Intellectual Property Office Research Articles

Monkey business

Case T-548/17 VF International Sagl v EUIPO—Virmani (ANOKHI) ECLI:EU:T:2018:686, General Court of the European Union, judgment of 16 October 2018 The General Court has annulled a decision of the Fourth Board of Appeal of the European Union Intellectual Property Office, rejecting VF International’s opposition based on its earlier ‘Kipling’ figurative marks to an EU trade mark application by Mr Ken Virmani for a figurative mark featuring the word element ‘ANOKHI’ applied for in respect of a variety of goods and services including bags in Class 18 of the Nice Classification. In 2014, Mr Ken Virmani filed an EU trade mark application for the following figurative sign: The application covered a variety of goods in Classes 9, 14, 18 and 25, including jewellery in Class 14, bags in Class 18 and clothes in Class 25. VF International opposed the application under Articles 8(1)(b) and 8(5) of Regulation 207/2009 (now Regulation (EU) 2017/1001—EU Trade Mark (EUTM) Regulation). VF International relied on its two earlier EU trade marks depicted below, both covering a variety of goods and services in Classes 9, 14, 16, 18, 24 and 25, including jewellery in Class 14, bags in Class 18 and clothing in Class 25.

M-Health in the Surgical Context: Prospecting, Review and Analysis of Mobile Applications

Background m-Health initiatives can show an opportunity to improve the identification, prevention and management of certain diseases. Most health-care applications aims at chronic noncommunicable diseases care, and it is necessary to seek evidence from applications intended for surgical patient care, either before, during or after hospitalization. Objective: The Study Aims to identify and analyze, from the literature review and prospecting, applications for smartphones developed to assist the surgical patient. Methods: A descriptive-exploratory study developed in two sequential phases. The first one corresponded to an integrative review of the literature in the databases PubMed, Web of Knowledge, Europe PMC database and Cumulative Index to Nursing and Allied Health Literature database. The second phase corresponded to an exploration of applications in the European Patent Office, United States Patent and Trademark Office (USPTO), Free Patents Online, Canadian Intellectual Property Office and World Intellectual Property Organization. In both phases, we do not restrict the results by year of publication/registration or language. At each stage, the selected studies/patents were analyzed and pre-selected, according to the inclusion and exclusion criteria, by reading their titles and abstracts. Subsequently, we analyzed those with the potential of participation in the study, evaluating the answer to the research question, as well as the type of research, objectives, sample, method, outcomes, results and conclusion. Finally, the articles/patents record found were read in full. Results In the databases, 14 studies that presented some application for smartphone aimed at the surgical patient were selected. Most of them were in PubMed (64.3%), published in English (100%). Regarding origin, 28.6% of the texts are from the United States of America, 14.3 from Sweden and 14.3 from Canada. On the other hand, in patent databases, 10 registries were selected, 60% in the USPTO patent base, hosted in hybrid systems (iPhone and Android) and developed in the last 5 years (2014-1018) (80%). In general, there is a series of applications aimed at surgical patients, such as targets and/or users, mainly focused on the exchange of text and image messages but concentrated on assisting the physician/health team in the preparation of the patient during the procedure or post discharge. It is necessary to invest in the creation of technologies that aim to monitor these patients, especially in post discharge. Conclusion The characteristics of applications indicate a strong hospital centered tendency in relation to its purpose, having the surgeon as the main user and the surgical patient as the main target. The applications are still focused on optimizing diagnostics or functions, and no initiatives are identified to monitor the patient in a non-hospital environment.

Exploring and Visualizing the Patent Collaboration Network: A Case Study of Smart Grid Field in China

Smart grids (SGs) have been widely recognized as an enabling technology for delivering sustainable energy transitions. SGs have a positive effect on the development of the world economy and society. SG construction plays an important role in responding to global climate change and promoting the sustainable development of the world economy and society. Under such a background, this paper attempts to investigate patent collaborations of the SG field in China. Based on the application data of collaborative patents from State Intellectual Property Office (SIPO) in China, this study employs complex network theory and social network analysis (SNA) method and conducts in-depth research on the patent collaboration network of SG field in China. The trend of patent collaboration was examined, the collaboration network of SG-related patents was investigated, the network characteristics, and the network structure were also explored. The results show that the proportion of enterprises participating in patent collaboration is relatively large for SG field in China, the percentage of collaboration relationships formed by different patent applicants varies greatly, and that the State Grid Corporation of China (SGCC) plays an important role in patent collaboration in SG field currently. It can also be found that patent collaboration is an effective form of cooperative innovation among different entities. Finally, three suggestions are provided in response to the existing problems.

