International reports

Sent to over 18,000 subscribers, the IAM Weekly email features reports from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, deal-making and valuation.

Most recent

PatentSight GmbH

IP analytics

30 Nov 2016
Smart patent analytics for leaders

Data analytics is an important and growing area of the IP field. Smart patent analytics should provide reliable, unique and relevant insights into the patent landscape for both decision makers and patent experts. Full text

Berkeley Research Group LLC

IP economics

05 Apr 2017
Do PAEs stifle competition? Recent FTC study leaves that question unanswered

The Federal Trade Commission recently undertook a study to assess the “competitive implications" of patent assertion entity (PAE) activity. Although the study makes a number of policy recommendations that touch on the competitive effects of PAEs, it remains silent as to whether certain PAE conduct does, in fact, stifle competition. Full text

24 Aug 2016
Extraterritoriality and US patent damages

In litigation, economic and financial experts are often asked to calculate the amount of patent damages that would be “adequate to compensate for the infringement”. But a recent ruling illustrates the difficulty of defending IP rights in today’s global economy, where multinational business operations are the norm and patent litigants must grapple with how national patent laws apply to the products and services of global businesses. Full text

22 Jun 2016
Apportionment and its impact on return on enforcement

Some IP professionals focus on the economic contributions of technology or other traditional valuation approaches (ie, market, income and cost approach), while others are increasingly interested in measuring 'return on enforcement' as an indication of value. The issue of apportionment may have a major impact on valuing a litigated patent. Full text

Adapt IP Ventures LLC

IP valuations

01 Feb 2017
IP valuation for medical device innovations affected by US policy changes?

IP values within the medical device industry appear to be declining based on a study of identified licensing transactions and royalty rates. To improve IP value, licensors must focus on demonstrating product and technology value to differentiate their licensing opportunity from others on the market and to command higher royalty rates, better deal terms and potential multiple licensing opportunities. Full text

DANIEL Legal & IP Strategy

Brazil More reports

24 May 2017
Unilever decision discourages technical development

The Superior Court of Justice recently issued a decision which reversed 40 years of economic policy and may significantly discourage business and technological development in Brazil. Full text

08 Mar 2017
Franchising in Brazil

Franchising in Brazil is governed by specific legislation. However, as a business that interacts with other legal areas, a network of regulations ? including the Industrial Property Law ? must also be observed. While the main thrust of these laws is to ensure a competitive marketplace, there are also significant provisions on protecting trade secrets and know-how. Full text

21 Dec 2016
Trade dress: a broad umbrella of protection

The Internet of Things allows objects to be sensed or controlled remotely across existing network infrastructure. As in any competitive market, original and innovative products or services – if successful – will attract unwanted attention from copycats, and a better understanding of how these can be protected by trade dress can thus be crucial. Full text

Bereskin & Parr LLP

Canada More reports Archive

21 Jun 2017
Trademark owners be warned: certain services may require a brick-and-mortar location in Canada

The cautionary lesson emerging from a rash of Trademarks Opposition Board decisions over the past several years is that owners of registrations for services without brick-and-mortar establishments in Canada should ensure that their registrations also cover ‘reservation services’ or other services that are rendered in Canada. Full text

14 Jun 2017
Clearing hurdles in the race for blockchain patents

As the many benefits of blockchain technology are increasingly recognised, efforts to protect new innovations and improvements to blockchain technology have led to a surge in patent filings. Successfully navigating the patent application process means understanding recent legal developments concerning patentable subject matter. Full text

07 Jun 2017
Federal Court of Appeal clarifies word mark considerations when assessing likelihood of confusion

The Federal Court of Appeal recently clarified that, when considering confusion, the Trademarks Opposition Board need not consider all of the potential ways in which an opponent’s registered word mark may be depicted. Full text

Liu, Shen & Associates

China

03 May 2017
Supreme People's Court rules in patent infringement retrial

The Supreme People's Court recently overruled a final judgment in patent infringement litigation, and gave guidance on claim construction and equivalent infringement of a functional feature. Full text

11 Jan 2017
An overview of trade secrets

An important form of intellectual property, trade secrets are increasingly attracting attention, particularly in regard to operational information such as customer lists and technical information in software. The protection of trade secrets mainly depends on the rights holder's desire to protect itself. Full text

