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

25 Apr 2018
IEEE’s empirical record of success and innovation following patent policy updates

Despite claims that the Institute of Electrical and Electronics Engineers' standardisation work had been adversely affected by its 2015 patent licensing policy update, analysis suggests that the institute's standardisation work is thriving. Full text

21 Mar 2018
FRAND royalty and mobile telecoms SEPs – an analysis of recent court cases

Numerous court cases worldwide suggest wide-ranging royalty rates for implementing 2G, 3G and 4G standard-essential patents (SEPs) in handsets. This outcome is further confirmed by one of the active patent pools that offers 3G and 4G SEP licences. Full text

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

Global Prior Art Inc

IP management

14 Mar 2018
Best practice in IP management: transformations

Best practice in IP management reflects a transformation in perceptions about intellectual property, including how IP management is framed and suitable IP performance metrics, organisational structure and implementation. Full text

07 Mar 2018
Best practice in IP management: leaner and smarter

Emerging best practices in IP management reflect an awareness that the traditional management approach is extremely wasteful and significant improvements could be made through eliminating or reducing sources of waste. Full text

Sagacious Research

IP technology More reports

06 Jun 2018
Resistant starch: the patent landscape

IP filings in the resistant starch field have increased rapidly since 2000. With new innovative technologies, such as the CRISPR-Cas9 system, it will be interesting to see how companies strengthen their portfolios going forward. Full text

02 May 2018
Smart coatings: next-generation supersonic aircraft, high-performance engine parts and gas turbines

Since 2000, smart coating technology has been rapidly evolving in various industries such as aerospace. Though costly, market pull and patenting activity in the aerospace sector indicate a bright future for this technology. Full text

18 Apr 2018
Fat replacers: fighting obesity, cardiovascular disease and cancer

Considering the urgent need for further R&D in fat replacement technologies and the ongoing search for ideal fat replacers in a host of everyday products, the number of patent filings in this technology domain is relatively low. 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

24 Jan 2018
Four Brazilian patent prosecution particularities you should know about

Despite the similarities between patentability requirements worldwide, Brazil has its own regulations which could be confusing to practitioners and applicants that are more used to working with the US patent system. Full text

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

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

Vivien Chan & Co

China More reports

13 Jun 2018
Original equipment manufacturers: implications of latest Supreme People’s Court decision

The Supreme People's Court has reaffirmed that the use of trademarks on original equipment manufacturer (OEM) products exclusively for export does not constitute trademark infringement. However, it is still unclear whether OEM use is sufficient evidence against non-use cancellations. Full text

16 May 2018
How the revised Trademark Law has been implemented: examination timeline and a new online database

In the second of two instalments regarding the implementation of the 2014 Trademark Law, this update looks at the new examination timelines and how the Trademark Review and Adjudication Board has launched a new online database for decisions. Full text

09 May 2018
How the revised Trademark Law has been implemented: bad faith and the latest case trends

Since the revision of the Trademark Law in 2014, detailed regulations, judicial interpretations and examination standards have been implemented. This update focuses on how the revised law has been used to tackle bad-faith filings and looks at the latest trends in such cases. Full text

AWA A/S

Denmark

30 May 2018
Amendment passed providing legal privilege to patent attorneys before Danish courts

The proposition to amend the Administration of Justice Act was recently passed in Parliament. The amendment was passed unanimously and provides European patent attorneys with a legal privilege similar to that of lawyers. Full text

07 Mar 2018
Legal privilege for patent attorneys before Danish courts

After more than 10 years of effort from Danish IP and industry associations, patent attorneys may finally be given legal privilege before the Danish courts. Full text

Weickmann & Weickmann PartmbB

Germany

28 Mar 2018
Federal Supreme Court clarifies appeal fees

A recent Federal Supreme Court decision clarified the question of how many appeal fees must be paid by appellants (applicants or counterparties) where a decision of the German Patent and Trademark Office is challenged by a Federal Patent Court appeal. Full text

14 Feb 2018
Constitutional complaint against UPC Agreement

While the Administrative Council of the European Patent Office has attempted to strengthen the independence of the Boards of Appeal by amending the Implementing Regulations of the European Patent Convention, dissenting voices from the Federal Constitutional Court are challenging this endeavour. Full text

