International reports

Sent to over 28,000 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

IPlytics GmbH

IP analytics More reports

17 Jan 2018
Legal risk of cloud computing

As cloud computing applications are regularly integrated into complex cloud systems, companies must ensure that their cloud-based solutions are not inadvertently infringing patented inventions. Full text

22 Nov 2017
Cloud computing patent litigation on the rise

Cloud computing forms a space where technologies are complex and different solutions converge. A growing number of companies are filing for patent protection on cloud computing technologies or acquiring earlier-filed patents to defend themselves against future litigation. Full text

15 Nov 2017
How to count and valuate standard-essential patents

Standardised technologies such as 3G, 4G and soon 5G will strongly contribute to the next technological revolution of the Internet of Things. In this regard, standard-essential patents are increasingly the subject of lively debate among market observers, policy makers and regulatory institutions. Full text

Sagacious Research

IP technology More reports

17 Jan 2018
CRISPR: the gene editing tool making the world go round

While an interference battle over patents relating to clustered regularly interspaced short palindromic repeat technology between two major biotech companies was officially settled last year, the licensing war is far from over. Full text

10 Jan 2018
Evolution of patent claim drafting

Applied in the right context, artificial intelligence can provide a cheaper, quicker and more convenient method for evaluating certain aspects of patent claim drafting than retaining an expert to analyse claims manually. Full text

20 Dec 2017
Humans versus robots: changes in patent drafting trends

While patent specification drafting can be laborious, it is a significant and skill-based task, and one which the IP sector should rely on professionals to complete. Full text

Navigant Consulting Inc

IP transactions

25 Oct 2017
Comcast patent purchase fails to deliver desired result

An Eastern District of Virginia jury decision confirmed that when apportionment calculations for complex technologies do not clearly demonstrate how the infringed patent uniquely creates demand, they become vulnerable to simple pro rata arguments. Full text

11 Oct 2017
Court relies on patent context to uphold $70 million trade secrets award

The decision in CardiAQ v Neovasc highlights the risks that innovators run when they choose not to patent and instead to hold patent-eligible subject-matter innovations as trade secrets – a practice that has been much discussed in recent years as US patent case law has eroded the timely enforceability of patents. Full text

Adapt IP Ventures LLC

IP valuations

19 Apr 2017
Protecting and enhancing IP value in technology licensing partnerships

An IP partnership unravelling can have significant consequences not only to the value of the licensor or supplier of the intellectual property, but also to the perceived value of the underlying intellectual property. Entities supplying technology and other intellectual property should assess their IP partnerships to ensure that they are adequately protecting and enhancing both the IP value and the enterprise value. Full text

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

17 Jan 2018
Bridging the great divide

Recent case law suggests that the National Health Surveillance Agency and the Brazilian Patent and Trademark Office are finally harmonising to clear the growing backlog of unexamined pharma-related patent applications in Brazil. Full text

10 Jan 2018
Pulling the plug on INPI’s patent backlog

The government is expected to launch an emergency measure to eliminate the Brazilian Patent and Trademark Office’s patent backlog by automatically granting 231,000 pending non-pharmaceutical applications. Full text

09 Aug 2017
Government may grant 230,000 pending patent applications to eliminate backlog

The government is considering an emergency measure to eliminate the Brazilian Patent and Trademark Office’s chronic patent backlog by automatically granting 230,000 pending applications by 2020. Full text

Bereskin & Parr LLP

Canada More reports Archive

01 Nov 2017
Identifying and enforcing trade secrets

Trade secrets allow businesses to obtain a commercial advantage over competitors which do not know or cannot use the secret. However, the secret must be managed carefully to avoid loss of rights. Full text

25 Oct 2017
Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy ? a mindful, measured and disciplined approach is crucial. Full text

18 Oct 2017
(The cult of) personality rights in Canada

Personality – including, name, voice, likeness and signature – can have tremendous commercial value. Although lagging somewhat, personality protection can be found in Canadian trademark law, in common law under the torts of misappropriation of personality and passing off, and under privacy statues.    Full text

Liu, Shen & Associates

China More reports

10 Jan 2018
New era for new matter?

While the criteria for identifying new matter in Chinese patent applications remain relatively strict, there are signs that evaluations are becoming more flexible, with examiners approving amendments based on information provided in figures and specific examples. Full text

02 Aug 2017
Best drafting practices for background section of patent applications

In China, the background section of a patent application does not constitute prior art against the invention claimed to be protected unless it is proved by a prior art document or other prior art evidence. However, applicants should be more cautious if the application is also intended to be filed in other countries. Full text

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

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 More reports

12 Jul 2017
Registering 3D trademarks for product designs

Obtaining three-dimensional (3D) trademark registration in Hong Kong through use has generally proved to be a difficult task. Brand owners are often unable to provide evidence to show that the general public can recognise the shape of the 3D trademark as the badge of origin for its designated goods. Full text

