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CONTENTS 2
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Dear readers,
CONTENTS
We sincerely hope that you are all in good health and keeping in good spirits during these undeniably uncertain times. We have all had to adapt to working out of our comfort zones, which I am sure has been very challenging at times for you all as it has been for us.
level in the IP industry from all over the world. Issue 7 of The Global IP Matrix magazine is packed with informative and exciting articles to keep you up to date and educated in what has been developing in the global IP industry during the past few months and into the future. We hope you enjoy reading our publication.
From all of us at The Global IP Matrix & Northon’s Media, PR & Marketing
However, we continue our quest to look to the future and deliver exclusive content to you, direct from thought leaders working at ground
We want to thank all our contributors for sharing their knowledge, opinions, and expertise in this new edition of the Global IP Matrix magazine.
Patents
Cannabis IP rights
Carlos Northon
Eproint Medical Cannabis: a glam makeover for a new generation.
Elvin Hassan
Pages 5/6
Lexorbis Indigenously manufactured patented drugs exempted from Drug Price Control!
Page 19/20
Page 7
Julius & Creasy Confidential Information – Sri Lankan Perspective.
IP Knowledge past and future
Page 8/9
Page 21/23
Page 9/10
Page 24/25
Gorodissky & Partners Pharmaceutical Extorsion. PatentSeekers Patent Searching 101: How to Efficiently Conduct A Search.
Trademarks Page 13/15
Stillwaters Law Firm TASTE & SMELL AS TRADEMARKS IN NIGERIA: a panacea to restraint of trade.
US/China trade agreement
ECTA Sailing Beyond Paris and Berne. Anku. Anku At-Law Traditional Knowledge and related IP Issues in the era of the Covid-19 pandemic.
CEO & Founder Northon’s Media PR & Marketing LTD Publisher of The Global IP Matrix & Women’s IP World carlos@northonsprmarketing.com Editor for The Global IP Matrix & Women’s IP World Head of International liaisons for Women’s IP World elvin@womensipworld.com
Craig Barber
Head of Design for The Global IP Matrix & Women’s IP World info@northonsprmarketing.com
Sonia Randev
Senior account manager sonia@northonsprmarketing.com
Covid 19 times Page 27/29
Innventiva – Espacio Legal Intellectual Property amid times of COVID-19: a strategic view
Page 16/17
Unitalen Attorneys at Law Interpretation of Contents on Intellectual Property of the First Phase of Economic and Trade Agreement between China and the United States
Disclaimer: all images in the articles are provided by authors and Upsplash.com, Pixbay.com and cleanpng.com
THE GLOBAL IP MATRIX EDITORIAL BOARD Gabriela Bodden
Marek Bury
Partner at Eproint www.eproint.com Costa Rica
Managing Partner and Patent Attorney at Bury & Bury www.bnb-ip.eu Poland
Ms. Brenda Matanga
Laura Castillo
Managing Attorney & head of practice at B Matanga IP Attorneys for Africa
www.bmatanga.com Zimbabwe
Partner at Innventiva Espacio Legal www.innventivalegal.com Dominican Republic
Mr. Afamefuna Francis Nwokedi Principal Counsel of Stillwaters Law Firm www.stillwaterslaw.com Nigeria
Ms. Ruta Olman
Immediate past president of ECTA & Associate partner of METIDA
www.metida.lt Latvia
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125mm (H) x 180mm (W)
Pakistan Office:
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Trademark, Patent, Design, Copyright, Domain name registration, litigation & enforcement services
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(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
Email: UnitedTrademark@UnitedTm.com Websites: www.utmps.com and www.unitedip.com
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Indigenously manufactured
patented drugs exempted from Drug Price Control! Written by Manisha Singh and Co-Authored by Swati Gupta LexOrbis - www.lexorbis.com The Ministry of Chemicals and Fertilizers (Department of Pharmaceuticals) has notified an order amending paragraph 32 of Drugs Prices Control Order 2013, effective from January 3, 2019:
in India, not for the patented drugs developed outside of India. However, after the DPCO 2019 amendment, the patented drugs developed outside of India would also be exempted from the drug price control. However, the patentee is required to manufacture it in India to avail of this benefit.
a manufacturer is producing a new drug patented under the Indian Patent Act 1970 (39 of 1970) for a period of five years from the date of commencement of its commercial marketing by the manufacturer in the country.
The aim of the DPCO, 2013, issued under section 3 of the Essential Commodities Act, 1955, is to ensure that essential drugs are available to all at affordable prices. However, the 2019 amendment would have a detrimental effect on the affordability of drugs under para 32 exception, as the pharmaceutical companies could now keep the prices high for the patented drugs developed outside India. The Delhi High Court has notified a petition by All India Drug Action Network (AIDAN) challenging the amendment of DPCO. The petition highlights the challenges associated with price control of the patented drugs according to the recent amendment:
As per the amendment, new drugs patented in India are exempted from price control for a period of five years from the date of commencement of their commercial marketing. This amendment was intended to boost the patenting of innovations in India. Most likely, it would encourage foreign pharmaceutical companies to manufacture and commercialise their new patented drugs and medical devices in India. Under the Essential Commodities Act, 1955, the Government has passed many Drug Price Control Orders (DPCO) from time to time to regulate the price of essential and lifesaving drugs to make notified medicines available at a rate fixed by the Government. In order to encourage the Indian Innovators to innovate new drugs, paragraph 32 of DPCO 2013, has exempted new patented drugs or nep delivery system of indigenous origin from the price control. After the para 32 amendments in 2019, drugs patented by foreigners in India were also exempted from the price control. This exemption is available to a manufacturer producing a new drug patented under the Indian Patent Act 1970 (39 of 1970) for a period of five years from the date of commencement of its commercial marketing by the manufacturer in the country. Earlier, this exception of price control was available only for the new patented drugs or new drugs involving a new delivery system indigenously developed
- The new exemption has questioned the clarity w.r.t. date of commencement of its commercial marketing by the manufacturer in the country. It is difficult to ascertain whether the commencement of commercial marketing defines the date of manufacture of drugs in India or the date of import of the drug in India or the date of making the drug available to the retailers. - The amendment has increased the list of drugs exempted from the price control since the drugs which are not of indigenous origin are also exempted from the price control. - Also, the amendment has removed the term ‘product patent’ from para. 32(i) of DPCO 2013 thereby extending the exemption of price control to include any kind of patent including devices, dosages, forms, compositions, and process patents as long as it relates to a new drug. - The petition has also questioned the link between Drug Price Control order and The Patent’s Act 1970.
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Conclusion: The 2019 amendment of the Drug Price Control Order is a welcome step enabling foreign pharmaceutical companies to manufacture and commercialise their innovative drugs in India without any price control at par with indigenously developed drugs. Further, it would facilitate the introduction of new drugs in India, which were only available for foreign patients, or its availability to Indian patients was very expensive. On the one hand, this amendment would encourage building up manufacturing capacity in India and, on the other, attract FDI in the drug sector. Some activists feel that the 2019 amendment would have a detrimental effect on the affordability of drugs as it gives a free hand to fix the price of the new drug. However, after three years of the grant, the Controller can grant the authorisation of a patented drug to the third party in the form of a Compulsory Licence if the patented drug is not available at an affordable price. The 2019 amendment would boost the manufacturing of pharmaceuticals in India by giving price control exception to the patented drugs for a period of just five years.
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Confidential
Information – Sri Lankan Perspective
The law protecting confidential information (or trade secrets) is varied worldwide.
Written by Anomi I Wanigasekera, Partner & Head of the Intellectual Property Division, Julius & Creasy www.juliusandcreasy.com
Sri Lanka & the law
Confidential information may relating to Undisclosed refer to any information of Information value or commercial sensitivity The law relating to Undisclosed Information that is not already available to is embodied in the1 Intellectual Property Act (Act) of Sri Lanka. the public. Undisclosed information may include any information of commercial value from information about a company’s financial affairs, business operations, or customer engagements to trade secrets that are the modus operandi or signature of a company. For instance, the formula for Coca-Cola syrup, which bottlers combine with carbonated water to create the company’s flagship cola soft drink, is a closely guarded trade secret since 1891. The secret recipe has a commercial value that identifies the owner over any other product in the market. Such a secret recipe gives its rightful owner an edge over other competitors, and protection of the same is key to the business. Similarly, a source code for a computer programme, a new chemical formula or a scientific technique, unpublished research information, business plans of an employer, even a list of valued customers may all form part of confidential information. Intellectual Property rights are thus secured through the concept of confidential information.
Protection of trade secrets
Protection of trade secrets or undisclosed information is an intricate subject in itself: The rights are not registrable as in the case of trademarks, Patents, Industrial Designs, nor would there be a particular time period undisclosed information ought to be protected. Yet the protection of the same is essential as such information may be key to a particular business entity. To promote the protection of undisclosed information, most companies enter into Non-Disclosure Agreements with their employees and business partners, adopt appropriate physical and digital security measures in data storage, and only share information with the staff that needs access to such information. There is an implicit understanding that business advisors or outsource agents would protect the confidentiality of the information disclosed in business ventures, even where no explicit agreements are entered.
