items 1 and 2 above) for trademarks. Any volunteers to serve as the editor and organizer of this theme issue should contact Tilman Müller-Stoy at Mueller-stoy@bardehle.de. 7. We are currently preparing an article on arbitrating IP rich contracts for publication in les Nouvelles. The article will be written by our new committee member Mark Brown, Bristows.
LES Global News—Highlights Force Majeure Issues, U.S.A. continued from Page 1 Can the Covid-19 Emergency Be Included In Such a Notion? This very much depends on the subject matter of the contract. If the contract is for meeting services at a hotel and the government has forbidden any meetings over five people, then the doctrines will likely apply. If the contract is for hotel rooms for that meeting and only air travel has been banned, then the doctrines may not apply. If attendees cannot travel only due to company policy, then the doctrines likely will not apply. The same fact-based analysis is true for force majeure contract clauses based on the particular listed causes and general statement of the clause. In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis of a Contractual Default Caused By the Covid-19 Emergency? If the doctrines or force majeure clause applies, then no damages are available as the doctrines and clauses excuse nonperformance. If the doctrines or clause do not apply, damages will be available. Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related Case-Law, If Any and/or Applicable? Is Termination Applicable In Case Of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? If the basis for the doctrines or force majeure clause applying is only temporary and the performance of the contract is ongoing, then non-performance is excused only during the period when the doctrines or force majeure clause apply. Termination is not available. As noted above, the states vary greatly. “Excessively onerous” will likely not be sufficient if the state has a strict interpretation of impossibility and does not recognize impracticability
or frustration of purpose. Even in states that recognize impracticability or frustration of purpose in general, the interpretations are often very narrow, so “excessively onerous” may not be sufficient. Can This Affect IP-Related Contracts? Theoretically IP-related contracts can be affected, but the likelihood is much less. Most of the cases where the doctrines or clauses would apply relate to services included in the contract, such as software installation services that cannot be done remotely. Have Special Rules Been Introduced at a National/Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies? In general, the only special rules have involved disallowing eviction of individuals from their dwellings or removal of vital services like electricity, natural gas and water. Does the Notion of Force Majeure Apply To Agreements Executed After the Beginning of the Covid-19 Emergency? The doctrines would apply to any contracts executed after the beginning of the emergency, but the existence of the emergency would be factored into any interpretations of impossibility or impracticability. In most cases, force majeure clauses are used and Covid-19 is an express exception. Conclusions and Recommendations Check the agreement for a force majeure clause. Then review the state law on interpreting similar clauses. If no force majeure clause, then the applicable state law must be determined, as they vary greatly. ■ Author Keith Lutsch, Partner, Blank Rome LLP, Houston, Texas, U.S.A., klutsch@blankrome.com
Force Majeure Issues—Canada 1) The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? n matters of private law, the Common Law applies for all Canadian provinces and territories, except for the province of Quebec where the Civil Law rather applies. Common Law is defined as legal rules made by judges as they issue rulings on cases and Civil Law is defined as legal rules and law made by legislature or in official statutes which are interpreted in jurisprudence. In Quebec Civil Law, the concept of “force majeure” or superior force is defined in section 1470 of the Civil Code of Quebec, RLRQ v. CCQ-1991 (the C.C.Q.): A person may free himself from his liability for injury caused to another by proving that the injury results from superior force, unless he has undertaken to make reparation for it.
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Superior force is an unforeseeable and irresistible event, including external causes with the same characteristics. Its remedy is detailed in section 1693 C.C.Q.: Where an obligation can no longer be performed by the debtor, by reason of superior force and before he is in default, the debtor is released from the obligation; he is also released from it, even though he was in default, where the creditor could not, in any case, have benefited from the performance of the obligation by reason of that superior force, unless, in either case, the debtor has expressly assumed the risk of superior force. The burden of proof of superior force is on the debtor. Notwithstanding the foregoing, the notion of force majeure is not considered a matter of public order in Quebec. Therefore, parties can provide for force majeure clauses which are adapted to their specific contractual agreement.
Force Majeure Issues, Canada, continued on Page 6 June 2020
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LES Global News—Highlights Force Majeure Issues, Canada, continued from Page 6 At Common Law in Canada, the concept of “force majeure” is contractual in nature. Therefore, in such jurisdictions, the concept of force majeure, its definition and its effects must be expressly set out in a contract to apply. As will be explained below, certain Common Law doctrines may also apply, such as the doctrine of frustration, if there are no contractual clauses which expressly refer to force majeure events. A force majeure clause will typically list the types of events which may constitute a force majeure. Some clauses may specifically provide for “epidemics or pandemics,” but this is not necessary for the Covid-19 emergency to be considered an event of force majeure. Other general formulations of force majeure such as “acts of God,” “partial or complete work interruptions,” “compliance with regulations or orders of any governmental authorities” may also be sufficiently broad to include the Covid-19 emergency. In both Canada and in Quebec, case law has developed the necessary criteria for identifying an event of force majeure. First, the event must be unforeseeable, i.e., the event was not foreseeable by the parties at the time of acceptance of the contract and was not foreseeable by a diligent, prudent and informed person. In Canada, the event must be sufficiently dramatic and unusual to constitute a force majeure. Second, the event must be irresistible. In this case, any intervention to try to prevent the event is futile or useless. Moreover, the event prevents the performance of the obligation in an absolute manner. Performance that is simply more difficult, more perilous or more expensive for the debtor is not considered “irresistible.” Thirdly, force majeure cannot be personal to the debtor. There must be circumstances which make performance impossible for all. Similarly, the event cannot be caused by or attributable to the debtor. The event must not result from the “act, negligence, omission or default” of the debtor. Consequentially, it is likely that the Covid-19 emergency constitutes an event of force majeure under Canadian federal and provincial law. In fact, there is provincial case law to the effect that other global infections constituted force majeure events. As for the Covid-19 emergency, not only was the pandemic unforeseeable, but it may have rendered certain obligations entirely impossible to perform under contractual agreements, notably due to the various public health measures implemented by the government. Although it may appear likely that the Covid-19 emergency constitutes an event of force majeure, businesses should be prudent and seek legal counsel before exercising their rights under a force majeure clause. In fact, the determination of Covid-19 as an event of force majeure may greatly differ on a case-by-case basis, depending on the language of the force majeure clause and related definitions. 2) In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis Of a Contractual Default Caused By the Covid-19 Emergency? Force majeure clauses typically absolve a non-performing party in case of an event of force majeure. Therefore, unless otherwise provided in a contract, it will generally not be possible to 6
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obtain monetary compensation based on a contractual default caused by the Covid-19 emergency. Notwithstanding the foregoing, in the event of a force majeure, parties in Canada must, at all times, ensure to mitigate their damage arising from an inability to perform its obligations. Failure to do so will result in a party not receiving full monetary compensation. However, in order for a non-performing party to be absolved, they will have to ensure that the Covid-19 emergency constitutes a force majeure within the meaning of the provisions of the contract and/or the applicable laws, that the Covid-19 emergency has made the performance of their obligations impossible and that the Covid-19 emergency and its consequences were beyond reasonable foresight and skill of the parties at the time at which they entered into the contract. Should the Covid-19 event not constitute a force majeure, parties who suffer damages from the erroneous trigger of a force majeure clause may potentially sue for monetary damages on the basis of a contractual default. 3) Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related CaseLaw, If Any and/or Applicable? In Common Law, the doctrine of frustration will potentially apply for the situations not included contractually as an event of force majeure. Generally, a contract is deemed to be “frustrated” when: (i) an unforeseeable event takes place; (ii) the event is not caused by any of the parties; and (iii) the contract as envisioned can no longer be carried out (a radical change is necessary). The main difference with the notion of force majeure is that the doctrine of “frustration” can apply even if the performance is radically more difficult or different than initially undertaken under the contract. Under the notion of force majeure, a performance that is simply more difficult, more perilous or more expensive for the debtor is not considered “irresistible” and, therefore, the remedies are not applicable. If the doctrine of frustration applies, the contractual obligations of the parties are terminated. However, this does not necessarily mean that there will not be any amounts payable to the parties. Indeed, the doctrine of frustration has been framed by legislation in all Canadian provinces with the exception of Quebec, and some legislation provides for the compensation of the parties in cases where the contract has become impossible to perform. Also, in both Common Law and Civil Law, general clauses which refer to changes to governing law and regulation may be relevant as provincial and federal governments formalize business closures and social distancing by executive orders or legislative action. 4) Is Termination Applicable In Case Of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? Force majeure clauses may allow for the extension of the delays required to fulfill certain obligations or even the pos-
Force Majeure Issues, Canada, continued on Page 7
LES Global News—Highlights Force Majeure Issues, Canada, continued from Page 6 sibility for a party to terminate the entire agreement if the event exists for a certain period of time. As such, the determination as to whether the termination of a contract is a potential remedy in the event of a force majeure is largely a question of contract interpretation. Notwithstanding the foregoing, it is to be noted that in the absence of any contractual language to the contrary, termination of a long-term contract by application of the doctrine of frustration may pose an issue in the event of a temporary supervening impossibility of an obligation. In such cases, it may prove to be difficult to argue that a temporary event significantly changes the nature of the parties’ respective obligations in the long term such that it would be unjust to maintain such obligations in the circumstances. However, unless the contractual language provides otherwise, force majeure clauses will typically not be triggered in the case where an obligation has become excessively onerous, perilous or difficult. As previously mentioned, the event must be irresistible in order to constitute a force majeure. In order to fulfill this condition, obligations must therefore be impossible to perform for the event to constitute a force majeure. 5) Can This Affect IP-Related Contracts? Canadian law with respect to force majeure clauses can have a direct impact on IP-related contracts. License agreements, for example, often have boilerplate force majeure clauses which may have been overlooked. In the event of a force majeure, the trigger of force majeure clauses may result in: • Licensees being able to justify not attaining certain sales or production objectives; • Licensees being able to cease making royalty payments, including minimum royalty payments; • Licensees being able to justify not meeting certain research and development milestones; • Licensors being able to take extended periods of time to provide for notices or approvals which may be required under the agreement; and even • A complete cease in the development or commercialization of certain intellectual property. Research and development agreements may also be impacted in a similar manner if a force majeure clause was to be exercised by one of the parties. In fact, the exercise of a force majeure clause could ultimately lead to a complete cease in research and development activities and cause serious delays and costs in the development of potentially valuable intellectual property. If poorly drafted, force majeure clauses in IP contracts, including but not limited to those set out above, could have unintended consequences if triggered, which may prove to be detrimental for one or both parties, especially if the agreement attributes exclusive rights to certain intellectual property. 6) Have Special Rules Been Introduced At a National/ Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies?
Although various economic relief measures have been implemented at both the federal and provincial levels for businesses impacted by Covid-19, no special regulations have been introduced with regard to Covid-19 and force majeure notion and remedies. As such, the federal and provincial laws which are outlined above are the only applicable notions and remedies available at this time. 7) Does the Notion Of Force Majeure Apply to Agreements Executed After the Beginning Of the Covid-19 Emergency? In order for an event to be considered an event of force majeure or for the doctrine of frustration to apply, the event must be unforeseeable such that the parties could not reasonably have foreseen the event giving rise to the inability to execute their respective obligations. Consequently, the determination as to whether or not the notion of force majeure will apply to agreements executed after the beginning of the Covid-19 emergency will be dependent on whether or not the events were foreseeable at the time of execution. 8) Conclusions and Recommendations In Canada, the notion of force majeure and its remedies must be interpreted on a case-by-case basis in accordance with the relevant facts. Our recommendations are to conduct an overview of your contracts that could be affected by the Covid-19 emergency, to identify your obligations, potential damages and penalties at stake, and to ensure that the essential formalities are completed to legitimately invoke these force majeure clauses. Sending notices to creditors or business partners could be an important step in validating the relief and other effects provided for in a force majeure clause. Particular attention should be paid to contractual obligations to maintain day-to-day operations, often put forth by creditors (such as landlords) and financial institutions. In addition, an audit of your insurance coverage is always relevant in this context. We also advise you to learn more about the support and relief measures put in place to support businesses affected by the Covid-19 emergency with your financial institutions, as well as with the government and its entities. Finally, in the future, it would be important to further examine key contracts, whether already in effect or under negotiation, and pay attention to the clauses invoking the concept of force majeure and protections put in place in this type of situation, as these clauses are often overlooked and may lead to severe consequences if not appropriately drafted. ■
Authors: Julie Robert, Lawyer, ROBIC LLP, Montreal, Canada, robert@robic.com Amélie Côté, Lawyer, ROBIC LLP, Montreal, Canada, acote@robic.com June 2020
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Force Majeure Issues—Germany 1) The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? lthough in Germany the notion force majeure appears in many different pieces of legislation, as regards damages, it is not adequately codified. For example, unlike the 1980 United Nations Convention on Contracts for the International Sale of Goods and other jurisdictions, which expressly address force majeure, the German Civil Code (i.e. Bürgerliches Gesetzbuch, “BGB”), does not imply this concept into commercial contracts and is, accordingly, not familiar with the idea that the contracting party is not liable for the non-performance of one of its obligations due to a force majeure clause. Despite the absence of the notion in the BGB, the clause is frequently used in international commercial contracts governed by German law. This is because parties in Germany are free to include any provisions and determine their contractual rights and obligations in civil law contracts due to the principle of private autonomy. Due to the current Covid-19 pandemic (and related lockdowns and other preventive measures), the question arises if force majeure clauses may release a party from its contractual obligations. In order to determine whether a certain event qualifies as an event of force majeure under the agreed clause, in the absence of any applicable statutory provision, this will mainly depend on the wording of the respective clause and the hypothetical will of the parties on a case-by-case basis. In fact, even against the background of the incomplete regulation in German law, it is very likely that a German court would classify the Covid-19 pandemic as an event covered by a force majeure clause. Chances of being able to invoke force majeure are especially high if the clause expressly lists typical force majeure events such as epidemics, pandemics, diseases or quarantine. The same applies if a force majeure clause covers official orders and warnings. However, even if contracts do not contain any force majeure clauses, German law offers several instruments to address the effect of force majeure events on contractual obligations. Particularly, the BGB provides for statutory provisions on frustration of contracts or (temporary) impossibility to perform contractual obligations. Thus, a party to an agreement that is affected by the Covid-19 pandemic might, nevertheless, be released from its contractual obligations under provisions of German statutory law (for more information please see the answer to Question 3 below). 2) In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis Of a Contractual Default Caused By the Covid-19 Emergency? As discussed above, the German Private Law does not know the notion force majeure in connection with contractual defaults. Consequently, the examination of rights and
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possible claims leads directly to the law of impossibility of performances of the BGB. Thereafter, in the event of impossibility to perform contractual obligations or a delayed performance, the creditor is, generally, entitled to claim compensation instead of performance. However, under German law the debtor is only liable for damages that the other party suffers from the violation of contract if he has committed a culpable (i.e. intentional and negligent) breach of duty. With regards to monetary compensation, the essential question is therefore whether the debtor has caused the impossibility of performance culpably. A party that has been released from performing its contractual obligation due to effects resulting from the Covid-19 pandemic could generally argue that it did not culpably cause the non-performance. A reason for non-performance being considered not intentional and/or negligent includes, for example, serious illnesses such as a Covid-19 infection. Hence, for instance, the failure of a delay in performance or a non-performance can be ruled out in the event of a positive coronavirus test or the obligation to stay in preventive quarantine of a sole trader or significant parts of the workforce. Accordingly, a manufacturer would, most likely, not be liable for damages if its failure to perform an obligation resulted from a restricted production in order to contain the spread of the coronavirus. In contrast, a debtor may, occasionally, be deemed responsible for, e.g., the closure of a plant or production restrictions, if these measures only occurred due to his failure to take previously required protective measures. However, it should be noted that case law generally places a high level of responsibility on the debtor’s side, since under German law, he generally bears the risk of performance. 3) Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related Case-Law, If Any and/or Applicable? Is Termination Applicable In Case Of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? As outlined above, German statutory law offers various instruments to address the effect of force majeure events on contractual performance. Hence, in order to be relieved from contractual obligations, parties to an agreement may raise objections relating to the impossibility of performance or frustration of contract. Under German statutory law, a party is released from its obligation to perform where it is technically or legally impossible to fulfill the contractual obligation. Notably, under German law, the performance of monetary obligations can never be legally impossible. However, if a party is not required to perform its obligations, the obligation of the counterparty to provide its corresponding obligations (i.e. typically the
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LES Global News—Highlights Force Majeure Issues, Germany, continued from Page 8 payment of goods or services), is also regularly waived. Of particular relevance with regard to the Covid-19 virus is the provision regarding legal impossibility. Legal impossibility can be induced, for example, by official prohibitions. If it is, for example, legally impossible to stay in a certain hotel since an official ban is directly applicable, the obligation to perform shall cease to apply on both sides. Thus, the debtor’s performance obligations are suspended, whereby the creditor’s obligation to perform is also suspended. Other examples for a legal impossibility under this provision would be the impossibility to perform a contractual obligation due to an official ban on trade fairs and major events. Border closures for passenger traffic and flight bans may also lead to the legal impossibility of transportation or holidays abroad. Moreover, in many cases, such as when supply contracts are concerned, the performance of the contract will only be temporarily impossible due to Covid-19 effects since the spread of Covid-19 will normally only result in a delay of the performance. However, under certain conditions a temporary impossibility will be considered equal to an impossibility to perform in the above sense if the achievement of the business purpose is called into question and the other party cannot reasonably be expected to adhere to the contract until the obstacle to performance has ceased to exist. This means that a party temporarily does not have to perform while the impediment exists, e.g., in the event of a supply contract, if a disruption in supply chains caused by the Covid-19 outbreak and related shut-down measures occur. In cases where performance is technically still possible but can only be rendered at an expense or effort that is grossly disproportionate to the creditor's interest in performance, considering the subject matter of the obligation and the requirements of good faith, an invocation appears possible. This may, for instance, apply where a party was banned from performing its duties under a governmental ban, as in quarantine situations, and was therefore running too short on its goods. The case is different, however, if the plant closure or production restrictions are resulting from the failure to take protective measures. In view of the high hurdle for the acceptance of the assumed fundamental imbalance, the debtor should, in practice, only rarely be entitled to a right to refuse performance. Finally, the Covid-19 could also constitute a disruption of the basis of the business and thus justify a claim to adjust or terminate the contract. For this to happen, certain circumstances that were the basis and motivation for the parties to enter into an agreement must have significantly changed subsequently, to the effect that the parties would not have entered into the agreement at all or only at different terms if they had foreseen such changes to such circumstances. Also, due to the exceptional character of the provision, the facts of the case must not already be covered by statutory law, namely, the new passed Article 240 para. 2 Introductory Act to the BGB (“EGBGB”; for more details please see the answer to Question 6 below) or the provisions on impossibility to perform.
