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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

EverEdgeIP

IP finance More reports

11 May 2016
IP management and market value: Steve Jobs was right

For senior management teams, the single most relevant and important piece of IP management is to build the right sort of organisation. It is your corporate DNA that will generate outperformance and allow you to manage your intellectual property for maximum effect. Full text

09 Mar 2016
Gene sequencing: the new battleground

Given the exponential growth in the genomics industry that is driving the global health system towards personalised medicine, the ongoing patent battle between the United Kingdom's great unicorn hope Oxford Nanopore Technologies and US rival Illumina is one that is worth winning. It is as much about who owns the future of gene sequencing as it is about a patent for an obscure bacterial protein. Full text

02 Mar 2016
Asset-based venture capital: a new paradigm in IP investing

A great technology may be more valuable to shareholders, inventors and society if it is widely available and the operators are diversified. This essentially turns the classical venture capital model on its head. I am not investing in people; I am investing in technology and diversifying my execution risk by allowing multiple management teams to adopt my intellectual assets. Full text

Griffith Hack

IP valuations More reports

25 Nov 2015
IP value and the venn of effective patent claims

Like miners in the Wild West, patent attorneys today generally attempt to peg out the largest area around an invention. The invention is defined by patent claims. As with land claims, not all patent claims are created equal. Patent claims can be viewed through three distinct lenses and high-quality claims are constructed with all three lenses in mind. Full text

11 Nov 2015
IP valuation and capital raising

Raising funds is a common issue for early-stage and high-growth companies with few tangible assets. A recent transaction illustrates how a robust valuation, supported by patent attorney input and patent analytics, can help get equity funding over the line. Full text

04 Nov 2015
Volkswagen: quantifying the reputational damage

Since the emissions scandal reached the mainstream media, Volkswagen’s reputation and brand value have unquestionably suffered a big hit. Can the economic impact of reputational damage be quantified? And could a robust reputational risk framework have helped Volkswagen to avoid or mitigate the damage? Full text

Watermark

Australia More reports

14 Oct 2015
High Court: Myriad's BRCA genes not patentable subject matter

Just over one year after the Full Federal Court of Australia unanimously upheld an earlier Federal Court decision that naturally occurring nucleic acid molecules are patentable in Australia, the High Court has handed down a unanimous judgment overturning that decision. This highly anticipated decision sets Australian law at odds with that of many other jurisdictions where isolated nucleic acid molecules remain patentable. Full text

02 Sep 2015
'Je suis Cecil': trademark law and distasteful capitalism

It is a sad but undeniable truth that people seek to capitalise on tragic events, including by attempting to register related trademarks. A number of countries have trademark laws which prohibit the registration of marks considered to be scandalous or offensive. However, whether a mark is considered scandalous or merely distasteful depends on context. Full text

05 Aug 2015
Ixnay on the TAR JAY – Target defends its urban nickname

Never one to let a good parody go astray, Target Australia Pty Ltd (aka 'Targét' or 'Tarjay') has successfully prevented Catchoftheday.com.au Pty Ltd from registering trademarks including the term 'Tar Jay'. This decision was issued despite the fact that Target had not used 'Tarjay' or any phonetically similar term as a trademark. Full text

Daniel Advogados

Brazil More reports

25 May 2016
How can BRPTO users help to reduce the patent backlog?

The Brazilian Patent and Trademark Office (BRPTO) has published its 2015 patent statistics. Of nearly 16,000 decisions published in the Industrial Property Magazine during the year, around 57% of cases were shelved and only 0.6% were officially withdrawn. Much of the backlog stems from parties failing to take the correct action. Full text

18 May 2016
Pharmaceutical selection inventions: PTO and ANVISA opinions

The Brazilian Patent and Trademark Office has proposed changes to the patent application examination guidelines discussing certain conditions that should be considered when examining a selection invention, and providing guidance for the examiners in such cases. A selection invention is one in which a single element or small segment within a broad known group is selected and claimed in an independent way. Full text

