AWA IP Blog deals with all kinds of IP issues – from interesting legal cases and new international IP legislation to information about international IP conferences and other IP events. The IP news is conveyed and commented on by employees at Awapatent.
AWA IP attorneys are crossing the pond to build relationships and work alongside top US IP firm Haug Partners LLP in Manhattan, NYC
It has been a successful beginning for the budding exchange programme between the two IP law firms AWA and Haug Partners LLP.
Following a pilot project and discussions involving European Patent Attorney and Partner Joacim Lydén (AWA) and Intellectual Property Partner Ben Natter (Haug Partners LLP), AWA’s European Patent Attorney Simon Markström from Jönköping (Sweden) was the first man to embark on the journey.
“It is important to have a good relationship with your partnering firm. The only way of building relationships is by spending time together. Normally, getting to know each other can take years as you only get a few time slots here and there. With this Exchange Programme, you work together every day and really get to know each other,” explains Simon.
During his three month stay in the US, Simon has been involved in meeting with clients as well as social activities with Ben and his friends.
“It works well for both firms. We went for dinner just the other night, and one of our foreign colleagues attending specifically wanted Simon’s contact information. It is an added benefit. Good things come when two networks mingle,” says Ben.
Both IP attorneys agree that to serve clients in the global market, good relationships and contacts are key. Spending actual time together beats phone calls and video conferences, and cultural differences are easier to understand in person than via email correspondence.
“I feel more confident cooperating with a colleague I know and trust,” says Ben.
The fact that Ben and Simon are similar age has been an additional bonus.
“We grow together as attorneys, both professionally and privately.”
I have gained priceless insight into working as an attorney in NYC.
-Simon Markström, European Patent Attorney at AWA
Studies and work
In addition to building bridges across the pond, Simon has taken the opportunity to complete the USPTO Registration Examination. He passed the exam two weeks before returning to Sweden.
Passing the Patent Bar Exam means that Simon would be allowed to represent clients before the USPTO if he was a US resident or a US citizen.
“I have no plans of moving here permanently though. For me, it’s just a seal of quality.”
It has been a given for Simon to keep in touch with his clients back home and continue helping them, even when in a different time zone. This has meant coming in early in the morning to his temporary US office to speak with his Swedish clients before they leave for the day.
For Simon and Ben, the AWA and Haug Partners Exchange Programme is so much more than just sitting and learning. It is about working together, bouncing ideas off each other and getting an insight into other cultures and ways of thinking.
So what have they both learned?
“I have learned that Simon works with his headphones on”, says Ben and laughs.
“Also, I have learned that he has a very good work-life balance.”
“It is big difference in work pace if you compare the US to Sweden. In Sweden I come in early in the morning and leave in time for dinner, not like many New Yorkers that comes in later but works until midnight or so.
“I have my wife and two children here. I want to spend time with them and they want to spend time with me. I guess keeping all these parts running smoothly has been the toughest challenge for me in the US.”
I love New York
Making time to do things with his wife and two young kids has remained a priority for Simon, although he confesses that his average work day has between 10-12 hours.
“We have really enjoyed our stay in NYC, specially knowing we only had these three months. Although it is a little bit more crowded than Jönköping, we love it. We wrote a to-do list when we got here and I think we’ve checked off everything except for going up the Statue of Liberty. A highlight was a helicopter ride over Manhattan.
“Overall, it has been a very positive experience. It’s always good to have a change of scenery and get to know a new culture. I have gained priceless insight into working as an attorney in NYC.”
Ben is also content with the outcome of the first visiting attorney from AWA.
“It has been a pleasure to have Simon at the firm and get to know him. We are very happy with the programme. It has also been a great benefit having foreign expertise in the office.”
The speed of change has never been faster, and the safest route towards going out of business is to stick to the route you’ve always taken.
Are you also dead tired of hearing this? Tired of hearing that, statistically, it’s more likely you’ll be out of business in ten years than that your company will still be operating? That more new companies were founded while you were eating breakfast than you have brain cells, and that their sole purpose is to put you out of business? That competition over skilled employees will become so fierce, it’ll feel like a corporate bloodbath?
I am. Tired of it. Maybe that’s because I’ve never much cared for communication by fear. Experience tells us it’s not an effective way to influence behaviour. It’s certainly not elegant, and I’m less inclined to respect those who do it. If you have to put a figurative gun to my head to get my attention, you probably need to rethink your communication.