The chances of the debtor to successfully rely on the legal concept of frustration of contract due to Covid-19 hurdles are rather low since the respective disturbing event (i.e., Covid-19 effects) must fall within the sphere of the risk of one party. Also, due to the German legal principle pacta sunt servanda the provision may only be applied if holding one party to the contract would result in an enormous imbalance between the parties’ obligations. In a few exceptional cases, however, one party may be entitled to rely on frustration of contract since the negative effects of the Covid-19 pandemic on certain industries are so dramatic that many companies within these industries are no longer able to comply with their obligations under their agreements. This may be the case, for example, if a retailer is not able to use the rented premises in the agreed manner. 4) Can This Affect IP-Related Contracts? Distribution agreements that also stipulate certain (exclusive or non-exclusive) licensing rights may also be affected, if, for example, the supply of goods is impossible or delayed due to impediments caused by the Covid-19 outbreak. In this case, the above outlined principles apply and either a release of contractual obligations based on contractual law or on statutory law needs to be evaluated. In light of the Covid-19 crisis, therefore, special care should be taken when entering into new distribution contracts (for more details please see the answer to Question 6 below). Especially when concluding patent-related license agreements, it has to be taken into account that Germany passed a “Covid-19 crisis law” on March 27, 2020 (i.e., Act for protecting the Population in the Event of an Epidemic Situation of National Importance; Gesetz zum Schutz der Bevölkerung bei einer epidemischen Lage von nationaler Tragweite). This law, inter alia, amends the German Act on the Prevention and Control of Infectious Diseases in Humans (Gesetz zur Verhütung und Bekämpfung von Infektionskrankheiten beim Menschen; “IFSG”), by adding a new provision to the IfSG relating specifically to use orders according to Section 13 para. 1 of the German Patent Act. Notably, this law immediately entered into force. As regards to its content, the newly introduced law provides an increase of the competencies of the Federal Government in order to overcome an epidemic situation of national scope, which would be covered by the current Covid-19 pandemic. Thus, under the new law, the Federal Government could request from a company to tolerate the use of any of its inventions that cover relevant drugs, medical devices or technology in the public’s interest or the interest of protecting the state. However, the patent owner can claim an adequate compensation from the state in this situation. 5) Have Special Rules Been Introduced At a National/ Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies? In response to the outbreak of Covid-19, on March 25, 2020, Germany has reacted to the pandemic situation by the announcement of a bundle of several new laws in order
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LES Global News—Highlights Force Majeure Issues, Germany, continued from Page 9 to mitigate the consequences of the Covid-19 pandemic. These came into force on April 1, 2020. Regarding the German law on breach of contract, the new Article 240 EGBGB grants consumers and micro-entrepreneurs (i.e., companies with up to nine employees and an annual turnover or annual balance sheet total of up to € 2 million) a temporary right to refuse performance for particularly important continuous contractual obligations, if certain conditions are fulfilled. The new law should help to achieve a balance between the obligations of the parties regarding the various contractual consequences of the Covid-19 pandemic. Namely, the law stipulates, among others, a restriction on the possibility of termination of tenancy agreements, protections of the borrower in the case of consumer loan contracts and, with regards to Event Contract Law, a voucher regulation for event contracts. However, this “emergency legislation” is limited in terms of time, subject matter and personnel. Thus, it only aims to protect consumers and microenterprises. According to the new law, consumers shall be entitled to refuse performance under a consumer contract with continuing obligations (“Dauerschuldverhältnis”) for the provision of services of general interest (“allgemeine Daseinsvorsorge”) until June 30, 2020, provided that the respective contract was concluded prior to March 8, 2020 and that the performance would lead to the risk of not being able to pay the cost of living for himself or his dependents as a result of Covid-19 effects. Microenterprises shall be entitled to refuse performance under a contract with continuing obligations that was concluded prior to March 8, 2020 until June 30, 2020, if, due to Covid-19 effects, they are not able to render performance or their performance would put the economic basis of their business at risk. This right shall, however, not exist in connection with rental, lease, loan and employment contracts. However, special provisions have been created in some cases. A debtor shall also not be entitled to refuse performance if the exercise of the right to refuse performance would be unreasonable for the creditor. With regards to supply contracts, this is the case if the economic basis of the creditor’s commercial operations would be endangered. However, in this case, consumers and microenterprises shall be entitled to terminate the contract. 6) Does the Notion of Force Majeure Apply To Agreements Executed After the Beginning of the Covid-19 Emergency? If the parties concluded a contract after the Covid-19 outbreak (for Germany, the relevant date insofar would be around beginning of March 2020 at the latest), it will hardly be justifiable for the affected party to invoke a force majeure clause, since the existence of force majeure presupposes that the event was, at the time the contract was concluded, unforeseeable according to human insight and experience. Thus, after the spread of the Covid-19 virus, it
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will be difficult to argue that it was not foreseeable for the affected party, or that fundamental circumstances may change to the detriment of his contractual relationship due to Covid-19 impairments. Hence, parties which concluded contracts after the beginning of the Covid-19 emergency must have been aware of the fact that the risk situation would not change in the near future. Consequently, with regard to force majeure clauses, the Covid-19 crises will likely not be evaluated as an event these clauses intended to address. The same applies if one party intends to rely on a release from its obligation to perform due to frustration of contract as outlined above. As regards impossibility to perform in legal terms, the debtor may be entitled to invoke a release from a contractual obligation, even though at the time of the contract conclusion an official ban was already issued for the future due date. 7) Conclusions and Recommendations The current Covid-19 situation teaches us always to consider the inclusion of explicit provisions for the event of an epidemic or pandemic in future contracts in order to ensure the highest possible level of legal certainty for such events. Particularly, epidemics and pandemics should be expressly included in the list of events in a force majeure clause in order to avoid the current difficulties of interpreting those clauses. Lawyers should also be aware of the fact that a failure to insist on such clauses could be assumed as a consulting fault leading to a future case of liability. If a new contract is to be concluded while it is foreseeable for the parties that their performance may be impacted by the Covid-19 obstacles, measures to be taken in connection with the Covid-19 pandemic should be incorporated into the contract. Also, when considering the inclusion of provisions, implications of the law governing the contract should be taken into account. Parties with existing contracts that might be affected by the Covid-19 pandemic should carefully review their agreements regarding force majeure clauses, stipulating the prescribed form and time limitations for giving notice of a force majeure event or the conduction of mitigating measures. However, parties may also be obliged to notify the other party and take mitigation measures if this obligation is not expressly stated in the contract. Also, in the current situation, it is of great importance to monitor the announcement of any new governmental or regulator y measures or official orders in response to the outbreak of Covid-19, as this may change the options for a release from a performance obligation or receiving compensation. ■ Authors: Philipe Kutschke, Partner, Bardehle Pagenberg mbB, Munich, Germany, kutschke@bardehle.de Celia Clavien, Associate, Bardehle Pagenberg mbB, Munich, Germany, celia.clavien@bardehle.de
LES Global News—Highlights
Force Majeure Issues—Italy 1) The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? 2) In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis Of a Contractual Default Caused By the Covid-19 Emergency? he Italian Civil Code (CC) does not provide a definition of force majeure, but according to Italian case law, force majeure is an unpredictable objective impediment, outside the responsibility and control of the parties. It is within the scope of the Italian courts to decide, on a case-by-case basis, if the Covid-19 emergency will be considered as force majeure and justify non-performance. Nevertheless, there are many good reasons to claim that the Covid-19 emergency should have the characteristics to be considered a force majeure event. In such case it could (i) release a party temporarily, partially or totally from its duty to perform contractual obligations if such performance has become impossible or (ii) trigger the right for one party to terminate the contract if the continued performance of its contractual obligations has become excessively onerous (hardship). In a nutshell, if the performance of the contractual obligations has become impossible due to the Covid-19 emergency (for instance, because a governmental decree prohibiting a company to operate), the obligor cannot be considered liable for its non-performance (art. 1218 CC) and its duty to perform the contractual obligation ceases. If the impossibility should only be temporary, the obligor is not responsible for the delay in performance (art. 1256 CC). The decision whether the impossibility to perform shall be considered permanent or temporary must be assessed on a case-by-case basis, considering the nature and subject matter of the contract and the interests of the parties. In case of permanent impossibility to perform a contractual obligation, the contract is terminated by law, without the need of the parties to take any action and/or to request intervention of the court. However, having a Court deciding on it will become necessary if parties should disagree on whether or not the conditions for impossibility are met. In contracts with mutual rights and obligations, the party released from its obligations due to the impossibility to perform is not entitled to request a counter-performance and must return any good or payment received (art. 1463 CC). Generally, if an impossibility to perform an obligation was caused by an unpredictable event beyond the reasonable control of the defaulting party, the applicable Italian legal rules do not provide for monetary compensation. 3) Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related Case-Law, If Any and/or Applicable? Is Termination Applicable In Case Of Only Temporary Su-
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pervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? 4) Can This Affect IP-Related Contracts? The Italian Civil Code provides for various causes of termination by law when the balance of the contractual relationship is altered after its execution. This happens in case of non-performance of an obligation, supervening impossibility or supervening excessive onerousness, under particular requirements. That is, with regards to contracts with mutual obligations, under art. 1453 CC, a party, in addition to monetary compensation, is entitled to request the fulfillment of the non-performed obligation, or the termination of the agreement in case of contractual default not having minor importance (i.e. relevant in the balance of the contractual relationship, otherwise termination is explicitly excluded). Such termination however shall be declared by a constitutive judicial decision. Nevertheless, CC safeguards the position of the debtor whenever non-performance to an obligation is not attributable to the party, provided it can prove its extraneity under a high threshold of proof required by the prevailing case law, such as its being due to an exceptional cause, unpredictable at the moment of the execution of the agreement and not attributable to him. As mentioned above, under art. 1256 CC, impossibility caused by force majeure may produce the extinction of the obligation. However, in case of temporary impossibility, the debtor is excused for late performance until performance becomes possible and unless impossibility lasts until the debtor can no longer be deemed as obliged or the creditor no longer has an interest in its performance, since this makes the obligation finally extinguished. This may be the case whenever the agreement involves R&D activities and sets deadlines and milestones for such activities to be conducted or results to be found. According to national case law, this rule generally does not apply to pecuniary obligations, e.g., in case of non-payment of royalties. Finally, when impossibility is partial, the entire obligation is extinguished by performing that sole part of the obligation which still remains possible (art. 1258 CC). Automatic termination may apply to supervening total impossibility in bilateral contracts, without any need of judicial decision in the absence of a conflict among the parties. Should such an impossibility be partial, the party may only seek a corresponding reduction of its counter performance or the withdrawal from the contract if it lacks an appreciable interest in obtaining partial performance (articles 14631464 CC). For example, this may apply when considering Force Majeure Issues, Italy, continued on Page 12 June 2020
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LES Global News—Highlights Force Majeure Issues, Italy, continued from Page 11 partial non-performance of minimum purchases and minimum sales targets. However, an assessment on a case-bycase basis is needed. Indeed, the following may also be relevant to this respect. When force majeure significantly alters the balance of the contractual relationship, without causing its impossibility, it may produce a supervening excessive onerousness in the performance of one party’s obligations. In this case art. 1467 CC provides that, for contracts with continuous or periodic performance, or deferred performance, the party is entitled to terminate the agreement, provided that the supervening onerousness exceeds the normal risk of the contract. To this extent a constitutive judgment is needed. In such a case the effect of termination does not extend to obligations already performed, however the party against whom termination is demanded can avoid it by offering to equitably modify the conditions of the contract. It will be interesting to see whether the above will be considered sufficient to impact agreements that limit sales channels, e.g., online sales, considering that during the epidemic ecommerce is sometimes the only viable sales channel, at least in some areas and for a certain period. Finally, please note that the general principle of good faith always applies to interpretation, performance and termination of contracts. Also, under art. 1374 CC the parties of an agreement are obliged to its consequences deriving from laws, uses and fairness, even if not expressly mentioned therein. Therefore, in the above circumstances it is always advisable to first try to find a reasonable solution in order to perform the relevant obligation, considering the risk to be found liable for non-performance. On another note, the Covid-19 outbreak seems to be likely to be considered a proper reason to justify the nonuse of a trademark in calculating the five-years non-use term for revocation purposes, until there is no reasonable possibility to use it: however, this should be assessed on a case-by-case basis. 5) Have Special Rules Been Introduced At a National/ Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies? Pursuant to art. 91 of Decree Law 18/2020, in case of non-performance or delays caused by the respect of the restrictive measures adopted by the Italian government to face the coronavirus emergency, the Judge shall always evaluate this in order to eventually exclude liability of the debtor, also in relation to possible related forfeitures and penal clauses. In addition, Chambers of Commerce are allowed to issue statements of force majeure due to the Covid-19 emergency, in English language, declaring that the requesting business states to have occurred in a non-performance or delay due to force majeure (Circular no.0088612 of March 25,
