Legal perspectives: Cross border
Superman actor Christopher Reeve broke his spine after falling from a horse and never regained the use of his lower limbs. Until his death, he vocally supported research into stem cells for the treatment of various neurological diseases. Since the early 1990s advances in stem-cell technology have raised hopes for new approaches to the treatment of serious, previously untreatable diseases. In particular, progress has been made towards promising treatments for diabetes, heart disease and neurological diseases such as Parkinson’s.
Susanne Høiberg and Louise Aagaard
The most far-reaching patent reform in Europe ever – the establishment of the Unified Patent Court (UPC) and the creation of the unitary patent – is a done deal with the relevant EU bodies and is undergoing national ratification. The exact date of entry into force of the new regime is still unknown, although mid-2015 seems realistic. As the launch of the new system approaches, executives and IP attorneys would be well advised to start reconsidering certain strategic perspectives for risk management and patent creation.
Jakob Pade Frederiksen, Ulla Klinge and Edward J Farrington
A patent is generally considered to be the gold standard of intellectual property, potentially offering true monopoly protection for a broad inventive concept. Although copyright is also important for software, its value has been reduced by recent European Court of Justice judgments that copyright does not extend to ‘look and feel’ or command syntax.
John Leeming and Martin Jackson
One of the key elements in many businesses and industries is the transfer of technology. It is generally accepted that this enhances economic development and benefits consumers as well as other market players. A transfer of technology helps to disseminate innovation and allows companies to integrate and use complementary technologies to which they might otherwise have insufficient access.
The idea of outsourcing has existed for hundreds of years. Outsourcing occurs when a firm allocates responsibility for an internal business function to an external service provider; it is used as a strategic management option, rather than just a cost-cutting measure. Potential targets for outsourcing include:
• information technology;
• business processes;
• data centre management;
• application management;
• human resources and/or selected human
resources functions; and
• customer service/call centres.
The Internet is a powerful tool and marketplace, and is evolving at a rate that requires businesses to adapt quickly and effectively. This can give rise to a whole host of legal issues which companies need to consider. Often the law does not move as fast as the online environment, so IP strategies need to be reviewed regularly to ensure that your business has taken all necessary steps to protect its goodwill, ensure its ability to trade, be in a position to react to competitors and tackle those that seek to exploit its intellectual property.
Software and business methods are a crucial component of the world’s innovation-driven economy. However, patent protection for these intellectual assets has proved controversial and remains subject to considerable variations between jurisdictions. This chapter examines the patentability of software and business method patents in the United States, Canada, the European Patent Office (EPO) and several Asian jurisdictions. Our findings are summarised in the table below and are discussed in more detail in the jurisdiction-specific sections that follow. Many of these jurisdictions exclude software and business methods as such from patent eligibility, but under certain circumstances discussed below, some patent protection remains available for these inventions.
Stephen Perry and Arya Ghadimi
‘Content repurposing’ is defined in various ways. One online commentator describes the term as a potential entrant to the 2013 Hall of Fame for digital buzzwords. Online platforms describe it as taking raw materials and presenting them in a different way or taking a finished product and repackaging it to suit alternative media (eg, converting visuals and blog posts into presentations, or transforming data into a form that serves a different function).
Counterfeiting is a global, multibilliondollar
problem that has serious economic and
health ramifications for governments, businesses
and consumers. Counterfeiting is everywhere.
Sales of counterfeit goods now represent
around 7% of world trade and the global
market for luxury fakes has exploded, especially
in the digital world.
Anna-Marie Lagerqvist and Hanna Bruck
Technical evidence is often essential for enforcing patents, in particular patents for processes. Accordingly, patent protection in the European Union would be seriously impaired if the borders between member states vanished for infringers, while remaining a barrier against obtaining evidence for rights holders. While this is still the case in certain situations, recent developments have strengthened the position of rights holders.
Peter de Lange
Over the past five years in Albania, significant legal amendments, government decisions, orders and regulations, and court cases have raised the awareness of Albanian businesses and consumers regarding the importance of IP protection.