Information shall be considered as “undisclosed information”:
It is not as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question; “if it has actual or potential commercial value because it is secret, and if it has been subject to reasonable steps under the circumstances by the rightful holder to keep it secret.” 2 The Act further stipulates that undisclosed information shall include “technical information related to the manufacture of goods or the provision of services; or business information which includes the internal information which an enterprise has developed so as to be used within the enterprise.” 3 The law of Sri Lanka bars the misuse of undisclosed information: “Any act or practice… that results in the disclosure, acquisition, or use by others, of undisclosed information without the consent of the person lawfully in control of that information … and in a manner contrary to honest commercial practices shall constitute an act of unfair competition.” 4 “Disclosure, acquisition or use of undisclosed information by others without the consent of the rightful holder may result from industrial or commercial espionage; breach of contract; breach of confidence; inducement to commit any of the acts (above); and acquisition of undisclosed information by a third party who knew or was grossly negligent in failing to know, that an act referred to (above) was involved in the acquisition.” 5 Even in case of patent registration, utmost care is taken to protect the confidentiality of information: The Act stipulates that before granting of the patent, the files may only be examined with the written permission of the applicant. 6
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Penalties are set for misuse of undisclosed information: “Any person, who willfully and without lawful authority, discloses any undisclosed information shall be guilty of an offence under this Act and shall on conviction after a trial before a Magistrate be liable to a fine not exceeding five hundred thousand rupees or to imprisonment for a term not exceeding six months or to both such fine and imprisonment.” 7 In the case of HC (Civil) 31/2017/IP Justice Ruwan Fernando in his Order, granting the Interim Injunction in favour of the Plaintiff company has comprehensively analysed what constitutes Confidential Information. “…..the Defendants could not argue that the information gained by them in the course of their employment fall into information which was easily accessible to the public or they were part of the knowledge, skill, and experience that was gained by them during their employment and therefore, they are at the liberty to use them or disclose them after the employment without breaching their duty of fidelity to their former employer or non-discloser agreement.”
The Sri Lankan stance on confidential information seems to be inclusive, counting in confidential information as intellectual property. In conclusion, creative thoughts that may turn readily available public information to right-worthy confidential information are given recognition in the Sri Lankan legal setting. 1
No.36 of 2003 S.160 (6) (c ) S.160 (6) (e ) 4 S.160 (6) (a ) 5 S.160 (6) (b ) 6 S.82 (2) 7 S.160 (8) (a ) 2 3
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Pharmaceutical
Extortion
Written by Vladimir Biriulin, Partner at Gorodissky & Partners www.gorodissky.com
The topic of compulsory licensing occasionally surfaces on the Russian horizon. The law (Article 1508 of the Civil Code) provides that a trademark protected in Russia based on its state registration or in accordance with an international agreement or used as a trademark, or a designation used as a trademark but not registered as such in Russia may be recognised as a well-known trademark. However, it can only be recognised from the date indicated in the application if that trademark or that designation became widely known among relevant consumers in Russia as a result of its intensive use.
It is Not the Date of the of the Application All this, even though there are several
longstanding provisions in the Civil Code: one allows the use of a patent without the owner’s permission in the interest of defense and security (Article 1360) (Russia has not and hopefully will not come to that situation). Additionally, Article 1362(1), allows filing a claim to court for a compulsory license if the invention is not used within four years. Again, this provision is not used frequently by interested persons, if at all. There is yet another (Article 1362(2)): if the patent owner cannot use his invention without infringing the rights for another patent, he may ask
the owner of that other patent for a license and in case of refusal sue him in court. This provision echoes Article 1358.1 that explains what a dependent patent is: an invention the use of which is not possible without the use of another, earlier invention, is a dependent invention. It is also provided in Article 1362(2) that a compulsory license can be granted by the court if the dependent invention is an important technical achievement and has significant economic advantages over the first invention. In fact, the fight for a compulsory license always hinges upon these two essential points: the importance of achievement and economic advantage. The provision in Article 1362(2) became attractive for some Russian pharmaceutical companies that initiated several court actions during the last years. A patent is dependent if a researcher makes his research based on an invention made by another company. That earlier invention has proved its effectiveness in treating a disease and costs dearly for understandable reasons. So, the new researcher takes the patented substance, builds some superstructure upon it, like particulars of use, the inclusion of the patented substance in his composition, etc. In all fairness, some dependent inventions indeed prove to be useful and raise the first invention to a new height. In some other cases, researchers make insignificant improvements. Their effort serves the only purpose in that it should be sufficient to pull through substantive examination and satisfy patentability criteria. The next step (if the owner of the dependent patent is sued) is to prove the technical importance and economic advantage of his dependent invention. For that purpose, technical expertise, in most cases, is ordered by the court. Patent owners of the first patents were able to rebuff their attempts to piggyback on their findings in several cases. However, sometimes they failed. Nativa, a notorious Russian researcher in other people’s patents, regularly scans through the inventory of efficient drugs and builds its business on “inventing” known substances. In a recent case, it lost to Bristol-Myers Squibb selling the drug Dasatinib.
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Approximately at the same time, it launched another medicine on the market – SunitinibNative protected by its dependent patent No 2567535. Nativa obtained that patent in the wake of the Eurasian patent No 005996 owned by Sugen and Pharmacia & Upjohn companies.
Conflict between Patents
Nativa was sued by Sugen and Pharmacia at the Moscow Commercial Court for infringing their patent (case No A40-166505/17-151481). Nativa filed a counter-claim asking for a compulsory license from the plaintiffs. The litigation lasted for more than a year. It went through four court instances and ended up with a judgment in Nativa’s victory at the IP court (the plaintiffs were obliged to grant a non-exclusive license to Nativa). The judgment was appealed at the Supreme Court, but its Economic Collegium refused to consider the appeal because it did not find any procedural mistakes of the lower courts. One may question the reasons for the plaintiffs’ defeat and deliberate whether the judgment was handed down correctly; however, it is worth putting a finger on the problem and examining the hints (advice given by the court). The plaintiffs argued that Nativa’s drug contains the substance according to their Eurasian patent. Nativa claimed that it used its own invention and agreed that it was dependent in relation to the plaintiff ’s patent; it had asked the plaintiffs for a license; however, it was refused. As expected, Nativa claimed that its invention has “undoubtedly important technical achievement and has significant economic advantages,” which was confirmed by the Russian patent office that would not have granted a patent in the absence of these characteristics. Nativa explained that the economic advantage consists of lower production expenses. Both the plaintiffs and the defendant asked the court to order technical expertise to clear up the issues requiring special knowledge in chemistry, pharmacology, medicine, and patents. Among other questions, there was a question of whether Nativa’s invention is an
important technical achievement and whether it has significant economic advantages over the first patent. The experts confirmed both the importance of the technical achievement (no explanation of importance is contained in the judgment) and the economic advantage (understandable) of the dependent patent. The experts, however, diverted in their opinions. One of the experts made the opposite conclusion. Nevertheless, the court accepted the findings of those experts who confirmed the importance and economic advantage of the dependent invention and obliged the plaintiffs to grant a compulsory license.
The Appeal
The plaintiffs appealed the judgment at the court of appeal. They asked the court to order another technical expertise, but the court refused the request. Otherwise, the court confirmed the conclusions contained in the first judgment and upheld the judgment of the 1st instance court.
The Cassation Appeal
The plaintiffs appealed the judgment at the IP Court. In their appeal, the plaintiffs argued that there was no agreement among the experts with regard to the “importance of the technical achievement” of the dependent invention. At the same time, the plaintiffs opined that if there is a technically important dependent invention, it might have various advantages over the first invention from the point of view of pharmacology (better efficiency, safety, fewer side effects, etc.) however those therapeutical advantages of the dependent invention should be confirmed by full-fledged clinical trials which were not carried out. They also argued that Nativa provided no convincing evidence with regard to significant economic advantages. The IP Court meticulously examined the arguments of both sides and statements of both court instances. At the same time, the court pointed out what the plaintiffs could but not had done. The plaintiffs stated that the circumstances in connection with the use of the invention in the medicinal preparation might be established only by examination of the samples of the medicinal preparation. The court explained that this assertion is not grounded because the required information may be contained in the documents characterising the medicinal preparation, where the stages of the technological process are described. The plaintiffs argued that those documents could not be used because Nativa submitted them; however, the plaintiffs did not claim that those documents could be unauthentic or falsified. The IP Court reminded that the lower courts had noted the circumstances showing the technical advantages of the dependent invention. The courts concluded, among other things, that the difference in the speed of appearance of the active substance in the blood of rabbits and that the sunitinib may demonstrate polymorphism confirm the importance of the technical achievement of the dependent invention.
The plaintiffs, while stating that no full-scale clinical trials were conducted to confirm therapeutical advantages of the dependent invention did not nevertheless provide evidence refuting the results of the experiments and polymorphism of sunitinib. Therefore, the IP Court did not find it possible to re-evaluate the conclusions of the lower courts with regard to the importance of the technical achievement of the dependent invention. Nor did the IP Court find sufficient grounds to recognise as ungrounded the conclusions of the lower courts with regard to the economic advantages of the dependent invention. There are no clear cut definitions of “significant economic advantages” of one invention over another. The court of the 1st instance accepted the findings of two experts and accepted their calculations. The experts found that Nativa’s selling price of the drug was 20% less than that of the plaintiffs. The plaintiffs criticised those calculations referring to their own large expenses; however, they did not provide any reasonable calculations saying just they had spent about one billion USD in investments and development of the drug. The plaintiffs submitted reports of two experts to the cassation instance in which the experts explained the meaning of “important technical achievement” and “significant economic advantage”. However, the cassation instance refused to accept them because, according to the procedural rules, those reports could have been submitted to the courts of 1st and 2nd instances only. Indeed, the cassation instance of the court does not have the competence to establish circumstances and accept and evaluate new evidence. The court noted that every party should prove the circumstances on which it relies and should run the risk of the onset of consequences of observing or nonobserving procedural rules.