“Alone we can do so little; together we can do so much”: the essential role of EU agencies in combatting the sale of counterfeit goods

ABSTRACTThis article demonstrates the role and importance of EU agencies in the EU’s regulatory environment, and considers the consequences of an absence of cooperation through agencies for internal security. It does so by exploring the case study of the anti-counterfeiting activities of the European Union Intellectual Property Office (EUIPO), and what happens when a state no longer benefits from membership of an EU agency. The effective protection of consumers from counterfeit goods is dependent upon identifying best practices, sharing information on counterfeiting trends, and coordinating responses, activities undertaken through EU agencies. This article demonstrates that the ability of states to effectively counter the sale of counterfeit goods is dependent upon the existence of EU agencies due to the need for transnational cooperation. In the absence of EU agencies, states are likely to suffer diminished operational expertise and a lack of in-depth knowledge concerning counterfeiting trends. It concludes that the EU agencies form an essential part of EU security governance, with states not party to these cooperative endeavours rendered vulnerable and unable to combat at a national level what is ultimately a global problem.

Desperately seeking innovation nirvana: Australia’s cooperative research centres

The Cooperative Research Centre (CRC) program has been one of the flagship programs of Australia’s National Innovation System (NSI) for 30 years. But compared to other members of the Organisation for Economic Co-operation and Development (OECD), statistics indicate that Australia has persistent low levels of business expenditure on research and development (BERD), while World Intellectual Property Office (WIPO) reports highlight poor diffusion-of-innovation characteristics. In response to reports of this ilk, and in line with the generally evolving nature of NSIs, the CRC program, and the Australian NSI system, has developed and matured. In a wide-ranging longitudinal review of the program’s policy documentation, we discover that a number of changes have affected the language used within the program, the targeted organizations, and, crucially, the duration of the funding periods. We conclude that, within the confines of the nation’s historical and geographic context, the CRC program exhibits similar characteristics to NSIs elsewhere. In addition, there may be scope for Australia to split the CRC program into separate streams, and that even further support for integration into the Asia-Pacific markets is likely to be beneficial to the diffusion of Australian innovation.

Theoretical Framework of Smart Intellectual Property Office in Developing Countries

Rapid ICT development, globalization challenges, intellectual property (IP) as indicators of economic development, and the challenge are the patentability of computer-implemented inventions and artificial intelligence implications for the IP Office (IPO) to transform from the digital paradigm to the smart paradigm. Nevertheless, because of the lack of literature on the smart IPO framework, we refer to smart government and smart city framework. The aim of this paper is to propose a framework for smart IPO in developing countries in the context of smart city framework. The study found that smart IPO composed of several components such as 1) Smart IPO Model; 2) Smart IPO Enterprise Architecture; 3) Smart IPO Collaboration Model; 4) Smart IPO Development Model; 5) Smart IPO Measurement Model; 6) Smart IPO Standard; and 7) Smart IPO Services. It also found that there are four models of IP office as follows: Model 1 (basic web-based, public services); Model 2 (advanced internal administration); Model 3 (full process automation); and Model 4 (knowledge-based IP services). Moreover, we found also three stages of IP development model: Stage 1 (automation of internal processes); Stage 2 (web-based e-services); Stage 3 (e-dossier, e-filing, e-payment).

