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lesNews Licensing Executives Society International Newsletter

March 2012 Vol. XLVII



Societies’ News


New Members


April 26, 2011, in conjunction with LESI Italia Study Grant 2011 OnWorld Intellectual Property Day, LES

Intellectual Property Essay Contest for Young Writers

Roberto Dini, President of LES Italy, congratulating the winner of the Essay Competition, Mr. Guido Pontremoli.

Italia announced an IP essay contest to raise interest in and awareness of intellectual property among young people and to promote new analysis and study in the field. The competition was open to writers under the age of 35 and required submission of a previously unpublished essay written in Italian or English addressing topics related to intellectual property. All entries were evaluated by a jury, composed of three Members of the Executive Committee of LES Italia—an IP attorney, a lawyer and a business manager. Awards for the winning essays were presented in October, 2011 during the Annual General Meeting of LES Italia and the winners received a study grant sponsored by LES Italia. The first place essay is reproduced below. For additional information about the submitted essays please contact the LES Italia Secretariat, Tel. +39 011/9904114 or e-mail: ■

Winning Essay

Patenting The Tradition An analysis of three emblematic IPR—Traditional Knowledge disputes by Guido Pontremoli

Essay finalists, Ms. Giulia Aresca (left), Mr. Giuseppe Cigarini and the winner, Mr. Guido Pontremoli.

This work, “Patenting the Tradition: an analysis of three emblematic IPR—Traditional Knowledge disputes” submitted by Guido Pontremoli was awarded first at the LES Italia Study Grant 2011, for the originality of the subject matter, style and shared conclusions. Winning Essay, continued on Page 3

les News—Highlights Inside les News Highlights & Legal Updates Pages 2, 3, 17-24

Society News–Pages 4-9 Meetings–Pages 10, 11, 30, 31, 32 New Members & In Memoriam –Pages 12-16 Book Reviews–Pages 25-29

Quick Links:

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: news-from-les-societies-blue-pages/ submission-form. Deadlines: January 15, April 15, July 15 and October 15 Editor: Larry Plonsker, 10580 Northgreen Dr. Wellington, FL 33449 • Email: Copyright © 2012 Licensing Executives Society International

Meetings In Geneva Launch Groundbreaking Initiatives By James E. Malackowski, President, LES International


ESI held three separate but related meetings in Geneva, Switzerland, during the final week of January: the Expanded Board Planning Meeting, the second meeting of the National Presidents’ Council (NPC) and the Global Technology Impact Forum (GTIF) with the concurrent Invent For Humanity Technology Transfer Exchange Fair. It was an incredible five days and the culmination of more than 18 months and thousands of hours of work, not only by those who carried our LES flag to Switzerland, but by many other LES members around the world. By all accounts each of these meetings was an amazing success with GTIF representing a fundamental step forward in the leadership role that LESI has long earned regarding global technology transfer issues. Attendees of the Expanded Board Planning Meeting were the LESI board, past-presidents, national presidents and committee chairs. The meeting included a detailed discussion of LESI administrative needs and the benefits which may be achieved from a part-time professional executive director. The consensus of those present was that the board should move forward to consider such a role. Considerable discussion was also had regarding use of Paid Conference Organizers (PCO’s) to assist in the on-site logistics of our annual conferences. We will be considering the benefits of establishing a preferred relationship with one or more PCOs. Following the Planning Meeting, the second meeting of the newly formed National Presidents’ Council (NPC) was held for all current and past national presidents. The agenda of the NPC was almost entirely centered on the sharing of best practices regarding Society management. The next meeting of the NPC will be during the International Management and Delegates Meeting taking place at the annual conference in Auckland. In GTIF we took on a project larger and more significant that any of us imagined. Total meeting participation was well over 150 and exceeded all forecasts. In the end, we had more than 40 non-government organizations (NGOs) and several patent offices participate as well as five national delegations (China, Arab Countries, Turkey, Hong Kong and Philippines) present their case for doing IP business in their country. LESI and its strategic meeting partners (WIPO, WTO, ICC and CAI) are all enthusiastic about repeating the event next year with an expanded LES team! Thanks to everyone who contributed, but a special thanks to the event sponsors including Bardehle Pagenberg, Transpacifc IP, the Interellectual Property President‘s Message, continued on Page 8


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les News—Highlights Winning Essay, continued from page 1

The article concerns three emblematic cases regarding the relationship between intellectual property rights and so-called “Traditional Knowledge” and is characterized by an interesting reference to the important role that licensing agreements can play in the resolution of conflicting interests, in order to achieve beneficial solutions for all parties involved. Abstract Three emblematic cases of Intellectual Property Rights (IPR)—Traditional Knowledge (TK) disputes are discussed in the present paper. The first case is the Neem tree case, whereby a granted European patent was challenged by a group of Indian activists before the European Patent Office (EPO). The second one, the Turmeric plant case, refers to a U.S. patent challenged through a re-examination procedure brought by India’s Council for Scientific and Industrial Research; whilst the third case, the Hoodia case, is a brief description of an IPR-TK conflict, resolved by an agreement. Traditional Knowledge can be generally defined as that common knowledge known only to a local population per se, such as, inter alia, Indian or African tribes, as part of their own folklore and traditions. Examples of Traditional Knowledge notions often include the treatment of particular diseases by using plants or plant extracts, as well as methods for the extraction of active ingredients from roots or leaves. In most of these cases, such TK remains in the form of oral traditions that are neither formally published nor translated. As a result, it happened that pharmaceutical patents have been granted over the years

for inventions which actually did not meet the fundamental requirements for patentability (mainly novelty and inventive step) when viewed in light of the above mentioned TK from which those inventions may have been indirectly, or even directly, derived. The first case examined is the Neem tree case, where patent EP436257 was granted in 1994, claiming a method of controlling fungi on plants including the use of a Neem tree oil formulation. The Neem tree was known by indigenous populations to possess several beneficial medicinal properties, including the patented fungicidal action. After being granted, a group of Indian activist filed a notice of opposition before the EPO, mainly on the grounds of public-prior-use, asserting that local Indian population were familiar with the use of the Neem tree extracts for treating fungi for generations. After a post-grant procedure lasting more than 10 years, the patent was eventually revoked. The second case addressed in the paper is the Turmeric plant case, where a U.S. patent (US5401504) was challenged by a request for reexamination before the USPTO. The patent claimed a method for healing a wound by administering a woundhealing agent consisting of an effective amount of Turmeric powder. The Turmeric plant is a flowering plant whose roots are used in India either as a cooking spice or in traditional medical medicine to prevent inflammation and infection. The news of the grant of the U.S. patent sparked confusion within the Government of India (GOI) since the use of Turmeric extracts for healing wounds was well-known for hundreds of years in India. The GOI then requested a re-examination of the patent before the USPTO, providing a series of local references supporting

Palazzo delle Stelline, venue for LES Italy meeting.

the public prior use of the Turmeric healing properties. As a result, the U.S. claims were cancelled. The last case is the Hoodia case, whereby the IPR holder (India’s Council for Scientific and Industrial Research – CSIR) and the holder of the Traditional Knowledge (the San Tribe) reached a mutually acceptable agreement to share the benefits of the San Tribe’s TK. Certain groups of the San Tribe living in South Africa eat parts of the Hoodia plant (a cactus) as an appetite suppressant which allows them to survive in those areas of the desert where food is scarce. With knowledge of this traditional purpose, the CSIR developed and patented the active ingredient, known as P57. Prior to any litigation however, a dialog between the CSIR and the San Tribe was opened in 2002 and resulted in a Memorandum of Understanding which served as the basis for benefit sharing negotiations between the parties. In conclusion, this paper highlights the way global intellectual property addresses local knowledge today and how it is in part dependent on how local communities interface with the intellectual property system in general. In all cases, local knowledge is an important source of information held by indigenous communities that needs to be respected and properly protected. ■ March 2012


les News—Society News LES Turkey

ARTEV Platform Kickedoff With Seminar Series by Ms. Anil Durmu, PhD.


esearch-based Intellectual Asset Management Platform abbreviated as ARTEV Platform is a cooperative platform initiated by LES Turkey and comprises five of the leading Universities in Turkey namely – Sabanci, Bogazici, Koc, Istanbul Technical and Ozyegin Universities. ARTEV’s stated mission, at its broadest is the promotion and dissemination of the “Intellectual Asset Management” and “Technology Transfer” concepts throughout the country and their adoption as “best practices” by industry and academia alike. ARTEV Platform aims to support the effectiveness of intellectual asset management, creation of an ecosystem, and in the long term, contribute to a technology-based economic development in Turkey. From the standpoint of the above stated goals and consideration of the current ecosystem in Turkey, this project is built upon several pillars, such as generating, sharing and disseminating practical knowledge; improving and enriching corporate experiences; training a qualified workforce; and finally providing information and data feedback mechanism to support policymakers and legislators.

Speakers & leaders of ARTEV (from left): Prof. Hasan Mandal (Vice President of Sabanci University), Prof. Habip Asan (President of Turkish Patent Institute), Prof. Nihat Berker (President of Sabanci University), Ms. Umit Boyner (President of Turkish Businessman Association), Prof. Gulay Barbarosoglu (Vice President Bosphorus University), Prof. Erhan Erkut (President Ozyegin University).


Licensing Executives Society International

The expected outputs from this project are seminar organizations, progress reports, expanded curriculum for the training of Intellectual Asset Managers, continuous and sustained relations with public and private sectors as well as leading international organizations on the subject, and finally, international accreditation of the licensing professionals. The kick-off events–The Strategic Approach to Intellectual Asset Management Seminar Series–were organized in November and December of 2011. The Seminar series was structured as a three-day event: “Research-Based Intellectual Asset Management in Industries”; “ResearchBased Intellectual Asset Management in Universities” and “Technology Transfer Value Chain.” These events aimed to create awareness on the fact that “Intellectual Asset Management” is an interdisciplinary subject including science, technology, law and management fields and has to be managed in different manners in the Universities and in the Industry. The alternative “financing models” for technology transfer, including Venture Capital and incubation approach were studied in a one-day seminar event. The seminars are structured to present global approaches to Intellectual Asset Management and to showcase success stories. These opening event series left strong impact on the participants by the contribution of Ms. Umit Boyner, the president of Turkish Industry and Business Association, and Mr. Habip Asan, the President of the Turkish Patent Institute. The opening event and the excellent presentations have received wide coverage from Turkish media and press. ■

les News—Society News LES China — Hong Kong Sub-Chapter

Unleashing The Power Of Brand


ollowing the success of last year’s License Negotiation Seminar, LES China–Hong Kong SubChapter continues working with strategic stakeholders to bring the latest licensing know-how to the community. On May 19, 2011, we partnered with the Richard Ivey School of Business, The University of Western Ontario and the Hong Kong Trade Development Council and organized the seminar “Licensing: Unleash the Power of Brand.” Dr. Janet De Silva, Dean, Ivey Asia; Ms. Viola Man, Director, PuraPharm Group of Companies; Mr. John Hanssen, Managing Director, Legal-Asia Pacific Dupont; Ms. Anita Leung, Partner, Jones Day; and Ms.

Audience participation at the seminar.

Speakers and LESI leaders gather at the License Negotiation Seminar.

Alice Ngan Director, Special Projects Office, The Chinese University of Hong Kong; shared their knowledge and experience in branding by their presentation as well as a discussion forum after the presentation. One hundred and two business executives and legal professionals from 73 organisations had a close look at the branding strategy for DuPont Teflon® non-stick coatings in China through a case study. Closer to home, they also learned how Hong Kong’s own PuraPharm has succeeded in building brands for its products in the region. The audience opined that through the seminar, they have a good overview of the management, business and legal needs for successful brand building and maintenance. ■

LES France

2011 World IP Day Event by André-Pascal Chauvin, LES France Board Member

Topics • Innovation and success stories • Towards a European Patent Fund? • Is Patent Strategy, at a country level, still meaningful in the global world? This event was a great success, just as the one last year, with numerous attendants. The first part of the afternoon was devoted to successful transfers to the industry presented by their respective inventors recently awarded by The Marius Lavet Foundation. Jean-Pierre Cariou, Technical Director of Leosphere, explained how the Lidar technology reached 10 million in revenue

after 4 years with a huge perspective of growth. Christian Wittrisch, IFP Energies Nouvelles Engineer, Participants included: A.P. Chauvin (left), J. Darcy, presented the Simphor, a D. Guellec, C. Wittrisch, J.P. Cariou and J.C. Hourcade. technology developed for Investment Fund) showed how the IP horizontal drain holes commonly used European Fund Project could enhance in the oil industry. an efficient IP market. The second part of the event focused Jean-Charles Hourcade, France on IP Strategy. Brevets Managing Director, gave us Dominique Guellec, OECD Principal an overview of the recently created Economist, explained us how countries French Patent, its missions, value could adapt their IP strategy to the new proposal and priorities. global innovation market. This event ended with a nice cocktail around the speakers. ■ Jacques Darcy, Head of EIF (European March 2012


les News—Society News LES France

LES France audience at one of their many conferences.