The plaintiffs appealed the judgment of the IP Court with the Supreme Court though unsuccessfully.
The Cassation Appeal
Attempts to obtain compulsory licenses have been, and most probably will be made. Several governmental authorities and local pharma companies raise their voice in favor of compulsory licenses. These discussions somehow may influence the general public creating an opinion that compulsory licensing (and cheaper drugs) in the pharma sector is good (the fact that reproduced drugs may have inferior quality is not put to the fore). It is true that in some cases, the courts ruled against compulsory licenses though the opposite, as shown in the above case, may also be true.
In such circumstances, when they come to the Russian market, the owners of the original patents should be prepared in advance for the fight with potential compulsory licensees and take into account the lessons of this case. In fact, the IP Court laid bare the points where the plaintiffs could but did not do what was needed. Lessons should be learned.
The plaintiffs questioned the competence of the experts who examined “significant economic advantages”. Here again, the cassation court responded that this issue should have been raised at the hearings of 1st and 2nd court instances. The compulsory license included the condition that the license’s cost should be 10% of the revenue. The plaintiffs argued that this condition does not correspond to generally accepted rules under comparable circumstances. However, the plaintiffs did not provide any evidence supporting those statements, nor did they submit any relevant calculations. The plaintiffs stated that the lower courts should have ordered additional expertise. The cassation court responded that no such motion had been filed by the plaintiffs to the 1st or 2nd instance of court. The cassation court did not accept other pieces of evidence presented by the plaintiffs because, like in the preceding cases, that evidence should have been presented at the hearing at the courts of 1st and 2nd instances.
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Patent Searching 101: How to Efficiently Conduct A Search Geraint James is an IP Manager at Patent Seekers Limited and has developed an expertise in patent search and analysis across multiple disciplines. He is a key member of the company’s patent search teams. He is involved in thousands of searches for international patent attorneys both in private practice, in-house, and for major blue-chip companies. Geraint has also helped develop PatWorld, a global patent search database, which has been designed to include all the tools required for a professional patent search, with an intuitive user interface and tools for use by searchers of any level of expertise.
Introduction
Patent searching can be a valuable tool to ensure a productive and efficient route through the lifecycle of a product. At Patent Seekers, we conduct a variety of professional patent and non-patent searches, ranging from pre-filing (patentability), through to State of Art, Invalidity (patent busting), and Freedom to Operate (FTO). Some IP professionals are often put-off from conducting their own patent searching as they believe they lack the expertise to conduct an efficient search, or simply do not have the time to perform a search.
Written by Geraint James, IP Manager at Patent Seekers Limited www.patentseekers.com With over 100 years of combined searching experience, we have fine-tuned our searching practices to be as productive as possible. This article will share with you the tips, tricks, and tools that we use to run efficient patent searches using the PatWorld patent search database, along with the type of searches that you can run that produce the most valuable results in the shortest time possible.
How to begin a search
There is no one-size-fits-all approach when it comes to patent searching, and each search type will require a slightly different search strategy. Broadly, these can be broken down into three categories: I. Prior art (for Patentability, pre-filling, etc.) –worldwide territories, with no date limitations. II. Invalidity – apply a suitable date limitation (e.g., search for documents with a priority date before the priority or application date of the patent in suit) III. FTO – limit to the territories of interest and consider using a date limit for patents in force (i.e., filed in the last 20 years). Setting appropriate limitations for your search will reduce the number of results to review and improve efficiency. Once you have set an appropriate limitation, the next step is to generate a list of keywords that can be used to describe the invention. Spending a few minutes exploring possible synonyms and variations in spellings (e.g., aluminium and aluminum) will improve efficiency when searching as you can refer to this list to generate your search strings. When gathering keywords, it may help to write a concise search scope to help focus on the key aspects of the invention.
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Staying Organised
Keeping an organised record of your search and results will significantly improve the efficiency of your searching. Patent searching is often an iterative process, where your search strategy will evolve as you search and analyse results, therefore knowing what results you have already reviewed will help prevent reviewing the same result twice. PatWorld includes several tools to organise your searching, integral to the projectbased interface, which saves search histories and folders into separate work files. Search histories will keep a log of your search and can be used to remove the results from one search from another. Additionally, keeping an organised record of your search and results will allow you to revisit a search.
How to get the most out of the search tools 1. Semantic searching
The semantic (smart) search tool is a fantastic way of producing patent results with little to no time and effort. When running a semantic search, consider how well the text describes the invention to be searched as semantic algorithms will extract what it deems are key concepts from the text and searches these within patents. Semantic searches can be performed on search scopes, draft claims, invention disclosures, or text from other relevant patent documents such as abstracts or claims. We would recommend running a semantic search as the first step in a patent search, as this can often generate results with minimal time spent and form the basis for additional searching.
2. Keyword (Text) Searching
When conducting a quick, investigatory search, limit your search terms to the key synonyms, and focus on the main ways of describing your invention. Use proximity operators to search for keywords in proximity to each other. PatWorld proximity operators are n#, where # represents the distance between two keywords—for example, searching (“walking stick” n5 pedometer), which would search for “walking stick” within five words of “pedometer”. After reviewing these results, you may uncover additional synonyms or ways of describing the invention that you could use to expand your searching.
3. Classification Searching
Classification searching effectively negates the need to search for synonyms of keywords. For this reason, when searching within a classification using keywords, it is important not to search for any keywords used in the class descriptor (e.g., avoid searching for “waking stick” in a classification for such). Additionally, classifications can often be combined to search for overlapping subject matters; for example, searching for a classification containing walking sticks AND a classification for pedometers will return results that are walking sticks with pedometer functions. Use the classification tool to search for relevant classifications or look at the classifications listed on similar patents.
4. Assignee/Inventor Searching
Name searching can be used to find patents that are likely associated with a company or a product on sale. If searching for the main proprietor name (or main inventors) does not produce the results needed, consider investigating possible parent companies or subsidiaries as IP can often be held in these names. If your search is associated with a product and said product has a registered trademark, check the trademark holder’s name as this could give the names of the patent holders.
PatWorld also features a star rating system, which can be used to rate a result from one to five, and a note feature that adds a note to the result.
Reporting Results
The Report Generator tool in PatWorld can generate a professional standard report in a few seconds. After rating and annotating the results you want to include in the report, click in the “generate report” tool and select the content of your report. Using these tools will negate the need for manually copy-and-pasting information from a web browser into a word processor that can be laborious.
5. Analysis tools
Analysis tools such as charts, graphs, and maps can be used to gain valuable insight into competitors and patent landscapes. Using the analysis tools in PatWorld, we can analyse a plurality of metrics, including filing trends of competitors, global distribution of a technology and analyse agents/representatives who work with competitors, or who are active in an area. To analyse a competitor, simply search the company name in the Assignee field and click “create charts” on the results generated. Alternatively, to gain a snapshot analysis of a technology, create a broad dataset (using keywords and/or classifications) that would feature a good representation of the technology to be searched.
Conclusion
1. Checks on relevant results
Once you have found relevant results, one of the quickest and most efficient ways of uncovering other relevant results is to check the citations of the relevant patents. This requires very little time and effort and can be an iterative process where you may check the citations of new results found in this way. Additionally, checking for other patents owned by the assignee and/or inventor can often return other similar results.
Analysing Results
When viewing and analysing results, PatWorld features several tools that you can use to identify relevant results quickly. When viewing and analysing results, we recommend using the highlighting tool to highlight key terms and increase the review speed. When selecting keywords to highlight, consider focussing on the main terms that will distinguish results (i.e., key inventive features). Additionally, the keywords-in-context tool will only show you where specific keywords appear in the context of the patent result.
Using these tools and techniques can significantly improve the efficiency of your patent searching. Investing a small amount of time before searching to gather keywords and ascertain limitations for your search will improve the speed and accuracy of your search. Keeping your searching focussed on the key aspects and using tools such as semantic searching and citation checks where available will help you prioritise your search time better. Advancing your search by including classifications can provide greater coverage and identify results that would not be picked up from keyword searching only. Analysis tools can provide valuable data on competitors and patent trends. These charts and graphs can provide an excellent supplement to a search report. Finally, use the report tool to generate a professional standard report document as efficiently as possible.
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J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
One of the oldest and leading IP companies in Bulgaria Professional, cost effective services and quality advices
Areas of practice: *IP Protection *IP Enforcement *Anti-counterfeiting *Litigations *Domain name registrations *IP watches
PO Box 1152, BG-1000 Sofia, Bulgaria South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47, e-mail: jvp@jvpatents.com
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TASTE & SMELL AS
TRADEMARKS IN NIGERIA: panacea to the restraint of trade Written by Ifeanyi Emmanuel Okonkwo, Associate at Stillwaters Law Firm www.stillwaterslaw.com
The Need
Trademark in Nigeria means a mark used or proposed to be used in relation to goods. A mark as defined by the TradeMarks Act (TMA) 1967 indicates ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof ’. 1 But we know the sad realities of such clauses – unless such a clause is in line with public policy and is found to be reasonably necessary, it is usually construed void when tested in court. When the blue-pencil rule is applied in interpreting such a restraint clause, what is often left may not be enough to protect the proprietors’ trade secrets. Besides, the law protects the rights of every free citizen to participate in trade. Truly, the restraint of trade clause is not the best of methods. The Trademarks Act essentially is there not to restrain trade/traders, but to protect and promote trade. It is an Act that protects the right to use one’s invented trademark to the exclusion of others. The owner of such a mark could, of course, assign or licence another to use the mark. The point is that the consumers are not deceived into mistaking the origin of the goods of the proprietor. That way, the proprietor’s customers are protected, and so are the proprietors’ goods, goodwill, and accruable profits. Suppose then, the Nigerian TMA defined a mark to include smell and taste. The implication is that when an employee leaves the employer’s company, that employee cannot produce the same product of the employer or a confusingly similar or identical product. This is because the TMA protects against the use of confusingly similar marks. 2 Any such mark must be distinctive of a registered mark.
