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2018
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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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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
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11 Jul2018
Who will be the technology leader for 5G? Part one
The long-awaited 5G standard was recently published and is a major step towards the next generation of cellular networks. Part one of this analysis looks at how the rise of 5G could make the Internet of Things a reality, as well as the upcoming tech companies which are leading the 5G standards development. Full text
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25 Apr2018
IEEE’s empirical record of success and innovation following patent policy updates
Despite claims that the Institute of Electrical and Electronics Engineers' standardisation work had been adversely affected by its 2015 patent licensing policy update, analysis suggests that the institute's standardisation work is thriving. 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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19 Sep2018
Are liquid biopsies the new benchmark for cancer diagnostics?
Liquid biopsies are a relatively new technology in cancer diagnostics, which have shown great potential in their ability to detect cancer early. However, the process has a long way to go before doctors can rely on it. Full text
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4 Sep2018
Humans versus robots: robot-assisted heart surgery
Science appears to be on the verge of the second generation of robotic surgery, with technological advances which may be able to dramatically increase the number of minimally invasive surgeries. Full text
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15 Aug2018
Smart clothing – the future of wearable electronics
Smart clothes have been in development for decades and offer a wide range of functions. While this technology is still in development, with the majority of patents having been filed by universities, the need for sustainable materials opens the door for key players in the wearable electronics field. Full text
Navigant Consulting Inc
IP transactions
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25 Oct2017
Comcast patent purchase fails to deliver desired result
An Eastern District of Virginia jury decision confirmed that when apportionment calculations for complex technologies do not clearly demonstrate how the infringed patent uniquely creates demand, they become vulnerable to simple pro rata arguments. Full text
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11 Oct2017
Court relies on patent context to uphold $70 million trade secrets award
The decision in CardiAQ v Neovasc highlights the risks that innovators run when they choose not to patent and instead to hold patent-eligible subject-matter innovations as trade secrets – a practice that has been much discussed in recent years as US patent case law has eroded the timely enforceability of patents. 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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19 Sep2018
Five significant recent cases from the Supreme People’s Court
The Supreme People’s Court has announced 2017’s top IP cases, which serve as an important guideline for future cases and demonstrate the courts’ flexibility in handling IP cases involving new technology. Full text
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8 Aug2018
Judicial interpretation of the Administrative Procedure Law: what’s new?
A judicial interpretation issued by the Supreme People’s Court has updated the Administrative Procedure Law. Key amendments include stricter rules to tackle habitual complainants and the requirement for administrative personnel to justify their absence from court. Full text
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27 Jun2018
Top 10 trademark developments from 2017-2018
This update reviews the top 10 updates from the China Trademark Office and the Trademark Review and Adjudication Board (TRAB) from the past year, which brand owners should be aware of. Among the changes is the online publication of all TRAB decisions. Full text
AWA A/S
Denmark
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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
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7 Mar2018
Legal privilege for patent attorneys before Danish courts
After more than 10 years of effort from Danish IP and industry associations, patent attorneys may finally be given legal privilege before the Danish courts. Full text
Weickmann & Weickmann PartmbB
Germany
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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
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28 Mar2018
Federal Supreme Court clarifies appeal fees
A recent Federal Supreme Court decision clarified the question of how many appeal fees must be paid by appellants (applicants or counterparties) where a decision of the German Patent and Trademark Office is challenged by a Federal Patent Court appeal. Full text
LexOrbis
India
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16 Apr2018
The patent opposition process
India's patent law provides for both pre-grant and post-grant opposition. This provides efficient and effective tool for parties interested in preventing or revoking the grant of a non-meritorious patent in an economical and swift manner. Full text
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29 Nov2017
Novelty: an Indian perspective
The standards for meeting patentability criteria under the Patents Act are emphasised to reward the contributors of an invention. Among these criteria, novelty is a vital and absolute condition for patentability. Full text
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15 Nov2017
No mini trial in temporary injunction application
The Delhi High Court recently noted that, when deciding whether to grant an injunction application, a court is not required to conduct a mini trial. The court recognised that the purpose of an interim injunction is to ensure the protection of parties’ rights on the basis of three factors: prima facie case, balance of convenience and irreparable injury. Full text
Ehrlich & Fenster Patent & Trademark Attorneys
Israel
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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
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31 Oct2012
Court gives the OK to parallel importers – but use trademarks in moderation
The Tel Aviv District Court recently ruled in favour of the Tommy Hilfiger Group after it brought suit against Machsan Hayevuan and its owner Elad Suissa for breach of the rights under the TOMMY HILFIGER trademark. The ruling is a signal to all parallel importers in Israel to review their current practice carefully and to consider whether they are maintaining the proper balance between fair use of their marketed goods and not infringing IP rights. Full text