2011—A Successful Year With A Full And Interesting Program Of Conferences


ES France organized a number of important conferences in 2011, aimed at broadening the subjects of interest to our members and to cover topics concerning very specialized subjects as well as larger ones with an international dimension. Furthermore, throughout 2011, LES France members have actively participated in International Delegates Meetings and LESI Committees. The LES France program started in January with a very successful conference concerning Royalties Funds. The subject was covered by two different fund representatives, Walter Flame Baum of Paul Capital Healthcare Fund, and Paul Maruani of IdVectoR Science & Technology Fund. They descriabed new innovative models they developed to support technology development financing. In March, an IAM 100 licensing course was organized for the second time and took place in Lyon. The 25 attendees were very interested in the program and particularly appreciated the numerous practical examples 6

provided by trainers to illustrate the course. The licensing game provided the opportunity of very dynamic exchanges and lessons to learn. To participate in the World IP day, in April, an exciting conference was organized by LES France. A summary of this event is presented in a separate article. The next conference was held in June in association with IRPI (the French National Institute for Research in Intellectual Property) and was a very interesting and practical conference concerning French-Brazil exchanges. Partnering with Brazil appears today inescapable, and very useful information was provided to improve commercial development in this very dynamic country with an emphasis on optimizing IP use. Participants included Gustavo de Freitas Morais of Danneman and Charles-Henri Chenut of Chenut Oliveira Santagio. At the end of September a conference was organized in partnership with ASAP France (Alliance Management Society), aimed at Licensing and Alliance Management players.

Licensing Executives Society International

This subject was presented using different examples, with first a presentation of Sanofi Pasteur case (by Hélène Santacruz, Director Corporate Development and Antoine Alarcon, Director alliance Management ), then the example of Alcatel Lucent was presented (by Jean-Paul AMELINE, Senior IP Counsel & Lead), and finally the case of Sm2D was described (by Michel Salomon, CEO and Maurice Bonaz, CFO). In a second step, two lecturers from French universities, Fabien Blanchot, Maître de Conferences, Paris-Dauphine University and Pascal Corbel, Maître de Conferences, Versailles Saint-Quentin-en-Yvelines University, specializing in IP and Alliances Management Conferences, led a very enthusiastic roundtable with the audience. And finally our Annual General Assembly in last December was, like each year, an opportunity to have a full day of presentations to draw attention to some 2011 “hot topics” including: LES France, continued on page 8

les News—Society News LES Philippines

Forum On Patent Auctions & Technology


mere four months after having then LESI President Alan Lewis as keynote speaker in a forum on Intellectual Property Valuation held last July 2011, the LES Philippines was once again privileged to have another LESI President grace its event. On 16 November 2011, the LES Philippines officers and directors, in partnership with the Intellectual Property Office of the Philippines (IPOPHL), held yet another forum entitled “Patent Auctions & Technology in an Emerging Global Economy,” and this time with incumbent LESI President James Malackowski as keynote speaker. Mr. Malackowski addressed the audience on the topics “IP Markets: From Auctions to Traded Exchange" and “Role of LES in Emerging Global IP Markets.” Like the July 2011 event, the forum was well-attended by a variety of stakeholders in the Intellectual Property community. The event was also graced by the presence of Ms. Audrey Yap and Mr. Yu Sarn Chiew of LES Singapore. Mr. Malackowski’s enlightening dissertation enticed participants to apply on the spot for membership in LES Philippines. In fact, even the IPO-PHL Director General, Mr. Ricardo Blancaflor, signed up for membership, perhaps making LES Philippines the only local society with the incumbent head of intellectual property government agency as member. Aside from this major event, LES Philippines was also busy with the various events and activities lined up for the last quarter of 2011, namely: 1. On 24-28 October 2011, LES Philippines participated in the 1st Anti-Counterfeiting and Piracy Summit organized by the IPO-PHL. 2. On 9-11 November 2011, LES

Philippines was involved in the LES nology Transfer and Successful TechAsia-Pacific Regional Conference in nology Licensing (STL) in Research Singapore where LES Philippines and Development (R&D) Institutions. President, Mr. Ferdinand M. Negre, The members of LES Philippines spoke on the topic, “Fostering Greater capped off 2011 with a night of fun University-Industry Collaborations in and merriment when they held the the Life Sciences” at the conference. Annual Christmas Party at the Rain3. On 22 November 2011, the LES maker’s Lounge of CVC Law. The Philippines President discussed the party held on 2 December 2011 was topics “The A-Z of Patenting” and graced with the presence of the board “Licensing, LESI and LESP” in the directors, officers, council of advisers Chamber of Herbal Industries of the and members, as well as distinguished Philippines, Inc.’s 2nd Tradition Mediguests such as, Director General cine (Trad Med) Forum with the theme, Ricardo Blancaflor and IPO-DITTB “Strengthening of the Output of CliniDirector Carmen Peralta. ■ cal Trials Through Patent/ Trademark Registration.” 4. On 24 November 2011, LES Philippines also participated in a symposium entitled, “Bringing Innovations from Laboratories to Market” hosted by the Department of Agriculture in celebration of the 7th National Biotechnology Week, where Mr. Negre, discussed the topic “Intellectual Property Protection Jim Malackowski (left) talks to Ferdinand Negre and and Valuation.” Ricardo Blancaflor, IPO Director General. 5. On 28 November 2011, the LES Philippines President talked about the applicable Philippine laws under the topic “Legal Framework for In and Cross Border Technology Transfer and Licensing - National and Regional Regulations” at the World Intellectual Property Organization’s Regional Workshop for De- Participants at the forum: Mr. Augusto San Pedro (left), Mr. velopment of Management Antonio Velicaria, Ms. Leslie Anne T. Cruz, Ms. Patricia A.O. Bunye, Mr. James Malackowski, Ms. Audrey Yap, Mr. Yu Sarn Skills on Innovation, Tech- Chiew, Ms. Carmen Peralta, and Mr. Ferdinand M. Negre. March 2012


les News—Society News President‘s Message, continued from Page 2

Exchange International, Inc. (IPXI) and Ocean Tomo, LLC. The GTIF meeting committee worked incredible hours bringing new ideas to a global community making an impact with more than $10,000 raised at Invent For Humanity. GTIF 2013 will be here before you know it and the next general planning meeting is scheduled during the LESI Annual Meeting in Auckland in April. Please let me, President-Elect Kevin Nachtrab and/or LES Switzerland President Martin Schneider know if you are interested in being a part of the GTIF 2013 meeting team. A number of interim results and ongoing efforts were announced at GTIF including: •WIPO and LES will continue to draft a basic primer on IP valuation, but expanding to include valuation of humanitarian technologies. •LESI prepared and provided to the World Economic Forum Global Agenda Council on IP a list of basic IP business principles discussed by select attendees at the recent Davos meeting. •A number of significant NonGover nmental Organizations (NGOs) new to LESI, including for example the World Health Organization and NASA Launch, indicated interest in furthering collaboration on GTIF and other LESI activities. The 2011-2012 Society year is passing quickly and there is much to be done. I look forward to seeing you in Auckland and, as always, am eager to hear your thoughts on how to deliver even more value to our Member Societies, and through them, their individual members. ■ 8

LES France, continued from page 6

1.“What’s New in OMPI,” presented by Matthew Bryan (Director of the PCT Legal Division, 2.“Audit of Open Sources Software Assets in M&A Processes,” by Etienne Papin, Cabinet Feral-Schuhl/Sainte-Marie, 3.“America Invents Act” (James Leavy, Cabinet Weil, Gotshal & Manges) and 4.“IP and Valorization of Concepts,” by Eric Schahl, Cabinet INLEX, 5. EUKTS: “Towards a New Standardization and Recognition of the Knowledge and Technology Transfer Profession Across Europe,” by Frederic Caillaud—LES France delegate for the EUKTS Consortium. Then we had—as always very appreciated by our members—the latest law cases in Pharma by André Bourgouin, Propriété Intellectuelle, and IPSEN or in the EU by Emmanuel Gougé, Cabinet Marccus Partners. And at last, (but not least!) a success story with a presentation of a very interesting French biotech named Innate Pharma by Yannis Morel – Executive VP Innate Pharma, who explained the key role played by licensing in their amazing development. In addition to this important full conference program, the French Sector Committees were very active in 2011. The well established French Life Sciences Committee organized two conferences, one in March with an interesting presentation on French regional competitiveness engines (“Pole de Competitivité”) as well as Pharma cases laws in U.S., Europe and Japan. The second one was organized in October with the following topics: “Genetic Resources under the CBD and the Nagoya Protocol, An Industry Perspective,” by Axel Braun, Head International Developments,

Licensing Executives Society International

Hoffmann-La Roche Ltd, “Traditional Knowledge And Industrial Property Rights: Challenges And Definitions,” by Leila Mamoni, International Centre on Traditional Knowledge, and finally “News and Update of French Bio-Ethical Laws,” by Anne-Laure Morin Avocat. The Youths Committee, (led by Catherine Lafarge, LES France Secretary) created in 2010, was a great success in 2011 with more than 70 participating members. This newly started committee has developed a large range of activities providing a dynamic network and exchanges with more experienced professionals on business practices. They are also holding specific conferences with subjects of particular interest for members, such as “How to Use New Tax Options to Optimize Innovation Development.” Finally a third new committee “Arbitration and Mediation” was successfully created in 2011, and has organized two much appreciated working sessions during the year. Encouraged by the increasing and recurrent attendance of LES France members to the conferences, the Board of our Society will continue to optimize this part of LES France activities which has been recognized as a real added value for our members. Probably boosted by the success of our active and sustainable conference program, LES France is confirming itself to be an essential actor in the LES network. The number of members is increasing significantly this year with a total of around 480 members, and LES France is confirming its essential contribution to the international influence of LES Societies. ■

les News—Society News

New Board of Directors Announced for 2012

LES Brazil New Board for 2012 • Rodolfo H. Martinez y Pell Jr. (President) • Juliana Laura Bruna Viegas (Vice-president and International Delegate)

LES Germany LES Germany Board of Directors for 2012 - 2013: President: Frank L. Zacharias President-Elect and Secretary: Peter K. Hess Treasurer: Christian W. Appelt Past-President: Christian Klawitter Schedule of LES Germany seminars/meetings: •LES Module I: “Introduction to Licensing” in Düsseldorf on February 24, 2012 •LES Module II: “Realisation of License Projects” in Düsseldorf on April 20, 2012 •LES Module III: “Commercial Boundary Conditions, Audits, and Models for Technology Evaluation of License Agreements” in Düsseldorf on Septem ber 21, 2012 •LES Module IV: “Antitrust Boundaries of License and Technology Transfer Agreements” in Düsseldorf on November 23, 2012 •LES Spring Meeting: “Patents in Litigation/Patents and Standards” in Königswinter on March 15 ­‑16, 2012 This year’s LES Autumn Meeting will take place in Nürnberg on November 30, 2012. Look for updates at

• Cândida Ribeiro Caffé (Vice-president and International Delegate) • Thereza Gonçalves Curi Abranches (Secretary)

LES Switzerland New Board for 2012 • Martin Schneider (President) • Ralph Schlosser (Vice-President, Relationship French speaking Switzerland) • Markus Ineichen (Treasurer) • Philipp Rüfenacht (Program Manager) • Felix Grether (Long Range Planning) • Raymond Reuteler (Relationship French-speaking Switzerland, Delegate) • Regula Altmann-Jöhl (Relationship Universities, Delegate) • Joachim Lauer (Licensing Course) • Peter Walser (Consultations) • Stefan Kohler (Secretary)