The Problem
Now, apart from the fact that the Nigerian Act did not define a mark to include taste and smell, there is another problem. The problem here is that a mark sought to be registered has to be presented or placed in a graphical manner. Such is the necessary interpretation of regulation 23, 24, 25, and 30 of the Trademarks Regulation (TMR). The problem is not unknown to developed countries. According to Cornish, Llewelyn, and Aplin: 3 ‘Smell marks face even greater difficulties. When the smell is the main object of the product (as with scent or an air freshener), it should not be capable of being a trademark at all. Even when it is secondary additive (detergent, shampoo, notepaper) it is registrable only on very strong evidence of recognition as a trademark, assuming that in some way the applicant has complied with the ‘graphical representation’ requirements set out in Sieckmann (2003) RPC 38 EC J.’
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While it is easy to represent such marks as names, letters, numerals, even colour in the space provided in Form 5, Some have argued that it may be practically impossible to represent a smell or taste in the space provided and present the same online during e-registration. Submitting in person, however, may be much easier than through online submission. This is because the product could be glued to the space and covered. The same can be said when the product is tasted. Now the application makes it clear that what is sought to be registered is not the product but the smell or taste. Truly, sounds, smells, taste, and touch have been successfully recorded and registered in the foreign practice of trademarks. Accordingly, Lea and Cornford 4 assures us: ‘Smell marks are recorded both as having been registered, such as ‘the smell of freshcut grass’ for tennis balls, and as having been refused registration, such as the ‘smell, aroma, or essence of cinnamon’ in relation to furniture…However, the ECJ in Sieckmann, while confirming that smells may act as distinctive signs, appears to have rejected all current practical methods of representing them graphically.’
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It is to be noted that the requirement of a graphical representation is a condition established by the Trademark laws of these countries. Unfortunately, the Nigerian TMA did not expressly provide for such. The graphical representation is a consequence of the Trademarks Regulations. Kerly brought out the full fact and implications of the Sieckmann case. He reported: ‘In Sieckmann, the application was to register an olfactory mark comprising “the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester),” and the structural formula was provided: C6H5CH=CHCOOCH3. In addition, Mr. Sieckmann gave details where one could obtain the chemical, he submitted with his application an odour sample of the sign in a container and stated that the scent was usually described as ‘balsamic, fruity with a slight hint of cinnamon’. The ECJ answered the various questions referred to it in the following way. First, it stated that a trademark might consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. Second, as far as the graphic representation is concerned, it laid down the requirements that it must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective. Third, the ECJ stated that, in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, description in written words, a deposit of an odour sample, or a combination of those elements. 5
‘In the light of those emphatic statements, one may ask: how else can one attempt to provide a satisfactory graphic representation of an olfactory mark? There are some possibilities that Mr. Sieckmann did not put forward, such as defining the odour by referencing accepted standards of classification for odorants such as Zwaardemaker. Still, it is very difficult to find an alternative that would satisfy the requirements laid down by the ECJ. The practical effect of the Sieckmann judgement is probably that it is impossible to obtain a valid registration of an olfactory mark unless or until the requirements for recording the ‘sign’ in question are changed to allow representations other than purely graphic or descriptions in words’.
Kerly concluded that the same fate befalls a taste mark. It is to be noted that the major reason behind the graphical presentation is a certainty. There must be a certainty to even a layman as to what is sought to be registered.
The Way Forward As far as signs/marks of smell and taste are concerned in foreign countries, the ECJ has made their registration almost practically impossible. That fate, however, is not and should not be the same for Nigeria. First, our deduction of the ‘graphical requirement’ is traced to the Regulation, which can be amended easily by the Minister of Trade and Commerce. Secondly, it is my hope that the IPCOM bill sought to be passed would redefine the meaning of a mark and trademark to include smells and taste. That way, many of the problems on restraint of trade will be alleviated if not totally solved; proprietors can be fully protected, and employees/traders can enjoy the fullness of their rights to work/ trade.
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Kerly went on to provide his view on the matter on pages 17-18:
Section 67, TMA. 2
Section 5, 11, 13 TMA 3
Cornish, Llewelyn, and Aplin, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights (7 edn: Sweet & Maxwell) 2010, p. 738 paras. 18-34.. 4
Gary Lea & Peter Cornford, Trade Marks: law and practice (3rd edn: Jordans, 2012) Pp. 27-28. 5
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Kerly’s Law of Trade Marks and Trade Names (14th, edn: Thomson; Sweet & Maxwell) 2005, p. 7
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Interpretation of Contents on Intellectual Property of the First Phase of the Economic
and Trade Agreement between
China and the United States On January 15, China and the United States signed the First Phase of Economic and Trade Agreement. The agreement is good news for China, America, and the entire world. This agreement includes nine chapters: the preamble, intellectual property, technology transfer, food and agricultural products, financial services, exchange rates, transparency, expanded trade, bilateral assessments, and dispute settlement. At the same time, the two sides agreed that the United States would fulfill its commitment to phase out tariffs on Chinese products and realise the transition from raising tariffs to lowering tariffs.
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Written by Lei Zhao Partner/Attorney at Law at Unitalen www.unitalen.com From the perspective of content distribution, the intellectual property part is located in the first chapter of the agreement, which fully reflects the importance both countries attach to intellectual property protection. Intellectual property, whether in the formulation of laws and regulations or judicial system reform and other aspects, has played a leading role in China. It is also one of the most intense focuses of economic and trade negotiations between countries, especially China and the United States. The intellectual property part of the ChinaUS economic and trade agreement includes the contents that have been already adopted
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by Chinese laws and regulations as well as various reviews and trial guidelines in the past two years, such as the application of punitive damages, curbing malicious registration, and conditional transfer of the burden of proof. It also includes the new, even need to make an important change in reviews and enforcement practice at the present stage, such as the extension of the validity of a patent, reduce the transfer of criminal investigation in the administrative law enforcement standard, and the establishment of the rapid judgment enforcement system.
I. Improving the protection of trade secrets
registration on October 10, 2019. It lists the factors to be considered in the examination of a malicious application for trademark registration to enhance the operability and transparency of the examination of trademark registration. And through the penalty such as fines and other ways against the malicious trademark applicants and trademark agencies, China is severely cracking down on malicious trademark applications and illegal agency behaviour.
According to article 1.3 and article 1.4 and article 1.5 of the agreement, all natural persons and legal persons can be liable for the infringement of trade secret law and infringement of trade secret. They should be held accountable to prohibit behaviour in a way that completely covers the theft of trade secrets. Moreover, in the civil judicial procedure, the burden of proof or evidence could be discretionarily transferred to the defendant. The above contents were reflected in the newly revised anti-unfair competition law in 2019. In addition, article 1.7 of the agreement also involves “lowering the threshold for the initiation of criminal law enforcement, and eliminating any content that takes the determination of actual loss by the holder of business secrets as a prerequisite for the initiation of a criminal investigation on the infringement of business secrets”.
Ii. Highlight the protection of intellectual property rights of pharmaceuticals In regard to patent protection, section 3 of chapter I of the agreement specifically provides for the effective protection and enforcement of drug-related intellectual property rights, “including patents and undisclosed test data or other data submitted to meet the requirements for market approval”. Specific measures proposed in articles 1.10 and 1.11 include allowing “supplementary data to meet relevant patentability requirements” establish “effective mechanisms for early resolution of patent disputes”. In addition, in article 1.12 of the agreement, it is proposed to “extend the duration of the patent to compensate for the unreasonable delay in the patent authorisation or drug marketing approval process”. For patents on new drug products approved for market in China and on the methods for their manufacture and use, the extension period may be limited to a maximum of five years, and the total period of validity of the patent shall not exceed 14 years from the date of approval for the market in China. Relevant provisions on extending the duration of patent protection for innovative drugs have also been presented in the 2019 amendment to the patent law (draft).
III. Combating piracy and counterfeiting Sections v and vii of chapter I of the agreement emphasise the need to combat piracy and counterfeiting; there are two targets, namely online infringement (including piracy and counterfeiting on e-commerce platforms) and product infringement related to public health or personal safety. In terms of dealing with Internet infringement, article 1.13 (1) of the agreement proposes to establish an effective notification and removal system to enable IP owners to take effective and prompt actions against the infringement in the Internet environment. In addition, the
V. Strengthening judicial protection of intellectual property rights article 1.14 of the agreement, “for failing to take the necessary measures to control the infringement of intellectual property rights main e-commerce platform, should take effective action to combat platform of counterfeit or pirated goods”, and by way of business licenses revoked network punishment “repeatedly failed to curb counterfeit or pirated goods sales e-commerce platform”. To some extent, this imposes an obligation on the major e-commerce platforms to take necessary measures to rectify the infringement of intellectual property rights. From the perspective of the harmfulness of piracy and counterfeit products themselves, counterfeit goods with health and safety risks will have a significant impact on public health or personal safety, so we should focus on cracking down on these products that affect the national economy and people’s livelihood. Article 1.20 of the agreement provides for the destruction of counterfeit goods in terms of border measures, civil and criminal justice procedures and, in addition to the destruction of the goods themselves, “shall order the immediate destruction, without compensation, of materials and tools primarily used in the production or manufacture of counterfeit or pirated goods”.
