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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IP transactions

New 26 JANUARY 2022

Licensing considerations for global companies in China

Parties intending to sign licensing agreements in China should be aware of issues that can create obstacles during this process. While licensing can successfully prevent patent infringement claims, both licensor and licensee should be confident about the terms of the agreement.

Taiwan

New 26 JANUARY 2022

Amended accelerated examination programme comes into effect

The recently modified programme looks set to be more relevant to green technologies than was previously the case, as well as a useful tool for those pursuing a flexible prosecution strategy.

19 JANUARY 2022

Impending amendments set to rewrite Taiwan’s copyright regime

The amended Taiwanese Copyright Act, once passed, will have a transformative impact in introducing greater flexibility with regard to the economic rights of a work. It will also change the ways in which content is broadcasted.

12 JANUARY 2022

Copyright decision highlights the commercial hazards of using orphan works

Taiwan’s top court has clarified the scope of compulsory licensing in an attempt to safeguard consumers from becoming involved in copyright infringement disputes further down the line.

Turkey

New 26 JANUARY 2022

Istanbul IP Court reaches landmark decision on precautionary injunction

The IP Court’s most recent ruling emphasises the importance of granting a precautionary injunction before the release of a Gx product, to prevent incurable price cuts against pharmaceutical patents.

19 JANUARY 2022

Turkish court issues preliminary injunction to prevent infringement of pharmaceutical products

Currently, the Turkish Medicines and Medical Devices Agency does not investigate whether drugs supplied from abroad infringe patent rights. However, a recent case provides useful guidance for the steps to be taken, where such infringement occurs.

12 JANUARY 2022

Vaccine patent rights - a scapegoat for inequality?

The unequal dissemination of covid-19 vaccines remains controversial, yet while a proposed IP rights waiver might enhance global access to affordable vaccines, it remains unlikely that it would provide a solution to the unequal rollout.

China

New 26 JANUARY 2022

Supreme People’s Court publishes 28th batch of guiding cases

The latest set of guiding cases from the Supreme People’s Court are striking for all involving different aspects of IP law.

19 JANUARY 2022

Supreme People’s Court issues fresh guidance on the technical field of prior art utility models

A longstanding legal battle between a Chinese machinery company and a patentee – starting with an invalidation request, and ending at the Beijing High Court – is forcing the government to answer questions around the classification of the technical field of a prior art.

12 JANUARY 2022

Supreme People’s Court reaches first administrative decision on GUI design patent infringements

A fresh case reaffirms that the general principles employed in design patent infringement assessment also apply to GUI designs.

Brazil

19 JANUARY 2022

Phase III of the PPH programme comes into effect

Brazil has consolidated its effective Patent Prosecution Highway strategy by extending the number of applications that can be submitted to the National Institute of Industrial Property.

12 JANUARY 2022

Brazil starts 2022 with a fresh national IP strategy

The long-awaited 10-year strategy, which is designed to improve the IP system in Brazil with the civil and governmental support, has finally come into force.

24 NOVEMBER 2021

Phase II of Brazilian PPH hits its limit

Brazil has enjoyed consistent success with PPH programmes, as evidenced by Phase II of the programme starting and finishing considerably earlier than anticipated.

UK

12 JANUARY 2022

Unitary patent promises a cheaper alternative for life sciences companies

The new unitary patent system is finally due to come into effect this year and looks sets to be more cost-effective for life sciences innovators. However, conventional national validation may still be necessary for full coverage.

21 JULY 2021

Tough decisions at the EPO: balancing parameter clarity with protecting innovation

EPO practice is notoriously strict on the clarity of parameters. While a more applicant-friendly approach is possible, it may allow claims with ambiguous parameters to be granted, which could cause confusion for third parties.

14 JULY 2021

Measuring up measurement methods – how to understand EPO patent parameters

EPO parameter standards are strict and getting stricter, with even strong applications being refused based on measurement methods. Understanding the parameters gives applicants a much stronger chance to get their patents confirmed.

Russia

12 JANUARY 2022

IP Court clarifies what constitutes token use for trademarks vulnerable to non-use

Russian owners may claim token use to prevent their trademarks being cancelled. However, whether this will be regarded as sufficient evidence of use depends on market conditions and business practices.

24 NOVEMBER 2021

Russia approves radical new anti-counterfeiting plans

A decisive new strategy looks set to transform the war on fake goods in Russia. The measures will extend landlord liability for counterfeits and will initially apply to priority sectors only – although there are already discussions underway about extending them.

03 NOVEMBER 2021

How to successfully navigate exclusions in Russian patent law

While Russian patent law identifies which objects are excluded from patentability, not all exclusions are straightforward. A deep dive into a recent case study provides useful guidance for this murky area.

Poland

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.

06 OCTOBER 2021

Polish Industrial Property Law looks set to undergo a revolutionary makeover

There are a number of projected changes with regard to the Polish Industrial Property Law on the horizon, which aim to overhaul how IP rights are protected in Poland.

IP transactions

12 JANUARY 2022

Enforcement-related considerations for patent valuation: the perspective from Canada

The valuation of patent rights is not a straightforward matter. In Canada, the remedies available to patent owners are arguably the most important factor in determining value.

15 DECEMBER 2021

Crucial clauses in global IP transactions and the importance of local law advice

In this Q&A, three Gowlings WLG professionals provide practical advice from a local law perspective for IP transactions in three jurisdictions: Canada, China and the United Kingdom.

USA

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.

