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

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

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

14 Dec 2016
New regulation encourages life sciences innovation

The Biodiversity Law provides for access to genetic heritage, protection and access to associated traditional knowledge and the sharing of benefits for the conservation and sustainable use of biodiversity. Access to genetic heritage is strategic for R&D, providing opportunities for competitive advantage in domestic and international markets. Full text

05 Oct 2016
Patents in Brazil: Part 5 – current developments

The National Sanitary Surveillance Agency (ANVISA) has introduced a new workflow for pharmaceutical patent applications. Under the new process, pharmaceutical cases are sent directly to ANVISA for examination in order to deal with public health issues. ANVISA examiners determine whether an application poses risks to public health. Full text

Gowling WLG Canada

Canada More reports Archive

25 Jan 2017
Monetary consequences for falsely alleging patent infringement

The Federal Court recently ruled on two patent actions between Advantage Products Inc (API) and others, and Excalibre Oil Tools Ltd and others, finding that Excalibre did not infringe API’s patents. In addition, and significantly, the court directed that a reference be held to determine the quantum of Excalibre’s damages that arose from false allegations of patent infringement that were made in writing by API’s counsel to Excalibre’s customers. Full text

18 Jan 2017
Trademarks Office issues new practice notice for place of origin objections

The Canadian Intellectual Property Office has issued a new practice notice to clarify Trademarks Office practice as it pertains to objections in examination raised under Paragraph 12(1)(b) of the Trademarks Act to geographical names. Full text

11 Jan 2017
Challenge to patentee’s right to elect between damages and accounting of profits rejected

In Canada, it has long been the case that a successful patentee may elect between the statutory remedy of damages and, subject to the court’s discretion, the equitable remedy of an accounting of profits. Apotex recently challenged this status quo in Bayer v Cobalt by asking that damages be denied. Full text

Liu, Shen & Associates

China

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 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

Wilkinson & Grist

Hong Kong More reports

05 Oct 2016
SHARPVIEW refused registration under law of passing off

Sharp Corporation of Japan recently successfully opposed the SHARPVIEW (figurative) trademark applied by an individual to, among other things, computer monitors, CCTV surveillance systems and colour surveillance cameras in Class 9. Full text

04 May 2016
Opposition to registration of SWISSBERNARD mark

The Federation of the Swiss Watch Industry FH recently failed in its opposition to the registration of the SWISSBERNARD mark by Ayoub in Class 14 for “horological and chronometric instruments”. Full text

16 Dec 2015
Patents bill making its way through the legislature

The Hong Kong government recently introduced the Patents (Amendment) Bill 2015 into the Legislative Council for first and second readings. The bill is intended to meet present-day standards for patent systems and to promote Hong Kong as a regional hub for innovation and technology. Full text

LexOrbis

India More reports Archive

08 Feb 2017
Expedited examination of patent applications

Due to its huge backlog, the Indian Patent Office is now examining patent applications filed at least four years ago. Until 2016 there was no straightforward way of expediting the examination of patent applications in India, but the patent rules have now been amended to allow this. Full text

01 Feb 2017
Software patent application drafting practices post-CRI examination guidelines

Drafting a patent application, including the claims and specification, is generally considered to be an art rather than a skill because no set guidelines govern the process. This report outlines preferred practices for drafting software patent applications in view of a guideline for examining patent applications related to computer-related inventions published by the Indian Patent Office. Full text

18 Jan 2017
Patenting an idea: importance of a prior art search

It is generally advisable to carry out a prior art search before beginning the patenting process. Based on the findings of the prior art search, the novel and inventive features of the invention can be identified clearly, and a decision can be made regarding the jurisdictions in which to file. Full text

Jacobacci & Partners spa

Italy More reports

11 Jan 2017
Patronymic trademarks in the fashion industry: what’s in a name?

In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company's IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks? Full text

07 Dec 2016
When employment contracts are silent: remuneration for employees' inventive activities

The Court of Cassation (Italy's highest court) recently issued a decision concerning whether a scientific director who contributed to an invention but whose employment contract did not specifically address remuneration for such activities was entitled to the payment of a fair premium. Full text

09 Nov 2016
The double identity of OSCAR: a trademark and a common term

The Supreme Court recently held that the trademark OSCAR was valid with respect to the film industry and thus gave its owner, the Academy of Motion Picture Arts and Sciences, exclusive rights in its use. However, the court also held that the trademark had become a common name in relation to other services – namely, teaching and performances in Class 41 of the Nice Classification. 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

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

07 Dec 2016
Iceland versus ICELAND: why a country’s name can also be a trademark

British supermarket Iceland Foods is at loggerheads with Iceland the country over the European trademark registration for ICELAND. The question to be decided is whether a company can claim the name of a country. Full text

23 Nov 2016
European Commission notice against patentability of plants does not affect European plant patents

The European Commission recently issued a notice regarding the patentability of plants and animals obtained by means of essentially biological processes. However, the commission’s notice is not legally binding; it is up to the courts and boards – not the commission – to interpret the law. 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

08 Feb 2017
Parallel imports sneak into Russia through procedural loophole

Until recently, while customs officials did not seize parallel imports, they did detain them for at least 10 days – which was enough time for the brand owner to file an infringement action and request a preliminary injunction in the Commercial Court. However, the new 30-day pre-litigation rule means it is no longer possible to freeze parallel imports at the border. Full text

