19
Feb
2019
@IAM_magazine RT @CambConsultants: This Thursday in #Singapore, Miles Upton joins the opening panel of #IPBCSEAsia, where he will discuss how developing… 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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13 Feb2019
Recent patent trends in CRISPR
Nothing in the field of genome editing has looked to be as ground breaking as clustered regularly interspaced short palindromic repeats (CRISPR). While it is difficult to predict the future for a technology that is still so young, activity in the patent landscape looks promising. Full text
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23 Jan2019
Technical contributions to IEEE 802 standards: empirical analysis
Companies and individuals that participate in technical standard setting can help to drive the development of technology. This article evaluates whether the Institute of Electrical and Electronics Engineers (IEEE) 2015 patent policy updates influenced its members and specifically their willingness to contribute technologies and make associated R&D investments, in support of the ongoing development of IEEE 802 standards. Full text
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16 Jan2019
How patents are shaping up for virtual and augmented reality
This article looks into the patent landscape of virtual and augmented reality technologies to identify the main portfolio holders, countries involved and overall industry trends. Full text
Ambridge Partners LLC
IP insurance
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30 Jan2019
Insurance as a means of minimising IP exposures
Innovation and R&D have long been key to success for companies in most industries. As the economy becomes increasingly global, companies are placing even more emphasis on safeguarding their intellectual property. 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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30 Jan2019
Solid-state batteries: a new era of energy storage
Development in battery technology is the reason that the growth of the electric vehicle industry has slowed. However, solid-state batteries could be the answer. Companies researching solid-state batteries are experiencing severe drawbacks as costs and high-risk investment are deterring many. Full text
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9 Jan2019
Bubbles make headway for shipping industry
Shipping companies have taken various measures to tackle gas emissions, primarily by reducing fuel consumption. Air lubrication technology is paving the way for fuel efficiency in the shipping industry. Full text
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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
Murta Goyanes
Brazil
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13 Feb2019
INPI and JPO renew Patent Prosecution Highway agreement: applicants benefit from extension of covered technical fields
The Brazilian Patent and Trademark Office and the Japan Patent Office formalised the renewal of the Patent Prosecution Highway pilot project, which continues the provision of fast-track patent examination procedures and the sharing of information from examinations conducted by both offices. 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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23 Jan2019
Competitors and keyword advertising: how to protect your mark
Over the past decade, advertising and sales have moved onto online platforms, transforming search engines into essential platforms for business promotion. However, this makes it easier for competitors to take advantage of a mark’s reputation by using a registered mark as a keyword. Full text
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19 Dec2018
Data breach – what to know, how to prevent and how to handle
The proliferation of recent data breaches is a wake-up call for data users, who should have a basic understanding of the statutory requirements on the protection of personal data and should take the necessary actions to comply with these. Full text
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28 Nov2018
Case alert – Hugo Boss Trademark Management GmbH v Britain Boss International Co Ltd
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
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
Jacobacci & Partners
Italy
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30 Jan2019
Off the hook: Italian Supreme Court protects Ferragamo’s hooks against imitation
The Italian Supreme Court has overturned a decision issued by the Court of Appeal of Milan, finding that it erred in underestimating the well-known character of a 3D trademark of Ferragamo’s omega-shaped hooks. Full text
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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
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 Pędzich Spk
Poland
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13 Feb2019
Tribunal decides on unconstitutionality of information disclosure request provided for in Polish Industrial Property Law
The Polish Constitutional Tribunal found Article 2861(1)(3) of the Polish Industrial Property Law to be unconstitutional. This enabled rights holders to request the disclosure of information necessary to pursue infringement claims from a party other than the infringer if such party held or used goods that infringed IP rights. Full text
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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
Gowling WLG (International) Inc
Russia
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6 Feb2019
What happens to a trademark after a legal entity is liquidated?
A legal entity may close by choice or circumstance. It is often the case that during liquidation procedures and following settlements with creditors, rights holders are no longer able to manage their trademarks. This article addresses the fate of those trademarks. Full text
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16 Jan2019
Well-known trademarks: definition and scope of protection under Russian law
According to the Russian Civil Code, a registered trademark or a non-registered designation can be recognised as a well-known trademark at the request of the brand owner. Although the procedural requirements are somewhat arduous, the benefits of registration make the process worthwhile. Full text
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9 Jan2019
Rospatent and bad-faith applications
Bad faith is not recognised as grounds for refusal for a trademark application in Russia. Further, Rospatent does not have jurisdiction over findings of bad faith. However, there are other relevant courses of action that can be used to protest bad-faith applications. 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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19 Dec2018
Supreme Administrative Court finds “same problem” is key to combining prior art evidence
Taiwan’s Supreme Administrative Court has rendered a judgment finding that “the substantive same problem to be solved” is key to combining multiple prior art evidence – a crucial issue in determining whether a patent has been disclosed. Full text
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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
Gün + Partners
Turkey
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30 Jan2019
Turkish IP Court delays invalidation action after considering European Patent Convention
An IP Court judge has decided to delay a patent invalidation action until the EPO Boards of Appeal issues its final decision on the matter. The judge took account of Article 138/3 of the European Patent Convention, as well as the principle of procedural economy, to reverse a previous ruling from the court. Full text
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23 Jan2019
Mandatory mediation introduced for patent disputes in Turkey
Mandatory mediation has been introduced for claims involving commercial receivables. It is hoped that mediation will encourage both sides to find an amicable solution; as parties witness the benefits of mediation they might be encouraged to choose this process for other, non-obligatory disputes. Full text
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9 Jan2019
Ex parte injunctions in Turkish IP law
Although they are legally available, ex parte injunctions are quite rare in Turkish IP practice. The IP courts almost always reject requests for ex parte injunctions, preferring to evaluate the alleged infringement only after hearing both parties. However, in a recent case, the IP Court unexpectedly granted a request for an ex parte injunction, due to the urgent nature of the matter. 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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13 Feb2019
Supreme Court declines to narrow on-sale bar
In Helsinn Healthcare SA v Teva Pharmaceuticals USA, Inc, the Supreme Court has unanimously declined to narrow the on-sale bar to public sales only in light of new language in the America Invents Act. Full text
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6 Feb2019
165-year-old brand alleges trademark infringement against best-selling video game
The Red Dead 2 lawsuit spotlights how trademark infringement claims require trademark use. It is never sufficient to simply claim "you can't do that, it's trademarked”. Whether ‘use’ constitutes trademark use, and whether it is permissible, is a nuanced analysis. Full text
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30 Jan2019
The price of allegiance: NBA's ‘supermax’ is super unpredictable
A supermax contract is a contract extension for players who achieve the highest tier of NBA accolades. This article examines how a provision expected to benefit franchises in smaller markets has gone awry and suggests possible improvements. Full text
