22
Apr
2019
@IAM_magazine The lowdown on one of the China's quietest patent players in the mobile space https://t.co/V4vggdGOQB 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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17 Apr2019
SEPs in the auto industry – the case of 5G
Similar to the transition in the mobile phone industry from feature phones to smartphones, we will see shifts and profit redistribution within the auto industry. Most market experts predict dramatic changes in this market as a result of disruptive technology trends such as self-driving vehicles, electrification and connectivity via technologies like 5G. Full text
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3 Apr2019
Who is patenting AI technology?
When we think of AI, we think of pop-culture’s depiction of an existential threat to mankind. While the reality is much less dramatic, it is important to be aware of how integrated AI already is in everyday life. This article looks at patent filing trends for AI technology and what this means for businesses. Full text
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20 Mar2019
Patent litigation trends in the Internet of Things
This article is an extract of an ongoing study around patent activities in the IoT space. The analysis conducted by IPlytics sheds light on potential legal risks for any IoT business in the market. Full text
Ambridge Partners LLC
IP insurance
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27 Feb2019
Does your insurance policy cover your intellectual property?
Given the existing IP coverage gaps in common commercial insurance policies, the insurance market is responding by offering commercially viable IP policies. It is vital that risk managers themselves understand the scope of insurance that can be purchased under an IP insurance policy. Full text
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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
GreyB
IP managing innovation
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27 Feb2019
There is a way to get the best of both in-house and outsourced tech scouting
Integrating internal with external knowledge could help to tap the potential of open innovation. The Kernel approach to tech scouting could be a way to get the best of both worlds. Full text
Sagacious Research
IP technology
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10 Apr2019
Trends in air purification devices
In 2018 the World Health Organisation estimated that nearly 7 million people die every year due to inhaling the fine particles in polluted air. The global market for air purification devices is set to rise by one-third between 2018 and 2024. This article focuses on the major players in the air purifier market. Full text
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27 Feb2019
Pills and needles: advances in diabetes treatment could be worth millions
Advances in insulin administration could mean that people with Type 1 diabetes would no longer have to administer insulin intravenously. With diabetes diagnoses on the rise, this pill could be incredibly lucrative. Full text
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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
Murta Goyanes
Brazil
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17 Apr2019
INPI launches the first manual for industrial designs
The National Institute of Industrial property has issued its first Manual for Industrial Designs, which consolidates guidelines and examination proceedings for industrial design applications. It came into force on 9 March 2019 and provides significant guidance for examiners and attorneys as well as general users of the industrial design system. Full text
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10 Apr2019
20 years of the Brazilian Generics Law
The Brazilian Generics Law has altered the landscape of the Brazilian pharmaceutical industry by regulating the entry of generics into the market and thus reducing health treatment costs and increasing the nation’s access to medicines. Not only has it improved the wellbeing of the population, it is also an efficient mechanism for technology transfer. Full text
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27 Mar2019
INPI prioritises examination of AIDS, cancer, neglected and rare disease-related inventions
The National Industrial Property Office is prioritising the examination of applications for pharmaceutical products and processes to inventions directed at Zika and Chikungunya, as well as rare diseases. The intervention is crucial given that the current backlog is between eight and 10 years deep. 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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3 Apr2019
Protecting app names in China
Designing a unique and striking app name and icon is crucial for developers keen to set their innovations apart from competitors. However, it is important to protect the app name and enforce your trademark rights to prevent others from profiting on the app’s success. Full text
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12 Mar2019
Ford successfully obtained injunction order in China in landmark case
In a strategic lawsuit in which Ford authorised Ford China to file an action on its behalf and apply for an evidence preservation order, an export of counterfeit automobile parts was prevented and a favourable judgment was handed down, which suggests that injunction orders are becoming easier to obtain. Full text
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20 Feb2019
New registration requirements prompt fears from e-businesses
The first E-commerce Law in China came into force on 1 January 2019. Since its promulgation, many people have voiced concerns, in particular over the requirement for online businesses to register with the Administration for Industry and Commerce. 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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10 Apr2019
The QVEÉ ASSOLUTA case: a question of labels and wine
The Italian Trademark and Patent Office Board of Appeal has reiterated that, in the crowded wine sector, confusion between trademarks is less likely to occur even when certain similarities are present, as most consumers pay close attention to the products that they buy. Full text
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12 Mar2019
Are wheel rims accessories or spare parts?