31 Jan 2018
EPO revises examination guidelines: key aspects for applicants

The European Patent Office recently amended and clarified all eight parts of its examination guidelines in order to harmonise them with legal and procedural developments, as well as with standing practice. The major change was the expansion of Part A, which now includes a comprehensive chapter on fees. 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 Jun 2018
What’s mine is yours: employees’ economic rights under the Copyright Act

A recent case addressed an employee’s economic rights associated with software and databases created within the scope of his employment. The board held that the rights belong to the employer in the absence of an agreement to the contrary, pursuant to the Copyright Act. Full text

30 May 2018
General Court increases burden of proof for genuine use

The General Court has held that genuine use of a trademark can be proven only for sufficiently precise and narrowly claimed terms, rejecting a case citing ‘apparatus for the reproduction of sound and images’. In doing so, the court has placed a higher burden of proof on trademark owners. Full text

11 Apr 2018
Evidence of clear conflict required for declaratory judgment action

The Court of Milan recently decided that a non-specific reply by a patent owner to a request by a third party to provide written acknowledgement of non-infringement is an insufficient basis for instituting a court action for declaration of non-infringement. Full text

Shobayashi International Patent & Trademark Office

Japan More reports Archive

11 Apr 2018
Local government strongly supports patent licensing between large companies and SMEs

The so-called 'Kawasaki model' has inspired projects to revitalise local industries by successfully involving large companies in licensing unused patents to small and medium-sized enterprises. Such projects have attracted many major industry players and local government support. Full text

21 Feb 2018
Patent licensing business model attracts attention

A business model for large companies to license unused patents to small and medium-sized enterprises, which then develop new products and generate new business, is attracting considerable attention in Japan. Full text

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

NLO

Netherlands More reports Archive

18 Apr 2018
EPO opposition: corporate in-house IP departments' engagement

European Patent Office opposition data reveals that companies are more likely to outsource opposition work to private firms than to represent themselves. Companies' in-house patent attorneys tend to act as patentees more often than as opponents. Full text

11 Apr 2018
EPO opposition: private practice patent firm’s core technologies

In 2016 UK firms tended to represent patentees and German firms tended to represent opponents in European Patent Office (EPO) oppositions. While most patents subject to EPO oppositions belonged to International Patent Classification (IPC) Class A, most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany. Full text

04 Apr 2018
EPO opposition: private practice patent firm's engagement

As defending and opposing patents before the European Patent Office require different skills, a firm's experience in these two roles may be a factor when choosing a representative. Recent data suggests that private firms in Germany and the United Kingdom continue to dominate the oppositions arena. 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

09 May 2018
Russian regulators provide clarity on cryptocurrency and crowdfunding

The Russian market is investing rapidly in blockchain technology and fintech, with regulators largely having been forced to catch up. Accordingly, two draft bills regulating digital financial assets and alternative means of investment generation (crowdfunding) have been developed. Full text

07 Mar 2018
Parallel importation: Constitutional Court narrows scope of protection

The Constitutional Court has clarified Russia’s stance on national and regional exhaustion of rights. While it seems that infringement by reason of parallel importation is a constitutionally sound cause of action, it can now be asserted only in limited cases with remedies that are inconsequential. Full text

28 Feb 2018
Russia’s enduring love for fake luxury

Over $43 billion-worth of counterfeit goods are sold in Russia each year – and this figure is escalating. The Internet and social media have transformed this sector by offering greater anonymity and less risk of prosecution for buyers and sellers alike. Full text

Mikijelj Jankovic and Bogdanovic

Serbia

30 May 2018
GDPR challenges for Serbian businesses and IP registries

The General Data Protection Regulation will affect the disclosure of a company’s IP rights, as well as the availability of personal data contained in official IP registers. Registers must adapt to both allow access to the registries and protect personal data contained therein. Full text

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

AWA AB

Sweden

23 May 2018
Sweden and Japan celebrate 150-year anniversary as JPO relaxes patent approach

Japan is regarded by Swedish companies as a highly innovative country and an important market. In a seemingly deliberate strategy to attract more companies to do business in Japan, statistics show that the number of patents granted at the Japan Patent Office has increased rapidly since 2010. Full text