Adv, Meetings, Events tel.: +39.081.8904040 fax: +39.081.8907169 email: website:

March 2012


les News—Meetings LES Asia Pacific Regional Conference

Emerging IP Deals And Opportunities Offers Expert Vision And Practical Example by Jim Malackowski, LESI President


Licensing And Intellectual Property Organizations Meetings 2012

April 1–4 LES International Annual Conference Auckland, New Zealand

June 10–12 LES International Pan-European Conference Rome, Italy July 9–12 LES University The Sutton Place Hotel Chicago, Illinois September 9–11 LES Scandinavia Annual Conference, Commercializing Creativity Helsinki, Finland

May 15–17 LES (USA & Canada) Spring Meeting Hyatt Regency Boston Boston, Massachusetts USA

October 14–17 LES (USA & Canada) Annual Meeting Sheraton Centre Toronto Toronto, Ontario Canada

March 12–14 LES (USA & Canada) Winter Meeting Anaheim Marriott Anaheim, California USA March 30–April 1 LES International Delegates Meeting Auckland, New Zealand

For more meeting information go to:

just finished three days attending the LES Asia Pacific Regional Conference chaired by Audrey Yap, President of LES Singapore. Attendance was strong and, although largely from the region, there was notable participation from Europe and the Americas. The theme of the conference was “Emerging IP Deals and Opportunities in Asia” and it did not disappoint. Between the plenary program and workshops, the conference offered a nice blend of expert vision and practical examples. Assessment of the current IP landscape in China and Japan was both insightful and even-handed, thanks to presentations by Alfred Kwok, President of China IP International Services and Hitoshi Yoshino, Managing Director of Japan IP Network. Here again, the Licensing Executives Society (LES) furthered its working partnership with WIPO as Ignacio de Castro, Deputy Director, WIPO Arbitration & Media Center, first presented the results of the WIPO survey on dispute resolution in technology transactions and later joined a panel including several regional experts on conflict resolution in patent disputes. On the later panel Russell Levine, LES (USA & Canada), detailed the significant extent to which U.S. judges are pushing Alternative Dispute Resolution to resolve patent cases. If you have never seen one of Russell’s workshops, they are a must see. As an IP valuation expert and market-maker by profession, I found my way to two workshops directly on point including: •A discussion of advanced valuation techniques presented by Dr. Alex Yu, Founder & Chief Knowledge Strategist for K-Strategian, LLP •A presentation of essential tools for IP marketing as described by Dr. Sze Tiam Lin, Director of IPI Limited Both Dr. Yu and Dr. Lin referenced Ocean Tomo market development in their prepared materials, which was flattering to see my firm’s work integrated into such training materials globally. LES Asia, continued on Page 11


Licensing Executives Society International

les News—Meetings LES IP100 Executive Forum

LES Asia, continued from Page 10

Global Leaders Discuss Pressing Issues In IP by Lydia Steck


n elite group of the world’s top intellectual property (IP) executives and thought leaders convened for the 2012 Licensing Executives Society IP100 Executive Forum, January 30-31, 2012 at the Arizona Biltmore in Phoenix. This annual summit is a unique, invitation-only gathering of senior IP decision makers from leading companies, universities and government agencies that focuses on peer-to-peer interaction and off-the-record discussions on IP business issues and strategies, valuation, best practices, deal structure and organizational alignment. “LES is uniquely positioned to convene this one-of-a-kind forum and to create an environment where attendees can make new professional connections and find real answers to burning questions, valuable strategic tools and useable solutions that can be implemented immediately into their everyday work stream,” said Bill Elkington, Senior Director, IP Management for Rockwell Collins, IP100 Meeting Chair, and LES Trustee for Communications. The meeting, which drew speakers and attendees from Bayer, Bob Mackie Design Group, Boeing, BP America, Eli Lilly, Hewlett Packard, Honeywell, Lawrence Livermore National Laboratory, Mars Wrigley, Merck & Co., Microsoft, MIT, Rockwell Collins, Sandia National Labo-

ratory, Stanford, Technicolor, The Rockefeller University, University of Illinois at Urbana-Champaign, among others, featured three “Hot Topic” panel discussions covering: •The impact of the America Invents Act (AIA) on IP business •Deals from Hell: What We’ve Learned, What We’d Do Differently, Spotting Signs of Trouble •How to Think Like a VC – Valuation, Assessing Transactions, Risk Management and Methods for IP Management Each panel was followed by a facilitated, closed-door discussion where attendees engaged in frank information sharing and problem solving. In addition, attendees heard presentations from Innocentive Founder, Alpheus Bingham, Ph.D., who discussed the impact of open innovation on the global business environment, and Marshall Phelps, former Corporate Vice President of Microsoft Corporation and IBM, who discussed the latest innovations in IP monetization. An IP100 Executive Forum summary report is in development and will be made available exclusively to attendees. In addition, plans are underway to reconvene the IP100 at the Arizona Biltmore in January 2013. For more information about the IP100 Executive Forum, visit www. ■

Like all LES events, the value from attendance comes not only in what is presented at the front of the room, but also the networking quality with fellow registrants. The meeting committee including Audrey Yap, Karol Goh and George Hwang did a great job of assembling a who’s-who crowd for the region. I personally had the chance to meet and spend meaningful time with BG Tan Yih San, Chief Executive and Director General of the Intellectual Property Office of Singapore, as well as Jason Chen, Director of the Intellectual Property Division for the Singapore Ministry of Law. Both BG Tan Yih San and Director Chen shared their vision and efforts for establishing Singapore as the Asian center for IP market development. My observations tell me there is a meaningful race developing between Singapore, Hong Kong and China (Beijing, Shanghai and Shenzhen) to anchor the third leg of the intellectual triangle alongside the U.S. and Europe. Abu Dhabi, however, could be the surprise victor given their laserfocused vision and willingness to commit resources, see my prior blog post regarding my visit to the World Economic Forum Global Action Council on IP. Are Japan, Korea, Taiwan and India next to be added to this list? I believe this dynamic will play out quickly, and by this time next year, a clear leader will emerge. I feel fortunate to have a front row seat as the market forms and I take great pride knowing LES is in the middle of it all. ■ For more information about the LES Asia Pacific region go to

March 2012


les News—New Members LES France Allain, Marie-Anne CHRU de Lille 1, avenue Oscar Lambret 59037 Lille cedex Tel: +03 20 44 67 11 Email: ma.allain@ Bachimont, Bruno Universitè de Technologie de compiëgne Centre Pierre Guillaumat Rue du Dr Schweitzer BP 60319 60203 COMPIEGNE cedex Tel: +03 44 23 44 23 Email: bruno.bachimont@ Barrault, Yann Institut Curie 26, rue d'Ulm 75248 Paris Tel: +06 83 33 80 35 Email: yann.barrault@ Barrio, CÈcile DERAMBURE Conseil 43, rue Vasco de Gama 75015 PARIS Tel: +01 77 1790 84 Email: cecilebarrio@ Betrancourt, Alain INAWA Combenoire, rue de Vernaison 26100 Romans sur Isere Tel: +04 69 28 43 94 Email: alain.betrancourt@ Bibow, Enno Soitec Parc Technologique des Fontaines, Bernin 38926 Crolles cedex Tel: +04 76 92 96 13 Email: enno.bibow@ Bocquet-Vandamme, Nicolas FIST SA 83, Bd Exelmans 75016 Paris Email: nicolas.bocquet. vandamme@


Bolba, Teodora Doina FIST SA 83, Bd Exelmans 75016 Paris Email: teodora.bolba@ Brayne, Chloè Cabinet REGIMBEAU 20, rue de Chazelles 75847 PARIS cedex 17 Tel: +01 44 29 35 00 Email: brayne@ Brohan, Julien FIST SA 83, Bd Exelmans 75016 Paris Tel: +01 40 51 00 90 Email: julien.brohan@ Christiansen, Erik CDC Propriètè Intellectuelle 47, rue de la Victoire 75009 PARIS Tel: +01 58 50 96 56 Email: erik.christiansen@ Corons-Bouis, Gladys Avenium Consulting Minatec 3, Parvis Louis Nèel - Bat 50 B 38054 GRENOBLE CEDEX 9 Tel: +04 38 78 03 34 Email: gladys.corons-bouis@ Coste, Jean-Patrice Aldebaran Robotics 168bis-170 rue Raymond Losserand 750145 PARIS Tel: +01 77 37 17 74 Email: jpcoste@ Cousseau, Marie CBRV 28 Place Henri Dunant 63000 Clermont Ferrand Tel: +04 73 17 84 5 Email: marie.cousseau@ Decobert, Jean-Pascal Cabinet Hautier 20, rue de la LibertÈ 06000 Nice Tel: +04 93 87 71 39 Email:

Licensing Executives Society International

Deregnaucourt, Jean Institut Pasteur 28, rue du Dr Roux 75724 Paris cedex 15 Tel: +01 40 61 32 43 Email: jean.deregnancourt@ Destefanis, Jody Lynn Schlumberger 1, rue Henri Becquerel 92142 Clamart Tel: +01 45 37 28 59 Email: jdestefanis@ Desvaux, Cèline FIST SA 83, Bd Exelmans 75016 Paris Tel: +01 40 51 00 90 Email: celine.desvaux@ Ducom, Savine SNECMA REAU 77550 MOISSY-CRAMAYEL Tel: +01 60 59 65 68 Email: savine.ducom@ Elias, Yann ILIAD / Freebox 8, rue de la Ville EvÍque 75008 Paris Tel: +01 73 50 26 36 Email: Galitschke, Virginie MorphoSys AG Lena-Christ strasse 4882152 Martinsried/ Planegg Email: virginie. galitschke@ Garcia, Tania PRES Universitè de Toulouse 9, rue Matabiau 31000 TOULOUSE Tel: +05 34 41 35 34 Email: tania.garcia@ Godard, Xavier Colbert avocats 139, rue Vendùme 69006 LYON cedex 07 Tel: +04 72 75 76 22 Email: x.godard@

Gulli, Olivia Pierre Fabre Mèdicament SAS 29, avenue du Sidobre 81106 CASTRES cedex Tel: +05 63 51 68 59 Email: olivia.gulli@ Harmonie, France CEA CEA SACLAY - Bat 446 PC 38 91191 Gif-sur-Yvette Tel: +01 69 08 91 51 Email: France.harmonie@ Herbreteau, Olivier SANOFI 174 avenue de France 75013 PARIS Tel: +01 53 77 45 76 Email: Hourcade, Jean-Charles France Brevets 47, rue de la Victoire 75009 Paris Tel: +06 07 24 78 64 Email: jean-charles.hourcade@ Huc, Olivier Minesoft 100 South Worple Way London SW14 8ND Email: olivier@ Iltis, Alain Universitè de Technologie de Troyes 12 rue Marie Curie 10010 TROYES Tel: +03 25 71 58 77 Email: Jacquot, Ludovic Ludovic Jacquot Conseil Sarl 16 rue Montbauron 78000 VERSAILLES Tel: +06 61 96 76 12 Email: ludovic.jacquot@ Kupfer, Sèverine LEEM 88, rue de la Faisanderie 75116 PARIS Tel: +01 45 03 88 88 Email:

Kuta, Daniële France Brevets 47, rue de la Victoire 75009 PARIS Tel: +06 80 67 22 15 Email: daniele.kuta@ Laguette, Jerùme RENAULT s.a.s. FR QLG R156 3 73 13/15 Quai Le Gallo 92513 Boulogne Billancourt cedex Tel: +01 76 83 50 72 Email: jerome.laguette@ Laurent, Yuan CDC Propriètè Intellectuelle 47, rue de la Victoire 75009 PARIS Tel: +01 58 50 84 90 Email: yuan.laurent@ Le Moullec, Christelle CNRS 1, place Aristide Briand 92195 Meudon cedex Tel: +01 45 07 57 62 Email: christelle.lemoullec@ Lecolier, Aurèlie Ifremer 155, rue J-J Rousseau 92138 Issy les Moulineaux Tel: +01 46 48 21 62 Email: aurelie.lecolier@ Levieils, Marc Cabinet REGIMBEAU 20 rue de Chazelles 75847 PARIS cedex 17 Tel: +01 44 29 35 00 Email: levieils@ Lourenco, George IGR&D 39, rue Camille Desmoulins 94805 VILLEJUIF cedex Tel: +01 42 11 48 25 Email: george.lourenco@

Machy, Delphine Universitè Paris 13 99, ave Jean-Baptiste Clèment 93430 Villetaneuse Tel: +01 49 40 36 74 Email: delphine.machy@

les News—New Members Mahfoudi, Abderrahim Sanofi-Aventis R&D 13, rue Jules Guesde BP 14 94403 Vitry-sur-Seine Tel: +01 58 93 33 55 Email: abderrahim.mahfoudi@ Mavre, Cyril Avenium Consulting Minatec 3, Parvis Louis Nèel Bat 50 B 38054 GRENOBLE CEDEX 9 Tel: +04 38 78 03 35 Email: cyril.mavre@ Ngo Mbem, Stèphanie Cabinet NGO MBEM 11 Boulevard de Sèbastopol 75001 PARIS Tel: +01 46 33 91 27 Email: sthephynmbem@ Olders, Pia ERAMET Tour Maine Montparnasse 33, av du Maine 75755 PARIS CEDEX 15 Tel: +01 45 38 41 87 Email: pia.olders@ Pican, Xavier Ginestiè Magellan Paley-Vincent 10, place des Etats Unis 75116 Paris Tel: +01 57 57 57 36 Email: pican@ Prieur, Delphine Incubateur d'Entreprises Innovantes de Franche Comtè 18, rue Alain Savary 25000 Besacon Tel: +03 81 66 67 29 Email: incubateur.

