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Blockchain: a “disruptive” overview on various commercial sectors

This post was first published on Your LATAM FlagshIP blog and was written in collaboration with Alessio Balbo.

In 10 years 10 percent of the global GDP will be stored in blockchains” this data insight comes from the World Economic Forum, but what implications does it have (pragmatically) on nowadays society? This article will approach some advantages and disadvantages of the blockchain and how its possible applications may be disruptive in relation to many sectors but, first and foremost, let’s start with some brief background.

Created in 2008, the blockchain is an encrypted program that acts as an online ledger of transactions, and it provides an “irreversible, secure and time-stamped record”. Each block of transactions is linked to a chain, giving its participants an overall picture of what is taking place in the system. The program is designed to be decentralized, allowing transactions to take place between users without the need for third parties such as banks, or a central clearing system like SWIFT. In essence, in the context of finance, each user acts as their own independent bank —  free from administrative and associated costs, normally found in “traditional” financial centers. Each transaction is viewed as a single block where subsequent transactions or blocks are added. When a new transaction is recorded, a copy of the blockchain is sent to each node as they join the network (a node is each computer that is connected to the blockchain network). Blockchains can be public, private or hybrid (permissioned). The main principle behind it is trust, and the blockchain is safe, incorruptible and encrypted. By assigning to every single one of its users a public key, it allows them to identify their transaction publicly. Such key will not be disclosed by the blockchain, so every user can be totally anonymous, unless it is voluntarily disclosed.

Furthermore, records are not deleted on the blockchain, so nobody would be able to change the data stored on it, as it would have to change the whole “chain” of transactions.
As every new invention, one of the most important innovations is that the Blockchain is extremely cost-effective. This is because it excludes intermediaries from the picture, but it does not only cut costs by doing so, it also increases efficiency.

Let’s analyze the impact on a sector-by-sector analysis

In respect to banking, the blockchain could be effectively revolutionary. In fact, the implementation of the blockchain into the banking system would allow banks to save around 20B$ a year by 2022.

Looking at the latest news on the matter, it can be indisputably said that almost daily a new enterprise, a tech giant, or a new company comes out with an application of the blockchain. As an example, on the 15th of May, Amazon announced his partnership with Kaleido (CNBC article available here) in relation to the Bezos’ cloud computing service, to simplify the creation of a company based on the blockchain.

Particularly, one of the most interesting applications of the blockchain relates to healthcare. In fact, a distributed ledger in relation to health records would allow any hospital to access medical data belonging to any individual, with no need of additional paperwork. This could be particularly useful in relation to emergencies concerning patients rushed into surgery. The threat here would be addressed in the context of data protection and privacy.

Another further implication in the same industry (i.e. healthcare) could be the distribution and tracking of pharmaceuticals. To this regard, the well-known multinational company Merck has filed a patent claiming that the blockchain technology enables a reliable, secure storage of the reading results with very high data integrity, such that it is essentially impossible to manipulate or erase or otherwise taper [sic] with or lose such data, e.g., due to unintended or deliberate deletion or due to data corruption.”[1]. Blockchain adoption would result in increased transparency, safer and more secured delivery of pharmaceuticals and a decrease in the counterfeiting of healthcare products.

In the legal sector, the blockchain’s impact on Intellectual Property (IP) can be noteworthy. The constitution of blockchain networks in relation to IP offices, the traceability of trademarked products, the implementation of royalty distribution mechanism all have a sweet sound to the ears of the professionals working in this sector. In this regard, many international institutions are starting to use such technology to foster innovation. In fact, the European Union has set up the Bloomen project, where “blockchains will be used as a distributed database for media copyright information, for fast micropayments of media content, and for transparency in copyright management and monetization”. The expansion of such project would improve dramatically the efficiency of the sector.

Other figures within Intellectual Property, will may also take advantage of the use of the Blockchain, for example, regarding trademarks, it is expected that it will be possible to register or renew a mark using Blockchain technology. We know that the EUIPO is looking very seriously and actively at using blockchain to records and enforce IP Rights. However, in the USA, there is already an online platform using Blockchain technology to file trademarks (Cognate). The use of blockchain in the protection of trademarks or patents would represent a real revolution in the registration of these assets.