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2020 of Minister of Economic Development); however their relevance as evidence could be debatable. 6) Does the Notion of Force Majeure Apply To Agreements Executed After the Beginning of the Covid-19 Emergency? Impossibility or excessive onerousness shall be supervening (i.e., after the undertaking of an obligation), therefore the above remedies can only be relevant for contracts entered into before the outbreak of Covid-19, while it will not apply to agreements (re)negotiated, renewed, amended or entered into after the declaration of emergency state by the Italian government (January 31, 2020). According to case law, force majeure does not apply whenever factum principis is reasonably and easily foreseeable according to common diligence at the time of undertaking the obligation (e.g. during emergency state or in view of possible second waves). It is still possible however to explicitly regulate the consequences of supervening events or obstacles to the performance of obligations through specific clauses, taking always into consideration that the subject of a contract must be possible, otherwise the contract is void, that leading also to a possible pre-contractual liability. 7) Conclusions and Recommendations In light of the above, the application of which will have to be assessed on a case-by-case basis, if a conflict arises, it is advisable to deeply assess the case in light of local practice and first try to seek an amicable solution in view of a rebalance of the contractual relationship, while also considering possible delays in judicial activities due to its suspension in recent times and possible uncertainties on the threshold of proof that will be required by the case law. Finally, it will be important to include in the agreements special clauses to regulate the consequences of possible supervening events or obstacles to the performance of obligations (including at a local level), including for example the inclusion of alternative obligations, as well as an obligation to mediation or to seek an amicable solution of possible conflicts before being entitled to act judicially or to renegotiate in good faith the relevant obligations. â– Authors: Leonardo Maria Seri, Of Counsel, BMLEX, Italy, l.seri@bmlex.it Cristiano Bacchini, Partner, BMLEX, Italy, c.bacchini@bmlex.it Mattia Dalla Costa, Partner, CBA, Italy, mattia.dallacosta@cbalex.com Michael Ladurner, Associate, CBA, Italy, michael.ladurner@cbalex.com
LES Global News—Highlights
Force Majeure Issues—Poland 1) The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? orce majeure is not defined in the Polish Civil Code. Under Polish law, responsibility for the performance of a contract is generally based on the principle of failure to exercise due diligence in the performance of the contract (principle of fault). The existence of force majeure excludes fault and its interpretation has an objective character. Jurisprudence generally recognizes that force majeure is an extraordinary, external event, the consequences of which cannot be prevented. In some cases, unpredictability is also indicated as a feature of force majeure. Examples include situations related to natural forces, e.g., floods, large fires, volcanic eruptions, earthquakes, and—of course—epidemics. Another group of situations includes social events such as riots, general strikes, military actions, wars, blockades of borders, etc. The parties to a contract can define force majeure in a different way. The occurrence of a circumstance which may qualify as force majeure does not necessarily mean that contractual liability based on the principle of fault is immediately discharged. It is necessary to determine whether a contractual party has exercised due diligence in the performance of the contract and whether it was actually force majeure alone that resulted in a failure to perform the contract. In my opinion, the Covid-19 epidemic can be classified as force majeure; however, it is always necessary to examine the specifics of a particular contract on a case-by-case basis. 2) In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis Of a Contractual Default Caused By the Covid-19 Emergency? If the non-performance of a contract is considered to be due to force majeure, the party that did not perform the contract will not be obliged to pay resulting damages. Only interest for delayed payment is available (see below). 3) Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related Case-Law, If Any and/or Applicable? Is Termination Applicable In Case Of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? Polish Civil Law does not provide for special entitlements relating to the expiry of an obligation or the possibility of its termination or withdrawal due to force majeure. Therefore, a force majeure clause in a contract may be a solution—as well as termination or withdrawal from a contract by mutual agreement. Under Polish civil law, if a contract does not have such a provision, in the event of force majeure there is no
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obligation to perform the contract. In other words, the obligations resulting from the contact are suspended during existence of the force majeure. Generally speaking, after the force majeure is over, the parties are obliged to continue the performance of the contract. In Polish civil law there are special rules concerning delays in the performance of monetary obligations caused by force majeure. If a debtor is late in meeting a monetary obligation (e.g., the payment of license fees), the creditor may claim interest for the time of the delay—even if no damage has been suffered, and even if the delay is due to circumstances for which the debtor is not responsible (e.g. force majeure). If there is no relevant contractual clause, the statutory interest rate should be applied (currently 6.5 percent per year). This rule is limited to obligations to pay a specified amount. Notwithstanding the above, it should be noted that the Polish Civil Code contains a rebus sic stantibus clause, according to which if, due to an extraordinary change of relations, the performance of a benefit would cause excessive difficulties or would threaten one of the parties with a severe loss, which the parties did not foresee when concluding the contract, the terms of the contract may be altered. In such a case, the court may, after considering the interests of the parties and in accordance with the principles of social coexistence, determine the manner of performance, the amount of the benefit or even decide to terminate the contract. When terminating the contract, the court may, if necessary, rule on the parties' settlement of accounts—again after considering the interests of the parties and in accordance with the principles of social coexistence (this is a broad notion which covers good business practices). Where the parties have not included a similar clause in their contract or have not excluded its application, this clause of the Polish Civil Code will permit the court to rule on the settling of mutual obligations in respect of the current Covid-19 situation. 4) Can This Affect IP-Related Contracts? The Covid-19 situation might affect IP contracts, particularly in cases where a party is obliged to use IP rights (trademarks, technologies, etc.) and pay royalties, but was unable to conduct business activity due to the epidemic, e.g., due to the ban on retail activity in shopping centers. Shopping centers were closed for two months up to 4 May and may be closed again if the situation deteriorates. 5) Have Special Rules Been Introduced At a National/ Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies? During the Covid-19 emergency many varied measures have been introduced, such as those concerning settlements between landlords of commercial space and tenants.
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LES Global News—Highlights Force Majeure Issues, Poland, continued from Page 13 However, the Polish legislator has not changed the concept of force majeure or modified related legal remedies. 6) Does the Notion of Force Majeure Apply To Agreements Executed After the Beginning of the Covid-19 Emergency? As a general rule, the notion of force majeure also applies to contracts concluded during the Covid-19 epidemic. However, in my opinion, the ongoing epidemic will not satisfy the conditions of force majeure with regard to contracts concluded during the epidemic. It cannot be regarded as extraordinary if the parties were fully aware of the epidemic and the epidemic constituted a factual background to the concluding of the contract.
7) Conclusions and Recommendations The notion of force majeure is not a common basis for excluding contractual liability under Polish law. Apart from special circumstances, it requires gathering evidence and referring it to the specificity of a given contract. Therefore, it is advisable for all parties to a contract to properly secure evidence of the non-performance of the contract or the lack of constraints in its execution. In any case, it is probable that force majeure clauses will now become more widely used when drawing up IP contracts. Author: Dr. Krystian Maciaszek, Counsel–DLA Piper, Warsaw, Poland, krystian.maciaszek@dlapiper.com
Force Majeure Issues—Russia 1) The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? ccording to Article 401 of the RCC, unless otherwise provided by law or the contract, a person shall not be liable for non-performance or undue performance of its obligations assumed in the course of its entrepreneurial activities, if the performance of these obligations is impossible due to an “irresistible force,” i.e. an extraordinary and unavoidable event in the given circumstances (also known in practice as the “force majeure”). Such circumstances do not include, in particular, a breach of obligations on the side of the debtor’s counterparties, the absence of goods on the market necessary for execution (e.g. supply), or the lack of necessary monetary funds.1 The Supreme Court of the Russian Federation (the “Supreme Court”) has provided further interpretation and guidance to the concept of “force majeure” by clarifying that by virtue of Article 401 (3) of the Russian Civil Code, in order to recognize an event as a force majeure circumstance, it must be extraordinary, inevitable under the given conditions and external in relation to the debtor's activity.2 The Supreme Court has also noted that the emergency requirement implies the exclusivity of the circumstance under consideration, the occurrence of which is not usual under specific conditions. Unless otherwise provided by law, a circumstance shall be deemed inevitable if any participant in the civil commerce carrying out activities similar to the debtor could not avoid the onset of this circumstance or its consequences, i.e. one of the characteristics of force majeure circumstances (along with emergency and inevitability) is its
relative nature. Force majeure circumstances cannot be recognized, the occurrence of which depended on the will or actions of the party to the obligation, for example, the debtor lacking the necessary funds, breach of obligations by its counterparties, illegal actions of its representatives. From the given explanations, it follows that recognition of the spread of Covid-19 as force majeure cannot be universal for all categories of debtors, regardless of the type of their activity, the conditions for its implementation, including the region in which the business operates, due to which the existence of force majeure event should be established taking into account the circumstances of a particular case (including the time period for fulfillment of the obligation, the nature of the unfulfilled obligation, reasonableness and good faith the debtor’s actions, etc.). In relation to the rules of Article 401 of the Civil Code of the Russian Federation, the circumstances caused by the threat of the spread of Covid-19, as well as measures taken by state authorities and local self-government to limit its distribution, in particular, the establishment of mandatory rules of conduct when introducing a high alert or emergency, a ban on the movement of vehicles, restriction of the movement of individuals, suspension of enterprises and institutions, cancellation and rescheduling of mass events, the introduction of a regime of self-isolation of citizens, etc., may be recognized as force majeure, if it is established that they comply with the above criteria for such circumstances and the nexus between these circumstances and the default.3 Therefore, to summarize and to be excused for the nonperformance of obligation under a contract due to Covid-19,
1. Article 401 (3) of the Russian Civil Code. 2. Section 8 of the Resolution of the Plenum of the Supreme Court of March 24, 2016 No. 7 “On the Application by Courts of Certain Provisions of the Civil Code of the Russian Federation on Liability for Breach of Obligations.”
3. See Question and Comment 7 of the “Review of selected issues of judicial practice related to the application of legislation and measures to counteract the spread of the new coronavirus infection (Covid-19) No. 1 in the Russian Federation” (Approved by the Presidium of the Supreme Court of the Russian Federation on 21 April 2020).
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Force Majeure Issues, Russia, continued on Page 15
LES Global News—Highlights Force Majeure Issues, Russia, continued from Page 14 a party needs to prove that (a) the circumstances in question are extraordinary and beyond the control of the parties, and (b) that the non-performance of the obligation is a direct result of these circumstances. Furthermore, the official Decree No. 20-UM of the Mayor of Moscow dated 14 March 2020 “On Introduction of the High Alert Regime” (as amended) classifies the spread of Covid-19 as a force majeure event. The Chamber of Commerce and Industry of the Russian Federation has also declared that the measures taken against Covid-19 (not the pandemic itself) may be deemed as such circumstance. Therefore, the Russian Government considers Covid-19 as force majeure in general. In addition, Russian law generally permits parties to designate in the contract a list of specific events or circumstances, the occurrence of which could be regarded as grounds for releasing each party from liability for breach of the contract (or otherwise change the grounds for liability of the parties). In other words, parties are entitled to negotiate and agree on various force majeure issues and events. In the light of the above, Covid-19 and all related consequences, depending on certain circumstances and mentioned criteria, can fall under the concept of “force majeure” event under the Russian law. Otherwise, epidemics and prohibitive measures of certain state bodies and agencies, as well as other circumstances which are beyond the control of parties, can serve as grounds for releasing the party from liability for nonperformance of its obligations by virtue of contract (e.g. a license agreement). Of course, when proving the force majeure event, especially in cross-border deals, a relevant certificate of force majeure, including the one issued by the Russian Chamber of Commerce and Industry (the “RUCCI Certificate”), will highly be recommended as documentary evidence. However, only the court may decide whether the party in debt shall be released from liability due to force majeure and during the period of force majeure. Indeed, the RUCCI Certificate will be considered by the court among other pieces of evidence, unless the contract specifically mention that the obtaining of such document will release the party from liability.4 2) In Such a Case, Is It Possible To Obtain Monetary Compensation On the Basis Of a Contractual Default Caused By the Covid-19 Emergency? If the contractual default is caused by Covid-19 that has been recognized as a force majeure event, it will not be possible to obtain monetary compensation (e.g. damages) from the party in default. The supplier (i.e. licensor) will be proving that non-performance or undue performance of its obligations was actually caused by Covid-19 situation, and that there is a nexus between non-performance/undue perfor4. See Regulation on Procedure for Evidencing by Chamber of Commerce and Industry of the Russian Federation of Force Majeure Circumstances (Approved by Degree of Board of RU CCI No. 173-14 dated 23 December 2015) and the Official Letter of RU CCI No. 04v/0088 dated 17 April 2020).
mance and the restrictions introduced by the Russian Government, although the pandemic shall not be a universal criteria for all types of debtors and force majeure events will have to be established for each particular case at issue.5 In its turn, the buyer (i.e. licensee) will be proving that the lack of funds is caused by the consequences of the epidemic situation, and the court may release it from liability. Therefore, if the Covid-19—being an event of “irresistible force”—constitutes a temporary impediment for the performance of the party’s obligation, the performance will be suspended (without any liability or breach) only for the period of such event, and will be revived immediately upon the termination of such event. As a result, under such circumstances, the contractual default may be cured and accepted, especially if the contract has a special reference to such a pandemic or epidemic situation, or if the court finds Covid-19 as force majeure in the course of court proceedings. Of course, the party in default must act in good faith. At the same time, the non-defaulting party has the right to repudiate from the contract if, as a result of the delay, it is no longer interested in receiving the benefit under the contract, provided that the defaulting party shall not be liable to the non-defaulting party for any losses caused by the delay in performing the obligations due to the occurrence of the force majeure circumstances.6 3) Which Other Remedies Are Provided By the Law and Under Which Conditions, Also In Light Of Related Case-Law, If Any and/or Applicable? Is Termination Applicable In Case Of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable In Case the Obligation Has Become Excessively Onerous? Again, the Covid-19—being an event of “irresistible force”—shall constitute a temporary impediment for the performance of the party’s obligation, and the performance of the party in default will be suspended (without any liability or breach) only for the period of such event, after which will be revived immediately upon the termination of such event. Therefore, a party must accept the performance made by the other party immediately after the end of Covid-19. At the same time, under the Russian civil law, contractual obligations of parties may be terminated due to impossibility of their performance (Article 416 of the Russian Civil Code),
Force Majeure Issues, Russia, continued on Page 16 5. See Question and Comment 7 of the “Review of selected issues of judicial practice related to the application of legislation and measures to counteract the spread of the new coronavirus infection (Covid-19) No. 1 in the Russian Federation” (Approved by the Presidium of the Supreme Court of the Russian Federation on 21 April 2020) and Section 8 Resolution of the Plenum of the Supreme Court of March 24, 2016 No. 7 “On the Application by Courts of Certain Provisions of the Civil Code of the Russian Federation on Liability for Breach of Obligations.” 6. Section 9 of the Resolution of the Plenum of the Supreme Court of March 24, 2016 No. 7 “On the Application by Courts of Certain Provisions of the Civil Code of the Russian Federation on Liability for Breach of Obligations.”