Technology Start-ups and IP Protection in India

In India, the trend of IPR filing has been documented for scientific agencies or academic institutions, firms in the software industry, manufacturing sector, handicrafts, glassware and other small-scale industries. However, the IPR filing behaviour or protection of IPRs by Indian Technology Start-ups leaves much to be desired. They do not have much awareness about Indian IPR system and government initiatives to promote such a system. At the government end too, there is a knowledge deficit. Indian regulatory and legislative reforms should be based on an analysis of the growth pattern and characteristics of start-ups; awareness and engagement of start-ups in IPR protection; challenges faced by them while applying for such protection; and also, their awareness and opinion about various policy reforms and schemes. With this backdrop, the objectives of this report are two-fold. First, it examines the level of awareness among Indian technology start-ups about various forms of IPR and their efforts for its protection. Secondly, it explores if the tech start-ups are availing the benefits of Indian government initiatives like Start-up India and similar other programmes/schemes. This report presents findings from a survey based on the views of 249 tech startup representatives from across India about their awareness of IP and engagement in its protection. Building on first-hand account of tech start-ups about their experience in dealing with the Indian IP offfice, this report also identifies key challenges that tech start-ups face during IPR protection. Taking lessons from the best practices in IP offices in other countries, the report provides recommendations on potential areas of improvement to make the system more user-friendly and transparent and robust.

The geography of intercity technology transfer networks in China

ABSTRACTIn the era of the knowledge economy, the acquisition of exogenous knowledge is understood to be an important strategy for cities in their pursuit of economic growth. The Chinese government has taken measures to foster technology transfer between cities in an effort to promote the flow of knowledge and ideas. Patent transaction data from China's State Intellectual Property Office (SIPO) covering the period 2008–15 are used to visualize the technology transfer map. The maps show that the frequency of inter-city patent transfer is intensifying, and the numbers of cities and city-pairs are increasing rapidly over time. Two key features of the network emerge: first, the dominant role played in the network by several cities that results in a ‘diamond-shaped’ spatial structure that has become more geographically extensive over time; and second, the hub-and-spoke structure of the network with Beijing, Shanghai and Shenzhen forming first-order hubs of technology transfer.

The introduction of patent agent privilege in Canada.

The introduction of patent agent privilege in Canada.

Patenting choices for valuable subsidiary inventions created in an uncertain and fast changing environment

Purpose Firms increasingly diversify their technological competencies to achieve different strategic objectives. This study aims to explore the impacts of technological knowledge characteristics on patenting choices for inventions created by subsidiaries in an uncertain and fast changing environment. Design/methodology/approach The data used in this study are patents granted to the world largest firms by the USPTO for inventions attributable to their subsidiaries in China between 1996 and 2005. In addition, the patent data from State Intellectual Property Office (SIPO) of China are used for the matching in terms of filing patent applications in both USA and China for a same piece of technology. A discrete Logit model is used to examine the effects of technological distance and categories on Chinese patent application and international priority. Findings The findings suggest that firms have priority to seek international patent protection, instead of host country protection, for valuable subsidiary inventions in their background and marginal technological fields. In addition, a firm may seek host country legal protection simultaneously for inventions built upon knowledge from technologically distant fields. Research limitations/implications As we are more interested in protecting technological knowledge, the protection of other types of knowledge, such as organizational knowledge, deserves further research attentions. Moreover, future research may expand current study by including small and medium firms, as well as firms in other developing economies. Practical implications While the economic and legal environment in China may have evolved since studied period, the results have practical implications for firms in other developing countries that are at an early stage of catching-up or those in a host location featuring a similar uncertain and fast changing environment. In particular, the study suggests that foreign firm managers would have more strategic choices of patenting than local firms in the host country. For strategically important inventions bridging complex knowledge from different technological areas, firms could seek protection in multiple countries simultaneously, including both home country and other major markets. Furthermore, managers could choose whether or not to protect a particular category of technologies in host country depending on value of the technology to the firm and the IPR protection of host country. Finally, the approach of looking at knowledge-level characteristics, which can be easily measured through readily available intra-firm information, provides managers with a practical and useful tool to make these strategic decisions. Originality/value This study represents an effort to extend the understanding on how foreign MNCs could generate and appropriate valuable technologies in an uncertain and fast-changing environment. In particular, the authors focus on how MNCs could use different international patenting patterns to benefit from subsidiary inventions. Whereas previous literature mainly focuses on country-level and firm-level determinants, this study approaches the topic through the lens of knowledge-level factors. By studying how knowledge characteristics determine firm strategic behaviors, the authors offer additional justifications of the knowledge-based view of the firm. Meanwhile, the findings enrich our understanding of an important component of MNC’s global strategies in managing their technologies through selectively patenting in different locations. Firms pursue diversified technologies for different strategic objectives. As subsidiary inventions become a very important source of firm competitiveness, MNCs have to face the trade-off between higher patenting costs and the appropriability of subsidiary generated knowledge. The findings suggest that it is not necessary for MNCs to protect all subsidiary inventions in host countries.