Maikowski & Ninnemann

Germany

08 Mar 2017
The (high) value of second medical use patents: practical example

Second medical use claims can be of significant value for the patent owner, particularly when defining effectors of a medical target by their functionality. This report discusses the commercial value of second medical use claims based on an example from practice. Full text

08 Feb 2017
The (high) value of second medical use patents: legal background

Second medical use claims can be of high value for the patent owner, particularly when defining effectors of a medical target by their functionality. This report considers several questions raised by the definition of a compound in use claims. Full text

Vivien Chan & Co

Hong Kong

12 Apr 2017
Product-by-process claims

If the exact molecular structure and mechanisms of a drug pharmacology are not known at the time of patent application, the product can be described using process methodology, also known as 'product by process'. Full text

05 Apr 2017
Hong Kong adopts 11th Edition of the International (Nice) Classification

The Hong Kong Trademark Registry has now adopted the 11th Edition of the International (Nice) Classification for the specification of goods and services. Full text

29 Mar 2017
Cautionary tale involving letters of undertaking: Gap’s woes in Hong Kong

In a recent copyright infringement claim brought by Morn Creations Limited (MCL) against Gap Limited, the Hong Kong High Court examined the proper relief in copyright infringement cases where liability has been established. Full text

LexOrbis

India More reports Archive

21 Jun 2017
Fair use of trademarks on parts, accessories and ancillary products

The fair use of brands by third-party manufacturers of genuine parts which are intended to be ancillary or used as an accessory to the core goods of another party is a much-debated topic. It has both legal implications and high-stakes commercial ramifications in the manufacturing sector. Full text

07 Jun 2017
Taking the divisional route – a trademark perspective

The past few years have witnessed a remarkable upsurge in trademark filings. However, when an individual or entity files a trademark application, a common dilemma is whether to file a multi-class application or single-class applications for the different classes of goods or services. Full text

31 May 2017
IPO rules no time extension for lapse on part of former agent

A recent Indian Patent Office order rejected a petition for condonation of delay filed under Rule 137 of the Patent Act 1970 by a patent agent on behalf of the applicant. The petition was filed based on a lack of knowledge of the issuance of the first examination report and the non-receipt of communications from the previous patent agent about the issuance of that report. Full text

Jacobacci & Partners spa

Italy More reports

07 Jun 2017
Class 35: registering retail and wholesale services at the UIBM

Since 2016 the Italian Patent and Trademark Office (UIBM) has taken a harsh stance on registrations for ‘retail and wholesale services’ in Class 35. During this time, the UIBM has consistently refused to register applications directed to these services. Full text

03 May 2017
A tale of statues and camels: mass-produced items eligible for copyright protection

The Court of Cassation recently held, in a case involving porcelain statues manufactured and mass-marketed by Italian company Thun Spa, ruled that mass-produced items may include a creative, artistic element, and thus can be eligible for copyright protection. Full text

05 Apr 2017
CLINIQUE: reputation alone may not cure trademark's inherent weakness

In a recently published decision the Court of Cassation held that although the trademark CLINIQUE was well known in the European Union, its reputation was insufficient to overcome the weakness of the trademark and its inherent lack of distinctiveness. Full text

Shobayashi International Patent & Trademark Office

Japan Archive

30 Nov 2016
IP management theory is vital for effective growth strategy

To what extent can an agent (and a qualified person) be serviceable in planning an IP strategy? This report examines the idea of a 'qualified person' from the perspective of management theory, under the theme of the tools required to formulate IP strategy. Full text

NLO

Netherlands More reports Archive

05 Apr 2017
Bull fight finally yields a victor

After 14 years, the protracted legal fight between coffee shop The Bulldog and energy drink brand Red Bull is over, with The Bulldog coming out on top. But what can be learned from this case? Full text

29 Mar 2017
Naturalis must halt refurbishment on grounds of architect’s copyright

In recent interlocutory proceedings a judge ordered Naturalis, a museum in Leiden, to stop the refurbishment of its building. The building's architect had opposed the refurbishment on the grounds of his copyright in the original design. Full text