Similarly, another giant in the field of consultancy, Deloitte, is partnering up with the next participant to blockhatonSeal Network, to develop an anti-counterfeiting platform and technology to stop such illegal practices.

In a different sector, another giant, Alibaba, has announced the pilot program to track international shipments to China, in order to safely be aware of the origin, shipment and destination of the effective product ordered.

In relation to fashion, blockchain may be disruptive too, as QR codes or tracking numbers on labels may be able to tell the customers the origin of the specific item, the full history of the supply chain behind each garment and possibly even more (i.e. the history of the company, the materials used, the instructions on how to wash, etc.). Since the statistics only for 2016 amounted to 1 billion dollars of counterfeited articles sold, blockchain would be a blessing for the sector, allowing to fight more effectively against the growing scourge of counterfeits and piracy.

A similar approach has been applied to food, for instance, in emerging markets. A traceability of the product “from farm to fork” would simply facilitate the business of guaranteeing an origin and avoid corruption and quality control. The matter concerning food safety has historically increased up to the point of creating Agencies in charge of such control. A giant in the industry of supermarkets, Walmart, has already successfully carried out several blockchain projects, proving that such technology is a real game changer. Blockchain could also have an important role in the protection of foods identified and commercialized with a Protected Geographical Indication or a Designation of Origin, the control of raw materials (as to their origin, use, transformation, etc.), all of the aforesaid could be followed with greater ease and transparency.

The jewelry business may also be reformed and secured. Chemical fingerprints could radically change the industry and blockchain may be the key to track the diamonds, in order to guarantee the effective origin and a safe shipment too.

The industry of photography and works protected by copyright exposed to the dangers of internet may be helped by blockchain too. Since copyright does not need any registration to be valid, it does not depend to registries (unless the holder of such rights decides to submit them for registration to an Office). In this field, the real issue has always been the distribution of royalties to the legitimate owners and to the management entities of competence. As everyone can imagine, the internet has certainly opened a new way of making business in this sector, but it has also exposed works to more infringements and violations. For instance, by allowing a file to be downloaded, the author spreads his/her work online and reaches bigger audiences indeed, but such audiences may not always be having pure and honest intentions and may misappropriate the copyrighted work.

Particularly, the aforementioned applies to the music industry. In fact, the advent of new technologies transformed the music industry into an important source of income with high levels of exploitation, notwithstanding the existence of blatant disadvantages (i.e. the increase in piracy and the lack of payment in relation to the reproductions).

The effects of technology in the music industry are twofold, on the one side, there is the acceleration in the diffusion of musical works, which allows us to visualize a very positive scenario for authors and intermediaries, just as consumers are greatly benefited from this fact. On the other, there is the uncontrolled circulation in the network, the speed at which music circulates on the internet is unstoppable and untraceable by the holders of rights since it facilitates the unauthorized use of digital works and recordings. Uncontrolled circulation reveals very negative consequences for the basic and intellectual property industry.

Another consequence derived from the implantation of new technologies in the basic industry is the change in the relations between the authors of music, services, intermediaries and consumers. The digital environment allows a direct connection between the creator of the musical work and the audience, and that is precisely why the blockchain could be a real game-changer in the music industry. Media Chain, for instance, a company recently acquired by Spotify, takes care of the royalty distribution matter, offering music platforms to protect the authors and their works in the online world. Mediachain allows artists to create a digital record for songs on the Bitcoin blockchain and InterPlanetary File System. Spotify, in fact, aims to use such tool to create fairer conditions and more transparency in respect to the payment to artists for their musical works.