So how could we illustrate today’s business climate in a less terrifying way? Well, how about as a deep pool, flooded with possibilities, refreshingly cool, with nice, positive people diving in to co-create with you? Sounds like a dream? It’s not. And it’s open to all, established or emerging.
For a brand strategist, it’s a wonderful swim. Brand positioning is in a pleasantly disruptive state, full of new possibilities. In mature markets, the traditional category positions have been occupied since way back – lowest price, premium/luxury, technology leader, customer leader, etc. But today, companies have the opportunity to shift brand positioning – creating new categories or skipping category altogether and position themselves on competence or attitude instead.
In disruptive branding, beliefs are the new black. In the future, I predict we’ll see many more brands positioned on who they are and what they stand for, rather than on what they sell or do. Why? Because we’re seeing a widening pool of customers choosing who they buy from almost solely based on what companies stand for. As products and services become generic, people buy beliefs instead.
So, in this disruptive business climate, branding irrigates new growth, as do all disciplines dealing with intellectual values. When physical and rational aspects become transient, emotional and intellectual properties spring forth.
Now is the time to dive into your brand’s beliefs. The water’s just the right temperature.
Guest author: Emma Nilsson, Brand Strategist at Graal Agency.
Attorney by trade Jake Wolff trusted his gut feeling and quit his day job to start his own business helping newlyweds changing their name
Deriving from New York City, Jake today lives in New Jersey with his wife and two kids.
“It all started when I got married and my wife wanted to change her last name to mine. She had no idea where to start and told me she wished she could pay somebody to do it for her. I thought to myself ‘this isn’t a terrible idea’”, says Jake.
He called his friend from law school Josh Gelb to pitch the idea. As it turned out, Josh’s wife was struggling with the same situation. They had married for 18 months without her changing her name as the procedure was so complicated. Needless to say, Josh could also see that there was a market for the concept of a name changing service.
The friends conducted research to find out that nobody else was doing the same thing. After speaking to more people, they realised there was an actual demand for the service and set up the website HitchSwitch.com.
The HitchSwitch concept is simple. The customer fills in an online form with his or her details. The HitchSwitch system then uses information submitted to autofill a number of forms needed for a name change. Depending if you want to print the forms at home or let HitchSwitch do the full process for you, there are three packages available with prices starting at $29. The aim is to ‘take the mystery out of the name changing process’.
“In the beginning, we didn’t have a developer. When the orders came through, I would write everything by hand,” laughs Jake.
It wasn’t a tough decision for him to quit his job in the Coop City’s Legal Department to commit to his vision full-time.
“I figured I could always fall back into it with my legal background but I wanted to see if HitchSwitch would take off and give it my all.
“I have no regrets giving it a go. I love it.”
With his legal background and law school behind him, Jake happily admits the newlywed name changing business is the last field he thought he would end up in.
“My wife makes fun of me saying ‘You’re working in the bridal/tech field yet you did nothing whatsoever during our wedding planning!’”
The first few months in business were a trial for Jake and Josh. Neither knew what starting their own business entailed nor had they anticipated the amount of work they needed to put in.
“Another two months of being in business, we had a total of about five clients. My dad was telling me to bartend somewhere at night to make ends meet but I assured him that HitchSwitch was going to take off and told him not to worry,” says Jake.
When the entrepreneurial duo received a message through their website from someone claiming the name HitchSwitch and threathing to sue the start-up for trademark infringement, it threw another spanner in the works.
“I was angry and scared out of my mind”, remembers Jake.
Luckily, the threat turned out to be false. But it served as a wakeup call for Jake and Josh, who were yet to register their trademark HitchSwitch.
If you have a good concept, people will sooner or later try to copy it or use it for their own profit.
-Jake Wolff, CEO and Co-founder of HitchSwitch
Jake called Intellectual Property Partner Ben Natter at Haug Partners LLP, another friend of his from law school. When speaking to Ben, he quickly realised their IP was an issue that needed immediate addressing.
Together, they trademarked the name HitchSwitch and filed a few of the marks the start-up was using.
“The reason why I like working with Ben so much is because when we started our business, we spoke to loads of attorneys who would just talk about incorporating. We weren’t making any money at that stage, and spending $3000 on an attorney giving us theoretical advice stung. Ben, on the other hand, never suggests something I don’t practically need or will put to use.
“He has shown me the need to protect what you have built up to make sure no one will rip you off.”
HitchSwitch was to experience more trials along the way. A former employee tried to start her own name changing service using the HitchSwitch system although she had signed a non-compete agreement when joining the company.
