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

EverEdgeIP

IP finance More reports

01 Jun 2016
Beyond patents: a value investor's view

Patents, while often portrayed as strategic assets that support innovation and growth, are in fact mostly tactical assets around older technologies that are used defensively to protect market share. This means that companies with many patents may live longer, but they are unlikely to exhibit the growth prospects typically associated with innovation. Full text

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

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

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

21 Dec 2016
Changes to IP rights on the horizon: Canada introduces legislation to implement CETA

The recently signed Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union requires Canada to make changes to its Patent Act and Trademarks Act. Bill C-30, which is now before Parliament, proposes amendments to several federal acts to implement CETA. Full text

30 Nov 2016
Federal Court of Appeal grants minister of health the right to be wrong

The Federal Court of Appeal recently held that the minister of health's decisions are to be reviewed on a standard of reasonableness, unlike prior Supreme Court jurisprudence, which had applied a correctness standard to the minister. 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

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

11 Jan 2017
Impact of revised guidelines for examination of computer-related inventions

The patenting of computer-related inventions (CRIs) has long been a hotly debated subject, and in response last year the Indian Patent Office issued new guidelines for the examination of CRIs. But what impact have the new guidelines had on the grant rate of CRI-related patent applications? Full text

21 Dec 2016
New developments in divisional patents

In general, if the parent application does not have multiple independent claims but a divisional application has been filed based on subject matter disclosed in the specification, the controller will not allow a divisional application. However, there has been a new positive development in this direction. Full text

14 Dec 2016
On-shelf versus in-use claims

Two types of patent claim exist: on-shelf claims and in-use claims. As there are many ongoing suits against manufacturers, it is imperative to determine whether the claims therein are on-shelf or in-use claims. 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

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

19 Oct 2016
Illegal hyperlinks: the final decision

Is posting a hyperlink to a work which is protected by copyright allowed? Ruling in the long-running Sanoma case, the European Court of Justice has now said yes – and no. 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

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

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

20 Jul 2016
Criminal trademark enforcement applies to preparatory acts for infringement

The Executive Yuan has approved a draft revision of the Trademark Law in order to meet the standards required to join the Trans-Pacific Partnership. The amendment will allow trademark owners to enforce their rights through criminal procedures against unauthorised uses of their registered trademarks on labels, tags, packaging or containers, even where these articles have not yet been applied to goods or services. Full text

Gün + Partners

Turkey More reports

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

05 Oct 2016
Preliminary injunction granted in favour of second medical use patent

The Court of Appeal has established precedent that registered rights must be fully protected until such time as they are invalidated. This rarely causes loss of a party's rights. However, the first-instance courts generally refrain from ruling in favour of a patent, including the grant of injunctions, in an infringement action when invalidation actions are pending on the same patent. Full text

22 Jun 2016
IP Court rejects Court of Appeal view on second medical use claims

In 2014 the Istanbul IP Court held that second medical use claims granted by the European Patent Office under the European Patent Convention 1973 were null and void. Although the Court of Appeal overruled this decision, the IP Court refused to acknowledge the higher court's ruling. The case has now gone before the General Assembly of Courts of Appeal. 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

11 Jan 2017
Maintain your DMCA safe harbour: designating agents to avoid copyright infringement

The US Copyright Office recently created an online system for website operators to designate agents to receive notices under the Digital Millennium Copyright Act. Agents designated before December 1 2016 must re-register before December 31 2017 and renew such designations every three years to maintain safe harbour status. Full text

21 Dec 2016
Walking Dead creator lives to fear others' trademark applications

A month after Halloween, a federal court refused to find on summary judgment that a pending batch of applications to register WALKING DEAD for merchandising items had infringed the hit franchise's trademark. Full text

14 Dec 2016
Scope of CBM review is limited

In a rare reversal of a Patent Trial and Appeal Board (PTAB) decision, the Federal Circuit recently determined that the PTAB had incorrectly used an overly broad definition of a 'covered business method' (CBM) patent in instituting a CBM review of a challenged patent. Full text

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Issue 81