Market Insight

Updates 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, dealmaking and valuation.

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India

07 SEPTEMBER 2022

An unwelcome bend in jurisprudence for patent composition claims?

A recent judgment from the Delhi High Court emphasises procedural irregularities and denial of principles of natural justice resulting from the controller issuing a non-speaking order in a case involving non-patentable subject matter.

31 AUGUST 2022

Protection of personal data – the journey starts again

The Indian government has recently withdrawn the Data Protection Bill as a result of recommended changes made by the Joint Parliamentary Committee. This followed opposition from various stakeholders in relation to numerous provisions of the bill.

24 AUGUST 2022

The rise of EV patents in India

IP filings in EV-related technologies will likely see a rapid increase to keep pace with the expansion of the sector, and will be critical both in reducing carbon emissions and in powering economic growth.

IP transactions

31 AUGUST 2022

Why the Unitary Patent is not uniform and how this will affect patent transactions

With the inauguration of the UP regime in 2023 and the effects that it will have on patent transactions and deals, companies should be up to speed on which national law will apply to their granted UPs and whether they would benefit from restructuring their European operations.

27 JULY 2022

Be proactive about IP ownership

Employees are not necessarily always renumerated for their patented or patentable inventions. Therefore, employers are advised to take a number of steps to avoid disruptive issues over the ownership of intellectual property created by their employees.

20 JULY 2022

Patent ownership when your R&D staff depart

IP transactions face difficulties when inventor employees leave a company, raising questions as to whether their inventions are owned by the company. Often, the type of employee and the jurisdiction in question are key factors.

Scandinavia

31 AUGUST 2022

Economic implications of the UPC for Scandinavia and beyond - part 2

The launch of the new UPC will introduce markedly different changes to the patent landscape, but there are still many unknowns. Possible developments include increased opposition proceedings and third-party observations.

01 JUNE 2022

Why joining NATO could boost intellectual property in the Swedish and Finnish defence industries

Neither Sweden nor Finland are currently members of NATO, but joining and subsequently entering the agreement to safeguard the secrecy of inventions related to defence would give domestic defence companies access to new markets.

11 MAY 2022

Economic implications of the UPC for Scandinavia and beyond

While the broader implications of the introduction of a single European court tasked with handling patent matters are not yet clear, a look at the bigger picture suggests that demand for patent litigation looks set to increase.

Taiwan

24 AUGUST 2022

Enforcement rules of Taiwan’s Patent Act to be amended

Revisions to the rules will have the effect of simplifying procedures for recordation of pledges, as well as relaxing applications for re-issuance or renewal of patent certificates.

10 AUGUST 2022

Taiwan amends Copyright Act in set-up-box crackdown

The amendment aims for a hard line to be taken against illegal use of STBs, in a bid to protect copyright owners and prevent copyright infringement.

03 AUGUST 2022

Judicial Yuan announces draft amendments to the Intellectual Property Case Adjudication Act

New amendments encompass 40 new articles, alongside revisions to 41 others. They aim to enhance protection of trade secrets and strengthen communications between the IP Court and the IP Office, among other goals.

Turkey

24 AUGUST 2022

General Assembly of the Court of Appeal reaches milestone decision on patentability of second medical use claims

In ruling on the patentability of second/further medical use patents in Turkey, the court has brought to a close years of debate on the validity of second medical use patents granted by the EPO before the EPC 2000 amendments.

10 AUGUST 2022

Bolar-like hurdle for generics

The judgment of the Ankara IP court in a case involving a marketing authorisation application demonstrates that an exemption similar to the so-called Bolar exemption can apply to Gx pharmaceutical companies.

30 MARCH 2022

A fairer way to determine royalties in Turkish compulsory licensing

If compulsory licensing is used in Turkey, it is imperative that the individual requirements of each case are considered. This is especially important when it comes to facilitating access to medical treatments for covid-19.