11 May 2016
Major change introduced for patent-related injunctions

Historically in Brazil, it is rare to obtain a preliminary injunction in a patent case. However, the new Brazilian Civil Procedural Code, which came into force in 2015, radically changed the situation. Full text

Gowling WLG Canada

Canada More reports Archive

11 May 2016
Patent owner’s entitlement to permanent injunction confirmed

The Federal Court of Canada recently awarded a permanent injunction after a finding that the asserted patent was valid and infringed, notwithstanding that the plaintiff did not practise the claimed invention. This case confirms that a patent owner’s primary leverage in many patent cases – namely, the possibility of a permanent injunction – remains available in Canada, even where the patentee may not practise the patented invention. Full text

20 Apr 2016
Copyright law: 2015 year in review

This article summarises noteworthy Canadian copyright law decisions and developments from 2015. Among other issues, the courts considered metatags and reproduction rights, while changes to the Copyright Act altered and extended the term of protection for certain sound recordings. Full text

13 Apr 2016
Trademark law: 2015 year in review

This article summarises some of the more noteworthy Canadian trademark law decisions and developments from 2015. Among other issues, the courts considered interlocutory injunctions, metatags and the Quebec language law. Full text

Wilkinson & Grist

China More reports

13 Apr 2016
Beijing High People’s Court approves pre-emptive application

The Beijing High People’s Court recently overruled earlier decisions of the Trademark Review and Adjudication Board and the Beijing IP Court to approve the registration of a trademark filed in an unfair manner by an applicant which sought to pre-emptively register an unregistered trademark belonging to a competitor. Full text

06 Apr 2016
Legality of notice issued by Trademark Office challenged

The Beijing Intellectual Property Court recently held that a transitional provision issued by the Trademark Office was ultra vires the office's power. The provision related to trademark applications for seven specific types of retail and wholesale service for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35 under new Subclass 3509. Full text

03 Feb 2016
Rise in copyright infringement actions brought by traditional media against online media

The Beijing Youth Daily recently triumphed in an action before the Beijing Haidian District People’s Court against Beijing Sina Internet Information Service Co Ltd. The court found that Sina had changed the title of a Beijing Youth Daily article and republished the article on its website without the newspaper's permission and without paying remuneration. Full text

Chas Hude A/S

Denmark

09 Sep 2015
Generic versus branded: court rules on drug substitution legislation

A recent Maritime and Commercial High Court decision has exposed a potential incompatibility between Danish patent legislation and a medicinal substitution act which was implemented to minimise the costs of medicine for consumers and the government. Full text

01 Jul 2015
Royal decree changes rules on patenting

In the past, various special rules have applied to patenting in the Faroe Islands. However, the Danish and Faroese authorities have worked together to update the relevant legislation and, following a recent royal decree, the patent rules for Denmark, Greenland and the Faroe Islands are now uniform. Full text

25 Feb 2015
Natural resources development offers new patent opportunities

Greenland has a bright future in the mineral resources sector and undoubtedly this will require new and innovative solutions that can form the basis for patents. In order to obtain a patent in Greenland, a company must apply for a patent in Denmark at the Danish Patent and Trademark Office. Full text

Kuhnen & Wacker

Germany More reports

09 Mar 2016
End of prohibition on double patenting

At present, German law prohibits the double patenting of an invention under a German and a corresponding European (traditional) bundle patent. However, this regulation will be relaxed once the agreements for the unitary patent and the Unified Patent Court have been implemented into German law. Full text

16 Dec 2015
Supreme Court rules on illegal music downloads and website blocking

Illegal downloads of songs cause billions of dollars of loss every year, depriving the music industry of revenue that it must pay songwriters, artists and talent scouts. Through a recent decision the Supreme Court has opened the door to allowing internet service providers to block copyright-infringing sites. Full text

26 Aug 2015
Good things come to those who wait: modernising the EU trademark system

In April 2015 the European Commission, the European Parliament and the European Council finally agreed on a new package of trademark law reforms. The reforms are intended to promote innovation and economic growth and ensure coexistence and consistency between different trademark offices. Full text