Roubach, Virginie IPSEN PHARMA SAS 65, Quai Georges Gorse 92100 Boulogne Billancourt Tel: +01 58 33 51 03 Email: virginie.roubach@ Savage, Luc France Tèlècom 38:40 rue du GÈnÈral Leclerc 92794 Issy les Moulineaux cedex 9 Tel: +01 45 29 61 58 Email: luc.savage@ Stefanidis, Christophe NAGRAVISION SA Route de Genëve 22-24 1033 Cheseaux Tel: +41 21 73 23 059 Email: Trinchero, Olivier Technicolor 1, rue Jeanne d'Arc 92443 Issy les Moulineaux Tel: +01 41 86 51 97 Email: olivier.trinchero@ Uccello Jammes, Anne-Sophie Lexcase Sociètè d'Avocats 24, rue Childebert 69002 LYON Tel: +04 37 23 11 11 Email: asjammes@ Zaninotti, Sylviane CEA SACLAY DSM/DIR-BAT 608, poin courrier No 152 91191 GIF SUR YVETTE CEDEX Tel: +01 69 08 17 06 Email: sylviane.zaninotti@

LES Scandinavia Adelhorst, Kim Dako Produktionsvej 42, DK2600 Glostrup, Denmark Email: kim.adelhorst@

Bergquist, Unni Rosberg System AS Norevegen 26, NO-5542 Karmsund, Norway Tel: +47 951 61 193 Email: Bove, Sylvie Lund University, Skåne University Hospital CRC, bldg 91, SE-20502 Malmö, Sweden Email: bove.sylvie@ Chenique, Caroline RWS Group - European Sales Office Rue Sainte Victoire 2, F-78000 Versailles, France Tel: +33 1 3923 2295 Fax: +33 1 3923 1196 Email:

Klöfver, Jörgen Sandvik Intellectual Property SE-81181 Sandvik, Sweden Tel: +46 26 26 10 93 Fax: +46 70 240 68 05 Email: jorgen.klofver@ Lahtinen, Otso Uretek Worldwide Myllyhaantie 5, FI33960 Pirkkala, Finland Tel: +358 4015 96 733 Email: London, Sonja Aurora Nokia Corporation Keilalahdentie 2-4, FI02150 Espoo, Finland E-mail

Clausen, Anders Birkebæk Dako Denmark A/S Produktionsvej 42, DK2600 Glostrup, Denmark Tel: +45 44 859 615; Fax: +45 44 858 432 E-mail: anders.clausen@

Lund, Erik MSD Sweden Rotebergsvägen 3, SE-19207 Sollentuna, Sweden Tel: +46 8 578 136 91 Email: erik.lund@

Haapaniemi, Jukka Ilmari Ahlstrom Corporation P.O. Box 18, FI-48601 Kotka, Finland Tel: +358 10 888 4952; Fax: +358 10 234 2149 Email:jukkahaapaniemi@

Pitzner-Bruun, Michael Kromann Reumert Sundkrogsgade 5, DK-2100 Copenhagen, Denmark Phone +45 70 12 1211 Email:

Hulgaard, Karin Vestas Wind Systems A/S Hedegaardsvej 88, DK2300 Copenhagen S, Denmark Tel: +45 9730 6716 Email:

Schodt, Mikkel Coloplast A/S Holtedam 1, DK-3050 Humlebaek, Denmark Tel:+45 491 13436 Email: dkmsc@

Kärki, Miikka University of Helsinki P.O. Box 33, FI-00014 Helsinki, Finland Tel: +358 504 156 687 Email: miikka.karki@

Seppälä, Ulla Alk-Abello A/S Bøge Allé 3, DK-2970 Hørsholm, Denmark Tel: +45 45 74 74 76 Email: usedk@

Staugaard, Søren Envision Energy Denmark Torvet 11, DK-8600 Silkeborg, Denmark Tel: +4520751602 Email: soeren.staugaard@ Westnes, Petter Laerdal Medical AS P.O. Box 377, NO-4002 Stavanger, Norway Tel: +47 5151 1700 Email: petter.westnes@ Zolin Conde, Alfredo Haldor Topsøe A/S Nymøllevej 55, DK-2800 Kgs. Lyngby, Denmark Tel: +45 2275 4418 Email:

March 2012


les News—In Memoriam Anna Szafruga


ear LES International, With deep sorrow, we inform you that our dear colleague Ms. Anna Szafruga passed away on Monday, October 17, 2011 after a long illness. We knew her as a valued and consistently hardworking associate of the Firm, as well as a genuinely good, warm and helpful person. Ms. Szafruga was a Patent Attorney employed with Polservice since 1976. For much of her tenure she was Deputy Manager of Patent Department I. Ms. Szafruga graduated from Warsaw University of Technology with a degree in Environmental Engineering. She additionally completed postgraduate studies in Foreign Trade at the Central School of Planning and Statistics in Warsaw. Ms. Szafruga was an active member of the Polish Chamber of Patent Attorneys from the organization’s inception in 1993. She operated first in the capacity of Secretary of Disciplinary Committee and then of the Appellate Disciplinary Court. She also was a member of the Disciplinary Court of the Polish Chamber of Patent Attorneys. She was involved in the formulation of legal regulations regarding the code of ethics for patent attorneys. Ms. Szafruga was a European Patent Attorney since 2004. She was a member of The European Patent Institute (epi) also being a member of The European Patent Practice Committee (EPPC) for two terms. She pro-actively participated in numerous Polish and international IP protection organizations. She was a founding member of the Polish 14

Barry Quest

Simon Alex (Sam) Heijn


had the privilege to meet, know and work with Simon in the seventies at the time LES Benelux was still a small society, almost embryonic, but with a few opinion leaders in intellectual property and licensing, mainly from well-established companies. I was a young and fresh business lawyer at Janssen Pharmaceutica/J&J watching and listening to these big personalities and sometimes big egos. Simon was different. Simon was big and tall–not just physically, though he was tall– but big in intellect and friendliness. He mastered the art and ability to see beyond the conversation to inspire others, including myself, with thinking and speaking quietly “out of the box.” It made him a natural leader. Simon was always Simon and never pretended or wanted to be more or less. Simon was one of the co-founders and pioneers of LES Benelux, now one of the most dynamic LES Societies with almost 400 members, highly diversified. Simon was also a mentor to whom I succeeded as President LES Benelux. In 1981, Simon was elected LES International President and I joined Biogen in Geneva, the early promise of biotechnology, a field in which anything and everything is possible. I will remember Simon and be grateful to him as a noble man, a “homme aimable,” remarkable among his peers, colleagues and friends and in his way of envisioning and inspiring people and the future of LES Benelux. Simon will always remain in our mind. ■

by Hayley French & Jonas Gulliksson

e are deeply saddened by the passing away of our friend Barry Quest. Barr y was past president of Britain and Ireland, past LESI secretary and served as chair and member of several LESI committees. Barry was always very loyal and generous to his friends and ideals. We frequently met with Barry and a small group of LESI enthusiasts in conjunction with the LESI meetings for private dinners, drinks and conversations. We will remember Barry as an exceptional person, a loyal supporter and constant contributor for LES, a mentor and a spark of energy at meetings, blessed with intellect, for his dry sense of humour and as a great colleague. We will always miss his enormous zest for life and wonderful friendship. ■

Anna Szafruga, continued National Group of AIPPI, Head of the Licensing Executives Society Poland (LES Poland) and deputy delegate of Union National Group. She was an exacting individual who always gave her best and expected the best of others. She will be very much missed by us all. Yours faithfully, Polservice Patent and Trademark Attorneys Office

Licensing Executives Society International

by Paul Appermont


les News—In Memoriam Fernando Pombo: a great master of life and the legal profession by Gonzalo Ulloa Suelves


ernando was born in Santander on March 31, 1943, into a family associated with the law. He founded in 1971, along with Ignacio Gómez-Acebo the firm which today bears their names. President of Gómez-Acebo & Pombo from its beginnings, Fernando was a man who knew how to take advantage of what life brought him and enjoy it to the fullest. An outstanding student and true colleague at the La Salle Brothers School in Santander, his youth was framed by his two passions: music–he and a group of friends formed an orchestra where he was the pianist–and sailing, first as a crew member of his father’s first Star class boat, Vindio, and then as captain. These two passions accompanied him throughout his life. He was member of the Board of Trustees of the Royal Theater, and at the same time enormously happy seated at the piano with his children and grandchildren. The sea was another focal point in his life. His love of music was equaled by this love for the sea and his native Santander. He knew how to keep the family tradition becoming Star class champion of Spain for seven years and “crucero” class world sub-champion with his Vindios. And Fernando was an excellent

student and outstanding lawyer. He studied Philosophy and Law at the Universities of Oviedo and the Madrid Complutense (1965) and did his doctorate under Professor Martin Achard at Geneva and at the Max Planck Institute in Munich with Professor Friedrich-Karl Beier (1970-1971). He also studied at the universities at Dundee (1978) and the Europa Institut in Amsterdam (1979). He was also an invited professor at the International Institute of Legal Studies in Salzburg in association with the University of the Pacific McGeorge School of Law (California) (1985-2011). He was a habitual lecturer at the Sorbonne, Harvard, Montpelier, Georgetown, Florence and Fordham. Fernando was an active member of LES International. He served as President in 1984 and played a key role for many years as a member of LES Spain and Portugal in contributing to the development of our LES’ goals and pursuits in the Portuguese and Spanish licensing community. A fter twenty-five years in executive positions within the International Bar Association (IBA), Fernando was its President from 2007-2008. As leader of the world’s largest body of international lawyers with more than 45,000 members from 200 countries, he centered his efforts on

the organization maintaining its leadership as a center of legal education and training. To that end he worked tirelessly to stimulate other organizations to take advantage of the IBA and use it as a forum for addressing the most pressing legal issues of the day. The need to pass on the inestimable values of professionalism and continuing development were constants throughout Fernando’s life. Much of that was d u e t o th e C ar m e n M o r a l e s , his wife, an astrophysicist and dogged investigator, who always supported his projects and undertakings; a woman who mastered the art of raising a family when Fernando was intensely involved in his profession. His dedication to the law and his firm were hallmarks of his long career. During the last years of practice he concentrated all his efforts in the areas of litigation and arbitration, working almost to the last moment. Fernando Pombo died in Madrid on November 4, 2011 leaving his wife Carmen and their children Clara, Regina, Carmen and Vindio. He also leaves as a legacy the Fundación Fernando Pombo, which has as its mission the development of social responsibility in the law and fomenting professional values such as meeting challenges head on, rigor and generosity. ■ March 2012


les News—In Memoriam

In Memoriam—Fernando Pombo (1943-2011) by Fernando Noetinger, LESI Past President


n November 4, 2011, with the passing of Fernando Pombo, LESI lost one of those persons that go through life leaving lasting memories on everyone who was ever acquainted with him. For many years, he fought bravely against an illness that he faced with the same determination and strength as he led his professional and family life, that is, with dedication and effort. It is not easy to make an account of the life of Fernando Pombo to the LESI community. He was passionate about music and yachting, an honest and fine international lawyer —both in his knowledge and in his beliefs— a generous and model husband, dear father and grandfather —as his wife Carmen, his children Clara, Regina, Carmen and Vindio, as well as his seven grandchildren, may clearly testify. I met Fernando in 1971, when we both worked at the same professional organization. In that year, together with Ignacio Gómez Acebo, he founded what would become one of the most important law firms in Spain: Gómez-Acebo & Pombo. This was the start of a professional project with roots in his studies at the University of Oviedo and the University Complutense at Madrid, as well as in his Doctorate in Geneva and the Max Planck Institute at Munich. In 1982, at a meeting of LESI