Iv. Cracking down on malicious trademark registration Article 1.24 of the agreement states that “in order to strengthen trademark protection, both parties shall ensure the full and effective protection and enforcement of trademark rights, especially to combat malicious trademark registration”. Previously, the newly revised Trademark Law in 2019 had made adjustments in two aspects: regulating malicious applications, hoarding registration, and increasing penalties for trademark infringement. Revised trademark law in response to the malicious registered enhanced obligations on the use of trademarks, article 4 of the specified “malicious trademark applications without intent to use shall be rejected”, and the malicious registered, malicious litigation rules on the punishment measures in article 68 specifically warning or fines; In order to further implement the latest provisions of the Trademark Law, the State Administration for Market Supervision and Regulation issued several provisions on standardising trademark application for
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Section 9 of chapter I of the agreement proposes that the transfer procedure from administrative law enforcement to criminal law enforcement should be improved. Article 1.26 proposes that “if according to objective criteria, there is a ‘reasonable doubt’ based on clear facts about criminal violations of intellectual property rights, the administrative department shall be required to transfer the case to criminal law enforcement”. Article 1.27 of the agreement also calls for greater civil relief and criminal penalties for intellectual property theft or infringement. Specifically: “as transitional measures, possible theft or infringement of intellectual property should be contained, and the application of existing remedies and penalties shall be strengthened. To deter possible theft or infringement of intellectual property rights by imposing heavier penalties in a manner close to or up to the maximum legal penalty in accordance with the relevant laws on intellectual property rights. As a followup, statutory minimum and maximum compensation, prison sentences, and fines should be increased to deter future theft or infringement of intellectual property.
Epilogue Strengthening the protection of intellectual property rights is a common goal of China and the United States. The above-mentioned consensus reached by the two sides in the agreement protects the interests of both sides. It conforms to China’s reform direction of strengthening the protection of intellectual property rights. It is not difficult to find that China’s intellectual property system has been gradually improved and developed, which also reflects the content of intellectual property protection proposed in the agreement. As the Vice-Minister of Commerce and International Trade Negotiations, Deputy Representative, Wang Shouwen puts it, “the implementation of the relevant details, will help to strengthen the protection of intellectual property rights, improve the business environment, expanding market access, and better maintenance of all kinds of enterprise in China, including foreign enterprises, legitimate rights, and interests, but also to protect Chinese enterprises and the lawful rights and interests in economic and trade activities to the U.S”.
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Medical Cannabis: a glam makeover for a new generation Written by Gabriela Bodden, Partner at Eproint www.eproint.com
Cannabis and related hemp products have been a part of our world’s history since we can recall. It can be traced back to 2900 BC when the Chinese Emperor Fu Hsi referenced marijuana as “Ma” (the Chinese word for cannabis) as a popular medicine that possessed both yin and yang. In ancient Egypt, for example, cannabis pollen was found on the mummy of Ramesses II, who died in 1213 BC. In India, “bhang” is a cannabis drink generally mixed with milk, that is used as an anesthetic and anti-phlegmatic. On the other hand, in ancient Greece, cannabis was used as a remedy for earache, edema, and inflammation. Historically, cannabis has been used in medicine as an ailment to improve muscle spasms, menstrual cramps, rheumatism, and the convulsions of tetanus, rabies, and epilepsy; it was also used to promote uterine contractions in childbirth, and as a sedative to induce sleep. Let’s fast- forward to the 19th century, and we find that the uses of cannabis in medicine have spread through the West as mainstream medicine, and we can safely say it is the medicine of the moment!
Medical cannabis: what is it, and how is it used?
The marijuana plant contains more than 100 different chemicals called cannabinoids. Each one has a different effect on the body. Delta-9tetrahydrocannabinol (THC) and cannabidiol (CBD) are the main chemicals used in
medicine. THC also produces the “high” people feel when they smoke marijuana or eat foods containing it. At present, cannabis is used in medicine to treat a number of different conditions, including but not limited to: Alzheimer’s disease, appetite loss, cancer, Crohn’s disease, eating disorders such as anorexia, epilepsy, glaucoma, mental health conditions such as schizophrenia and posttraumatic stress disorder (PTSD), multiple sclerosis, muscle spasms, nausea, pain, HIV/ AIDS, wasting syndrome (cachexia) and fibromyalgia, amongst others.
Hemp and Cannabis: are they the same plant? The difference between hemp and cannabis is a subject that is all too often improperly explained. Cannabis is a flowering plant that consists of three primary species: Cannabis sativa, Cannabis indica, and Cannabis ruderalis.
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Hemp, or industrial hemp, is a variety of the Cannabis sativa plant species that is grown specifically for the industrial uses of its derived products. It is one of the fastest-growing plants and was one of the first plants to be spun into usable fiber 50,000 years ago. “Hemp” is a term used to classify varieties of Cannabis that contain 0.3% or less THC content (by dry weight). There is a general misconception that cannabis may have adverse effects on human health overall, and although this may be partially true, it is the manner in which the plant is treated and used and in what circumstances that can have important health benefits for certain illnesses. Studies have shown that medical cannabis has fewer side effects in comparison to painkillers, and patients who used cannabis for medical purposes felt better overall. Not to mention that also some studies have shown that legalisation has not led to increased recreational use of the drug.
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Cannabis and IP?
The capable art of creating cannabis IP rights is evolving. It focuses on patent protection for novel processes and products, the protection of related trademarks, trade secret protection, generating the very necessary health registration permits that enable the products to be imported into a given country where such a requirement must be met, and protection via contracts of all sorts when faced with particularly important know-how. In general, an invention based on cannabis must comply with the patentability requirements: be new, useful, and nonobvious. Therefore, cannabis-based patents can be for GMO cannabis, new strains of cannabis plants, unique cannabis cultivation methods, for the extraction and processing of cannabis plants, cannabis products (cannabis oils and extracts, cannabis beverages, edible food products, animal products, etc.), equipment for the processing of cannabis, medical uses for cannabis, such as treatments for a disease or a particular disorder, the possibilities are never-ending. The industry is letting their imagination flow freely! We usually see first-hand that companies must do their mandatory due diligence before using any type of IP rights they believe they “own,” creating possible vulnerabilities and where they may face infringement cases. The patent protection process of a cannabis product or registering a trademark for a cannabis product is the same as in the case of other types of products. However, the industry is facing a boom, and the number of patent cases worldwide is increasing, where, for example, patents may overlap and generate infringement cases. In the USA, we see a first patent infringement case already; it involves two companies: United Cannabis Corporation v. Pure Hemp Collective, Inc. United Cannabis claims that Pure Hemp Collective has infringed certain patent claims on cannabis extracts and their method of preparing and using such extracts. This case will likely set the future of the cannabis industry litigation in the USA, and this same scenario will be faced in different countries as the cases start to arise. When a company is on edge protecting their creations and know-how, this makes a genuine difference when faced with competitors and in commercialising their products. Some companies choose to license their IP rights while others don’t. This is all dependent on the business model.
Latin America and the Caribbean?
As the push for legalisation at home and abroad grows, cannabis is garnering significant attention from investors, manufacturers, and researchers. Despite the plant being illegal in many jurisdictions just alone in the U.S., a total of 33 states have legalised cannabis for medical use. In hand with this, cannabis for medical purposes has received the green light in several Latam countries (Mexico, Brazil, Colombia, Argentina, Peru, and Chile.) For instance, CBD products are legal in Colombia as long as they contain less than 1% THC in dry weight. In general, the community seems to be embracing the health benefits of this product; however, there are concerns as to the high prices of such products that remain inaccessible for most regular people. Mexico has created several commercial licenses for CBD products where the products must contain less than 1% THC content to be approved for commercial use.
Cannabis in Costa Rica:
Currently, only the consumption and personal cultivation for medical or scientific purposes is decriminalised, so marijuana, as such, is still considered an illicit drug. Nonetheless, in recent weeks Costa Rica has been one of the Central American countries that are looking at a Bill aimed to regulate medical cannabis and hemp. And this is indeed a promising industry, especially during such difficult times that the world is navigating. It is seen as a source of income that promises to rectify the economy of this country. The Costa Rican government has manifested its support to the production of hemp and based on this a company by the name of ‘Micro Plantas de Costa Rica S.A,’ and the CATIE (The Tropical Agricultural Research and Higher Education Center) have reached an agreement that promotes the economic development of the Costa Rican agricultural sector, generating value in production processes through innovation and knowledge derived from research, where the objective is to generate a prototype for the different hemp processes,
within the framework of a relationship between a private company, academia, investors and other interested institutions, taking into account the capabilities of the different actors to be able to develop a successful project at the country level, which in turn can be scaled to 13 other countries in the region and that also benefits the rural population by bringing in new technologies. In tandem with this, before the Legislative Assembly of Costa Rica lays Bill no. 21,388, which seeks to legalise the medical production of hemp and cannabis in this country. Although the word cannabis almost immediately converts this project into a polemic one, it is also promising in that it could effectively reactivate the local economy into the production and exportation of products based on cannabis and industrial hemp. The current unemployment rate in this country has reached a whopping 11.4%, and this cannabis-hemp industry would become a new source of employment for many people. According to various studies, it seems Costa Rica possesses the agroeconomic conditions that permit the cultivation of cannabis and hemp at an industrial level. This is attractive to the industry worldwide as a promising substitution for several industries that are currently on the low. Currently, medical cannabis is legal in 21 countries, with an overall market composed of 771 million people. Out of these, 51% live in countries that allow the importation of medical cannabis. This data was provided by Deloitte Canada in 2017, and if Costa Rica passes this Bill into Law, we will also be facing a positive future! The Bill proposes a licensing system for the extraction, laboratory, and cultivation in order to limit the production phase. It aims at a pharmaceutical industry in this country, making Costa Rica a development potential and creating a cluster of pharma companies that wish to develop this industry in areas such as food, drinks, clothing, medicine, and others. Currently, there are 13 countries worldwide that allow the importation of cannabis products for medical use. In Latin America, Mexico, Jamaica, Colombia, and Chile would be the most favorable destinations to export from Costa Rica.