“Our attorneys took care of it straight away. It literally took three days and she was out of business. It was probably the worst decision of her life!” says Jake.
Another time, a Facebook page used the name HitchSwitch to get more hits. Within 20 minutes of making the phone call to Ben, the page had been taken down from the social media platform.
“These experiences really showed me the power of having your IP in place. If you have a good concept, people will sooner or later try to copy it or use it for their own profit.”
Six years after its start, HitchSwitch is now a profitable company with offices on the Upper West Side of Manhattan and plans of expansion to the EU and the UK. AWA is helping Jake and Josh with their European trademarks and domain names.
“Anyone Ben recommends, I trust. He suggested Kristian Martinsson at AWA who is now filing our IP registrations in Europe as we want to keep this market available for future business.
“We are primarily looking at English speaking countries in our expansion. You have to be on top of domestic and regional laws when it comes to name changing. In Quebec, Canada, you have to for example file in court before a judge and make a public announcement in the newspaper. In comparison to the US, where it’s the marriage certificate which enables you to change your name, it is widely different.”
Around 85% of all US newlyweds change their name when they get married and HitchSwitch is living proof that there is a market for name changing services. The company were profitable after 16-17 months in business.
“I don’t really view us as a start-up anymore as 98% of the other start-up companies we met at networking events a few years don’t exist today but we do. However, I still keep the start-up mentality. Our team consists of six people and we are very flexible and open in our approach. We never stop testing new things and there are no closed door meetings. I like to run a business that way.”
Women between the ages of 20 and 40 are HitchSwitch’s prime demographic, representing a total of 98% of their clients. However, this is slowly changing.
“When same sex marriage became legal throughout the US, we have seen a change in our clientele. Prior to this, some states even had laws stating that a man could not take the surname of his wife. Today, marriage certificates in all US states can be used to change your surname to the one of your spouse – regardless of sex.”
If two spouses want to create a hybrid of their names names, e.g. change their names from Smith and Jones to Smijo it requires a more complicated legal procedure.
Although HitchSwitch does offer name change services for divorcees, it is nothing they openly advertise on their website.
“It is like a secret menu but everyone knows about it. We originally had ‘Divorce’ on our website, but were told it put newlyweds off.”
At the time of writing, HitchSwtich has helped around 500 000 newlyweds. And as for the future of his business, Jake takes each day as it comes.
“At the end of the day, I really believe we are touching people at a point in their lives where we can really help them get through something. Most newlyweds do need help navigating through the waters of changing their names. In ten years, I hope we are still helping people out by adapting to new technology and laws, still evolving and expanding to new markets.
“I haven’t had to get a ‘real job’ in a while now. That’s always a good sign!”
For more information on HitchSwitch, please visit their website hichswitch.com
For their European IP matters, HitchSwitch has been consulted by Kristian Martinsson at AWA’s Lund office.
Some thoughts on the EU Commission proposal for manufacturing waivers to restrict SPC protection
On 28 May, 2018, the European Commission published its proposal to amend Regulation (EC) No 469/2009 concerning supplementary protection certificate for medicinal products. Urged by the European Parliament, the Commission introduces a so-called manufacturing exemption for export purposes, also known as a “manufacturing waiver” to the protection conferred by the certificate.
The proposed amendment excludes enforcement of SPC rights for acts performed to make a medicinal product for the exclusive purpose of export to third countries.
The main reason behind the proposal is to give EU-based manufacturers of generics and biosimilars a better competitive position. Under the current SPC regime, the Commission says, SPCs have had the unintended consequence of preventing manufacturers of generics and biosimilars established in the EU from manufacturing, even for the exclusive purpose of exporting to third country markets in which protection does not exist or has expired. Further, and equally unintentionally, the protection conferred by an SPC makes it more difficult for those manufacturers to enter the Union market immediately after expiry of the certificate, because they are unable to build up production capacity until the protection provided by the certificate has lapsed. Consequently, these EU manufacturers are disadvantaged compared to manufacturers located in third countries where protection does not exist or has expired.
The Commission expects the changes to the SPC Regulation to not only contribute to Europe’s competitiveness as a hub for pharmaceutical R&D and manufacturing in general, but to specifically generate as many as 25 000 new jobs over the next 10 years.
To safeguard the interests of EU rights holders, the Commission proposes a notification system, under which the maker is required to inform the patent authority in the Member State where production is to take place before the intended start date. The information required encompasses i.a. details of the production and of the intended recipient third country, and shall be published by the authority.