China

24 AUGUST 2022

Limitation of goods or services for trademark registration in China

Brand owners are advised to weigh up their business needs when deciding whether to file a national application with the CNIPA or for international registration through the Madrid Protocol (designating China).

27 JULY 2022

Creating consistency across civil and invalidity actions involving a single design patent

A case in China involving a leading toy brand operator demonstrates the importance of employing consistent criteria when assessing the similarity of patent designs during infringement and invalidation proceedings.

20 JULY 2022

Qingdao IP Tribunal clarifies the criteria of exhaustion in cases of product modification

The ruling in a civil suit against Wuxi Smile IoT Ltd establishes that, when considering whether modified genuine products constitute trademark infringement, whether the alleged acts are detrimental to a trademark owner’s legitimate rights is the key issue.

UK

27 JULY 2022

Lego’s EU design registration benefits from modular system exception

The EUIPO has ruled that Lego’s brick design is solely dictated by technical function, but being part of a modular system saves it from invalidation. It remains to be seen whether other products will turn to the modular system exception.

25 MAY 2022

How to approach patenting innovation around digital biomarkers

It is essential for practitioners to be aware of the main areas of focus for patent protection for digital biomarkers and their correlations to specific medical conditions, to ensure that any resulting protection helps to deliver enhanced treatment and diagnosis of a range of medical conditions.

23 MARCH 2022

Three reasons why patent applications for applied AI inventions do not succeed at the EPO

For an application to enjoy success at the EPO, it is vital that it fulfils the technicality, sufficiency and plausibility requirements. It remains to be seen whether the latter will play a greater role during assessment

IP analytics

01 JUNE 2022

Who is leading the 5G patent race?

Licensing of 5G SEPs promises to become a highly lucrative market, making the 5G patent race more competitive than ever before – although the latest 5G patent data shows that the question of who is currently winning it remains unclear.

06 APRIL 2022

How standards and SEPs can help the move to a post-carbon economy

The advances of the latest technology standards can be leveraged to help mitigate the pressing issue of climate change. Standards generations such as 5G and WiFi 6 can help to track and identify our carbon footprint and help us lower energy usage and emissions.

16 MARCH 2022

Analysis of patents, SEPs and standards in the smart healthcare sector

Smart healthcare is set to inaugurate radical changes in the diagnosis and treatment of patients. A deep dive into patent filings, SEP declarations and standards contributions that describe a smart healthcare application provides a compelling snapshot of this growing area

Patent Outsourcing: Outsourcing IP tasks

04 MAY 2022

To World IP Day and beyond: how patents helped save Toy Story and inspire the next generation of filmmaking

A sound patent outsourcing strategy proved crucial in Pixar’s drive to complete the production of Toy Story, paving the way for its unprecedented success.

28 JULY 2021

The benefits of outsourcing patent activities for life science companies in a changing IP landscape

As life science companies reassess their IP strategies in the wake of covid-19, outsourcing patent research and analysis could be an ideal solution to issues associated with patentability and patent cliffs.

12 MAY 2021

Outsourcing for IP professionals: benefits, ethics and risk management

When it comes to outsourcing intellectual property, there are a number of aspects to take into consideration. In particular, IP professionals need to stay alert about the rules governing fee splitting.

USA

20 APRIL 2022

How to reduce the number of Alice-based rejections

Tightening up the Step 2A, Prong One analysis under Alice promises to create enhanced clarity and decreased uncertainty in the category of economic practices and principles. Parallels can be drawn with the increased certainty in patent examination achieved by the Berkheimer decision and its associated memorandum.

30 MARCH 2022

The long reach of Alice and a potential solution to abstract idea rejections

Patent claims related to economic practice continue to be rejected under the Alice sub-category. However, a simple three-part test could help to introduce fairness and stability.

15 DECEMBER 2021

Trademark Modernisation Act rules usher in big changes for brand owners

US trademark owners will have fresh options for expunging, re-examining and cancelling trademarks once key provisions of the Trademark Modernisation Act come into effect later this week. While the changes are designed to encourage a more efficient registration process, they are a significant shake up to the existing regime.