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

LexOrbis

India More reports Archive

29 Nov 2017
Novelty: an Indian perspective

The standards for meeting patentability criteria under the Patents Act are emphasised to reward the contributors of an invention. Among these criteria, novelty is a vital and absolute condition for patentability. Full text

15 Nov 2017
No mini trial in temporary injunction application

The Delhi High Court recently noted that, when deciding whether to grant an injunction application, a court is not required to conduct a mini trial. The court recognised that the purpose of an interim injunction is to ensure the protection of parties’ rights on the basis of three factors: prima facie case, balance of convenience and irreparable injury. Full text

08 Nov 2017
CRI guidelines and patentability of financial methods under Section 3(k)

While it is true that financial service-oriented businesses are different from product-oriented businesses, and the predominant perception of financial method inventions is not emerging in India as in other jurisdictions, innovative activity in this area is promising and deserves IP protection. Full text

Ehrlich & Fenster Patent & Trademark Attorneys

Israel More reports Archive

16 Jan 2013
Significant amendment to the Patent Law takes effect

Further to an agreement with the US Trade Commission, the 10th amendment to the Patent Law has now come into force. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. Full text

31 Oct 2012
Court gives the OK to parallel importers – but use trademarks in moderation

The Tel Aviv District Court recently ruled in favour of the Tommy Hilfiger Group after it brought suit against Machsan Hayevuan and its owner Elad Suissa for breach of the rights under the TOMMY HILFIGER trademark. The ruling is a signal to all parallel importers in Israel to review their current practice carefully and to consider whether they are maintaining the proper balance between fair use of their marketed goods and not infringing IP rights. Full text

13 Jun 2012
New examination guidelines: overlapping subject matter

Recently published guidelines for examiners with regard to overlapping subject matter have clarified the definition of "overlapping subject matter" and provide an insight into the strategy for drafting and prosecuting divisional and continuation applications before the Israeli Patent and Trademark Office. Full text

Jacobacci & Partners

Italy More reports

20 Dec 2017
File wrapper estoppel trumps infringement under doctrine of equivalents

The Court of Milan recently held that the text of a European patent application and the applicant’s actions during the prosecution history of the application limiting a claim to a compound’s specific salt form precluded a finding of infringement – including under the doctrine of equivalents – by other salt forms. Full text

06 Dec 2017
Lessons in unfair competition and misappropriation of confidential information

The Court of Milan recently held that the use of images that are highly similar to those of products shown in a competitor's catalogue constituted unfair competition, and that the use of non-identical technical drawings was insufficient to establish a claim of misappropriation of a competitor’s confidential information. Full text

15 Nov 2017
Revised EPO guidelines on computer-implemented inventions

The European Patent Office Guidelines 2017 recently entered into force. Like the previous edition, this year’s guidelines include substantial, extensive and comprehensive improvements with regard to guidance on the eligibility of computer-implemented inventions parts. Full text

Shobayashi International Patent & Trademark Office

Japan More reports Archive

22 Nov 2017
Supreme Court reverses taxation on tax haven subsidiary

The Japanese government is strengthening the oversight of overseas patent transfers. A recent Supreme Court ruling may help companies to judge whether anti-tax haven rules apply to their foreign IP management subsidiaries. Full text

18 Oct 2017
Government requests guideline suggestions for standard-essential patent licence negotiation

The government recently held a meeting to discuss issues involving standard-essential patent licensing in accordance with the Intellectual Property Strategic Programme 2017, which was published in May 2017. Full text

11 Oct 2017
Generic company planning strategic lawsuits with recently acquired US subsidiary

Sawai Pharmaceutical Co is planning to undertake lawsuits in the United States in cooperation with its newly acquired US subsidiary Upsher-Smith Laboratories Inc. If Sawai succeeds, other Japanese generic companies may adopt its approach. Full text

NLO

Netherlands More reports Archive

08 Nov 2017
No likelihood of confusion between SINA rice and SITA rice

The District Court of The Hague recently held that there was no likelihood of confusion between SINA rice and SITA rice. This decision was somewhat remarkable considering earlier decisions on similar comparisons between four-letter signs relating to foodstuffs. Full text

12 Jul 2017
Can a plant rule supplant a plant decision?

The Administrative Council of the European Patent Office recently amended the regulations pertaining to the patentability of plants. In the new rules, plants and animals exclusively obtained by an essentially biological breeding process are excluded from patentability. Full text

28 Jun 2017
Soya milk and peanut butter: what names can and cannot be used?

Like vegetarian meat substitutes, dairy substitutes are also often named after the product they are replacing. A conflict about this practice has led to a ruling by the European Court of Justice. 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 (International) Inc

Russia More reports

22 Nov 2017
Rospatent re-launches fee-based expedited examination

The Russian Patent and Trademark Office recently announced that expedited examination will be available for all trademark applications. Since 2012, patent law has allowed accelerated examination through the Patent Prosecution Highway system, but no expedited procedure has been in place for trademarks. Full text

