Thomson Reuters IP & Science 2015
Thompson Reuters

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

Fraserburgh

IP finance More reports

20 May 2015
IP finance: the asset class that fell to earth

In 1997 David Bowie made history by securitising $55 million of royalties from his back catalogue in what became a milestone in IP finance. However, since the global credit crunch IP lending has been the province of a handful of specialised funds. This situation is ironic, because in theory IP lending is one of the the largest and most profitable areas of banking activity that has yet to exploit its true potential. Full text

22 Apr 2015
CRISPR: creation, commercialisation and conflict

We stand at a milestone in the story of life science – which is also a story of the creation, commercialisation and conflict around intellectual property. The power of CRISPR – a simple way to edit genes – is extraordinary, but its commercialisation promises inventors and investors a volatile path. Full text

11 Mar 2015
Super-connectors and the future of cross-functional intellectual property

Some of the most interesting intellectual property in the world underpins the search for 'super-connectors' in social networks, biochemistry, neuroscience, epidemiology, ecology, financial markets and national security. They represent nodes or crossroads of connectivity and act as processing centres where multiple inputs are aggregated and integrated. Full text

EverEdgeIP

IP transactions More reports

03 Sep 2014
The Moneyball phenomenon – new metrics for R&D planning

How do most businesses decide where to focus their R&D? In many cases, R&D – especially the 'R' – has a strong aspect of 'revelation' to it. However, directing R&D (and thus IP creation) need not be revelatory or reactionary. The secret is to look at the metrics of innovation in a different way. Full text

25 Jun 2014
Hard and soft rights combine to solve the age-old question: function or form?

Following objections to its latest technology, Google Glass, Google announced that it had formed a strategic partnership with Luxottica “to design, develop and distribute a new breed of eyewear for Glass” to be released in 2015. Intellectual property can have a positive combinatorial effect for a product – particularly when blending somewhat diverse sets of rights. What does this mean for a product and what this can mean for the parties involved? Full text

04 Jun 2014
Knowing what you buy: the importance of IP audits in the transaction process

Transactional due diligence often lacks a comprehensive audit of the business’s intellectual property. Given that intangible assets now constitute 80% of the assets of most businesses and that intellectual property is itself considered a major and critical asset class, its absence should be deemed conspicuous during any major business transaction due diligence. Full text

Watermark

Australia More reports

06 May 2015
Could the courts compel prescribers and dispensers of medicines to help Big Pharma fight generics?

Decisions issued by the High Court and the Full Federal Court have offered guidance to generic pharmaceutical manufacturers on how to avoid contributory patent infringement by amending product information documents. However, a recent UK court ruling broke new ground in ordering an official health body to issue guidelines on prescribing a generic drug. Could the same thing happen in Australia? Full text

11 Mar 2015
Ongoing summer of sport affected by inventions

So far in 2015 sports fans have had plenty to watch: the Asian Football Confederation Asian Cup football tournament reached its climax, the Cricket World Cup is underway in Australia and New Zealand, and the Melbourne Formula One Grand Prix takes place shortly. The intensive sports coverage of these events around the world highlights the need for sporting inventions. Full text

04 Mar 2015
Teen sensations 5 Seconds of Summer bring unwanted notoriety to ATMO

The Australian Trademark Office's treatment of a trademark application filed by boy band 5 Seconds of Summer demonstrates that it does not matter how famous a trademark applicant is (or thinks it is) – the rules of trademark registration are the same for everybody. Full text

Gowling Lafleur Henderson LLP

Canada More reports Archive

01 Apr 2015
The year in review for Canadian copyright law

During 2014 Canadian copyright law continued to grapple with the ongoing technological revolution, and parties continued to grapple with the legislative and judicial tools that attempt to keep up with it. Full text

25 Mar 2015
Canadian trademark law: top cases of 2014

The year 2014 will be remembered as the year when Canada rewrote its trademark laws. However, 2014 was also an exceptionally busy year for trademark cases in Canada. While no single case stood out above the rest, there were a number of interesting cases of which both legal professionals and brand owners should take note. Full text

18 Mar 2015
Canadian patent law: 2014 year in review

The year 2014 saw a number of noteworthy Canadian patent law decisions and developments. For example, in Celebrex the Court of Appeal addressed the 'promise of the patent' doctrine; and a number of changes to the Patent Act and the Industrial Design Act were announced. Full text

Wilkinson & Grist

China More reports

06 May 2015
Court recognises Heinz Chinese trademark as well known

Pre-emptive applications by trademark squatters in classes of goods and services in which rights holders have no prior registrations have always been a serious issue for international brand owners. Thus, it is often necessary for them to rely on well-known trademark claims in oppositions against such pre-emptive applications. This was the case in a recent decision on the HEINZ Chinese trademark. Full text