Belgium

13 APRIL 2022

Extrajudicial admissions: can everything you say be used against you?

In Belgium, no specific provisions exist regarding the admissibility of extrajudicial admissions in court proceedings relating to patents. However, case law shows that the courts will take extrajudicial admissions into account and that it can be difficult for parties to take back such statements.

06 APRIL 2022

How to avoid language barriers when filing patent applications in Belgium

Belgium has a complex institutional system in which the use of official languages is sometimes at the heart of public debate. While the Laws on the Use of Languages in Administrative Matters still play an important role in the lives of Belgians, what are the legal consequences of these laws for Belgian patent applications?

30 MARCH 2022

Measures to enforce Belgian patent rights in court

Civil proceedings can be a formidable option for patent owners to uphold their rights. A range of options, all of which have the goal of matching the damages and the compensation for a rights holder with an infringed patent, means that there is plenty to consider when developing an IP strategy for Belgium.

Greece

06 APRIL 2022

Why stronger IP provisions in EU free trade agreements are needed

The introduction of more effective provisions in free trade agreements promises to give a boost to EU economies, including that of Greece. This is especially pertinent in light of the number of employees working in IP-intensive sectors.

Poland

16 MARCH 2022

Supreme Court ruling on remuneration for employee inventions creates more uncertainty

A Supreme Court judgment opens the door to employee claims for additional remuneration against entrepreneurs who exploit their inventions – irrespective of whether a patent was granted. However, it also contradicts previous case law, making the situation less clear than ever

12 JANUARY 2022

Supreme Court dispels doubts about statute of limitations for claims arising from industrial property infringements

A fresh ruling involving the systematic infringement of an EU trademark appears to have ended the debate on continuous infringement in Poland – and could also have big implications for patent holders.

27 OCTOBER 2021

IP litigation in Poland is now (almost) completely remote

Remote hearings have become a mainstay in Polish litigation. A rundown of the current rules on IP litigation and how cases are being heard in the common courts, administrative courts, Polish Patent Office and at the Supreme Court provides an invaluable snapshot of the current system.

Russia

02 MARCH 2022

New Russian legislation may enable more individuals to own trademarks

Russia’s government has issued a bill that seeks to broaden the grounds of eligibility for trademark applicants. In doing so, it is hoped that this will enshrine a measure of equality in the registration process

23 FEBRUARY 2022

Russian Supreme Court rejects Gilead’s decree challenge

In a closely watched case, the Supreme Court has upheld the Civil Code’s prioritising of people’s lives and health during the covid-19 pandemic, over profits lost to patent owners

16 FEBRUARY 2022

Lawful use of warning symbols is advised for trademarks registered in Russia

Trademark symbols enjoy many positives, namely in underlining the attractions of a particular product. However, they ought not to be used with unregistered marks, because there is a risk that doing so will misinform consumers

IP corporate finance

24 MARCH 2021

IP litigation risk played a big part in completed SPAC transactions in 2020 – a breakdown by industry

Part two of this deep dive into special purpose acquisition companies examines the companies and industries that have faced the most IP risk both before and after these financing agreements.

17 MARCH 2021

How intellectual property is featured in the success of SPAC transactions in 2020

Last year saw a swift increase in merger transactions between target operating companies and special purpose acquisition companies (SPACs). Examining the IP positions of companies that executed SPAC-led transactions in 2020 can offer crucial insight into where they went right.

India

13 JANUARY 2021

Commercialising a pandemic – how to balance patents and public health emergencies

Indian law could be the key to finding a happy medium between the interests of patent-owning pharmaceutical companies in developed countries and the needs of the public in developing countries.

16 DECEMBER 2020

The Indian IP office’s approach to DNA patenting reveals grey area around gene patents

Intellectual Property India’s decisions on gene patents highlight the need for greater clarity in this area. Although gene modification is an intensely debated issue across the world, the Indian Patents Act should be updated to reflect this area of innovation.

