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

07 Feb 2018
Next generation inventions: a computer-human perspective

A new generation of technologies which incorporate automation and autonomous artificial intelligence can perform tasks with human-like ability and appear to be transforming inventorship as we know it. Full text

24 Jan 2018
Patent search: the evolution from manual to artificial intelligence

The evolution of patent searching from manual to AI-based methods is unique. Millions of data sets can now be searched using simpler, faster and more dependable tools. Full text

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

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

14 Feb 2018
Revised Anti-unfair Competition Law enters into force

While the Anti-unfair Competition Law has been revised to address new business activities and unfair competition behaviour, how the courts will apply its provisions to protect the rights of business operators and encourage fair competition remain to be seen. Full text

07 Feb 2018
China’s continued trademark reforms

Besides a notable acceleration in trademark registration processing, two recent developments relating to trademark squatting and the guiding cases system are particularly relevant for trademark owners in China. Full text

Weickmann & Weickmann PartmbB

Germany

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 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

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

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

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

31 Jan 2018
Faking it: can QR codes combat counterfeit medicines?

A new federal law aims to eliminate the illegal trafficking of medicines in Russia – including counterfeit, falsified and inferior medicines – by introducing mandatory identification marks on medicine packaging and a track and trace system for all medicines in circulation. Full text

24 Jan 2018
Russian court declares parallel imports legal

The Moscow Commercial Court recently declared that a warning notice issued by the Federal Anti-monopoly Service against KYB Corporation was justifiable and would not be struck down. If the KYB decision is upheld and the Constitutional Court decision supports it, parallel imports may become entirely legal in Russia. Full text

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

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

Awapatent AB

Sweden

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

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

14 Feb 2018
Fintech, intellectual property and regulatory sandbox

The regulatory sandbox aims to provide a ‘safe place’ for authorised individuals, legal entities, sole proprietorships or partnerships to test innovative financial products, services, business models and mechanisms, while ensuring adequate consumer and market protection. Full text

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

Gün + Partners

Turkey More reports

24 Jan 2018
European patent validation and avoiding double patenting

The Patent and Trademark Office has offered a practical solution to seemingly conflicting provisions relating to double patenting in the Implementing Regulations to the European Patents Convention. Full text

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

Carpmaels & Ransford LLP

UK More reports

21 Feb 2018
Are UK companies making best use of the patent system?

UK companies are lagging behind their counterparts in Europe, the United States, Japan and South Korea when it comes to filing domestic and foreign patent applications, according to recent research published by the UK Intellectual Property Office. Full text

14 Feb 2018
Restorations – the UK landscape

Restoration mechanisms are available for IP rights that may have been unintentionally lost through non-payment of an annuity (renewal fee) and inadvertently missing the filing date of a Patent Cooperation Treaty application or the deadline for national or regional phase entry. Full text

07 Feb 2018
Restoring lost IP rights: prevention is better than cure

The unintentional loss of valuable registered IP rights can be extremely distressing and the financial and time-related costs of trying to restore lost rights can be significant. However, even when rights have been lost, they can sometimes be rescued. Full text

Baker Donelson

USA More reports

14 Feb 2018
It's alive! The public domain starts breathing again

In 1998 the flow of works entering the public domain was halted by the Sonny Bono Copyright Term Extension Act, which extended the duration of US copyrights by 20 years. That moratorium will end at midnight on December 31 2018. Full text

07 Feb 2018
A rose by any other name?

The scent of certain 'roses' that are gifted to trademark owners is far from sweet – safeguard your intellectual property this Valentine's Day by avoid scammers' rosy offers and notices. Full text

31 Jan 2018
Will Spotify's expensive US copyright shortcut be its coda?

For several years, songwriters and music publishers have sued Spotify for streaming musical compositions without certain required copyright licences, resulting in several class action suits. A pending damages claim against the company is close to 10% of its valuation. Full text

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Issue 88