Wilkinson & Grist

Hong Kong More reports

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

02 Dec 2015
Impact of Contracts (Rights of Third Parties) Ordinance on trademark licensing

The Contracts (Rights of Third Parties) Ordinance will introduce a variation of the common law doctrine of privity of contract which provides that a party cannot acquire and enforce rights under a contract to which it is not a party. When entering into a licence agreement on or after January 1 2016, rights holders should carefully consider whether and to what extent to contract out the application of the ordinance. Full text

Jacobacci & Partners spa

Italy More reports

04 May 2016
Reformulation of technical problem not permitted during litigation

A recent decision from the Court of Milan has confirmed the case law trend that the reformulation of a technical problem solved by a patented invention is inappropriate during legal proceedings. Full text

13 Apr 2016
Court rules stylised cowhide symbol can be freely used for leather goods

The Court of Milan has confirmed its partial previous decision declaring the nullity of the Italian collective mark consisting of a symbol portraying stylised animal skin. The mark was well known in Italy as 'vacchetta' ('cowhide') and was registered in Classes 16, 18, 21, 25 and 28, claiming goods made of leather in each class. Full text

09 Mar 2016
Foreign patent office decisions accepted as evidence of rights reinstatement

The Italian Board of Appeal recently held that the conclusions of foreign national patent offices are relevant evidence when evaluating whether a patent owner seeking the reinstatement of rights has demonstrated that its representative had adequate means to carry out the task entrusted to it. Full text

NLO

Netherlands More reports Archive

20 Apr 2016
Food for thought: protection and design of foodstuffs and packaging

Consumers come across food and drink products every day, and several times a day they must choose between the products of various suppliers. The distinguishing power and brand experience of these products and their packaging play a big role in these choices. Full text

06 Apr 2016
"Zo. nu eerst": Yourhosting versus Bavaria

A court in The Hague has issued its judgment in a case launched by beer brewer Bavaria against Yourhosting. The court held that Bavaria’s slogan was protected by copyright. The fact that the slogan was “catchy” with a certain comic factor showed that the brewer had made its own creative choices. Full text

10 Feb 2016
Registering an acronym as a trademark

Most trademarks consist of a word or a logo, but acronyms are also popular as trademarks. Before determining whether an acronym is suitable as a trademark, it is important to know what the acronym stands for, and particularly whether this is its usual meaning in the relevant sector. 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

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

23 Mar 2016
Favourable changes to Polish trademark law

In 2015 Parliament revised the Industrial Property Law, introducing several significant changes to the trademark registration and maintenance processes. Previously, only a patent attorney could act as a party's representative before the Polish Patent Office in trademark registration proceedings, but now an attorney at law can act as a party's representative. Full text

09 Mar 2016
Changes to phonogram costs and protection introduced

The 2015 amendment of the Act on Copyright and Neighbouring Rights has improved performers' position in relation to producers in regard to remuneration. It has also extended the protection of phonographic artistic performances from 50 to 70 years. Full text

Gorodissky & Partners

Russia More reports

25 May 2016
Pharma patent owners can breathe a sigh of relief

In 2015 the government considered a draft bill on compulsory licensing of patented medicines, which would permit pharmaceuticals to be manufactured without the patent owner's approval if the patent owner does not sell them in Russia or if their price is prohibitively high. Some months later, the government dismissed the proposal, with experts concluding that compulsory licensing would do more harm than good. Full text

20 Apr 2016
Key Russian PTO administrative cases of 2015

An analysis of Russian Patent and Trademark Office administrative cases in 2015 revealed five remarkable cases that affected Russian trademark enforcement practice. These decisions are of interest not only to IP specialists such as trademark attorneys and lawyers, but also to trademark owners. Full text

30 Mar 2016
Representing non-traditional trademarks in applications

Russian trademark legislation does not exclude the registration of non-traditional marks. The law recently underwent some changes which removed certain legislative gaps with respect to trademark filing requirements which limited applicants’ ability to secure protection for some kinds of non-traditional mark. Full text

