International reports

The new Eurasian Economic Union (EAEU) Treaty on Trademarks, Service Marks and Appellations of Origin of Goods is a significant step forward in shaping the implementation of a regional filing system across the region. Full text

Medicines based on strains of microorganism are a growing sphere of the pharmaceutical industry and require reliable patent protection. It can be challenging but not impossible to obtain patents for medicines containing these strains - provided that applicants know what they are doing. Full text

Russia’s first-to-file system may appear to be complicated, but a deep dive into the process demonstrates that it is not so daunting. Full text

In part two of a series on punitive damages in Chinese courts, Wanhuida Intellectual Property provides a rundown of new exemplary cases that will influence the practice going forward. Full text

The Supreme Court has released a judicial interpretation on the application of punitive damages in the trial of civil cases involving IP rights infringement. It aims to coordinate and unify the criteria and language used across the various branches of IP law. Full text

Continuing the two-part overview of key decisions in China in 2020, IP experts explore decisions on revocations for non-use and those illustrating the raising level of financial compensation awarded by the courts. Full text

The Brazilian Institute of Industrial Property has been implementing significant institutional and operational changes for the past two years in order to improve its standing among the leading IP institutes in the world. Full text

A ruling from the Supreme Court has introduced some changes to Brazilian patent term protection. Applicants need to review their Brazilian patent portfolio to ascertain the ones affected by the ruling and to check pending applications where an existing fast-track routes might apply. 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

R&D and IP teams are powerful elements of any business, which together can shape its future. However, in many organisations these two groups work independently, which can undermine the patent, commercialisation and even business strategies. Outsourcing IP training for R&D units could be the answer. 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

The Federal Circuit has handed down its decision in Simo Holdings Inc v Hong Kong Ucloudlink Network Technology Ltd, which clarifies a crucial issue with regard to constructing the preamble in a patent claim. Full text

The new Trademark Modernisation Act signals a complete overhaul of the trademark system. It is crucial that brand owners and IP professionals get to grips with these changes, as they will significantly strengthen trademark rights. Full text

The US District Court of Appeals for the Federal Circuit has issued a precedential decision addressing what kinds of documents are considered to be publicly accessible and why the PTAB cannot hold that a claim is unpatentable based on a theory of unpatentability that was not presented by the challenger. Full text

IP professionals across the country are calling for significant updates to the IP Case Adjudication Act. Here is everything you need to know about the potential amendments. Full text

In good news for brand owners, two recent cases involving 3D shapes signal a shift towards a broadening of what constitutes use of a mark. Full text

Draft amendments to the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks should make it considerably easier for trademark owners – particularly those based outside Taiwan – to examined seized goods believed to be infringing their rights. 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 the automotive industry plays catch-up with the telecoms and other SEP-relevant sectors, it is crucial to reflect on where standards such as 4G and 5G will actually fit into the space. Full text

IPlytics takes a deep dive into standards contribution data and explains how this provides key insights into the SEP portfolios of major companies in the tech space. 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

Data suggests that the UK Patent Box scheme is going from strength to strength since its launch in 2013. However, the transition period from amendments made in 2016 comes to an end this year, which could have an impact on which sectors seek support. Full text

It is crucial to keep your invention secret until an application has been submitted to the patent office. Therefore, careful consideration needs to be given to testing or demonstrating any prospective inventions in public. Full text

Almost one year on from the start of the UK lockdown, professionals in the UK IP sphere reflect on how the UK courts have adapted to the new normal in the IP space. 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.