It has always been kept in mind that the only way to protect/manage an intangible asset, part of the assets of a company or an individual, was through litigation. That is, to exercise in an offensive manner the exclusive rights that -generally- the law granted to its owner, once said right was recognized through the corresponding act of concession by the State.
The truth is that today we are witnessing a new perspective of protection and management of intangible assets, which does not only translate into their protection and enhancement from their concession or recognition by the State and their defense based on litigation procedures, that is, through purely contentious judicial processes.
Nowadays, the management of intangibles offers multiple ways to combine corporate, associative, innovation, administration, and IP Protection system elements to increase their value and profitability in the market and as an engine to position companies in a world increasingly competitive.
Among them, we can highlight:
1) Formation of strategic alliances between companies:
Companies from different sectors form alliances with each other to develop a new product or service, intervening in the different stages of the production and development chain, from manufacturing to the introduction of the product or service in the market for its acquisition or contracting by consumers. Each company contributes its expertise in a specific area of the production and development chain.
2) Protection by Industrial Secret/protection of know-how:
Especially for those products that are in the early stages of development and that also need to be protected to avoid their disclosure in the market and in front of their competitors, which would bring a real detriment to the owner company.
3) Application of the so-called “core of IP” as a strategy for the extension of the protection of an intangible asset:
Good management of the rights over intangible assets implies fully knowing the scope of protection of each of these rights, as well as the term that the laws grant that protection and the right of exclusivity to their holders.
For this reason, the so-called “IP core” allows in some way to optimize the management of IP rights in general and of its components in particular when a company or person intends not only to protect its assets but also to position them in the market.
Starting with patents and utility models, continuing with so-called copyrights and related rights, and ending with registered trademarks, it is possible not only to publicize a product or service and position them on the market but also to gradually expand the temporal scope of protection of intangible assets.
4) The R+D and innovation formula:
The investment or reinvestment of the company’s profits in the research and development areas is essential to create not only new and/or improved products or services compared to existing ones, but also as a way to promote innovation within a specific area, in order to lead or obtain/conquer/maintain a position in the market, and likewise, to achieve not only higher profits, but also to contribute to social and State progress with the irruption of the results of the company’s R&D work.
5) Market Analysis:
Companies are increasingly investing in market research of the most varied nature – from consumer preferences, marketing-related issues, people’s needs, to the state of products and services of its competitors-, prior to launching a new component/product/service. In this way, they collect information and evaluate the chances of success prior to making any kind of disbursement that could raise some risk that the project will fail.
Although the combinations of factors – individually considered, and in their relationship with others – that contribute to a correct and effective management of intangibles are much greater, the truth is that it is necessary to abandon the traditional form of management/defense of intangible assets from a purely legal point of view and combine it with other areas of science and administration, taking into consideration economic, tax, state, public policy, administration, and research elements, among others.
Multidisciplinary in an increasingly complex market becomes an almost mandatory element for companies that want to see increased not only their structure and profits but also their position and prestige vis-à-vis the consumer and their competitors.
In Moeller IP Advisors there is a wide range of services in connection with IP matters in order to offer your company the best legal assessment regarding managing IP portfolio.
See our areas of expertise through this link: moellerip.com/servicesRead More
A common misconception regarding Open Source software is that it is equivalent to public domain software. However, this couldn’t be more wrong.
What is Open Source Software, and why does it matter?
A public domain software is that which the author has willingly surrendered the proprietary rights to it, all copyrights included, and therefore no license is required to use it. However, Open Source software can come with some undesired consequences, which would make its use riskier than traditional commercial software, like the lack of indemnification for third-party infringement claims.
Open source has undergone an image change in 2021 turning into a secure, low-cost strategy, even leading some investors to refuse to back a company that isn’t at least considering open sourcing their work due to it being an efficient use of capital. While it might seem contrarian to freely share your creation, some consider it as being better, because in cases where the software has a large community, it stands to reason that it will be more secure, stable, and even provide more features due to the large number of developers working on it, not to mention cheaply.
The evolution of intellectual property strategy in innovation ecosystems
It is important to note that an IP Strategy and an Open Source Strategy are not exclusive. Open source is simply another form of IP Strategy, these are still creations that can be patented.
That said Open Source is not without its risks. Since it is not done with the usual controls present in commercial software, a programmer that downloads an Open Source program that contains infringing code added by a previous developer is exposed to injunctions or legal damages. Another thing to take into consideration is when Open Source software uses copyleft licenses, which entails that all derivative work or modification must be distributed under the Open Source license, which could lead a company to lose the rights to their proprietary or underlying code or even force them to disclose trade secrets. This is why it is so important that companies that make use of Open Source software do their due diligence and keep extensive track records.
By Maria Sol Porro
Seventh International Congress of Intellectual Property
Last June, 7th, the Seventh International Congress of Intellectual Property called ¨Recent IP Developments in Europe¨ was held at the University of Maastricht, Netherlands, organized by the Queen Mary University of London, the Autonomous University of Madrid and the host, the University of Maastricht.
Each year different speakers of the mentioned universities attend this event in order to make brief presentations about the most recent developments in the main areas of intellectual property law in Europe. In this way, new laws, legislative proposals, notable new resolutions or recent doctrines on trademark law, patents, copyright, geographical indications, designs, etc. are analyzed and exposed.
