Briefing: SC Development and IP

Sunday, October 15 2017

09:00-10:30

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Relevance of IP in developing countries

• Why is IP relevant for developing countries?

• For people, entrepreneurs and practitioners in developing countries? For politicians? For academics?

• Why are developing countries relevant for IP?

• Is there a future of IP without developing countries?

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• Reinhard Oertli, Meyerlustenberger Lachenal (Moderator)

• Martín Bensadon, Marval, O'Farrell & Mairal

• Mohammad Fazil Bharucha, Bharucha & Co.

• Eyal Bressler, Dr. Eyal Bressler & Co.

• Fernando Dos Santos, ARIPO

• Hoa Binh Nguyen, Daitin & Associates CO

Relevance of IP in developing countries

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• Fernando Dos Santos, ARIPO

Relevance of IP in developing countries

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Traditional assumptions:

• North – South

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Right or Left

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Traditional assumptions:

• North – South

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Traditional Assumptions

South

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New realities

South – South deals

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Re-shoring

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IP reform: Endogenous or exogenous

TRIPS: flexibilities

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Human capital – rule of law – human rights

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Inseparable partners of IP

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Relevance of IP in developing countries

Time to listen

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Fernando dos Santos

Director General

ARIPO 13

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• WIPO Committee on Development and Intellectual Property (CDIP)

• Established in 2008 by the General Assembly to facilitate the implementation of the Development Agenda (45 Recommendations)

• The 45 Recommendations are grouped into 6 clusters

• Some of the issues of interest for ARIPO Member States include:

• Technical Assistance and Capacity Building

• Norm-Setting, Flexibilities

• Technology Transfer

• Impact Studies

• Guiding Principles for Technical Assistance

• Member-driven initiatives (at request of Member States)

• Designed, formulated and implemented in consultation with concerned Member States

• respond to the specific needs and development priorities of Member States

WIPO Committee on Development and Intellectual Property

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• Technical Assistance – Specific interventions

• Awareness activities on IP: Workshops, Seminars

• Formulation of IP plans and strategies

• Support IP Uptake by SMEs, cultural industries, Research institutions

• Capacity Building – Specific interventions

• Development of Training programmes on the use of IP for economic growth and development, including MIP programme in the Africa University (Zimbabwe)

• Use of DL for IP education

• Training of researchers on Patent Drafting, Successful Technology Licensing (STL), IP marketing and IP valuation

• Structuring of Technology Transfer Offices (TOT) and Technology Information Centers (TISCS)

• Development Institutional IP Policies for Universities and Research Institutions

WIPO INITIATIVES ON IP UNDER CDIP

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WIPO INITIATIVES ON IP UNDER CDIP (Cont.)

• Guiding Principles on Norm-Setting• development-oriented and demand-driven,

• take into account the different levels of development

• take into account priorities and the special needs of developing countries, especially LDCs

• Some initiatives:

• Support and strengthening of regional and national capacities

• Support legal, administrative, scientific and technological infrastructure for protection and promotion of domestic innovations and creations

• Flexibilities

• Legislative assistance on the use of flexibilities to implement public policies defined by Member States: access to pharmaceutical products, promotion of a competitive environment, encouragement of small, incremental inventions, etc.

• Assessment, Evaluation and Impact Studies

• Undertake studies to assess the economic, social and cultural impact of the use of IP systems and possible links with development

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• ARIPO: an Inter-Governmental institution for the promotion of IP in its Member States

• Member States: 19 African Countries

• Least Developed Countries: 13

• Initiatives related to CDIP

• Attendance of CDIP sessions at WIPO

• Collaboration with WIPO on Formulation of IP plans and strategies for ARIPO Member States

• ARIPO Roving Seminars: 2014 – 2016 = 2500 participants; 15 countries

• Roving Seminars in Universities: 2017: Sierra Leone, Zambia and Swaziland

• Masters Degree Programme on IP: 9 editions, 251 graduates [20 scholarships by WIPO/10 scholarships by ARIPO]

• Training programmes for officers of IP offices, Research Institutions, Industry, patent agents and trademark attorneys

• Specific training activities on patent drafting and examination procedures

• Improvement of ARIPO and M/S Business operations through digitization and automation of IP Offices (E-filing through Polite+)

• Joint programme on the development of guidelines for the formulation of IP policies for Universities and Research programmes – October 30 & 31, 2017

• Publication of UNDP/ARIPO guidelines on TRIPS Flexibilities and Access to Medicines

• Workshop on “Promoting Policy Coherence on Health Technology Innovation and Access Among ARIPO Member States, November 1 to 3 2017, Lilongwe, Malawi

ARIPO INTEREST ON CDIP

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• Continue collaboration with WIPO on implementation of the Agenda for Development

• Focus on development of skills to use IP for development (awareness, training and exploitation of IP)

• Improve use of IP by universities through formulation of institutional IP policies, establishment of IP Units and technological information centers, awareness creation and patent drafting (Joint Project with WIPO in 2018)

• Undertake studies on the importance of IP for development to promote formulation of IP policies that are evidence-based and attend to needs and priorities of countries

• Implement the Swakopmund Protocol on Traditional Knowledge and Expressions of Folklore and participate on the WIPO Intergovernmental Committee on IP,Genetic Resources, Traditional Knowledge and Folklore [ARIPO welcomes the extension of mandate for 2017/2018 and hope a binding instrument will be adopted in future]

ARIPO Future Involvement on IP and Development

Bharucha & Co.