The blockchain does not uniquely help the music sector in relation to copyright. In fact, it applies also to photographers, whose works are constantly at risk of being copied, used or transformed without being remunerated. The need to broadcast and divulge the work is often the most significant mistake that leads to piracy. To this regard, Kodak, earlier on in January 2018, firmly declared to be willing to develop a blockchain based platform to remunerate photographers through the use of Ethereum. Photographers will register their photos on the KodakOne platform and buyers will purchase rights using the KodakCoin cryptocurrency. The platform will provide cryptographic proof of ownership and monitor the web for infringement, offering an easy payment system for infringers to legitimize their use of photographs. A pioneer to this regard is Fernando Alonso, the Formula 1 player who recently announced that he will be protecting his image and copyrights with KodakOne[2]. Mr. Alonso is the first public figure to release such a statement.

Another sector where the blockchain has arrived into is the timestamped proving of paternity of literary works. An example of this is Po.et, a shared, open, universal ledger designed to record metadata and ownership information for digital creative assets. Po.et is a continuation of Proof of Existence, the first non-financial application of the blockchain.

An interesting article from February 2018 explained how the blockchain may be a solution which could definitely solve the adult industry of pornography. Already various projects are underway with ICOs in relation to this industry, as stated by the author of the article on El País(cryptocurrencies like SexcoinTitcoin will be used as purchasable tokens and reusable on the various adult blockchains by keeping complete anonymity).

Conclusions

The blockchain technology has created a whole new playing field, and the game could yet be very hard-fought. With the prize at stake of higher transparency, efficiency and cost-effectiveness, it remains to be seen whether this becomes a winner-takes-it-all race and how the issue of standards for the technology will be managed.

Blockchain enables a completely new level of information exchange between different kind of industries, some of them unknown until now and others just emerging.

This new technology has a huge potential to help everybody improve their creativity, their relationship with technology and the realization of new business and, consequently, increase the value of such new creations. Obviously, the protection of these new assets will be closely linked to the protection of intellectual property, a field in which, as we have seen previously, Blockchain is already playing a leading role, providing different solutions to securing IP assets and innovation processes.

In our opinion, although blockchain is still growing day after day, it is getting closer to its breakout moment and it is just a matter of time before it will be necessary to adapt all related regulation, inter alia, IP laws.


Mexican GIs and the registry of foreign GIs and AOs

This post was first published on The IPKat blog:

Recently, the Mexican Industrial Property Law was significantly amended and on 27 April 2018, the first batch of amendments to the Law entered into force. These amendments modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Moreover, for the first time, geographical indications (GIs) are regulated under the Mexican Industrial Property Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property will be created.

In this post, this Kat summarizes the amendments that came into force on 27 April 2018, particularly with respect to GIs and AOs. More details about the amendments to the provisions related to industrial designs, patents, and utility models, as previously discussed by Kat friends, can be seen here.

A post by this Kat regarding the second batch of amendments, which will enter into force on 10 August 2018 and were published on 18 May 2018 in the Federal Official Gazette (DOF), will follow!

Geographical Indications and Appellations of Origin

Title V of the Mexican Industrial Property Law was thoroughly amended, inter alia to regulate GIs, provide for oppositions within the examination procedure for the declaration of protection and create a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI). Some of the highlights [amendments in red when the exact wording is included] are the following:

Definitions and the express provision that the common or generic name of a product can be included in a GI or AO. The definitions of GIs, AOs and geographical zone are provided in articles 156, 157 and 158 of the Mexican Industrial Property Law, respectively.
An AO refers to the “name of a geographical zone or the one containing such name, or another name known to refer to the aforementioned zone, used to designate a product originating therein, when its quality or characteristics are due exclusively or essentially to the geographical environment, including both natural and human factors, and which have given the product its reputation”.   A GI refers to “the quality, reputation or other characteristics of the product must derive fundamentally from the geographical origin”. A geographical zone is defined as “one consisting of the entire territory or a region, locality or place of a country”.
Article 162 expressly states that the common or generic name of a product can be part of a GI or AO, and as such it will not hinder the use of such name outside of the scope of protection of the GI or AO.

