13
Dec
2018
@IAM_magazine The patent wars roll on in China this week, as the Beijing IP Court held a hearing in Samsung v Huawei SEP case yes… https://t.co/DYX7GnDfQg Read more
International reports
Sent to over 28,000 subscribers, the IAM Weekly email features reports 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, deal making and valuation.
Most recent
IPlytics GmbH
IP analytics
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12 Dec2018
Who is leading the 5G patent race?
The long-term vision is that 5G will lead to the invention of thousands of new products, technologies and services, increase productivity and allow for new industries to emerge. But who is leading the patent race? Full text
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14 Nov2018
Recent patent litigation trends in cloud computing 2018
Cloud patents could block critical infrastructure as they are now being increasingly aggressively enforced in patent litigation. Full text
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18 Jul2018
Who will be the technology leader for 5G? Part two
The licensing of 5G-related SEPs looks set to become a major issue not only for the handset industry, but also for any manufacturing sector. Part two of this analysis provides a first glimpse of the 5G patent landscape by scrutinising the current SEP filing data. Full text
Global Prior Art Inc
IP management
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14 Mar2018
Best practice in IP management: transformations
Best practice in IP management reflects a transformation in perceptions about intellectual property, including how IP management is framed and suitable IP performance metrics, organisational structure and implementation. Full text
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7 Mar2018
Best practice in IP management: leaner and smarter
Emerging best practices in IP management reflect an awareness that the traditional management approach is extremely wasteful and significant improvements could be made through eliminating or reducing sources of waste. Full text
Sagacious Research
IP technology
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12 Dec2018
Solutions to challenges in patenting IoT technology
The point in time when the number of connected devices outnumbered the number of people on the planet corresponds to the birth of the Internet of Things. Here are the solutions to the challenges in patenting IoT technology. Full text
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28 Nov2018
Smart devices in IoT need a smarter patenting strategy
This article provides a comprehensive report on the challenges faced in patenting technology in the Internet of Things domain. Full text
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7 Nov2018
Gene editing – boon or curse for the agriculture industry?
Gene editing is an innovative technology, but the extent to which it could benefit agriculture depends on how genetically modified food is regulated. Full text
Bereskin & Parr LLP
Canada
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1 Nov2017
Identifying and enforcing trade secrets
Trade secrets allow businesses to obtain a commercial advantage over competitors which do not know or cannot use the secret. However, the secret must be managed carefully to avoid loss of rights. Full text
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25 Oct2017
Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio
Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy ‒ a mindful, measured and disciplined approach is crucial. Full text
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18 Oct2017
(The cult of) personality rights in Canada
Personality – including, name, voice, likeness and signature – can have tremendous commercial value. Although lagging somewhat, personality protection can be found in Canadian trademark law, in common law under the torts of misappropriation of personality and passing off, and under privacy statues. Full text
Vivien Chan & Co
China
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28 Nov2018
Case alert – <em>Hugo Boss Trademark Management GmbH v Britain Boss International Co Ltd</em>
Can a trademark owner submit a claim in Hong Kong against the owner of a website selling infringing goods in China? This issue was brought before the Hong Kong Court of Appeal. Full text
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21 Nov2018
First E-commerce Law in China
On 31 August 2018 the Standing Committee of the National People’s Congress published the long-awaited E-commerce Law, which will come into effect on 1 January 2019. This article highlights some of the changes to which brand owners should pay attention. Full text
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7 Nov2018
Key takeaways from the top 20 cases published by the Trademark Review and Adjudication Board
The China Trademark Review and Adjudication Board has published its top 20 cases, which provide insights into approaches and trends in decisions. Full text
AWA
Denmark
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10 Oct2018
Denmark makes SØIK IP rights taskforce permanent
All filings for criminal investigations regarding IP crime in Denmark have on a trial basis been referred to a special IP rights taskforce at the Office of the Public Prosecutor for Serious Economic Crime (SØIK). This trial arrangement has now been made permanent. Full text
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3 Oct2018
On your bike: Maritime and Commercial High Court protects CHRISTIANIA BIKES mark
The Maritime and Commercial High Court has rejected claims that the CHRISTIANIA BIKES mark has become a generic term for all types of cargo bike. Full text
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30 May2018
Amendment passed providing legal privilege to patent attorneys before Danish courts
The proposition to amend the Administration of Justice Act was recently passed in Parliament. The amendment was passed unanimously and provides European patent attorneys with a legal privilege similar to that of lawyers. Full text
Weickmann & Weickmann PartmbB
Germany
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25 Sep2018
Life sciences patentability issues
Patenting inventions in the life sciences field is fraught with challenges. As well as scientific and technological complexities, there are also legal issues to consider. Full text
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8 Aug2018
Federal Constitutional Court allows appointment of judges for limited time
The Federal Constitutional Court in Karlsruhe has permitted the appointment of judges for a limited time, under specific conditions. This decision may affect a pending constitutional complaint against the UPC Agreement, since Article 4 of the Statute of the UPC provides that judges may be appointed for a limited time. Full text
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25 May2018
