International reports

Here is the IPlytics Platform's November update for leaders in the 5G patent race – some firms move up, while others drop off the list of the most influential innovators in this sphere. Full text

Autonomous driving technology promises to disrupt and transform the automotive space as we know it, spurring a race between giants for the biggest breakthrough in human transportation since the airplane. This technology landscape is now two-pronged, with software and communications companies working on vehicles and automobile companies working on complex software concepts and sensors. This article analyses patent documents as well as standards contributions and SEPs declared to 5G, V2X and 802.11. Full text

The Internet of Things (IoT) has taken the world by storm over the last decade. One interesting development in the logistics sector has been the increased use of IoT in connected vehicles to enable cruise control, also known as platooning or road-trains. This article focuses on the growth of patent filings in the global truck-platooning market. Full text

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

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

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

Lawsuit judgments tend to affect the parties of the legal proceeding only, as they have participated in the constitution of a specific res judicata. However, in some cases, a decision has an impact on legal positions beyond those originally part of the proceeding – namely, on third parties’ legal interests. This is often the case in patent nullity actions. Full text

Biodiversity in Brazil has significant potential to treat many diseases and health problems. As such, it is of great importance in the R&D of drugs and compounds, which are protectable by patents. However, legislation on national genetic heritage must be accurately observed when filing for a patent. Full text

Brazil has dropped significantly in international innovation rankings, now occupying the lowest positions in these boards. There is debate over the reason for the lack of development in the tech sector, especially with regard to patents based on AI and machine-learning technologies. However, the political situation and the National Institute of Industrial Property’s huge patent backlog are widely believed to be behind the fall. Full text

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

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

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

The fourth amendment of the Trademark Law came into effect on 1 November 2019. It provides the factors to be considered when deciding whether a trademark application contravenes Article 4 of the amended Trademark Law and demonstrates the China National IP Administration's determination to tackle bad-faith filings. Full text

As it marks the 10th anniversary of the implementation of the national IP strategy, the Chinese government has taken the next step in restructuring the offices that administer various IP rights. This includes the implementation of a faster timeframe for patent examination, provisions to curb bad-faith filings and the introduction of the E-commerce Law. Full text

The amendments of 23 April 2019 to the Trademark Law will come into effect on 1 November 2019. These changes are a promising next step in the Chinese government’s stand against bad-faith filings and trademark infringement in China. Full text

Following a complete reform of the Design Law, Israel joined the Hague Agreement on 3 October 2019. From 3 January 2020, Israeli applicants will be able protect industrial designs by submitting a single international design application for any of the 88 member countries. Full text

Israel is undergoing major copyright reforms, especially with regard to online piracy and protected content such as films, TV shows and music. The Israeli Parliament recently approved Amendment 5 to the Copyright Law, which introduces new anti-piracy proceedings. Copyright holders will have access to advanced enforcement tools in order to obtain protection for their works, primarily from online infringement. Full text

The trademark sector is changing before our eyes. For decades, brands have based their branding strategies on one or two senses only – what consumers see and, at a later stage, what they hear. However, in the past few decades, we have witnessed a worldwide phenomenon of switching from visual trademarks to marks that incorporate other senses, such as holograms, flavours, 3D shapes, movements, sounds, smells and colours, among others. 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. 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

On 16 March 2019 the Polish Industrial Property Law underwent significant changes with regard to trademarks, in an effort to align it with the EU Trademarks Directive (2015/2436). One of the most significant alterations is the introduction of so-called ‘guarantee marks’, which replace the previous, scarcely regulated ‘collective guarantee marks’. Full text

Russia's Law on Sovereign Internet came into force in November. This law is designed to help create a national network, which can operate independently in the event of disconnection from the global network. Full text

Joint ownership of exclusive rights to a trademark is increasingly important for co-owners of businesses, yet it is still unobtainable under the Russian system. Recent Russian court rulings – including those of the Supreme Court – as well as positions taken by the Russia Patent and Trademark Office, have brought into focus many of the ambiguities and difficulties in the country’s legislation that hamper the possibility for joint ownership. Full text

Russia is continuing to structure its customs legislation in accordance with Eurasian Economic Union regulations and ongoing advances in technology. While most of the new rules are in line with the previous regime, there are two important changes that will significantly affect brand-protection strategies, reshaping the Russian customs recordal landscape for the better and helping brand owners to avoid potential pitfalls. Full text

