Week´s news headlines – fev. 5th 2015

A sad little trademark tale (with a dash of ‘cultural appropriation’ thrown in for good measure)

The National Park Service has announced — amidst considerable public outcry — that as of March 1, the names of several iconic buildings and historic landmarks inside Yosemite National Park will be changed: the Ahwahnee Hotel — a name it has had since 1927 — will be known as “The Majestic Yosemite Hotel”; “Curry Village” (1899) will henceforth be “Half Dome Village”; the “Wawona Hotel” will become “Big Trees Lodge”; “Badger Pass Ski Area” — California’s first ski resort — will be renamed the “Yosemite Ski & Snowboard Area”; and “Yosemite Lodge at the Falls” will become the “Yosemite Valley Lodge.”

Saiba mais em: https://www.washingtonpost.com/news/volokh-conspira

 

 

YouTube stars U-turn on trademarks after online fury

The makers of one of YouTube’s biggest channels have dropped plans to trademark terms for a popular video format – after facing outcry from fans.

The Fine Brothers’ “reaction videos” show people responding to online clips.

But a plan to license “react” to other video-makers was met with a digital backlash, costing the brothers hundreds of thousands of subscribers.

Saiba mais em: http://www.bbc.com/news/technology-35470159

 

 

Samsung ruling points to challenging patent contest

Nokia shares plunged after an award from a Samsung Electronics Co. patent dispute fell short of analysts’ estimates, in a sign that rights holders will struggle to extract more royalty revenue from smartphone makers as global demand for handsets slows.

Saiba mais em: http://www.sltrib.com/home/3487053-15

 

 

Crypto Colonizing: B of A’s Blockchain-Patent Strategy

Bank of America’s blockchain patent push shows how bankers’ attitudes toward the technology of cryptocurrencies have changed over the last few years — from dismissing it, to sizing it up to trying to protect their interests in it.

Saiba mais em: http://www.americanbanker.com/news/ba

 

 

What the U.S. Should Be Doing to Protect Intellectual Property

The U.S. invests vast amounts in innovation – $135 billion from federal government sources alone in 2015 – yet it lacks a coherent intellectual property strategy to ensure that the investment pays off. Is the U.S. naïve? Negligent? It’s puzzling.

Saiba mais em: https://hbr.org/2016/01/what-the-u-s-should-be-doin

 

 

Intellectual Property 2015 Year In Review

-As discussed in greater detail below, there were a number of notable developments in intellectual property law in 2015.

Patent eligibility challenges to the validity of software, business methods, and medical diagnostic methods continued at a record pace. 2015 also saw the introduction of a new pleading standard for patent suits, which require plaintiffs to file complaints that are more detailed about the alleged infringement. By the end of 2015, we also concluded three years of operation of the new statutory framework provided by the America Invents Act (AIA), which introduced new post-grant procedures for challenging the validity of patents at the U.S. Patent Office. Inter partes review continues to be used as a potent weapon against patent owners. Policymakers also continued to focus on standards-essential patents, with the IEEE adopting new rules designed to curtail inflated valuations and abusive licensing practices.

Saiba mais em: http://www.jdsupra.com/legalnews/intellectual-prope

 

 

Intellectual Property And Trade Secrets Must Be Protected At Home And Abroad

Manufacturing plays a critical role in Pennsylvania, employing more than 569,000 workers and contributing nearly $80 billion to the state’s economy. Pennsylvania’s economy, like many manufacturing-intensive states, also relies heavily on foreign markets, exporting over $36 billion in manufactured goods in 2014. Speaking at Glaxo SmithKline, Timmons shared his vision for how manufacturing in America can reach its full potential and highlighted how government policies can help or hinder those efforts.

Saiba mais em: http://www.shopfloor.org/2016/02/intellectual-property-and-trad

 

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New Law On Science, Technology and Innovation In Effect in Brazil

In January, Brazil approved an update to its Innovation Law No. 10.973/2004 via Law No. 13.243, which aims to set the country on the cutting edge of science and technology. In order to reach this objective, it will promote the creation and development of technological clusters.