A Study on the Improvement of Government Owned Patent Disposal and Management System

국유특허권의 처분･관리 효율화를 위해 특허청이 추진한 위탁기관 지정, 실시료납부방식 변경 등의 제도변화는 기술이전 건수 등에서 가시적인 성과로 나타났다. 하지만 특허청의 업무관장 범위가 아닌 등록 전 국유특허의 처분･관리 영역은 발명기관의 전담부서 부재, 비전문성, 전용실시제도 미활용 등의 문제로 효율화를 위한 제도개선이 필요하다. 이에 본 연구논문에서는 그동안의 국유특허 처분･관리의 성과와 등록 전 권리의 제도개선에 관한 논의 및 외국사례를 분석한 후, 등록 전 국유특허의 조기 활용을 도모하는데 효율적인 제도적 개선방안을 다음과 같이 제안하였다. 첫째, 현행 국유특허의 등록 전후로 구분된 처분의 이원화 체계는 특허청 중심으로 일원화한 후 위탁기관을 지정하는 것이 바람직하다. 둘째, 발명기관의 법률적 비전문성을 고려해 등록 전 국유특허의 공개여부 등을 판단할 수 있는 활용 가이드라인을 제공해야 한다. 셋째 실시권자의 지위를 보장하고 국제적인 조화를 위해 등록 전 권리에 대한 공시제도 도입이 필요하다. 넷째, 전용실시권제도의 처분방식 개선을 위해 정액료와 경상료가 포함된 실시료를 사전과 사후로 나누어 징수하고 실시능력이 없는 자가 선정되는 경우를 막기 위한 업체평가 방식의 도입과 체계적 실적점검이 이루어져야 한다. 다섯째, 국유특허 및 다른 국가소유 지식재산의 체계적 관리 및 유사개념 혼동방지를 위해 용어의 수정이 필요하다.Unlike registered rights in the government-owned patents, the rights before registration need to be reformed to improve technology transfer efficiency due to problems such as the absence of a department in charge of the inventors, non-specialization and lack of the exclusive license system. Therefore, this study proposes the following system improvement measures to promote early utilization of the government-owned patent before registration. First, it is desirable to designate a trustee after integrating the current two-way disposal and management system in the government-owned patent into the center of KIPO(Korean Intellectual Property Office). Second, in consideration of non-specialized nature of the inventors in legal field, guidelines should be provided to determine whether the government owned patent is disclosed or not before registration. Third, it is necessary to introduce a system that allows the exclusive license to the right before registration. Fourth, it is desirable to improve the disposal method of the exclusive license system in the government-owned patent, which allows the collection of fees, including regular and current fees, in advance and after. Fifth, the terms need to be modified to manage the systemic and prevent confusion of concepts of government owned patent and other national-owned intellectual properties.

Are venture capitalist-backed IPOs more innovative? Evidence from an emerging market

This study examines whether venture capital (VC)-backed IPOs are more innovative than otherwise equivalent non-VC-backed IPOs. Using manually collected R&D records from annual reports and patent data from the Chinese State Intellectual Property Office (CSIPO) from 2007 to 2012, we find that VC-backed IPOs have higher R&D expenditures and more patents granted in the three years after IPOs. More specifically, they have more invention, application, and design patents in post-IPO. We use a two-stage instrumental variable, propensity score matching, difference-in-differences approach to mitigate selection biases and find our results to be consistent with our hypothesis. We conclude that VCs can positively influence IPO firms to increase R&D expenditures and innovative output levels in China. In addition, we document that the government ownership adversely affects innovation of VC-backed firms. Policy implications are discussed.