As an IP attorney, my focus is that difficult means it is possible if crafted in a very artful manner. Cannabis companies must carefully patchwork laws and regulations as if walking on thin ice and take extra precautions. Having the right lawyer on board is key. The ideal scenario would be for medical cannabis to be legalised worldwide, thus eliminating the blockages the industry currently faces; however, this may happen with time. In the interim, doing proper duediligence and clearing the ground may slow the process in a sector that is growing by leaps and bounds, but will be worthwhile in the long run.
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Sailing Beyond Paris and Berne
by Mladen Vukmir, Second Vice-President – ECTA www.ecta.org
Mladen Vukmir is the Second Vice-President of ECTA and a member of the ECTA Board. He is an IMI Certified Mediator, past member of the INTA Board of Directors, past INTA ADR Committee, and INTA Brands & Innovation Committee Chair as well as past President of the Croatian AIPPI Group.
the legal system provides for one of their most important traditional roles – to serve as guidance to their societies. The very central pillar of the traditional role of the law came under pressure in modern complex societies, as the stability it used to provide to every society ruled by law, became the cause of instability under the new conditions. In complex systems, such as our modern societies increasingly are, any point of stability is bound to increase the overall instability of the system, just as a rock protruding through the foaming whitewater does add complexity to the flow. Fewer points of stability in a volatile environment might increase the smoothness of its state.
changes in forms of human creativity. Our societies did not adjust easily, nor did they yet manage to cope with the changes profoundly enough to escape the stress. Patching up the systems designed for the different environment might not be a path to the greater efficiency of today’s environment.
Looking back…
In the last two hundred plus years, our societies have demonstrated certain difficulties of grasping the nature of the intangible creativity and trying to form a new form of property right over it. It could be said that even though a couple of centuries have passed since our
“We cannot become what we need to be by remaining what we are.” Max De Pree
Modern societies are witnessing the changing role of law upon accelerated growth in the quantity of information, modifications of knowledge structures, and information processing possibilities. Without the rule of law and the role of intellectual property within the legal system, humanity would never have reached the level of growth that led it into the most prosperous part of its entire history. Nowadays, however, many observers note that our legal systems that were designed to produce consistent results find themselves increasingly at odds with the needs of contemporary societies to have diverse outcomes available in order to satisfy the wide variety of business models and relations that coexist. Accordingly, our legal systems are coping with the increased differences in factual patterns that complex contemporary societies are generating. The resulting inconsistencies and the inherent slowness of the legal process are increasingly at odds with the fast-moving pace of the economy and technology. Consequently, we are witnessing increased hardships with which
Intellectual property systems and functions
Different challenges of this kind are easily visible if we focus on intellectual property systems. Throughout the last century and a half, the functions of copyright law and industrial property law have experienced unprecedented changes in their fields of application. Since the digitalisation started and global digital networks enabled our economies to switch to the digital domain, we are witnessing profound
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artists and businesses started relying on their intangible assets, our societies are on many points still struggling with fully accepting the underlying concept of intangible assets. In the meantime, and without fully embracing the intangibles, yet another set of very different intangibles emerged as a perceived asset. Data, intangibles that are not created by human creativity, have joined the club of the most valuable assets for the modern industries, and in the form of privacy protection is gaining in profile among the individuals.
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A hundred and forty years ago was when Paris and Berne conventions were conceived to shape the authors’ rights and industrial property systems in an attempt to harness the value of human creativity, unlike the ways that the historical societies knew. At that time, creativity was perceived as an extraordinary activity achieved by the inspiration of a highly gifted individual. Nowadays, most human creativity is done as an everyday, mundane, serial activity based on sheer knowledge, which almost everyone in knowledge-based societies performs. On top of that, intangible assets created by harnessing and harvesting humongous amounts of data by human and machine efforts are becoming a form of an asset as valuable as intellectual property and energy ever were.
Human creativity and development
This fundamental change has brought about many unexpected metamorphoses of not only how we create, but also how we understand and apply the rules regulating human creativity. Law grew complex to the border of inherent inner contradictions, its original role of providing guidance at odds with its growing complexity, inconsistency, and slow pace of its application. At the same time, complex societies we are now living in are requiring elevated complexity and flexibility in order to be able to continue developing. By developing in what can almost be described as a cancerous growth, the law has become complex to the degree that some social actors of change started considering it more onerous then helpful. The increase of the role of mediation as an essentially non-legal dispute resolution method is but one of the signs of this perception. Organisations such as Commongood.org are finding ways to push the social discourse into examining the future role of the rule of law in democratic societies. Most dangerously of all, in many a country, the general population started accepting the idea that introducing non-democratic means of governance has some advantages over democracies. To me, it primarily means that law needs to be streamlined to achieve the flexibility and efficiency that it is now lacking. Not only did creativity change. Forces of globalisation, and not only globalisation in
the political sense, but primarily in logistical and spiritual, have challenged the traditional order impacting the central social principles of sovereignty and territoriality. Of course, the Berne and Paris IP order was based on the traditional perceptions of territoriality, specifically those prevailing in the nineteenth century. Despite the recent backlash against globalisation, our perception is that the actual globalised integration is irrevocably progressing in spite of the political setbacks. It is the digital domain of the internet that made the global connections a fact almost as hard as, for example, the basis of the second law of thermodynamics. Its scientific concept of entropy teaches us that, for example, a bottle of ink spilled into a pool is physically impossible to recoup into the bottle from which it was spilled. It became challenging to imagine how can any untangling of a global population happen ever again, barring some catastrophic collapse of our civilisation. The planet has truly become one, and territoriality has become a burden in tackling many problems, especially those that are inherently global such as environmental threats, and I would add finding the best way to regulate creativity. All of us in the intellectual property field understand and accept that creativity is the bestdistributed resource of all. This is why, after a hundred and fifty years, we need to open up the dialogue on what kind of system, legal or otherwise, will extend the Paris and Berne based intellectual property system that served us so well for so long. In order to be able to do this, we need to go back and examine the constants and discontinuities in the legal protection of creativity. This is best done not only by legal but also through other types of analysis that lawyers were traditionally unwilling to conduct, such as semiotic analysis of the language used to draft and construe the rules and sociological and economic analysis of the relations that are morphing in our societies before our eyes. Businesses have already noticed that keeping the IP rights neatly boxed in their nineteenthcentury compartments is not adequate for the creativity that modern industries deploy in developing their products. The same challenges are visible to the artists who are dealing with the issues of free expression since the emergence of conceptual and pop art. This development clearly pushes towards the merging of the principles of copyright and freedom of speech law. Shifts of this kind are why we have long started speaking of overlapping intellectual property rights and why our associations moved from being dedicated to a single IP right to all those related rights that we use to protect the results stemming from the single and singular human creative capability. To a keen observer, it will sooner rather than later become clear that it is always authors’ rights that will be first showing the inadequacies and the direction in which the entire IP universe will start changing. The accumulated and mounting inadequacies and the inability
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to meaningfully reform the copyright world is a clear sign of the difficulties the other Paris IP worlds will face and an indication that the Paris and Berne conventions are now confining such meaningful change. It is dawning on the IP professionals that the movement towards space beyond the confines of the centuries-old IP system has become desirable, if not inevitable. A strong upsurge in creativity seems to be closely followed by a proportional upsurge of copying. As we all know, the onset of new digital technologies in the copyright field has led to a significant increase in unauthorised copying. Once we digitise other formats of human productivity and creativity, we will be exposed to the similar growth of copying of the objects of protection of other IP rights. By now, it is becoming abundantly clear that choosing law as a principal tool in combating counterfeiting and piracy might not have been the right choice. One could even assert that, in light of the constant growth of counterfeiting trade, choosing law as a principal tool in combating counterfeiting was an inferior choice and that the results might have been different otherwise.