The Albanian General Directorate of Patents and Trademarks (ALPTO) is responsible for IP protection in Albania. Its activities include:
• examining and registering industrial
designs, trademarks and geographical indications;
• issuing patents and utility models;
• preparing draft laws and regulations
regarding intellectual property; and
• representing the Albanian state before the
courts, other institutions and international organisations in respect of IP matters.
Ekflodia Leskaj and Jonida Beqiri
Australia’s Raising the Bar provisions took effect on April 15 2013. Changes to trademark law include shortening the timeframe for opposing accepted trademarks from three months to two. The act also tightened opposition procedures, including a requirement to file a statement of grounds and particulars within one month of filing a notice of intention to oppose. Previously, notices of opposition could be filed claiming all available grounds and did not have to be refined until much later in the process. The practical implication of this change is that opponents now need to think about actual grounds of opposition much earlier.
Damian Broadley, Matt Adams and Anton Gibson
Ambush marketing is a significant international concern. As a result, many jurisdictions around the world are enacting legislation to protect the commercial interests of the sponsors of major events such as the Olympics, the Fédération Internationale de Football Association (FIFA) World Cup and the Cricket World Cup.
IP filing and enforcement activity in China has continued to increase rapidly over the past 12 months, despite the Chinese economy showing signs of slowing down.
Cedric Lam, Janet Wong and Lilian Shi
In 2011 and 2012 the European Court of Justice (ECJ) handed down several important decisions concerning the interpretation of the EU Regulation on Supplementary Protection Certificates (SPCs) for Medicinal Products (469/2009). One such decision, Novartis v Actavis, clearly replied to questions referred to the ECJ for preliminary ruling. In contrast, the Medeva decision and the orders that adopted the grounds for that decision (in particular, University of Queensland and Daiichi Sankyo) have been considered by interested parties to be imprecise. Rather than clarifying the SPC system, these decisions have had the opposite effect.
IP practitioners have known this for a long time, but it is now official: IP rights, particularly in Germany but also in the European Union as a whole, are one of the most important contributing factors to the economy.
Over the past 12 months, Greece has been in a period of transition in terms of trademark law. As discussed in the Greece chapter of IP Value 2013, last year the government passed the long-awaited new Trademark Law (4072/2012), which came into force in October 2012. Since then, the Trademark Office has been taking the necessary steps in order to implement the new provisions. This chapter examines whether these steps have been adequate, and whether the trademark procedure has been updated and modernised to the extent expected and needed – or whether there is still a long way to go.
“Design can be art. Design can be aesthetics. Design is so simple, that’s why it is so complicated” – Paul Rand
Apple and Samsung, the two leading global manufacturers of smartphones, have been at war worldwide regarding the patents in their smartphone and tablet devices. In Japan, the two companies have taken various types of legal action against each other: according to media reports, as of June 2013 six suits and 17 provisional disposition cases were outstanding between them, and three cases had been adjudicated (of these, Apple won two and lost one). This chapter looks at one such case, adjudicated by the Tokyo District Court on February 28 2013 (Case 38969 (wa), 2011), which is significant for IP practice in Japan.
Hitomi Iwase and Takahiro Sugauchi
The increase in open innovation and the need for collaboration in the business and scientific environments have led to a growing need to deal with co-ownership. Some legal systems have clear co-ownership rules that are specific to IP rights. However, in Mexico intellectual property is dealt with under the general rules applicable to all types of property, meaning that at times the provisions are not as clear as they could be, considering that the majority of the laws are designed to deal with tangible property rather than intangible assets such as IP rights.
Therefore, the laws must be interpreted in terms of the unique features of IP rights. This chapter examines such interpretation in the context of IP-based business transactions.
Héctor Elias Chagoya Cortes and Juan Carlos Amaro Alvarado
Progressive acceptance of coexistence agreements dates back to 2008. However, coexistence agreements are not automatically accepted in Peru and the parties’ intent to coexist is not always honoured. The acceptance of coexistence agreements remains far from straightforward. The first administrative instance is still reluctant to accept coexistence agreements unless the parties to the agreement are economically related. Thus, coexistence agreements dealing with unrelated parties have so far been accepted only on appeal.
