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


IP analytics More reports

30 Sep 2015
Prosthetics: the next IP battleground?

A mixture of technologies is always a hotbed for intellectual property, especially if elements of electronics are involved. Advances in electronics and robotics, as well as a surge in demand, have led to prosthetics becoming a busy area of corporate innovation and IP activity, driving both IP risk and value for companies involved. Full text

16 Sep 2015
Car manufacturers or part suppliers: who’s in the patent driving seat?

The automotive industries have long been a legal battleground. Now, in an era of open innovation, suppliers not only make parts to order but also innovate to create value-added product enhancements over which they have control. If bargaining power is a function of IP ownership, it has been slipping out of the hands of the manufacturers. Full text

02 Sep 2015
Billion dollar start-ups: do unicorns like patents?

Earlier this year The Wall Street Journal published a list of 'unicorns' – start-ups valued at $1 billion or more. Tagging companies as unicorns suggests that they might have some mythical powers. However, from an IP perspective, in many ways they are just like any other company. Full text


IP finance More reports

16 Sep 2015
IP investing on the road from zero to one: part two

Both the pharmaceutical and film industries have always been active in collaborative R&D, partly due to the immense investment required to get a product to market and partly as the result of the realities of innovation and inventors. Today this model of innovation is becoming widespread across almost every industry – and 'not invented here' may be a great business strategy going forward. Full text

09 Sep 2015
IP investing on the road from zero to one: part one

PayPal founder and venture capitalist Peter Thiel identifies the key driver in value creation as the opportunity to create a monopoly, essentially what Warren Buffet would call a “defensive moat”. The alternative to such a monopoly is unfettered competition – which inevitably leads to diminishing profit margins. Full text

19 Aug 2015
Buy-backs, bouncing bombs, Archimedes and innovation

Hostile takeovers and war have a lot in common. When billions of dollars or millions of lives are at stake, if innovation increases the probability of success, then senior management pay attention. Full text

Griffith Hack

IP valuations

07 Oct 2015
Extending the economic life of technical innovation: brand alchemy?

If successful, new technology, processes and products can be game changers. But their economic life is usually short due to the pace of tech evolution. In contrast, well-managed brands can generate earnings indefinitely. An achievable form of alchemy is to transition the reputational benefits of technical innovation into brand equity, thereby extending the length and extent of the economic benefits. Full text

30 Sep 2015
Patent valuation: connecting tech differentiation to patent claims

The following simplistic – but often erroneous – equation has been known to mislead valuers and investors: Highly differentiated technology with strong market potential + patent protection = high patent value. The first two factors in this equation must be linked before deciding on the answer. In other words, there should be a clear line of sight between patent claims, technology benefits and valuation assumptions. Full text

23 Sep 2015
Patent valuation: why bother?

A recent IAM survey revealed that around 30% of IP managers either had not considered IP valuation or found it to be unhelpful. Various reasons for this are advanced by valuation sceptics. Some of these have merit and raise challenges to valuers. But all of the concerns can be overcome in a well-constructed valuation that integrates an assessment of the functional, economic and legal characteristics of intellectual property. Full text


Australia More reports

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 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

03 Jun 2015
Malaria + Viagra = unhappy ending for parasites

A recent study has shown that the active ingredient in Viagra (sildenafil) has the capacity to slow the spread of malaria parasites. The study serves as a timely reminder of the relevance of second medical use patents and their potential for extending the period in which a substance/composition can be patent protected. Full text

Gowling Lafleur Henderson LLP

Canada More reports Archive

23 Sep 2015
Court rejects the concept of initial interest confusion

The British Columbia Supreme Court has issued one of the first Canadian decisions addressing at length the issue of keyword advertising in the context of an action for passing off. The court found that the use of a competitor’s trademark in keyword advertising did not constitute passing off, and in doing so rejected the idea of initial interest confusion as a basis for a finding of a likelihood of confusion. Full text

26 Aug 2015
Federal Court of Appeal reinterprets product specificity requirements

A recent Federal Court of Appeal ruling represents a key victory for innovators. The decision restores the principle (and prior practice) that allows the listing of patents claiming ingredients not specifically named in the patent, provided that a match exists between the claims as construed and the approved product. Full text

12 Aug 2015
Federal Court introduces new measures to streamline IP litigation

The Federal Court has issued a practice notice providing new measures that seek to improve case management of complex litigation, including IP litigation. The measures – designed to achieve increased proportionality in court proceedings – streamline certain aspects of IP litigation and should result in both time and cost savings for litigants. Full text

Wilkinson & Grist

China More reports

29 Jul 2015
New Advertising Law provides new tool to protect brands

The new Advertising Law has redefined the boundaries of advertising in light of changing market realities. It should give brand owners another weapon in the battle to curb infringing activities and synergise enforcement efforts. Full text

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

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


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

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

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

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

10 Jun 2015
IPAB eases time limit to file patent appeals in Microsoft cases

The Intellectual Property Appellate Board (IPAB) has published its decision in two cases involving Microsoft Corporation. The issue for consideration was whether the three-month limitation period set out in Section 117A(4) of the Patents Act 1970 for filing an appeal before the IPAB challenging the controller’s decision should start to run from the date of the order or the date of receipt of the order. Full text

27 May 2015
The battle over sitagliptin between Merck and Glenmark reaches the Supreme Court

Nearly two years after Merck initiated an infringement action against Glenmark before the Delhi High Court over its patented diabetics drug sitagliptin, the Supreme Court has upheld the interim protection granted by the Division Bench of the Delhi High Court in favour of Merck, albeit in a limited manner. Full text