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13 Jun2012
New examination guidelines: overlapping subject matter
Recently published guidelines for examiners with regard to overlapping subject matter have clarified the definition of "overlapping subject matter" and provide an insight into the strategy for drafting and prosecuting divisional and continuation applications before the Israeli Patent and Trademark Office. Full text
Jacobacci & Partners
Italy
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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
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8 Aug2018
Patenting artificial intelligence in Europe
The patentability of artificial intelligence is a hot topic, mainly due to the tremendous expectations around this emerging, disruptive and pervasive technology. On 30 May 2018 the EPO held an international conference to explore this topic in detail. Full text
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20 Jun2018
What’s mine is yours: employees’ economic rights under the Copyright Act
A recent case addressed an employee’s economic rights associated with software and databases created within the scope of his employment. The board held that the rights belong to the employer in the absence of an agreement to the contrary, pursuant to the Copyright Act. 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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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
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11 Apr2018
EPO opposition: private practice patent firm’s core technologies
In 2016 UK firms tended to represent patentees and German firms tended to represent opponents in European Patent Office (EPO) oppositions. While most patents subject to EPO oppositions belonged to International Patent Classification (IPC) Class A, most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany. 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 Sep2018
Cryptocurrency regulation is on the way in Autumn 2018
The State Duma is planning to review a number of draft bills regulating cryptocurrency, initial coin offerings and crowdfunding, before adopting them in Autumn 2018. Full text
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19 Aug2018
Dressing up a brand against lookalikes: part two
Although trade dress cases in the fashion industry are still rare in Russia, the extensive involvement of the Federal Anti-monopoly Service in trade dress litigation leads the way for designers to pursue this unconventional method of IP and brand protection. Part two of this update highlights key trade dress cases in Russia. Full text
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15 Aug2018
Dressing up a brand against lookalikes: part one
Trademark registration does not always provide the necessary scope of protection against copycats, which drives the need for unconventional means of brand protection. Part one of this update summarises the types of protection available for fashion brands and the pitfalls of each. 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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28 Aug2018
Supreme Administrative Court holds that well-known marks must be known among general customers in order to claim dilution
After a change of heart, the Taiwan Supreme Administrative Court has sided with the Taiwan Intellectual Property Office and the Intellectual Property Court, agreeing that the owner of a well-known trademark must prove that its mark is known among general consumers in order to claim that there is a likelihood of dilution of its mark. Full text
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18 Jul2018
Taiwan IP Court invalidates basic patent for white LED
Taiwan’s IP Court recently invalidated one of the fundamental patents for white light-emitting diodes, known as the ‘YAG' patent, due to a lack of inventive step. The court concluded that the evidence of prior art could allow a person with the relevant skills to recreate the patent invention. Full text
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20 Jun2018
Timeframe for revocation of a generic mark
The Supreme Administrative Court has ruled that the decision of whether a mark is generic should take into account evidence only up until the revocation application was filed, in order to avoid any unfair advantage gained by either side while the litigation is pending. Full text
Gün + Partners
Turkey
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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
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16 May2018
First damages claim decision in pharma sector for unjust preliminary injunction
The Istanbul IP Court has recently decided on a generic company’s damages claim based on an unjust preliminary injunction, in what appears to be the first decision of its kind by Turkish IP courts within the pharmaceutical sector. Full text
Carpmaels & Ransford LLP
UK
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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
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25 Apr2018
Claiming costs and expenses in High Court litigation as licensee
While there are many good reasons for recording a patent licence and keeping an up-to-date register, a recent High Court ruling illustrates the tangible effect of failing to record a licence: the threat of missing out on recovering legal costs. Full text
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18 Apr2018
IP rights – what does the future hold after Brexit?
The European Commission recently published its draft withdrawal agreement setting out its proposals for the arrangements surrounding the United Kingdom’s departure from the European Union, including in relation to IP rights. Full text
Baker Donelson
USA
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19 Sep2018
A step in the right direction: US and EU courts protect trademark for red-soled heels
The success of Louboutin's trademark protection for its red-soled heels illustrates the challenges expected when claiming trademark rights in a colour – and how to overcome them. Full text
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28 Aug2018
Lucky Brand cannot assert release defence in trademark infringement suit
Not so luckily for apparel maker Lucky Brand Dungarees Inc, the Second Circuit recently ruled that res judicata bars it from asserting a defence against a trademark infringement claim by competitor Marcel Fashions Group Inc. This is the first time that the court has applied defence preclusion to bar a party's litigation defence. Full text
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20 Aug2018
High-stakes gambling with a bad hand
Scientific Games Corp was recently handed a dead loss judgment for $305 million in a recent professional gambling antitrust case, which stemmed from patent misuse in an earlier lawsuit over an automatic card shuffler. The plaintiffs alleged that Scientific Games’ patent infringement lawsuit against them was based on unenforceable patents. Full text
