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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

PatentSight GmbH

IP analytics

30 Nov 2016
Smart patent analytics for leaders

Data analytics is an important and growing area of the IP field. Smart patent analytics should provide reliable, unique and relevant insights into the patent landscape for both decision makers and patent experts. Full text

Berkeley Research Group LLC

IP economics

24 Aug 2016
Extraterritoriality and US patent damages

In litigation, economic and financial experts are often asked to calculate the amount of patent damages that would be “adequate to compensate for the infringement”. But a recent ruling illustrates the difficulty of defending IP rights in today’s global economy, where multinational business operations are the norm and patent litigants must grapple with how national patent laws apply to the products and services of global businesses. Full text

22 Jun 2016
Apportionment and its impact on return on enforcement

Some IP professionals focus on the economic contributions of technology or other traditional valuation approaches (ie, market, income and cost approach), while others are increasingly interested in measuring 'return on enforcement' as an indication of value. The issue of apportionment may have a major impact on valuing a litigated patent. Full text

EverEdgeIP

IP finance More reports

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

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

11 May 2016
IP management and market value: Steve Jobs was right

For senior management teams, the single most relevant and important piece of IP management is to build the right sort of organisation. It is your corporate DNA that will generate outperformance and allow you to manage your intellectual property for maximum effect. Full text

09 Mar 2016
Gene sequencing: the new battleground

Given the exponential growth in the genomics industry that is driving the global health system towards personalised medicine, the ongoing patent battle between the United Kingdom's great unicorn hope Oxford Nanopore Technologies and US rival Illumina is one that is worth winning. It is as much about who owns the future of gene sequencing as it is about a patent for an obscure bacterial protein. Full text

Daniel Advogados

Brazil More reports

05 Oct 2016
Patents in Brazil: Part 5 – current developments

The National Sanitary Surveillance Agency (ANVISA) has introduced a new workflow for pharmaceutical patent applications. Under the new process, pharmaceutical cases are sent directly to ANVISA for examination in order to deal with public health issues. ANVISA examiners determine whether an application poses risks to public health. Full text

28 Sep 2016
Patents in Brazil: Part 4 – prosecution and opposition

The grant or issue of a patent can be challenged by a third party within six months of the grant or issue date. A decision rendered by the patent examiner granting, rejecting or shelving the patent application may be appealed to the president of the Brazil Patent and Trademark Office. Full text

21 Sep 2016
Patents in Brazil: Part 3 – licensing

Licence agreements are subject to recordation at the Brazil Patent and Trademark Office (BPTO) in order to produce effects against third parties and whenever payment is remitted abroad. In the process of recording, the BPTO may provide limitations on which parties may agree. Full text

Gowling WLG Canada

Canada More reports Archive

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

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

23 Nov 2016
Federal Court reconsiders and confirms its earlier Chanel counterfeiting decision

As directed by the Federal Court of Appeal, the Federal Court has reconsidered its earlier Chanel S De RL v Lam Chan Kee Co decision, in which it held the defendants liable for trademark infringement arising from the offering for sale and sale of counterfeit Chanel goods. Full text

11 May 2016
Patent owner’s entitlement to permanent injunction confirmed

The Federal Court of Canada recently awarded a permanent injunction after a finding that the asserted patent was valid and infringed, notwithstanding that the plaintiff did not practise the claimed invention. This case confirms that a patent owner’s primary leverage in many patent cases – namely, the possibility of a permanent injunction – remains available in Canada, even where the patentee may not practise the patented invention. Full text

Wilkinson & Grist

China More reports

28 Sep 2016
Beijing No 1 Intermediate Court recognises IKEA marks as well known

The Beijing No 1 Intermediate Court recently granted well-known mark status to the trademarks IKEA and ?? (IKEA in Chinese) in Class 20 for furniture. As a result, the court held that registration of a similar mark in Class 6 for “safety cash box, metal containers, signboards of metal” by an unauthorised party should be refused. Full text

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

Wilkinson & Grist

Hong Kong More reports

05 Oct 2016
SHARPVIEW refused registration under law of passing off

Sharp Corporation of Japan recently successfully opposed the SHARPVIEW (figurative) trademark applied by an individual to, among other things, computer monitors, CCTV surveillance systems and colour surveillance cameras in Class 9. Full text

04 May 2016
Opposition to registration of SWISSBERNARD mark

The Federation of the Swiss Watch Industry FH recently failed in its opposition to the registration of the SWISSBERNARD mark by Ayoub in Class 14 for “horological and chronometric instruments”. Full text

16 Dec 2015
Patents bill making its way through the legislature

The Hong Kong government recently introduced the Patents (Amendment) Bill 2015 into the Legislative Council for first and second readings. The bill is intended to meet present-day standards for patent systems and to promote Hong Kong as a regional hub for innovation and technology. Full text