Further, the proposed exemption is conditioned upon specific labelling requirements. The medicinal product shall be marked with a logo identifying the product as a product exclusively intended for the purpose of export to third countries.
It is also specified in the amended regulation that the exception does not admit placing the medicinal product on the market in a Member State where an SPC is in force, either directly or indirectly after export, or the re-importation of the product to the market of such Member State. Activities for the purpose of importing medicinal products into the Union for repackaging and re-exporting are still fully covered by the SPC.
The Commission has held online public consultations on SPC related issues. It is not surprising that most of the SPC holders responding to such consultations are opposed to the proposal, whereas generics/biosimilars manufacturers have confirmed the need for a manufacturing waiver. But also for such generics/biosimilars manufacturers, the proposal has its limitations. One such limitation is that the exemption is valid only for exports to non-Union countries. Supplementary protection certificates, albeit regulated by Union law, are national rights, each based upon a patent valid in the actual Member State where the certificate is applied for. Whereas the competitors of EU-based manufacturers may freely market and distribute their medicinal products in EU member states where the patentee did not succeed in obtaining an SPC (provided the necessary marketing authorisations are in place), the European manufacturers may not export their products to countries within the EU under the proposed exemption. No reason behind this limitation is put forward in the Commission’s proposal, it is just repeatedly emphasised that the exemption is applicable only to third countries. Such third countries are indeed often referred to in the proposal as “non-EU countries”. When reading through the proposal, I get the feeling that the Commission has assumed that patentees in Europe enjoy a fully harmonised implementation of the SPC Regulation and that all SPCs are actually EU wide, should the patentee wish to apply for SPC in all Member States. Knowing that we have a long way to go for EU wide SPCs, I am curious whether the Commission has limited the waiver to third countries in preparation of a future unitary SPC, or if it is meant to be a further safeguard or pro-balance for SPC holders?
The proposal also repeatedly emphasises that the manufacturing waiver applies to exports to non-EU markets where the SPC has expired or never existed. In fact, the Commission spells out that the “proposal will not affect the market exclusivity of SPC holders in the EU, as it will only impact on non-EU markets where protection does not exist or has expired”. However, the amended Article 4 of the SPC Regulation sets out an exemption applicable to acts which comprise “making for the exclusive purpose of export to third countries”. The wording “where the SPC has expired or never existed” is mentioned a few times in the preamble of the proposed amended Regulation, but not in the context of the proposed conditions of the manufacturing waiver. If the Commission specifically intends for the waiver to apply only for exports to countries where the medicinal product is not protected by a patent or SPC, it is very unfortunate that such wording is not included in the amended Article 4. It raises the question of whether an act of manufacture and export, which the generics/biosimilars manufacturer thought was waived, later can be deemed as covered by the protection conferred by an SPC if it is then resolved that the product was protected by a patent or an SPC in the third country? Such litigation would open up a whole new can of worms, I would think.
The manufacturing waiver is proposed to have an effect only on certificates granted on or after the entry into force of the amendment, providing the SPC holders time to consider their SPC strategies.
The Commission points out that the proposal for a manufacturing waiver is not part of the general revision of the SPC Regulation, and that a wider pharmaceutical incentives analysis is currently ongoing. We may therefore look forward to a whole lot more to discuss and analyse, in due time.
They say necessity is the mother of invention. When August Bering’s young son wanted to learn how to play the drums, the entrepreneur came up with the easy-to-use (and silent) solution Freedrum.
With a diverse background in music and computer programming, August is a trailblazer in different areas of innovation.
“New ideas and projects have always been an important part of my life. I am an entrepreneur to the very bone,” he says, adding:
“But I always wanted to be a rock star as well!”
After some online research following his son’s interest in the drums, August soon realised the virtual solutions on the market were quite complicated and difficult to use.
“You needed a camera to record you when you are playing, a big empty room with decent acoustics, a huge lamp to shed light on you as you play – and quality sun shades as the lamp in your face is so strong you can barely see anything. Oh, and a brilliant computer to process everything. It was honestly more hassle than it’s worth.”
August asked himself why nobody had tried using motion sensors on the drumsticks. He decided to have a go himself and built a prototype which “actually turned out pretty well”.
“I truly felt that when people see this invention, they’ll want it.”
He contacted Almi, a start-up advisory, who put him in touch with advertising agency Block Zero. Together, they started a work exchange: they created a video for Freedrum and August helped them in return. The video caught the attention of Block Zero Co-founder (today CEO of Freedrum) Philip Robertson.