Patenting personalised medicines in Europe
The established approach to drug development is based on the assumption that all patients with a particular condition respond similarly to a given drug. Full text
Ehrlich & Fenster of the Ehrlich Group
Israel
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14 Nov2018
Israel Patent Office Annual Report – more Israeli women inventors; shorter examination times
The Israel Patent Office recently published its 2017 Annual Report, revealing interesting trends and changes in the IP registration system in Israel. Full text
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25 Sep2018
Ministry of Health considers granting data exclusivity to biological drugs
The Ministry of Health has invited individuals, organisations and stakeholders to participate in the examination process for the need to amend Section 47D of the Pharmacists Ordinance. Full text
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16 Jan2013
Significant amendment to the Patent Law takes effect
Further to an agreement with the US Trade Commission, the 10th amendment to the Patent Law has now come into force. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. Full text
Jacobacci & Partners
Italy
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31 Oct2018
Colourful shrimp wars: publishers battle it out over GAMBERO ROSSO and GAMBERO VERDE
The Rome Court of First Instance has held that the publisher of a well-recognised restaurant guide can claim a monopoly on the trademark GAMBERO (meaning “shrimp”) in the publishing industry, acknowledging the publisher's significant efforts to increase the reputation, popularity and reliability of GAMBERO ROSSO among the Italian public. Full text
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10 Oct2018
The shape of water dispenser tanks: criteria for patentability of utility models in Italy
A recent decision of the Court of Turin provides a roadmap for evaluating the criteria used to assess the validity of Italian utility models. Full text
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12 Sep2018
Italian football team trademarks score protection under criminal law
The Court of Cassation has overturned a controversial decision and found that football clubs should be considered commercial companies and thus entitled to register trademarks. Full text
Shobayashi International Patent & Trademark Office
Japan
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25 Jul2018
Twitter retweet function causes moral rights infringement
The Japanese IP High Court has ruled that retweeting an infringing tweet also constitutes copyright infringement and has ordered the disclosure of user information to a copyright owner. The decision may make users feel uneasy and prompt Twitter to review its retweet function. Full text
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11 Jul2018
Japan considers expanding design protection to cover wider range of designs
A recent report has suggested amending the Design Law in order to address increasingly diverse methods of design. Among other things, Japan is considering expanding protection to projected and spatial designs, as well as relaxing the rules governing a series of designs for a given product. Full text
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27 Jun2018
Business-related patents steadily increase
The Japan Patent Office has revealed the latest numbers of patent applications for business-related inventions, showing a significant increase since 2011. As new technologies such as artificial intelligence and the Internet of Things gain traction, business-related patents are becoming increasingly attractive. Full text
NLO
Netherlands
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26 Sep2018
US trademark law developments
The past few years have seen many significant cases and legal developments in US trademark law. This chapter summarises a number of recent cases that all trademarks owners should be familiar with and understand. Full text
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25 May2018
Protecting second medical use – opportunities and pitfalls
Innovators continue to develop drugs to further understand how to optimise the use of known drugs. Full text
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18 Apr2018
EPO opposition: corporate in-house IP departments' engagement
European Patent Office opposition data reveals that companies are more likely to outsource opposition work to private firms than to represent themselves. Companies' in-house patent attorneys tend to act as patentees more often than as opponents. Full text
Allen & Overy A Pedzich Spk
Poland
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15 Jun2016
Supreme Court ruling expected to increase cassation complaints filed by inventors
In a case brought by an employee-inventor for remuneration for the use of his invention, the Supreme Court recently held that the admissibility of a cassation complaint (ie, an appeal of last resort) depends on the value of the appeal provided for in labour law matters. Full text
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8 Jun2016
Poland allows full cumulative protection of industrial designs
An act introducing amendments to the Industrial Property Law, which came into force in December 2015, abrogated the restriction on cumulative protection of industrial designs by repealing Article 116 of the Industrial Property Law. This article excluded industrial designs for which registration rights had expired from copyright protection. Full text
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13 Apr2016
Poland rejects Swiss-type claims
The new Industrial Property Law introduced a long-awaited change in the rules regarding patent protection for second or further medical use of a known substance or composition, which aligns Polish patent law with the European Patent Convention and European Patent Office case law. Full text
Gowling WLG (International) Inc
Russia
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12 Dec2018
Ownership of employee-created rights and commissioned work
This article addresses the topic of employee-created rights or commissioned work in the field of trademarks in Russia, including traditional marks such as logos and stylised marks and non-traditional marks such as packaging, get-up, icons and user interfaces. Full text
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5 Dec2018
Prior rights and registered intellectual property
This article explores whether exclusive rights in a trademark can be obtained in the course of trade without registration and the scope of these rights across Russia. It also examines the benefits of trademark registration and describes some practical steps that both a prior user and a subsequent registrant can take to preserve its rights in a trademark. Full text
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28 Nov2018
What constitutes evidence of use?
