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

Sagacious Research

IP technology More reports

06 Sep 2017
IT in intellectual property: boon or bane?

With increasing IP filing rates, the process of managing, searching and optimally using intellectual property has become a major problem area for IP offices and applicants. While automation is greatly improving existing IP industry processes, it also has its limitations. Full text

30 Aug 2017
Evolution of IT in intellectual property: management activities

While searching for and maintaining IP documentation can be tedious, new strategies for developing IP services using end-to-end automation and outsourcing aim to provide legal and corporate IP departments with more effective ways of managing their intellectual property. Full text

16 Aug 2017
Evolution of IT in intellectual property: an overview

The resources required to manage patents and IP assets are becoming more crucial over time. However, the rapid growth in data digitisation and the infrastructure which supports it pose substantial challenges. Full text

Navigant Consulting Inc

IP transactions

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

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

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

Bereskin & Parr LLP

Canada More reports Archive

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

11 Oct 2017
CBSA accepting tips on imports of dangerous counterfeit and pirated goods

The Canada Border Services Agency's confirmation that its Border Watch Line accepts information on shipments of dangerous counterfeit or pirated goods destined for Canada is welcome news for rights holders that deal in goods which could, in the wrong hands, pose health, safety or security concerns to Canadians. Full text

04 Oct 2017
Use in Canada, get it before it’s gone: Federal Court provides clarity on claiming use

The Federal Court of Canada has provided some clarity on claiming use in Canada as a trademark filing basis, although some ambiguity remains. Ironically, this comes just as Canadian trademark law is on the cusp of a fundamental change to do away with use as a requirement for trademark registration.   Full text

Liu, Shen & Associates

China

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

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 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

04 Oct 2017
Patent of addition: to apply or not to apply?

Often, after filing a patent application improvements, additional uses and refinements surface. To ensure patent protection the applicant can file for either a new application or a patent of addition. Full text

13 Sep 2017
Employing border security measures to protect intellectual property in India

The main motive behind registering IP rights with the customs authorities is not only to ensure that rights holders incur no losses from the import of infringing goods, but also to guarantee that India as a country does not strengthen the counterfeiting industry. Full text

06 Sep 2017
Directions on systematic issuance of certified copy of trademark records

Under trademark law, certified copies are particularly significant, as such documents are admissible as evidence in court. However, the proper use of this machinery cannot be performed by either party unless a robust system of proper record maintenance is in place. Full text

Jacobacci & Partners

Italy More reports

11 Oct 2017
Supplementing your understanding of supplementary protection certificates

A recent finding of invalidity has raised the question of whether a supplementary protection certificate (SPC) application can refer to a third party’s first market authorisation in the absence of a specific contractual relationship between the SPC applicant and the first market authorisation owner. Full text

02 Aug 2017
Supreme Court recognises punitive damages

The Supreme Court of Cassation recently recognised for the first time that punitive damages may be applied in connection with civil liability under Italian law. The decision may allow Italian judges more leeway to grant increased damages in actions brought before Italian courts. Full text

12 Jul 2017
When reverse engineering is difficult, infringement of software trade secrets is confirmed

Confirming a judgment by the Court of Turin, a recent Court of Appeal decision provides useful guidance for the application of Articles 98 and 99 of the Industrial Property Code, which governs trade secret misappropriation. Full text

Shobayashi International Patent & Trademark Office

Japan More reports Archive

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

27 Sep 2017
Border enforcement: China stays top in originating country of infringing imported goods into Japan

The Japanese government recently published statistics on the import suspension of IP-infringing goods into Japan during the first half of 2017. The statistics highlight an increase in design rights cases; regarding types of intellectual property, most cases are for import suspension due to trademark infringement. Full text

NLO

Netherlands More reports Archive

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

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

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

16 Aug 2017
New restrictions for VPNs and anonymisers in Russia

A new federal law provides for the regulation of virtual private networks and other technologies that allow users to surf the Internet anonymously. However, it is unlikely that blocking anonymisers will successfully remove all illegal online content. Full text

02 Aug 2017
Has Russia finally stopped online piracy?

The new Law on Mirror Websites was recently adopted by the State Duma. The law obliges search engines such as Google or Yandex, on receiving a request from Roskomnadzor, to withhold information about the domain name of an infringing website and any references to mirror websites of  permanently blocked websites. Full text

19 Jul 2017
Demand letters in IP litigation: when are they mandatory?

A year after the pre-trial serving of a would-be defendant with a demand letter became mandatory in Russia, the procedure is facing further changes in relation to IP disputes. A new federal law clarified the range of IP disputes where sending a demand letter to the potential defendant is a mandatory pre-trial procedure. 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

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

18 Oct 2017
TIPO fuels debate between brand-name drug companies and generics

In recent years, brand-name drug companies and generic drug companies have seriously debated whether the patent linkage system should be implemented in Taiwan. The fiery debate between the two sides was reignited over the summer, with the Taiwan Intellectual Property Office supplying the fuel. Full text

20 Sep 2017
Amended examination guidelines and invitation for amicus curiae briefs

A recent amendment to the Guidelines for Patent Examination ensures that examiners are mandated to provide comprehensive reasoning in office actions in order to improve the examination quality of inventive step. An invitation for amicus curiae briefs by the Taiwan Intellectual Property Court echoes the amendment. Full text

12 Jul 2017
Supreme Administrative Court adopts strict standard in defining use of trademark

Although Article 5 of the Trademark Law is intended to define use of a trademark, it fails to distinguish between the difference in use in the course of trade by the trademark owner and use as infringement by a third party. Full text

Gün + Partners

Turkey More reports

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

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

Carpmaels & Ransford LLP

UK More reports

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

28 Jun 2017
Implications of FRAND royalty rate on standard-essential patent litigation

The High Court recently gave long-awaited guidance on the determination of fair, reasonable and non-discriminatory royalty rates for standard-essential patents on a worldwide basis. The detailed judgment has many implications for UK standard-essential patent litigation. Full text

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

Baker Donelson

USA More reports

18 Oct 2017
Commercial arbitration awards possibly subject to increased judicial scrutiny

Arbitration awards are reviewed by US courts on only limited grounds. In a writ of certiorari involving a patent licensing dispute, Dow AgroSciences, LLC is now asking the Supreme Court to reduce the deference that US courts give to arbitration tribunals. Full text

04 Oct 2017
US trade associations unite to protect intellectual property globally

The worlds of entertainment, art, medicine and technology have joined together to address the significant international challenges to their intellectual property, and thereby enhance innovation and creativity in their fields. The new American Creative, Technology and Innovative Organisations Network will develop an international market that "rewards innovation and protects creative assets". Full text

27 Sep 2017
Private entities use sovereign immunity to protect patents from PTAB review

While many commentators have noted that Allergan appears to be taking advantage of a legal loophole to stymie competition, others have noted that inter partes review proceedings are inherently unfair to patent owners due to their unfavourable standards and presumptions. Full text

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Issue 86