International reports

Sent to over 28,000 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

IPlytics GmbH

IP analytics More reports

18 Jul 2018
Who will be the technology leader for 5G? Part two

The licensing of 5G-related SEPs looks set to become a major issue not only for the handset industry, but also for any manufacturing sector. Part two of this analysis provides a first glimpse of the 5G patent landscape by scrutinising the current SEP filing data. Full text

11 Jul 2018
Who will be the technology leader for 5G? Part one

The long-awaited 5G standard was recently published and is a major step towards the next generation of cellular networks. Part one of this analysis looks at how the rise of 5G could make the Internet of Things a reality, as well as the upcoming tech companies which are leading the 5G standards development. Full text

25 Apr 2018
IEEE’s empirical record of success and innovation following patent policy updates

Despite claims that the Institute of Electrical and Electronics Engineers' standardisation work had been adversely affected by its 2015 patent licensing policy update, analysis suggests that the institute's standardisation work is thriving. Full text

Global Prior Art Inc

IP management

14 Mar 2018
Best practice in IP management: transformations

Best practice in IP management reflects a transformation in perceptions about intellectual property, including how IP management is framed and suitable IP performance metrics, organisational structure and implementation. Full text

07 Mar 2018
Best practice in IP management: leaner and smarter

Emerging best practices in IP management reflect an awareness that the traditional management approach is extremely wasteful and significant improvements could be made through eliminating or reducing sources of waste. Full text

Sagacious Research

IP technology More reports

08 Aug 2018
Artificial retinas – restoring sight to the blind

Artificial retinas are based on the principle that electrical stimulation of the retinal layer can create vision. Patent filing in this domain is increasing at an average growth rate of 14.1% per year; with continual advancements in biotechnology, micro-electronics and biocompatible materials, this technology is sure to grow. Full text

25 Jul 2018
Self-healing materials: the patent landscape behind the materials of the future

Self-healing materials are those which can sense a problem, prevent it from getting worse and repair themselves as quickly as possible. Significant advances have been made in recent years, as demonstrated by the increasing number of related patents filed, but this field is still in its infancy. Full text

18 Jul 2018
Flexible electronic devices: the patent landscape

Patent filings for flexible electronic devices have increased rapidly in recent years, with China leading the way. Recent patents predominantly focus on improving manufacturing methods, mechanical properties and cost-reduction, among other things. Full text

Navigant Consulting Inc

IP transactions

25 Oct 2017
Comcast patent purchase fails to deliver desired result

An Eastern District of Virginia jury decision confirmed that when apportionment calculations for complex technologies do not clearly demonstrate how the infringed patent uniquely creates demand, they become vulnerable to simple pro rata arguments. Full text

11 Oct 2017
Court relies on patent context to uphold $70 million trade secrets award

The decision in CardiAQ v Neovasc highlights the risks that innovators run when they choose not to patent and instead to hold patent-eligible subject-matter innovations as trade secrets – a practice that has been much discussed in recent years as US patent case law has eroded the timely enforceability of patents. Full text

DANIEL Legal & IP Strategy

Brazil More reports

24 Jan 2018
Four Brazilian patent prosecution particularities you should know about

Despite the similarities between patentability requirements worldwide, Brazil has its own regulations which could be confusing to practitioners and applicants that are more used to working with the US patent system. Full text

17 Jan 2018
Bridging the great divide

Recent case law suggests that the National Health Surveillance Agency and the Brazilian Patent and Trademark Office are finally harmonising to clear the growing backlog of unexamined pharma-related patent applications in Brazil. Full text

10 Jan 2018
Pulling the plug on INPI’s patent backlog

The government is expected to launch an emergency measure to eliminate the Brazilian Patent and Trademark Office’s patent backlog by automatically granting 231,000 pending non-pharmaceutical applications. Full text

Bereskin & Parr LLP

Canada More reports Archive

01 Nov 2017
Identifying and enforcing trade secrets

Trade secrets allow businesses to obtain a commercial advantage over competitors which do not know or cannot use the secret. However, the secret must be managed carefully to avoid loss of rights. Full text

25 Oct 2017
Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy ? a mindful, measured and disciplined approach is crucial. Full text

18 Oct 2017
(The cult of) personality rights in Canada

Personality – including, name, voice, likeness and signature – can have tremendous commercial value. Although lagging somewhat, personality protection can be found in Canadian trademark law, in common law under the torts of misappropriation of personality and passing off, and under privacy statues.    Full text

