By Moeller IP.
Join Moeller experts on this coming webinar organized by the Section of Intellectual Property of the American Bar Association on Tuesday, March 31 at 12ET
Our experts are:
- Jose Santacroce, Head of Moeller Patent Department and a former patent examiner who retired as Director at the European Patent Office in the field of Computers (Human-Computer Interaction) after working there for 30 years.
- And Mariano Municoy, Head of the Regional Legal Department at Moeller and Adjunct Professor at Universidad de San Andres as well as Austral in Argentina, plus a regular foreign visiting professor at Chicago Kent in the USA,
- They will be joined by Helena Galan, who is a specialist at Darts IP, the top global IP caselaw database provider
This will be a live webinar where they will analyze the most important issues when filing, prosecuting and enforcing Computer-Implemented Inventions (CII) in Latin America, particularly in Argentina, Brazil, and Mexico.
Even though in absolute terms the number of CII patent applications in Latin America is still very low when compared to those of developed countries/regions, relatively speaking they have been growing faster than applications in other fields of technology, which is also expanding the non-very distant almost non-existing caselaw
However, there are many serious challenges to obtain legal protection, which start at the time of filing and prosecuting such as navigating properly the exclusions from patentability, establishing the technical character /contribution of the invention as well as assessing the presence of inventive step.
During the webinar, we will present both a general picture and some particular administrative and judicial cases to get the knowledge about the best ways to achieve the best possible legal protection of CII inventions in Latin America.
To register go to this website: https://www.americanbar.org/events-cle/mtg/web/395256589/Read More
As a result of an investigation by the National Commission for the Defense of Competition (CNDC), the Ministry of Commerce fined the Argentine Society of Authors and Composers of Music (Sadaic) for US $ 1,567,945. The survey determined that Sadaic charged “excessive prices” on copyright fees paid by hotels and other establishments for music reproduction in hotels guest rooms.
To determine this fine, the CNDC made an international comparison of the tariffs paid for the reproduction of musical works and the result of the investigation determined that in Argentina hotels and other establishments pay between six and nine times more than the average of the reference countries.
These fees imply a fee payment for copyright for playing music in hotels. With the calculation methodology used by Sadaic, each hotel must pay the fee for having televisions in the rooms, regardless of whether the room was occupied or not and if musical works were even used.
“This measure implies an improvement in the competitiveness of the tourism sector and enables the reduction of tariffs for rights of authors and composers charged for the secondary reproduction of TV and music content in hotels,” according to the president of the CNDC.
Finally, the CNDC recommended to the Executive Branch that the tariff fixing system be restructured based on a criteria of “reasonableness, non-discrimination, transparency, fairness and limited scope.” The CNDC suggested that the collection management system must be modernized in order to expand users and reduce tariffs, “without substantially affecting income.”Read More
WIPO GREEN was launched on November 28, 2013 to provide an online marketplace connecting a wide variety of groups seeking shared innovation and environmentally friendly technologies to address climate change. WIPO GREEN is governed by the Advisory Board and the Secretariat under the rules laid out in the WIPO GREEN Charter.
The WIPO GREEN database and network matches owners of new technologies with individuals or companies seeking to commercialize, license or otherwise distribute a green technology. Its objective is to accelerate innovation and diffusion of green technologies and contribute to the efforts of developing countries in addressing climate change.
The WIPO GREEN database offers a broad listing of green technology products, services and intellectual property (IP) assets, and also allows individuals and companies to list green technology needs.
- offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance;
- advertises technological needs – including specific technologies and IP assets, funding, training and professional services;
- provides a listing of innovative green technologies, IP assets and experts that makes it a useful resource for investors, entrepreneurs and licensing managers looking to construct and execute deals in the green technology space.
The WIPO GREEN network:
- helps facilitate commercial relationships and transactions by connecting green technology providers and seekers, and acting as a gateway to a range of relevant services;
- hosts a freely accessible online roster of green technology consultants and service providers, offering expertise in a wide range of areas including IP management, licensing and investment;
- acts as a gateway to useful IP services, such as WIPO’s Arbitration and Mediation Center.
Through the network, members can meet a wide range of stakeholders – including SMEs, multinational companies, intergovernmental organizations, investors and academics that provide a new opportunity for collaboration and partnership.
