News, Information, Help, & Insight Into The Pekama Community

AuthorDan Woodford

Pekama Insight – Valeria Carron Talks IP From Paraguay

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In the 4th of our Pekama Supplier Interviews we talk to Valeria Carron of Berkemeyer, Paraguay

Hi Valeria, how many IP professionals work in your firm?
Berkemeyer Attorneys and Counselors has a staff of approximately 150 people. There are 3 partners and around 50 attorneys, the rest of the team is mostly composed by paralegals and administrative staff.

How long have you been practicing IP?
I have been practicing for 9 years and I’ve been in the firm for almost 10 years.

What is the focus of your practice?
It’s a general practice law firm, mostly focused on IP and on Corporate law.

Tell us a bit more about yourself. What do you like to do in your spare time?

I really enjoy spending time with my family, and when I am at home I find home décor and painting very relaxing.

What do you see as the biggest challenges to the IP industry?
In Paraguay, I would say that the main challenge is the fight against counterfeiting. We are at the tri-border area with Brazil and Argentina and many counterfeit goods go through Customs in said area.

Also, I think that another challenge for IP attorneys nowadays could be seeking for the proper protection of the brands through social media.

What are the biggest changes you have seen within the IP Industry?
In Paraguay, a big step if that the Trademark Office now has a public database.

How do you see yourself making a difference to the IP Industry?

I think that my main role as an attorney is to give good advice to my clients, but not only good legal advice but also “business advice”, since, in my opinion, the IP world has a mixture of law and business (commercial) aspects.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
Paraguay

Starting with patents – Is Paraguay a member of the Paris convention and PCT?
Our country is member of the Paris Convention only.

What is the typical time from filing to grant in your jurisdiction?
In our jurisdiction, the time from filing to grant takes approximately 5 to 6 years.

Is Paraguay a member of any PPH agreements?
Ye,s it is.

Is there a green track for environmentally-friendly inventions?
No.

Are there other acceleration processes?
No.

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
Our law does not contemplate opposition procedures, instead, we have the Third party observations to the application: Any interested party may submit to the Industrial Property Office, prior to the availability examination, such founded observations, including information and documents that may be useful to determine the patentability of the invention that is the object of the application. The applicant, once notified thereof, may file objections and comments or documents that may be deemed convenient in regard to the observations. The submission of observations shall not suspend the proceedings and the application terms. Whoever makes them, shall not become a part in the proceedings. The examiners work on the third party observations during substantial examination. We could prepare a tailor made quotation depending on the case. The time of the process varies depending on the complexity of the case.

Are there any waivers from examinations and if yes, in which terms?
No.

What’s the approach of your jurisdiction to software / business method patents?
Software / business method patents are not patentable in our country, however, software can be protected by the Copyright Law and process.

Are there limitations to protection of healthcare-related inventions?
Yes, please note that our patent law on the Article 4th., subsection e, states the following:
Article 4. Matters excluded as inventions. Among others, the following shall not be considered inventions:

  1. e) diagnostic, therapeutic, surgical methods for the treatment of persons or animals;

Do you have utility models / innovation patents?
Yes, we have utility models law and process. On the opposite, innovation patents are not applicable on our country.

If yes – is there substantive examination?
Yes, there are substantive examinations for utility models.

Moving to trademarks –

Is Paraguay a member of the Madrid protocol?
No.

Are there multi-class applications in Paraguay?
No, only single class system

What are the minimum filing requirements?
Name of the mark and device (if any), class (or product/services of interest) and name and address of the applicant. For service classes, description of the services to be protected.

A Power of Attorney will also be necessary.

Is a certified priority document required?
Yes, a certified priority document is necessary for claiming priority of a foreign application.

What is the opposition period?
60 working days counted from the final publication date.