Analysis of patent application and authorization in a hospital and countermeasures

Objective To share the experience of the patent application, authorization, and transfer in a hospital in last five years, this study aims to improve the patent application and authorization in hospitals. Methods Using data from China Patent Infonet and State Intellectual Property Office of People's Republic of China, we searched the patent application and authorization during Jan. 2012 to Dec. 2016, and included those that patentee was our hospital or the employee of our hospital. Results The number of patent applications was 215, including 151 service intention-creation applications, and 64 non-service intention-creation applications. Patent application and authorization in our hospital have been increasing year by year, covering internal medicine, surgery, obstetrics and gynecology, pediatrics and so forth. Conclusions We accumulated some experience in patent application, authorization and transfer which provide reference for further, more comprehensive and integrated, patent management system. Key words: Patent application; Patent authorization; Service intention-creation; Transfer

The Variety and Intensity of IPR Application by Dutch Firms: a Five Year Account.

Despite the growing reliance of firms on IPRs, the existing empirical evidence still provides a fragmented picture of the way firms combine them in different sectors. This is mainly a consequence of data filing in separate databases. This study therefore reports the firm-level and sector-level application of patents, trademarks, design rights and plant breeders’ rights by Dutch firms based on matched data from various IP offices covering a five year period. We study both the variety of IPR application and its intensity for firms across different industries and in different size classes. We conclude that both the distribution of firm-level IPR variety and intensity are right-skewed, particularly for small firms in supplier dominated industries. A cluster analysis covering the variety and intensity of IPR application, industry characteristics and firm size reveals that companies basically follow five different IPR application approaches, ranging from the ad hoc use of trademarks or patents to the serial combination of multiple IPRs. Based on these results we propose an agenda for research into the economics of combining IPRs for innovation portfolio purposes.

Exploitative technological diversification, environmental contexts, and firm performance

PurposeAlthough technological diversification is often understood as an explorative activity, the authors argue that it can also be explained as exploitation. The purpose of this paper is to examine how exploitative technological diversification (ETD) affects firm performance and what factors may moderate this relationship.Design/methodology/approachThe sample consists of 1,569 Chinese listed firms with 7,555 observations from 2003 to 2014. Patent data were collected from the State Intellectual Property Office, while financial information was collected from the China Stock Market and Accounting Research database. The system generalised method of moments model was used for testing the hypotheses.FindingsThe empirical findings indicate that the relationship between ETD and firm performance is inversely U-shaped. Moreover, this relationship is negatively moderated by environmental munificence, which refers to the availability of resources in the environment where the firm operates, and positively moderated by environmental dynamism, which refers to the extent of volatility and unpredictable change in firms’ external environments.Originality/valueOverlooking ETD limits applications of diversification logic and the precision of their predictions. This paper tries to fill this gap by empirically testing the relationship between ETD and financial performance.

The protection of partial designs

Dr Stanley Lai (LLB (University of Leicester), LLM (Cantab), PhD (Cantab)) is Senior Counsel and Head of the Intellectual Property practice at Allen & Gledhill LLP. He is also the Chairman of the Intellectual Property Office of Singapore and specializes in all forms of IP litigation and IT disputes. Partial designs are protected in Singapore. This article considers the general approach of this protection, the scope of the ‘must fit’/‘must match’ exclusions and the two-step approach adopted by the Singapore Court of Appeal in considering infringement of a partial design. In Australia partial designs are not protected. There is an ongoing debate between different interest groups on whether the legislation should be amended to provide such protection. In China, proposed amendments to the Patents Act may introduce patent protection for partial designs in the near future. Design protection for graphical user interfaces (GUIs) has strengthened in recent years and it is broader in scope in Singapore, compared to China. However, this protection in Singapore may remove a layer of artistic copyright protection in respect of GUIs. This may have an impact given the longer duration that is available for copyright protection.