“He loved the concept and managed to convince the others to get more involved. It was a perfect solution for me as an inventor: I could do what I do best and others could help with the packaging of the idea.
“We did a Kickstarter campaign in November of 2016, raising $600 000. I was hoping for a million, but it was still pretty good!”
It doesn’t matter how great the product is, if the sound is delayed by a second once you’ve hit the drum, it just doesn’t cut it.
The team took August’s prototype and concept from dream to reality. The unique technique behind Freedrum involves a micro sized gyroscopic sensor, monitoring how the drum sticks twists. By adding the motions, it comes to conclusions on which position the drum sticks are placed. This way, the gyroscopic sensor knows at which drum the drum sticks are currently pointing and by a built-in accelerometer it is possible to detect how hard you hit the drums.
“It’s actually a simple principle, but it is very difficult to get working properly. The technique needs perfecting, but we’re getting there.”
AWA is Freedrum’s strategic IP partner and the company currently has a patent application pending for a latency technique which aims to avoid a delay in the sound reproduction.
“This is one of our most pressing issues at the moment. It doesn’t matter how great the product is, if the sound is delayed by a second once you’ve hit a drum, it just doesn’t cut it.”
With Freedrum’s new technique to prevent this, the sensors predict the beat before it is administered.
“We mostly use IP to get potential investors on board and to put our competitors off from trying to copy the technique.”
The Freedrum equipment is now available for purchase in their online shop, with a beginner’s kit starting from 125 euros. The biggest markets for August and his team are the US and Europe, adding up to a total of 80% of all sales.
“We use social media marketing for Freedrum as we have noticed it works for our company”, says August.
“We saw a dramatic increase in sales after a massive Facebook group with around 30 million followers reposted our video.”
After two years in the making, by the time the finished Freedrum product had reached the market August’s son had however moved on to his next fad.
“He’s into Grand Theft Auto and gaming now. Maybe he will revert to music when he’s a bit older though. That’s what I am hoping anyway.”
For more information on Freedrum, please visit their website freedrum.rocks
Antibodies are currently enjoying great attention and are, together with their derivations and combined applications, growing to occupy centre position in the therapeutics and diagnostics fields.
Indeed, the possible industrial applications have increased many fold since the harvesting of the first monoclonal antibodies by researchers Ehrlich & Metchnikoff, which led to an effective syphilis treatment as early as in 1910. Today, monoclonal antibodies are rapidly dovetailing into such new areas as immunotherapy, multispecific antibodies, antibody drug conjugates or CAR-T. Consequently, the worldwide antibody market size is approaching USD 90 billion and is expected to exhibit a growth rate of 5.7% per annum between 2018 and 2024.
Our burgeoning awareness of immunity began some 3000 years ago with the discovery that powdered smallpox scabs could be used to protect people against the disease. It is now known that this protection is mediated by our adaptive immune system (AIS), which, driven by lymphocytes and DNA rearrangements, creates a myriad of receptor specificities towards many targets, called antigens.
Antibodies are large protein molecules occurring naturally as part of the AIS in humans and other vertebrates. They are able to selectively bind and neutralise pathological agents within the body. The antigen receptor specificity of an antibody is ensured by virtue of its complementary determining regions (CDRs), which are contained within the variable fragments and produced by the abovementioned DNA rearrangements. The CDRs form the antigen-binding site (Fab), or paratope, on the amino-terminal ends of the antibody molecule. The remainder of the molecule is formed by non-variable, or constant (Fc) fragments.
In the US, it has previously been possible to functionally claim an antibody by its ability to bind a novel target. However, this broad-claim approach has recently been challenged by the US Court of Appeals for the Federal Circuit ruling in Amgen vs. Sanofi  that such an approach does not meet the requirement for disclosure of the invention in the specification. This appears to leave broad antibody claims hanging on a thin thread in the US, and ushers in the ominous thought of more complicated drafting and prosecution for applicants wishing to seek protection in jurisdictions with diverging precedents for validity.
Before the European Patent Office (EPO), the same requirements for patentability are applied to the patenting of antibodies as are to other inventions. The EPO currently considers an antibody to be novel if its target is new, and it will usually be considered inventive as long as the antigen is sufficiently disclosed in the application. This holds true even when only claiming one or several functional features, e.g. binding affinity (such as a Kd or Koff value), without limitation to a particular sequence, if the properties are not known from the prior art . At the same time, standardisation of techniques for antibody production, selection and purification has led the EPO to deem the production of monoclonal antibodies by the hybridoma technique as routine. In other words, such production is not considered to involve an inventive step and, thus, is not patentable .