01 Feb 2017
Can a vegan schnitzel be called a schnitzel?

Vegetarian meat substitutes often bear the name of the meat product that they are replacing – for example, schnitzel, sausage roll or chicken kebab. In the Netherlands, politicians are debating these practices and considering how to stop this misleading use of meat names. Full text

Federis & Associates

Philippines

02 Sep 2015
IPOPHIL takes steps towards IP financing framework

The Intellectual Property Office of the Philippines (IPOPHIL) has taken initial steps towards enabling the monetisation of IP assets in the Philippines by holding the High-Level Forum on IP Financing. It is hoped that the forum and future IPOPHIL directives will help local rights holders to attract foreign investors into the country. Full text

22 Apr 2015
Philippines launches first online IP marketplace

The Intellectual Property Office of the Philippines has launched the country's first online IP marketplace. IP Depot is a digital platform which promotes IP assets for potential commercialisation opportunities. It was established to give owners of patented inventions, registered trademarks, copyright and industrial designs a forum to showcase their IP assets to the world. Full text

Allen & Overy A Pedzich Spk

Poland More reports

15 Jun 2016
Supreme Court ruling expected to increase cassation complaints filed by inventors

In a case brought by an employee-inventor for remuneration for the use of his invention, the Supreme Court recently held that the admissibility of a cassation complaint (ie, an appeal of last resort) depends on the value of the appeal provided for in labour law matters. Full text

08 Jun 2016
Poland allows full cumulative protection of industrial designs

An act introducing amendments to the Industrial Property Law, which came into force in December 2015, abrogated the restriction on cumulative protection of industrial designs by repealing Article 116 of the Industrial Property Law. This article excluded industrial designs for which registration rights had expired from copyright protection. Full text

13 Apr 2016
Poland rejects Swiss-type claims

The new Industrial Property Law introduced a long-awaited change in the rules regarding patent protection for second or further medical use of a known substance or composition, which aligns Polish patent law with the European Patent Convention and European Patent Office case law. Full text

Gowling WLG

Russia More reports

07 Jun 2017
Offices of search engine Yandex raided in Ukraine

The escalation of sanctions against Russian IT companies – including Russia's top search engine Yandex – follows a number of recent initiatives from the Ukrainian authorities aimed at limiting access of Russian-controlled entities to critical Ukrainian cybersecurity infrastructure. Full text

24 May 2017
WeChat is back online

One week after access to WeChat, China's most popular social media app, was cut off in Russia for failure to comply with recently introduced information laws, the app is now available and back online. It is not the first time that a web-based service has been blocked in Russia. Full text

26 Apr 2017
Russia signs up to international design registration at long last

President Putin has signed a law ratifying the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The agreement is designed to facilitate the protection of industrial designs in multiple countries or regions by allowing applicants to file a single application in a single language. Full text

Mikijelj Jankovic and Bogdanovic

Serbia

21 Dec 2016
New regulation for food products: the 'Serbian quality' designation

The Decree on Designation of Agricultural and Food Products with the National Designation of Enhanced Quality 'Serbian Quality' is now in force. The decree specifies for the first time the conditions that must be fulfilled for a food product to bear the brand-new 'Serbian quality' designation. Full text

30 Nov 2016
Geographical indications in practice

With a population of around 8 million, Serbia has 68 registered geographical indications, mostly for agricultural products. A recent seminar entitled "Geographical Indications in Practice" highlighted some of the key issues surrounding the protection of geographical indications. Full text

Alpha & Omega Law Corporation

Singapore

29 Jun 2016
High Court has Yellow Pages’ number in copyright dispute over telephone directories

A recent High Court case has developed the law with respect to copyright protection for databases and the groundless threat counterclaim. It also illustrates how the 'creativity' approach should apply within the specific context of telephone directories, where there is no dichotomy between facts and expression. Full text

15 Jun 2016
Appeal court rules on AMC v AMC

The Singapore Court of Appeal recently upheld claims of trademark infringement and passing off filed by Audience Motivation against AMC Live. The court also held that AMC Live would not be entitled to the own-name defence with respect to the infringement claim. Full text