Delegates in Vienna, Bill Poms —the then President of LESI— told him that he was being considered as the next LESI President. Undoubtedly, it was a great honor that being only 39-years old he had been considered as leader of such a renowned organization as LESI. Thus, by the end of 1983, in Québec and at the young age of 40 years, Fernando succeeded Henry Hodding as President of LESI, in what would be a great administration which is still in the memories of all those that experienced his dedication and efforts for the benefit of our association. Fernando continued to be involved with LESI until his responsibilities at the International Bar Association (IBA) demanded increasingly more time, which logically led him to concentrate his efforts in the different responsibilities he faced. This did not mean that all those members who knew him would ignore him. He was the President of the International Bar Association in 2007 and 2008, after serving as Treasurer, Secretary and Vice-President, and also left an enduring memory in that organization. Fernando was an inveterate traveler, professor and lecturer who shared his knowledge and expertise, and never kept to himself whatever he felt could be of interest to his audience. He led every project he conceived, and did so with the same simplicity and humility that characterized his life.

Licensing Executives Society International

One of his last projects was the creation of Fundación Fernando Pombo, aimed at developing and promoting social responsibility among lawyers. Fernando’s personality made a deep mark in all of us, but one of his more outstanding qualities was especially important to all his friends and colleagues: his listening capacity. His generosity was readily visible in his conversations; it was easy to note that Fernando listened to his occasional conversational partner, in the broadest sense of the word. No matter the subject, Fernando would listen with interest, in a dialogue that was enriching to all. In other words, Fernando did not merely lend us his ear; he would dedicate entirely his time no matter which other matters needed his attention. In our times, when dialogue often seems to be a dialogue of the deaf, Fernando always lent his ear and his mind to his conversational partner. Dear Fernando, the large number of your LESI friends who today remember you with affection and admiration mourn your loss with sadness. Thank you, Fernando, for your teachings; thank you for the moments we shared; thank you for your leadership; thank you for listening to us attentively; thank you very much for your generous friendship. May you rest in peace. ■

les News—Legal Updates

Recent Amendments To The Patent Act Of Japan by Miyuka Nishi*


he law to amend the Patent Act of Japan was issued on June 8, 2011 and will be effective within a year of the issue date. Since the amendments will have strong impact on patent practice in Japan, this paper would like to show you their key outline as below: 1. Where a Licensed Patent Right Has Been Transferred—Protection of Non-Exclusive Licensees (Art. 99) Under the current law, where a licensed patent right has been transferred, the transferee can seek injunctive relief and damages against the unregistered non-exclusive licensees. Such results have been criticized as too harsh to the non-exclusive licensees in comparison with the transferee who knew or should have known the existence of non-exclusive license through due diligence before the transfer. In light thereof, the new law abolishes the registration system for non-exclusive license and provides that any non-exclusive license can be claimed against a transferee of the licensed patent right. According to the authority, the transferee will not automatically be regarded as a party to the license agreement and thus will have no contractual rights or obligations unless so agreed with the licensee. Therefore, under the new law, it is more important than before that the transferee (including a M&A buyer) should conduct thorough due diligence on license agreements and arrange in advance an assignment of licensor’s rights (e.g., royalty). 2. Where a Patent Application Has Been Filed by Non-Entitled Persons—Protection of True Inventors (Art.4 74) Under the current law, where a patent application has been filed by non-entitled persons, true inventors or their successors can file an action to invalidate the registered patent, but they cannot seek transfer of such registered patent. It has been criticized as insufficient to protect the true inventors. In light thereof, under the new law, the non-entitled persons should transfer the registered patent to the true proprietors upon their request. In such case, the new law also provides that third parties, to whom the patent rights was assigned or licensed by the non-entitled persons, would be regarded as non-exclusive

licensees, who can continue to use the patented technology, but will lose exclusivity. Therefore, under the new law, due diligence on true inventors of patented technology would become more important than before. 3. Where a JPO Panel Decision to Invalidate a Patent Has Been Appealed to IP High Court—Prohibition of Filing with JPO an Action to Amend the Scope of Patent (Art. 126(2)) Under the current law, where a JPO panel decision to invalidate a patent has been appealed to IP High Court, the patentee may simultaneously file with JPO an action to amend the scope of patent within a certain period of time. In such case, IP High Court may just return the case to JPO without review. This procedural inefficiency, going back and forth between JPO and IP High Court, has been criticized as preventing the case promptly settled and imposing on the parties financial burdens. Under the new law, where a JPO panel decision to invalidate a patent has been appealed to IP High Court, the patentee is prohibited from filing with JPO an action to amend the scope of patent. Instead, the new law establishes procedures such that the JPO panel notifies in advance the parties of its invalidation decision so that the patentee is given an opportunity to amend the scope of patent to circumvent the invalidation. 4. Where a Court Judgment in Patent Infringement Lawsuit Became Final and Binding—Limitation of Retrial (Art. 104-4) Under the Japanese patent system, there is a possibility that after a court ruled for a patentee in the patent infringement lawsuit, a JPO panel may invalidate the patent, and that the said court judgment may be rescinded through retrial on the grounds that “administrative disposition, based on which the judgment … was made, has been modified by a subsequent …administrative disposition” (Art. 338(1) (viii) of the Code of Civil Procedure). This retrial possibility has been criticized as rehashing the settled dispute given that the parties of a patent infringement lawsuit are given the opportunity and authority to make arguments on the validity of the patent under Art. 104-3. In light thereof, the new law Patent Act of Japan continued, Page 18

March 2012


les News—Legal Updates Patent Act of Japan, continued from Page 17

restricts the retrial of patent infringement lawsuit for the reason of a subsequent JPO panel decision to invalidate the patent in question. 5. Where an Invention Becomes Publicly Known As a Result of Proprietor’s Own Act—Exception to Lack of Novelty of Invention (Art. 30(2)) The current law lists certain cases where an invention is disclosed to the public through its proprietor’s own act, and sets out that, in such case, the invention will not lose novelty if a patent application is made for it within 6 months of the disclosure. In order to meet business need, the new law expands the scope of exception and provides that any inventions that have become publicly known as a result of the proprietor’s own act (except for publication in a patent gazette issued based on filing with JPO or a foreign patent office) will not lose novelty if a patent application is made for it within 6 months of the disclosure. 6. Where a Registered Trademark is Extinguished (e.g., Nullified, Invalidated)— Abolition of One Year Waiting Period for Application to Register the Identical or Similar Trademark (Art. 4(1)(xiii) of the Trademark Act) The current law refuses an application to register a trademark identical with or similar to the trademark extinguished within one year before the application (Art. 4(1)(xiii)). Although it seems to concern of possible confusion as to the source of goods or services, this concern can be covered by another basis to refuse a trademark application (Art. 4(1) (xv)). Due to the business need to acquire a trademark identical with or similar to the extinguished trademark in a timely manner, the new law has removed Article 4(1)(xiii) from the basis to refuse a trademark application. ■ *Partner, Onishi & Nishi Law Firm 18

Licensing Executives Society International

EU Competition Law Update 2012 by Susan Singleton, LLB


U competition law continues to provide some fascinating challenges, particularly for those practising in the intellectual property area. This article summarises a few recent changes and cases in the EU and UK. After the excitement of the new vertical agreements regulation 330/2010 and accompanying Vertical Guidelines followed closely by the specialisation and R&D block exemption regulations of the EU in 2010, new motor vehicle block exemption of 2010 and January 2011 Horizontal Guidelines, 2012 should be calmer in terms of new EU competition law regulations. However, now it is the turn of IP as the first items below show as the Commission has started looking at what competition block exemption will replace the technology transfer block exemption and is consulting on this in early 2012, something with which LES is already involved both at EU and UK level. In addition, the long awaited decision at the end of 2012 in the case relating to satellite broadcasting and exclusive copyright licences is considered below as is the case of Pierre Fabre concerning Internet selling restrictions, an issue which comes up frequently for those involved in advising on distribution agreements and Internet selling policies under EU competition law. The article below concentrates on EU competition law. There have also been fascinating cases not covered here under EU competition law, in particular Interflora in the IP field about the extent to which trade marks are breached when Google Adwords are purchased and used in various ways. Without doubt technology is as ever leading the law into more and more interesting areas. Frequently there is a need both to understand EU IP law as well as competition/anti-trust law. Patent, Know-how and Software Copyright Licensing and Competition Law—Revision to Block Exemption Regulation The European Commission is consulting on revision of its regulation on patent, know-how and software copyright licensing (the Technology Transfer Regulation) as it comes towards its 10th anniversary when it will be revised. Readers are encouraged to contact the writer with any problems or comments on the regulation as the EC Law Committee of the Licensing Executives Committee is putting together its comments on the regulation for submission to the Commission; the more comments received, the better, as to how the regulation has been applied in practice. For that purpose, the Commission has published a questionnaire as a first step in the review process. In light of the submissions and

les News—Legal Updates

after further consultation, the Commission will consider whether the current regime should be maintained, modifying or abolished. Replies to the questionnaires were requested in February 2012. Details are available at: technology_transfer/index_en.html The questionnaire is online at: technology_transfer/questionnaire_en.pdf Proposals for Change—UK Merger of OFT and CC In 2011 there were plans to merge the OFT and Competition Commission. In addition, major changes to UK merger law are envisaged. They have no specific IP implications but will have a major impact on competition law in the UK in general terms. Internet Selling and Competition Law and the Pierre Fabre Case In Case C-439/09 in October 2011 the CJEU examined the area of Internet selling bans. In the EU Vertical Guidelines there has for the last 11 years been a paragraph saying distributors should in general be free to sell over the Internet, although it has always been said and remains the case that in some cases an Internet selling ban would be justified. In the PFDC case the CJEU found that there was insufficient justification for the total ban on Internet selling imposed on selective distributors. EBook Pricing In December the EU launched a competition law investigation into e-book pricing including Penguin, Harper Collins and others. It believes that the companies may have, possibly with the help of Apple, engaged in anticompetitive practices affecting the sale of e-books. The Commission will in particular investigate whether these publishing groups and Apple have engaged in illegal agreements or practices that would have the object or the effect of restricting competition in the EU or in the EEA. The Commission is also examining the character and terms of the agency agreements entered into by the above named five publishers and retailers for the sale of

e-books. The Commission has concerns, that these practices may breach EU antitrust rules that prohibit cartels and restrictive business practices (Article 101 of the Treaty on the Functioning of the European Union–TFEU). In March 2011, the Commission carried out unannounced inspections at the premises of several companies active in the e-book publishing sector. To date, the Commission and the UK Office of Fair Trading have investigated in parallel and in close cooperation whether arrangements for the sale of e-books may breach competition rules. Before the Commission opened formal proceedings, the OFT had closed its investigation on grounds of administrative priority. The OFT has made a substantial contribution to the e-book investigation and will continue to cooperate closely with the Commission going forward. Go to: ference=IP/11/1509&format=HTML&aged=0&language =EN&guiLanguage=en Competition Law and Farming How competition law applies to cooperation between farming businesses has been examined by the UK OFT, which has issued some frequently asked questions on this which run to 30 pages and provide very helpful guidance for those advising in this field. Some of those involved in agro-chemicals and life sciences may have an interest in the farming sector and find the guidelines useful. Go to: OFT740rev.pdf Compliance Matters The European Commission has issued a 24-page booklet, “Compliance Matters,” for companies on competition law. Go to: Go to: press/2011/129-11 Competition Law and Broadcasting Last autumn, the CJEU held that a pub landlady could import a satellite decoder card to the UK under the “free EU, continued on Page 24 March 2012


