International reports

The Federal Circuit has issued new guidance in light of Amgen v Sanofi, stating that patentees should take particular care to describe and claim various structural antibody features without relying solely on functional properties of those antibodies. Full text

While the International Trade Commission has procedures to determine whether a new or redesigned product infringes the IP rights at issue and come under an exclusion order, determining this is a contested area, so rights holders should be well versed in the process. Full text

A dive into the merits of early neutral evaluation presents compelling reasons for why patent litigants should consider it as an early, cost-effective alternative in future cases. 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

For many start-ups, their new idea or process is their ticket to success. It is therefore crucial to protect their intellectual property correctly. With constant changes to the IP landscape, start-ups should consider outsourcing this task to experts. Full text

Risk is inherently tied to reward in the financial services industry, but there are ways for organisations of all sizes to ensure that they are assuming risk in the right places. Patent outsourcing is one of these ways. Full text

With the boom in video sharing due to the covid-19 pandemic, software companies have been updating their SEP portfolios for video codec patents, with the next-generation video codec Versatile Video Coding (VVC) being the most advanced video codec out there. IPlytics examines the companies paving the way for this tech. Full text

With more and more companies declaring ownership of SEPs with 5G standards, it is crucial to keep up with the filing numbers of the leaders in connectivity. Full text

The IPlytics Platform takes a deep dive into the most recent data to reveal patents and SEP trends for wireless charging standards. Full text

TIPO’s proposed amendments to the patent appeal system will reconfigure Taiwan’s IP practice, affecting inter partes and ex partes reviews and the office’s level of involvement in disputes on patent ownership. Full text

In welcome news for brand owners, the Taiwan Intellectual Property Office has launched a free publication service, meaning that applicants can swiftly meet the necessary licence requirements with regard to orphan works. Full text

The Taiwan Intellectual Property Office (TIPO) has published an updated list of Taiwanese patents covering potential covid-19 drugs in clinical trial, including a number of new small molecule anti-viral drugs. 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

In Brompton Bicycle Ltd v Get2Get the Court of Justice of the European Union has held that a functional shape may be protected by copyright if it is ‘original’ in the copyright sense. However, it is far from certain whether this means that products such as bicycles will enjoy copyright protection in the United Kingdom. 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

In welcome news for business owners, Shanghai has enforced the first local anti-unfair competition regulation in China. The rules are designed to improve business relations by providing more clarification on acts that are damaging or cause confusion among consumers. Full text

While the China National IP Administration’s efforts to boost filing numbers have been immensely successful, it has inadvertently contributed to a rise in trademark squatting. Experts provide top tips for battling these bad-faith applications. Full text

The Beijing IP Court and Beijing High Court have overturned a China National IP Administration decision and ruled in favour of Tommy Hilfiger in an invalidation action against a copycat trademark, which, when in its colour form, mimics Tommy Hilfiger’s iconic flag logo. This could set a valuable precedent for stakeholders in the fashion industry. Full text

The covid-19 pandemic has accelerated the growth of infringement in the global e-commerce sphere. To combat this, the European Commission has created a watch list of potential infringers – here are certain things that businesses should look out for. Full text

The members of the Eurasian Economic Union have signed a treaty that will dramatically alter how member states can apply for and use trademarks in their respective countries and the region as a whole. Full text

Given the rise of covid-19-related trademark filings and the shortening of registration time, businesses operating – or looking to operate – in the Russian market should ensure that they are fully up to date with Russian trademark practice. 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 European Patent Convention 138/3 prohibits hurried revocations of European patents at a national level. While Turkish courts previously refused to implement the convention, it looks as if the tide may be turning. Full text

While amendments to Article 281 of the Code of Civil Procedure have been broadly welcomed for offering extensions for the submission of statements that challenge expert reports in patent litigation, many are questioning whether they go far enough. 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.

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