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LES Global News—Highlights Force Majeure Issues, Russia, continued from Page 15 or on the basis of the act of state agency (Article 417 of the Russian Civil Code). More specifically, termination of the relevant contractual obligations under Article 416 of the Russian Civil Code may take place if, in connection with certain circumstances arising after execution of the contract, there is an actual, objective and permanent impossibility of performance of those obligations.7 Termination of obligations by virtue of Article 417 of the Russian Civil Code is possible if state or local authorities adopt acts or measures that make it impossible to perform obligations under a contract. Of course, these circumstances must be proved documentarily, not just declared. Therefore, under these specific rules of law and in a particular situation supported by the documentary evidence of default, the party can repudiate from the contract because of Covid-19. But, it shall not be a simple change of business decision of the party to stop the contract during the pandemic situation, as such circumstance will not be cured through Articles 416 and 417 of the Russian Civil Code. Also, minimum sales can be essential for the parties in certain instances when they enter into the deal. Due to Covid-19—that may also be regarded as “material change of circumstances”—the agreed minimum sales can hardly be reached, or not reached at all. In this case, parties may rely on the provisions of Article 451 of the Russian Civil Code. According to Article 451(1) of the Russian Civil Code, a material change of circumstances upon which the parties have relied when executing the contract is a ground for amending or terminating the relevant contract. A change of circumstances is regarded as material when the parties’ circumstances have changed in such a way that the parties would not have entered into the contract at all, or would have entered into it on significantly different terms, had they been able to reasonably foresee the change at issue. Unless otherwise provided by the contract and does not follow from its essence, such circumstances that the parties could not have foreseen when concluding contracts may serve as grounds for amending and terminating the contracts on the basis of Article 451 of the Russian Civil Code, if the contract had not been concluded under these circumstances or would have been concluded under significantly different conditions. Moreover, under Article 451 (4) of the Russian Civil Code, a change in the contract due to a material change of circumstances at the request of one of the parties is possible only in exceptional cases when the termination of the contract is contrary to public interests or will entail damages to the parties significantly exceeding the costs required to perform the contract on the conditions as amended by the court. When satisfying a claim to amend the terms of the contract, courts must indicate what public interests contra7. Contract and Liability Law (General Part): Article-by-Article Commentary to Articles 307-453 of the Russian Civil Code//edited by A.G. Karapetov, “M-Logos,” 2017.
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dict the termination of the contract or justify the significant damages to the parties from the termination of the contract.8 Therefore, Russian law and judicial practice makes it generally possible that measures taken in connection with the spread of Covid-19 could make the fulfilment of contractual obligations so burdensome for the parties that they will be recognized by the court as “material change of circumstances.” This means that parties will be able, for example, to rely on these legal grounds for the purpose of modifying, for example, the relevant contract in accordance with Article 451 of the Russian Civil Code. 4) Can This Affect IP-Related Contracts? Yes, of course, the Covid-19 situation can affect the performance under the IP related contract. For example, licensees can be suspended from payment of license fees or royalties during the epidemic period. Complete release of their liability to pay license fees or royalties under the concluded contract will not be possible. Indeed, it is necessary to review and rely on the concrete royalty basis, payment period and method of calculation of the same to see whether the period of Covid-19 really has any negative impact on the deal. In particular, the annual fixed royalties to be paid at the end of the year may still be paid at the end of the year, if pandemic situation is terminated in summer, for example, while monthly payments dependent on net sales can be just “freezed” during the Covid-19 and revived afterwards. Other contract fees can be amended pursuant to the provisions of Article 451 of the Russian Civil Code due to the material change of circumstances, as noted above. 5) Have Special Rules Been Introduced At a National/ Local Level During the Covid-19 Emergency With Regard To Covid-19 and Force Majeure Notion/Remedies? No special or emergency rules on the IP or licensing issues have been introduced by the Russian Government at the local level because of Covid-19. However, among other business related and supportive measures, Russian Government decided to support tenants and lessees by providing them with certain “rent holidays.” This will be relevant to licensees and franchisees anyway, since they are parties to leasing business as well. More specifically, according to the recently issued Resolution of the Russian Government No. 439 dated April 3, 2020 “On requirements to conditions and periods of postponement of rent payments under real estate leases” (the Resolution) a tenant is now entitled to postpone rent pay-
Force Majeure Issues, Russia, continued on Page 17 8. See Question and Comment 8 of the “Review of selected issues of judicial practice related to the application of legislation and measures to counteract the spread of the new coronavirus infection (Covid-19) No. 1 in the Russian Federation” (Approved by the Presidium of the Supreme Court of the Russian Federation on 21 April 2020).
LES Global News—Highlights Force Majeure Issues, Russia, continued from Page 16 ments in case the following conditions are met: (a) lease is made in relation to any real estate, except for residential one; (b) lease is made before the launch by the relevant Russian region of the regime of high-alert or extreme situation (the Regime); and (c) tenant’s activity falls under the list of the most injured industries due to the spread of Covid-19. Rent payments may be postponed from the date of introduction of the Regime by the respective Russian region until 1 October 2020. Upon termination of the Regime and until 1 October 2020 the tenant may postpone 50 percent of corresponding rent payments. The parties may decrease the amount of rent which should be postponed under the additional (amendment) agreement. Operating expenses and other utility payments may not be postponed even if they are included in the rent (and not provided separately), except when the landlord is released from such payments under the regulations of the respective Russian region. The tenant who meets the criteria, as mentioned above, shall approach the landlord and ask it to sign the lease amendment agreement. The amendment agreement should be concluded within 30 days. In case of a long-term lease the amendment agreement must also be registered. Finally, landlords are prohibited to ask for any penalties, interests or any other payments, including those already provided for in the lease agreements. On a separate note, on April 6, 2020 a 6-month moratorium on initiation of bankruptcy proceedings9 (the Moratorium) has been entered into effect by the Russian Government. This Moratorium will play in favor of the “protected debtors" and for those with whom they are doing business. The Moratorium imposes certain restrictions on transactions made by the protected debtors. It also establishes certain measures that may help them to restore their financial position affected by the consequences of the spread of the Covid-19.
6) Does the Notion of Force Majeure Apply To Agreements Executed After the Beginning of the Covid-19 Emergency? No, the notion of force majeure shall be applied to contracts and agreements executed prior to the beginning of Covid-19. As noted above, to be released from liability due to Covid-19 for the non-performance or undue performance of obligation under a contract, a party needs to prove that (a) the circumstances in question are extraordinary and beyond the control of the parties, and (b) that the non-performance of the obligation is a direct result of these circumstances. Apparently, these criteria will be most relevant for contracts (e.g. license agreements) preceding the epidemic situation. 7) Conclusions and Recommendations From the standpoint of practical recommendations for the parties to contract affected by Covid-19, the following legal actions can be recommended at this point: (1) Reviewing the exact contractual terms and conditions, including force majeure clauses, and doing the appropriate legal risk-factor analysis; (2) Confirming that Covid-19 is the force majeure event and securing a legal opinion, as well as additional pieces of evidence (e.g. obtaining RUCCI Certificate); (3) Evaluating a list of operable and effective measures that can be made and discussed with the other side in connection with the pandemic situation; (4) Notifying the other side and establishing communications on the issue in good faith; (5) Considering the amendment or termination (as applicable) of the underlying contract; (6) Proceeding to execution of amendment or termination and further registration formalities (if needed). Otherwise, the parties will have to assess the possibility of going to the court… Author: Sergey Medvedev, PhD, LLM, Partner, Gorodissky & Partners, www.gorodissky.com
9. Decree No. 428 of the Russian Government dated 3 April 2020 (“Decree No. 428”) and the new Article 9.1 of Federal Law No. 127-FZ dated 26 October 2002 “On Insolvency (Bankruptcy)” (the “Insolvency Law”) enacted by Federal Law No. 98-FZ dated 1 April 2020.
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Force Majeure Issues—France 1. The Notion of Force Majeure and Monetary Compensation: How Force Majeure Is Intended By National Laws? Can the Covid-19 Emergency Be Included In Such a Notion? orce majeure is set out under Article 1218 of the French Civil Code, stating that “there is force majeure where an event beyond the control of the debtor, which could not reasonably have been foreseen at the time of the conclusion of the contract and whose effects could not be avoided by appropriate measures, prevents performance of his obligation by the debtor.” Several conditions must be met: the event has to be (i) irresistible, (ii) unpredictable, (iii) not attributable to the debtor, and (iv) makes performance of the obligation impossible. Force majeure relieves the debtor of his liability if it makes it impossible to perform the contract. If the impediment is only temporary, performance of the obligation is suspended until the extinction of force majeure. The parties may adjust, limit or even exclude force majeure from their relationship as it is not a matter of public policy. Force majeure also does not excuse a party who has agreed to take charge of it or who has previously been given a notice to perform. Consequently courts are bound by the clauses stipulated in contracts and cannot recognise an event as a case of force majeure if such event has been expressly excluded by the parties. If it satisfies the above conditions and has not been contracted out by the parties, the Covid-19 pandemic could be seen as a case of force majeure subject to certain reservations. Courts must afterwards assess whether the event fulfils the above-mentioned conditions. The assessment of force majeure relies therefore on case-by-case approach. In addition, the laws introducing a “state of health emergency” in France and the consequent restrictive measures enforced, such as containment, could also be considered as force majeure under certain circumstances and on a case-by-case basis. 2. In Such a Case, Is It Possible to Obtain Monetary Compensation on the Basis of a Contractual Default Caused By the Covid-19 Emergency? If force majeure is established, the parties shall be released from their obligations without financial compensation, meaning a party cannot seek damages for non-performance of an obligation or termination. It obviously does not exempt a debtor from paying the sums due to the contracting party as a result of the past performance of the agreement.
F
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3. Which Other Remedies Are Provided By the Law and Under Which Conditions, Also in Light of Related Case-Law, If Any and/or Applicable? Is Termination Applicable in Case of Only Temporary Supervening Impossibility of an Obligation? Is It Applicable in Case the Obligation Has Become Excessively Onerous? The law provides for termination in case of force majeure only if the impossibility of executing the contract is definitive. Performance is suspended as long as the cause of force majeure has not disappeared, unless the resulting delay justifies the termination. As stated above, parties can derogate from this principle and agree on the possibility to terminate the agreement if the event lasts for more than a certain period of time or even on an immediate termination even if the impediment is temporary. The event of an unforeseeable change of circumstances rendering the performance of the contract excessively onerous is covered by another regime, known as “imprévision,” which is similar to hardship clauses. Article 1195 of the French Civil Code allows one party to ask for the renegotiation of the contract in such an event, either with the other contracting party or, in case of a refusal or a failure to negotiate within a reasonable time, before a court, which may revise or terminate the contract. Here also, parties may exclude this principle from their contractual relationship. 4. Can This Affect IP-Related Contracts? One of the most visible consequences of Covid-19 on commercial contracts has been the inability to perform certain agreed services due to supply disruptions, inability to travel, or lack of cash flow. These have affected many R&D contracts, forcing the parties to revise research deadlines and objectives. Owners or licensees of industrial property rights may also have been prevented from taking action against potential infringers, whereas licensing agreements frequently impose obligations in this respect on the owner or the licensee. In the absence of agreement between the parties, as indicated in the answer to the previous question, depending on the circumstances, the defaulting party may either invoke force majeure to be excused for non-performance or unforeseen circumstances (imprévision) to renegotiate the contract. Lastly, as will be seen in the following point, the French Government has reserved the right to take specific measures if circumstances so require. Force Majeure Issues, France, continued on Page 19
LES Global News—Highlights Force Majeure Issues, France, continued from Page 18
5. Have Special Rules Been Introduced at a National/ Local Level During the Covid-19 Emergency With Regard to Covid-19 and Force Majeure Notion/Remedies? Requisition, mandatory licences, control of prices- Emergency law No. 2020-290 of 23 March 2020 to deal with the Covid-19 epidemic declared the state of health emergency for a period of two months. It was then extended until 10 July 2020. As per Article L.3131-15 of the code of public health, when the state of health emergency has been declared, when necessary for the fight against the sanitary disaster, the Prime Minister may, among others, order the requisition of any goods and services, take temporary measures to control the prices of certain products, take all measures to make available to patients appropriate medicines. Under these provisions, the government may seize intellectual property assets, force owners to grant licenses, control the price of licenses. In case of public health interest (article L.613-16 of the code of intellectual property), mandatory licenses may also be granted on patents covering medicinal products and medical devices. Conditions for obtaining such mandatory license are quite strict (article L.613-16 of the code of intellectual property). To our knowledge, none of the above have been used so far in relation to the Covid-19 pandemic. Time limits- Article 2 of Order No. 2020-306 of 25 March 2020 on the extension of time limits during the period of public health emergencies and the adaptation of procedures during the same period provides that most time limits (with some exceptions) in relation to administrative and legal proceedings are suspended until one month after the end of the state of health emergency: “Any act, appeal, legal action, formality, entry, declaration, notification or publication prescribed by law or regulation under penalty of nullity, sanction, lapse, foreclosure, prescription, unenforceability, inadmissibility, lapse, automatic withdrawal, application of a special regime, nullity or forfeiture of any right whatsoever and which should have been accomplished during the period mentioned in Article 1 [between 12 March 2020 and the expiry of a period of one month from the date of cessation of the state of public health emergency] after shall be deemed to have been done in time if it has been done within a period which may not exceed, as from the end of that period, the time legally prescribed for taking action, within a limit of two months.
The same shall apply to any payment prescribed by law or regulation for the acquisition or retention of a right.” 6. Does the Notion of Force Majeure Apply to Agreements Executed After the Beginning of the Covid-19 Emergency? Covid-19 and existing emergency laws would unlikely qualify as force majeure events with respect to agreements executed afterwards. Indeed, these events would be considered as no longer unpredictable. Only in the event the situation would change, and such change would satisfy the conditions of force majeure (including unpredictability), would a defaulting party have arguments to raise a force majeure argument. Providing in an agreement executed after the beginning of the Covid-19 emergency that said existing emergency is a force majeure event would likely be considered as enforceable. 7. Conclusions and Recommendations • To review the force majeure provisions of agreements in force in order to determine whether the current situation prevents the execution of some contractual obligations, to analyze whether said current situation may qualify as a force majeure event, and, if yes, to check potential obligations to notify said event to the other party(ies), deadlines for such notification, obligations to mitigate the consequences of the force majeure, deadlines for potential early termination of the agreement; • One may also contemplate renegotiating the agreement on the ground of either force majeure or unforeseen circumstances (imprévision); • Current case law admits that parties may agree on their own definition of force majeure. For future agreements, one shall contemplate adding epidemic and pandemic to a list of events that the parties would agree on in advance to treat as force majeure events; • One shall also adapt contracts currently being negotiated to the current emergency situation, e.g., provide simple and practical solutions when the agreement needs to be executed rapidly. Authors: Jean-Frédéric Gaultier, Partner, TALIENS, jeanfrederic.gaultier@taliens.com Emmanuel Gougé, Partner, Pinsent Masons LLP, emmanuel.gouge@pinsentmasons.com
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LESI Initiatives And Tools By Dana Robert Colarulli, Executive Director, LESI
I
n recent months, LESI staff highlighted a number of initiatives and new tools for use by LES Societies as they seek to engage their membership, plan events and recruit new members. Three of these resources are summarized below.