25 NOVEMBER 2020

New medical device regulations may affect patent filings for medical device inventions in India

India boasts a rapidly expanding medical devices sector and is adapting its legislation to accommodate this. However, those looking to file patents for medical devices in this country must be aware of certain aspects of the new regulations.

IP management

06 JANUARY 2021

How Gilead is effectively managing past intellectual property and covid-19 anti-viral clinical trials

As covid-19 vaccines are being rolled out, many entities are expanding on their past patent portfolios as R&D increases in this sphere. But what does this mean for effective IP management?

16 DECEMBER 2020

How companies are leveraging existing anti-viral drug patents for covid-19 treatments

In the race for covid-19 treatment and prevention, many entities are growing their patent portfolios as R&D increases in this sphere. But what does this mean for effective IP management?

02 DECEMBER 2020

The queen's gambit – integrating a diligent Japanese prior art search into your plan can be a game changer

Getting the most out of a manual prior art search can require considerable effort but a thorough job can pay substantial dividends – as evidenced by a case involving Japanese prior art.

IP technology

11 NOVEMBER 2020

How semantic search/automated patent analysis tools can save researchers time

Semantic searching delivers results based on the concept within keywords rather than exact matching, using AI to predict and understand the contextual meaning of query phrases. Such searches can lead to significant time and cost savings and can help researchers to zero in on a final list of potentially relevant prior arts

28 OCTOBER 2020

Automated proofreading tools are the key to submitting the perfect application

Proofreading can be an arduous, time-consuming task. In order to avoid errors in patent applications, which may slow down the grant process, applicants and IP professionals should consider using an automated proofreading tool.

21 OCTOBER 2020

Why software illustration tools can be key to securing patent grants

Illustrations are a key part of patent applications. New software tools and searches can thus be key for helping illustrators provide the best possible visual representations of inventions.

Macau

29 APRIL 2020

Courts speak out against tough stance on patent extensions

Patent applications and patent rights issued by the China National IP Administration (CNIPA) can be extended to Macau. However, the Macau Economic Services Bureau currently rejects extension applications if certain documents are missing and does not allow applicants to resubmit with these omitted papers – a position that has been criticised by the Macau courts.

IP managing innovation

04 MARCH 2020

R&D ambidexterity: a way to manage discontinuous changes

In order to survive discontinuous change, companies must develop an ambidextrous strategy, which means efficiently exploiting their existing capabilities while also exploring avenues for innovation.

12 FEBRUARY 2020

How cannabis companies are using cross-industry innovation to solve their R&D issues

Patent data can help R&D teams to gain significant insight into parallel industries, which they can use to accelerate their research. The cannabis industry is one domain where this is the go-to strategy for many companies.

29 JANUARY 2020

Fresh ideas for hiring the right people for consistent quality innovations

The key to outshining competitors is to not just lead but to lead by invention. While innovation can put a company a mile ahead, invention will take it as far as it wants to go. This is where hiring the right people comes in.

Italy

20 NOVEMBER 2019

Game over for Rubik’s Cube: shape not protected as a trademark, General Court says

The EU General Court has confirmed the cancellation of the 3D trademark registration for the Rubik's Cube, stating that it simply consists of a shape intended to obtain a technical result.

06 NOVEMBER 2019

Supreme Court rules that Italian patent can survive when parallel European patent is rejected

Clarifying previous case law, the Supreme Court has stated that when two semi-identical European and Italian patents exist for the same invention and the European patent is rejected by a final decision, Italian courts are free to ignore the European decisions and conclude that the Italian patent remains valid under Italian law.

02 OCTOBER 2019

The clock is ticking: old collective marks must be converted before 23 March 2020

Legislative Decree 15/2019 has significantly reformed collective and certification marks in Italy. Owners of collective marks registered under the old law should act quickly or they will lose their rights.

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