The Taiwan IP Court has revoked an invalidation decision made by the Taiwan Intellectual Property Office (TIPO) due to a procedural illegality. The court ruled that TIPO improperly intervened in the disputes between the parties and examined the invalidation case ex officio without giving the patentee the opportunity to respond to its opinions. Full text

The Supreme Court has held that if a website owner located in a foreign country knows or should have known that Taiwan would be the major market of its online shopping business, and despite this knowledge engages in the sale of allegedly infringing products in Taiwan, the courts there will have international jurisdiction over the website owner as Taiwan will be considered to be the place where the result of damages emerged. Full text

Given the uncertainty surrounding the utility model patent application process in Taiwan, underlying patent rights can often be abused by patentees. To help utility model applicants, a new measure has been introduced, giving patentees that receive an unfavourable evaluation the chance to provide an additional explanation. Full text

A recent case involving two automotive companies has highlighted that third parties that file patent invalidation actions against a non-examined patent should be prepared for a possible request for conversion by the patent owner. Full text

Under Article 154 of the IP Law, any person who has legal benefit can file an action to have a court determine that their acts do not infringe IP rights. For many years the IP courts rejected any attempts by patent holders to uphold their rights against Gx or generic pharmaceutical companies where there was a pending generic MA application on the basis that these are exempted from patent rights – the so-called Bolar exemption. Full text

In a recent case concerning the regulatory data protection term for a drug, the court found that the filing of an abridged marketing authorisation application for a generic drug is a legal right under the licensing regulation of the Ministry of Health; therefore, utilising a legal right does not constitute unfair competition. Full text

On 1 January 2020 the new Rules of Procedure of the Boards of Appeal will come into force. Key changes include revisions to the admissibility of amendments to a party’s case and a new 'convergent' approach. Full text

AI is revolutionising every aspect of our lives, from how we order food to how new drugs are developed. With companies from all sectors investing in AI-related technology at breakneck speed and innovation currently outpacing the law, where does this leave innovators? This article uses a hypothetical example to shed some light on the landscape. Full text

The second part of this two-part series elaborates on specific types of plastic and the IP rights surrounding the sustainable materials sector. Full text

A recent ruling by the US Court of Appeals for the Federal Circuit is a timely reminder to assess an often-overlooked requirement that must be heeded when drafting a patent specification. The written description requirement of 35 USC Section 112 highlights the delicate balance that patent applicants strive to strike between obtaining patent protection on an invention and simultaneously preserving the so-called ‘secret sauce’ that underlies its implementation. In order to obtain an enforceable patent, the Federal Circuit reminds us that the applicant must hand it all over – down to the very last detail. Full text

The Supreme Court has accepted certiorari in the long-running Lucky Brand trademark battle. It is hoped that this will provide much-needed clarity on the controversial issue of defence preclusion, which has been muddied by the Second Circuit’s confusing stance throughout this litigation. Full text

On 24 June 2019 the Supreme Court's decision in Iancu v Brunetti (588/2019) struck down the Lanham Act's ban on registering "immoral" or "scandalous" marks, furthering the recent line of Supreme Court decisions that reaffirm the importance of the First Amendment right to freedom of speech and further opening the doors to the registration of colourful marks. Full text

A saturated market means eager buyers – it also means strong demand. That is why so many competitors have been able to coexist for so many years. However, when a business is trying to emerge and thrive in an already crowded market, the seemingly excessive number of players can be misleading. This article focuses on some ways to spot and exploit the opportunities to succeed in such areas. Full text

Companies that are consistently innovative over a period of time do not tend to rely on one or two brilliant individuals – they consciously foster a culture of transformation that allows employees to harness their creativity and contribute to cutting-edge products. True innovation – whether it is in a start-up or a large corporation – can only happen when there is an enabling ecosystem around it. This article focuses on what this system would look like, why it is so important for companies to invest in creating one and how they can go about doing so. Full text

Recent analysis has revealed a trend: certain apparently lesser-known countries are appearing in studies of patent filing in fintech and packaging. Not considering these jurisdictions means risking the loss of a potential market share and growth opportunities that are waiting to be tapped. Full text