The WIPO GREEN Network has grown to reach over 6,000 members and subscribers across 170 countries in 2017. The expansion of our Network continues. Latin American partners include:
- Brazilian Forum of Innovation and Technology Transfer Managers (FORTEC), Brazil
- Brazilian Institute of Industrial Property (INPI), Brazil
- SOLBEN, Mexico
Only Brazilian and Mexican partners have been involved from the beginning of the project, which leaves a large field of expansion in Latin American in the near future. It also denotes the need of increasing the efforts to achieve conscience developing, sharing and implementing green technologies in this vast area of the planet.
Among the key technologies of this century, nanotechnology raises particularly high expectations in a wide range of areas affecting daily life. Nanotechnology is a science, which operates at an extremely small scale: between 1 and 100 nanometers (1 to 100 billionths of a meter). In fact, entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions is susceptible of making physical, chemical or biological effects in an unexpected way. At this scale interesting and potentially promising phenomena such as statistical and quantum mechanical effects become evident. Therefore, it is easy to see how manipulating matter at the atomic level could potentially lead to enormous developments.
Nanotechnology can occur in almost any area of science and engineering: it is just as relevant to biotechnologists and physicists as it is to electrical and mechanical engineers or materials scientists. The interdisciplinary nature of the field means that anyone interested in literature on nanotechnology, especially existing patent documents, struggles to retrieve it from the databases available.
For example, according to StatNano (*), a total number of 20187 patents have been published in United States Patents and Trademark Office (USPTO) in 2017, among which more than half belongs to the United States. South Korea, Japan, China, and Taiwan are the next countries in this ranking. A number of 4019 nanotechnology patents have been published in European Patents Office (EPO) in 2017.
For this reason, it is interesting to see what is happening in Latin American countries in nanotech matters. According from data obtained in LATIPAT following the criteria of International Standard Organization (ISO/TS 18110) [i.e. a patent is related to nanotechnology when it has at least one claim about nanotechnology or it has a code related to nanotechnology according to IPC], a number of 3631 nanotechnology patents have been published in Latin American countries. From this number of nanotechnology patents, only Brazil has a number of 1877 patent applications (i.e. about 50% of the total applications in the region) followed by Mexico with 1220 patent applications. Other relevant countries of the region showed lower penetration in connections with this technology, for example, Argentina showed a number of 274, while Colombia showed a number of 87 patent applications.
The figure shows the applications published in 2017 contrasted to those published in 2016 in relevant countries of the area.
From these results, it is possible to see how Argentina, Brazil, and Mexico showed a declination in the published applications in the main countries of the region, while only Chile and Peru showed a significant increase in the published patent applications. Additionally, regarding nanobiotechnology, it is stressed that about 80% of the overall nanobiotechnology patents are from the medicinal preparation area followed by a significant number in case of diagnostic and surgical applications.
Source: (*) http://statnano.com/news/62082Read More
By Marta Garcia
What is the Bolar exemption?
Some products, typically pharmaceutical products but also agrochemicals and medical devices, cannot be marketed without obtaining marketing approval from a competent regulatory authority, in order to prove that the product is safe and effective.
Even though the requirements for obtaining such regulatory approval differ from country to country, in general the authorization for new chemical or biological entities (innovative products) is much more complex than the authorization for a generic or biosimilar products (generic products). Whereas for innovative products, clinical tests and trials must be conducted in order to prove their safety and effectiveness, generic companies can rely on some of the tests and data submitted for the original medicinal product.
However, since it has to be proven that the generic version of the medicinal product is bioequivalent to the previously approved medicine in order to obtain a marketing authorization, a generic company will usually require the obtaining and testing of samples. Therefore, if the original medicinal product is patent protected, such production and use of the product by generic manufacturers for testing may be considered an infringement of the patent, even if they are not planning to enter the market until after patent expiration.
As regulatory approval can take several years, in order to overcome this problem and expedite the market entry of generic products after patent expiration, many countries have introduced legal exemptions from patent infringement for tests and trials involving patented products necessary to get marketing authorization.