Vivien Chan & Co

China More reports

08 Aug 2018
Judicial interpretation of the Administrative Procedure Law: what’s new?

A judicial interpretation issued by the Supreme People’s Court has updated the Administrative Procedure Law. Key amendments include stricter rules to tackle habitual complainants and the requirement for administrative personnel to justify their absence from court. Full text

27 Jun 2018
Top 10 trademark developments from 2017-2018

This update reviews the top 10 updates from the China Trademark Office and the Trademark Review and Adjudication Board (TRAB) from the past year, which brand owners should be aware of. Among the changes is the online publication of all TRAB decisions. Full text

13 Jun 2018
Original equipment manufacturers: implications of latest Supreme People’s Court decision

The Supreme People's Court has reaffirmed that the use of trademarks on original equipment manufacturer (OEM) products exclusively for export does not constitute trademark infringement. However, it is still unclear whether OEM use is sufficient evidence against non-use cancellations. Full text

AWA A/S

Denmark

30 May 2018
Amendment passed providing legal privilege to patent attorneys before Danish courts

The proposition to amend the Administration of Justice Act was recently passed in Parliament. The amendment was passed unanimously and provides European patent attorneys with a legal privilege similar to that of lawyers. Full text

07 Mar 2018
Legal privilege for patent attorneys before Danish courts

After more than 10 years of effort from Danish IP and industry associations, patent attorneys may finally be given legal privilege before the Danish courts. Full text

Weickmann & Weickmann PartmbB

Germany More reports

08 Aug 2018
Federal Constitutional Court allows appointment of judges for limited time

The Federal Constitutional Court in Karlsruhe has permitted the appointment of judges for a limited time, under specific conditions. This decision may affect a pending constitutional complaint against the UPC Agreement, since Article 4 of the Statute of the UPC provides that judges may be appointed for a limited time. Full text

28 Mar 2018
Federal Supreme Court clarifies appeal fees

A recent Federal Supreme Court decision clarified the question of how many appeal fees must be paid by appellants (applicants or counterparties) where a decision of the German Patent and Trademark Office is challenged by a Federal Patent Court appeal. Full text

14 Feb 2018
Constitutional complaint against UPC Agreement

While the Administrative Council of the European Patent Office has attempted to strengthen the independence of the Boards of Appeal by amending the Implementing Regulations of the European Patent Convention, dissenting voices from the Federal Constitutional Court are challenging this endeavour. Full text

LexOrbis

India More reports Archive

29 Nov 2017
Novelty: an Indian perspective

The standards for meeting patentability criteria under the Patents Act are emphasised to reward the contributors of an invention. Among these criteria, novelty is a vital and absolute condition for patentability. Full text

15 Nov 2017
No mini trial in temporary injunction application

The Delhi High Court recently noted that, when deciding whether to grant an injunction application, a court is not required to conduct a mini trial. The court recognised that the purpose of an interim injunction is to ensure the protection of parties’ rights on the basis of three factors: prima facie case, balance of convenience and irreparable injury. Full text

08 Nov 2017
CRI guidelines and patentability of financial methods under Section 3(k)

While it is true that financial service-oriented businesses are different from product-oriented businesses, and the predominant perception of financial method inventions is not emerging in India as in other jurisdictions, innovative activity in this area is promising and deserves IP protection. Full text

Ehrlich & Fenster Patent & Trademark Attorneys

Israel More reports Archive

16 Jan 2013
Significant amendment to the Patent Law takes effect

Further to an agreement with the US Trade Commission, the 10th amendment to the Patent Law has now come into force. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. Full text

31 Oct 2012
Court gives the OK to parallel importers – but use trademarks in moderation

The Tel Aviv District Court recently ruled in favour of the Tommy Hilfiger Group after it brought suit against Machsan Hayevuan and its owner Elad Suissa for breach of the rights under the TOMMY HILFIGER trademark. The ruling is a signal to all parallel importers in Israel to review their current practice carefully and to consider whether they are maintaining the proper balance between fair use of their marketed goods and not infringing IP rights. Full text

13 Jun 2012
New examination guidelines: overlapping subject matter

Recently published guidelines for examiners with regard to overlapping subject matter have clarified the definition of "overlapping subject matter" and provide an insight into the strategy for drafting and prosecuting divisional and continuation applications before the Israeli Patent and Trademark Office. Full text

Jacobacci & Partners

Italy More reports

08 Aug 2018
Patenting artificial intelligence in Europe

The patentability of artificial intelligence is a hot topic, mainly due to the tremendous expectations around this emerging, disruptive and pervasive technology. On 30 May 2018 the EPO held an international conference to explore this topic in detail. Full text