Declaration of protection and opposition procedureThe declaration of protection of GIs/AOs shall be made ex officio or at the request of “natural persons or legal entities directly involved in the extraction, production or manufacture of the product to be protected; by a chamber or association of manufacturers or producers linked to the product to be protected; federal government agencies or entities; or the governments of the federal entities in whose territory or geographical zone the extraction, production or manufacture of the product to be protected takes place”. The legal requirements for submitting the application, the examination carried out by IMPI (including an opposition proceeding and the possibility to change a GI application into an AO application and vice versa) and other relevant provisions relating to the declaration of protection procedure, are contained in Chapter II.

Grounds for refusal. The grounds for refusal for the protection of GIs/AOs are established in article 163, including that the name is identical or confusingly similar to a previous GI/AO, trademarks, slogans and trade names (registered/published or pending) applied to identical or similar products (or services); the name is descriptive; and that the name is “the technical, generic or commonly used name of the product to be protected, as well as those names that everyday language or business practice have become  the usual or generic designation of the said products”.

Authorization of useIMPI grants the authorization of use of a GI or AO for 10 years (renewable for additional periods of 10 years each) to those individual or legal entities that comply with the legal requirements established for such purpose. “[T]he user shall be bound to use [the GIs/AOs] in the form in which [they are] protected according to the declaration” and must apply the following notice or abbreviation on the protected product: “Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.
The grounds for invalidity are established in Chapter IV and include that the GI/AO was granted on the basis of false information. As well, the GI/AO may be cancelled, e.g., where the notice or abbreviation is omitted or has lapsed for non-use “during the three years immediately prior to the request for an administrative declaration…”.

Recognition of Mexican GIs and AOs abroad. IMPI shall request directly or through the competent authority that the protected GIS/AOs be recognized abroad in accordance with international treaties, commercial agreements or applicable legislation of the concerned country.

Recognition of foreign GIs and AOs in Mexico. A registry will be created by IMPI with the aim of recognizing GIs and AOs protected abroad, in accordance with the international treaties and the provisions established in Chapter V. Upon meeting the legal requirements, the foreign GI/AO will be registered and published in the Federal Official Gazette (DOF) and the holder of the foreign recognized GIs/AO will have “the power to exercise the legal actions of protection of the rights of the said [GIs/AOs]”, such as commencing proceedings based on administrative infringements and criminal offenses.
In addition, grounds for invalidity (e.g. the GI/AO was granted on the basis of false information) and cancellation (when the document in which the protection of the GI/AO was granted is not valid) of the recordal, are established in Chapter IV.

Administrative infringements and criminal offenses.
Administrative infringements are established in article 213 (XXII, XXX-XXXII), including  the use of a name or indication that is identical or confusingly similar to a protected or foreign recognized GI/AO applied to an identical or similar product; the translation  or transliteration of a protected or foreign recognized GI/AO applied to identical or similar products; and an act “to produce, store, transport, distribute or sell, identical or similar products to those protected by a GI/AO national or foreign recognized by the Institute [IMPI], using any indication or term that creates confusion in the mind of the consumer regarding the origin or quality, such as "kind," "type," "style," "imitation", “produced in”, “manufactured in” or other similar terms.
Article 223 (VII) provides that is a criminal offense “to produce, store, transport, distribute or sell products of national origin that lack the correspondent certification according to the GI/AO and the Official Mexican Standards [NOM], with the aim of obtaining an economic benefit for themselves or a third party.
There are fines for administrative infringements and imprisonment may be imposed for the commission of a criminal offense. For the “exercise of the civil and criminal actions … it shall be necessary for the owner of the rights to have affixed to the goods, containers or packaging of goods” the notices established in article 165 BIS 18 (“Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.)

Trademarks

Article 90 (X) was amended in order to establish as a ground for refusal for a trademark registration, “the common or proper names of geographical zones … as well as the populations when they indicate the origin of the products or services and can cause confusion or error regarding such origin; including those accompanied by indications such as "kind," "type," "style," "imitation" or other similar terms that create confusion in the mind of the consumer or imply unfair competition.”

Comments

The inclusion of GIs and the creation of a registry recognizing GIs and AOs protected abroad as part of the first batch of amendments to the Mexican Industrial Property Law, while long expected, are indeed major breakthroughs.