These exemptions are often called “Bolar exemptions”, in reference to a US law enacted to overturn a prior US Federal Circuit’s ruling – Roche Products, Inc. v. Bolar Pharmaceutical Co., Inc., 733 F.2d 858 (1984) – against generic drug manufacturer Bolar, which was using Roche’s patented active pharmaceutical ingredient in order to conduct clinical trials necessary to obtain regulatory approval.
Many countries have introduced similar exemptions, but their nature and scope vary significantly from one nation to another. According to a draft reference document dated November 2017 by the World Intellectual Property Organization (WIPO)´s Standing Committee on the Law of Patents, the applicable laws of more than 65 countries provide for the exception related to acts for obtaining regulatory approval from authorities.
The Latin American case
Regarding Latin America, the following countries have put in place Bolar exemptions: Brazil (Law on Industrial Property 9.279, as amended by Law 10196, Article 43), Chile (Chilean Patent Law, Article 49), Colombia (Andean Decisions 486 and 689, and Decree 0729), Costa Rica (Patent Law 6867, Article 16.2), Dominican Republic (Law on Industrial Property 20-00, Article 30), El Salvador (Legislative Decree 604 on Amendments to the Law on Intellectual Property, Article 116), Mexico (Regulations on Health Related Consumable Goods, Article 167bis), Paraguay (Patent Law 1630, as amended by Law 2593, Article 34), Peru (Andean Decisions 486 and 689, and Decree 1075, Article 39), and Uruguay (Industrial Property Law No. 17.164, Article 39).
Argentina may provide a Bolar-type exemption under Law 24766, which relates to data confidentiality, but this remains to be tested in the courts. Article 8 of this Law states that “In the case of a product or procedure protected by a patent, any third party may use the invention before the expiration of the patent, for experimental purposes and to gather the information required for the approval of a product or procedure by the competent authority for its marketing after the expiration of the patent.”
Regarding the member states of the Andean Community (Bolivia, Colombia, Ecuador and Peru), they have the option of establishing a Bolar exemption in their national legislation (through Decision No. 689 on the adequacy of certain articles of decision 486 establishing the common regime on industrial property, allowing the development and deepening of the industrial property rights across the internal regulation of the members states). However, until now only Colombia and Peru have enacted clear exemptions.
In most of these countries, there is an explicit provision on regulatory review exception in the respective IP or patent legislation. However, in Argentina and Mexico, these provisions are contained in other legislations, e.g., relating to health and/or pharmacy.
In Argentina, Brazil, Colombia, the Dominican Republic, Paraguay and Uruguay, the exception applies to any product that requires regulatory approval. However, in Chile, Costa Rica and Mexico the exception is limited to pharmaceutical products, and in El Salvador and Peru to pharmaceutical and agricultural chemicals.
Regarding the permitted acts in relation to a patented invention covered by the exemption, these also vary from country to country. For example, in Argentina, Costa Rica, the Dominican Republic, El Salvador and Paraguay, the “use” of the patented invention or “acts” necessary to obtain the marketing approval are permitted under the exceptions. However, the respective laws do not specify which uses or acts are included in the exception.
In some other countries, permissible acts within the exemption include “selling,” “offering for sale” (Colombian and Peru), “import” and “export” (Chile, Colombia and Peru).
According to the draft document by WIPO´s Standing Committee on the Law of Patents, the main challenges that countries face when implementing the Bolar exception relate mainly to the uncertainty about the scope of the exception in the national laws and the lack of awareness about the exemption among potential users who might benefit from it.
Source: www.wipo.intRead More
by Moeller IP Advisors
On March 8, 2018 the project IP Key Latin America was officially launched at the San Martin Palace in Buenos Aires, Argentina. IP Key Latin America is a collaborative project of partners with the goal of increasing awareness of the benefits of intellectual property. In particular, the group spotlights IP as a key to growth and job creation as well as supports increased IP protection and enforcement from Mexico to Chile and throughout the Latin American region.