18 AUGUST 2021

China may be a guiding light for small claims IP courts in the United States

Several key senators have asked the USPTO to carry out a study on small claims courts to ascertain whether these would be a suitable venue for patent rights. The study raises the question of whether China’s new internet courts could be a useful model.

14 JULY 2021

US Supreme Court limits Patent Law’s assignor estoppel doctrine

In a significant ruling, the Supreme Court has handed down its decision in Minerva Surgical v Hologic Inc, signalling a change for invalidity claims.

IP technology

17 NOVEMBER 2021

How AI helps cut your costs – but not your confidence – during due diligence

Cutting-edge software has the potential to revolutionise how lawyers evaluate patents during M&A transactions, helping layers to achieve the all-important balance between thoroughness and speed.

IP analytics

03 NOVEMBER 2021

Who leads the 5G patent race as 2021 draws to the end?

The very latest figures on 5G declared patent families provides a crucial snapshot of a fast-evolving space and reveals which companies are pulling ahead.

20 OCTOBER 2021

Who’s ahead in the WiFi 6 patent race

WiFi 6 offers the potential to exceed earlier generations of WiFi, especially in terms of wider implementation beyond routers and phones or personal computers. However, it is essential for IP professionals to fully understand the landscape of WiFi 6 patents, especially when it comes to SEPs.

06 OCTOBER 2021

What to watch out for in the SEP landscape

As the number of SEPs continues to rise, IPlytics delves into the data to find out which companies are making the figures soar.

Patent Outsourcing: Outsourcing IP tasks

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.

05 MAY 2021

World IP Day 2021 – how SMEs can understand and leverage intellectual property

As many IP professionals celebrated World IP Day on 26 April, it is important to reflect on how intellectual property has benefitted so many entities. This year’s focus was on SMEs, which have more power that they realise when it comes to their IP assets.

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.

Israel

06 JANUARY 2021

Israeli Patent Office to consider allowing for provisional applications

The Israeli Patent Office is considering amending the patent application procedure in line with that of the USPTO, so that applicants may file for a provisional patent application before filing a full patent application at a relatively low initial cost.

25 NOVEMBER 2020

The future of Israeli tech is all about telemedicine

While many countries are only just getting clued up about digital healthcare, Israel has long been a trailblazer in this field.

04 NOVEMBER 2020

First Israeli patent for vaccine priority system filed in the UAE

In what marks a historical move for Israel and the United Arab Emirates, an Israeli company has filed a patent at the UAE Industrial Property Office for an AI-based vaccine, signalling that the two countries may work together to release technology to help combat the spread of covid-19.

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.

USA

15 JULY 2020

Booking.com? Booking.yeah! Supreme Court weighs in on trademark protection for generic terms combined with gTLDs

The US Supreme Court has handed down its decision in USPTO v Booking.com BV, in which it held that the addition of a gTLD such as ‘.com’ to an otherwise generic term may be protectable under trademark law, provided that consumers do not perceive the mark as a whole as generic.

27 MAY 2020

What the Supreme Court's Romag Decision means for trademark infringement and damages

The US Supreme Court's unanimous decision in Romag Fasteners, Inc v Fossil, Inc has resolved a circuit court split by confirming that a plaintiff in a trademark infringement suit is not required to show that the defendant wilfully infringed the plaintiff's trademark as a precondition to an award of profits. This is a clear signal to Congress to avoid further unclear drafting that leaves open issues to the courts for interpretation and clarification.

29 APRIL 2020

USPTO and US Copyright Office extend deadlines due to covid-19 pandemic

On 31 March 2020 the USPTO and the US Copyright Office announced that most due dates for patent and trademark filings and/or fees that would ordinarily be due between 27 March and 30 April 2020 will be extended for one month if the delayed submission includes a statement that the hold-up was caused by covid-19.

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.

China

01 APRIL 2020

Pilot project to improve administrative complaint process for infringement disputes will shake up China’s IP system

For the last few years, the Chinese government and the China National IP Administration (CNIPA) have been promoting the enforcement of patent rights through administrative actions. In November 2019 CNIPA published a notice announcing the launch of a project to refine the system of handling administrative complaints with regard to patent infringement.

12 FEBRUARY 2020

Trademark squatters get smarter in China – a look at the latest tactics

Following China's clampdown on illegal filing activity in the amended Trademark Law, it appears that squatters have also raised their game. This article shows the most effective ways to prevent rights holders from becoming victims of trademark squatting.

05 FEBRUARY 2020

Landmark infringement decision: trademark owners can take action against their damaged goods on third-party platforms

A recent decision shows that in cases where product packaging has been damaged and the third-party platform cannot prove that the contents are genuine, trademark owners can take action on the grounds of trademark infringement.

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.

IP valuations

02 OCTOBER 2019

Is the price paid for a patent portfolio a cap on patent damages?

It is sometimes asserted that the price paid for a patent portfolio represents, without further modification, its fair market value in litigation. This argument is specious: it ignores the risks and costs (in this case, those associated with enforcing the acquired rights) that are necessary to earn a return on the investment. This article summarises several risks priced into patent transactions, but not into damages.

18 SEPTEMBER 2019

An approach to measuring patent quality using citation data

The same erroneous claim is repeatedly raised in court – that the quality of a patent portfolio can be proxied by the quantity of its patents. This article summarises how counting the number of patents will lead to inaccurate inferences and describes a better method, which uses patent citations to measure patents’ quality and value.

28 AUGUST 2019

Disagreements among technical experts with regard to patent essentiality

Patent valuation professionals normally rely on technical evidence and studies to determine the essentiality of patents. However, as technical experts work independently and may have their own technical opinions or biases, their determinations of which patents are actually essential often conflict.

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