Challenges and innovation
The challenge we are facing is that even those lawyers who are thinking about innovation still seem to believe that the innovation is confined to introducing new legal services or products and then finding novel ways to market them. Not many seem to understand that lawyers owe to their society innovations in managing social relations in new ways as well. If we accept that one of the basic tenets of contemporary societies is innovation, and that innovation must be pervasive in all social activity fields, one starts wondering why the legal profession would be excluded from it. Innovation cannot remain a monopoly of a consumer or any other industry in modern societies; all social participants need to contribute by innovating. Those lawyers who miss this will risk being increasingly seen as a burden to their society. While the text has no intention of proposing strong conclusions on possible changes, several theses emerge. Advancements are likely to occur, but hard to anticipate as the scope of social changes is also unprecedented, and the nature of the digital medium is radically dissimilar from analogue mechanical reproduction means. Changes within the legal system will not involve only copyright and other rights of intangible human creativity results protection, but an overall transformation of the role of law within societies. After an initial denial and a protracted period of reluctance, the IP community seems to have acknowledged that without seizing the momentum, it might become marginalised in the discussions on its own field of expertise. It is, therefore, paramount for the IP, and specifically trademark communities, to leapfrog their reluctance in tackling these complex issues. (Mladen Vukmir is the Second Vice-President of ECTA. Views in this text are entirely his own).
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TRADITIONAL KNOWLEDGE AND RELATED INTELLECTUAL PROPERTY ISSUES IN
THE ERA OF THE COVID-19 PANDEMIC “Let’s drink this herbal tea to protect ourselves, to protect our families, and our neighbours […] and there will be no more deaths”
Writen by Sarah Norkor Anku (Mrs), Senior Partner, Anku.Anku at law - www.ankuatlaw.com
President of Madagascar, President Andry Rajoelina. 1
TRADITIONAL AFRICAN CULTURES
Such statements are not uncommon among Africans. This is because African cultures and beliefs promote traditional knowledge and traditional medicines in particular, as a key source of healing. In fact, the current responses from Africans to the COVID-19 pandemic reaffirms African beliefs in the value of traditional medicines. Therefore, it is not surprising that despite caution from the World Health Organisation (WHO) on self-medication relative to symptoms of the COVID-19, social and mainstream media are inundated with stories of traditional medicines as a cure for COVID-19. Covid Organics (CVO) is an example of such traditional medicines. The medicine was developed by the Malagasy Institute of Applied Research in Madagascar and has so far been shipped to many African countries, namely: Comoros Island. Guinea Bissau, Equatorial Guinea, the Democratic Republic of Congo. Liberia, Niger, Tanzania, Nigeria, Senegal, and Chad. 2 Traditional knowledge though not specifically defined in the reviewed literature, has been broadly said to be composite in nature, encompassing both tangible and intangible (spiritual) aspects. For example, a typical traditional healing process may involve the following steps:
1. The use of herbal preparations or concoctions which involves medicinal knowledge and knowledge associated with traditional resources. 2. Chanting of traditional healing recitals or songs and dancing traditional dances. 3. The dance may be performed on a traditionally designed mat. 4. The traditional medicine practitioner may be dressed in traditional apparel. 5. There may be libation and invocation of ancestral spirits or gods. A survey conducted in January 2011 3 - indicated that the term traditional knowledge, when used in Ghana, includes the following: traditional medicines, food, and food preservation, diversity conservation, farming systems, ethnoveterinary, language, music, dances, arts and craft, indigenous artefacts, rituals, taboos, fashion, traditional art system, and symbols. The key component of traditional knowledge is that it is passed on from one generation to another. It is through the process of transfer that it becomes firmly embedded in society.
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TRADITIONAL KNOWLEDGE & EXPRESSIONS OF FOLKLORE For academic and legal purposes as it is for convenience, the hitherto broad nature of traditional knowledge has been generally divided into two parts, namely traditional knowledge (stricto senso), which deals with the “scientific aspects of indigenous knowledge such as traditional medicines, food preservation, biodiversity conservation, etc. The ARIPO Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore 4 refers to such traditional knowledge as follows: “Traditional Knowledge” shall refer to any knowledge originating from a local or traditional community that is a result of intellectual activity and insight in a conventional context. This includes knowhow, skills, innovations, practices, and learning, where the knowledge is embodied in the traditional lifestyle of a community, or contained in the codified knowledge systems passed on from one generation to another. The term shall not be limited to a specific technical field and may include agricultural, environmental, or medical knowledge associated with genetic resources. The second part being Traditional Cultural Expressions or Expressions of Folklore, which has been a source of creative ideas, especially for the creative industry, such as performing
arts, etc. This part has also been referred to, in the Swakopmund Protocol 5 as follows: “Expressions of Folklore” are any forms, tangible or intangible, in which traditional culture and knowledge are expressed, appear or are manifested, and comprise the following forms of expressions or combinations thereof: i. Verbal expressions, such as but not limited to stories, epics, legends, poetry, riddles, and other narratives; words, signs, names, and symbols; ii. Musical expressions, such as but not limited to songs and instrumental music; iii. Expressions by movement, such as but not limited to dances, plays, rituals and other performances; whether or not reduced to a material form; and iv. Intangible expressions, such as the production of art, in particular, drawings, designs, paintings (including body-painting), carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewelry, basketry, needlework, textiles, glassware, carpets, costumes; handicrafts; musical instruments; and architectural forms. In effect, the traditional healing process may include both traditional knowledge and expressions of folklore since the healing process may also include accompanying rituals provided in the definition of the expressions of folklore in the Swakopmund Protocol.
PROTECTION FOR TRADITIONAL KNOWLEDGE SYSTEMS
Traditional knowledge generally has not found space in the current international system; the WIPO admits that the current global system for protecting intellectual property was fashioned during the age of industrialisation in the West and developed subsequently in line with the perceived needs of technologically advanced societies 6. However, in recent years, indigenous peoples, local communities, and governments, mainly in developing countries, have demanded equivalent protection for traditional knowledge systems 7, in other words, a sui generis protection for traditional knowledge systems. Currently, there are a few national and regional protection systems. For example, South Africa amended the Intellectual Property law, through Amendment Act No. 28 of 2013, to provide for the recognition and protection of certain traditional and indigenous terms or and expressions 8 while the African Regional Intellectual Property Organisation (ARIPO) also created a sui generis system of traditional knowledge protection. 9 In view of the demands, an Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) were established by WIPO member states in 2000. The IGC was mandated to develop an international legal instrument (or instruments) that would give traditional knowledge, genetic resources, and traditional cultural expressions (folklore) effective
protection 10. These discussions have been ongoing for the past two decades. At IGC 40, which was concluded on June 21, 2019, delegates agreed among others at plenary and informal consultations on Agenda Item 7 (“Taking Stock of Progress and Making a Recommendation to General Assembly”) that, draft articles on genetic resources, traditional knowledge, and traditional cultural expressions, contained in documents WIPO/GRTKF/IC/40/6, WIPO/GRTKF/IC/40/18 and WIPO/ GRTKF/IC/40/19 respectively, be transmitted to the 2019 WIPO General Assembly; and to transmit the Chair’s Text of a Draft International Legal Instrument Relating to Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources to the 2019 WIPO General Assembly, and to include it as a working document of the Committee “as a Chair’s text”. 11
science, others argue that while “scientific practice generally excludes the humanistic perspective, traditional knowledge assumes a holistic view including language, culture, practice, spirituality, mythology. Customs and even social organisations of local communities, thus to suggest that traditional knowledge is only the equivalent of science is to diminish incorrectly the strength and breadth of traditional knowledge”. 13 Consequently, how can traditional knowledge and western science complement one another without compromising the integrity of either one of the knowledge systems to enable effective Intellectual Property protection, especially in this COVID – 19 era? Western scientific research requires data to substantiate and verify findings. At the same time, traditional medicines do not follow such procedures, and efficacy is determined from effective use over the years and from generation to generation. There is, therefore, the need for the collaborative efforts of the two systems.
TO CONCLUDE
These documents require further work, and the Committee needed its mandate to be renewed for the 2020-2021 biennium. The WIPO General Assembly, which took place from September 30 to October 9, 2019, agreed on the renewal, as well as the work plan for the IGC for the biennium. Unfortunately, IGC 41, which was planned to take place from March 16 to 20, 2020, is now postponed 12 as a result of the COVID-19 pandemic.
WHO has been working to facilitate collaboration and to incorporate traditional medicine into national health systems,14 It recognises that traditional, complementary, and alternative medicine has many benefits. Africa has a long history of traditional medicine and practitioners that play an essential role in providing care to populations. 15
The current interruption in the international negotiations on the protection of traditional knowledge, resulting from the break in the work of the IGC, raises many concerns about appropriate protection for traditional knowledge innovations in this era of the COVID-19 pandemic. Could traditional knowledge innovations be linked to western science and protected under the current system of intellectual property protection?
Regarding Madagascar’s CVO herbal drink, Felix Tih 16 has reported that the WHO will study the drug which has been promoted as a cure for COVID-19. In fact, medicinal plants such as Artemisia annua are being considered as possible treatments for the COVID-19 and should be tested for efficacy and adverse side effects. 17 Finally, WHO’s welcome of innovations around the world including repurposing drugs, traditional medicines and developing new therapies in the search for potential treatments for COVID-19, may not suffice without adequate and effective intellectual property protection systems relating to innovations from traditional knowledge sources, to motivate and reward creativity among traditional knowledge practitioners.