29 Apr 2015
Technical investigators introduced to specialist IP courts

In order to assist and better equip the newly established IP courts in Beijing, Guangzhou and Shanghai, the Supreme People’s Court has promulgated regulations introducing technical investigators to the IP courts and defining their role. While opinions of technical investigators are not binding, their opinions are expected to be relied on heavily. Full text

25 Mar 2015
Supreme People's Court seeks views on pre-action preservation orders

The Supreme People's Court has issued a new draft interpretation outlining the applicable laws and practice when applying for pre-action preservation orders in proceedings involving IP disputes. The draft interpretation deals with various issues, including who is entitled to apply for a pre-action preservation order and which court has jurisdiction to grant the order. Full text

Michael Kyprianou & Co LLC

Cyprus More reports

18 Mar 2015
Converting a Community trademark

A Community trademark is a trademark which has been registered with the Office for Harmonisation in the Internal Market in order to enjoy protection across the whole of the European Union. However, in some situations it may be beneficial for the mark owner to apply to convert its Community trademark into a national trademark. Full text

25 Sep 2013
Halloumi versus hellim: more than just a trademark battle?

The European Court of Justice recently dismissed a challenge to the registration of the mark HELLIM for cheese, approving it for registration. The registration was challenged by the owner of the collective Community trademark HALLOUMI based on the likelihood of confusion. Full text

19 Dec 2012
New IP tax regime takes effect

Amendments to the Income Tax Law have turned Cyprus into one of the best jurisdictions for royalty and holding structures. The new regime provides attractive opportunities for structuring the exploitation of IP assets through Cyprus, in particular through the use of Cyprus-resident IP owners. Full text

Chas Hude A/S

Denmark

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

20 May 2015
ECJ paves the way for proposed unitary patent regime

The European Court of Justice (ECJ) has rejected two actions brought by the Spanish government against the legality of the regulations establishing the unitary patent. If the Spanish actions had been successful, it would have been the end of the proposed unitary patent regime. As steps are already being taken across member states to establish the Unified Patent Court, the ECJ's decisions have been welcomed. Full text

17 Dec 2014
More than just a catchy beer slogan

With the German Trademark Register containing more than 12,000 national trademarks registered for the beer category, it is getting harder to come up with original marks. The Federal Patent Court recently ruled on whether a Bavarian brewery could register the sign ORIGIN OF BEER. The decision forms part of the conflicting case law on so-called 'slogan' marks. Full text

13 Aug 2014
EPO introduces new acceleration scheme

Following consultation with users, the European Patent Office (EPO) has published a new early certainty from search scheme. The new scheme comes in addition to the 2010 rules for dealing with requests filed under the programme for accelerated prosecution of European patent applications. The EPO seems to be aiming for the world record in processing speed – but will the new scheme work? Full text

Wilkinson & Grist

Hong Kong More reports

08 Apr 2015
Registry updates Work Manual on Absolute Grounds for Refusal

The Hong Kong Trademarks Registry has updated the Work Manual on Absolute Grounds in relation to objections based on bad faith. The changes provide that where the circumstances of the application give rise to a reasonable suspicion of the applicant’s entitlement to the mark or the honesty of its intention, examiners now have a duty to raise an objection based on bad faith. Full text

03 Sep 2014
Bill proposes to update copyright regime

The Hong Kong government recently introduced the Copyright (Amendment) Bill 2014 into the Legislative Council for its first and second readings. The bill combines new proposals formulated following earlier public consultation on the treatment of parody and legislative proposals under the former Copyright Bill 2011. Full text

30 Apr 2014
Application for 'Cool Fresh' in Class 3 refused on absolute grounds

The trademarks registrar has refused an application by Unilever NV to register 'Cool Fresh' as a trademark in respect of goods in Class 3 including “soaps; perfumery; shaving foam; preparations for the bath and shower etc". The applied-for mark failed to distinguish the trade origin of the goods. Full text

Lakshmikumaran & Sridharan

India More reports Archive

15 Apr 2015
Patent controller revokes Boehringer’s patent based on Cipla’s post-grant opposition

In its latest rejection of a pharmaceutical patent the Patent Office rejected Patent 254813, granted to Boehringer Ingelheim Pharma Gmbh, in a post-grant opposition initiated by Cipla. The patent was rejected for lack of inventive step and for not being patentable under Section 3(d) of the Patents Act 1970. Full text

01 Apr 2015
Rules for appointing IPAB judicial and technical members found unconstitutional

The Madras High Court recently ruled on a a public interest litigation challenging the constitutionality of the qualification criteria for persons appointed to the Intellectual Property Appellate Board (IPAB) and the manner of appointment of these members to the IPAB. Full text