When seeking the broadest scope of protection, one must therefore strive to achieve a balance that will offer the best chance of withstanding a validity challenge like in the Amgen vs. Sanofi case. A claim supported by extensive testing will significantly improve these chances and, at the same time, sizably expand the scope of protection to include important commercial developments. Success will mostly depend on the available technical data at the time of filing, or on the likelihood that sufficient data will be generated that could support an epitope claim, such as alanine scanning, deletion studies, epitope binning experiments, crystal structures, or other work that would shed light on competitive binding. With regards to inventive step, EPO Boards of Appeal decision T1329/04 determines that it is possible to rely upon supplementary data filed subsequently, but also that these must be at least plausible at the filing date .
In the case of claiming a new antibody to a known target, T735/00 determines that “an unexpected effect” in the form of non-predictable functional characteristics must be demonstrated for inventive step to be acknowledged . In addition, the disclosure of all six CDRs may be required; unless data is available showing that any characteristic relied upon is achieved with fewer CDRs. This requirement may also include the full disclosure of the Fab sequence if the framework regions are considered to play a role in the binding affinity or if they are otherwise relevant to the characteristic(s) relied upon.
Likewise, the antigen to which an antibody binds may be defined structurally, e.g. by reference to the amino acid sequence of the epitope in the antigen, or functionally, e.g. by reference to a specific monoclonal antibody which binds to that epitope. For a claim functionally defining an epitope to succeed, however, it will typically be necessary to demonstrate that some unexpected, advantageous property is associated with the epitope.
With regards to sufficiency of disclosure, a given subject-matter is sufficiently disclosed if the specification provides a teaching that enables the skilled person to find suitable variants that have the same effect as the molecules exemplified in the specification. Indeed, T431/96 and T617/07 determine that a claim concerning antibodies defined by structural and functional features (e.g. CDR sequences and a functional effect as described above), and where the skilled person would be able to rework the invention and provide antibody variants having the functional requirements indicated in the claim in a straightforward, albeit time-consuming manner, the invention is deemed sufficiently disclosed  .
In summary, the advantages of broad-scope protection may still be considered low-hanging fruit before the EPO, as evidenced by recent case law. This is no longer the case in some jurisdictions, nor does it always hold true for antibodies for which an unexpected effect of target binding is lacking. Claiming an antibody for a known target for instance, may require a time- and resource- costly generation of data and a noticeable increase in drafting and prosecution efforts to produce a patent with sufficient disclosure to withstand validity attacks.
 Monoclonal Antibodies (mAbs) Market Size, Grand View Research Industry Report, 2018 – 2024, 2016. [Online]. Available: https://www.grandviewresearch.com/industry-analysis/monoclonal-antibodies-market. [Accessed: 11-May-2018].
 Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017).
At the end of April, Swedish HRH Carl XVI Gustav and Queen Silvia paid a much noted visit to Japan to celebrate 150 years of diplomatic relationships between the nations. In 1868, Sweden and Japan concluded a Treaty of Friendship, Commerce and Navigation.
The anniversary also celebrated the strong industrial collaboration between the countries, and the agenda was permeated with innovation and co-operation in scientific areas. Noteworthy in this respect is the fact that over 20 Japanese researchers have received the Nobel prize. As early as 1949, Hideki Yukawa was the first Japanese to be awarded the prize in Physics.
The very first Swedish company to start operations in Japan was Gadelius, initially focusing on steel and iron, but since then expanding into business consulting. Swedish brands are usually well-known and highly regarded in Japan, such as Gustavsberg for their design, and of course Volvo. Today, there are around 1500 companies related to Sweden active in business with or in Japan.
In the 1960’s efforts were made to increase the cooperation in the areas of science and research. The Office of Science and Innovation opened in 1966 and is now a part of the Embassy in Tokyo. In 1999 a bilateral Science and Technology Agreement was signed. Research programs within fields as biotechnology and nanoscience have started, e.g. a collaborative research program on biosciences which was jointly founded by the Swedish Agency for Innovation Systems (Vinnova), the Swedish Foundation for Strategic Research (SSF) and the Japan Science and Technology Agency (JST).
The number patent applications filed by Swedish companies in Japan have remained relatively constant the past few years. Top three filers are Ericsson, Autoliv and Volvo Trucks, but companies such as Axis, Alfa Laval and SCA are among top ten.