Topics addressed at the event 2019
1- Multimedia Trademarks
They are those represented by the presence of an audiovisual file that contains the combination of image and sound. These trademarks are starting to be taken into account within the European registers, although they are usually registered as services and not as goods. However, they have two problems:
a- Having so many elements involved, often lack the distinctive character required for the trademarks.
b- Many of these brands are usually video games whose central themes often clash with morality and good manners, preventing your registration as such.
2- Packaging and trademarks
Last May, the CJEU issued a new judgment (C-642/16 Junek Europ-Vertrieb of May 17, 2018) related to the interpretation of ¨the principle of exhaustion of trademark¨ in the case of parallel imports and repackaging of products, mainly in medicines and health products.
In other words, what was analyzed is whether the owner of a trademark has the right to prevent the commercialization of a product that has his trademark, legally marketed in another EU State, when its original packaging has been modified. In the judgment, the CJEU was referred to other judicial decisions in which 5 requirements were established to consider when the exhaustion of the right of the owner of the mark takes place.
These requirements determine that the right of the owner of a mark is exhausted when the variation of the packaging does not affect the origin of the product in relation to the brand or does not cause any harm to consumers. In this case, it was considered that the owner´s right was exhausted and, therefore, the owner had no right to prevent that commercialization.
3- Artificial intelligence
The issue of Artificial intelligence has become the storm in a teacup of the patent area. Not only because it is an important point in the subject of patents, but it is a technology that involves more edges. In itself, the question arises of recognizing computers as a-inventions or b-legal entities under the law. While it is currently held that computers programmed to create objects could not be considered as “inventors”, this does not prevent the rules of the game from changing in the future.
4- Competition law, patents, and the pharmaceutical sector
In recent years, certain “questionable lawfulness” practices have become usual within the patent sector, specifically for generic drug companies, which are intended to extend the protection of these drugs and block the entry of new companies into the market.
Some of these practices aim to register small changes of the main patent before the generic one enters the market (product hopping), the indiscriminate registration of patents in order to protect a product and block competition (defensive patents), increase the protection of a patent with other minimum patents, applications which remains pending to be registered (divisional patent applications), among others.
It is against this panorama in which the European Commission emphasizes the importance of using the “Competition Law” in conjunction with the “Patent Law”. The purpose is to avoid these covert monopolies within the field of patents. Likewise, it is important to note that while markets such as the United States generally prohibit these practices, some of them are allowed in the EU. So it is substantial to determine when one is facing an allowed situation and when facing competition action unfair.
5- Online parodies and future of upload filters
The New (and controversial) article 13 of the Copyright Directive establishes a paradigm shift by determining that it will now be the platforms which will have to ensure that the content they host does not involve copyright violations. That is, services such as Facebook, Twitter or Google but also Wikipedia or GitHub will have to adopt measures and use content recognition techniques to block them directly. Therefore, it is expected that in order to avoid sanctions, platforms tend to block more content than they should.
Another controversial issue is online parodies, better known as memes. Although the exception of parody is treated differently in each country, in order to understand when we are within the limits of one it is important to consider 4 basis points:
– Who is the interlocutor.
– The type of expression.
– The context in which it is said.
– What is said.
It is clear that in the face of this scenario, certain difficulties will arise for the platforms when recognizing when they are facing a parody and when they are facing illicit content. On this point, even though the New Directive establishes the exception of mandatory parody in the EU, platforms are not encouraged to apply filters to differentiate parodies of illegal content, which will be a problem in the future.
A Chilean proposal has once again brought back the battle of Peru against Chile to recognize pisco as a national drink of one of these two countries. The aforementioned proposal came from the Chilean Minister of Agriculture, Antonio Walker, who proposed in mid-February that both countries reach an agreement to complement each other in order to obtain that their corresponding liquor is recognized as ¨pisco¨ in each country.
Although the Chilean Minister of Agriculture said that during a recent visit to Lima he proposed to his Peruvian counterpart, Gustavo Mostajo, a formula to put an end to the dispute between both countries regarding the denomination of origin of the alcoholic beverage, by complementing and recognizing the ip right of both of them over the aforementioned denomination in the international markets, the Peruvian Minister of Culture, Rogers Valencia, said that it is not possible that within the Peruvian legislation “the Chilean liquor is considered pisco”, highlighting that the right of denomination of origin is related to a geographical space, to a specific process and that, in addition, pisco is made with a specific variety of “grape”.
In this sense, the pisco war not only transcended borders, but also continents. On the Peru side, according to Indecopi (Office of the National Institute for the Defense of Competition and the Protection of Intellectual Property), 71 countries recognize the Peruvian right over the denomination of origin over pisco, such as India, Thailand, Ukraine, South Africa, Bolivia, Guatemala and Colombia, among others. Also, the Peruvian institute added that Chile “improperly modified” the name of a region of its territory (Pisco Elqui) in order to appropriate the term, an argument that is widely rejected by the neighboring country. As for Chile, it was explained that there are only four countries that recognize the appellation of origin of pisco as exclusively Chilean, which are Australia, Brunei, New Zealand and Turkey.
On the other hand, both countries prevent in their respective territories that the pisco of the opposite retains that name when they enter their corresponding markets, trying to enforce, in this way, the exercise of the rights that they understand the denomination of origin grants to them. Clearly, the last word in this historic dispute over the original ownership of this grape-based drink, of which the international community will continue to be a spectator, has not yet been said.
Source: elcomercio.peRead More