Ms. Sian Godwin Head of Search, Evaluation & Licensing Cytiva (formerly GE Life Sciences) Boston, MA
1. LESI Business Action-Group Initiative—
Mr. Don Drinkwater Licensing Director Bose Corporation Boston, MA
FOCUS: Attracting corporate members to LES This initiative is aimed at encouraging more corporate members to join LES and reap the benefits of membership—both executives working in large companies and managers of small- and medium-sized enterprises (SMEs). As businesses globally struggle during the next few years in the shadow of the Covid-19 pandemic, we believe this effort is particularly important as maximizing the value of a company’s IP is even more critical. Increased participation from business will benefit all of us—first, businesses will increase their awareness of the strategic and value-creating importance of IP, and second, LES members will gain critical insight from their participation via programming and offerings that better respond to business needs. LESI can help local society efforts in a few ways: • Engage with the LESI Business Action Group: We encourage all LES Societies to nominate an individual from your society to engage with LESI’s great Business Action Group-- namely Andre Gorius (France), Sung-Pil Hwang (South Korea), Scott Johnstone (UK) and Natalie Raffoul (USA & Canada). Our Business Action Group can help your society target SMEs in your country or region to discuss the benefits of LES membership and build this critical membership group. Please send your Society contact to Esha at admin@lesi.org. • Appoint Industry Advisors to LES Boards: At its Board Meeting in Padua, Italy in February 2020, the LESI Board agreed to appoint industry advisers to advise on initiatives focused on serving LES industry members. These appointments would show commitment at the highest level to supporting the business community and would provide real-time feedback on related LESI initiatives. In an e-mail, LESI also encouraged local societies to consider doing the same. On May 14th, the Board appointed four individuals. It is expected that these advisors would meet at least quarterly and advise the board: 20
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Mr. Jin Yang (”Victor”) Vice President/Group General Counsel TCL Technology Group Corporation Beijing, China Ms. Sarita Venkat Head of Global IP Transactions Apple Inc. Cupertino, California
Bios available on the LESI website here: https://tinyurl.
com/y8sm8ce4
2. LESI Speakers Database— FOCUS: Identify high-quality, proven speakers for LES programs This resource was built by the LESI professional staff to aide societies putting together meetings and looking for engaging, LES-proven international speakers on licensing issues to include in their local programs. During the past few months, we cataloged past meeting agendas on the LESI website so that they can be accessed in one place and built a database of past speakers at various LESI and LES meetings. And, because meeting planners often need a local resource to identify the right speakers, we have started to network key contacts in LES Societies that could provide recommendations and references on specific individuals. There are several parts of this resource: • Database of LES Speakers: The LESI office has pulled together a single database of speakers (more than 600 entries) from recent LESI Annual Meetings, YMC Meetings, Asia-Pacific Meetings and Pan-European Meetings. The database includes speaker names, topics, addresses and bios (when available). Contact the LESI office to access this resource at admin@lesi.org. • Archive of Past LES/LESI Meeting Agendas: We have begun archiving agendas for past LES meetings in LESI Initiatives, continued on Page 21
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Toast to World IP Day
W
orld IP Day has been celebrated in April around the world since 1999. LESI and the Societies have regularly commemorated this day during these years. This year was no exception—except it was celebrated virtually. LESI organized a world-wide Zoom conference, with a guest speaker on the theme “Innovate for a Green Future.” There were 177 people attending, literally from every continent. Fiona Nicolson, President of LESI, and Dana Robert Colarulli, LESI Executive Director, gave the opening remarks. WIPO was invited and represented by Thomas Bombelles, Head of NGO and Industry Relations. He commented on WIPO’s commitment to a green future and WIPO’s close relationship with LESI. The keynote speaker was Alice Min Soo Chun, CEO of Solight-Design based in New York City. She was the 2018 USPTO Patents for Humanity Award winner. The patented product was a portable solar light that has been distributed to more than 200,000 people world-wide, including in refugee camps and disaster sites. The products are all solar-based light designs. She has received utility and design patents for her work and continues patenting alongside her company’s humanitarian mission. Alice’s inspiring story showed how she designed several new solar-based products that are particularly applicable to under-developed and poor people in refugee camps. The products are aimed at eliminating burning kerosene for light in these regions, thus saving the atmosphere from pollution and improving the health of the people. Her products are shown on her website, solight-design.com. The conference concluded with a toast offered by Fiona to World IP Day. Obviously, with members in different time zones, some toasted with coffee and others with wine and spirits. The event was a successful celebration of World IP Day,
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one place on the LESI website for meeting planners to review and perhaps get inspiration. This area can also serve as an archive to which your Society can point its members and the public. Please send us your old meeting agendas and we will include them on this site (via a link to where they are already maintained on your society website or by e-mail in PDF or Word). •LES Meeting Planners Network: We are asking that each society identify a contact person through which other LES members can get information on past speakers (e.g., Meetings Committee Chair or Secretary) so that we can build a list of such contact persons to circulate to other meeting planners. For more information, see the Speakers Database on the LESI website at https://www.lesi.org/events/speakers-database.
even with physical distancing limitations in place. LESI hopes to continue work with WIPO during the next few months to host online seminars in issues of interest. On May 5, LESI hosted a 90-minute webinar providing an update on WIPO operations and an overview of WIPO patent and inventor resources available to the public. To view a recording of the session and see the agenda visit the WIPO-LESI Joint Seminar on the LESI website at https://www.lesi.org/events/lesi-wipojoint-webinar-session. ■
3. LESI Business Briefings— FOCUS: Providing high-level guidance on IP & licensing issues On May 8th, LESI released three “Business Briefings” covering the following topics: IP Management, IP Licensing and IP Valuation. These briefings offer practical advice to businesses looking to monetize their intellectual property and have been made available to all LES Societies so that they can a) share them directly with members or b) build recruiting events around them. All three briefings are available to LES members for free. Non-members may access the IP Management Briefing for free and purchase the other two for a small sum. For more information, see the LESI Business Briefings page on the LESI website, https://www.lesi.org/publications/business-briefings or the press release, https://tinyurl. com/yayq5gqc. ■ June 2020
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A 10th Anniversary With Energy, Great Content And Lively Networking For Young Members Of LES A Look Back At The Past Year Of YMC Events Dear LES members, both young and experienced! The YMC Committee has celebrated its 10th Anniversary this year, and it has truly been an amazing year for the young members of LES worldwide! Here are a few stats that speak for themselves: • 300+ attendees at three regional YMC events held in Montreal, London and Seoul; • 93 percent satisfaction rate on the quality of the events; • 96 percent of attendees said they would recommend the YMC regional events to fellow young IP professionals, LES members or not; • 90 percent of LES members said these events played a part in the renewal of their membership to LES. But all of this success comes because of the help of many YMC volunteers and leaders around the globe, who have worked very hard in making the YMC Committee a symbol of energy, dedication and engagement within the big LESI family! You will find below a short summary of each regional event. It has been a pleasure to serve as Chair of the YMC Committee for such a pivotal year. Now, rest assured that nothing will stop the YMC Committee from innovating, not even a global pandemic! Stay tuned for our ideas on how to make the most of next year, even given these turbulent times, under the leadership of Georgina Busku, the YMC Chair for 2020-2021. Stay safe everyone! Vincent Bergeron, 2019-2020 Chair of the YMC Committee
Chair, Vincent Bergeron, and an organizing committee of LES members from Canada and the United States. The event included panels on Data Licensing for AI and ML, Medtech Industry: Revolutionizing the Health Ecosystem—a Pan-American Perspective, and Licensing in the Entertainment Industry. The event's content ended on a Vincent Bergeron, lighter note with a Licensing Workshop Chair of the YMC on Cannabis Related IP. Committee. Attendees also had several opportunities to network in more relaxed settings, including an informal get-together the night before the event, an in-house counsel breakfast (exclusive for in-house counsel), François Painchaud, Past-President lunch on a rooftop terrace, of LESI, and Fiona Nicolson, dinner on an evening boat Past-President of LESI. cruise, and a casual get-together in a trendy nightclub near the old port in Montreal.
Roundtables during the Licensing Workshop.
The YMC attendees at the LESI Annual Meeting in Yokohama.
Montreal The 5th Pan-American LES YMC Event, held in Montreal, Quebec on July 12, 2019, was a great success, displaying both strong content and networking opportunities. The event was at full capacity with over 100 young licensing professionals from eight different countries attending, 33 percent of which were in-house counsel. The President of LES USA & Canada, Bob Held, and the President of LES International, Fiona Nicolson, both attended the event, as well as several Board Members of LES USA & Canada. The event was hosted by YMC 22
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Circus show on the boat cruise.
London On the 13th of September, 2019, over 120 young and enthusiastic IP and licensing professionals descended on London for the 7th Pan European LES YMC Congress, again at full capacity. The event was co-chaired by Richard Pinckney and Cora Griffin. Those attending represented 23 different countries and 22 different LES societies from as far afield as Australia, Japan and China as well, as Korea, Malaysia, the U.S.A., Canada, and everywhere in between. What resulted was a diverse, thought-provoking, engaging and fun congress covering IP entrepreneurship, AI and robotics, and the interaction of IP and competition law, as well as dynamic sessions on how to lead a business and personal development through change. There were also unique in-house perspectives on licensing programs and a look inside the YMC, continued on Page 23
LES Global News—Highlights
Auditorium at the Unilever House.
Attendees enjoy networking.
YMC, continued from Page 22 mind of in-house counsels to see what is really expected of external counsel. The coffee breaks and lunch intervals provided an opportunity for attendees to meet each other and to compare experiences from around the world, as well as engaging directly with the speakers. As always, the event was indebted to the calibre of speakers and their depth of relevant experience and insight. Attendees heard from the head of licensing operations at a large telecommunications company and the Chief Executive Officers of a leading biotech company and power transmission company, as well the next generation stars in the field of AI and robotics, IP and competition law, and patent litigation in Europe. These events are distinguished from many conferences in that there is a strong focus on enjoyment, participant interaction and engagement. Thus, one of the highlights of the day was the closing dinner and party which included a live band. It is a mark of not only the fun had by the attendees, but also the personality of the attendees, that everyone danced. Seoul The 2nd Asia-Pacific LESI YMC conference successfully took place in Seoul, Korea, on November 28, 2019, with a record on attendance for this second edition. The event was cochaired by Sung-pil Hwang and David Swain. It was an impressive event with over 100 licensing professionals from around the world. LESI YMC members who par-
Group including Audrey Yap, LESI President, KJ Kim, President of LES Korea, Sung-pil Hwang, Co-chair of the organizing committee, and other important attendees.
Live music at the evening venue.
ticipated in the event discussed four interesting topics. The first theme was Beauty & Healthcare, led by Susanna Ruder of Hepp Wenger Ryffel AG. Healthcare is a recent issue that is in line with the 4th InSung-pil Hwang and David Swain, co- dustrial Revolution. chairs of the organizing committee, and The traditional bio Georgina Busku, Incoming Chair of YMC. business and digitalization treatment was discussed. The second topic, IoT & Telecommunications, was hosted by Georgina Busku of AGIP. This is an important topic as 5G is commercialized and various leading-edge businesses (e.g., driverless cars) are becoming a reality. Brion Raffoul's Natalie Raffoul led discussions on the use of Big Data & AI. Finally, Sam Wiley and other experts gave various opinions on the topic of Entertainment & Copyright for properties that are being actively licensed. Christopher Winter of Brightstar Partners, Ltd. in the UK attended the LESI YMC event as a special guest. Since he has invested in many start-ups in Europe, he gave is view on IP as a venture capitalist and expert in actual licensing that could be helpful in practice. Furthermore, LESI YMC was invited by the Korean government. The Gyeonggi contents agency, a subsidiary of the Korean government, invited members of LESI YMC on November 27 to hold a demo day for the globalization of Korean start-ups. Members of the LESI YMC were able to deliver various comments from the perspective of the IP accelerator that Korean start-ups should keep in mind when entering the global market. In the future, LESI YMC is expected to be even better known as an organization that can help companies with global acceleration based on IP and licensing. The program was completed by a social event featuring a band made up of YMC members performing live on stage. â– YMC Band performing on stage. June 2020
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LES Global News—Meetings
PROTECTING & COMMERCIALIZING FUTURE TECHNOLOGIES THE FUTURE IS NOW! The LES 2020 Annual Meeting is focused on protecting and commercializing technologies that were once the future and are now omnipresent. Join us for two full days of networking, shared knowledge, best practices, and deal advice you can put in action. October 18-20, 2020
KEYNOTE SPEAKER Dr. Daria Mochly-Rosen Professor, Stanford University and founder and director of The SPARK Program
Loews Philadelphia, 1200 Market St, Philadelphia, PA*
PROGRAM TOPICS INCLUDE: •
Commercializing Big Data and Machine Learning Networks
•
Design Protection on Emerging Technologies
•
Forces Majeur — Commercializing Technologies in an Era of Trade Wars, Nationalization, Regional Conflicts, and Climate Change
•
Addressing (Un)foreseeable Problems in Commercializing Nanosensors and Nanoparticles
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Negotiating Liability and Indemnification in an Era of Robotic and Computer-Assisted Medicine, Autos and Product Design
•
Emerging Technologies Poised to Change the Energy Industry
•
Understanding and Exploiting Secondary Markets for High Tech, Life Sciences and Other Technologies
Don’t miss this exciting opportunity to learn how to handle IP and licensing issues around new technologies.
REGISTER NOW AND SAVE $300!
SIGN UP TODAY AT LESMEETINGS.ORG/AM20 * As of the date of this publication, the 2020 LES Annual Meeting is still scheduled for October 18-20, 2020 in Philadelphia, PA. We continue to monitor the COVID-19 situation carefully and will take appropriate measures as needed. Watch our website and social media channels for updates.
Expand your brand and increase your exposure with hundreds of IP and licensing professionals. Sponsor or exhibit at the 2020 LES Annual Meeting. Contact enelson@les.org for details.