LexOrbis

India Archive

30 Nov 2016
The real meaning of 'efficacy'

Although efficacy was introduced into Section 3(d) of the Patents Act as a powerful testing tool for patentability to prevent evergreening, its definition has presented many challenges to applicants where therapeutic efficacy is expected for inventions or products unrelated to drugs. Full text

23 Nov 2016
Cost-cutting measures in commercial exploitation of patents in India

Commercial exploitation of patents is crucial for companies and research institutes, as significant costs can be incurred in prosecuting, maintaining and litigating patent portfolios. However, several provisions are available to reduce expenses when commercially exploiting patents in India. Full text

Jacobacci & Partners spa

Italy More reports

09 Nov 2016
The double identity of OSCAR: a trademark and a common term

The Supreme Court recently held that the trademark OSCAR was valid with respect to the film industry and thus gave its owner, the Academy of Motion Picture Arts and Sciences, exclusive rights in its use. However, the court also held that the trademark had become a common name in relation to other services – namely, teaching and performances in Class 41 of the Nice Classification. Full text

12 Oct 2016
Court of Cassation clarifies management of simultaneous validity and infringement proceedings

A recent Court of Cassation decision has affirmed the principle that when separate infringement and invalidity proceedings are pending simultaneously, the court managing the infringement action should stay those proceedings until conclusion of the validity action. Full text

10 Aug 2016
Claimed ranges and patent infringement under the doctrine of equivalents

In the recently published decision of Geratherm Medical AG v Gima SPA the Court of Milan ruled that patent protection for a numerical range of values cannot be extended under the doctrine of equivalents to cover a numerical value that falls even slightly outside that range. Full text

Shobayashi International Patent & Trademark Office

Japan Archive

30 Nov 2016
IP management theory is vital for effective growth strategy

To what extent can an agent (and a qualified person) be serviceable in planning an IP strategy? This report examines the idea of a 'qualified person' from the perspective of management theory, under the theme of the tools required to formulate IP strategy. Full text

NLO

Netherlands More reports Archive

23 Nov 2016
European Commission notice against patentability of plants does not affect European plant patents

The European Commission recently issued a notice regarding the patentability of plants and animals obtained by means of essentially biological processes. However, the commission’s notice is not legally binding; it is up to the courts and boards – not the commission – to interpret the law. Full text

19 Oct 2016
Illegal hyperlinks: the final decision

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

29 Jun 2016
Fate of Unified Patent Court after UK referendum

Now that the votes have been counted, it is clear that the UK electorate has voted to leave the European Union. No matter how the exit procedure goes, the situation will have a major negative impact on the realisation of the European patent package. Full text

Federis & Associates

Philippines

02 Sep 2015
IPOPHIL takes steps towards IP financing framework

The Intellectual Property Office of the Philippines (IPOPHIL) has taken initial steps towards enabling the monetisation of IP assets in the Philippines by holding the High-Level Forum on IP Financing. It is hoped that the forum and future IPOPHIL directives will help local rights holders to attract foreign investors into the country. Full text

22 Apr 2015
Philippines launches first online IP marketplace

The Intellectual Property Office of the Philippines has launched the country's first online IP marketplace. IP Depot is a digital platform which promotes IP assets for potential commercialisation opportunities. It was established to give owners of patented inventions, registered trademarks, copyright and industrial designs a forum to showcase their IP assets to the world. Full text

Allen & Overy A Pedzich Spk

Poland More reports

15 Jun 2016
Supreme Court ruling expected to increase cassation complaints filed by inventors

In a case brought by an employee-inventor for remuneration for the use of his invention, the Supreme Court recently held that the admissibility of a cassation complaint (ie, an appeal of last resort) depends on the value of the appeal provided for in labour law matters. Full text

08 Jun 2016
Poland allows full cumulative protection of industrial designs

An act introducing amendments to the Industrial Property Law, which came into force in December 2015, abrogated the restriction on cumulative protection of industrial designs by repealing Article 116 of the Industrial Property Law. This article excluded industrial designs for which registration rights had expired from copyright protection. Full text

13 Apr 2016
Poland rejects Swiss-type claims

The new Industrial Property Law introduced a long-awaited change in the rules regarding patent protection for second or further medical use of a known substance or composition, which aligns Polish patent law with the European Patent Convention and European Patent Office case law. Full text

Mikijelj Jankovic and Bogdanovic

Serbia

30 Nov 2016
Geographical indications in practice

With a population of around 8 million, Serbia has 68 registered geographical indications, mostly for agricultural products. A recent seminar entitled "Geographical Indications in Practice" highlighted some of the key issues surrounding the protection of geographical indications. Full text

Alpha & Omega Law Corporation

Singapore

29 Jun 2016
High Court has Yellow Pages’ number in copyright dispute over telephone directories

A recent High Court case has developed the law with respect to copyright protection for databases and the groundless threat counterclaim. It also illustrates how the 'creativity' approach should apply within the specific context of telephone directories, where there is no dichotomy between facts and expression. Full text