08 Jun 2016
Applying visual similarity principles to marks with dominant textual components

In a recent decision the hearing officer dismissed on all grounds an opposition filed by independent pet food company Pets Global Pte Ltd against a mark owned by specialist pet products supplier B2K Pet Products Pte Ltd. She found that the marks were not similar since they were not visually, aurally or conceptually similar. Full text

Formosa Transnational

Taiwan More reports

14 Jun 2017
Grace period for invention patents and utility models extended

A recent amendment of the Patent Act aims to encourage the disclosure and circulation of techniques and to provide applicants with an enhanced possibility of obtaining patent protection for disclosed inventions and sufficient time to prepare their patent applications. Full text

17 May 2017
Supreme Court reduces plaintiff’s burden of proof in trade secret misappropriation cases

To better protect the interests of trade secret holders in Taiwan, the Supreme Court recently held that the burden of proof of the injured party shall be reduced in trade secret misappropriation cases. Full text

26 Apr 2017
Trademark case is a warning for rights holders to act promptly

Taiwan’s IP Court has issued a judgment regarding how to calculate when a right to compensation for trademark infringement expires. The case puts trademark owners on notice to initiate litigation as soon as possible once they become aware of a possible infringement. Full text

Gün + Partners

Turkey More reports

14 Jun 2017
IP court accepts patent infringement action against global medical device company

Although preliminary injunctions in patent filings are rarely easy to obtain, a recent preliminary injunction was swiftly rendered following confirmation by the technical expertise of a European patent attorney, a reputable professor working on medical devices and the court-appointed experts. Full text

03 May 2017
Is withdrawal of appeal different from waiver of action?

The withdrawal of an action allows the withdrawing party to re-file the same action. However, if a party waives an action, it also waives all of its rights to file the same action. The Istanbul 3rd Civil Court of Intellectual and Industrial Property recently examined the difference between withdrawal and waiver. Full text

22 Mar 2017
Direct applicability of European Patent Convention while invalidation actions pending

Article 138/3 of the European Patent Convention is inconsistent with Turkish national patent law, so the IP courts and the Turkish Patent and Trademark Office previously refused to apply Article 138/3 in national invalidity proceedings. However, recently the Istanbul IP Court applied Article 138/3 and accepted claim limitation in national proceedings. Full text

Carpmaels & Ransford LLP

UK More reports

03 May 2017
Keeping up in the patent race for connected cars

The interplay across technology sectors and competition between car manufacturers in the development of connected cars means that established car manufacturers should ensure that they are not left behind in building and exploiting their patent portfolios. Full text

12 Apr 2017
Unwired Planet v Huawei – essentially fair?

The lengthy, long-awaited judgment in Unwired Planet v Huawei Technologies, which has just been released, provides guidance on the determination of fair, reasonable and non-discriminatory royalty rates for standard-essential patents on a worldwide basis. Full text

15 Mar 2017
Yes, it matters – but it’s not all about size

The Court of Appeal has upheld the decisions of the High Court and the UK Intellectual Property Office (UKIPO) that Professor Shanks, an employee of Unilever, was not entitled to inventor’s compensation. The appeal court dismissed Shanks’ further appeal against the UKIPO rejection of his multi-million pound claim for inventor’s compensation against his former employer in respect of patents which he claimed to be of “outstanding benefit” to Unilever. Full text

Baker Donelson

USA More reports

21 Jun 2017
Federal Circuit reverses district court decision on exceptional case and attorneys' fees

The US Court of Appeals for the Federal Circuit has reversed a district court decision in a patent infringement case involving what constitutes an exceptional case justifying an award of attorneys' fees under 35 USC Section 285. Full text

07 Jun 2017
Is it time to reform 35 USC Section 101?

The American Intellectual Property Law Association and the Intellectual Property Owners Association recently proposed changes to the legal framework governing the analysis of what constitutes patent-eligible subject matter in an effort to curtail the current confusion resulting from recent Supreme Court rulings. Full text

31 May 2017
Supreme Court drastically changes where patent infringement cases can be filed

A recent unanimous Supreme Court decision will greatly restrict the venue for patent infringement litigation. The court held that a domestic corporation resides only in its state of incorporation for purposes of the patent venue statute, reversing several decades of a more expansive interpretation. Full text

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Issue 84