07 Feb 2018
Re-examining SPC terms: end of discussion?

Recent decisions by the Patent and Market Appeal Court and the European Court of Justice demonstrate that the re-examination of supplementary protection certificate (SPC) terms is a complex but achievable venture for SPC holders. Full text

Hepp Wenger Ryffel AG

Switzerland

20 Jun 2018
Non-enabling disclosure as prior art?

In the latest case relating to AstraZeneca’s anti-cancer drug Faslodex, a registration was revoked by the Patent Court for lack of inventive step due to pre-published scientific articles; the Supreme Court recently remitted the case back to the Patent Court. Full text

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

20 Jun 2018
Timeframe for revocation of a generic mark

The Supreme Administrative Court has ruled that the decision of whether a mark is generic should take into account evidence only up until the revocation application was filed, in order to avoid any unfair advantage gained by either side while the litigation is pending. Full text

23 May 2018
Patent Attorney Act to include disability rights

The Executive Yuan has passed a draft amendment to Articles 4, 37 and 40 of the Patent Attorney Act. The amendment removes a provision which prevents those with disabilities from being patent attorneys or agents. Full text

18 Apr 2018
TIPO introduces new hearing system for invalidation proceedings

The Taiwan Intellectual Property Office recently implemented the Guidelines on Hearing Procedures for Patent Invalidation Cases, which is based on the Administrative Procedure Act and aims to save time and money by allowing adversarial hearings without amending the Patent Act. Full text

Gün + Partners

Turkey More reports

30 May 2018
Declaration of use under new IP Law: consequences and timelines

The new IP Law has abolished the Patent Decree-Law provisions regarding the use requirement of patents and evidence of use. The new law states that non-use of a patent could result in a third party being granted a compulsory licence over that patent. Full text

23 May 2018
District court confirms regulatory data protection is an IP right

The IP Court recently rejected jurisdiction in a case regarding regulatory data protection. However, on appeal the district court found that the case concerned data exclusivity rights and the protection of unrevealed data, which is within the scope of IP courts. Full text

16 May 2018
First damages claim decision in pharma sector for unjust preliminary injunction

The Istanbul IP Court has recently decided on a generic company’s damages claim based on an unjust preliminary injunction, in what appears to be the first decision of its kind by Turkish IP courts within the pharmaceutical sector. Full text

Carpmaels & Ransford LLP

UK More reports

25 Apr 2018
Claiming costs and expenses in High Court litigation as licensee

While there are many good reasons for recording a patent licence and keeping an up-to-date register, a recent High Court ruling illustrates the tangible effect of failing to record a licence: the threat of missing out on recovering legal costs.  Full text

18 Apr 2018
IP rights – what does the future hold after Brexit?

The European Commission recently published its draft withdrawal agreement setting out its proposals for the arrangements surrounding the United Kingdom’s departure from the European Union, including in relation to IP rights.  Full text

21 Mar 2018
Clarification of disclaimer practice at the EPO

Despite recent clarification of disclaimer practice from the European Patent Office Enlarged Board of Appeal, disclaimers still present significant risks in Europe and should be used cautiously. Full text

Baker Donelson

USA More reports

20 Jun 2018
Balance between brand protection and artistic expression: strengthening the First Amendment

Two recent decisions reflect the increasing strength of free speech rights for authors of expressive works and the elevation of those rights over rights of trademark owners, so long as there is no express statement that could mislead consumers as to the source or content of the work. Full text

13 Jun 2018
Multi-district states and burden of persuasion: Federal Circuit resolves issues of venue

The Federal Circuit has resolved two issues regarding venue, ruling that a domestic corporation resides only in the single judicial district within its state of incorporation where it maintains a principal place of business and that the plaintiff bears the burden of establishing proper venue. Full text

23 May 2018
Trademark and branding pitfalls in a hashtag culture

With viral marketing using social media hashtags on the rise, some practitioners predict an increase in the use of the merely informational refusal for trademark applications. Brand owners should be aware of what this involves and how to avoid it. Full text

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Issue 90