What is the use requirement and when do marks become vulnerable for cancellation?
Use of the mark is not mandatory however advisable to avoid cancellation actions for non use.
Possible cancellation actions for non use could be filed if a) a trademark has not been used within a five years term counted from the registration date, b) if use has been interrupted for more than five consecutive years; or, if c) use of the mark have been made with substantial alterations.

For how long are trademarks valid?
For 10 years, counted from the granting date.

What is the approach to 3D trademarks?
3D marks can be registered in our country. The TMO requests views from all the sides.

What can Pekama do to help you and your business grow?
I think Pekama is a great idea. I take this opportunity to congratulate you for this development. I think that it’s a very original idea. It’s an easier way to find providers or to become a supplier. It’s global.

What are the leading economic sectors which you service in your country?
Our country´s main activities are agriculture and cattle breeding.

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Pekama Insight – Helen Xin Talk IP and China

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In the 3rd of our Pekama Supplier Interviews we talk to Helen Xin of Anli Partners, China.

Hi Helen, how many IP professionals work in your firm?
7 lawyers (2 partners)

How long have you been practicing IP?
9 Years

What is the focus of your practice?
Trademark, Copyright, Anti-unfair competition

Tell us a bit more about yourself. What do you like to do in your spare time?
I started my IP career as early as 2008, and has accumulated rich experiences in IP prosecution, litigation, licensing, franchising and enforcement. Preparing dish, playing with kid, Reading, Running, and swimming.

What do you see as the biggest challenges to the IP industry?
In China, I think the biggest challenges to the IP industry is the financing of IPR.

What are the biggest changes you have seen within the IP Industry?
Both the Chinese government and IPR owners are becoming more respectful to the IPR protection.

How do you see yourself making a difference to the IP Industry?
I started my IP career as trademark agent only practicing in trademark filing and prosecution, and now, I am a commercial lawyer and have enlarged my IP business to IP litigation, licensing, franchising and financing of IPR for both domestic and international clients. 

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
China

Moving to trademarks –

Is China a member of the Madrid protocol?
Yes

Are there multi-class applications in China?
Yes

What are the minimum filing requirements?
1, A scanned copy of POA; 2, a copy of trademark design( JPG format); 3. Applicant’s name, address and nationality.

Is a certified priority document required?
No , however, a hard copy of the priority documents is needed.

What is the opposition period?
3 months

What is the use requirement and when do marks become vulnerable for cancellation?
The mark in commercial use must be the same as registered. The mark will become vulnerable for cancellation if it has not been used for three consecutive years.

For how long are trademarks valid?
10 years

What is the approach to 3D trademarks?
3D trademarks can registered as a common trademark in China

How do you see your future involvement in the Pekama community?
I think I will be an active Chinese IP expert.

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Two Cambridge companies change the face of IP and Funding – Event Report

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Last week Pekama co-hosted an event titled ‘Cambridge Reinvents the Business of Innovation‘ with investment startup SyndicateRoom. SyndicateRoom were Pekama’s neighbours in Cambridge but recently moved to new offices in the Pitt building. This was the site for the introductory talks by James Sore, SyndicateRoom’s Chief Investment officer and Zeev Fisher, Pekama’s CEO and founder.

The intention was to bring together young start up firms (looking for funding and advice about Intellectual Property), IP professionals, and investors; allowing all parties to discuss their needs, ask advice, and offer their help.

The opening talk from SyndicateRoom’s Chief Investment Officer James Sore, was a great overview of what investors and startups should be thinking about when working together to get funding, to get their business off the ground. He covered some of the basics needed to attract investors as well as advice and lessons learned from his substantial experience in the financial and startup sectors.

As is not unusual with Zeev Fisher, the next presentation was both a light-hearted overview Pekama and how we work alongside some opinionated thoughts and ideas of how the IP legal process currently works.

Using the theme of The Good, The Bad, and The Ugly, Zeev talked animatedly about how Pekama is breaking the traditional (Bad) ‘black box’ of IP legal practice and developing a platform for a more open and transparent way of working; allowing IP owners better access to their cases and legal documents for the benefit of both IP owners and IP attorneys.