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Licensing Executives Society International
LES Global News—Society News
LES Arab Countries
AC Organizes Entering New Markets For SMEs Workshop
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ES Arab Countries (LES AC) organized a workshop on “Entering New Markets for SMEs” under the patronage of HE Dr. Talal Abu-Ghazaleh, LES AC President and Ms. Fiona Nicolson, LESI Past-President. The aim of the workshop was to learn about licensing techniques, enter new markets, learn more about IP issues and enhance the participants’ research and development skills. During the opening session, Dr. Abu-Ghazaleh welcomed the attendees stressing that the definition of invention is not just to come up with something new, rather, it can be also in introducing additional innovative features to an existing invention. Our future depends on what we can innovate and make valuable and commercially profitable, he confirmed, adding: “Every company should invest in innovation as part of its social responsibility and not just rely on the effort of experts or scientists.” Further he pointed out that “the only real wealth in the future is innovation, and this is why LES is very important because its main task is to support and protect innovation by developing and protecting intellectual property rights (IPRs).” Ms. Nicolson, LESI Past-President, reviewed some ideas on how to best utilize intellectual property and ways to profit from IP. She highlighted the advantages and disadvantages of licensing, and she reviewed domestic licensing laws that need to be considered in case of external licens-
Fiona Nicolson, LESI Past-President spoke at the workshop.
ing, explaining the ways for successful licensing. Meanwhile, Eng. Jamil Al-Khatib, founder of IBTECAR, an Innovation & Technology Management Company, made a speech explaining in detail the technology trends, digital transformation and SMEs investing in industry. He also presented IPR strategies for industry, including ways of benefitting from innovation and key success factors in innovation. Additionally, Dr. Rasha Hinnawi, trainer with LES Arab Countries (LES-AC), presented information on international trade and IP laws, explaining that intellectual property rights are legal rights granted by governments to encourage innovation and creative output by ensuring that inventors reap the benefits of their inventions or works. Dr. Mohammad Al-Jafari, Director, Intellectual Property Commercialization Office at the Royal Scientific Society, iPARK, made a presentation on capitalizing on technological innovations in Jordan that earn profits on an international scale from local scientific innovations. Eng. Razan Al-Khaza’leh, Head of Guidance and Technical Support Section at Amman Chamber of Industry, discussed the collaboration for innovation between SMEs and universities, talking in detail about types of innovation and the target of innovation for SMEs, i.e., the transformation of knowledge to money. She also presented the database of cooperation between universities and the industrial sector. ■
Dr. Mohammad Al-Jafari, Razan Al-Khaza’leh, Dr. AbuGhazaleh, Fiona Nicolson and attendees.
Jamil Al-Khatib, Fiona Nicolson and Dr. Rasha Hinnawi.
Dr. Abu-Ghazaleh welcomes the attendees to the workshop.
Participants at the workshop.
June 2020
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LES Global News—Meetings
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Licensing Executives Society International
LES Global News—Society News
LES Britain & Ireland
Irish Chapter Event: Data As A Strategic Commercial Asset
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he LES Irish Chapter held an evening seminar on Thursday 13th February entitled “Data as a Strategic Commercial Asset.” Helen Cline of Pinsent Masons and committee member of the LES Irish Chapter led the organization of the event and kindly provided the venue at the Dublin Pinsent Mason office, as well as the Drinks Reception. Samantha Williams, Chair of the Irish Chapter opened the meeting, describing LES and the benefits of membership. Recent and planned Irish events were highlighted as well as upcoming events in Britain and within LESI. Panel members as listed below gave excellent informative presentations and answered questions on the commercialization of data, both from legal and commercial perspectives. Approximately 30 individuals registered, with about 20-25 present attending the event. A broad community of university TT, legal, patent attorney and industry participants were represented. Feedback was very positive with university colleagues suggesting the use of their new building for future events. ■
Helen Cline, Cameron Ross Dunne, Alison Orr, Cerys Wyn Davies, Mark Marfé and Samantha Williams.
Panel Members Cerys Wyn Davies, Partner, Pinsent Masons (Moderator) Cameron Ross Dunne, Director of IP Management, Openet Dr. Alison Orr, Business Development Manager, Inngot Mark Marfé, Senior Associate, Pinsent Masons
Panel members and attendees.
LES Germany
LES Germany Recent Activities
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he Autumn Conference on 29 November 2019 took place in Nuremberg with 75 participants. The subject matter of the conference was “Verwertbarkeit/Lizenzierbarkeit von AI-Innovationen aus patentrechtlicher Sicht” (Usability and Licensing of AI Innovations under Patent Law). Oliver Groth of the Oxford Robotics Institute opened the meeting with a presentation on “Artificial Intelligence—an analysis between facts and hype.” Dr. Rainer Moufang of the EPO gave an overview on “EPO Appeal Case Law on AI Inventions.” Ms. Alica Daly of WIPO presented the WIPO AI Report. Prof. Dr. Otthein Herzog of the University of Bremen complemented the morning with a status report on Artificial Intelligence in Germany and China. The afternoon of the meeting was dedicated to reports from an industry perspective. Daan Damen of Philips, Margarethe Zmuda of Ericssson and Prof. Dr. Björn Eskofier of the University of Erlangen informed the group about their experience followed by a panel discussion. The meeting was closed by a presentation of Prof. Dr. Peter Georg Picht of the University of Zurich about the use and licensing of AI innovations from a patent law perspective. On 7 February 2020 the LES Germany member's meeting took place in Munich. The Annual Autumn Conference 2020 is scheduled for 20 November 2020 in Munich. LES Germany is organizing its well-established two-year module seminars on a regular basis. These seminars (modules I to VII) deal with several licensing topics. The modules presented in 2020/2021 will take place in Berlin. For further information concerning the module seminars please visit the LES Germany website www.les-germany.org. ■ June 2020
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LES Global News—Society News LES Hungry
Seminar On Artificial Intelligence And IP Organized By LES Hungary
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seminar organized by LES Hungary took place on February 28, 2020, at Danubia HQ Budapest, Hungary with the working title of “Artificial Intelligence and IP.” The organizing committee made the English language morning session of the seminar available for foreign LES members as well through WebEx. The event addressed the very issue of the changing role of intellectual property protection and the shifting requirements and demands set on different stakeholders of the IP industry in an ecosystem where artificial intelligence gains more and more presence and importance. The English language morning session was opened by Dr. István Molnár, President of LES Hungary. The opening speech was a mind-provoking problem statement, including a syllabus for the most advanced, even unorthodox professional opinions of such well-known organizations, think- Dr. István Molnár, thanks, consulting groups and President of LES Hungary analyzing companies as Deloitte, Boston Consulting Group (BCG), PricewaterhouseCoopers, the European Commission, the World Economic Forum, WIPO and the EPO, among others. The kick-off discussion speech focused on three major question areas: • Impacts on the functions and services of national IP offices/IP administration; • Impacts on the potential services of patent attorneys; and, • Possible future role of patents in company innovation in an AI driven era. The opening spot was followed by the keynote-speech of Professor Manuel Desantes Real, Director Counsel of Elzaburu, former Vice President of the EPO, and Director of the University of Alicante, titled “Facing the cognitive era with courage: the role of patent offices Professor Manuel Desantes Real and patent attorneys.” Prof. Desantes showed a perfect and holistic insight resulting from his multidisciplinary personal experience, combining the multifaceted versatile views of academia, 28
Licensing Executives Society International
legal service providers, legal institutions, patent offices and law makers, as well as of industry. As a problem proposal, it was suggested that changes coming to the path of mankind see a steady increase in frequency as a result of the industrial revolution(s). The first industrial revolution, which was focused on mechanical development, took place between 1760 and 1840. The second was the stage of electrification between 1870 and 1914. The third, digital industrial revolution came around in the late 60s. The fourth industrial revolution, starting at the turn of the new Millennium, pivots around digitization and autonomous machine data generation. In this new era, a myriad of technologies are hybridized and fully interconnected. All of that smart technology equipment generates and shares information nowadays, which is a unique character of the fourth industrial revolution. Exponentially available information results in exponential acceleration of innovation, according to the cornerstone laid down by Professor Desantes. The IP system as we know it was formulated during the 1st and 2nd industrial revolutions. Shifts in technology, economy and society pose requirements for adaptation, and these increase exponentially, not linearly. The changes need to be structurally integrated into manmade “fictional” systems like legislation and the IP system. Prof. Desantes suggested that it is not satisfactory to adapt cyclically to the changes anymore, as it is impossible to keep up with the ever-increasing speed of changes. Distortion of the regime, or even the heavy reform (reinvention) of the intellectual property system, might be unavoidable. The presenter suggested the implementation of a human-centric legal approach: algorithms versus androrithms. Following this most thought-provoking discussion by Prof. Desantes, concentrated mostly on the area of industrial property, the focus was shifted to copyright-related issues via a presentation made by Dr. Péter Mezei, associate Dr. Péter Mezei professor at the Faculty of Law and Political Sciences of the University of Szeged, and member of the Hungarian Copyright Expert LES Hungry, continued on Page 29
LES Global News—Society News
LES Hungry, continued from Page 28 Board. The exposé adjoined the idea of Prof. Desantes, that though “law is just a fiction,” it is not a limitless fiction, as it has its own purpose and limits. Dr. Mezei proposed copyright has its certain inherited cultural function, which should not be abandoned for the sake of AI. It was indicated that, even though AI does exist and communicates in the everyday world, it is not yet known whether an AI optimistic or an AI pessimistic scenario is going to prevail. The presentation posed four major questions for the future use of AI: • Will future AI algorithms need any human intervention at all? • Will there be any market (need) for AI-generated/created contents? • Is there any real need to protect such contents by IP? • And if so, should it really be copyright? Dr. Mezei argued that while some of the features of copyright and related rights might be incorporated to fit AI based creations, authorship, originality, and moral rights are especially “tough nuts to crack.” Therefore, a range of alternatives were presented to untie this “Gordian knot,” including moving “creation” by default to a public domain, non-human created IP, encompassing disseminator’s rights, computer generated works and neighbourhood rights, establishing a new sui generis right for all AI investors. The Hungarian language afternoon session started with the presentation of Dr. Gábor Harangozó, patent attorney at Danubia Patent and Law Office, which centred on the issue of patentability of inventions in the field of AI. Participants could gain an in-depth insight to the limitations of Dr. Gábor Harangozó patentability of abstract mathematical algorithms, which mostly make up an AI in a practical sense. A closer inspection of the concept of Computer Implemented Inventions (CII) was also presented for the audience, and the investigation of patentability in different regions/countries, including major geographic locations like the EU, the U.S.A., Japan, China, Korea and India. The last presentation of the day was that of Ms. Patrícia Beregszászi, patent attorney trainee at Danubia Patent and
Law Office, which analysed the current situation and practice of patenting AI-generated inventions. The speaker started with a definition of AI itself. In line with the above, strong vs. weak AIs were discussed. Ms. Beregszászi enumerated Patrícia Beregszászi the major geographic markets where patenting has a strong relevance, including the U.S.A. and Europe. It was pointed out how existing industrial property regulations—even the constitution of the U.S.—hinders actual protection of AI-generated inventions via patents. Several interesting case studies were also presented to illustrate how patent offices try to avoid getting into the scholastic debate over the patentability of AI-generated inventions by refusing examination of an application due to the lack of indication of a human inventor. The problem proposal and the discussion offered a great opportunity for professionals in the field of IP, as well as for further interested parties, including highly valued members of the legal infrastructure, the innovation management sphere and the AI-related research or commercialization settings, to exchange thoughts, to establish a common understanding of the central sphere of complex issues, and to harmonize the different viewpoints present. The organizing committee would like to express their gratitude both to the for the participants at speakers as well as to the Waiting the Registration Desk. participants of the day. ■
Organizing committee Dr. István Molnár—President of LES Hungary Levente Pethő—Board member of LES Hungary Dr. Georgina Busku—Board member of LES Hungary Petra Szanyi—Administrator June 2020
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LES Global News—Society News LES Italy
The 2020 LESI Winter Planning Meeting
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aspects and problems of IP exploitations. Leading this seshe year 2020 started with an important international sion—“Setting the Scene: Models and Strategies for Effective event: the LESI Winter Planning Meeting, the annual proIP Exploitation Between Industry and University”—were not gramming event for LESI activities reserved for Presidents, only internationally renowned academics such as Prof. FabChairs of the LESI committees from the 33 chapters and sperizio Dughiero (Rector of technology transfer and business cial guests to discuss keynote themes of IP. The meeting was relations of the University of Padua and Karin Hoffman (Patheld last February 21-23 in Padua, together with representaent and License Management department of TU Wien, LES tives of WIPO, EPO and Patent Trademark Offices from differAustria), but also representatives of leading international ent countries. companies like Ing. Alessandro Matera (CEO of Infineon The event started with the "Innovation Talks" international Technologies Italia S.r.l.), Scott Johnstone (CEO of Benenox, seminar organized on February 21, 2020 in the splendid and LES Britain & Ireland) and Laura MacDonald (ASTP PROTON, prestigious venue of the old Palazzo del Bo (founded in 1222) President of LES Benelux). These international champions in Padua by LES Italia in collaboration with the University of shared their vision, experience and knowledge on IP exploitaPadua and UniSMART. tion and on the ways of cooperation between industry and The event—which was attended by over 250 entrepreuniversities with an engaging discussion. neurs, professionals and representatives of the academic During the third panel titled “Top 10 Mistakes Commonly world—focused on the theme of IP as a tool for growth of Made When Drafting and Negotiating License,” Russell innovation and protection of the intangible heritage of SMEs, Levine (Partner at KIRKLAND & ELLIS LLP, LES USA & Canabut also on new technological trends such as artificial intellida) set a practical look on the licensing and negotiation of gence, robotics and additive manufacturing. relevant agreements. The morning session was held in the Ancient Archive and After the networking coffee break, the second-round table was dedicated to deepening the relationship between the of the morning took place: “Emerging Trends: AI, Automated management of intellectual property and innovation processVehicles, Crypto Currencies, AgriTech, eCommerce. What es. After the welcome and introduction speeches by Stefano Should We Know About IP Protection?.” During this session Carosio (Managing Director of UniSMART) and Audrey Yap (President Elect of LESI), many LESI experts and entrepreneurs discussed models and strategies aimed at realizing an effective enhancement of intellectual property, especially in the relationship between universities and businesses. The first session—a “breaking the ice” session titled “To disclose or not to disclose?” held by Mattia Dalla Costa, President of LES ITALY, and Andrea Berti, Head of the Technology Transfer Office of the University of Padua—analyzed the best ways and strategies to build a long-lasting collaboration between industry and universities and to negotiate effective IP licensing agreements between universities and businesses. The event continued with a round table that discussed, with a close look to entrepreneurial reality, the main Innovation talks, morning and afternoon sessions.
