IAM Yearbook 2019

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A guide to IP strategy and monetisation, and the global legal framework within which they occur.

Monetisation and strategy

Using patent information for organisational decision making and forecasting

Patinformatics LLC
Patent landscape reports support informed decision making and are designed to efficiently address the concerns associated with making high-stakes decisions in technologically advanced areas with maximum confidence.

Succeeding in today’s patent monetisation environment

Prince Lobel Tye LLP
The downturn in the secondary patent market has been well documented. Beginning in 2006 with eBay v MercExchange, legislative and judicial patent reforms weakened the asset class and disrupted the burgeoning patent monetisation ecosystem that had flourished in the early 2000s.

International

Trademark registration of works of art in public domain – reasonable grounds for rejection?

Zacco
In 2005 the Danish Patent and Trademark Office (DKPTO) received approximately 50 trademark applications consisting of works of art for which copyright protection had expired.

Europe

SEPs in German courts: implications of the largest joint development processes ever

COHAUSZ & FLORACK
The owner of a patent may, among other things, prohibit any third party from using its patented invention. This injunctive relief is intended to reward the owner for having invested in the development of the invention, and is a powerful weapon against competition.

Latest EU trademark developments

GLP Intellectual Property Office
On 1 October 2017 a new reform introduced important innovations in the field of EU trademarks. The modifications affected the graphical representation and identification of specific types of trademark, the introduction of certification marks and procedural changes.

Diagnostic methods – establishing infringement of offshore steps by narrowing claims

Maiwald Patentanwalts- und Rechtsanwaltsgesellschaft mbH
When embarking on litigation against competitors, most patent practitioners would say that it is better to have broad claims as a basis to work on.

Life sciences patentability issues

Weickmann & Weickmann PartmbB
Patenting inventions in the life sciences field is fraught with challenges. As well as scientific and technological complexities, there are also legal issues to consider.

SEPs in the automotive sector

Wildanger Kehrwald Graf von Schwerin & Partner mbB
In recent years there has been an abundance of litigation regarding standard-essential patents (SEPs) in the telecoms sector worldwide, commonly known as the ‘smartphone wars’.

Artificial intelligence: a game changer for the patent system

Zimmermann & Partner
With the advent of powerful computers and the availability of unlimited storage capabilities, artificial intelligence (AI) has made its way into mainstream applications – heralding the fourth industrial revolution.

Country by country

Patenting in Brazil

Luiz Leonardos & Advogados
The Brazilian National Institute of Industrial Property (INPI) has been facing an application backlog problem for a long time.

Turrialba cheese: a tasty designation of origin

Eproint
Geographical indications have allowed for trademark protection within numerous multilateral, bilateral and regional trade agreements.

China’s innovation rise – patent landscape review and outlook

AWA Asia
For the first time in 11 years China broke into the world’s top 20 most innovative economies in the Global Innovation Index for 2018.

Patent litigation in France: the effective way of adducing evidence

Santarelli
Having a portfolio of well-drafted patents is essential, but when it comes to litigating them, the efficiency of the legal system is equally important.  

IP enforcement in Germany: significant recent court decisions

Krieger Mes & Graf v der Groeben
Numerous recent court decisions have had an impact on IP enforcement in Germany. This chapter is a summary of some of the most significant court decisions.

Unified Patent Court: Constitutional Court decision allows Hungarian SMEs more time to prepare

SBGK Attorneys at Law and Patent Attorneys
On 29 June 2018 the Constitutional Court of Hungary published its decision on how to interpret the relevant rules of the Constitution regarding the ratification of the Agreement on a Unified Patent Court.

Are we ready for AI disruption? An Indian patent law perspective

Remfry & Sagar
The earliest foray into the realm of artificial intelligence (AI) arguably took place in 1956, during a summer workshop at Dartmouth College.

Industrial property renewed in Mexico: risks and challenges for applicants and practitioners

Becerril, Coca & Becerril, SC
The year 2018 will be remembered as the time in which the Mexican industrial property system underwent its most significant changes in nearly 25 years.

Anything that can go wrong, will go wrong: Romania in the spotlight

Rominvent
The new EU trademark legislative reform has affected certain areas of EU Intellectual Property Office (EUIPO) practice.

Employee inventions and designs under new IP Code

Deris Patents and Trademarks Agency AS
Employee inventions and designs are one of the main areas of intervention of the new Code of Industrial Property 6769. The new code substantially modifies the now repealed Decree-Law 551/1995 on Patents and Utility Models.

Key IP developments in the United Kingdom

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
UK patent decisions had a big year in 2017, most notably with the Supreme Court decision Actavis v Eli Lilly ([2017] UKSC 48).

Patent damages in US courts: overview of current state of play

Analysis Group
In June 2018 the US Patent and Trademark Office (USPTO) issued its 10 millionth patent. It took seven years to grow from 6 million patents (in 1999) to 7 million (in 2006), but it took only three years to go from 9 million (in 2015) to 10 million (in 2018)

US trademark law developments

NLO
The past few years have seen many significant cases and legal developments in US trademark law. This chapter summarises a number of recent cases that all trademarks owners should be familiar with and understand.

Patent confidential – on-sale bar and secret sales in America Invents Act era

Reising Ethington PC
Few areas of US patent law have left stakeholders as aimless in recent years as the on-sale bar and its application to commercial sale activities that are under confidentiality restrictions and lack public availability.

Global patent litigation strategy

SpencePC
We live in an increasingly ‘flattened’ world. Globalisation continues to expand supply chains and markets outside the United States, connecting countries in ways never imagined.