 

The new law encourages the government at all levels to invest in innovation and technology. Initially, the investments will be directed toward the various Institutes of Science, Technology and Innovation (‘’ICT’’ in Portuguese), in order to further research.
Government entities in Brazil will be able to set up partnerships with private companies that wish to create new technologies. These partnerships will be organized with the participation of the government entities, as investors, promoting the development of innovative products and processes.
The intellectual property resulting from these partnerships will belong to the private company. Though, a government entity, acting as public investor, can condition its participation based on whether the eventual licensing of the intellectual property serves the public interest.

 

ICTs will maintain their ability to execute partnership deals, regardless of the new law, both with public and private institutions, for the purpose of providing specialized support for scientific and technological research. The ownership of the intellectual property in these cases will be subject to negotiation between the parties.
Additionally, an independent inventor who is the applicant of a patent will be able to enter into partnerships with public ICTs, for the development, industrialization and insertion of the product in the market. In this case, the independent investor would share the profits from the exploitation of the invention.
The new law is important to the development of science and technology in Brazil. Additional legislation on the implementation of the new law is expected to be forthcoming.

 

For more details please feel free to contact us:

diblasi@diblasi.com.br

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Technology transfer: Centres of IP excellence

By Gabriel Di Blasi and Felipe Barros Oquendo

 

The future of Brazil’s technological innovation centres, which bring together public and private sector parties to develop mainly life sciences technology, looks bright. Gabriel Di Blasi and Felipe Barros Oquendo of Di Blasi, Parente & Associados report

Innovation is crucial for economic growth. This is especially the case for developing countries such as Brazil, where an underdeveloped technology industry is seen as one of the main hindrances to growth and general prosperity. In order to provide public incentives for innovation, Brazil has enacted a series of laws, the most important being the Federal Act No. 10,973/2004, known as the technological innovation act. Aside from tax incentives, important aspects of this law are science and technology institutes and their technological innovation centres (TICs).

As defined by the technological innovation act, TICs are public centres or bodies set up by one or more science and technology institutes. These institutes are also public bodies, the goals of which include engaging in basic research activities and research and development (R&D) in the scientific and technological fields. Nowadays, most institutes are part of public universities, which in Brazil represent the best higher education centres available for students and researchers.

TICs typically control the disclosure of developed technological or scientific creations, evaluate innovations and technologies, seek the best protection for the developed technologies, negotiate, draft, manage and enforce technology transfer agreements, as well as licence agreements in connection with intellectual property or know-how developed by the institute.

These responsibilities imply other ancillary but nonetheless vital supporting roles, such as defining the ownership of IP rights and the territories to be protected, managing costs and payments related to IP rights and know-how, and working with the Brazilian Patent and Trademark Office and law firms to tackle the legal aspects of the technology development of the institute. Even though the chief executive of the institute will typically retain some powers of negotiation and the right to conclude cooperation agreements and similar covenants, the TIC acts as the centralised administrator of IP rights in an institute.

IP policy

One of a TIC’s pivotal goals is to ensure the possibility of obtaining IP rights whenever possible, as well as to secure the confidentiality over R&D activities that the institute is engaged in. This of course means developing a results-oriented internal IP rights policy—aside from external and general policies—aimed specially at those people managing the institute’s main activities.

As a rule, researchers at TICs have the right to receive between 5% and 33% of the institute’s earnings stemming from the developed technology. The amount is to be regulated within these limits by each institute. Researchers do not hold any power over negotiations concerning the technology that they contribute to developing: article 6 of the act clearly provides that only the owners of the resulting IP/ know-how are entitled to assign or license it.

Moreover, article 12 of the act forbids researchers allocated to any level of the R&D process from disclosing any part of it, in order to preserve novelty and/or confidentiality. This is an important restriction, aiming at securing private investors’ and the institute’s interests, especially given the huge pressure (coming mainly from the Ministry of Education and related public bodies) on public researchers to publish scientific articles in order to maintain scholarships and subsidies. This prohibition also comes amid support of the deeper goal of the overall innovation policy in Brazil, which is to promote technological and social development in the country (article 5, item XXIX of the Brazilian Constitution).