Keller & Partner

Switzerland

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

18 May 2016
TIPO announces draft amendments to Copyright Law

The Taiwan Intellectual Property Office (TIPO) has announced draft amendments to the Copyright Law. Among other things, to promote the distribution of a work, TIPO is amending the law such that the user is entitled to apply to TIPO for a compulsory licence for a publicly released work when it has unsuccessfully tried to obtain a licence for the work. Full text

23 Mar 2016
To postpone or not to postpone? New policy on postponement of patent issuance

The Ministry of Economic Affairs has announced the latest amendments to the Enforcement Rules of the Patent Act. Patent applicants can now apply for a postponement of patent issuance for up to six months instead of three months as previously. The new policy gives patent holders more room to consider and implement their patent strategies. Full text

16 Mar 2016
Owners of registered trademarks can claim under Article 25 of the Fair Trade Act

The Fair Trade Act identifies and addresses two types of unfair trade action related to trademarks: “symbol imitation" (Article 22) and “free-riding” (Article 25). In a recent case (the Supreme Court held that a registered rights holder can assert its rights based on Article 25 of the act. Full text

Gün + Partners

Turkey More reports

25 May 2016
Turkey poised to adopt doctrine of international exhaustion

The Industrial Commission of the Turkish Grand National Assembly has approved the draft Industrial Property (Rights) Law, meaning that Turkey is poised to introduce the doctrine of international exhaustion of IP rights. Full text

06 Apr 2016
Article 7/1(b) of the Trademark Decree-Law versus the principle of co-existence

Pursuant to the Trademark Decree-Law, a trademark which is identical or indistinguishably similar to an earlier trademark and which seeks to be registered for the same or similar goods and services will be rejected by the Turkish Patent Institute at the first examination stage, without the need for the owner of the earlier trademark to file an opposition. Full text

30 Mar 2016
The new post-grant opposition system

After years of discussions, the new draft IP Law – which is expected to be enacted this year – introduces a post-grant opposition system for national patent filings in Turkey. The new system is being introduced in order to bring Turkish law into line with the European Patent Convention system. However, the post-grant opposition system set out in the draft law has some small differences from the convention system. Full text

Carpmaels & Ransford LLP

UK More reports

18 May 2016
The Patent Box is changing shape

The existing UK Patent Box system is closing to new entrants from June 30 2016. The Patent Box regime allows UK companies to elect to pay a reduced rate of corporation tax on profits derived from the exploitation of patents and certain other types of intellectual property. Full text

13 Apr 2016
Patents Court rules in third technical Unwired Planet trial

The UK Patents Court recently handed down its judgment in the third technical trial in the ongoing dispute between Unwired Planet and various mobile phone and infrastructure manufacturers. Full text

24 Feb 2016
Court battle over Unwired Planet patents continues

The UK Patents Court recently handed down judgment in the ongoing dispute between Unwired Planet and various mobile phone and infrastructure manufacturers. Thus far, Unwired Planet has seen some success in both the UK and German courts. However, the courts still have further patents to consider. Full text

Baker Donelson

USA More reports

25 May 2016
Updated USPTO guidance for biotech claims

The US Patent and Trademark Office has published an update to its existing guidelines on patent-eligible subject matter under 35 USC §101. With respect to the life sciences and biotechnology industry, the guidelines included four new examples that demonstrate how the Alice/Mayo two-part test is applied to diagnostic methods and nature-based products. Full text

18 May 2016
Defend Trade Secret Act to bring consistency to trade secret litigation

The US House of Representatives recently approved the Defend Trade Secret Act by a margin of 410 to two. As the act had already passed the Senate, the bill has now gone to President Obama to be signed into law. The Obama administration has voiced strong support for the act and the passage of the bill appears imminent. Full text

11 May 2016
Supreme Court to review laches in patent infringement cases

The Supreme Court recently granted certiorari in SCA Hygiene Products Aktiebolag v First Quality Baby Products to consider whether the doctrine of laches can bar a claim for damages in patent infringement cases. This case follows a 2014 Supreme Court decision that laches could not be used to bar copyright infringement claims brought within the three-year limitation period. Full text

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Issue 78