IAM Innovation & Invention Yearbook 2021

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The Innovation & Invention Yearbook 2021 has become an indispensable guide to global IP management and monetisation,delivering shrewd analysis of the most pressing legal and commercial developments affecting intellectual property. Thisyear’s edition is no exception, with chapters covering a wide variety of highly relevant issues – from the impact of electric vehicle technologies, royalty rates in the licensing of standard essential patents, the European perspective on supplementary protection certificates, and how to build the ideal patent portfolio. As ever, there’s a distinct international feel to this year’s edition with insight from major markets such as India, Turkey, China and Russia. IP owners of all shapes and sizes, as well as other members of the stakeholder community, will benefit from the insights showcased in this handy volume.

We take pride in our commitment to the highest quality standards of publication; as such, only those firms and organisations with distinguished expertise and track records were invited to contribute to the Innovation & Invention Yearbook. Forgoing unnecessary technical jargon, it provides senior executives and practitioners with easily accessible and pragmatic guidance on strategic considerations to maximise returns on intellectual assets and optimise IP rights administration.

We wish to thank all of the contributors for their hard work on this project, and hope that you find the yearbook a valuable addition to your resources.

Richard Lloyd

Editor, IAM

[email protected]

@IAM_magazine

Articles

Foreword

European Patent Office
As we move towards a new business environment shaped by covid-19, this is a time when ingenuity, research and inventions are needed more than ever.

International

FRAND royalty rates in SEP licensing: comparable licence agreements

Berkeley Research Group LLC
Determining FRAND royalty rates in SEP portfolio licensing has become a widely discussed topic in recent years as mobile phone standards have rapidly evolved and an increasing number of handset manufacturers have entered the mobile handset market.

Calm before the storm: the IP impact of electric vehicle technology

Brion Raffoul LLP
The past predicts the future What does an old, obscure Danish phone patent have to do with electric vehicles? Nothing and everything.

Understanding compulsory licensing: a global overview

ClarkeModet
The objective of patent law is, on the one hand, to stimulate innovation in order to favour economic and technological development and social welfare.

Quality or quantity – defining and building the ideal patent portfolio

McAndrews, Held & Malloy Ltd
Strategically effective patent portfolio development and management is vital to the financial success of any company, particularly technology companies.

Europe

Securing software patents through the EPO

Kuhnen & Wacker
There is no doubt that in recent decades the patent system has turned from almost exclusively patenting hardware to progressively patenting software.

Recent amendments to the SPC Regulation

Maiwald Patentanwalts- und Rechtsanwaltsgesellschaft mbH
In the life sciences industry, patent protection for innovative medicinal products is pivotal to the commercial success of new drug products.

New rules of procedure for EPO Boards of Appeal – amending claims in appeal

NLO
Since 1 January 2020 the Rules of Procedure of the Boards of Appeal of the EPO have become stricter.

Life sciences patentability issues in Europe

Weickmann & Weickmann Patent und Rechtsanwälte PartmbB
In the fields of molecular biology, pharmaceutics, diagnostics and medical technology, great efforts have been made in research and development for strategies to fight covid-19.

Risks and rewards of trade secrets in Europe

Zacco
Until recently, trade secrets were, apart from a few exceptions, often overlooked in favour of patent rights in terms of the value that they contribute as IP assets.

Country by country

Key steps to developing a successful licensing programme

TechInsights
Mounting an eff ective licensing programme comes down to planning – ensuring patent validity, verifying that there is value in what you are asserting, fi nding credible evidence of use, and much more.

An exploration of whether a trademark constitutes confusion

Chang Tsi & Partners
China’s Trademark Law was substantially amended in 2013 and entered into effect in May 2014. Article 57(2) of the amended law has added the new expression “which may cause public confusion” to the original criterion for determining trademark infringement, affirming that “using a trademark that is identical with or similar to a registered trademark in connection with the same or similar goods may constitute infringement”.

Second medical use claims in pharmaceutical patents – sharp sword or toothless tiger?

COHAUSZ & FLORACK
Discovering a previously unknown indication for a known drug is a common pattern in pharmaceutical research and development. Perhaps the most widely known example for the repurposing of a known drug is acetylsalicylic acid, also known as aspirin.

Patenting monoclonal antibodies in India – evolving law and practice

Remfry & Sagar
As eff orts continue to fi nd an eff ective treatment and vaccine for covid-19, monoclonal antibodies have been at the forefront of research with reportedly more than 100 covid-19 antibody treatments at various stages of clinical trials – some designed solely to deal with secondary eff ects of SARS-CoV-2 (eg, infl ammation), while others are designed to destroy the virus itself.

Copyright infringement – music lesson or public performance?

Sueyoshi & Sato
IP infringement can affect our daily lives in surprising ways.

Conflicting patents in Russia

Sojuzpatent
Patents with different priority dates do not often confl ict, but when they do, it creates considerable uncertainty for the patent owners.

Patents – try Taiwan for high quality and low cost

Deep & Far
In the past 30 years, Taiwan’s economic achievements have resulted in a rise in gross national income from US$9,372 in 1991 to $27,867 in 2019 – an average compound growth rate of about 3.8%.

SEPs – enforcement and possible remedies

Deris Attorney-at-Law Partnership
The debate over finding a concrete legal framework for the enforcement of SEPs was one of the hot IP topics of 2020.

Functional claiming in the aftermath of Williamson

Reising Ethington PC
On 16 June 2015, the US Court of Appeals for the Federal Circuit issued an en banc opinion in Williamson v Citrix Online LLC, 792 F.3d 1339 with a seemingly subtle change in means-plusfunction claim analysis.