les News—Legal Updates

Recent Trends In Patent Law Litigation—India: A Case Study In Point by Rani Boazz*


ith increasing globalisation of world markets today, licensing, be it licensing-in, licensing-out, exclusive licensing (most commonly found in niche markets) and non-exclusive licensing, plays a crucial role in the field of technology transfer in software, pharmaceuticals, telecommunications or engineering products and apparatus. Licensing can be a win-win situation for both the Licensor and the Licensee as the Licensor finds a welcome alternative to spending thousands of dollars and hours setting up business in some far outpost. For the Licensee, he is able to receive the rights of manufacture, and / or sell, and/or use the ‘invention’. This happy situation is further augmented by transferring and taking technology to all parts of the world–wherever there may be an urgent requirement of the same. The Catch-22 situation though, which a Licensor/ Licensee have to invariably encounter are infringers of the technology/ patent, for which remedial action is an absolute must for protection of their rights and long term business strategy. A recent case in point which hit the shores of Bombay and which created a sea-saw of sorts is the manner in which the Trial Court and the Hon’ble High Court of Bombay dealt with pertinent issues of law are worth analysing. This case explores for the first time the many nuances of the Indian Patents law vis-a-vis the Civil Procedure Code, the Contract law,


etc. The key issues assailed were: infringement, transactional, jurisdiction and the impact of Section 104 of the Patents Act, 1970. The said matter has been well contested by the competing parties with litigations and cross litigations filed in different courts and forums all over India. Background: The protagonist is the Licensee (also referred to as Sergi) the Indian subsidiary of a French conglomerate and the Exclusive Licensee of Indian Patent No. 189089 titled: “Method And Device For Preventing / Protecting Electrical Transformer Against Explosion And Fire,” which stands in the name of Philippe Magnier (the Licensor). The corresponding invention has been granted patents in at least 10 jurisdictions. Up until the invention by the Licensor, transformers were protected in the fire extinction mode only. In the 1990s, the said Licensor invented a mechanism/method for the prevention of explosion and fires in electrical transformers. Since then, the Licensor and Group companies have become the worldwide leader in Transformer Explosion and Fire Prevention. In early 2006, the Licensor filed a civil suit in the High Court at Kolkata,(being Suit No. 27 of 2006) alleging therein that the Defendant (also referred to as Ctr) was infringing the Licensor’s patent. The Hon’ble High Court declined to grant the Licensor any injunctive relief, but

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put the Defendants to maintaining accounts of their sales. In or about February, 2011 for reasons best known to the Licensor, the Suit was allowed to be dismissed for want of prosecution—a tactical error in hindsight. In the year 2009, the Licensee learned from the market that the said Ctr was manufacturing systems based on an alleged patent granted to them. On a file inspection at the IPO (Indian Patent Office) it was revealed that on 16 November, 2005 Ctr applied for a patent in relation to an alleged invention: “A system and method for preventing, protecting and/ or detecting explosion and / or fire of electrical transformer”. On 18 November, 2005 under provisions of the Patents Act, made an application for the early publication of their said application and the said application was published on the same day itself. To an RTI (Right To Information Act) application addressed to the IPO by the Licensee it was learned that in fact a patent Certificate (internal office communication) was issued in August, 2006. However, the same was inadvertently not published under Section 43(2) of the Patents Act, 1970 which is a requirement of the law. In view of the uncertainty in the matter, in or around January, 2010 the Licensee had filed by way of abundant caution at the IPO both a pre-grant and postgrant opposition. It is interesting

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to note that the IPO had the grant of the impugned patent notified in the Patent office Journal dated April 16, 2010 after a period of over three and half years as required under Section 43(2) of the Patents Act. This fact was intimated to the Licensee much after the entire furore began. Issues agitated: I. Infringement Ctr v Sergi & Ors [Suit 1 of 2010 before the Trial Court, Thane] In February, 2010, Ctr filed a Civil Suit, along with an application for interim reliefs, against the Licensee levelling baseless allegations of infringement of rights granted to them under the Patents Act, 1970. Ctr on February 15, 2010 obtained an ex parte without notice ad-interim order prohibiting the Licensee from selling their products to one Delhi Transco Ltd. (a Delhi Government Undertaking), pursuant to a tender notice, in which both the competing parties participated. The hearing commenced to vacate the ad-interim injunction and on the penultimate day when the Licensee’s arguments were nearing closure, the Learned Trial Court Judge was transferred. Hence the matter had to be heard de novo after court vacations when the new incumbent took charge. The said injunction Order of February15, 2010 was made absolute by the Trial Court Judge on February 25, 2011 in terms of: “Defendants are herby restrained from infringing Ctr’s patent by mak-

ing, using, offering for sale or selling the impugned product or any other product infringing Ctr’s patent and containing the identical / substantially similar system by themselves or through their authorised agents till final disposal of the suit.” Only the operative part of the Order was received on the said date. Being aggrieved by the said perverse Order and the refusal of the Trial Court to stay the Injunction, the Licensee filed an Appeal (being AO 246 of 2011) before the Hon’ble High Court of Bombay on several counts amongst others: a) The Trial Court Judge has inter alia failed to appreciate the law relating to injunctions in patent matter. Granting interim injunctions in patent cases is not the norm generally when the balance of convenience can be maintained by directing the Defendant to keep an account of profits until the expeditious disposal of the Suit. This trend has been set by the Apex Court in Bajaj Auto Ltd. v TVS Motor Co. Ltd [(2009)9SCC797] and a series of cases thereafter. b) Committed a grave error in failing to appreciate the Suit was premature and that on the date of filing this patent infringement suit in the Trial Court, no person was liable for the infringement of the Ctr’s patent, since the patent grant was not published in the patent Gazette. Consequently, neither the Licensee nor any other person in the world, was aware of the rights circumscribed by the Controller of Patents in favour of Ctr;

c) Failed to appreciate that Ctr’s patent is a patent whose validity has not been tested in the marketplace, and is consequently a “new patent” (dated 13/11/2005) in the eyes of law in comparison with the Licensor’s chronologically older patent (dated 5/11/ 1996); d) Failed to take into account the affidavits of Experts, supporting documents, case law filed by the Licensee in his defense; e) Has erred in passing the impugned order without stating his understanding of the complex technology involved in the dispute between the parties. Patent cases are several times more complicated and are not susceptible to prima facie evaluation as in trademark or copyright cases. In spite of the urgency in the matter (Ctr had started circulating mischievous letters along with a copy of the Operative part of the Injunction Order to all the Licensee’s customers/ prospective customers) the Hon’ble High Court ordered the matter to come up on the next date assigned by the Court computer (CMS). Being aggrieved, the Licensee filed an SLP (Special Leave Petition) being Civil No. 8384-8385 (2011) before the Hon’ble Apex Court (the Supreme Court of India). The Apex Court on March 17, 2011 stayed the operation of the Injunction Order of the Trial Court by 6 weeks. India, continued on Page 22 March 2012


les News—Legal Updates India, continued from Page 21

The Reasoned Order of the Trial Court was made available on March 19, 2011. The Licensee then filed Additional Grounds of Appeal pursuant to the Apex Court directions on May 2, 2011 and by way of which the stay was further extended by another 6 weeks. The Apex Court once again on June 20, 2011 further extended the stay of the Injunction Order by another two weeks. The Appeal came up before Justice J. H. Bhatia of the Hon’ble High Court of Bombay on June 27, 2011 when he ordered that the stay of the Injunction would continue until July 20, 2011, by which time the Apex Court would decide (in a related matter) on the issue of jurisdiction and the impact of the proviso to Section 104 of the Patents Act— which was crucial to the outcome in the current matter. On August 23, 2011, her Ladyship Justice R.S. Dalvi of the Bombay High Court held that the appeal on merits is infructuous, consequent to the Counterclaim being filed on April 8, 2010, which has been confirmed by this Court Order dated June 6, 2011, the Trial Court is ceased to have jurisdiction from that date. Therefore whether or not the Order of Injunction dated February 25, 2011 would be in force or not passed after the Counterclaim has been filed on April 8, 2010 can be seen only by the Court having the original jurisdiction.” II. Contractual: On December 2, 2010 the Licensee received the Purchase Order from Delhi Transco Ltd. (DTL) while Ctr is the losing party. On an urgent Application filed by Ctr, the Trial 22

Court on December 9, 2010 passed another ex-parte without notice order of injunction whereby the Licensee is injuncted from ‘taking any steps towards compliance of the purchase order dated 02/12/10 issued by the Delhi Transco Limited.’ In an Appeal (AO 1466 OF 2010) it was contended that the impugned Order which prevented the Licensee from submitting their drawings would lead to the Licensee being blacklisted as a result of a delay in doing so. The vacation Judge Justice U.D. Salvi of the Hon’ble High Court of Bombay after hearing the parties had the matter remanded back to the Trial Court with a direction as to strict timelines. On December 28, 2010 the Trial Court rejected the Licensee’s application for mere submission of drawings to DTL in pursuance of the Purchase Order. An Appeal was filed to this Order (AO 33478 OF 2010) on several counts: i) That submission of drawings would not amount to ‘selling’ the product to DTL; ii) That refusing to grant the Licensee their prayer in the application amounts to preventing the Licensee from exercising their statutory rights under patent no. 189089, of which they are the exclusive Licensee; iii) Failed to appreciate that refusing permission to the Defendant to submit their drawings to DTL would result in violation of the terms of DTL’s Purchase Order and would consequently result in financial consequences to the Defendant and in addition of being blacklisted in India. The Trial Court also failed to appreciate that refusal to

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submit drawings would also have a cascading effect on the Defendant’s business standing; iv) The Trial Court failed to appreciate that the drawings to be submitted at this stage are for approval only and the same may be approved or modified or rejected by DTL. Consequently, no prejudice would be caused to Ctr. Justice B.R. Gavai of the Hon’ble Bombay High Court on January 11, 2011 while granting the Licensee permission to submit drawings to DTL and quashing the Order of the Trial Court, made the following observations: “It is not in dispute that the Licensee participated in the tender floated by DTL, informing the said DTL about the suit in the Trial Court. It is clear that if the Appellant ( Licensee) fails to submit the drawings, every day’s delay would add to penal charges that would be required to be paid. It is to be noted that no affidavit showing what prejudice would be caused to Ctr if an application was allowed, has been filed in court. .... Taking into consideration all these aspects, I am of the considered view that the tests of prima facie case, balance of convenience and irreparable injury are in favour of the Appellant (Licensee).” To the SLP No. 1919/2011 filed by Ctr, the Apex Court on January 20, 2011 upheld the decision of the Bombay High Court. III. Jurisdiction and the impact of the proviso to section 104 of the Patents Act, 1970 S 104. - No suit for a declaration

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under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any Court inferior to a Trial Court having jurisdiction to try the suit. Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter- claim, shall be transferred to the High Court for decision. On April 8, 2010 the Licensee had filed a counter claim a few days subsequent to filing his Reply to the Injunction application as well as the Written Statement at the Trial Court. In view of the fact that the counter claim filed was beset with office objections and the hearing on the interim application was underway, the Licensees were keen to have the interim injunction vacated at the earliest. Thereafter, the Applicant’s, in accordance with s/104 of the Patent’s Act, continued to press for the transfer of the suit to the High Court. In response, the Trial Court Judge ordered that he would listen to all applications in the order in which they were filed, beginning with Injunction application and the application in relation to the Counter Claim would be taken up last. The said order of the Trial Court Judge was carried in a Writ Petition (WP No. 6994 of 2010) to the High Court. Justice J.H. Bhatia of the Hon’ble High Court ordered the Trial Court to hear the application relating to Counter Claim u/s104 of The Patents Act, 1970, and only after holding jurisdiction, should it proceed with other applications. The Trial Court Judge thereafter holds that his interpretation of the Hon’ble

High Court’s order was different; and that he would, as ordered by him earlier, examine the jurisdiction issue arising from the Counter Claim only after hearing the Injunction application. Fearing that any order in Injunction application would be challenged on the grounds that the preliminary objection to jurisdiction was not disposed off, Ctr requested the Trial Court Judge to dispose off the jurisdiction application. After a hearing on the issue, the Licensee receives the Order on January 6, 2011 wherein the Trial Court holds that he has jurisdiction while once again not giving a finding on the loss of jurisdiction, with reference to the said section 104 of the Patents Act, 1970. In the Appeal filed (CRA 62 0F 2011) by Justice B.R. Gavai of the Bombay High Court on February 2, 2011 held that “In my considered view the Trial Court Judge has totally failed to examine jurisdiction vested in him by not deciding the issue regarding jurisdiction in view of proviso of section 104 of the Patents Act.“ The Court further directed strict time lines for the Trial Court to decide first the issue of jurisdiction and thereafter in the event the Trial Court holds that it has jurisdiction, the Judge shall decide the Injunction application on or before February 25, 2011. On February 15, 2011 the Apex Court in SLP (Civil) No. 4214/2011 filed by Ctr held that they are not inclined to entertain the SLP and upheld the Order of the Hon’ble High Court of Bombay again stressing on the strict timelines already set by the Bombay High Court.

