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

05 Apr 2017
Do PAEs stifle competition? Recent FTC study leaves that question unanswered

The Federal Trade Commission recently undertook a study to assess the “competitive implications" of patent assertion entity (PAE) activity. Although the study makes a number of policy recommendations that touch on the competitive effects of PAEs, it remains silent as to whether certain PAE conduct does, in fact, stifle competition. Full text

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

Adapt IP Ventures LLC

IP valuations

01 Feb 2017
IP valuation for medical device innovations affected by US policy changes?

IP values within the medical device industry appear to be declining based on a study of identified licensing transactions and royalty rates. To improve IP value, licensors must focus on demonstrating product and technology value to differentiate their licensing opportunity from others on the market and to command higher royalty rates, better deal terms and potential multiple licensing opportunities. Full text

DANIEL Legal & IP Strategy

Brazil More reports

08 Mar 2017
Franchising in Brazil

Franchising in Brazil is governed by specific legislation. However, as a business that interacts with other legal areas, a network of regulations ? including the Industrial Property Law ? must also be observed. While the main thrust of these laws is to ensure a competitive marketplace, there are also significant provisions on protecting trade secrets and know-how. Full text

21 Dec 2016
Trade dress: a broad umbrella of protection

The Internet of Things allows objects to be sensed or controlled remotely across existing network infrastructure. As in any competitive market, original and innovative products or services – if successful – will attract unwanted attention from copycats, and a better understanding of how these can be protected by trade dress can thus be crucial. Full text

14 Dec 2016
New regulation encourages life sciences innovation

The Biodiversity Law provides for access to genetic heritage, protection and access to associated traditional knowledge and the sharing of benefits for the conservation and sustainable use of biodiversity. Access to genetic heritage is strategic for R&D, providing opportunities for competitive advantage in domestic and international markets. Full text

Gowling WLG Canada

Canada More reports Archive

12 Apr 2017
Protecting trade secrets using non-disclosure agreements

Recent US case law has raised the possibility that the common practice of including an expiry date in a non-disclosure agreement may lead to an inadvertent loss of trade secret protection. Full text

22 Feb 2017
Standout trademarks cases in 2016

While there were a number of developments in Canadian trademark law in 2016, of particular interest were decisions issued by the Federal Court with regard to punitive damages in counterfeit cases, the scope of rights in registered marks and how to determine the place of origin for a particular good. Full text

15 Feb 2017
Patent law: 2016 year in review

A wide variety of patent law issues were litigated and decided on in 2016. For instance, the Supreme Court considered the law of utility and the Federal Court of Appeal changed the standard of review in appeals of decisions of prothonotaries. In addition, various other key patent developments occurred. Full text

Liu, Shen & Associates

China

11 Jan 2017
An overview of trade secrets

An important form of intellectual property, trade secrets are increasingly attracting attention, particularly in regard to operational information such as customer lists and technical information in software. The protection of trade secrets mainly depends on the rights holder's desire to protect itself. Full text

Maikowski & Ninnemann

Germany

08 Mar 2017
The (high) value of second medical use patents: practical example

Second medical use claims can be of significant value for the patent owner, particularly when defining effectors of a medical target by their functionality. This report discusses the commercial value of second medical use claims based on an example from practice. Full text

08 Feb 2017
The (high) value of second medical use patents: legal background

Second medical use claims can be of high value for the patent owner, particularly when defining effectors of a medical target by their functionality. This report considers several questions raised by the definition of a compound in use claims. Full text

Vivien Chan & Co

Hong Kong

12 Apr 2017
Product-by-process claims

If the exact molecular structure and mechanisms of a drug pharmacology are not known at the time of patent application, the product can be described using process methodology, also known as 'product by process'. Full text

05 Apr 2017
Hong Kong adopts 11th Edition of the International (Nice) Classification

The Hong Kong Trademark Registry has now adopted the 11th Edition of the International (Nice) Classification for the specification of goods and services. Full text