Through its activities, IP Key Latin America will support international firms, especially EU enterprises, doing business in the region. These efforts will improve IP protection in LATAM, which will further encourage European companies to invest in Latin America. For European clients this means more legal certainty and quality in IP protection. By close cooperation with Latin American stakeholders and the involvement of academia, enforcement, industry and judicial authorities, the IP Key project will:
- Cover the full intellectual property lifecycle;
- Encompass a wide spectrum of IP rights; patents, trademarks, designs, geographical indications, copyright, trade secrets and plant varieties;
- Focus on IP enforcement, collaborating with enforcement authorities to train Latin American judges dealing with intellectual property matters;
- Provide and extend access to online IP search database to increase the global transparency of IP rights
Moeller IP Advisors was represented at the launch event by Thomas Messerer and José Santacroce. The project leaders, Pedro Duarte, project leader in Buenos Aires and Ricardo Ferreira, deputy project leader in Mexico also were in attendance. Other important participants in attendance included Antonio Campinos, Executive Director of the European Union Intellectual Property Office (EUIPO); Aude Maio-Coliche, Ambassador of the European Union in Argentina;Dámaso Pardo, President of the National Institute of Industrial Property in Argentina (INPI);Miguel Ángel Margáin, Director General of the Mexican Institute of Industrial Property (IMPI) and representatives of the European Commission and the EU Delegations in Latin America.
Moeller IP Advisors will cooperate with EUIPO and IP key project managers, thereby signaling our dedication to helping and improving IP matters in Latin America.
Please follow future blog posts regarding important developments.
The Madrid Protocol (MP) has allowed the owners of trademark registration to protect these in several countries by a simple application before their local or regional trademark office. Of course, the original application country and the ones designated thereof must be part of the MP.
The protocol has been in force since 1996, and ever increasing numbers of countries adhere to it (see below for a list of all the signatories).
In Latin America, only Antigua and Barbuda, Colombia, Cuba and Mexico have signed on to the agreement, and consequently only these countries can be designated for the protection extension that the MP allows. It is expected that other Latin American countries will become parties to the protocol over time.
However, the new application does not grant automatic registration of the mark. In fact, it works as a whole new application, which figuratively is filed by the World Intellectual Property Office (WIPO), before the local IP authorities, on the applicant’s behalf.
As a consequence of this, the local trademark offices will examine the application with the same severity as they would a regular/local trademark application. In this examination, the office can either admit the application for registration or reject it, based on any relative or absolute ground, as foreseen in the local legislation.
Should the request for protection extension be rejected, a provisional refusal resolution will be issued, and notified to the WIPO, which in turn will notify the applicant. Here is where the applicant will have to contact a local trademark specialist in order to get an assessment and advice on how to overcome this provisional refusal. The reply to this resolution must be filed by an agent from the country where the application was rejected.
After this brief explanation, it is important to reflect on whether or not it is recommendable to require the Madrid Protocol protection extension directly. Although many applications are admitted by the local Trademark Offices, many are not, and this is because each one has individual criteria, and trademarks are often rejected based on a prior mark that would not have been considered as confusingly similar in another country.
Consequently, a prior analysis of these matters, before requiring the extension the applicant should spend some time and money analyzing whether it is possible to encounter some conflict, and consequently be better to get advice beforehand is recommendable. Before requiring the extension of an International Registration, it is suggested to contact a local trademark specialist, who can conduct a thorough and full availability search for the trademark that the applicant is interested in, and advice on the best way to proceed.
If a prior trademark comes up, the local specialist can provide ideas for obtaining the registration, by including other elements, or with different legal services, such as prior negotiations or legal actions.
Although these prior measures might be considered unnecessary, and perhaps even as an excessive expense, it is important to highlight that they may result in a smoother registration procedure, which overall may be cheaper than one were posterior assessments and appeals need be filed on an urgent basis.
Furthermore, by foreseeing conflict, and doing everything possible to avoid it, it may be possible to save months, or even years, in the registration procedure.
In short, despite the fact that requiring the territorial extension of an International Registration may sound like the easiest and cheapest way to obtain trademark protection (and sometimes is), it is highly recommendable to consult with local experts on the chances to reach registration, and on possible courses of action, in order to avoid posterior conflicts later in the process.
For another insight on the consequences of the implementation of the MP, please see Laura Moreno’s piece on the matter posted previously in our blog: https://www.moellerip.com/madrid-protocol.
List of signatories up to Jan. 13, 2017:
How Do Fake Drugs and Chinese Counterfeit Medicine Impact Latin America & Its Pharmaceutical Industry?