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LES Global News—Society News LES Italy, continued from Page 30 Audrey Yap (Head of the Intellectual Property Department of Yusarn Audrey, LES Singapore and President LESI), Stefano Carosio (UniSMART), Pietro Orciuolo (Digital Strategist of CORVALLIS S.p.A.), John Carney (Managing Director at China IP Exchange LLC, LES USA & Canada) and Ning Ling Wang (Partner at FINNEGAN LLP, LES China) presented on the impact that new technologies and tools such as AI, blockchain, cryptocurrency will have on business and industries and on their IP assets’ protection. The “Top 10 Litigation cases in Europe on Licensing contracts” followed: Jean-Christophe Troussel (Partner at BIRDS & BIRDS, LES Benelux) described to the audience a selection of recent European court decisions concerning licensing contracts; Elena Martini (Partner at MARTINI MANNA, LES Italy) focused on five litigation cases dealing with licensing contracts, analyzing decisions from the Court of Milan and the Italian Supreme Court. The last panel of the morning—“International IP Filing Strategies”—focused on international patenting strategies and on the evaluation of the decisions that enterprises often need to take: filing or not filing a patent application. This panel was held by François Painchaud (Partner at Robic LLP, LES USA & Canada), Raymond Reuteler (Partner at REUTELER & CIE, LES Switzerland) and Yorikatsu Hohokabe (Senior Advisor at Oblon, CLP, Vice President of LES Japan). Finally, Fiona Nicolson (Partner at BRISTOWS LLP, LES Britain & Ireland and LESI Past-President) concluded the morning event with a wrap-up session, bringing together the main threads of the morning. After the Networking Lunch at Sala delle Colonne of Palazzo del Bo, the afternoon session was held in the stunning Aula Magna of Palazzo del Bo. The focus of the event shifted to some great technological trends that will impact production paradigms in the immediate future. After the opening speeches of the Magnificent Rector of the University of Padua, Rosario Rizzuto and of Prof. Fabrizio Dughiero (ProRector of technology transfer and business relations of the University of Padua), the first round table focused on Artificial Intelligence and robotics. Nicola Bressan (Chief Technology Officer at YARIX) Emilio Crespi (Associate Partner at IBM—Cognitive Solutions Italia) Corrado Druetta (Corporate Legal Counsel at COMAU S.P.A.), Emanuele Menegatti (Professor at the Information Engineering Department of the University of Padua) and Enrica Monticelli (Home R & D Director at DE LONGHI GROUP) discussed not only the impact that AI will have in the areas of Digital Transformation and Product & Service Development, but also its impact on business opportunities and on the world of work and strate-
After a day of innovational talks, LES members end with Dinner at Belle Parti Restaurant.
gies to be adopted for companies that want to collaborate with the stakeholders of the sector. The afternoon event continued with the keynote speech of Audrey Yap—“Renaissance, Business and Intellectual Property”—on the IT revolution that, like a modern renaissance, is taking place in today’s business and industry. Audrey Yap analyzed how the IP world is fast changing and how the IP evolution requires all organizations and companies to review the meaning and value of their IP assets and how IP strategies need to change. In the second round table of the afternoon—“Focus: Additive Manufacturing” —the speakers Maurizio Bianchini (Professor at the Civil Law Department of University of Padua), Michele De Giorgi (European and Italian Patent and Trademark Attorney at Società Italiana Brevetti), Antonino Italiano (Executive Managing Director at DESAMANERA), Giovanni Lucchetta (Professor at the Industrial Engineering Department of University of Padua), Alessandro Maronzin (R&D Department at DWS SYSTEMS) and Massimo Moretti (CEO at WASP) discussed the potential and areas of application of 3D printing and additive manufacturing, a technology that can and will increasingly be used to support cocreation platforms and open innovation ecosystems for the benefit of SMEs. The day ended with a pleasant networking cocktail at the Antico Caffé Pedrocchi and dinner at Belle Parti Restaurant. The following day, the LESI Winter Planning Meeting took place in Aula Nievo, in the beautiful Antique Court of Palazzo del Bo. During the morning session, the LESI members continued their works through innovation, technology transfer and IP law. The works started with the welcome remarks by LESI President Fiona Nicolson and with the opening remarks by LESI President Elect Audrey Yap, who introduced the inspiring and engaging keynote speeches of the honored guest
LES Italy, continued on Page 32 June 2020
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LES Global News—Society News LES Italy, continued from Page 31 Professor Piero Formica (Innovation Value Institute), Prof. Fabrizio Dughiero and John Carney. The morning continued with a panel discussion moderated by John Paul (Partner at Finnegan Henderson LLP) Fiona Nicolson, Audrey Yap, and including PTO representatives Guy LESI PastLESI President. Pessach (Director at WIPO), Thomas President.
Winter Planning Meeting participants.
LESI Gala Dinner at Caffé Pedrocchi where two members were recognized. A speech in memory of Peter Hess was given and a great “arrivederci” to Larry Plonsker, who is retiring from the role of editor of les Nouvelles.
LESI members had the opportunity to attend an opera in Venice at Teatro La Fenice. It was also a great opportunity to experience one of Italy’s most famous festivals: Carnevale di Venezia.
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Bereuter (CLP Program Manager at EPO), Marina Lamm (Director at USPTO) Loredana Guglielmetti (Italian Ministry of Economic Development and General Director for Patents at UIBM), Dana Robert Colarulli (LESI Executive Director). The round table focused on the IP support to SMEs and entrepreneurship, as a true and core factor of growth in the era of industry 4.0. After the lunch at the historic venue of Caffè Pedrocchi, during the afternoon session the LESI attendees divided into five groups for the Breakout Sessions. They were: Women in Licensing Alliance (WILA) (Facilitator: Fiona Nicolson); Reviving the National President’s Counsel (NPC) (Facilitator: François Painchaud); LESI Industry IP Festival (Facilitator: Audrey Yap); High Growth Companies, SMEs and Start Ups (Facilitators: Thomas Bereuter, Ichiro Nakatomi, Yu Sarn Chiew); and The New Face of Innovation—Adapting LESI for the Future (Facilitator: Patrick Terroir). The event ended with the Gala Dinner at Caffè Pedrocchi, in the beautiful Egyptian Room and Sala Rossini. During the pleasant dinner with LESI members, two moments will be remembered as an inspiring sign of the great networking power of a LESI event: first, the speeches in memory of Peter Hess, the immediate Past-President of LESI, who was remembered with touching words by his colleague Prof. Tilman Mueller-Stoy. Then, the great “arrivederci” to Larry Plonsker, who is retiring from the role of editor of les Nouvelles, and who shared with and received from those in attendance gratitude for the inspiring and challenging work performed during the years. LES Italia was very pleased and extremely honored to host for the first time in our country this important event, which also obtained the patronage by the Municipality of Padua and the greeting of the Mayor Giordani, given to the Board of LES International during the Board’s meeting. The meeting was hosted in a beautiful hall of the Municipality of Padua. This weekend characterized by international guests and innovation topics concluded with a true Italian experience: “Elisir D’Amore” Opera in Venice at Teatro La Fenice on Sunday evening. It was also a great opportunity to experience one of Italy’s most famous festivals: Carnevale di Venezia. With the hope that this troubled period will end soon and that our regular association life will be resumed as soon as possible, the LES Italia Executive Committee is fully committed to the organization of the LES International Annual Conference to be held in Venice from 8 to 10 May 2022, where we hope to see and host you all. ■
LES Global News—Advertisers
JUNE 2020
les Nouvelles JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL
Advancing the Business of Intellectual Property Globally Special Issue In Cooperation With The European Patent Office LES NOUVELLES JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL
Volume LV No. 2
www.lesi.org
June 2020
June 2020
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LES Global News—Society News LES South Africa
2020 News And Events
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ES South Africa hosts various events, talks and training throughout the year. Apart from training members and friends of LES, we use these events for healthy networking and growing our membership base. As most of our members are based in Gauteng and Cape Town, events are mostly around these areas. We have quite a few new members from Bloemfontein and some new interest from Durban and we plan to extend, Covid-19 permitted, to these areas as well. We hope that in 2021 we can extend our footprint deeper into Africa. We have a few members from Africa, but such members find it economically challenging to attend the afternoon events or one day seminars. Bloemfontein and Durban. The Board planned the 2020 events in our first meeting in January. We have the following on the agenda and hope that we will still be able to carry out most of these, even if it is with postponement. Afternoon Talks Short seminars or talks on topics of interest to the IP community are presented by subject matter experts to LES members and friends followed by network opportunity. • March 5th: Artificial Intelligence and Patents, Western Cape—http://licensing.co.za/wp-con-tent/uploads/2020/02/ Program-reg-form-AI-IP-2020-03-05.pdf. • July 2nd: Topic to be announced. • October 1st: ENS, Sandton Medicinal Cannabis products, marketing, branding and other legal and regulatory matters (draft program is out—so will soon upload).
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Training • LES 100—Gauteng—one day licensing course—12 March 2020 http://licensing.co.za/wp-content/uploads/2020/02/Program-LES100-AA-2020-03-12.pdf. • LES 100—Bloemfontein—21 April 2020—University of Free State and CUT—Program to follow. • LES 100—Durban—one day Licensing Course—6 May 2020—This may be postponed. • LES 200—Gauteng, Venue to be confirmed—Sept 7-9. 2020- Program to follow. • IP Valuation Course—Somerset West—Western Cape— 8—10 June 2020 http://licens-ing.co.za/wp-content/up-
loads/2020/02/Program-reg-form-Valuation-CourseWC-2020-06-08.pdf.
Other Events • World IP Day in collaboration with University of the Free State, Bloemfontein, April 20th, 2020—unfortunately cancelled. • End year function, Western Cape, November 26th, 2020— Program and venue to be confirmed. • AGM 2020—August 27th—28th LES SA AGM, Mini seminar and Board meeting in Gauteng. Young Members 2020 YMC seminar—Gauteng, October 15th, theme and program to be announced. ■
LES Afternoon Talk On 5 March 2020
he protection of artificial intelligence inventions has been a topic of interest, and properly one of the fastest moving industries. Everyone, who takes an interest in AI, attention was on the admissibility and allowability of the two inventions of DABUS (Device autonomously bootstrapping uniform sensibility) for which UK, EPO and U.S. patent applications were filed, and which were both refused by the EPO and UK in view of DABUS not being a person and as such not qualifying as an inventor. Dr. Kleyn discussed the protection of AI-type inventions and in particular the challenging question on whether the IP systems are too stagnant to keep up with the times considering the provisions for patentability (especially the inventive-step), inventorship, infringement and liability. The talk was attended by 16 delegates in Cape Town and the evening was concluded with a small network reception. ■
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LES Global News—Society News
LES Thailand
LES Thailand Annual Conference 2020 and AGM
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he LES Thailand Annual Conference 2020 and AGM was successfully and safely organized during March 2nd and 3rd at the Lancaster Bangkok Hotel with a total of 84 participants including 27 speakers. The theme of the conference was “The Coming Decade: Creating High Growth Products & Services—Upcoming Opportunities for Thai Innovation.” Photos from the Annual Conference 2020 and AGM at the Lancaster Bangkok Hotel in Thailand. With Thailand in the early LES Thailand connected to a new network, the Stock stages of the Covid-19 outbreak, safety measures were impleExchange of Thailand—In January 2020, LEST commitmented throughout the conference. Digital technology played tee members met with SET an important role in the success of the conference where all management to discuss colinternational speakers and panelists joined the stage remotely laboration on educating their and smoothly from their home countries via Zoom. community on IP related topLES Thailand YMC —In our continuing efics and promoting LES Thaiforts to promote LES Young Members Conland into their network of gress (YMC), we are happy to announce that 724 listed companies. Members Michelle Ray-Jones and Alice Razon LES Thailand CSR—During the hardship of the Covid-19 panare the LES Thailand YMC coordinators. LES demic, LES Thailand allocated some Covid-19 needed supplies Thailand has been active in YMC events since contributed by our sponsorship for the LES Thailand Annual late 2018 when three members attended the Alice Razon, Questel Conference 2020 for donation. inaugural Asia Pacific YMC in Hong Kong and On March 18, 2020, we dotwo members attended last year’s Pan Euronated alcohol gel and masks to pean YMC in London. These YMC event parthe Priest’s Hospital to relieve ticipations were shared at the LES Thailand some supply shortages, which Annual Conference 2020. We are planning was met with much appreciafor a session for LES Thailand YMC to share tion from the hospital’s manYMC activities after a virtual meeting of LESI Michelle Rayagement team. ■ Jones, T&G YMC leaders in May 2020.
LES South Africa, continued from Page 34
One Day Licensing Introductory Course
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n 12 March LES South Africa offered a one-day Introduction to Licensing Course. The course was attended by a small group of 12 people from law firms and industry. The feedback received was very positive and it is evident this course fills an important role in the basic training of licensing. A big thank you go to the speakers; Clive Erasmus, Danie Dohmen, Alan Lewis and Femke van Dyk who gave up their valuable time to offer this course on behalf of LES South Africa. ■ June 2020
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LES Global News—Society News LES Philippines
Paving The Road To Digital Consumerism
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he continuous rise of e-commerce is a direct result of the growing demand for both convenience and expedience in doing things. Everything we need today appears to be accessible just by a click of a button—shopping for clothes, buying groceries, purchasing medicine, booking tickets— making our past tradition of going in-store seem to be the alternative option. Indeed, this shift towards e-commerce continues to grow, and is expected to further affect our daily lives as new technologies emerge in light of the Fourth Industrial Revolution.
For his part, Campaña borrowed the words of Jack Ma, Founder and Chairman of Alibaba, in which he said that “Old businesses will not go away; but they need to change—immediately.” In support of this, Campaña used the Lazada model as an example of how their platform allows businesses to change and adapt to the fast-paced world of e-commerce. According to Campaña, retail is moving online and it is important for businesses to move along with it. He stressed that sellers must be empowered to sell their brands online, and Lazada does that by providing an easy-to-use platform where sellers can grow their brands and boost sales, all while ensuring fast and reliable delivery of their products. Evidently, e-commerce is here to stay. The only question is—how will your business adapt to this fast-paced environment so as to not get left behind? ■
Participants from various sectors attended the e-commerce forum hosted by the Licensing Executives Society Philippines on 7 November 2019 in the De La Salle University Rufino Campus, Bonifacio Global City. Photo shows DTI Assistant Secretary Mary Jean Pacheco responding to a question from the audience.
The forum hosted by the Licensing Executives Society Philippines last 7 November 2019 tackled the theme “Beyond the Brick and Mortar: Paving the Road for the Digital Consumers.” Prominent government and industry leaders, including Department of Trade and Industry (DTI)’s Assistant Secretary Mary Jean Pacheco, Google Philippines' Industry Head Prep Palacios and Lazada Philippines' Head of Legal Joustine Campaña, provided the audience with their respective thoughts and valuable insights on the topic. Pacheco emphasized that the country's incredible internet usage is one of the main factors driving e-commerce in the country. With 124.2 million mobile subscriptions, 76 million active Internet users, and an average of 10 hours of internet usage daily, e-commerce has a solid foundation in the Philippines. The Philippine government sees this as a huge potential in the local e-commerce space. Nonetheless, Pacheco highlighted that our local e-commerce industry is not without problems. “Building trust is the main focus of the e-commerce branch of DTI,” Pacheco said. “That’s the number one marching order of the DTI Secretary when he assigned us the e-commerce department. We need to build trust and we need to tell people that it’s safe to buy online.” Meanwhile, Prep Palacios discussed how the Philippines is at an inflection point, with the next five years expected to be a period of rapid advancement in the field of e-commerce. She notes that if businesses do not want to get left behind in the advent of digitalization, marketers must lean in to the evolving progressive Filipino behavior, which includes being proactive in discerning information, passionate in pursuing interests, and purposeful in achieving goals. 36
Licensing Executives Society International
DTI Assistant Secretary Mary Jean Pacheco delivering her keynote message on the importance of e-commerce in the Philippines.
Google Philippines' Industry Head Prep Palacios providing her inputs on the story of inflection on digitalization in the Philippines.
Lazada Philippines' Head of Legal Joustine Campaña on the business model of Lazada and how the company contributes to the growth of e-commerce in the Philippines.
LES Global News—Society News
LES Philippines—
Embracing Diversity And Inclusion Across Industries
The Licensing Executives Society Philippines kicks off the year with its forum on Diversity and Inclusion.
O
ur continuously evolving society calls for a better understanding and appreciation of diversity and inclusion (D&I), not only in workplaces, but also in schools, organizations and governments, among others. While a discussion on D&I may span across a plethora of topics, in a nutshell, we can first try and understand diversity as “who’s at work”—who is recruited, hired and promoted by a company, organization and the like. It is, in essence, a representation as to the diverse set of people having different traits and characteristics in a certain community. On the other hand, inclusion is basically how such a diverse set of people are treated and how they feel in a community. It revolves around the idea of whether employees feel valued, respected, and accepted in the organization. The D&I forum held by the Licensing Executives Society Philippines (LESP) last 6 Februar y 2020, a trailblazing one as it was the first time for LESP to embark
Charles Veloso discusses the concept of diversity and inclusion and the best practices of Quisumbing Torres on D&I.