29 Mar 2017
Cautionary tale involving letters of undertaking: Gap’s woes in Hong Kong

In a recent copyright infringement claim brought by Morn Creations Limited (MCL) against Gap Limited, the Hong Kong High Court examined the proper relief in copyright infringement cases where liability has been established. Full text

LexOrbis

India More reports Archive

12 Apr 2017
Continuing uncertainty over divisional patent system

At present, there is divergence between the letter and spirit of national and international legislation pertaining to divisional applications on the one hand, and the majority of adjudications carried out by the Indian Patent Office and the IP Appellate Board on the other. Full text

05 Apr 2017
Decrypting the legislative intent behind the software patents ban

Section 3(k) of the Patents Act proscribes the patentability of computer programs per se. This report decrypts the legislative intent behind this by examining the pages of history, particularly parliamentary debates and related events. Full text

15 Mar 2017
Section 3(d) of the Patents Act: interpretation continues to remain subjective

The government has recently taken several measures to strengthen the procedure of the IP offices and make them more transparent, including by amending the Patents Rules 2003 through the Patents (Amendment) Rules 2016, which set out the foundations for expediting, streamlining and strengthening patent protection in India to bring it into line with its global counterparts. Full text

Jacobacci & Partners spa

Italy More reports

05 Apr 2017
CLINIQUE: reputation alone may not cure trademark's inherent weakness

In a recently published decision the Court of Cassation held that although the trademark CLINIQUE was well known in the European Union, its reputation was insufficient to overcome the weakness of the trademark and its inherent lack of distinctiveness. Full text

01 Mar 2017
Chemical intermediates: patentability and infringement under the doctrine of equivalents

The Italian Supreme Court has had the final word on a long-running dispute between Industriale Chimica and Bayer, holding that a chemical intermediate is not necessarily patentable, even if it is novel, inventive and provided in a stable form. Full text

11 Jan 2017
Patronymic trademarks in the fashion industry: what’s in a name?

In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company's IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks? 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

05 Apr 2017
Bull fight finally yields a victor

After 14 years, the protracted legal fight between coffee shop The Bulldog and energy drink brand Red Bull is over, with The Bulldog coming out on top. But what can be learned from this case? Full text

29 Mar 2017
Naturalis must halt refurbishment on grounds of architect’s copyright

In recent interlocutory proceedings a judge ordered Naturalis, a museum in Leiden, to stop the refurbishment of its building. The building's architect had opposed the refurbishment on the grounds of his copyright in the original design. Full text

01 Feb 2017
Can a vegan schnitzel be called a schnitzel?

Vegetarian meat substitutes often bear the name of the meat product that they are replacing – for example, schnitzel, sausage roll or chicken kebab. In the Netherlands, politicians are debating these practices and considering how to stop this misleading use of meat names. 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

Gowling WLG

Russia

12 Apr 2017
New proposed Eurasian trademark system

At a recent International Trade Association in Russia roundtable event on parallel imports and IP rights, Deputy Head of the Eurasian Economic Commission Sergei Shurygin confirmed that the Eurasian Economic Union intends to move forward with plans to introduce a new Eurasian regional trademark. Full text

08 Feb 2017
Parallel imports sneak into Russia through procedural loophole

Until recently, while customs officials did not seize parallel imports, they did detain them for at least 10 days – which was enough time for the brand owner to file an infringement action and request a preliminary injunction in the Commercial Court. However, the new 30-day pre-litigation rule means it is no longer possible to freeze parallel imports at the border. Full text

07 Dec 2016
LinkedIn unlinked in Russia

At present, LinkedIn is blocked in Russia. The case is one of the first to drive home the extent to which Russian authorities are ready to enforce the new data localisation provisions against brand owners, particularly against those which operate websites that are accessible in Russia without having a physical presence there. Full text

Mikijelj Jankovic and Bogdanovic

Serbia

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

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

Formosa Transnational

Taiwan More reports

29 Mar 2017
Supreme Court confirms audit report qualified basis to claim royalty

The Supreme Court recently affirmed the IP Court’s judgment at appellate level, allowing a patent owner and licensor to claim for underpaid royalties based on an audit report conducted with the licensee’s consent, even when such an audit report did not follow the audit procedure required in the licence agreement. Full text