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

Jacobacci & Partners spa

Italy More reports

07 Oct 2015
Reformulating patent claims: a re-introduction to new Article 79

In early 2015 the Court of Milan issued several decisions concerning the application of Article 79 of the Industrial Property Code, which was amended in 2010. In some of these cases the court addressed whether and under what conditions a patent holder may reformulate a set of claims contained in a granted patent. Full text

22 Jul 2015
Is a trademark consisting of two complex Chinese characters inherently distinctive?

A recent Italian Patent and Trademark Office decision to register a trademark consisting of two complex Chinese characters was based on the distinctiveness of two Chinese characters. However, this distinctiveness is questionable. Full text

01 Jul 2015
Misappropriation of trade secrets consisting of technical information

In a recent decision the Court of Turin held that when technical information meets all of the requirements for trade secret protection and reverse engineering is difficult, the burden of proof rests with the defendant to show that the technical information was acquired independently. Full text


Netherlands More reports Archive

02 Sep 2015
Impartial to partial priorities: questions referred to EPO Enlarged Board of Appeal

The European Patent Convention hides a notorious concept known as ‘the inescapable trap’: if a granted claim involves added matter, there is no way to restore it except by shifting the scope of the patent – which in turn invalidates the patent. Recent European Patent Office practice suggests that there might be another way for patentees to shoot themselves in the foot: through ‘poisonous priority’. Full text

17 Jun 2015
SKY trumps SKYPE – but not out of the blue

The General Court of the European Union recently confirmed that the trademarks SKY and SKYPE were confusingly similar. The decision is a setback for the popular Skype service, which allows users to call and chat over the Internet for free. Full text

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

Federis & Associates


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

DLA Piper Wiater spk


05 Aug 2015
Triple remuneration for infringement of economic copyright declared unconstitutional

Previously, an author whose economic rights had been infringed could claim not only compensation, but also damages in excess of the amount of the actual damage. However, the Constitutional Tribunal recently found the provision of the Copyright Act to this effect to be unconstitutional. Full text

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

09 Sep 2015
Intellectual property acquires a general manager

The recent appointment of Grigory Ivliev as the new head of the Federal Service of Intellectual Property marks a new era for the office. Under forthcoming legislation. Its remit will be widened to cover not only the issues that it regulates at present (including inventions, designs and trademarks), but also large-scale copyright (eg, music, films and literature). Full text

08 Jul 2015
GASTARBEITER mark expands its presence in Russia

The German word 'Gastarbeiter' ('guestworker') has been part of the Russian language for more than a decade, as guestworkers have come to the country in large numbers to take up job vacancies requiring moderate skills. The Patent Office recently dealt with an application to register the GASTARBEITER trademark in Classes 9 and 25, raising the issue of whether such application was in the public interest. Full text

27 May 2015
Obtaining information on patent applications

The ability to retrieve accurate, precise and comprehensive information on patent applications is crucial. The Russian Patent and Trademark Office (Rospatent) both publishes original patent documents and maintains electronic databases with a search option. However, while it has made good progress in providing official patent publications, Rospatent has not yet optimised the information that is provided for search purposes. Full text

Mannheimer Swartling

Sweden More reports

24 Jun 2015
Market Court and Patent Appeals Court to cease operations in 2016

On September 1 2016 a new Swedish judicial system will enter into force for cases involving IP law. As a consequence of the changes, the Market Court and the Patent Appeals Court will cease to exist. The reform also means that the adjudication of disputes, which at present takes place across the country, will in future be concentrated in Stockholm. Full text

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

Formosa Transnational

Taiwan More reports

26 Aug 2015
Recent changes in Taiwanese patent practice

In order to reflect industry needs and to resolve problems with the existing patent system, the Taiwan Intellectual Property Office is planning a series of changes for patent regulation and the examination guidelines. Recent changes include the new regulation on delayed substantive examination. Full text

19 Aug 2015
IP Rights Police measures for dealing with online copyright infringement

The IP Rights Police were previously reluctant to tackle online infringement issues when unauthorised content was obtained through websites located overseas. However, in recent years they have started to tackle the problem from the bottom up by suppressing the illegal use of BitTorrent and other P2P software. Full text

08 Jul 2015
Speeding up the patent process: the Taiwan-South Korea PPH

On July 1 2015 the Patent Prosecution Highway (PPH) between Taiwan and South Korea took effect. The PPH facilitates the electronic exchange of industrial information and priority documents between the Taiwan Intellectual Property Office and the South Korea Intellectual Property Office. Under the PPH, patent applicants will be able to speed up their patent applications in both countries. Full text

Gün + Partners

Turkey More reports

15 Jul 2015
Square pegs in round holes: invalidation actions against unexamined patents

The Turkish patent regime has a pre-grant opposition system and recognises two types of patent: unexamined patents and examined patents. Unexamined patents can also be converted into examined patents if a request for examination is made during the unexamined patent's seven-year protection period. Full text

10 Jun 2015
IP Court applies European Patent Convention in national invalidity proceedings

In a recent invalidation action against the national validation of a European patent, the patent holder asked the IP Court to delay the proceedings due to ongoing proceedings before the European Patent Office. Rather surprisingly, the IP Court granted this request. The decision is remarkable as it is the first time that a national court has applied Article 138/(3) of the European Patent Convention. Full text

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

Carpmaels & Ransford LLP

UK More reports

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

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

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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Issue 74