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

Global Prior Art Inc

IP management

Competition Dynamics, Inc

IP valuations

  • 14 Aug
    2019

    The misuse of effective rates in FRAND determinations  

    Though innovators promise standard development organisations to license their SEPs on FRAND terms and conditions, there is a question over whether effective rates against which contracts are evaluated can enable reliable comparisons. Even if a licensor executes identical terms and conditions, can effective rates capture actual contract terms? Full text

  • 31 Jul
    2019

    Royalty stacking in FRAND litigation – part two

    In the second part of this two-part series, experts take a deep dive into the obstacles to proving the existence of a royalty stacking problem, as well as the difficulties with obtaining a remedy from courts against any individual party. Full text

  • 24 Jul
    2019

    Royalty stacking in FRAND litigation – part one

    According to standards implementers, royalty stacking is a prevailing problem in SEP litigation. Further, they claim that individual licensors legally cause that problem, thereby violating their FRAND obligations. The first part of this article gives the economic definition of the ‘royalty stacking problem’ and suggestions on how to deal with it. Full text

Murta Goyanes

Brazil

  • 14 Aug
    2019

    3D printing in Brazil: opportunities for patenting

    In light of global trends placing 3D printing at the forefront of the so-called ‘4.0 industry’, companies involved in advanced manufacturing should consider expanding into and investing in the Brazilian market. New research suggests that there is an opportunity for businesses in Brazil to benefit from this technology without infringing third-party rights. Full text

  • 6 Aug
    2019

    Expert evidence in patent actions: should this be a necessity?

    Expert evidence is a type of proof provided in Articles 464 to 480 of the Brazilian Civil Procedure Code. An expert assists the judge in order to help them form their understanding of the facts in the case, as this sometimes requires specialised technical and/or scientific knowledge. This process is not carried out for patent-related actions and there is concern among IP professionals that this is having a detrimental effect on court decisions. Full text

  • 31 Jul
    2019

    Confirmed: protection for medicines mailbox patents is 20 years from the filing of the application | Brazil

    The general rule of the Industrial Property Law is that patents are valid for 20 years from the date of filing. However, the same law provides that the term must not be less than 10 years from the date of grant. This has caused a great deal of confusion. However, the stance on the validity of mailbox patents has been clarified in a recent decision. Full text

Bereskin & Parr LLP

Canada

Vivien Chan & Co

China

Ehrlich & Fenster of the Ehrlich Group

Israel

Jacobacci & Partners

Italy

Shobayashi International Patent & Trademark Office

Japan

Allen & Overy, A Pędzich Spk

Poland

  • 17 Jul
    2019

    Amendments strengthen the position of trademark licensees in Poland

    The new updated Industrial Property Law, which came into force earlier this year, has transformed the legal position of holders of non-exclusive trademark licences in Poland. Holders of both exclusive and non-exclusive trademark licences now have the right to enforce the marks they license in their own name, regardless of whether the licence is registered in the Trademark Register. Full text

  • 26 Jun
    2019

    SPC manufacturing waiver is poised to go

    The EU Regulation on Supplementary Protection Certificates (SPC) for Medicinal Products is due to enter into force on 1 July 2019. The legislation introduces a long-awaited SPC manufacturing waiver, which aims to remedy the unintended consequences of the current SPC model and react to the changes that have occurred in the pharmaceutical industry over the last three decades. Full text

  • 8 May
    2019

    New approach to trademark registrability

    An amendment to the Industrial Property Law aims to implement the provisions in the EU Directive 2015/2436 that approximate EU member states’ trademark laws. The amendment has simplified the definition of a ‘trademark’ and, as a result, has removed the graphical representation requirement when filing an application with the Polish Patent Office. Full text

Gowling WLG (International) Inc

Russia

  • 6 Aug
    2019

    Patent extension in Russia

    Since 2003 it has been possible to extend the duration or term of a Russian patent for a drug, pesticide or agricultural chemical by up to five years. It used to be possible to extend patent claims related to a substance, antibody or pharmaceutical formulation. However, in 2015 the regulations were tightened. Knowing how to achieve the maximum scope of protection provided by an additional patent is key. Full text

  • 10 Jul
    2019

    Influencer marketing in Russia: legal traps and pitfalls

    According to a recent report, almost half of all Russian millennials use blogs and social media to learn about luxury brands. However, influencer marketing has raised many questions among brand owners, as well as legal concerns, since Russian laws support a broad interpretation of advertising and discourage indirect advertisements. Full text

  • 3 Jul
    2019

    Mobile customs groups: from combating sanctioned food to fighting counterfeits

    A specialised customs division created to detect and destroy sanctioned foodstuffs following President Vladimir Putin’s prohibition on the import of certain products is now being used to detect other illegal products, such as counterfeit goods and drugs. Full text

Hepp Wenger Ryffel AG

Switzerland

Formosa Transnational

Taiwan

Gün + Partners

Turkey

Carpmaels & Ransford LLP

UK

Baker Donelson

USA

Ambridge Partners LLC

IP insurance

GreyB

IP managing innovation