15 Mar 2017
TIPO to relax restrictions on post-grant amendments and online evidence

Post-grant amendments and invalidation procedures are two of the hottest topics in Taiwanese patent practice. In order to comply with principles developed by the IP Court, the Taiwan Intellectual Property Office recently made several amendments to the Patent Examination Guidelines for Post-Grant Amendments and Invalidation. Full text

01 Feb 2017
Supreme Administrative Court broadens ex officio powers for prior art investigations

The Supreme Administrative Court recently held in a patent invalidation case that the court should consider only the invalidation reasons and evidence submitted by the party petitioning for the invalidation action. The court further held that if the original evidence is insufficient, the court may ex officio investigate auxiliary or supporting evidence related to the original evidence based on the public interest.  Full text

Gün + Partners

Turkey More reports

22 Mar 2017
Direct applicability of European Patent Convention while invalidation actions pending

Article 138/3 of the European Patent Convention is inconsistent with Turkish national patent law, so the IP courts and the Turkish Patent and Trademark Office previously refused to apply Article 138/3 in national invalidity proceedings. However, recently the Istanbul IP Court applied Article 138/3 and accepted claim limitation in national proceedings. Full text

01 Mar 2017
Patent and utility model prosecution under the new Industrial Property Law

The new Industrial Property Law is now in force with new provisions to encourage filing national applications before the Turkish Patent and Trademark Office by setting out a standardised procedure which can be completed in a shorter timeframe. Full text

01 Feb 2017
Compulsory licensing provisions of new industrial property law

Article 129 of the new Law on Industrial Property Rights lists six circumstances where a compulsory licence may be granted. Although the new law is to be welcomed, it appears that for patent holders, Article 129 on compulsory licensing may be particularly problematic and, to some extent, unfair. Full text

Carpmaels & Ransford LLP

UK More reports

12 Apr 2017
Unwired Planet v Huawei – essentially fair?

The lengthy, long-awaited judgment in Unwired Planet v Huawei Technologies, which has just been released, provides guidance on the determination of fair, reasonable and non-discriminatory royalty rates for standard-essential patents on a worldwide basis. Full text

15 Mar 2017
Yes, it matters – but it’s not all about size

The Court of Appeal has upheld the decisions of the High Court and the UK Intellectual Property Office (UKIPO) that Professor Shanks, an employee of Unilever, was not entitled to inventor’s compensation. The appeal court dismissed Shanks’ further appeal against the UKIPO rejection of his multi-million pound claim for inventor’s compensation against his former employer in respect of patents which he claimed to be of “outstanding benefit” to Unilever. Full text

15 Feb 2017
Enlarged Board of Appeal rules on partial priority

A new decision from the European Patent Office (EPO) Enlarged Board of Appeal marks a radical change in the EPO’s approach to assessing priority entitlement. The decision resets the EPO’s approach to assessing priority in the situation where only some parts of the claim are entitled to priority – a concept known as 'partial priority' – making it much easier for a claim to benefit from partial priority. Full text

Baker Donelson

USA More reports

12 Apr 2017
Standing required to assert co-inventorship of patents

The US Court of Appeals for the Federal Circuit recently held that a woman asserting that she should be listed as a co-inventor on nine patents lacked standing because she had no economic interest in obtaining co-inventor status. The plaintiff had assigned her interests in the patents to her holding company and was subsequently divested of any interest in the company. Full text

05 Apr 2017
PTAB: public universities immune to inter partes review

Three administrative patent judges of the US Patent and Trademark Office Patent Trial and Appeal Board recently entered an order dismissing multiple petitions for inter partes review of patents owned by the University of Florida Research Foundation based on sovereign immunity. Full text

29 Mar 2017
Supreme Court rules that laches is not a defence for patent damages

The Supreme Court recently held that the doctrine of laches cannot bar a claim for damages in patent infringement cases. The decision reverses a Federal Circuit Court of Appeals decision and substantially increases the ability for patent owners to obtain damages for patent infringement. Full text

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Issue 83