By Moeller IP Advisors
Fake drugs impact so many aspects of society, it is hard to really wrap your arms around the problem. Public health, law enforcement, hospitals, drugstores and yes, even large pharma conglomerates. Pharmaceutical sales in Latin America are projected to grow nearly 12% per year through 2017. That makes it one of the most promising industries in the region.
What is the biggest problem facing pharmaceutical companies looking to capitalize on emerging markets in Latin America? No, it’s probably not underdeveloped infrastructure or under-educated health-care providers. It is most likely illicit medicine, with Chinese counterfeit drug smugglers spanning out across the world’s oceans.
Not only are fake drugs an issue for the legitimate pharmaceutical companies attempting to make inroads in Latin America, they represent a tragic public health problem. More than one million people worldwide die each year because of illicit medicine on the open market. That is moral problem and one that proper intellectual property infrastructure can help alleviate, even if just a bit.
Late in July, Colombian officials dismantled a criminal enterprise that was selling fake drugs and contraband medicine in legal markets. Some of those illicit medicines included treatments for brain tumors and HIV. Some drugs were manufactured in secret facilities, while others were smuggled across the border. No doubt, some came from East Asia and China.
Chinese counterfeit medicines are a problem in every corner of the globe. As Latin America grows its modern industries from biotech to Internet companies to the healthcare sector, the potential for cheap knockoffs in any business is going to grow as well. The negative economic impact of fake drugs is monumental; not only do you see damage done to revenues and profits of law-abiding companies, you see overall health-care costs spike as deaths and illness from unregulated medicines hit the population.
And Latin America should be aware that the illicit manufacturing could be happening in its own backyard. While the Chinese pharmaceutical industry is poised to grow nearly 27% over the next few years, fellow BRIC member Brazil is not far behind.
The planned Panama Canal expansion could provide more bandwidth for international counterfeit medicine smugglers to get their product into Latin America, according to Interpol. Apparently, maritime shipping lanes are a major source of drug smuggling.
If you look at this list of counterfeit drug facts from HealthResearchFunding.org, you find that the problem is much more pervasive than you might think. Pfizer, a large multinational drug company, does its own investigative work that can lead to dozens of convictions per year. That is necessary due diligence for emerging pharma companies in Latin America, such as Sanofi.
Without that commitment, the blow to profits and performance from Chinese counterfeit drugs will be detrimental to the industry’s growth.
Moeller IP is always able to assist you in these matters. Should you have any further questions, please do not hesitate to contact us.Read More
Several international Intellectual Property (IP) organizations have been actively promoting the Madrid Protocol in Latin American countries. Among others, the main organizations participating in this campaign are the International Trademark Association (INTA), the United States Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO).
The combination of Latin American governments modernizing their IP systems, the increase of investments of small and medium-sized economy enterprises in the region and the signing of trade related agreements all indicate that Latin America may be preparing for the adoption of the Madrid Protocol. International IP organizations have being quite active throughout the region in the sense of encouraging adoption of the Madrid Protocol by highlighting the benefits that this would entail.
The advantages stressed by INTA, for instance, in their promotion initiative include the following:
- 1. A simple and time- and cost-effective registration system (savings calculated to be 67% in total fees).
- 2. Multiple registrations using one application in one language that can be in English, French or Spanish and one application fee.
- 3. Streamlining of office procedures.
- 4. Co-existence with national trademark systems, providing an alternative route for registering marks.
The signing of the Trans-Pacific Partnership Treaty (TPP) by Mexico, Peru and Chile is another indication that the region is opening way to implementing the Protocol since the TPP contains a provision that the parties are obliged to accede to IP-related treaties, among which the Madrid Protocol is included, and will most likely prevail. The Madrid Agreement centralizes the management of trademark portfolios, allowing the applicants to pay one set of fees to obtain international registration in multiple territories, as well as recording changes on the International Registrations through one single electronic platform with effective results in the territories of the signatories.
Of the three Latin American countries that are members of the TPP, there has being serious indications that Peru is truly considering joining the Madrid Protocol. As a result, out of the 12 TPP members, 10 are already members or at least they are giving a certain consideration of joining, this according to a statement made by David Muls, WIPO’s senior director of the Madrid Registry.
