Market Insight

New 07 JUNE 2023

Taiwan’s recently amended Trademark Act now includes: an accelerated review mechanism, regulations on trademark agents and a new indicative fair use defence against infringement – all key updates for rights holders.

Authors:
Jane Wang and Li-Ying Lin

19 APRIL 2023

The Supreme Administrative Court’s Valentino ruling aims to foster harmony amid disagreements surrounding the IP Office’s seemingly controversial opinion on protection for well-known marks, which imposes harsher restrictions than those found in the Trademark Act.

Authors:
Monica Wang and Sarah Sun

05 APRIL 2023

Amid rising tension between Taiwan and China and increased numbers of cases involving espionage, the National Science and Technology Council has published draft regulations that will determine what items constitute nationally important core technologies and introduce heavy penalties for leaking them.

Authors:
Han-Wei Lin

New 07 JUNE 2023

While the inclusion of bad faith as a separate condition for refusal in the examination, opposition and invalidation procedures is a major step toward strengthening China’s Trademark Law, critical areas of the 2023 draft amendment could be improved before it enters into force.

Authors:
Huang Hui and Paul Ranjard

31 MAY 2023

In China, the exclusive right to use a trademark is based on registration, not use. However, the obligation to use a trademark once it is registered has been strengthened by successive amendments to the Trademark Law.

Authors:
Huang Hui and Paul Ranjard

26 APRIL 2023

China’s Supreme Court’s IP branch has released its 2022 annual report, providing statistics on caseload and closure. These numbers highlight the longer wait times for appeals, as well as varying chances of success.

Authors:
Johnson Li and Mo Li

31 MAY 2023

The Court of Turin has issued a decision involving the Italian cheese Grana Padano, deeming the term ‘grana’ to be generic. This ruling directly contrasts an earlier Court of Venice decision on the same issue, indicating that there is a lack of harmonisation surrounding applications of protected designation of origins.

Authors:
Giorgio Gazzola

26 APRIL 2023

Italy’s IP office has launched new proceedings for determining nullity and revocation with the aim of providing a streamlined and significantly cheaper alternative to legal proceedings.

Authors:
Giorgio Gazzola

19 APRIL 2023

After a rocky start to Italy’s relationship with the UPC, the suggestion that the London division be moved to Milan has sparked strong opposition from Italian IP experts and members of parliament due to disagreements over the division’s competence.

Authors:
Antonio Pizzoli

24 MAY 2023

Pharma companies in India are struggling to enforce compounds that are covered by both genus and subsequent species patents. While the latest case involved a series of injunctions being vacated, the patent community is still unsatisfied by the lack of concrete judgments on this issue.

Authors:
Shukadev Khuraijam and Himani Pandey

10 MAY 2023

In a precedent-setting case, a high court has refused an interim injunction in a case where the defendants’ use of digital player cards allegedly resulted in unfair competition and violation of the personality rights of well-known cricket players.

Authors:
Bisman Kaur

03 MAY 2023

As India’s new online gaming regime shapes up, it appears that the industry will be largely left to self regulate, although the latest amended rules do set out a list of criteria that intermediaries, such as the Play Store and App Store, will have to meet.

Authors:
Cyril Abrol and Bisman Kaur

17 MAY 2023

Sweden and Denmark continue to hold their own in terms of patent filings against countries with significantly larger populations, indicating that regardless of size, countries – and their innovators – thrive when their governments take an active stance on supporting education and innovation.

Authors:
Tomas Wässingbo

22 FEBRUARY 2023

In order to obtain the broadest possible grant, it is a smart move to select a patent office that is a member of one of the larger PPH schemes and also pursues partnerships and bilateral agreements with non-member nations.

Authors:
Camilla Rendal Nielsen

08 FEBRUARY 2023

Organisations worldwide are anticipating a reduction in consumer spending this year, making it vital for export-driven companies in Scandinavia to streamline their patenting processes and set reasonable expectations for scope of protection.

Authors:
Anders Fredriksson

26 APRIL 2023

A company’s brand can be one of its most valuable intangible assets and neglecting it in pursuit of scale can be extremely damaging. In this regard, business owners can learn important lessons from Starbucks – one of the great business success stories in the world.