Pursuant to the Apex Court’s direction the hearing on the issue of jurisdiction commenced before the Trial Court and only the operative part of the Order was delivered on February 18, 2011 (a day late as per the Apex Court’s mandated timelines) when the Court held that the jurisdiction of the Court was not lost in view of Section 104 of the Patents Act. The Reasoned Order was made available after much delay. The hearing on the Injunction application began immediately. An Appeal to this was filed (CRA 185 of 2011)before the Hon’ble High Court of Bombay on the grounds that the Trial Court’s rejection of the Counterclaim Application on a mere technicality has no bearing on the fact that the Trial Court had clearly lost its jurisdiction over the matter; the Trial Court Judge has failed to appreciate the rationale underlying section 104 of the Patents Act 1970, that in any suit for infringement of a patent, every ground on which the patent may be revoked shall be available as a ground for defense. It is submitted that the Trial Court Judge also failed to appreciate that the revocation proceedings contemplated under the Patents Act interalia serve as an additional ‘filter’ in aid of maintaining the purity of the Patent Register. This case for the first time set a precedent for the Bombay High Court wherein the issue of Counterclaim and provisions of section 104 of the Patents Act, India, continued on Page 24 March 2012


les News—Legal Updates EU, continued from Page 19

movement of goods provisions” of the EU Treaty. However she did not have a copyright licence to broadcast most of the material other than live matches in her pub. The decision has caused those involved with exclusive licences of copyright in broadcasts to rethink their licensing models and caused many difficult legal issues. The court also held that a system of exclusive licences is also contrary to European Union competition law if the licence agreements prohibit the supply of decoder cards to television viewers who wish to watch the broadcasts outside the Member State for which the licence is granted. See Cases C-403/08 and C-429/08 Football Association Premier League and Others v. QC Leisure and Others, Karen Murphy v. Media Protection Services Ltd. IBM and Spares Had IBM hindered the access of independent maintenance service providers to critical spare parts? The European Commission has made legally binding commitments which had been offered by IBM under which IBM to make spare parts and technical information swiftly available, under commercially reasonable and non-discriminatory terms, to independent mainframe maintainers. The Commission had concerns that IBM may have imposed unreasonable conditions for supplying its competitors in the market of mainframe maintenance services in breach of EU antitrust rules prohibiting the abuse of a dominant market position. Commissioner Vice-President in charge of competition policy Joaquín Almunia commented: “I am pleased that we could find a swift solution with IBM to our competition concerns. Timely interventions are crucial in fast moving technology markets.” Mainframes are commonly used to perform mission-critical business processes. In order to ensure business continuity, expeditious maintenance is therefore essential. Maintenance services for IBM’s mainframes are offered both by IBM and by third party maintainers. Independent maintainers need rapid access to spare parts and technical information in order to compete effectively on this market. This concludes an investigation on the initiative of the Commission over concerns that IBM might have been abusing a dominant position on the mainframe maintenance market, the Commission recently said. The Commission’s decision is based on Article 9 of the Antitrust Regulation 1/2003. It makes the commitments legally binding on IBM without concluding whether there is an infringement of EU competition rules. ■

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1970 was deliberated in great detail. The Licensee relied upon a host of cases decided by the Apex Court and some of the other High Courts in India regarding time-lines for filing pleadings and the Counterclaim and that wherein once the Counter claim for revocation of patent is made by the Defendant, the Suit along with the Counter claim is required to be transferred to the High Court.[AIR 2003 SC 2508; 2001 PTC 775; AIR 2008 Uttarakhand 38] Justice B.R. Gavai of the Hon’ble High Court of Bombay on June 6, 2011 while allowing the CRA (Civil Revision Application), quashed and set aside the Order dated February 18, 2011 of the Trial Court and made the following observations: i) The Counter claim is in fact physically on record on April 8, 2010; ii) In my considered view, since the application in question was filed at a stage when issues were not framed, the Trial Court ought to have allowed the same; iii) The approach adopted by the Trial Court Judge to say the least is hyper technical. I find that the findings of the Judge regarding prejudice totally without substance, in the facts of the present case. In that view of the matter, I find that the Trial Court Judge has exercised jurisdiction vested in it with material irregularity warranting interference in revisional jurisdiction of this Court. Ctr filed an SLP No. 18224/2011 before the Apex Court and on August 2, 2011 withdrew the same, thereby accepting and acknowledging the finality in the verdict of the Hon’ble High Court of Bombay dated June 6, 2011, which held that the Trial Court had no jurisdiction in view of the filing of the Counterclaim on April 8, 2010 and transferring the Suit to itself. This case put the nail in the coffin to the entire falsity of Ctr’s baseless claims. Further, the immediate fallout of this Order is that the Injunction Order dated February 25, 2011 passed by the Trial Court is without jurisdiction and hence collapses. This then, have been a series of hard hitting judgements of the Hon’ble High Court of Bombay which in turn have been upheld by the Apex Court in the spirit of judicial awareness and activism as also for the protection of legitimate right holders. ■ © Rani Boazz 2011, Boazz Law Chambers


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les News—Reviews Book Review | By Richard Miller*

European Trademark Law Tobias Cohen, Jehoram, Constant van Nispen & Tony Huydecoper, Kluwer Law International, 2010, p. 728. ISBN: 978-9041131577


uropean Trademark Law by Tobias Cohen, Jehoram, Constant van Nispen & Tony Huydecoper is the definitive treatise on the law of trademarks as practiced in European Community and will be particularly valuable to practitioners with an interest in the Benelux countries (i.e. Belgium, Netherlands and Luxembourg) since there is extensive analysis of the parallels and discrepancies between the Benelux Trademark Act and the European Community Trademark regulation including the Court decisions that have influenced the implementation and interpretation of these laws. The authors make no pretense of accepting the wisdom of all aspects of the law or the way it is implemented but challenge aspects with which they disagree, providing always the reasons for their disagreement and helping the reader to draw his or her own conclusions. For example, there is a discussion in Section 9.7 of the book in which the authors criticize the approach of the European Court of Justice for going beyond the Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Members States relating to trademarks and the TRIPS Agreement (i.e. the Agreement on Trade-Related Aspects of Intellectual Property Rights) in requiring not just a Risk of Confusion, but also that the use by the alleged offender is “detrimental to a function of the trademark.” The authors take the position that the latter requirement is an unnecessary limitation. From a more practical day-to-day standpoint, the authors provide the tools that practitioners of all skill levels, and located in the European Community or elsewhere, can use to analyze and understand the factors involved in matters brought to them by their clients. The thorough analysis by the authors begins, in the early chapters, with the most basic explanation of trademark law (what is a trademark, what are its functions, an explanation of the rights the law is aimed at protecting and the rationale for this protection. It goes on to describe the various forms of marks for which protection is available and the criteria for determining

whether the mark or sign being used is in fact eligible for protection as a trademark or service mark under Community law. There is an insightful review of the procedures for registering a mark as well as an analysis of opposition procedures. Chapter 8, which covers the scope and content of the trademark right, provides a particularly instructive and concise primer. It goes into an in-depth analysis of all of the various factors used in determining whether one has a protectable mark and the breadth of protection available to the trademark owner. In doing so, the authors describe the factors used in determining whether use has been made of the mark, and whether the sign has been used in a “trademark” manner or is descriptive. The authors then go on to describe how an infringement claim would be analyzed both under the former trademark law and the present one. For example, there is a discussion regarding how a claim of likelihood of confusion would be decided. Factors such as direct and indirect confusion, time of the assessment, relevant public, post-sale confusion (i.e. where confusion is likely to arise not only at the time of purchase but also afterwards, the use of market surveys to determine whether confusion is present. As elsewhere in the book, the authors do not simply set forth the law; they, instead show, by way of example, how the factors are, in fact, applied in practice. Chapter 9 discusses the limitations of trademark rights including the relatively recent phenomenon of Comparative Advertising in which a manufacturer/marketer is permitted and even encouraged to use the trademarks of a competitor in advertising since such use is viewed in Europe as being pro-competitive and enables the consumer to best understand the choices available to him/her/it. Chapter 12 sets forth, in depth, the “use” requirements for obtaining and retaining trademark rights and how these rights can be lost if the owner of the trademark does not meet the requirements for distinguishing the goods to which it applies. Among other things, the authors provide a nice analysis of European law regarding coexistence between identical and confusingly similar marks and some anomalies that arise as a result of harmonizaTrademark Law, continued on Page 29 March 2012


les News—Reviews Book Review | By Anthony Venturino*

Pharmaceutical, Biotechnology, and Chemical Inventions Edited by Duncan Bucknell, Oxford University Press, 2011, p. 1200. ISBN: 978-0199289011


his is a useful book and, considering the breadth of its information, it is reasonably priced at about $590. It has about 1,200 pages split into two volumes and covers IP procurement and enforcement in Australia, China, India, Canada, the U.S., and a number of European countries. The title says Pharmaceutical, Biotechnology, and Chemical Inventions and there is some information particular to pharmaceutical, biotechnology, and chemical inventions. However, a good deal of the information applies to any invention. Thus, this is a handy general reference book. The book covers how different countries handle the following topics: • defining the person of ordinary skill • claim construction • inventorship • ownership • obtaining patent rights • patent term • patent validity • amendment • invalidity proceedings

• infringement • patent litigation strategy • regulatory approval • data exclusivity • competition law • IP rights other than patent rights • commercial arrangements

Its sections on various aspects of patent prosecution and litigation give procedures and strategies and


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went beyond the basic introductions of these topics I have seen elsewhere. For example, I learned useful details about grace periods and secret use in foreign countries. However, do not expect a completely comprehensive discussion of patent prosecution and litigation strategies. This would be too much to expect from a 1,200 page book of this breadth. Many of these topics could be a book on its own. Some of its sections on U.S. patent law will need some revising for the recent America Invents Act. However, much of its discussion of U.S. patent law procedures and strategies is still relevant. Its sections on data exclusivity, other IP rights, trade secrets, trademarks, licensing and other commercial arrangements give nice overviews. For example, I would recommend the chapter comparing Data Exclusivity (non-patent marketing rights) with patent marketing rights to anyone getting involved in pharmaceutical protection. It has enough detail to give a reader, such as a lawyer or layman, a good start towards understanding the laws, procedures and strategies in a particular country. This can help the reader understand the opportunities and constraints available under the practice of that country. As a result, the reader can better communicate and collaborate with its counsel in that country and avoid at least some surprises. It may also enable the reader to give his or her own employer or client preliminary information before getting more definitive advice from its foreign counsel. The book would be most useful as a library reference for multiple practitioners, because, in most cases, no one person will need all the information in all the chapters. However, it is also useful for a lawyer or layman involved in worldwide patent prosecution or enforcement. For someone needing an overview in any of these areas in any of these countries, this book gives you a view of the forest not blocked by the trees. ■ *Novak Druce + Quigg LLP.

