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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Taiwan

New 23 NOVEMBER 2022

IP office hits pause to evaluate pilot programme to boost examiner expertise

Designed to help patent examiners grasp complex technical concepts, the one-year trial period for the Industry Collaborative Patent Interview pilot programme has come to an end. TIPO is now considering the first year and whether to continue with the initiative.

16 NOVEMBER 2022

Ruling opens the door to protecting room design under the Copyright Act

A fresh decision from the IP and Commercial Court could mark major changes for the Taiwanese hotel industry by extending copyright protection to encompass room configurations.

09 NOVEMBER 2022

Supreme Court rules on jurisdiction in landmark trade secret dispute

A fresh ruling has resulted in dramatic consequences for IP legislation in Taiwan, with amendments affecting employers’ rights being reviewed by the Legislative Yuan.

India

16 NOVEMBER 2022

Food for thought: complexities behind protecting food-related intellectual property in India

The lack of specific trade secret legislation and definition of a ‘fixed form’ in India presents challenges to how edible creative work can be protected.

09 NOVEMBER 2022

Government initiatives spark Indian Patent Office overhaul

The Indian government’s constant focus on strengthening the country’s IP ecosystem has brought about major improvements in the way that patents are filed, prosecuted and enforced – but more still needs to be done.

02 NOVEMBER 2022

Court overturns interim injunction in telecom patent prior art dispute

A Delhi court has vacated an interim ex parte injunction and asserted that the use of the same language is unnecessary in prior art for it to defeat novelty or to show a lack of inventive step.

Germany

16 NOVEMBER 2022

Why Germany is opposing the WTO’s decision to suspend patent protection

While WTO member states have expressed general sympathy for the goal to provide broad access to vaccine technology during the pandemic, Germany continues to favour patent protection over compulsory licensing.

26 OCTOBER 2022

How the CJEU’s decision on patent validity could affect German preliminary injunctions

German case law has been ruled incompatible with the EU Enforcement Directive by the Court of Justice of the European Union, prompting rights holders to urgently re-evaluate their options.

Scandinavia

09 NOVEMBER 2022

Striking the balance: how to reduce costs and maintain foreign patent protection for Scandinavian exports

In a climate of business uncertainty, re-examining the focus of your patent portfolio can be a complex but essential exercise. A strategic mindset can help export-driven companies reduce costs while maintaining adequate foreign protection.

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.

IP analytics

09 NOVEMBER 2022

Race to the top: the key contenders in the IoT SEP space

The number of declared patents in the IoT SEP space is increasing annually as the demand for smart technology accelerates. Licensing of SEPs in IoT – especially those related to NB-IoT and LTE-M – will be a major challenge for industries looking to adapt connectivity technologies.

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.

IP transactions

02 NOVEMBER 2022

Legal considerations for international licensors and licensees conducting business in China

Foreign licensors and licensees need to be aware of the key consequences of doing business in China. Taking proper account of these will also help them weigh up whether to follow through with litigation or to go down the route of arbitration in the event of a dispute.

26 OCTOBER 2022

Trademarks and brands: key considerations for M&A transactions

It is crucial that a buyer or seller of a company does not overlook trademarks and brands in business acquisitions, or any red flags in that area. Luckily, there are solutions to overcome such complexities.

19 OCTOBER 2022

The key to success: technology transfer tips for university and research IP managers

The role of the technology transfer office is crucial for getting products to market. Implementing well thought-out strategies will allow these to flourish in your organisation.

UK

05 OCTOBER 2022

Judgment day: could UPC judges harmonise international patent law?

The imminent appointment of judges to the UPC has sparked debates over whether and how far patent law across Europe might be coordinated and how, if successful, it could transform the EU patent law landscape

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.

Intangible asset valuation

05 OCTOBER 2022

How companies can transform their ESG practices using intangible assets

Organisations cannot afford to be indifferent to their environmental, social and governance practices. Intangible assets offer a unique framework for adding value and calming doubts about return on investment for shareholders.

28 SEPTEMBER 2022

How flawed fintechs are running out of gas

Plummeting fintech stock prices are leading to an urgent re-evaluation of certain business models in the space. However, a closer look at intangible assets might hold the solution to this dilemma.

Turkey

28 SEPTEMBER 2022

Why compulsory licensing is a blunt instrument in the post-covid landscape

Turkey’s recent compulsory licence decision shines a light on the questionable use of compulsory licence provisions around the world in relation to the pandemic. The creation of the covid vaccine has sparked discussions on IP rights and where the real regulatory focus should be.

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.

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.

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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