In Acacia v Daimler the Court of Rome has confirmed that wheel rims are spare parts rather than accessories. This case examines the details of the repair clause of Article 241 of the Italian Industrial Property Code and Article 110 of the Regulation on Community Designs. Full text
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30 Jan2019
Off the hook: 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
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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10 Apr2019
Registered and ordinary pledges for entry into the trademark register
A company’s logo is recognised as one of its most valuable assets rather than a mere characteristic. This has resulted in an increased interest in securing claims by encumbering trademarks with pledges. However, confusion may arise as to the distinction between a registered and ordinary pledge and its entry into the Polish Patent Office’s trademark register. Full text
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12 Mar2019
What do VAT changes mean for collecting societies?
The minister of finance has issues new rules for correcting value added tax accrued on fees paid by producers and importers of blank media, recording and reproduction devices to copyright collecting societies, clarifying the tax situation for them. Full text
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6 Mar2019
Changes to Industrial Property Law in motion
Parliament is working on amendments to the Industrial Property Law that will alter the definition of a ‘trademark’ and the procedure for extending trademark protection. The amendment is necessary due to the need to implement the provisions of EU Directive 2015/2436 into Polish law, so as to approximate EU trademark laws. Full text
Gowling WLG (International) Inc
Russia
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3 Apr2019
Improving accessibility to marketing authorisations for drugs could have some nasty side-effects
The Russian Ministry of Health has introduced a draft bill that clarifies the application process for marketing authorisations for a drug. There is concern that the new accessibility could lead to infringement when authorisation is sought for generic drugs. However, a proposed unified registry could prevent this. Full text
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6 Mar2019
The attractiveness of utility model protection in Russia
While many other countries do not have sufficient protection for utility model patents, Russia has a set of laws that provides comprehensive cover. While this may make the Russian system seem appealing, it is important to look at the pros and cons of invention versus utility model patents. Full text
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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
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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17 Apr2019
Territory principle applies to products never displayed in Taiwan
The Supreme Court has issued a decision in which it stated that trademark use constitutes products that were never displayed in Taiwan but were ordered from there. The method of sales in the case at hand, in which the vendor entrusted a third-party manufacturer in a third country to export products directly to the purchaser, is a very common arrangement in the modern market. Full text
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27 Mar2019
Whose popcorn is that? Movie company obtains orphan works licence
Unlike works in the public domain, orphan works are still protected by copyright laws. The regulations on their use have changed since the Taiwan Intellectual Property Office granted its first orphan works licence in 2014 and it is vital for cultural and creative industries to remain on the right side of the law. Full text
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12 Mar2019
What businesses should do to protect their trade secrets in the US-China trade war
Since the US government launched a series of indictments against Chinese enterprises, Taiwan-based Chinese companies, among others, have become extremely cautious about being the next victim or suspect in a trade theft case. However, there are signs that the situation may be about to improve. 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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20 Mar2019
How do the differing approaches of the UKIPO and EPO affect applicants?
In the final part of a three-part series, we look at how the UKIPO and EPO’s approaches differ in the way in which they are applied to specific cases and examine situations where patents may be allowed by the EPO but not by the UKIPO and vice versa. Full text
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12 Mar2019
Patentability of computer-implemented or business method subject matter at the EPO
In part two of a three-part series, we focus on the EPO’s examination guidelines with regard to technical features. The Nokia case is a good example of what exactly is required to make a feature and a problem technical and the issues that arise from this provision. Full text
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6 Mar2019
Patent cases in the EPO and UKIPO: different qualifications for computer software
In part one of a three-part series, we focus on the differences between the practices of the UK Intellectual Property Office and the EPO. This article examines the patentability of computer software as per the European Patent Convention. Full text
Baker Donelson
USA
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17 Apr2019
Small mistake, big consequences: a trademark practice pointer
Preparing a trademark application for registration in the United States requires that care and attention be paid to a number of different factors. Of the numerous elements that go into the application, certain routine aspects may be easy to pass over without discussion. However, one such inconsequential detail can doom a trademark application and any resulting registration. The culprit – the designation of the mark's owner. Full text
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27 Mar2019
PTAB issues precedential decision on joinder under 35 USC Section 315(c)
The USPTO Precedential Opinion Panel has established binding agency authority concerning major policy, procedural issues and other issues of exceptional importance in adjudications before the PTAB. It issued its first precedential decision on joinder in an inter partes review in Proppant Express Investments, LLC v Oren Technologies, LLC. Full text
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12 Mar2019
Supreme Court limits recoverable fees and costs in copyright litigation
In a unanimous decision, the Supreme Court recently held that a prevailing party’s recoverable costs in a copyright infringement case are limited to the specific categories of cost permitted under the general federal statute authorising the award of costs by federal district courts. Full text