IP Attorneys

Karachi, Pakistan

Situation & Understanding of IP by Domestic

Clients

Intellectual Property Organization of Pakistan’s

Activities (2016-2017)

National IP Strategy

How this Congress will be beneficial for Pakistan

Intellectual Property Organization of Pakistan’s

Activities (2016-2017)

Achievements of IPO-Pakistan in terms of IPR Enforcement

Coordination

Training Sessions/Capacity Building of IPR Enforcement

Agencies 2016-2017

IPO-Updates/Legislation

IP Awareness

National IP Strategy

Policy framework

Legislative framework

Institutional arrangements

Strengthening innovation capacity

Review/rationalize IP framework

IP enforcement and IP awareness

How this Congress will be beneficial for Pakistan

- Plays Significant role IP in Developing Countries like Pakistan

- Projects the Image & IP Progress in Pakistan

- Hold International Event in Pakistan

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Nguyen Hoa Binh (Bill)

M.Sc. Biotechnology, Biochemistry at Hanoi National University

2005 – 2008: Worked in Patent Department of IP Firm

2009 – present: Patent Attorney & Consultant (Daitin & Associates Co. Ltd.)

Consulting IPRs matters in Vietnam, Cambodia, Laos &

Myanmar

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IP in Vietnam – Short history of IP laws

• In 1980s, first Decree relating to IP in Vietnam covering on inventions, Trademarks, Design

• 1986-1989, economic reform, Ordinance on IPRs Protection approved

• 1995-2007, for becoming WTO’s member, the IP Law 2005 enacted and fully complied with the TRIPs-WTO Agreement

• 2015 FTA negotiations with EU were concluded

• 2017 Trans-Pacific Partnership (TPP) Agreement pending

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IP in Vietnam – Member of International Conventions

o The Paris Convention for the Protection of Industrial Property

o Agreement on Trade-Related Aspects of Intellectual Property Rights - TRIPS

o The Madrid Agreement & Protocol for International Registration of Marks

o The Patent Cooperation Treaty - PCT

o Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations

o Int’l Convention for the Protection of New Varieties of Plants - UPOV

o The Berne Convention for the Protection of Literary and Artistic Works

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IP in Vietnam

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IP legislation is now relatively comprehensive, covering most aspects of IP in accordance with international standards

The enforcement mechanisms still need to be strengthened

Fines must be increased for truly effective protection

Awareness on importance of protecting IPR among consumers/enterprises needs to be raised

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Vietnam’s market - Role of IP

Vietnam’s market (2016):

GDP $219 billion

Population 94,6 million

GDP growth Increase 6.1%

GDP per capita $2,371

GDP by sector: Agriculture: 17%, industry: 39%, services: 44% (2016)

Main businesses SMEs

Role of IP:

– Provide incentives to creators

– Turn idea, creativity, innovation into business assets with real market value

– Inducing technological change

– Facilitating economic growth through investing on new technology

– Reduce risk of being infringed/infringing by/from others

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Success cases

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Invention

Industrial

design

Trademark

New product line

Success cases (startup)

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Success cases (startup)

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IP practice is a way to serve both

economic, environmental, social and culture development?

• At this infancy stage, mainly focus on economic development using the basic protection (Success cases)

• Environmental, social and culture development seem to be too big and early matters

• Once, economy develop on a strong IP ground, the Environmental, social and cultural development would be solved

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What we need?

• Improved IP registration system (shorter registration duration)

• Well-established enforcement procedure

• Increase awareness of consumers/enterprises on importance of IPRs

• Qualified, international-standard IP consultants

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PCT

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EVERYONE IS ENTITLED TO HIS OWN OPINION, BUT NOT TO HIS OWN FACTS

DANIEL PATRICK MOYNIHAN

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WIPO’s “Global Innovation Index 2017”

• According to the 10th edition of WIPO’s “Global Innovation Index 2017”, Argentina is 76th worldwide and 9th in the region (behind Chile [46th worldwide), Costa Rica [53], Mexico [58], Panama [63], Colombia [65], Uruguay [67], Brazil [69] and Peru [70]).