Japan has always been regarded by Swedish companies as a highly innovative country and an important market. But obtaining patent protection in Japan has often been considered costly and difficult. The cost is mainly due to translations requirements, but recent statistics from the Japanese Patent Office (JPO) show that the patent grant grate hasbecome remarkably higher since 2010; from a rate at around 50% to up to around 70%, when at the same time reducing the period from request for examination from almost 2,5 years to around 10 months. Looking at appeals, the success rate is astoundingly high – around 80%. Even further, to add to the good news in these statistics, the invalidation rate has dropped from around 45% to around 20%, i.e. once a patent is granted it seems difficult to have it invalidated.
This is believed to be a deliberate strategy by the Japanese authorities to attract more companies to do business in Japan. There is strong competition with other Asian markets, such as China and South Korea, and Japan is showing a more lenient attitude towards patent applicants and the inventions they want to protect. According to Japanese patent attorneys, the main difference is believed to lay in the slightly different approach to the assessment of inventive step, which makes it easier for applicants to argue in favour of their inventions.
From a Swedish perspective, this means that the Japanese market, with its more than 127 million inhabitants, being the world’s third largest economy, as well as the fourth biggest importer, should be very interesting from a patent perspective as well, especially considering the recent, more relaxed attitude from the JPO.
 More information can be found at the webpage: swedenjapan150.jp
 Statistics in this article have been compiled by Shiga International Patent Office, Tokyo, Japan
Considering that the UK now has ratified the UPC agreement, the entry into force of the system seems imminent although the German Federal Constitutional court still have to settle the complaint filed during 2017. If the complaint is dismissed, we will probably see the UPC opening up in 2018.
Out of the 25 EU member that have actually signed the agreement, 16 have so far ratified the UPCA. Let’s have a closer look at some of them and the courts they will host. The full list of countries that have ratified the agreement can be found here.
In general, the UPC will have a Court of First Instance, which in turn will be divided into local, regional and central divisions and a Court of Appeal seated in Luxembourg. There will also be mediation and arbitration centres, for instance one in Ljubljana. The courts may have local or regional judges as well as from a pool of judges. The central divisions will briefly handle all revocation actions, in the language in which the European patent was granted, and the local and regional divisions will handle, amongst other cases, infringement actions.
The very first country to ratify was Austria which signed their ratification as early as August 2013. Austria has announced that a local division court will be set up in Vienna, acting in English and German.
In March 2014, France ratified the agreement. This was an important statement made by the French government, as the main seat of the central division of the UPC will be located in Paris. Apart from the central division, France will also host a local division. The central division, as all central division courts, will act in English, French and German, and the local division will at least act in English and French.
The U.K., who despite the referendum to leave the EU, now recently has deposited the ratification instruments, is the second country to host a central division court in London. This court will be directed to mainly patent classes related to human necessities.
Denmark held a referendum in May 2014, and the government was then able to proceed with the ratification process in June the same year, and a local court will be set up in Copenhagen, acting in Danish and English.
Although it was foreseen by some, Finland that ratified in January of 2016, will not join Sweden in a regional court. Instead a local court will be established in Helsinki, acting in Finnish, Swedish and English.
Sweden ratified the agreement rather early (June 2014) and has since then decided to set up a Nordic-Baltic regional division in Stockholm, together with Latvia, Estonia and Lithuania, all of which have also ratified the agreement now; Latvia as recently as in January 2018. This court will however act in English only and will have two regional judges iaddition to one judge from the pool.
Italy is also an interesting country seeing they first challenged the legality of the enhanced cooperation with Spain, but after these challenges were dismissed, moved on and signed the ratification in February 2017. Italy was in the running for taking over U.K.’s position for hosting a central division, but will now have to settle for a local division in Milan. The court will act in Italian and English. There are also plans of possibly opening up a regional court for handling proceedings from the nearby, but much smaller, Balkan countries.
Belgium, who will be hosting the Appeal court in Luxembourg, ratified the agreement in 2014. Belgium will also host a local division, acting in all three national languages and in English.
In the adjacent country, the Netherlands, a local division will be seated in the Hauge, where litigation will take place in both Dutch and English.
Both Bulgaria and Malta have also ratified the agreement, but none of these countries will probably host a local or regional division. This means that their patent cases will be handled before the central division.