In addition, the provisions relating to the grounds for refusal for the protection of GIs/AOs, the establishment of administrative infringements and a criminal offense, as well as the legal consequences for not affixing to the goods, containers or packaging of goods the notices or abbreviations indicated in article 165 BIS 18 (the cancellation of the authorization of use and not being possible to exercise civil and criminal actions), strengthen the establishment of GIs and the regulation of AOs.

Moreover, the inclusion of a “standard” opposition proceeding, in which observations, evidence, and pleadings submitted by the applicant and third parties with a legal interest, will be taken into consideration by IMPI during the examination for grant of protection of a GI/AO, has been well received by IP professionals.

Furthermore, the amendments have resolved a controversy relating to AOs already protected in Mexico. Currently, there are 16 protected AOs in Mexico (Tequila, Mezcal, Olinalá, Talavera, Bacanora, Ámbar de Chiapas, Café Veracruz, Sotol, Café Chiapas, Charanda, Mango Ataulfo del Soconusco de Chiapas, Vainilla de Papantla, Chile Habanero de la Península de Yucatán, Arroz del Estado de Morelos, Cacao Grijalva and Yahualica) and before the amendments, there was a controversy regarding the [very strict and literal] interpretation of former articles 156 and 159 V. Thus, it was argued that AOs should be comprised only of the name of the geographical region by reference to the name of the political division (federal entities and municipalities); as well, an AO could not include the generic name of the product (habanero chili, mango, rice).

As to the first point, in Mexico, no federal entity or municipality is called Mezcal or Talavera; rather, they are regions that comprise a group of municipalities (Mezcal, Talavera, Soconusco de Chiapas) or federal entities (Península de Yucatán). Further, some of those AOs also include the generic name of the product.  Whatever the pros and cons of these issues, the disputes have now been resolved by virtue of the new amendments.

As to the second point, in  light of the Manchego cheese dispute during the negotiations of the Trade Agreement between the EU and Mexico (more details herehere and here) and considering that once a foreign GI/AO is recognized in the registry created for such purpose, the holder will have “the power to exercise the legal actions of protection of the rights of them [e.g. administrative infringement actions]”, IPKat readers might wonder whether these amendments might affect and if so, to what extent, the already announced recognition of the Spanish Manchego Cheese in Mexico.

On 21 April 2018, it was announced (more details herehere and here) that the EU and Mexico agreed to recognize the Spanish Manchego Cheese (made from sheep milk) in Mexico, so it will co-exist with the Mexican Manchego Cheese, as long as the labelling of such product specifies that it is made of cow milk and avoids any reference to the Spanish  -sourced product (e.g. the Spanish flag).

This Kat is eager to put her paws on the final text of the Trade Agreement, in which 340 European foods and drinks (including the disputed Manchego cheese) will be recognized in Mexico as geographical indications (GIs), this according to the press release published by the European Commission.  It is  expected that the Trade Agreement will contain some provisions regarding the co-existence of  GIs/AOs whose name has become  the usual or generic designation of some products in Mexico, considering that administrative infringement actions can be exercised by holders of foreign recognized GIs/AOs in Mexico according to the amendments to the Industrial Property Law.

Stay tuned for the amendments published on 18 May 2018 in the Federal Official Gazette (DOF)!

First, fourth and sixth pictures are courtesy of Dante Gbn. Third and fifth pictures are courtesy of Carlos Leyva.
Second picture of “Alipús San Baltazar” is from the official website of the social project Alipús, in words of this Kat “one of the best mezcals ever!”.

Brazil and the Madrid Protocol: are they nearly there?

 
In June 2017, the Brazilian Presidency sent to the National Congress Mensagem nº 201, to allow Brazil to adhere to the Madrid Protocol.

Therefore, building upon this, on May 10, 2018 the Brazilian National Institute of Industrial Property (INPI) and the World Intellectual Property Organization (WIPO)’s officials met at the headquarters of the INPI in Rio de Janeiro. At this stage, the WIPO exposed its experience in the management of this international trade mark registration system. INPI’s president noted the ‘efforts of the INPI team to reduce the time of examination of trade mark applications, in order to make possible the adhesion to the Agreement.’ The WIPO counterparts highlighted that Brazil is ‘well-structured to meet the requirements to participate in the Protocol, which will open up opportunities for domestic companies interested in the world market.’ On the same date, there was also a technical meeting with the INPI Trademark Board team, focusing on practical issues regarding the functioning of the system.