• The global ranking is headed by Switzerland, Sweden, Netherlands, United States and United Kingdom.

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And now

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Finally, some good news…

• PCT

• PPH

• PATENTABLE SUBJECT MATTER

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Conclusion, in a few minutes

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YEAR AR KR

1969 7,330 1,701

2009 4,976 163,523

2015 4,125 213,694

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[Incorporate consolidated slide pack in AIPPI format]

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[Title]

[Incorporate consolidated slide pack in AIPPI format]

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Offensive Patents in Developing Countries: Stumbling Blocks to

Progress

Eyal Bressler

Dr Eyal Bressler & Co.

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Patents & Business PlansDefensive PatentsOffensive PatentsDefensive & Offensive IP Portfolio

Terminology:

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Defensivity/Offensivity IP Scale

A combination thereof

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Offensive ‘free of-’ type patents

7771491 Oxidation dye composition for keratin fibers, L'Oreal S.A

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A composition for the oxidation dyeing of keratin fibers comprising, in a medium suitable for dyeing:

a) at least one oxidation dye,b) at least one associative polymer chosen from non-ionic,

anionic and amphoteric polymers,c) at least one nonionic cellulose-based compound not

comprising a C8-C30 fatty chain, andd) at least one cationic polymer with a charge density of greater

than 1 meq/g and not comprising a C8-C30 fatty chain;

wherein the weight ratio of the at least one nonionic cellulose based compound not containing a C8-C30 fatty chain to the at least one associative polymer ranges from 0.1 to 10.

US 7771491 by L'Oreal

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Offensive Externally-standardized claims(a) Utilize applicable Standards (ASTM, DIN etc.);(b) Utilize commercially available equipment

(processing means, product analysis etc.)

Offensive Internally-standardized claims(a) Utilize irretrievable & self-defined Standards

(e.g., internally used QC methods, vague unit system)

(b) Utilize unavailable equipment (e.g., subjective analysis methods , highly expensive equipment, even non-existing gear)

Terminology:

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Offensive Internally & Extremally-standardized claims

A combination thereof

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US5104450 Formulations of cellulose esters with arylene-bis(diaryl

phosphate) by Eastman Kodak Company

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1. A blend comprising(a) at least one cellulose ester, and(b) 6 to about 30 percent, based on the weight

of component (A), of at least one arylene–bis(diaryl phosphate) compound.

34.The blend of claim 1 wherein component (A) is

cellulose acetate butyrate having a DS perAGU [???] of acetyl group of about 0.1 to about2.1 and a DS per AGU [???] of butyryl groups ofabout 0.5 to about 1.8.

US5104450, Eastman Kodak Company

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42. The blend of claim 34 which: (a) retains 12% or more of its initial weight after being heated

to 400°C when measured in accordance with ASTMProcedure D-3850 modified to heat the sampleat 20° C per minute from room temperature to 500°C in a streamof air having a dew point less than -10°C and flowing over the

sample at a rate from 0.5 to 4 scfh tested on a DuPontThermogravimetric Analyzer 951;

(b) has a glass transition temperature less than 130°C

when measured in accordance with ASTM Procedure D-3418 modified to heat the sample at a rate of 20°C per

minute on a DuPont Autosampler Dual Cell 912;cont.

US5104450, Eastman Kodak Company

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(c) retains 97.5% of its initial weight after being heated to

300°C when measure in accordance with ASTM ProcedureD-3850 modified to heat the sample at 20°C per minutefrom room temperature to 500°C in a stream of air having a dewpoint less than -10°C and flowing over the sample at a rate from0.5 to 4 schf;

(d) has less than 2% elongation when heated to 75°C whenmeasured in accordance with ASTM Procedure D-1637 onblends made into films that are from 10 to 14 cm long, 2.5 to 3cm wide and 0.1 to 0.2 mm thick; and

(e) can be made into articles by solvent-casting or extrusion

which are free of haze by visual inspection underfluorescent lights.

US5104450, Eastman Kodak Company

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20K

15K

10K

5K

World-wide Standard-claiming Externally-standardized Patents

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World-wide ASTM-claiming Externally-standardized Patents

7K

5K

6K

4K

3K

2K

1K

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PatSnapTM Query

TAC: (ASTM or standard) andCOUNTRY: "BR“, "MX“, "UA" or "IN” (only)

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1.6K1.2K0.8K0.6K

PatSnapTM Query TAC: (ASTM or standard) and COUNTRY: "BR“, "MX“, "UA" or "IN” (only)

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Take Home Message

In developing countries, filing of offensive patents byforeigns is provided, in some extent, a stumblingblock to hinder local industrlization:

a. National Patent Offices should be alarmed;b. Offensive patents are double-edged sword; hence

utilizable by both economies.

Thanks for your active participation!

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