The concept of use arises frequently in trademark law, but there can be regional differences in how this is applied in practice. This article focuses on trademark use and the various stages of a trademark's registration in Russia. Full text
AWA AB
Sweden
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23 May2018
Sweden and Japan celebrate 150-year anniversary as JPO relaxes patent approach
Japan is regarded by Swedish companies as a highly innovative country and an important market. In a seemingly deliberate strategy to attract more companies to do business in Japan, statistics show that the number of patents granted at the Japan Patent Office has increased rapidly since 2010. Full text
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7 Feb2018
Re-examining SPC terms: end of discussion?
Recent decisions by the Patent and Market Appeal Court and the European Court of Justice demonstrate that the re-examination of supplementary protection certificate (SPC) terms is a complex but achievable venture for SPC holders. Full text
Hepp Wenger Ryffel AG
Switzerland
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20 Jun2018
Non-enabling disclosure as prior art?
In the latest case relating to AstraZeneca’s anti-cancer drug Faslodex, a registration was revoked by the Patent Court for lack of inventive step due to pre-published scientific articles; the Supreme Court recently remitted the case back to the Patent Court. Full text
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8 Nov2017
Update on supplementary protection certificates in Switzerland
The granting practice of supplementary protection certificates (SPCs) was recently challenged at the Federal Patent Court. In yet another SPC matter, the Federal Patent Court assessed the scope of an SPC in summary proceedings. Full text
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13 Sep2017
Time to revisit your Swiss SPCs
The supplementary protection certificate granting practice in Switzerland is being challenged at the Federal Patent Court – in particular, whether and if so how the granting practice should be brought in line with recent European Court of Justice case law. Full text
Formosa Transnational
Taiwan
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12 Dec2018
IP Court rules on exhaustion in trademarks
The IP Court of Taiwan has declared that the principle of exhaustion set out in the Trademark Act will not apply if the domestic and foreign trademark holders are different. Full text
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5 Dec2018
Taiwan Supreme Court issues decision on unfair enrichment in patent infringement case
In this case brought before the Taiwan Supreme Court, the rights holder failed to enforce its intellectual property after a substantial period of time, giving the defendant reason to believe that it never would. Full text
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24 Oct2018
Trade Secrets Act to be revised
The Legislative Yuan has announced that the amendment draft of the Trade Secrets Act, which shares similarities with the Intellectual Property Case Adjudication Act, will be a top-five priority for discussion. Full text
Gün + Partners
Turkey
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10 Oct2018
Leading home appliances manufacturer granted preliminary injunction against competitor
Following two expert panel reviews, the IP court has granted a preliminary injunction against an international leading company in the coffee machine and home appliances sector on the grounds of patent infringement. Full text
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30 May2018
Declaration of use under new IP Law: consequences and timelines
The new IP Law has abolished the Patent Decree-Law provisions regarding the use requirement of patents and evidence of use. The new law states that non-use of a patent could result in a third party being granted a compulsory licence over that patent. Full text
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23 May2018
District court confirms regulatory data protection is an IP right
The IP Court recently rejected jurisdiction in a case regarding regulatory data protection. However, on appeal the district court found that the case concerned data exclusivity rights and the protection of unrevealed data, which is within the scope of IP courts. Full text
Carpmaels & Ransford LLP
UK
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24 Oct2018
Can AI inventions be patented in Europe?
Following the most recent wave of developments in machine learning and artificial intelligence (AI), this update provides a brief review of the EPO’s approach to assessing AI-based inventions. Full text
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17 Oct2018
EPO updates its guidelines with a section dedicated to AI
An update to EPO guidelines provides clarity on how the office’s existing legal framework will be applied to artificial intelligence inventions. Full text
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8 Aug2018
UKIPO helps to clarify the future UK-EU relationship on intellectual property
The UK Intellectual Property Office has published an update to its page “IP and BREXIT: The facts”. Although by no means a detailed legal proposal, its scope is far broader than the recent government white paper. The update covers patents, supplementary protection certificates, trademarks and designs. Full text
Baker Donelson
USA
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5 Dec2018
SUCCESS Act extends USPTO's fee-setting authority
The SUCCESS Act reads as a feel-good piece of legislation that acknowledges the growing role of underrepresented classes in the innovation ecosystem. However, it maintains the USPTO's controversial fee-setting authority. Full text
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21 Nov2018
Supreme Court moves goalposts of the on-sale bar
A recent Supreme Court decision has re-opened the discussion as change of phrasing alters parameters of the on-sale bar. Full text
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14 Nov2018
US Supreme Court to decide whether trademark licences can survive bankruptcy
The US Supreme Court considers whether a debtor or licensor's rejection of a trademark licence agreement terminates the rights of a licensee to continue to use the mark. Full text