Additionally, on May 20, 2018, the General Coordinator of the Directorate of Trademarks, Industrial Designs and Geographical Indications (DIRMA), represented INPI at the "Meeting of Users of the Madrid System", organized by the WIPO in Seattle, United States. The INPI reported that the coordinator-general was as well to participate in the ‘IP Office Workshop’, which was organized by the Canadian, Hungarian and Mexico IPOs. It is also reported that one of the theme to be examined is ‘the registration of trade marks as part of an innovation strategy’.

Source the Brazilian National Institute of Industrial Property (INPI) here and  here.

Brazil in the Highway again!

 
The Patent Prosecution Highway (PPH) Pilot Project signed by the Brazilian National Institute of Industrial Property (INPI) and the US Patent and Trademark Office (USPTO) Phase I, was in force until May 10, 2018. The Pilot Project commenced on January 11, 2016, and was scheduled to end on January 10, 2018, but was later on extended until May 10, 2018.

Now the Pilot Project between these two offices have entered into Phase II, commencing on May 10 of this year and until April 30, 2020. By reading the Magazine of Industrial Property (RPI) nº 2470, published on 08 May, one can notice that another industry that will benefit from this project is the ‘information technology’ one – before, the Pilot Project Phase I was applicable to the ‘oil, gas and petrochemical industry’ only. Moreover, to be eligible, the invention needs to be classified with one of the symbols of the International Patent Classification - IPC.

According to INPI, 200 applications will be accepted among which up to 50 patent applications will obtain advantage from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT). Phase I was limited to the first 150 eligible applicants. INPI summarises the PPH stating that ‘Brazilians can use the result of the examination of the patent application in the INPI to accelerate the analysis in the United States and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average’. A PPH does not automatically grants a patent, since each national IPO will carry out its examination pursuant to their own legislation and procedures in force.

More information can be found in the Revista da Propriedade Industrial (RPI) nº 2470 (in Portuguese)

México – Reformas a la Ley de la Propiedad Industrial en materia de Marcas.


El pasado 18 de mayo se publicaron en el Diario Oficial de la Federación las Reformas y Adiciones a la Ley de la Propiedad Industrial, en materia de marcas.

En primer lugar, resulta destacable que se extiende la definición de marca, la cual, como en otras legislaciones, queda ahora definida como:

todo signo perceptible por los sentidos y susceptible de representarse de manera que permita determinar el objeto claro y preciso de la protección, que distinga productos o servicios de otros de su misma especie o clase en el mercado”.

Con este cambio, la legislación mexicana permitirá ahora la protección de marcas no tradicionales, dado que una marca puede estar conformada por denominaciones, letras, números, elementos figurativos y combinaciones de colores, así como por signos holográficos y formas tridimensionales.

Con la reforma, también se reconoce la distintividad adquirida o “secondary meaning”, es decir, se podrán registrar marcas que en principio no son registrables, por considerarse descriptivas o carentes de distintividad, cuando se demostrase su uso previo y efectivo en el comercio.

La reforma incorpora la figura del trade dress, es decir, se contempla ahora el registro como marca de elementos de imagen, tamaño, diseño, color, disposición de la forma, etiqueta, empaque, la decoración o cualquier otro que, al combinarse, distinga productos o servicios en el mercado.

En lo que respecta a la protección de Marcas Notoriamente Conocidas y Famosas, se elimina el requisito de que éstas se encuentren previamente registradas; además de que se establece como causal de nulidad de un registro de marca, cuando éste se haya obtenido de mala fe.

Otra importante reforma es la incorporación de las marcas de certificación, las cuales desde ahora podrán protegerse para distinguir productos y servicios con ciertas cualidades y reglas de uso establecidas, con el fin de agregar mayor valor a la marca y generar más productos y servicios de calidad.