Patent law sets out specific provisions with respect to the protection of medicinal products and biotechnological inventions. These provisions are determined by two main factors: medicinal products are difficult to discover and develop, and at the same time – being chemical compounds or mixtures thereof – they are extremely susceptible to copying. That is why manufacturers of original medicines (originators) protect their products using patents. The exclusive rights granted by patents enable them to recover costs incurred in developing a new product and fund further research.
According to the Explanatory Dictionary of the Romanian Language (DEX), the adjective ‘descriptive’ applies to anything that describes or contains a description, while the adjective ‘suggestive’ applies to anything that has the power or capacity to make a suggestion or inspire certain representations or ideas.
When searching for the term ‘patent infringement litigation’ on Google, the results are likely to include a Wikipedia link, news about recent high-profile US lawsuits, links to law firm websites and patent blog posts. Only if you add the word ‘Korea’ to the search does substantive information on patent litigation in that country appear. Many of those search results reference the infamous Apple v Samsung litigation, which captured the attention of so many legal scholars, tech geeks and even common consumers.
Stephen T Bang
In Spain, utility models can be used to protect inventions. As in other jurisdictions, they have a shorter term than patents and less stringent patentability requirements apply. Utility models have been and still are regarded by many as a consolation prize for inventions that are not good enough to deserve patent protection. However, the peculiarities of the patent’s little brother can make the utility model an effective weapon to fight off competitors – in some cases even more effectively than a traditional patent.
Mathieu De Rooij and Anna Barlocci
Negotiation, backed up by litigation, is the most effective way to enforce patent rights. However, while negotiation may be a fast way to respond to activity in the market, the outcome is hard to predict; the communications may be indirect, ambiguous and even false; and the outcome can be subject to higher-level approval. Above all, negotiation has little legal impact on the parties. In contrast, IP litigation in Taiwan is a speedy, simple and comparatively low-cost procedure, which is handled by a professional court, well-trained judges and technical examiners. As long as an experienced legal team with expertise is engaged, litigation is a good choice to resolve disputes.
Yulan Kuo, Jane CC Wang and Charles Chen
Turkey is an emerging market in a critical geographical location, bridging Europe, Asia and the Middle East. Thus, rights holders are advised to gain a good understanding of the protection and enforcement of IP rights in this region.
During 2013 the United Kingdom saw significant developments in IP-related law. As well as the new Patent Box tax regime taking effect and the IP Bill beginning its progress through Parliament, the courts issued a number of key decisions, covering the IP spectrum from software patents to the life sciences sector. Developments in trademark law included new guidance issued by the courts on the use of survey evidence at trial.
Esther Ford, William James and William Jensen
The United States has long been considered one of the most accommodating countries for business and computer-implemented method and system patents. However, while it appears settled that such processes are valid subject matter, there is growing confusion over the precise scope of what can be patented and, perhaps more importantly, how claims should be drafted to match that scope.
W Edward Ramage
In the cultural and artistic world, literary works represent the sentimental, experimental and creative expressions of human beings.
The huge numbers of works published since the classical era, along with Gutenberg’s 1450 creation of the printing press (which allowed for the mass publication of literary works for the first time), created the need for authors to enforce the legal protection of their works. As these authors had the right to claim their own creations, a strong legal framework had to be created to allow them to feel protected against third parties which attempted to distort, alter or steal their ideas and creations.
In general, patent infringement in Vietnam is increasing. It predominantly occurs in the pharmaceutical sector. As reported by the Inspectorate of the Ministry of Science and Technology, in each of the past few years between 10 and 20 requests to deal with patent infringement have been submitted. Most of these requests are from foreign companies such as Richter (Hungary) and Bayer (Germany).
Dang The Duc and Thi Hong Anh Nguyen
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