Despite the resistance shown by the region, eventually more and more Latin American countries will lean towards acceding the Protocol.
INTA (2016). Topic Portal: Madrid Protocol in Latin America. International Trademark Association. Available at http://www.inta.org on September 22, 2016.
On August 10, 2016, the first Anti-Piracy Convention was held in Buenos Aires, Argentina featuring several exhibitors from both public and private sectors. At this conference, various issues affecting the LATAM multimedia industry were discussed.
The event began with a welcome address, detailing the objectives of the conference, by Sebastian Lateulade (President of TodotvMedia) and Francisco Escutia (CEO, Latin American Antipiracy and IP Consulting, LLC (LAAPIP).
Presentations included sessions on multiple topics such as status of pay television and piracy and its impacts throughout LATAM.
STATUS OF THE PAY TV IN ARGENTINA
Speakers: Tomás Gennari (of Business Bureau, BB), Ralph Haiek, (Vice president of National Institute of Cinema and Audiovisual Arts INCAA), Federico Villalba, (Representative of National Public Prosecutor’s Office Ministerio Público Fiscal de C.A.B.A.) & Ms. Silvana Giudici (Director of National Authority for Communications (ENACOM)
Mr. Gennari talked about the large number of households using pirated platforms today which not only affects advertisers, producers, software developers, hardware, collective management of copyright, to the market, but also the society in general.
The use of pirated platforms has resulted in pay TV in Argentina coming more or less to a standstill as no better alternatives are offered to the public. In contrast, Uruguay managed to reduce this problem by investing in digital TV and enacting an antipiracy law. Argentina should follow this path as well.
Mr. Haiek confirmed that the National Institute of Cinema and Audiovisual Arts (INCAA) is contributing to the fight against piracy through the creation of good and accessible content distribution locations. They are the national representative fighting for those who cannot access content on a regular basis. INCAA cooperates closely with the Argentinean Culture Ministry. Together these offices are working on improving a better selection of films and the distribution of movies to everyone on Argentine TV, in the hopes of offering a better-varied selection on Argentine TV, thereby reducing the usage of pirated platforms.
National Public Prosecutor’s Office raised the need to recognize piracy as a specific offense categorized as “unauthorized use of signals”. Although recognition of the “unauthorized use of signals” is an issue still pending in Argentina, Mr. Villabla confirmed that in Uruguay, this offense has been recognized as a criminal act by the creation of the “Anti-piracy law”. Argentina wants to adopt the same type of legislation regarding piracy.
Created in December 2015 through Decree 267, The National Authority for Communications (ENACOM) regulates communications in order to ensure that all domestic users have quality services. Ms. Giudici emphasized that ENACOM is aiming to draft a new media law, known as “Act of Communications Convergence” to replace the current law 26,522, enacted in 2009. This new media law will integrate the various companies of collective approaches, associations related to the media, authors, musicians, etc., and long term be responsible for the fighting of piracy.
INDUSTRY PANEL – LOSSES AND IMPACT OF PIRACY
Panelists: Daniel Steinmetz, (Fox’s Chief Anti-Piracy Officer), Francisco Barreto, (VP General Counsel & Corporate Affairs at DIRECTV ARGENTINA), Victor Roldan (VP Legal Affairs & Associate General Counsel at TURNER), & Sergio Piris (CABLEVISION’s Head of Legal Affairs and Crime Clandestinidad Technologies)
During this segment, representatives of the communication industry expressed their current policies to combat piracy, including:
- legal proceeding,
- new specific regulations,
- digitizing networks,
- investment of money and time,
- consumer education,
- easy access to different contents so that consumers can access them simultaneously to its release in another country.
INTERNET PIRACY PANEL
This segment began with the issue of advertising as big business for the internet, because as more piracy content a site uses, the more users enter, attracting more advertisers and obtaining, as a result, significant gains.
To combat this problem, the internet industry is looking for users to move from using illegal
sites to consume and pay for legal contents. Therefore, it is working with internet search mechanisms to prevent access to these pirate sites through:
- “notice and take down”: the site is notified so the content is removed from it
- “site lock”: the site and the content are not removed but the access to them is blocked for a specific country.
Finally, it is concludes that piracy is a regional problem and, therefore, the cooperation of all LATAM countries is needed.