les News—Reviews Book Review | By Paul B. Germeraad*

Changing The World By Technology Transfer: Licensing & Commercializing of Intellectual Properties With Perspectives from Art of War by Sun Tzu M. Rashid Khan, Ph.D, 1st Edition, 2011, p. 196. ISBN: 978-1456897055


his book is a wonderful blend of solid licensing fundamentals and a quick read of how licensing can impact the future of societies. I’m very impressed at how the level of detail of the former has been woven into the high level societal impact in a way that is both comprehensible to the casual and advanced reader alike. The book starts with an overview of how licensing bridges the gap between parties and nations. At first this might seem like a big topic to handle, but the book moves easily into explaining the basics of intellectual property, and the simplest forms of licensing. From this basic viewpoint the book shifts to a higher level viewpoint, defining appropriate strategies for the protection of IP. This gives the reader the needed perspective of licensing and technology transfer from the standpoint of the licensor / developer. Folded into this viewpoint is how IP as a whole benefits society and nations by encouraging innovation and its commercialization. Many examples are provided that make understanding and remembering the author’s points easy. Moving on through the process of transferring IP, the topic of opportunity assessment and development is discussed. This again is conducted from a very thoughtful checklist standpoint, up through the high level governmental view of how IP rights systems create value. It is this blend of viewpoints that makes the book intriguing to both new-to-the-field and advanced IP practitioners alike. Following the general pathway of technology development and commercialization, the topics of Valuation and Marketing are addressed. The viewpoint

is that of a business person, making the book a reference for licensing professionals and company directors alike. Somewhat unique to this book is its perspective of valuation from an overall business strategy and needs standpoint. This is a topic often overlooked in other works in this field. Agreement development and drafting is often a dull topic, and often most suited for those working as legal professionals. Of note here is the author’s treatment of the subject from both a legal and business leader’s perspective. This particular portion of the book would certainly make good reading for all parties of a company’s negotiation team before entering into discussions with other parties. It provides a solid guidance for what to do to prepare ahead of time for negotiations. Also provided in the book were the elements and importance of long term relationships. This topic is key because Open Innovation best-practices highlight again and again the need to watch out for the trap of win-lose negotiations. The book shows clearly how IP at various stages of maturity can be best utilized by companies. Specific guidelines for managing the relationship at various stages of IP and business maturity are provided. The guidelines are illustrated with examples so again the reader has the opportunity to understand the guidelines as well as their commercial implications. This book is appropriate for use in many ways. It could be used as a teaching tool for young professionals in local colleges and communities who are seeking to develop their own IP-based businesses. It is also suitable more seasoned business leaders seeking information on licensing of IP as part of their ongoing business operations. Finally, the book would make a good read for those professionals contemplating taking the CLP exam, both because of the content overlap and vivid examples that would likely make retention of the topic easy. ■ *President, Intellectual Assets, Inc.

March 2012


les News—Reviews Book Review | By Jean-Christophe Galloux*

Sport and Intellectual Property Prof. Jacques de Werra, LGDJ, Bruylant and Schulthess, 2010, p. 124 (French and English). ISBN: 978-3725560059


his volume edited by Prof. De Werra is the first opus of a series dedicated to IP: every year, a new volume will propose to a large public the acts of a conference organized by the University of Geneva. Relationships between Sports and Intellectual Property are ancient, closer than expected, complex, and are developing fast since professionalization has overrun this area of human activity. In the past, sports authorities were very cautious about IP questions, and saw IP rights as the Trojan horse of commerciality and money in an area dedicated to gratuity and aristocratic ideal. For an example, the Nairobi Agreement on the protection of the Olympic symbols (1981) may be seen, at the time it was adopted, as a tool against commercial exploitation of the image of the Olympic games. As times have changed, the paradigm of sports have too: to a large extent, sports are becoming an economical activity, or, to be more precise, sports are becoming as much the subject of an economical exploitation as any other subject. Thus, it is not surprising that IP rights now play an important role in developing such activity. The six contributions gathered in this book cover most of the field where IP and sports meet, offered by specialists –mostly practitioners of these topics. In fact, who better than a Swiss academic could organize a conference and a publication, when most of the European and International Sports organizations are hosted in Switzerland ? Mrs. Chappuis, in-house lawyer to the International Olympic Committee (IOC), explains which are the “Olympic properties” and how they are protected. The IOC is the owner of all rights in and to the Olympic Games and Olympic properties described in Article 7 of the Olympic Charter, which rights have the Olympic Movement the potential to generate revenues for such


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purposes. “It is in the best interests of the Olympic Movement and its constituents which benefit from such revenues that all such rights and Olympic properties be afforded the greatest possible protection by all concerned, and that the use thereof be approved by the IOC. The Olympic Games are the exclusive property of the IOC which owns all rights and data relating thereto, in particular, and without limitation, all rights relating to their organisation, exploitation, broadcasting, recording, representation, reproduction, access, and dissemination in any form and by any means or mechanism whatsoever, whether now existing or developed in the future.” The IOC determines the conditions of access to and the conditions of any use of data relating to the Olympic Games and to the competitions and sports performances of the Olympic Games. The Olympic symbol, flag, motto, anthem, identifications, as defined in Rules 8–14 of the Charter, may be collectively or individually referred to as “Olympic properties.” All rights to any and all Olympic properties, as well as all rights to the use thereof, belong exclusively to the IOC, including the use for any profit-making, commercial or advertising purposes. The IOC may license all or part of its rights on terms and conditions set forth by the IOC Executive Board. Nevertheless this protection granted to the IOC by national laws and the Nairobi Agreement is insufficient to fight some commercial behaviors such as the “ambush marketing.” Prof. Yves Cherpillod’s contribution (University of Lausanne) deals precisely with the ambush marketing. The Macmillan English Dictionary defines “ambush marketing” as a marketing strategy in which a competing brand connects itself with a major sporting event without paying sponsorship fee. Prof. Cherpillod describes the numerous and creative ways to practice ambush marketing (I do not want to expose here all of them so as not to give bad examples in a review dedicated to IP official licensing…) and points that most of them are lawful. Trade mark and copyright laws are often insufficient to stop advertising campaigns based on these practices; unfair competition is more accurate,

les News—Reviews but the efficiency of this tool varies from one country to another. The remedy may be to rely on special provisions in national or international laws: the author gives the example of Article L 333-1 French Sport Code which recognises to sport organisations which create a sporting event, an exclusivity on the commercial exploitation of this event, not only on the images of it but, more largely, for all valuable aspects of it. A new kind of IP rights: new opportunities to apply licensing principles. Mr. François Gindrat, in-house lawyer to UEFA (Union of European Football Associations) presents the protection of trade marks related to sport events and sport institutions. He takes example from UEFA’s experience, but all major event’s trade marks owners, such as “Tour de France,” face the same problem: sharing Prof. Cherpillod’s conclusions, Mr. Gindrat pleads for special provisions in national laws or international law to protect the name of the major sport competition (for example, the Portuguese law protects UEFA’s name) or to enlarge Article 6 of the Paris Convention in order to include such names. Heijo Ruijsenaars and Pranvera Kellezi, legal advisers at the European Broadcasting Union (EBU), provide a brief overview of the media, IP rights and competition law aspects of exclusive broadcasting rights for sport events and their limits. This rich contribution takes into account the “White paper on Sport” release by the EC Commission in 2007. The two authors present the main case laws in Europe on this topic and address more precisely the question of the limitations under

competition law (do joint selling or joint acquisition of broadcasting sports rights restrict competition; how to analyze exclusive vertical agreements). In conclusion, limitation of the exclusivity scope appears to be a remedy for restrictions of the competition event if it contradicts to some extent the industrial policy of the media groups and sport organisations. The two last contributions deal with other IP rights aspects in sports: Nick White, solicitor in London with sports image rights; Henry Peter and Jacques de Werra, with the place of trade secrets in high sports. Mr. White presents a concise overview which explores the means to protect image rights in the UK, Germany, China and the U.S. He also presents image rights case studies. The closing contribution of Prof. De Werra and Peter gives a very interesting analysis of the scope of the protection against misappropriation of the trade secrets in the field of professional sports made in the light of recent disputes. They conclude that sports sanctioning bodies apply essentially the same standards of protection of trade secrets as the others as the ones resulting from general IP regulations, most specifically from Article 39 TRIPS. We leave the final word to the editor of this book: “If intellectual property has something to learn from the sports industry, it can conversely be considered that the sports industry may have something to gain from the assimilation of the key values of IP law.” We are now convinced. ■ *University of Panthéon-Assas (Sorbonne Universities, Paris)Attorney, Paris Bar.

Trademark Law, continued from Page 25

tion and discuss the factors that can lead a trademark to become the generic name for the goods in question and thereby loss of trademark rights as well as advice on avoiding this fate. Chapter 14 discusses the background and implementation of the Community Trademark beginning with its adoption, its objectives, and its relationship to the national trademarks in the member states. It discusses the requirements for obtaining a CTM registration, and the grounds for refusal of an application. It also discusses the procedural aspects of filing, examination, searching, invoking of priority of an earlier national application, and filing of opposition to an application. Also covered are registration, publication, duration and renewals. There is an interesting discussion in Chapter 17 regarding the interplay between trade names and

trademarks and a concise explanation of how disputes would be resolved depending on the particular permutation of the dispute (older trade name versus younger trademark as opposed to more senior trademark versus newer trade name). The remainder of the book discusses the relationship between trademark and copyright law and the impact of competition law on intellectual property rights. European Trademark Law by Jehoram, van Nispen & Huydecoper provides a thorough analysis of the law of trademarks throughout Europe, but especially from a Benelux perspective. It is an exhaustive analysis and an important addition to the library of anyone practicing intellectual property law in the European Community. ■ *Partner at Eaton & Van Winkle, New York. March 2012


les News—Meetings


Licensing Executives Society International

les News—Meetings

This April, we’ll be saving the world – will you join us?

From 1-4 April the global licensing world will descend on Auckland, New Zealand to explore how innovation might be commercialised to “save the world” from threats such as disease, poverty, food shortages, over-population and environmental destruction. For more information about the Licensing Executive Society International Annual Conference 2012 please refer to our website:

Keynote Speakers Include: Gunter Pauli Creator of The Blue Economy and the Zero Emission Research Initiative (ZERI) Sir Ray Avery Scientist, Inventor, Social Enterpreneur and New Zealander of the Year 2010 Francis Gurry Director General of the World Intellectual Property Organisation (WIPO) Megan Clark CEO of the Commonwealth Scientific and Industrial Research Organisation (CSIRO) Ben McNeil Economist, Sustainability Expert and Author of The Clean Industrial Revolution Nick Gerritsen Catalyst, Entrepreneur, Specialist in Commercialisation of Technology and Director of Aquaflow Bionomic Corporation and Carbonscape


Auckland, New Zealand Commercialising Innovation to Save the World Hosted by LESANZ

Mark Stevenson Co-founder of Cultural Learning Agency Flow Associates, Entrepreneur and author of “An Optimist’s Tour of the Future” In addition to keynote presentations, the complete programme also contains a wide selection of engaging workshops from leading global organisations and is available to view online at Nowhere will you find a warmer welcome than New Zealand and the opportunities for exploring our beautiful country abound. Register before the 10th February to receive the Early Bird discount and discover why Auckland is the only place to be in April 2012.

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16/01/12 3:18 PM March 2012


les News—Meetings

LES Scandinavia Annual Conference 2012 9 -11 September 2012, Helsinki, Finland

COMMERCIALIZING CREATIVITY In the Annual Conference of LES Scandinavia, the following topics (and many more) will be discussed by top lecturers, such as Mr. Alexander Stubb, Minister for European Affairs and Foreign Trade, Mr. Huang Xing, Ambassador of the People’s Republic of China and Professor Alf Rehn, in addition to speakers from major corporations, such as Microsoft, Google, Nokia, Sony BMG, Spotify and Rusnano.

Incentives for Creativity, Design and Innovation; Global Perspective

Content Distribution in Transformation

Creative Madness

Managing IPR and License Agreements

Investing in IPR

Patents as Business Drivers for SMEs

Please visit the conference web site at: or contact: WELCOME! Organizing Committee


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