International reports

The Supreme People’s Court has confirmed previous judgments to dismiss an infringement claim initiated by a Chinese trademark owner against the world-famous brand Michael Kors, finding that the case had been filed in bad faith. Full text

Article 23 of China’s Patent Law provides that a design must significantly differ from prior designs in order to be patented – any design that is substantially similar will be denied. The similarity between a design patent and a prior design is ascertained from the perspective of an ordinary consumer with regard to the specific category of product that incorporates the design patent. Full text

The fourth amendment to China’s Trademark Law came into force on 1 November 2019. Article 4 now states that a "trademark filed in bad faith without intention to use shall be rejected”. This modification is also mentioned in Article 44.1, which provides that any mark registered in violation of Article 4 or by fraudulent or unfair means will be declared invalid. Full text

On 17 June 2020 the head of the Taiwan Intellectual Property Office, industry leaders and IP experts met to discuss potential changes to the patent and trademark litigation regime and other reforms to Taiwan’s IP environment. The conclusions from the event will be published as part of the Chinese National Federation of Industries' annual white paper. Full text

Taiwan’s Ministry of Economic Affairs has announced that it is amending Articles 17 and 39 of the Enforcement Rules of the Patent Act. Sequence listing can now be submitted electronically to exempt applicants from the obligation to provide its hard copy and third-party opinion can be submitted before a patent application for invention is laid open. Full text

February 2020 marked the first time that the Taiwan Supreme Court has remanded an IP Court decision in a trademark case. Trademark practitioners are now waiting to see how this will shape the practice of trademark enforcement and defence in Taiwan. Full text

A recent Supreme Court ruling in Trivium-XXI LLC v Federal Customs Service may end the frustrating situation for brand owners seeking to record their trademarks or copyrighted works with Russian Customs. Full text

In the face of the unprecedented demand for online services brought about by covid-19-related quarantine measures, the Russian Ministry of Culture has renewed its attempts to tighten existing anti-piracy legislation with new proposed amendments. Full text

The advertising market has been significantly affected by the covid-19 pandemic and the resulting financial fallout. Deputy Minister Alexey Volin addressed the issue of market shrinkage at a meeting of the State Duma Committee on Information Policy, IT and Communications on 12 May. Full text

Potential applicants should carry out a prior art search to check whether their invention is novel. This can create stronger claim development, as well as verifying that the invention does not infringe another’s intellectual property, thereby avoiding any potentially expensive litigation further down the line. Full text

When IP laws were first codified, it was beyond imagination to consider naming a machine as an inventor. So how can AI inventions be protected in the current IP system? For the time being, such creations fall under copyright and trade secret laws. Full text

Growing competition to develop AI has forced major jurisdictions to amend their patent laws, but there is still uncertainty as to the best way to protect an AI invention. 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

Following California's Fair Pay to Play Act and the National Collegiate Athletic Association’s approved policy change, a wave of states are proposing bills to their legislatures to compensate student athletes for the use of their name, image and likeness. Full text

In-depth analysis of global patent filing levels reveals a number of brands across industries ranging from videoconferencing to automotives renewing their investments in this cutting-edge technology, with LG and Sony among those leading the way. Full text

A detailed examination of the development of innovations and standards in the field of cybersecurity provide an overview of the security landscape in the digital age. Full text

As the application of 5G will differ from industry to industry, licensing mechanisms will need to be more flexible. SEP owners will have to strike a balance between offering different pricing structures for different use cases and providing frictionless mechanisms. 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

Turkish IP law does not explicitly define ‘indirect infringement’, although legislators refer to Article 86 of the Industrial Property Code.  A recent case, in which a generic company filed a determination of non-infringement action against an originator company, is the first example of an interpretation of Article 86 for second medical-use claims in Turkish IP practice. Full text

Article 85(3) (c) of the Industrial Property Law excludes marketing authorisation applications from the scope of patent rights. However, the IP courts’ interpretation of this has been disproportionately weighted against patent holders. Full text

Recent cases demonstrate that the Turkish IP court’s approach to products that possess a minor difference from the range claimed in a patent is rather rigid and it appears reluctant to consider prosecuting allegedly infringing products based on formula deviations. 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 Israel Patent Office has denied a patent term extension for the biological drug Kovaltry, filed by Bayer Healthcare LLC. This decision clarifies the Ministry of Health’s regulatory requirements for registration of this type of drug. Full text

In Takeda Pharmaceutical Company Limited v Manufacturers Association of Israel, the Israeli Supreme Court has ruled that a pharmaceutical product's marketing approval should be considered as the first one with regard to a pharmaceutical product containing similar compounds. 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

Three case studies into recent patent filing activities of Intel, IBM, Qualcomm, Cambricon, Google and Baidu reveal how innovation in the AI chip space is being driven by new technologies and competitors entering the market, the pursuit of diverse applications and varied approaches to attain higher processor speeds and lower power. Full text

AI and its diverse applications have seen significant market growth in the past decade and an accurate IP landscape analysis can provide deep insight into this crowded space. Global Prior Art Inc conducted extensive research into the companies that have announced AI chips for cloud computing and their focus, which reveals that US and Chinese firms are leading the way. 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

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

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.

While the criteria for identifying new matter in Chinese patent applications remain relatively strict, there are signs that evaluations are becoming more flexible, with examiners approving amendments based on information provided in figures and specific examples. Full text

In China, the background section of a patent application does not constitute prior art against the invention claimed to be protected unless it is proved by a prior art document or other prior art evidence. However, applicants should be more cautious if the application is also intended to be filed in other countries. 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.

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.

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.