Con esta nueva reforma, una marca puede ser caducada cuando la misma no haya sido objeto de uso por un periodo de 3 años consecutivos. Para evitar la caducidad, se tendrá que presentar una declaración de uso

El texto completo de las reformas puede consultarse aquí.

Pasuchaca: a known substance for a not so new use - will the JPO grant a patent?

 

From Peru, we hear about the work that the National Commission against Biopiracy does. This Commission, which is part of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), is unique in the world and its role is to search the patent offices of all countries, in order to identify patents and, applications for patents, in which either Peruvian biological resources or traditional knowledge are involved.


Image result for pasuchacaDoing their role, the Commission recently identified a potential case of biopiracy in Japan. Towa Corporation submitted an application for a patent to the Japanese Patent Office (JPO). The request was filed under the description ‘Agent to increase HDL cholesterol levels’, and referred to an extract from the Pasuchaca (Geranium dielsianum) which is of Peruvian origin. The Commission further argues that the application lacks ‘inventive step’ (it is obvious for a person skilled on the art).

Following this, the Foreign Ministry informed the Commission that it has received a communication from the JPO. This communication informs that the ‘patent application related to the Pasuchaca has not yet been examined and that it will take into account the observation submitted by Peru’.

Pasuchaca, is it novel and or obvious (inventive step)?

Typing the word ‘pasuchaca’ in the search engine Google, many hits appeared, referring to it as ‘medicinal plants’. The majority of sites noted that it is used for diabetes treatment and many others sites if not all, referred to it as a Peruvian plant. There are therefore, 2 issues to consider here:

  1. Access to Genetic Resources: Japan is a member of the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity. This legal instrument (soft law) is an international agreement that aims at sharing the benefits arising from the utilization of genetic resources in a fair and equitable way. Therefore it is expected that the authorities request the applicant to provide for the disclosure of origin of genetic resources as a requirement for patentability of such resources (and/or associated traditional knowledge); and
  2. Pasuchaca has been ‘used’ by ancient Peruvians for the diabetes treatment [novelty ruined, but can still be patentable: new use of a known substance]. Therefore potentially Pasuchaca may have that inventive step needed as it happen in the case of MACA for hair growth agent and also as an anti-age cream [both products patented by NATUREX, this is so because the use of MACA had nothing to do with previous knowledge - serendipitous]. Will Pasuchaca have the same fate? I then proceed to add to my search the word ‘cholesterol’ and… the site ‘peruherbals.com’ claims that Pasuchaca is an * Effective hipoglucemiant, * Excellent for diabetes and pancreas, * Reduce high cholesterol (more info click here). Is it then obvious that as Pasuchaca reduces the bad cholesterol, it increases the good cholesterol [as claimed in the Japanese application?]. We'll have to wait to see the JPO decision.

Source INDECOPI.

Copyright infringement by a sticker album: Stick that!

 
The Peruvian Copyright Commission, which is a sub-division of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI) has (ex-officio) dictated a precautionary measure of cessation against Capri Internacional SA [Resolution No. 00205-2018 / CDA-INDECOPI of 03 April 2018]

The measure suspends the commercialization of all the stickers of imagines corresponding to the album "World Cup Russia 2018", in which the denomination "3 Reyes" is shown.[Capri Internacional (formerly Navarrete - now 3 Reyes)]. The resolution comes after verifying that copyright law protects the photographs included in the album - the company did not have a licence.


In the same resolution, there was also a measure of cessation of the app "Virtual Stickers" - which is expressly referred to in the album "World Cup Russia 2018", in which the denomination "3 Reyes" was present. In addition, through the app access to recordings of football matches could be watched, and thus, the cessation order extended to the companies 3.0 Consulting Group SAC and Capri International S.A. The Resolution order the companies to ‘suspend all communication to the public of the aforementioned recordings, because these are protected as a related right within the framework of the legislation on copyright and related rights [secondary works], and must have the corresponding authorizations of each of the holders of the rights over these.’

Source INDECOPI.

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