17 Dec 2014
Court resolves Pudin Hara advertising dispute

Consumers may have noticed several Indian advertisements relating to antacids and other medicines that cure heartburn and gastric problems. Recently the Delhi High Court decided a dispute between multinational Reckitt Benckiser and Dabur India Ltd. The dispute involved the use of similar themes in ads for over-the-counter medicines Gaviscon and Pudin Hara. Full text

Jacobacci & Partners spa

Italy More reports

13 May 2015
Admissibility of late-submitted invalidity grounds in patent litigation

The Court of Milan has held the Italian portion of a European patent invalid because the claims extended beyond the content of the original application as filed. This ground for invalidation was submitted after the deadline set for such submissions; however, the court concluded that new grounds which were not initially presented may be added under certain conditions. Full text

08 Apr 2015
Weak marks grown stronger: DIVANI & DIVANI trumps DIVINI & DIVANI

The Supreme Court recently ruled on the issue of secondary meaning. The judgment may lead to further developments on two key issues: the extent of the protection of weak signs, and the application of secondary meaning as a remedy to strengthen the distinctive character of such signs. Full text

11 Mar 2015
EU law concerning SPCs and interpretation of the SPC Regulation

The European Court of Justice has clarified whether certain active ingredients in medicinal products are eligible for supplementary protection certificate (SPC) protection. The court ruled that the relevant EU legislation contains no prohibition against obtaining an SPC for an active ingredient which is covered by a basic patent and which is covalently bound to another active ingredient in a medicinal product. Full text

NLO

Netherlands More reports Archive

08 Apr 2015
Claims on plants obtained by essentially biological processes not excluded from patentability

Good news for the plant biotech industry: the Enlarged Board of Appeal has issued its ruling in the consolidated Broccoli and Tomato cases in favour of the patentability of claims on a novel plant product generated by an essentially biological process or a product-by-process claim defined in the terms of such a process. Full text

28 Jan 2015
Managing directors, beware personal liability for IP rights infringement

If a managing director is found liable for damage, the compensation that he or she is required to pay from private funds can mount up. However, under Dutch law it is rare for a managing director to be held personally responsible for an IP rights infringement. For this to happen, a case of personal liability must be made against him or her. Full text

21 Jan 2015
Defending your stripes

Benelux companies using stripes on their vehicles must consider the right of the Netherlands, which safeguards its copyright and trademark rights in its territory in the stripes used on government vehicles. However, the state has not always succeeded in defending its stripes, as demonstrated by its case against Darkness Reigns Holding. Full text

Federis & Associates

Philippines

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

DLA Piper Wiater spk

Poland

08 Apr 2015
Copyright reform: government adopts draft amendment

The government has adopted an amendment to the Copyright Act prepared by the Ministry of Culture and National Heritage. The major changes relate to the use of orphan works and remuneration for authors from library loans. Full text

Gorodissky & Partners

Russia More reports

06 May 2015
Is a licence valid without registration?

A recent decision demonstrates that parties should be attentive when concluding agreements in advance of obtaining protection. Such agreements should include a provision to the effect that after grant of the patent, the parties will sign a regular patent licence. This will protect them from unforeseen consequences. Full text

29 Apr 2015
Tax risks of cross-border intellectual asset management

Under government plans to combat tax evasion through financial transfers out of Russia to low-tax jurisdictions, the tax authorities have focused their attention on cross-border transactions, including those involving IP assets, as Russian companies often hide a substantial part of their profits from Russian taxation through royalty payments made to intellectual asset management centres outside Russia. Full text

18 Feb 2015
Tackling parallel imports

A Russian court recently awarded the highest-ever compensation for infringement caused by parallel imports. It is hoped that the size of the compensation award will serve as a powerful deterrent to would-be parallel importers. Meanwhile, a working committee set up by the Eurasian Economic Union to examine the issue of parallel imports has so far failed to reach any conclusions. Full text

Mannheimer Swartling

Sweden More reports

08 Oct 2014
Registering geographical terms as trademarks

The EU Council's common position on trademark law reform envisions closer cooperation between the Office for Harmonisation in the Internal Market and national offices, which should achieve closer harmonisation in the application of trademark law. The registrability of geographical terms as trademarks is one area in which Sweden's position differs from that of the European Union. Full text

05 Mar 2014
District court applies two-decade-old EPO decision

Nearly two decades have passed since the European Patent Office Enlarged Board of Appeal handed down Decision G3/92, dealing with a European patent application made by an unlawful applicant. The decision was recently applied by a Swedish district court, which declared the plaintiff to be entitled to an invention covered by a Patent Cooperation Treaty application that had irrevocably lapsed several years earlier. Full text