Out of the countries that still have to ratify the agreement, Germany is the one having the most advanced plans regarding local courts. In addition to the central division, seated in Munich, Germany – which is the country that already sees most of the patent litigation taking place in Europe – will also host the maximum of four local courts that is allowed. These local courts will be seated in Düsseldorf, Mannheim, Hamburg and Munich. As far as the languages of these local courts, it’s up to court to decide. For now it seems as if English will be allowed in addition to German.. It has been foreseen that the court in Düsseldorf might apply a limited rule, in which judgement will be passed in German only. The central division on Munich will handle cases related to mechanical engineering.
This leaves Cyprus, Czech Republic, Greece, Hungary, Romania, Slovenia and Slovakia to ratify. Poland and Spain are unlikely to ratify the UPC agreement anytime soon. However, Croatia, a country that joined the EU in 2013, is already preparing to join the UPC.
On 1 May, Nikola Corporation filed a law suit against Tesla Inc. In the court filing, Nikola Corporation claims that Tesla Inc. infringes three US design patents protecting the overall shape of the fuselage, the wrap windscreen, and the side door.
Nikola Corporation, more known as Nikola Motor, is a US start-up company developing fully-electric hydrogen powered semi-trucks and plans to deliver their first semi-trucks to customers in 2020. Tesla Inc. is a US company best known for their electric cars; Model S and Model X. In 2016 Tesla announced that they will be broadening their product portfolio with a battery-powered electric semi-truck and that production will begin in 2019.
Considering that the two companies have chosen different power sources – hydrogen vs battery powered – and that neither of the two companies actually have any semi-truck on the market, the fact that they are already fighting over the design of the truck makes it apparent that the expectations on the market value are great. This is also reflected in the fact that Nikola estimates its harm from Tesla’s infringement to be in excess of $2 billion.
These kind of claims are otherwise more often found within the smart phone industry, and especially between the giants Apple and Samsung. Noticeably, the battle with law suits and counter claims within the smart phone industry did not emerge this early – as it now has emerged within the electric semi-truck industry – even though both the introduction of smart phones and the change to electric semi-trucks may be regarded as disruptive innovations. One reason for that may be that the need for transportation is well-established and it now becomes a battle over a known market, whereas the smart phone market, at the introduction of the iPhone, still had an unknown value.
On 2 May, the stock price dropped about 4% in response to the news about Nikola Motors law suit. As a personal reflection, the current valuation of the Tesla shares is and will be more dependent upon when the difficulties associated with the manufacturing of model 3 are solved. Although the law suit filed by Nikola Motor is indeed a significant claim against Tesla, the ups and downs in the launch of the model 3 are in the long term far more important than this law suit. This is also reflected on the stock price on Nasdaq. The overall drop in stock price during the problems with the production of Model 3 has been in the order of 20-25%.
About 20 years ago when I started working in the IP industry dealing with patent renewals, I found myself frustrated about the cumbersome way of working and the many mouse clicks required in what at that time was the current renewal management system.
I asked ‘why can’t we have access to the official webpage, enabling clients to easily send instructions regarding the renewal of patent portfolios?’. I don’t remember exactly what answers I got at the time, but I’m sure that the general opinion was that I was just a little bit ahead of my time or and just a little bit young and naive. In my following quest searching for improvement, I began studying IT development and IT communication, hoping to find answers. The search was long however the future was not ready to reveal itself yet.
Back to the present, it is now evident that IP renewal management is adapting to the digitalised era. Innovation is taking place significantly faster in the digital field, and it is therefore critical to be aware of what clients expect.
Communication through digital platforms has become common in our everyday lives. Technology is advancing faster and faster every day and, for us to keep up, it is essential that we break down the old world silos of information and the dusty communication methods. We must embrace this digital transformation to evolve the culture within our industry. We must know our clients, enable true partnerships and work in an open, collaborative environment.
Without question, the Digital Revolution has resulted in broad social impacts and widespread lifestyle changes. It has increased and improved the ability to communicate and find important information. Additionally, it has made globalisation possible which has, in turn, resulted in more effective and efficient business productivity. Source: www.worldatlas.com
The digitalisation of patent annuity services
Clearly the trend of digitalisation is accelerating. Through the digitalisation of IP renewal management services, the industry is realising its potential and overall efficiency gains. Digitalisation enables the processing of large amounts of patent data and creates effective market-oriented business management to supports the growing numbers of IP rights. Through providing a manageable and accessible digital portal, today we have access to various tools which offer clients a quick, flexible and easy method for managing their patent portfolio. A digital platform that provides overview, control, transparency.
The digitalisation is upon us. It is exciting and amazing, however I cannot help but feeling a little overwhelmed by the technology, the energy, and the speed of this development.
The world is changing – we better be prepared for the next revolution.