International reports

A series of recent cases shine the spotlight on how trademark case law is developing in China and suggests particular areas of interest, of which practitioners should take note. Full text

A case selected by the Supreme People’s Court as one of its top 10 exemplary IP cases of 2020 highlights how brand owners can use private proceedings to enforce their rights should attempts to pursue public prosecution fall through. Full text

While China’s fourth amendment of Patent Law has now come into effect, there are as yet no sign of rules on its implementation. To bridge this gap, the China National IP Administration has released interim measures to guide IP owners through this transition period. Full text

As the Brazilian Ministry of Economy looks to boost the country’s market by introducing new legal measures, pharmaceutical patent holders and future applicants will no longer be required to go through two regulatory bodies. This should make obtaining patent approval in Brazil a much smoother process. Full text

The House of Representatives has approved draft bill 12/2021, with some amendments. The bill creates a two-step compulsory licensing process and amends the provisions of the Brazilian Patent Statue (9.279/1996) on compulsory licensing of patents in cases of national emergency or public interest. Full text

Provisional Measure No 1040/2021 has great potential to improve the business environment in Brazil. In particular, it will have a positive impact on patents and trade names. Full text

Brand owners across Taiwan have welcomed the news that the Taiwan Intellectual Property Office is proposing further amendments to the country’s trademark laws, which will be the most substantial changes in 10 years. Full text

In good news for brand owners, the Supreme Court has found in favour of two luxury handbag brands, in a case where a company had copied the accessories’ appearance design. Full text

In welcome news for inventors, the guidelines for filing patent applications for computer-related software inventions have been updated. Crucially, they provide clarity on the definition of an ‘invention’. Full text

Non-Russian rights holders often find the country’s non-use cancellation procedure confusing. Fortunately, trademark professionals in the country have put together some useful information for those considering filing their marks there. Full text

The Russian beverages sector, as well as foreign importers to Russia, are grappling with an overhaul of the use of the terms ‘champagne’ and ‘cognac’, in an effort to distinguish the sparkling wine from the Champagne region of France and Russian shampanskoye, and other similar beverages. Full text

The rules for processing public data have changed in Russia – now, individuals have more control over their data, while data operators must obtain special written consent from the data subject. Full text

Several key senators have asked the USPTO to carry out a study on small claims courts to ascertain whether these would be a suitable venue for patent rights. The study raises the question of whether China’s new internet courts could be a useful model. Full text

In a significant ruling, the Supreme Court has handed down its decision in Minerva Surgical v Hologic Inc, signalling a change for invalidity claims. Full text

Non-publication requests are common when filing a patent application before the USPTO. However, applicants often make these requests without understanding the potential pitfalls of doing so, which can have severe consequences. Full text

A wave of oncoming smart energy technology could be about to make the worlds electricity infrastructure more efficient, however it relies on standardised technology such as 4G, 5G or Wi-Fi, which are subject to thousands of SEPs. This has wide-reaching implications for the energy industry, which implements these standards as well as for the standards developers and owners of relevant patents and SEPs. Full text

The number of patents declared per years has almost tripled over the past 5 years. The volume of data is impossible for humans to analyse in a short time frame, but AI presents an exciting and affordable answer to this issue. Full text

IPlytics takes a deep dive into the companies with declared patents that have contributed to the standards development of the three smart factory application 5G technologies. Full text

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. Full text

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. Full text

As many IP professionals celebrated World IP Day on 26 April, it is important to reflect on how intellectual property has benefitted so many entities. This year’s focus was on SMEs, which have more power that they realise when it comes to their IP assets. Full text

EPO practice is notoriously strict on the clarity of parameters. While a more applicant-friendly approach is possible, it may allow claims with ambiguous parameters to be granted, which could cause confusion for third parties. Full text

EPO parameter standards are strict and getting stricter, with even strong applications being refused based on measurement methods. Understanding the parameters gives applicants a much stronger chance to get their patents confirmed. Full text

EPO practice has become increasingly strict with regard to the clarity of parameters, which can land applicants in the so-called ‘unclear essential parameter trap’, where innovative patents may be refused on purely formal grounds. However, steps can be taken to ensure that applicants stay well clear of such dangerous ground. Full text

Under Turkish case law, clinical trials come under the scope of experimental use of an invention. However, there is a lack of clarity over whether this means that clinical trials of patentable products can be protected by patents. Full text

The IP court has granted a preliminary injunction to remove a pharmaceutical product from the Foreign Drug List of the Turkish Medicines and Medical Devices Agency. The drug was found to contain an active ingredient that was covered by a company’s patent. This case highlights the fact that the Bolar exemption does not apply to drugs that are part of Turkey’s named patient programme. Full text

The Istanbul IP Court has handed down its first precautionary injunction for indirect use of a patent. The case, which involves a combination drug patent, sheds much-needed light on Article 86 of the Turkish IP Code. Full text

Part two of this deep dive into special purpose acquisition companies examines the companies and industries that have faced the most IP risk both before and after these financing agreements. Full text

Last year saw a swift increase in merger transactions between target operating companies and special purpose acquisition companies (SPACs). Examining the IP positions of companies that executed SPAC-led transactions in 2020 can offer crucial insight into where they went right. Full text

Indian law could be the key to finding a happy medium between the interests of patent-owning pharmaceutical companies in developed countries and the needs of the public in developing countries. Full text

Intellectual Property India’s decisions on gene patents highlight the need for greater clarity in this area. Although gene modification is an intensely debated issue across the world, the Indian Patents Act should be updated to reflect this area of innovation. Full text

India boasts a rapidly expanding medical devices sector and is adapting its legislation to accommodate this. However, those looking to file patents for medical devices in this country must be aware of certain aspects of the new regulations. Full text