Nelson Laluces of the Philippine Intellectual Property Office delivers his keynote message regarding the D&I efforts of the office.
Marla Garin-Alvarez provides additional context and thoughts on diversity and inclusion in the Philippine setting.
on such a topic, involved various discussions on D&I as it cuts across industries. Among the guest speakers were Intellectual Property Office of the Philippines (IPOPHL)’s Deputy Director General Nelson Laluces, Quisumbing Torres’ Partner and D&I Committee Head Alain Charles Veloso, Thomson Reuters’ D&I Lead Marla Garin-Alvarez, and Philippine Financial and Inter-Industr y Pride’s Leadership Team Chris Eugenio. Starting things off, Charles introduced the concept of D&I and its application in the business environment and in the legal profession. Charles shared some of the D&I best practices at Quisumbing Torres, which include an active D&I committee, non-discriminatory hiring, support for working parents, a firm target to include more women and non-binary individuals in the firm’s top management, and inclusion of same-sex partners in the firm’s employee healthcare plan. ■
Chris Eugenio delivers a talk on the various challenges faced by the LGBTQ+ community in the Philippines.
The forum was capped off by an interesting panel discussion from our panelists/speakers, coupled with questions from the audience.
June 2020
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LES Global News—Advertisers
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Thank you! Danke! To all of our Berlin sponsors, especially those included below. We look forward to gathering with you soon.
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Licensing Executives Society International
les News—Highlights
Elevate Yourself and Your Profession— Earn the Certified Licensing Professional (CLP) Credential! By Cynthia Allen
A
chieving CLP certification establishes credibility and fulfills professional and personal goals. Take the first step and request the CLP practice test to learn more. For more than 10 years, the Certified Licensing Professional (CLP) credential has helped to distinguish professionals around the world who have demonstrated their experience and proficiency in licensing and the commercialization of intellectual property through active involvement in patenting, marketing, valuation, IP law, negotiation, business development and intellectual asset management. Professionals from approximately 30 countries have earned certification including the United Kingdom, the Netherlands, Germany, Singapore, Australia and China. Why become certified? The CLP helps you demonstrate a higher standard of professional practice, build credibility in a diverse field, optimize performance, elevate your capabilities, and distinguish yourself amongst colleagues and to employers. In a recent survey of CLPs, respondents said that a primary reason they chose to pursue CLP certification is that the CLP credential is an important designation, and they wanted to be part of this community. “The Certified Licensing Professional designation not only showcases the interdisciplinary knowledge a licensing professional possesses, but also provides a conduit for fellow licensing professionals to exchange best practices and cultivate the next generation of licensing professionals.” (Benning Wang, MBA, CLP, Associate Director, Technology Licensing at Penn Center for Innovation). How do I get started? First, confirm you meet the eligibility requirements. To earn the CLP you must have at least three years of relevant experience, a bachelor’s degree or higher, and pass the exam. Next, complete the CLP exam application available on the CLP web site. Once ap-
Cynthia Allen explains the Certified Licensing Professionals (CLP) to Ayanda Noma of South Africa.
proved, you will be able to schedule your exam for the next available exam window. When can I take the exam? The CLP exam is offered throughout the months of April and October. What do I need to know about the exam? The exam consists of 150 multiple-choice questions covering five content areas or “domains” of knowledge related to the licensing field. A candidate handbook with sample questions is available at www.licensingcertification.org. An online practice exam is also available to CLP candidates. A PDF version of the practice test is available to those interested in learning more by contacting CLP. CLP, Inc. invites you to join the growing international community of approximately 850 Certified Licensing Professionals. Email Cynthia Allen at callen@licensingcertification.org to request the practice test, visit the CLP web site for additional information, and start the process towards earning the CLP credential. ■
Advertising in les Nouvelles We have issued new pricing for advertising in les Nouvelles. You can now advertise through a ¼ page ad, in color or black and white. See www.lesi.org/ content/advertiseinlesNouvelles.aspx Although we do not have a Jobs and Employment section of les Nouvelles as yet, employers can advertise to fill important positions through les Nouvelles. We reach more than 7,000 members worldwide. June 2020
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LES Global News— LESI Delegates
Officers
®
President President-Elect Past-President Vice-President Vice-President
Audrey Yap John Paul Fiona Nicolson Tatiana Campello Sergey Dorofeev
Delegates
Vice-President Vice-President Secretary Treasurer Legal Counsel Executive Director
Jose-Miguel Lissen Christopher Shaowei Pamela Cox Mike Lasinski Russell Levine and Mattia Dalla Costa Dana Robert Colarulli
Society Officers
Chapter President Secretary Japan Andean Community Enrique Berckholtz Chikako Hashimoto Andean Community Renzo SCAVIA Enrique BERCKHOLTZ Renzo Leonello Scavia Kenichi Nagasawa Arab Countries Talal ABU-GHAZALEH Majd KHADDASH Arab Countries Makoto Ogino Argentina Gustavo P. GIAY Ignacio BERETERVIDE Nabil Salame Junko Sugimura Australia & New Zealand Duncan FERGUSON Michael COSSETTO Talal Tawfiq Abu-Ghazaleh Hiroki Saito Austria Rainer HERZIG Thomas ADOCKER Argentina Korea Benelux Achim KREBS Jurriaan JANSEN Gustavo Giay Hyoseon Choi Brazil Verónica Canese Cedric SIKANDAR Karina Haidar MÜLLER Youngtack Shim Britain & Ireland Colin HUNSLEY Simon CHALKLEY Australia & New Zealand Malaysia Chile Michael Cossetto Andrea LOBOS Francisca RODRIGUEZ Pauline Khor Duncan Ferguson China-Hong Kong Michael LIN Charmaine KOO Brian Law Yoo Foo Mark Pullen China Aimin HUO Zhongqi ZHOU Mexico Austria Chinese Taipei James HOU Vincent SHIH Abraham Alegria Karin Hofmann Czech Republic & Slovakia Petra de BRANTES(Korejzová) Denisa ŠVECOVÁ Philippines Andreas Pföstl Anne-Céline TRUCHOT-BOTHNER Charlotta LJUNGDAHL Bienvenido A. Marquez III France Benelux Germany Stephanie PAUTKE Udo MEYER Bayani Loste William (Bill) Bird Hungary Zsófia KEREPESI István MOLNÁR Poland Achim Krebs India Lakshika JOSHI Richa PANDEY Alicja Rogozinska Brazil Israel Dalit SAGIV Hananel KVATINSKY Thereza Gonçalves Curi Abranches Jakub Mrozowski Italy Paula Mena Barreto Alessia FERRARO Mattia DALLA COSTA Russia Britain & Ireland Japan Masaki HATANO Hiroki SAITO Natalia Karpova Patrick Cantrill Korea Jeehye HAN Kwang Jun KIM Simon Chalkley Alexey Vakhnin Malaysia Aisya Abu BAKAR Anita Kaur GEREWAL Hayley French Mexico Scandinavia Claudio ULLOA-ESCOBEDO Mariana GONZÁLEZ-VARGAS Chile Sonja London Philippines Andrea Lobos Bienvenido A. MARQUEZ III Reena MITRA-VENTANILLA Olli Pekonen Francesca Rodriguez Poland Jakub MROZOWSKI Alicja ROGOZINSKA China Per Ericsson Russia Alexey VAKHNIN Sergey DOROFEEV Aimin Huo Singapore Scandinavia Olli PEKONEN Sonja LONDON Zhongqi Zhou Lionel Tan Singapore Catherine LEE Lionel TAN China Hong Kong Chiew Yu Sarn South Africa Rosita Li Chyreene TRULUCK Madelein KLEYN South Africa Annie Tsoi Spain & Portugal Guillermo CRIADO Francisco VELASCO Madelein Kleyn Chinese Taipei Switzerland Stefan KOHLER Raymond REUTELER Johan Du Preez Vincent L. Shih Thailand Orakanoke PHANRAKSA Chalermpol TUCHINDA James Hou Spain & Portugal Turkey Mustafa ÇAKIR Murat IDAL Czech Republic & Slovakia José Miguel Lissén USA & Canada Petra de Brantes Kevin SPIVAK Gary FEDOROCHKO Guillermo Criado Vojtech Chloupek Switzerland France les Nouvelles Philipp Groz Alfred Chaouat Volume LV Number 2 (ISSN 0270-174X) Regula Altmann-Jöhl Emmanuel Gougé Martin Schneider les Nouvelles is published quarterly by the Licensing Executives Society International (LESI). LESI is an Charlotta Ljungdahl Thailand Jean Hyacinthe de Mitry association of 33 National and Regional Societies, each composed of individual members who are engaged Germany in the profession of licensing and other aspects of transferring or profiting from intellectual property. Chalermpol Tuchinda Christian W. Appelt Subscription to the journal is included in the membership dues paid by all members. Subscription for Vikran Duangmanee Ingo A. Bruckner the print publication is available to non-members for US$250/year. Please contact the Editor for further Turkey Alexander Haertel details or go to www.lesi.org/les-nouvelles/about-les-nouvelles/non-member-subscription Murat Idal Jochen Schäefer Mustafa Cakir The articles published in les Nouvelles reflect the views of the authors and not of the Society as an Guido von Scheffer U.S.A. and Canada association or its officers. Material printed in the journal is covered by copyright. No parts of this Mathias Zintler publication may be reproduced, displayed or transmitted in any form, without prior permission from Vincent Bergeron Hungary the Editor or Board of LESI. Georgina Buskui Jim Bratton István Molnár Gary Fedorochko A peer review and evaluation system is used to maintain the scholarly nature of the material published India Gillian Fenton in this journal. All articles submitted for publication are reviewed and evaluated by members of the Richa Pandey Editorial Review Board (ERB). The ERB members are chosen for their expertise in the fields of licensing Lalit Gaur Israel and intellectual property. All evaluations are reviewed in a double-blind fashion to remove any bias in Bob Held Dalit Sagiv the results. The final decision on publication rests with the editor. Mike Lasinski Liad Whatstein Keith Lutsch A guideline for authors can be found on our Web site at the following address: www.lesi.org/lesnouvelles/ Italy advertise.asp#submission Brian O’Shaughnessy Antonio Di Bernardo Natalie Raffoul Copyright ©2020 Licensing Executives Society International. Sergio Lasca Hilton Sue Dario Paschetta DEADLINES FOR les Nouvelles: Copy for publication in les Nouvelles should be received by the Jeff Whittle Marilena Garis Editor-in-Chief as far as possible in advance of the final deadlines, January 1, April 1, July 1 and October 1. Articles for the white pages are reviewed by the LES Editorial Review Board, and they are published as soon as possible after acceptance. All materials are to be submitted electronically in either MS Word or Text Only format.
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Licensing Executives Society International
LES Global News— LESI Delegates
Licensing And Intellectual Property Organizations Meetings For more information on LESI Meetings, go to www.lesi.org November 3 LES Britain & Ireland September 17 Annual Conference 2020 LES France's 50th Anniversary! Glasgow, Scotland POSTPONED November 6 Paris, France LES Britain & Ireland September 20-22 LES100 Training Course LES Scandinavia Annual London, England Conference 2020–POSTPONED 2021 Helsinki, Finland
LESI Management Committees Chairs & Co-Chairs Audit Awards Business Primers
2020
October 18-20 LES 2020 Annual Meeting Philadelphia, Pennsylvania November 2 LES Britain & Ireland LES100 Training Course Glasgow, Scotland
April 7-9 LES ANZ Annual Conference 2020 Christchurch, New Zealand Notice: Some In-Person Meetings have been cancelled in response to the Covid-19 Global Health Crisis. See the website for webinars and online education courses.
J. Gay M. Finnegan B. Hedberg M. Okano D. Smith J. Gaudin J. Stonier S. Heijn W. Poms H. Hodding F. Pombo M. Ariga L. Mackey P. Hug D. Ryan K. Payne
1990 J. Portier 1991 F. Noetinger 1992 A. Mifune 1993 L. Evans 1994 O. Axster 1995 N. Jacobs 1996 J. Brown 1997 S. Layton Jr. 1998 R. DeBoos 1999 P. Mandros 2000 H. Goddar 2001 E. Shalloway 2002 T. Sueur 2003 M. Jager 2004 J. Gulliksson
2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 2019
W. Manfroy P. Chrocziel R. Grudziecki C. Fukuda A. Liberman P. O’Reilley A. Lewis J. Malackowski K. Nachtrab Y. Chua A. Michel J. Sobieraj P. Bunye P. Hess F. Painchaud
les Nouvelles Editorial Review Board Chair: Rodney DeBoos, Melbourne, Australia Lex van Wijk, Amersfoort, Netherlands Heinz Goddar, Munich, Germany Sherry Rollo, Chicago, Illinois U.S.A. Sun R. Kim, Seoul, Korea Masato Kobayashi, Tokyo, Japan Kenneth D. McKay, Toronto, Canada Thomas Bereuter, Vienna, Austria Eduardo C.A. de Mello e Souza, Rio de Janeiro, Brazil Frank Tietze, Cambridge, United Kingdom Dana Robert Colarulli, LESI Executive Director Tel: +(202) 841-0276 E-mail: dana@lesi.org
David Drews, Editor 9320 Chesapeake Drive, Suite 110, San Diego, CA 92123 Tel: +1-858-603-8825 E-mail: editor@lesi.org
Carla J. Blackman & Anita Morselli-Zakrajsek Design Interface Inc. - Design & production
Education External Relations Investment IP Maintenance Legal Long-Range Planning Meetings Membership
International Past-Presidents 1974 1975 1976 1977 1978 1979 1980 1981 1982 1983 1984 1985 1986 1987 1988 1989
Communications
Nominations Publications
Jim Sobieraj Kevin Nachtrab Danie Dohman Don Drinkwater Karin Hofmann Omer Hiziroglu David Swain Natalie Raffoul Martin Schneider Patricia Bunye Arnaud Michel Brian O’Shaughnessy Jim Sobieraj Michael Lechter Rinaldo Plebani Mattia Dalla Costa Russell Levine Emmanuel Gougé Patrick O’Reilley Sherry Rollo Thomas Adocker Anne-Charlotte Le Bihan Hector Chagoya Cortes Yorikatsu Hohokabe Alexander Cizek François Painchaud Bruno Vandermeulen
LESI Industry, Professional & Regional Committees Industry Consumer Products EEMC High Tech
IUGT Life Sciences
Professional
Copyright Licensing Dispute Resolution Patent & Tech Licensing Trademarks, Designs and Merchandising IP Valuation Women in Licensing Alliance
Junko Sugimura Ningling Wang Sonja London Keith Lutsch Alfred Yip Duncan Ferguson Hayley French Julia Barnes-Weise Johan Du Preez George Hwang Tilman Müller-Stoy Patrick Terroir Madelein Kleyn Charmaine Koo Stefan Völker Andrè Gorius Martha Laura Lopez Orue Pam Cox Sonja London
Regional Americas Asia-Pacific European
Paula Mena Barreto Jeff Whittle Yu Sarn Chiew Vikran Duangmanee Jose Miguel Lissen
Ad Hoc Committees Global Technology Impact Forum Young Members Congress
Mark Wilson Vincent Bergeron
June 2020
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LES Global News—Advertisers
LESI BUSINESS BRIEFINGS 2020
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LES Global News—Meetings
June 2020
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