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 07 JUNE 2023

Three major changes to Taiwan’s Trademark Act that applicants need to know

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.

19 APRIL 2023

Valentino decision unifies conflicting interpretations of well-known trademarks

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.

05 APRIL 2023

Draft regulations will give teeth to national security trade secret protection

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.

China

New 07 JUNE 2023

New bad-faith invalidation clause to strengthen Trademark Law against malicious registration

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.

31 MAY 2023

Use requirements in the context of the fifth amendment to the Trademark Law

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.

26 APRIL 2023

IP court annual report breaks down valuable statistics on appeals cases

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.

Italy

31 MAY 2023

Grana Padano ruling raises fresh questions about PDO enforcement

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.

26 APRIL 2023

New nullity proceedings good news for trademark budgets in Italy

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.

19 APRIL 2023

Italian parliament flares up over proposed UPC relocation

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.

India

24 MAY 2023

Diabetes drug ruling attempts to provide clarity amid pharma enforcement struggle

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.

10 MAY 2023

Landmark suit explores right of publicity as it relates to NFT digital playing cards

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.

03 MAY 2023

Amended rules provide clarity for intermediaries on online gaming in India

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.

Scandinavia

17 MAY 2023

EPO Patent Index reveals Sweden and Denmark in top three of application tables by population size

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.

22 FEBRUARY 2023

Why applicants should start their PPH journey in Denmark or Sweden

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.

08 FEBRUARY 2023

Two prosecution strategies that could help Scandinavian exports balance costs in 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.

Intangible asset valuation

26 APRIL 2023

Starbucks success proves that brand vision is a critical intangible asset

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.

08 MARCH 2023

Using intangible assets to super charge business valuations

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.

15 FEBRUARY 2023

What college football can teach SPAC sponsors

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.

USA

12 APRIL 2023

Statute of limitations is a key issue in Delaware trade secret dispute

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.

Turkey

29 MARCH 2023

How the UPC will likely affect invalidation proceedings in Turkey

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.

25 JANUARY 2023

What the plausibility requirement means for Turkish IP law

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.

14 DECEMBER 2022

The dangers of basing preliminary injunctions on determination of evidence

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.

Germany

08 MARCH 2023

Regional courts unmoved by new disproportionality amendment to the German Patent Act

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.

22 FEBRUARY 2023

CJEU ruling on preliminary injunctions sets regional courts on different paths

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.

01 FEBRUARY 2023

German court establishes legal certainty for appeals against EPO decisions

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.

IP analytics

08 FEBRUARY 2023

Chief IP strategy officer sheds light on ZTE’s SEP portfolio management strategy

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.

25 JANUARY 2023

Auto industry demands a fresh SEP/FRAND focus in 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.

18 JANUARY 2023

A year in review: key SEP/FRAND discussions in 2022

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.

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.

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.

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.

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.

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