A reminder of the focus on results of institutes is the strict obligation imposed on them to maximise IP protection of innovation and know-how eventually acquired from projects developed under the act. Far from constituting an ideal or abstract rule, this results-driven stance is posed as a binding determination on the public administration as a whole and to public servants engaged in R&D activities in particular.

“AS A RULE, RESEARCHERS AT TICS HAVE THE RIGHT TO RECEIVE BETWEEN 5% AND 33% OF THE INSTITUTE’S EARNINGS STEMMING FROM THE DEVELOPED TECHNOLOGY.”

Unsurprisingly, TICs have a crucial role in internal enforcement of institutes’ innovation policy, mainly granting that the information surrounding R&D procedures and results remains under strict confidentiality. Besides concluding and enforcing non-disclosure agreements with potential investors, partners and buyers of technology developed by an institute’s researchers, a TIC commonly drafts similar agreements with the institute’s own personnel, in an effort to secure the patentability and secrecy of its inventions and technological know-how. Ultimately, the TIC’s goal is to guarantee a return on R&D.

Maximising benefits

Other internal policies should be—and usually are—available in order to achieve the TIC’s goal of maximising benefits for the institute and its private collaborators. It is common to see TICs promoting workshops, panels, and manuals reinforcing the potential financial benefits for the researchers stemming from maintaining secrecy and working with a view to IP rights protection.

In addition, most TICs lay down a strict public policy that researchers and all collaborators must immediately report on any innovation or technological development eligible for protection under IP or trade secret laws. As a complement to this policy, the researcher will typically work on an exclusive basis with the institute. On the other hand, researchers are entitled to obtain technical and legal information from the TIC in support of their activities.

One should bear in mind that, despite legal obligations, not all institutes have fully working TICs to help them with creating, managing and enforcing innovation policies.

The number of implemented TICs is growing annually. According to a report issued by the federal government, there was an 8.4% growth  in 2014 compared to the previous year.

When available, the TICs represent a major security factor to private parties intending to invest, collaborate or negotiate with institutes due to the goal-oriented policies established and enforced by TICs. In addition, TICs are the main mediators between institutes and private business, helping to achieve a balanced view on negotiations and partnerships, as well as to curb any anti-entrepreneurial tendencies, which unfortunately are not uncommon in the public administration in general. To achieve its mission, a TIC typically recruits its personnel from the private sector to guarantee a business mentality.

More important, TICs have the institutional mission of acting as enablers of partnerships between private business and institutes. Due to this specific role, TICs are quite sensitive to market demands and aim to implement a functional, modern management. This is achieved through establishing clear innovation and IP rights goals and efficient communication channels with both private business and institutes’ researchers.

According to the 2014 government report, a total of 2,163 IP applications were filed by Brazilian science and technology institutes last year as a direct result of the IP policy set out by TICs. This represents double the number of all applications filed by such institutes between 2010 and 2013.

TICs are fairly advanced in the life sciences field. Successful examples of fully functional TICs are Instituto Butantan, located in São Paulo, which is mainly focused on biotechnology, and Fundação Fiocruz, based in Rio de Janeiro, a specialist in the biomedicine field.

TICs have been proving to be an essential tool for developing innovation in Brazil, mainly in the life sciences field, through promoting and enabling the participation of private business in public technology centres. With the expected growth and maturation of TICs, the future is looking bright for technology development in Brazil.

Gabriel Di Blasi is a partner at Di Blasi, Parente & Associados. He has a technical background in industrial engineering and experience in patent prosecution and litigation. His core practice areas include patents, designs, plant variety rights, tech transfer, and trade secrets matters. He can be contacted at: gabriel.diblasi@diblasi.com.br

Felipe Barros Oquendo  is a Brazilian attorney-at-law at Di Blasi, Parente & Associados. He holds a Master’s in corporate, labour and industrial property law from the Estate University of Rio de Janeiro. His practice focuses on litigation and consultation related to intellectual property and unfair competition, as well as sports and entertainment law. He can be contacted at: felipe.oquendo@diblasi.com.br

 

At: http://www.lifesciencesipreview.com/contributed-article/technology-transfer-centres-of-ip-excellence

 

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