Designing for the future—2017 reforms to Singapore’s registered designs regime

Simon Seow is the Director of the Intellectual Property Policy Division of the Ministry of Law, Singapore. He has also held various positions in the Intellectual Property Office of Singapore, including Director of the Registry of Designs. Prior to joining the public sector, he was in legal practice and venture capital. William Kwek is an Assistant Director at the Intellectual Property Policy Division of the Ministry of Law, Singapore. He graduated with an MSc Economics from the London School of Economics in 2014. Singapore passed the Registered Designs (Amendment) Act 2017 on 8 May 2017. It was the culmination of a three-year review process, the first comprehensive review of the registered designs regime since the Registered Designs Act (‘RDA’) was enacted in 2000. The review involved extensive consultations, and sought to update and modernize Singapore’s design protection system in light of developments in technology, design and business practices. The key amendments include: broadening the scope of protection under the RDA (in particular to include designs of non-physical products), switching the default position on ownership of a commissioned design from the commissioning party to the designer, and broadening and lengthening the grace period provisions for design applications. This article discusses these key changes and how they have been implemented. It sheds light on the main issues considered during the legislative drafting process, and how the legislative amendments reflect our policy intent.

A database linking Chinese patents to China\u2019s census firms

To meet researchers’ increasing interest in the fast growing innovation activities taking place in China, we match patents filed with China’s State Intellectual Property Office to firms covered in China’s Census. China has experienced a strong growth in patent filings over the past two decades, and has since 2011 become the world’s top patent filing country. China’s Census database covers about one million unique manufacturing firms from 1998–2009, representing the broad Chinese economy. We design data parsing and pre-processing routines to clean and stem firm and assignee names, create a matching algorithm that fits with our data and maintains a balance between matching accuracy and workload of manual check, and implement a systematic manual check process to filter out false positives generated from computerized matching. Our project generates 1,113,588 matches for the Census firms, among which 849,647 patents are uniquely matched. By creating the patent-firm linked dataset, we hope to reduce duplicative effort and encourage more research to better understand China’s fast changing innovation landscape.

What determines the duration of patent examination in China? An outcome-specific duration analysis of invention patent applications at SIPO

Although China is now the largest patent filing country in the world, research on the duration and outcomes of patent examination remains scarce. In this study, we conduct a replication and extension of Harhoff and Wagner’s (2009) work on the determinants of patent examination duration at the European Patent Office (EPO), using a rich dataset covering the population of about 1.1 million invention patent applications to China’s State Intellectual Property Office (SIPO) from 1993 to 2006. By considering all three competing examination outcomes (grant, withdrawal, and refusal) simultaneously, our competing risks analysis replicates many of the results in prior research and confirms that a number of the determinants have differential effects on pendencies for different outcomes. Our analysis also reveals several applicant and application characteristics whose effects on pendencies for specific outcomes differ from prior research. Finally, by incorporating a number of new determinants, we report a set of new findings about their effects on the examination duration for the three outcomes at SIPO.

Reverse technology transfer from the East to the West

PurposeThe approach of Western companies to internationalise their R&D by establishing R&D sites in emerging markets (EMs) has led to a discussion about the role of R&D in home markets and host markets. The purpose of this paper is to shed light on the evolution of foreign R&D sites of Western companies in EMs and their role using China as the empirical context.Design/methodology/approachThe study uses the State Intellectual Property Office database, and investigates about 2,000 patent families of the top 14 Western patent applicants in China.FindingsThe results indicate a gradual shift from an exploitative to an exploratory role of R&D sites in China. The study also shows evident learning effects on Western R&D from local counterparts.Research limitations/implicationsThe paper motivates further research of R&D internationalisation approaches within EMs, and explores the changing role of local subsidiaries. While the study is only focussed on China, the applicability of the results is limited in context of other countries, due to cultural, economic and legislative differences.Practical implicationsThis study shows the increasing importance of EMs such as China and how these markets, known for imitations and cheap resources, are gradually moving towards innovations and creating new technologies locally.Originality/valueBased on the patent analysis, this study shows the growing importance of the local R&D subsidiaries of Western multinationals in China.