THE GAP BETWEEN TRADITIONAL KNOWLEDGE AND WESTERN SCIENCE Some believe that there is a gap between traditional knowledge and western science, which can be bridged because both traditional knowledge and science deal with knowledge about the structure and behaviour of the natural and physical world. However, whereas science is based on facts that can be proven, for example, by experiments, traditional knowledge in most cases is not proven but have gained their reputation over generations and sometimes include the non-tangible (spiritual) world. Many also agree that traditional knowledge and western science can complement one another; however, there is widespread debate as to how and to what degree traditional knowledge and western science should be integrated. Scientists are said to add value to traditional knowledge. While some believe that traditional knowledge should be held to the same methodologies and standards used in
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1
Reported by Felix Tih “Madagascar leader urges use of supposed COVID-19 cure”, 18/05/2020 aa.com.tr
2
ibid
3
, by Sarah Norkor Anku; Implementation of the ARIPO Swakopmund Protocol on Protection of Traditional Knowledge and Expressions of Folklore in Ghana, 2011, Unpublished thesis, Africa University, Zimbabwe
4
Section 2 of the ARIPO Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore, 2010
5
ibid
6
Traditional Knowledge and Intellectual Property – Background Brief https://www.wipo.int/pressroom/en/briefs/tk_ip.html
7
ibid
8
Ines Monteiro Alves, “South Africa: The Protection of Traditional Knowledge in Africa”, 02 September 2019
9
Supra 4
10
ibid 6
11
https://www.wipo.int/tk/en/news/igc/2019/news_0009.html
12
ibid
13
Castillo 2009
14
A statement made by Matshidiso Moeti, Regional Director of WHO Africa in Africa, and reported by Felix Tih on 14th May 2020.
15
https://www.afro.who.int/news/who-supports-scientifically-proventraditional-medicine?gclidl
16
A report by Felix Tih, “WHO gets in touch with Madagascar, after country slammed global health body for not endorsing its drug” 14/05/2020
17
https://www.afro.who.int/news/who-supports-scientifically-proventraditional-medicine?gclid
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Intellectual Property amid times of COVID-19:
a strategic view Written by Laura Castillo Sepúlveda Partner at Innventiva - Espacio Legal www.innventivalegal.com
Humanity has been surprised by a silent enemy whose smallness was hidden by a pandemic that, in less than five months, has caused hundreds of deaths and whose power of contagion has alarmed populations around the world. This challenger is the COVID-19 pandemic, which under the slogan ‘stay home’, has transformed the economic, social, and legal systems of all nations, reaching a new world order. To face this challenge, scientists around the world are creating vaccine formulas, trying medications, building unconventional respirators, and working towards any other tool that may aid humanity in fighting this battle. These ideas and inventions are part of the solution to the pandemic and are linked to Intellectual Property Rights (IPRs). Therefore, this area of law is now more important than ever. Furthermore, the increase in the use of new technologies has simplified the exchange of goods, services, and information, placing IPRs at risk. Consequently, in these times, it is more necessary than ever to use good strategies to preserve, rescue, and protect IPRs. This article looks for points of convergence between the existing laws and the reformed world order. Thus, it will expose that COVID can represent great opportunities rather than attacks on IPRs. Particularly, it will analyse the defiances and opportunities the pandemic entails for Intellectual Property (IP) practice in three main fields: i) counterfeiting, ii) licence agreements and iii) trade secrets.
I. Counterfeiting products Counterfeiting is the production or distribution of goods without the permission of its proprietor. Amid times of COVID-19, counterfeiting is the consequence of i) the ease in which international commerce can be done, ii) the lack of strict customs revisions during quarantine, and iii) the economic downturn that makes people need cheaper products. This illegal practice affects consumers; IPRs owners, impeding them to receive the income of their IP; and it also obstructs the tax collecting of governments. In times of a pandemic, counterfeiting of medicines, medical equipment, as well as protection products, such as masks and disinfectants could have adverse effects on the health of consumers since they do not follow the protocols of regulated products and may have an altered expiration date or an incorrect amount of active ingredients. In fact, international organisations such as INTERPOL and the World Customs Organisation have reported an increase in the production and distribution of essential counterfeit products to deal with COVID-19.
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The criminality of these events is not in doubt. The first solution would be to apply strong customs measures to detect counterfeit products, prosecute the counterfeiter, seize the merchandise, and destroy it. However, in times of a global crisis, the relevance of corporate social responsibility (CSR) is currently being observed. Specifically, the need for companies to strike a balance between their IPRs and the general interest: allowing easy and affordable access to products that have become necessary to —literally— survive. Thus, a convenient solution would be not to enforce, but to grant specific and royalty-free licence of use, for a limited period of time. Evidence of the above is the Open COVID Pledge (OCP) by which the pledgor compromises to share its IP (copyrights and/ or patents) to end and diminish COVID-19 pandemic. In this scenario, the pledgor publishes a licence permitting others to use the IP as described in the legal terms of the said licence.
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international community as a whole. IP holders who assume this type of solution are likely to be seen as the leaders who helped undermine the COVID-19 pandemic.
In the OCP, not all licences are permitted. In order to be compatible, the licence must comply with the following criteria: be available to the public; grant all rights regarding the specific IP that is being licenced; be royalty-free and fully paid-up; must contain an obligation of nonexclusivity nor seek judicial relief to use the IP. Likewise, the licence must begin no later than December 1, 2019, and until the World Health Organisation declares the end of the pandemic plus one year, provided it is not prior January 1, 2023. An additional relevant aspect is the field of use, which will imply that the pledgor is free to grant any permissions but should have as a minimum “the purpose of diagnosing, preventing, containing, and treating COVID-19”. On the other hand, there are similar efforts outside the OPC’s scope. These are the cases of Medtronic, Abbvie, Fortrees Investment Group LLC, Pfizer, and other laboratories. Likewise, the United States Patent and Trademark Office (USPTO) launched “Patents 4 Partnerships”, an integrated platform in which individuals or businesses willing to create solutions for the eradication or treatment of COVID-19, can easily search for patents or patent applications whose owners have agreed to licence. Unlike the OPC, the USPTO does not have –at the moment– a standard licence agreement or minimum requirements. In this case, parties are responsible for their own negotiations and terms in the licence agreement. Licencing has always existed, but how companies manage them in a worldwide emergency crisis will be decisive for what comes next. Society is attentive and will support any business that aided in a way out of this crisis. Thus, in these times, the way companies oversee their licences must follow a strategy that not only suits corporate image and CSR, but that could show benefits for the
II. Licencing agreements From the above, it can be perceived how important IP licencing agreements are. In that regard, COVID-19 has taught us that nothing is as predictable or resistible as one might conceive. Certainly, the circumstances in which we currently live can cause obligations, such as compliance to a minimum sale, production, or royalty requirements cannot be fulfilled. This is the case of businesses that have stopped operating or whose sales have decreased. In these times, IP lawyers around the world are reviewing agreements of affected contractors and studying suspension or excusable provisions such as a force majeure clause. In the best scenario that the licence agreement contains a force majeure clause, it is vital to analyse if a pandemic event is included in the said provision. In general, it is likely to be included since most (not all) of the agreements state broad definitions such as ‘act of God, unforeseeable event or event beyond the parties’ control’. Without a doubt, the COVID-19 pandemic could fit this provision. Similarly, it is important to note if the obligation that wants to be suspended is included in the said clause since possibly it covers specific aspects only. Also, it should be observed what steps should be taken to implore the clause. Notwithstanding the importance of this type of provision, the number of contracts that omit it would be surprising. In these cases, the parties may refer to the common law of the country that governs the contract. For instance, the Dominican Republic’s case law has specified that three cumulative requirements must be met in order to consider an event as a force majeure and consequently suspend contractual obligations. That is, the event must be: i) external (it does not depend on the parties); ii) unpredictable (by the time the licence was signed the event was unpredictable
by the parties); iii) irresistible (it means that once the event has arrived, the licensee has done everything reasonably possible to fulfill his obligation and it has been impossible). These three requirements must be connected with the breach of the obligation in question. Additionally, the above will be analysed on a case-by-case basis, which eliminates any guarantee of success. To illustrate, in the Dominican Republic, the first case of COVID-19 arrived in March 2020, hence in the case of requirement number ii, if the contract was signed in February 2020, it can be said that the event was predictable. In that case, COVID-19, in principle, would not qualify as a force majeure event. Although the general rules of law replace what the parties do not contractually foresee, it is known that open gaps translate in time, money, and, above all, a detriment in the parties’ good business relationship. It is expected that from now on, as IP lawyers, nothing will be taken for granted, and any slit in licencing agreements will be permeated.
III. Trade secrets COVID-19 has touched another aspect that concerns IP, and that is trade secrets. This includes all sensitive information, crucial for the company’s development, such as sales methods, a list of clients and suppliers, and commercial strategies, among others. This has always been an important point; however, at the moment trade secrets are at higher risk since due to the pandemic employees are working remotely and using digital platforms for virtual meetings To avoid infringements to this important corporate asset, companies must investigate the data handling policy of each virtual meeting platform. In this way, those that do not have safe protection will be avoided. Likewise, companies (regardless of their size) must have a clear non-disclosure agreement, which establishes what information the employee can access, what to do, what not to do with the confidential information and the legal consequences in case of a breach. Similarly, in remote work computers, access should be limited only to the files that employees need, according to their functions. Equally, it is vital to have software to avoid cyber attacks. All of these must go hand in hand with constant communication and employee training.
Conclusion Finally, it has been analysed how the current pandemic has influenced IP in the fields of counterfeiting, licence agreements, and trade secrets. It has been shown that COVID-19 has allowed IP lawyers and IPRs holders to witness the challenges that each of these fields entails directly. Most importantly, it has evidenced the improvements that must be implemented in legal systems, how to do business and the strategies that should be taken to avoid infractions or to respond to them. In the end, these lessons will benefit not only IPRs holders but also the international community as a whole.
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