15 Jun 2016
Appeal court rules on AMC v AMC

The Singapore Court of Appeal recently upheld claims of trademark infringement and passing off filed by Audience Motivation against AMC Live. The court also held that AMC Live would not be entitled to the own-name defence with respect to the infringement claim. Full text

08 Jun 2016
Applying visual similarity principles to marks with dominant textual components

In a recent decision the hearing officer dismissed on all grounds an opposition filed by independent pet food company Pets Global Pte Ltd against a mark owned by specialist pet products supplier B2K Pet Products Pte Ltd. She found that the marks were not similar since they were not visually, aurally or conceptually similar. Full text

Keller & Partner

Switzerland

17 Aug 2016
Parallel imports of patented goods – applicable exhaustion regime

A recent Federal Patent Court decision considered the applicability of international patent exhaustion due to the subordinate significance of the patented features. It confirms that the requirements to avoid international patent exhaustion appear to be rather high, in particular with respect to complex products where most of the patent rights concern not the whole product, but rather only some component thereof. Full text

16 Mar 2016
GOLDBÄREN: protectability of non-distinctive trademarks based on existing registrations

According to a fundamental legal principle codified in the Constitution, every person is equal before the law. Similarly, comparable cases should be dealt with comparably. In a recent case the Federal Administrative Court allowed the registration of a trademark that it considered to be non-distinctive based purely on the existing registration of several other similarly non-distinctive trademarks. Full text

Formosa Transnational

Taiwan More reports

05 Oct 2016
Pokémon GO fever faces potential indirect patent infringement challenge

Before Pokémon GO fever hit Taiwan in August 2016, a small episode drew the attention of the IP industry and those who were eagerly awaiting the launch of Pokémon GO in Taiwan: a patent infringement claim filed against Niantic, Inc's other reality mobile game, Ingress. Full text

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

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

15 Jun 2016
Amendment to Personal Data Protection Act facilitates e-commerce development

The articles of the Personal Data Protection Act on obtaining written consent have caused considerable problems for personal data controllers in the online service industry. As a result, the law was recently amended to exempt data controllers from obtaining written consent in certain circumstances. Full text

Gün + Partners

Turkey More reports

09 Nov 2016
Is 4X4 equal to 8X4 under trademark law?

The Ankara Third Civil Court of Intellectual and Industrial Property Rights recently ruled on the confusing similarity between the well-known trademark 8X4 and the trademark FASHION 4X4. The court cancelled the Turkish Patent Institute's decision that the trademarks 8X4 and FASHION 4X4 were not confusingly similar under Article 8/1(b) of Decree-Law 556 on the Protection of Trademarks. Full text

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

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

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

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

Carpmaels & Ransford LLP

UK More reports

17 Aug 2016
Accelerating patent prosecution via the Green Channel

Early grant of a patent can be desirable not only for enforcement purposes, but also for businesses for which it is crucial to attract investors and secure funding. The UK Intellectual Property Office’s Green Channel provides an attractive route to early grant for patent applicants with inventions with environmental benefits. Full text

10 Aug 2016
De minimis – how low do you need to go?

What proportion of products must fall within the scope of the claims for there to be an infringement? Even if the number of infringements is not discounted as de minimis but is still small, what remedies may the court grant? Some answers were provided by a recent judgment giving the most detailed discussion of the de minimis principle by the English patents court to date.  Full text

03 Aug 2016
No jurisdiction over foreign designations of European patents where validity is also challenged

The High Court recently dismissed a request to hear an infringement action in respect of the German designation of a European patent. The High Court confirmed that where the validity of the European patent is called into question, the English courts have no jurisdiction to hear an infringement action in respect of a foreign designation, and careful drafting or re-drafting of the infringement action does not provide a way round this position. Full text

Baker Donelson

USA More reports

30 Nov 2016
You and your patent agent

The Supreme Court has held that the states may not prohibit patent agents from providing patent drafting and filing services. However, as recent cases show, the issue of whether a patent agent enjoys the full benefits of a patent attorney with regard to patent prosecution remains unresolved. Full text

23 Nov 2016
Prosecution history estoppel may restrict construction of more than just amended patent claims

The recent case of UCB, Inc v Yeda Research and Development Co, Ltd demonstrates the importance that prosecution history estoppel can have on claim construction. While the estoppel effect is generally understood with regard to claims that were actually amended during prosecution, the doctrine can also be used to reduce the breadth of other claims, even those that were not amended. Full text

16 Nov 2016
Supreme Court argues copyrighting cheerleader uniforms

The Supreme Court recently heard oral argument in Varsity Brands v Star Athletica. The question involved the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act. Full text

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Issue 81