As a successful SyndicateRoom portfolio company CEO, Zeev was able to talk about Pekama’s experience of working with SyndicateRoom and James could offer his thoughts on Pekama and how IP matters when making investment decisions.


When the Q&A session finished, we walked over to the Varsity Hotel’s rooftop bar for networking, drinks, and canapes. With a spectacular view over the roofs, trees, colleges, and spires of Cambridge, the scene was set for perfect evening of intense discussion amongst attendees.

In the picture – Zeev (left) and Goncalo (right) sharing last minute thoughts

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Pekama Insight – Yasuhiro Suzuki Talks IP From Japan

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In the 2nd of our Pekama Supplier Interviews we talk to Yasuhiro Suzuki of Yasuhiro Patent Firm, Japan.

Hi Suzuki-San, how many IP professionals work in your firm?
Just 2

How long have you been practicing IP?
12 years

What is the focus of your practice?
Responsiveness and quality

Tell us a bit more about yourself. What do you like to do in your spare time?
Reading

What do you see as the biggest challenges to the IP industry?
Employing AI

If you don’t mind sharing what’s your firms most competitive advantage?
Thorough contribution to clients.

What are the biggest changes you have seen within the IP Industry?
Patent troll infestation

How do you see yourself making a difference to the IP Industry?
IP management consulting.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?

Starting with patents – Is Japan member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
1 to 1.5 year from filing the examination request

Is Japan a member of any PPH agreements?
Yes

Is there a green track for environmentally-friendly inventions?
Yes

Are there other acceleration processes?
Yes

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
Japan has post grant oppositions which can be filed by any persons (dummy) from the date of publication of grant within 6 months by claim. The time taken varies from case to case, typically 50% would complete within 12 months. The rate of cancellation would be less than 10% of total oppositions, but more than 60% of maintains were amended.

Are there any waivers from examinations and if yes, in which terms?
No

What’s the approach of your jurisdiction to software / business method patents?
Software patents are acceptable but business method patents themselves are not. If Business method is based on software or system patents, it should be acceptable.

Are there limitations to protection of healthcare-related inventions?
Yes. Method of diagnosis, cure and operation is not allowed.

Do you have utility models / innovation patents?
Yes. 

If yes – is there substantive examination?
No

Moving to trademarks –

Is Japan a member of the Madrid protocol?
Yes

Are there multi-class applications in Japan?
Yes

What are the minimum filing requirements?
Mark, international class, goods/services, applicant name

Is a certified priority document required?
Yes

What is the opposition period?
2 months from publication

What is the use requirement and when do marks become vulnerable for cancellation?
Use of registered trademark for registered goods/services. 3 years.

For how long are trademarks valid?
5 years or 10 years (applicant can select)

What is the approach to 3D trademarks?
3D trademark is not allowed if it consists of only three-dimensional shapes spontaneously arising from the trademark.

How do you see your future involvement in the Pekama community?
Contributor as a major player

What can Pekama do to help you and your business grow?
Pekama is a good networking tool which connects with attorneys worldwide and builds trust among them.

What can I do for you already that can help your firm?
Quality of members in Pekama is very important.

What are the leading economic sectors which you service in your country?
Information Technology, Mechanical, Electrical/Electronics, Control Engineering

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Pekama Insight – Dr. Sudhir Ravindran Talks IP From India

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In the 1st of our Pekama Insight member interviews we talk to Dr. Sudhir Ravindran of Altacit Global, India.

Hi Sudhir, how many IP professionals work in your firm?
20

How long have you been practicing IP?
18 Years

What is the focus of your practice?
Corporate & Intellectual Property

Tell us a bit more about yourself. What do you like to do in your spare time?
I am the founder of Altacit Global, a leading Indian Law Firm. I am the author of the Book Intellectual Property Risk Management, published by LexisNexis. A Engineer & Lawyer, with Master Degrees in both streams from the University of Warwick. I have also been awarded a Doctorate (Phd) in Law from Nalsar University, India. I enjoy reading and watching movies in my spare time.