01 Nov 2017
Government increases official fees charged by Rospatent

Rospatent's administrative fees were recently increased by Decree 1151. Some of the new fees for patent and trademark registration, maintenance and renewal are one and a half to two times higher than those set previously. Full text

25 Oct 2017
FAS threatens brand owners with prosecution for unfair competition

Following Russia’s recent switch to a regional exhaustion regime, businesses are concerned that full or partial legalisation of parallel imports will lead to an increased volume of counterfeit goods entering the Russian market. 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

Hepp Wenger Ryffel AG

Switzerland

08 Nov 2017
Update on supplementary protection certificates in Switzerland

The granting practice of supplementary protection certificates (SPCs) was recently challenged at the Federal Patent Court. In yet another SPC matter, the Federal Patent Court assessed the scope of an SPC in summary proceedings. Full text

13 Sep 2017
Time to revisit your Swiss SPCs

The supplementary protection certificate granting practice in Switzerland is being challenged at the Federal Patent Court – in particular, whether and if so how the granting practice should be brought in line with recent European Court of Justice case law. Full text

Formosa Transnational

Taiwan More reports

17 Jan 2018
Patent linkage system passed by Legislative Yuan

The Legislative Yuan recently approved the patent linkage system – a game changer for Taiwan’s pharmaceutical industry. Amendments to the Pharmaceutical Affairs Act will introduce a number of key changes for new drug marketing approval holders. Full text

20 Dec 2017
TIPC awards enhanced damages in trade secret misappropriation case

The Taiwan Intellectual Property Court recently delivered its verdict in a trade secret misappropriation case involving know-how relating to lens manufacturing process technologies. The verdict and enhanced damages award mark a new chapter in Taiwanese trade secret litigation. Full text

15 Nov 2017
Copyright Act to be revised

The Executive Yuan recently passed a draft amendment to the Copyright Act. The draft amendment was proposed and drafted by the Taiwan Intellectual Property Office, passed to the Executive Yuan for review and modification, and has been sent to the Legislative Yuan for inspection and formal amendment through three successive readings. Full text

Gün + Partners

Turkey More reports

17 Jan 2018
Use requirements, evidence of use and compulsory licences

The new Industrial Property Law has repealed and replaced decree-laws pertaining to the protection of patent rights, including patent use requirements and evidence of use. Patent use requirements are now set out under the provision on compulsory licences. Full text

06 Dec 2017
New regulation on employee inventions

Under a new regulation on employee inventions, if an employer demands a full or partial right to an employee invention, reasonable compensation and an award should be paid to the employee. The regulation also sets out rules for calculating reasonable awards. Full text

27 Sep 2017
Impact of finalised revocation decision on preliminary injunction demands

The Istanbul Second IP Court recently adopted a refusal decision, citing that it would not remove a preliminary injunction as the invalidation and dismissal decisions had not been finalised. Given the IP courts’ track record of deciding the exact opposite, this kind of decision is the beginning of a new era. Full text

Carpmaels & Ransford LLP

UK More reports

29 Nov 2017
Unregistered IP rights may have significant consequences for interested parties

Having successfully acquired, licensed or taken security over registered IP rights, new rights holders often fail to register their transactions at a national IP office. This can have significant consequences for interested parties and complicate future dealings in those rights. Full text

22 Nov 2017
New referral regarding SPC availability for certain medical devices

A new question has been referred to the European Court of Justice by the German Federal Patent Court on the availability of supplementary protection certificates for medical devices – in this case, a combined medical device and medicinal product that has been authorised under the Medical Devices Directive. Full text

02 Aug 2017
Supreme Court decision alters UK approach to infringement by equivalents

The recent Supreme Court decision on Eli Lilly’s Alimta patent reverses lower courts’ rulings and finds claims limited to disodium to be directly infringed by other salts and free acid. The new approach to infringement brings UK courts more closely in line with those of other European countries, particularly Germany, Italy and the Netherlands. Full text

Baker Donelson

USA More reports

17 Jan 2018
Federal Circuit allows appeal of PTAB time-bar decisions

A recent Federal Circuit ruling has overturned earlier decisions which denied patents owners the right to appeal Patent Trial and Appeal Board time-bar decisions relating to inter partes review petitions. Full text

10 Jan 2018
#Newyear #hashtag #valuableasset

Once-descriptive social media hashtags and Twitter handles are now valuable assets associated with specific parties. Businesses in particular should have social media account user names and hashtags cleared before using them to market and advertise their goods or services. Full text

20 Dec 2017
Federal Circuit hinders ability of pharmaceutical companies to claim broad antibody classes

A recent Federal Circuit decision provides an important update for life sciences intellectual property and could significantly impact pharmaceutical compound patenting. Existing claims to a large genus of antibodies are now far more likely to be invalidated for lack of written description if challenged. Full text

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Issue 87