04 Dec 2013
Court addresses copyright assignment in online advertising

Contractual clauses on copyright assignment have been construed narrowly by the Swedish courts using the principle of specification, according to which the assignor of the copyright is presumed to retain any rights not clearly specified in the assignment clause. A Svea Court of Appeal decision addressed a clause on copyright assignment in the general terms and conditions applicable when advertising on a Swedish online marketplace. Full text

Formosa Transnational

Taiwan More reports

29 Apr 2015
New electronic payments law will encourage patent growth

The Taiwan Intellectual Property Office Examination Guidelines for Computer Software-Related Inventions have encouraged software companies to engage in e-commerce. However, at present the provision of third-party payment services entails high legal risks. This is set to change in May 2015, when the Statute for the Administration of Electronic Payment Institutions takes effect. Full text

22 Apr 2015
Do you know where you're going to? Patent linkage proposals raise debate

In the past the Taiwanese authorities did not recognise a US-style patent linkage system because they believed that the judicial system was adequate to protect originators’ IP rights. However, in recent years patent linkage has become a critical issue during negotiations with the US government, so Taiwan has now pledged to establish a patent linkage system in the near future. Full text

11 Feb 2015
Check before shaking hands on IP transactions: new antitrust rules

The Legislative Yuan has passed an amendment to the Fair Competition Law, which will take effect once it has been published by the president. As antitrust issues should always be considered in IP transactions, both foreign and domestic players in the Taiwanese market should monitor the progress of the amendment. Full text

Gün + Partners

Turkey More reports

29 Apr 2015
Originator challenges generic drug and ministry price reduction decision

In a recent case a global pharmaceutical company filed a patent infringement action and sought a precautionary injunction against a generic company on the grounds that the generic company had filed an abridged marketing authorisation application for the pharmaceutical which referred to the marketing authorisation dossier of the original product, one of the originator's most profitable drugs in Turkey. Full text

15 Apr 2015
Appeal court rules on status of opposed European patents in Turkey

The 11th Civil Chamber of the Court of Appeals recently issued a remarkable decision regarding European patents validated in Turkey – specifically, on the status of the validation of a European patent in Turkey where an opposition or appeal is pending before the European Patent Office. Full text

25 Feb 2015
IP court interprets scope of Bolar exemption

A recent IP court decision marks the first interpretation of the Bolar exemption with such a narrow scope and the first time that an application for inclusion on the Social Security Institution reimbursement list has been considered an attempt to actually sell a drug. However, it remains to be seen whether the appeal court will agree with the IP court's reasoning. Full text

Carpmaels & Ransford LLP

UK More reports

22 Apr 2015
SPCs for biologics – guidance on product definitions, scope and validity from EFTA Court

The Court of Justice of the European Free Trade Association States has provided some much-needed guidance regarding the scope and validity of SPCs for biologics, but the language used may concern innovators. It remains to be seen whether the European Court of Justice will agree with this approach. Full text

15 Apr 2015
An introduction to clarity in EPO oppositions

The European Patent Office Enlarged Board of Appeal recently handed down a decision on the extent to which amendments made during opposition proceedings can be examined for clarity, following a referral from a lower board. Full text

04 Feb 2015
English courts tackle Swiss-type claims and off-label use

The English Patents Court has handed down a judgment providing guidance on the scope and enforceability of 'Swiss-type' second medical use claims. In particular, the judge considered a question pivotal to the perceived value of Swiss-type claims: to what extent can such claims be used to restrict off-label use where other uses of a drug are no longer protected by a patent? Full text

Kenyon & Kenyon LLP

USA More reports

22 Apr 2015
PTAB crashers: a who’s who of non-practising IP rights petitioners

Although inter partes review proceedings are designed to provide those accused (or at risk of being accused) of patent infringement with a faster and less costly proceeding to challenge the validity of a patent, they have also drawn the attention of outsiders. There are several types of Patent Trial and Appeal Board 'crasher', each having its own motivation for challenging the validity of one or more patents. Full text

11 Mar 2015
Suprema, Inc v ITC: Federal Circuit holds en banc hearing

The en banc Federal Circuit has heard oral argument in a case with significant implications for the scope of the authority of the International Trade Commission (ITC) authority over claims of induced patent infringement. The argument suggested that the court could continue to allow the ITC to remedy infringement of method claims based on a theory of induced infringement. Full text

04 Mar 2015
Supreme Court: trademark tacking for determining priority is a question for the jury

The Supreme Court has unanimously sided with the Ninth Circuit in holding that whether an original and a revised trademark are similar enough for tacking in determining priority is a fact-intensive question for juries to answer. The court found that application of the tacking rule relies on an ordinary consumer's understanding of the impression that a mark conveys and falls comfortably within the "ken of the jury". Full text

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