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? Full text

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? Full text

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. Full text

The Israeli Patent Office is considering amending the patent application procedure in line with that of the USPTO, so that applicants may file for a provisional patent application before filing a full patent application at a relatively low initial cost. Full text

While many countries are only just getting clued up about digital healthcare, Israel has long been a trailblazer in this field. Full text

In what marks a historical move for Israel and the United Arab Emirates, an Israeli company has filed a patent at the UAE Industrial Property Office for an AI-based vaccine, signalling that the two countries may work together to release technology to help combat the spread of covid-19. Full text

Semantic searching delivers results based on the concept within keywords rather than exact matching, using AI to predict and understand the contextual meaning of query phrases. Such searches can lead to significant time and cost savings and can help researchers to zero in on a final list of potentially relevant prior arts Full text

Proofreading can be an arduous, time-consuming task. In order to avoid errors in patent applications, which may slow down the grant process, applicants and IP professionals should consider using an automated proofreading tool. Full text

Illustrations are a key part of patent applications. New software tools and searches can thus be key for helping illustrators provide the best possible visual representations of inventions. Full text

The US Supreme Court has handed down its decision in USPTO v Booking.com BV, in which it held that the addition of a gTLD such as ‘.com’ to an otherwise generic term may be protectable under trademark law, provided that consumers do not perceive the mark as a whole as generic. Full text

The US Supreme Court's unanimous decision in Romag Fasteners, Inc v Fossil, Inc has resolved a circuit court split by confirming that a plaintiff in a trademark infringement suit is not required to show that the defendant wilfully infringed the plaintiff's trademark as a precondition to an award of profits. This is a clear signal to Congress to avoid further unclear drafting that leaves open issues to the courts for interpretation and clarification. Full text

On 31 March 2020 the USPTO and the US Copyright Office announced that most due dates for patent and trademark filings and/or fees that would ordinarily be due between 27 March and 30 April 2020 will be extended for one month if the delayed submission includes a statement that the hold-up was caused by covid-19. Full text

Patent applications and patent rights issued by the China National IP Administration (CNIPA) can be extended to Macau. However, the Macau Economic Services Bureau currently rejects extension applications if certain documents are missing and does not allow applicants to resubmit with these omitted papers – a position that has been criticised by the Macau courts. Full text

A recent amendment has introduced a new type of proceeding into the Polish Civil Procedure, reserved exclusively for cases relating to intellectual property. IP cases will now be reviewed by specialised departments of the regional courts and courts of appeal. However, the launch date for the new procedure may be postponed in light of recent events. Full text

The Polish Supreme Administrative Court has ruled that the payer must collect withholding tax on the amount paid for the unlawful use of an unregistered Community design. This constitutes a licence fee, because – as the court pointed out – under the Organisation for Economic Co-operation and Development Model Tax Convention on Income and Capital – it is assumed that licence fees also come from a tort. Full text

With amendments to the trademark regulations in March, further updates and refinements in October and an ongoing discussion on the concept of IP courts, 2019 has been a year of change for the Polish Industrial Property Law. This article addresses the October update, which was adopted on 16 October 2019 and will take effect on 27 February 2020. Full text

For the last few years, the Chinese government and the China National IP Administration (CNIPA) have been promoting the enforcement of patent rights through administrative actions. In November 2019 CNIPA published a notice announcing the launch of a project to refine the system of handling administrative complaints with regard to patent infringement. Full text

Following China's clampdown on illegal filing activity in the amended Trademark Law, it appears that squatters have also raised their game. This article shows the most effective ways to prevent rights holders from becoming victims of trademark squatting. Full text

A recent decision shows that in cases where product packaging has been damaged and the third-party platform cannot prove that the contents are genuine, trademark owners can take action on the grounds of trademark infringement. Full text

In order to survive discontinuous change, companies must develop an ambidextrous strategy, which means efficiently exploiting their existing capabilities while also exploring avenues for innovation. Full text

Patent data can help R&D teams to gain significant insight into parallel industries, which they can use to accelerate their research. The cannabis industry is one domain where this is the go-to strategy for many companies. Full text

The key to outshining competitors is to not just lead but to lead by invention. While innovation can put a company a mile ahead, invention will take it as far as it wants to go. This is where hiring the right people comes in. Full text

The EU General Court has confirmed the cancellation of the 3D trademark registration for the Rubik's Cube, stating that it simply consists of a shape intended to obtain a technical result. Full text

Clarifying previous case law, the Supreme Court has stated that when two semi-identical European and Italian patents exist for the same invention and the European patent is rejected by a final decision, Italian courts are free to ignore the European decisions and conclude that the Italian patent remains valid under Italian law. Full text

Legislative Decree 15/2019 has significantly reformed collective and certification marks in Italy. Owners of collective marks registered under the old law should act quickly or they will lose their rights. Full text

It is sometimes asserted that the price paid for a patent portfolio represents, without further modification, its fair market value in litigation. This argument is specious: it ignores the risks and costs (in this case, those associated with enforcing the acquired rights) that are necessary to earn a return on the investment. This article summarises several risks priced into patent transactions, but not into damages. Full text

The same erroneous claim is repeatedly raised in court – that the quality of a patent portfolio can be proxied by the quantity of its patents. This article summarises how counting the number of patents will lead to inaccurate inferences and describes a better method, which uses patent citations to measure patents’ quality and value. Full text

Patent valuation professionals normally rely on technical evidence and studies to determine the essentiality of patents. However, as technical experts work independently and may have their own technical opinions or biases, their determinations of which patents are actually essential often conflict. Full text

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

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

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.