20 Jun 2018
What’s mine is yours: employees’ economic rights under the Copyright Act

A recent case addressed an employee’s economic rights associated with software and databases created within the scope of his employment. The board held that the rights belong to the employer in the absence of an agreement to the contrary, pursuant to the Copyright Act. Full text

30 May 2018
General Court increases burden of proof for genuine use

The General Court has held that genuine use of a trademark can be proven only for sufficiently precise and narrowly claimed terms, rejecting a case citing ‘apparatus for the reproduction of sound and images’. In doing so, the court has placed a higher burden of proof on trademark owners. Full text

Shobayashi International Patent & Trademark Office

Japan More reports Archive

25 Jul 2018
Twitter retweet function causes moral rights infringement

The Japanese IP High Court has ruled that retweeting an infringing tweet also constitutes copyright infringement and has ordered the disclosure of user information to a copyright owner. The decision may make users feel uneasy and prompt Twitter to review its retweet function. Full text

11 Jul 2018
Japan considers expanding design protection to cover wider range of designs

A recent report has suggested amending the Design Law in order to address increasingly diverse methods of design. Among other things, Japan is considering expanding protection to projected and spatial designs, as well as relaxing the rules governing a series of designs for a given product. Full text

27 Jun 2018
Business-related patents steadily increase

The Japan Patent Office has revealed the latest numbers of patent applications for business-related inventions, showing a significant increase since 2011. As new technologies such as artificial intelligence and the Internet of Things gain traction, business-related patents are becoming increasingly attractive. Full text

NLO

Netherlands More reports Archive

18 Apr 2018
EPO opposition: corporate in-house IP departments' engagement

European Patent Office opposition data reveals that companies are more likely to outsource opposition work to private firms than to represent themselves. Companies' in-house patent attorneys tend to act as patentees more often than as opponents. Full text

11 Apr 2018
EPO opposition: private practice patent firm’s core technologies

In 2016 UK firms tended to represent patentees and German firms tended to represent opponents in European Patent Office (EPO) oppositions. While most patents subject to EPO oppositions belonged to International Patent Classification (IPC) Class A, most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany. Full text

04 Apr 2018
EPO opposition: private practice patent firm's engagement

As defending and opposing patents before the European Patent Office require different skills, a firm's experience in these two roles may be a factor when choosing a representative. Recent data suggests that private firms in Germany and the United Kingdom continue to dominate the oppositions arena. 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 (International) Inc

Russia More reports

09 May 2018
Russian regulators provide clarity on cryptocurrency and crowdfunding

The Russian market is investing rapidly in blockchain technology and fintech, with regulators largely having been forced to catch up. Accordingly, two draft bills regulating digital financial assets and alternative means of investment generation (crowdfunding) have been developed. Full text

07 Mar 2018
Parallel importation: Constitutional Court narrows scope of protection

The Constitutional Court has clarified Russia’s stance on national and regional exhaustion of rights. While it seems that infringement by reason of parallel importation is a constitutionally sound cause of action, it can now be asserted only in limited cases with remedies that are inconsequential. Full text

28 Feb 2018
Russia’s enduring love for fake luxury

Over $43 billion-worth of counterfeit goods are sold in Russia each year – and this figure is escalating. The Internet and social media have transformed this sector by offering greater anonymity and less risk of prosecution for buyers and sellers alike. Full text

Mikijelj Jankovic and Bogdanovic

Serbia

30 May 2018
GDPR challenges for Serbian businesses and IP registries

The General Data Protection Regulation will affect the disclosure of a company’s IP rights, as well as the availability of personal data contained in official IP registers. Registers must adapt to both allow access to the registries and protect personal data contained therein. Full text

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

AWA AB

Sweden

23 May 2018
Sweden and Japan celebrate 150-year anniversary as JPO relaxes patent approach

Japan is regarded by Swedish companies as a highly innovative country and an important market. In a seemingly deliberate strategy to attract more companies to do business in Japan, statistics show that the number of patents granted at the Japan Patent Office has increased rapidly since 2010. Full text

07 Feb 2018
Re-examining SPC terms: end of discussion?

Recent decisions by the Patent and Market Appeal Court and the European Court of Justice demonstrate that the re-examination of supplementary protection certificate (SPC) terms is a complex but achievable venture for SPC holders. Full text