07 Dec 2016
LinkedIn unlinked in Russia

At present, LinkedIn is blocked in Russia. The case is one of the first to drive home the extent to which Russian authorities are ready to enforce the new data localisation provisions against brand owners, particularly against those which operate websites that are accessible in Russia without having a physical presence there. 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

Keller & Partner

Switzerland

17 Aug 2016
Parallel imports of patented goods – applicable exhaustion regime

A recent Federal Patent Court decision considered the applicability of international patent exhaustion due to the subordinate significance of the patented features. It confirms that the requirements to avoid international patent exhaustion appear to be rather high, in particular with respect to complex products where most of the patent rights concern not the whole product, but rather only some component thereof. Full text

16 Mar 2016
GOLDBÄREN: protectability of non-distinctive trademarks based on existing registrations

According to a fundamental legal principle codified in the Constitution, every person is equal before the law. Similarly, comparable cases should be dealt with comparably. In a recent case the Federal Administrative Court allowed the registration of a trademark that it considered to be non-distinctive based purely on the existing registration of several other similarly non-distinctive trademarks. Full text

Formosa Transnational

Taiwan More reports

01 Feb 2017
Supreme Administrative Court broadens ex officio powers for prior art investigations

The Supreme Administrative Court recently held in a patent invalidation case that the court should consider only the invalidation reasons and evidence submitted by the party petitioning for the invalidation action. The court further held that if the original evidence is insufficient, the court may ex officio investigate auxiliary or supporting evidence related to the original evidence based on the public interest.  Full text

14 Dec 2016
Protection of trade secrets and guidelines for post-employment non-compete clauses

In practice, the protection of trade secrets often relies on confidentiality agreements and post-employment non-compete clauses. However, the latter often trigger labour rights issues. The key is phrasing a valid and enforceable post-employment non-compete clause. Full text

05 Oct 2016
Pokémon GO fever faces potential indirect patent infringement challenge

Before Pokémon GO fever hit Taiwan in August 2016, a small episode drew the attention of the IP industry and those who were eagerly awaiting the launch of Pokémon GO in Taiwan: a patent infringement claim filed against Niantic, Inc's other reality mobile game, Ingress. Full text

Gün + Partners

Turkey More reports

01 Feb 2017
Compulsory licensing provisions of new industrial property law

Article 129 of the new Law on Industrial Property Rights lists six circumstances where a compulsory licence may be granted. Although the new law is to be welcomed, it appears that for patent holders, Article 129 on compulsory licensing may be particularly problematic and, to some extent, unfair. Full text

18 Jan 2017
Industrial Property Law comes into force

The long-awaited Industrial Property Law has finally come into force. The new law regulates all IP rights in a single code, and also changes the name of the Turkish Patent Institute to the Turkish Patent and Trademark Office. Full text

09 Nov 2016
Is 4X4 equal to 8X4 under trademark law?

The Ankara Third Civil Court of Intellectual and Industrial Property Rights recently ruled on the confusing similarity between the well-known trademark 8X4 and the trademark FASHION 4X4. The court cancelled the Turkish Patent Institute's decision that the trademarks 8X4 and FASHION 4X4 were not confusingly similar under Article 8/1(b) of Decree-Law 556 on the Protection of Trademarks. Full text

Carpmaels & Ransford LLP

UK More reports

07 Dec 2016
UK participation in UPC confirmed

The United Kingdom has announced that it intends to participate in the unitary patent and the Unified Patent Court (UPC) despite the recent vote to leave the European Union. The United Kingdom plans to ratify the UPC Agreement so that both the unitary patent and the UPC become a reality in the near future, perhaps during 2017. Full text

17 Aug 2016
Accelerating patent prosecution via the Green Channel

Early grant of a patent can be desirable not only for enforcement purposes, but also for businesses for which it is crucial to attract investors and secure funding. The UK Intellectual Property Office’s Green Channel provides an attractive route to early grant for patent applicants with inventions with environmental benefits. Full text

10 Aug 2016
De minimis – how low do you need to go?

What proportion of products must fall within the scope of the claims for there to be an infringement? Even if the number of infringements is not discounted as de minimis but is still small, what remedies may the court grant? Some answers were provided by a recent judgment giving the most detailed discussion of the de minimis principle by the English patents court to date.  Full text

Baker Donelson

USA More reports

08 Feb 2017
Drug manufacturers cannot avoid infringement by dividing method between physicians and patients

The Federal Circuit recently stated that a physician may directly infringe a patented method for drug administration, even when the infringing steps are divided between the physician and patient. Specifically, the court held that infringement cannot be avoided when the physician "directs or controls" the patient to perform at least one step of the patented method. Full text

01 Feb 2017
Preliminary injunction affirmed despite initiation of PTAB post-grant review proceeding

The Federal Circuit recently affirmed a district court's granting of a preliminary injunction barring the alleged infringer from selling its Balloon Bonanza product. The Federal Circuit affirmed the preliminary injunction despite the Patent Trial and Appeal Board granting a petition seeking post-grant review on the grounds of indefiniteness and obviousness. Full text

25 Jan 2017
'Injury-in-fact' standing required to appeal PTAB decision

The Federal Circuit recently held that a petitioner challenging the validity of a patent in a Patent and Trademark Appeal Board (PTAB) inter partes review proceeding must have legal standing under Article III of the US Constitution to appeal an adverse PTAB decision upholding the challenged claims. Thus, only an individual suffering an injury in fact can appeal a PTAB decision to the Federal Circuit Court of Appeals. Full text

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Issue 82