What do you see as the biggest challenges to the IP industry?
Prosecution and Judicial Delays are the biggest challenges to the IP Industry.

If you don’t mind sharing what’s your firms most competitive advantage?
A boutique firm with strong regional presence in India with offices in Chennai, Bangalore, Cochin, Hyderabad and Coimbatore

What are the biggest changes you have seen within the IP Industry?
Less investment by Indian companies even to protect their core IP.

How do you see yourself making a difference to the IP Industry?
Providing a sound strategy and 360 degree planning

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?

Starting with patents –   Is India member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
3 to 4 years

Is India a member of any PPH agreements?
No

Is there a green track for environmentally-friendly inventions?
No

Are there other acceleration processes?
For Startup Companies there exists an acceleration process

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
India has both pre-grant and post grant oppositions. Pre-grant oppositions can be filed from the date of publication to the date of grant. Post grant application can be filed from the date of publication of grant within 12 months. The time taken is anywhere between 12 to 36 months

Are there any waivers from examinations and if yes, in which terms?
No waivers from examination are available

What’s the approach of your jurisdiction to software / business method patents?
Under Section 3(k) of the Indian Patent Act “a mathematical or business method or a computer programe per se or algorithms” are not patentable in India.

Are there limitations to protection of healthcare-related inventions?
There are no limitations to protection of healthcare related inventions. However, under Section 3(i) of the Indian Patent Act “any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their product” are not patentable in India

Do you have utility models / innovation patents?
No

If yes – is there substantive examination?

Moving to trademarks –

Is India a member of the Madrid protocol?
Yes

Are there multi-class applications in Japan?
Yes

What are the minimum filing requirements?
User Affidavits are basic requirement

Is a certified priority document required?
Yes

What is the opposition period?
Oppositions have to be filed within a period of 4 months from publication

What is the use requirement and when do marks become vulnerable for cancellation?
Non use for a continuous period of 5 years

For how long are trademarks valid?
10 years on a renewable basis

What is the approach to 3D trademarks?
India permits the registration of 3D trademarks.

How do you see your future involvement in the Pekama community?
Strong Partner and Contributor.

What can Pekama do to help you and your business grow?
Pekama helps in both outward and inward referrals which helps get in new work.

What can I do for you already that can help your firm?
Pekama is not merely a tool or platform, it helps connects in real time law firms and attorneys around the world. IP prosecution is time sensitive and the insistence on timely response helps us address our respective client needs.

What are the leading economic sectors which you service in your country?
Pharma, Information Technology, Automotive, Consumer Goods.

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News, Information, Help, & Insight Into The Pekama Community

What we’re saying on Twitter

@PekamaLegal

- August 3, 2017

The next in our series of Pekama Customer Insights - Helen Xin of Chinese firm Anli talks China and Trademark https://t.co/v88k6fEj2S
h J R
@PekamaLegal

- July 31, 2017

We've blogged about our recent event with @SyndicateRoom - A great evening leading to some interesting conversations https://t.co/53HhYS02Km
h J R
@PekamaLegal

- July 26, 2017

Our nice friends @SyndicateRoom have blogged about last week's joint event. Read up on what went down: https://t.co/KBV0iD0KQv
h J R
@PekamaLegal

- July 25, 2017

We've just published the next of our Pekama Insight Q&As with one of our Japanese Community members on our blog: https://t.co/K5kcDC6Gxw
h J R
@PekamaLegal

- July 20, 2017

RT @dovetailed_ux: The Good, the Bad and the Ugly of #IP law and how @PekamaLegal are disrupting it - great talk by Zeev, CEO https://t.co/
h J R

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