Hepp Wenger Ryffel AG

Switzerland

20 Jun 2018
Non-enabling disclosure as prior art?

In the latest case relating to AstraZeneca’s anti-cancer drug Faslodex, a registration was revoked by the Patent Court for lack of inventive step due to pre-published scientific articles; the Supreme Court recently remitted the case back to the Patent Court. Full text

08 Nov 2017
Update on supplementary protection certificates in Switzerland

The granting practice of supplementary protection certificates (SPCs) was recently challenged at the Federal Patent Court. In yet another SPC matter, the Federal Patent Court assessed the scope of an SPC in summary proceedings. Full text

13 Sep 2017
Time to revisit your Swiss SPCs

The supplementary protection certificate granting practice in Switzerland is being challenged at the Federal Patent Court – in particular, whether and if so how the granting practice should be brought in line with recent European Court of Justice case law. Full text

Formosa Transnational

Taiwan More reports

18 Jul 2018
Taiwan IP Court invalidates basic patent for white LED

Taiwan’s IP Court recently invalidated one of the fundamental patents for white light-emitting diodes, known as the ‘YAG' patent, due to a lack of inventive step. The court concluded that the evidence of prior art could allow a person with the relevant skills to recreate the patent invention. Full text

20 Jun 2018
Timeframe for revocation of a generic mark

The Supreme Administrative Court has ruled that the decision of whether a mark is generic should take into account evidence only up until the revocation application was filed, in order to avoid any unfair advantage gained by either side while the litigation is pending. Full text

23 May 2018
Patent Attorney Act to include disability rights

The Executive Yuan has passed a draft amendment to Articles 4, 37 and 40 of the Patent Attorney Act. The amendment removes a provision which prevents those with disabilities from being patent attorneys or agents. Full text

Gün + Partners

Turkey More reports

30 May 2018
Declaration of use under new IP Law: consequences and timelines

The new IP Law has abolished the Patent Decree-Law provisions regarding the use requirement of patents and evidence of use. The new law states that non-use of a patent could result in a third party being granted a compulsory licence over that patent. Full text

23 May 2018
District court confirms regulatory data protection is an IP right

The IP Court recently rejected jurisdiction in a case regarding regulatory data protection. However, on appeal the district court found that the case concerned data exclusivity rights and the protection of unrevealed data, which is within the scope of IP courts. Full text

16 May 2018
First damages claim decision in pharma sector for unjust preliminary injunction

The Istanbul IP Court has recently decided on a generic company’s damages claim based on an unjust preliminary injunction, in what appears to be the first decision of its kind by Turkish IP courts within the pharmaceutical sector. Full text

Carpmaels & Ransford LLP

UK More reports

08 Aug 2018
UKIPO helps to clarify the future UK-EU relationship on intellectual property

The UK Intellectual Property Office has published an update to its page “IP and BREXIT: The facts”. Although by no means a detailed legal proposal, its scope is far broader than the recent government white paper. The update covers patents, supplementary protection certificates, trademarks and designs. Full text

25 Apr 2018
Claiming costs and expenses in High Court litigation as licensee

While there are many good reasons for recording a patent licence and keeping an up-to-date register, a recent High Court ruling illustrates the tangible effect of failing to record a licence: the threat of missing out on recovering legal costs.  Full text

18 Apr 2018
IP rights – what does the future hold after Brexit?

The European Commission recently published its draft withdrawal agreement setting out its proposals for the arrangements surrounding the United Kingdom’s departure from the European Union, including in relation to IP rights.  Full text

Baker Donelson

USA More reports

08 Aug 2018
USPTO must pay its own attorneys’ fees

The Federal Circuit Court of Appeals en banc has rejected the USPTO’s attempt to obtain attorneys’ fees in a de novo civil action. It rejected the Fourth Circuit Court of Appeals’ reasoning for allowing the USPTO to obtain attorneys’ fees for appeals against trademark denials. Full text

08 Aug 2018
Two iconic brands – Federer's uncertain hope to obtain the RF logo from Nike

Although Nike no longer has a clothing contract with Roger Federer, it still owns the trademark registration for the iconic stylised RF logo. However, despite his optimism, the publicity rights, trademark rights and copyright avenues to obtain rights in the RF logo look challenging at best for Federer. Full text

25 Jul 2018
Nike Jumpman logo: not yet a slam dunk

Nike had seemingly won the copyright contest over its iconic Jumpman logo when the Ninth Circuit Court of Appeals issued its opinion of non-infringement. However, photographer Jacobus Rentmeester has managed to keep the game alive by convincing the court to stay the mandate confirming its decision. Full text

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Issue 91