Authors:
Previn Sudhir

08 MARCH 2023

Value can be hidden in the many years of effort, millions of dollars of investment capital and fine-tuned market strategies, which all contribute to driving long-term business success and scaling up a company’s overall worth. It is thus crucial to find a way to reflect this on a company’s balance sheet.

Authors:
Aden Ong

15 FEBRUARY 2023

SPACs can learn much from Coach Saban’s so-called ‘seven-second process’, reshaping it into a unique method to keep investors excited about target businesses and their intangible assets during the dreaded transfer portal period.

Authors:
Kevin Mays

12 APRIL 2023

The ongoing Illumina case highlights three valuable lessons for trade secret owners in the United States: monitor former employees’ patent filings, be cognisant of the applicable statute of limitations, and carefully plead any facts that are available to support its tolling.

Authors:
Sharon Roberg-Perez

29 MARCH 2023

While Turkey is not a UPC member state, the UPC’s lack of case law means that it will rely on EPO jurisprudence – a crucial element of Turkish judicial proceedings. It is thus highly likely that UPC proceedings and EPO evaluations will have a big impact on one another.

Authors:
Selin Sinem Erciyas, Aysel Korkmaz Yatkın, Aysu Eryaşar and Zeynep Çağla Üstün

25 JANUARY 2023

The heavily debated concept of plausibility is quickly gaining prominence in invalidity proceedings. While it remains to be seen how the EPO will cement the concept into case law, several key existing cases present a number of conflicting arguments on the issue.

Authors:
Aysel Korkmaz Yatkın, Selin Sinem Erciyas and Aysu Eryaşar

14 DECEMBER 2022

Pharmaceutical patent holders have the unenviable task of providing evidence before IP courts to prove infringement to obtain a preliminary injunction decision to prevent launch of the infringing product to the market. Unfortunately, disparities in Turkish courts’ approaches to requests for determination of evidence are making a challenging job even harder.

Authors:
Aysel Korkmaz Yatkın, Selin Sinem Erciyas and Zeynep Çağla Üstün

08 MARCH 2023

In what can be seen as a relief for patent holders, the new disproportionality exception for the enforcement of patent injunctions has left the German district courts' strict approach to injunctions unchanged.

Authors:
Daniel Skiebe

22 FEBRUARY 2023

Patent litigators in Germany are feeling the effects of Phoenix Contact. While it was widely anticipated that German courts might alter their jurisprudence as a result, Düsseldorf and Munich’s regional courts are taking noticeably diverging approaches now that the first decisions on the matter have been published.

Authors:
Daniel Skiebe

01 FEBRUARY 2023

The German Federal Constitutional Court has ruled against plaintiffs who argued that the EPO violated fundamental procedural rights and possesses obvious shortcomings in its level of legal protection.

Authors:
Ramona Sorgenfrei

08 FEBRUARY 2023

In an exclusive interview with Tim Pohlmann, Mang Zhu offers some insights into how she built one of the world’s largest 5G portfolios and, in the process, married key R&D goals with critical standards development work.

Authors:
Tim Pohlmann

25 JANUARY 2023

Power in the OEM space is shifting, while 2023 promises even greater numbers of standards implemented in vehicles. IP professionals, as well as directors in standards development, should bear several key considerations in mind as we settle into the new year.

Authors:
Tim Pohlmann

18 JANUARY 2023

SEP/FRAND discussions dominated conferences, webinars and symposiums over 2022. This two-part review examines the key takeaways from these conversations, with a special focus on industries where standards subject to SEPs are implemented.

Authors:
Tim Pohlmann

04 MAY 2022

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.

Authors:
Jeffrey Tiong

28 JULY 2021

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.

Authors:
Piya Jain

12 MAY 2021

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.

Authors:
Jack Jones

13 APRIL 2022

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.

Authors:
Johan Aerts

06 APRIL 2022

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?

Authors:
Stéphane Korvers

30 MARCH 2022

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.

Authors:
Philippe Gratessolle

16 MARCH 2022

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

Authors:
Marcin Ziarkowski

12 JANUARY 2022

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.

Authors:
Marcin Ziarkowski

27 OCTOBER 2021

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.

Authors:
Jakub Zabraniak

06 JANUARY 2021

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?

Authors:
Drew Lowery and Rochelle Hinman

16 DECEMBER 2020

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?

Authors:
Drew Lowery and Rochelle Hinman

02 DECEMBER 2020

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.

Authors:
Bruce Rubinger and Brendan Sever