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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

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

17 Feb 2016
Intellectual property as a value driver in M&A activity

Global M&A activity reached an all-time high of over $4.3 trillion in 2015. Cheap debt, tax inversions and market pressure to generate earnings growth drove companies' decisions to buy rather than build. But why do CEOs find M&A so attractive and what determines an accretive deal? 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

27 Apr 2016
PTO toughens its stance against ANVISA patent activity

The Industrial Propriety Law requires the National Health Surveillance Agency (ANVISA) to give prior approval for the grant of invention patents involving pharmaceutical products and processes. However, in a recent case the Brazilian Patent and Trademark Office demonstrated a clear position not only against ANVISA carrying out patentability examinations, but also against the relevant legal provision. Full text

Gowling WLG Canada

Canada More reports Archive

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

06 Apr 2016
Patent law: 2015 year in review

The year 2015 saw major developments in patent law. This article looks back on key cases, examines the impact of the Trans-Pacific Partnership in Canada, highlights changes in the law, provides an update on pharmaceutical regulation and considers the Competition Bureau's interaction with patent matters. 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

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

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

Jacobacci & Partners spa

Italy More reports

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

10 Feb 2016
Right to fair reward for employee inventor

A recent decision of the Court of Milan addressed the right to a fair reward which is available, in certain circumstances specified by patent law, to an employee working within the scope of his or her employment who contributes to an invention. 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

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

16 Mar 2016
Pre-judicial procedure to become mandatory

A new bill seeking to introduce pre-judicial procedures before initiating a court action has been signed into law and will come into force on June 1 2016. In practice, rights holders have long found it useful to send a warning letter to the infringer when they discover that their rights have been infringed. 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

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

24 Feb 2016
IP Court issues urgent disposition within 24 hours

Just before the nine-day Chinese New Year holiday the IP Court granted a seven-day urgent disposition in a case involving the alleged patent infringement of parts of an express train cabin. Considering the urgency of the case, the applicant filed a motion for an urgent disposition two days before the holiday and the IP Court granted a seven-day urgent disposition within 24 hours. Full text

Gün + Partners

Turkey More reports

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

23 Mar 2016
Stronger patent protection for patent applicants and owners

A new draft IP law will introduce provisions to strengthen the protection of the rights of both patent applicants and patent owners. Under the law, the protection given to a patent owner will also be given to a patent applicant as of publication of the application. Full text

Carpmaels & Ransford LLP

UK More reports

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

22 Jul 2015
English courts scrutinise claimed numerical ranges

The Court of Appeal has ruled in favour of ConvaTec in the latest chapter in a dispute over silverised wound dressings, holding that Smith & Nephew's process fell within the claimed numerical range, despite an attempted work around to avoid the explicit numerical limits. Full text

Baker Donelson

USA More reports

27 Apr 2016
Google Books project gets green light

The Supreme Court has declined to hear an appeal in Authors Guild v Google, thus leaving in place a lower court ruling that Google did not infringe authors' copyrights in its project to create a searchable library of the world's books. The US Court of Appeals for the Second Circuit had held that Google's project was a protected 'fair use' of copyrighted works. Full text

20 Apr 2016
Another genetic testing patent found invalid

In Genetic Technologies Ltd v Merial LLC the Federal Circuit has upheld the lower court's dismissal of patent infringement claims based on methods of detecting genetic variations. The court held that the claims for analysing DNA for linkage disequilibrium were effectively claiming a law of nature, and thus were patent ineligible. Full text

13 Apr 2016
Copyright protection for designs of useful articles

The US Court of Appeals for the Sixth Circuit recently held that the graphic designs and features on cheerleading uniforms were protected. However, the scope of protection depends on the details of each case, as the copyrightable elements must be separable and capable of existing independently of the utilitarian aspects of the useful article in question. Full text

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Issue 77