International reports

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

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

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

AI can be used to shift from keyword-based searches and conventional Boolean operators for patent discovery to AI-enhanced semantic searches using neural networks for high retrieval efficiency and accuracy. Full text

The smallest of mistakes in a drafted application or claim can lead to serious problems further down the line. Rather than collapse under the pressure of having to reduce fees while improving quality, patent professionals and companies should investigate the automation options available. The right tools can enable them to generate higher quality work and focus on building healthier relationships with clients. Full text

Blockchain has the potential to be an enormous boon to the IP industry and is ripe for a world that demands greater transparency and accountability. However, it has not yet had the kind of impact on the IP industry that many expected. This article examines the challenges that must be tackled to ensure the smooth integration of the technology within the IP framework. 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

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

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

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

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

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

An effective way to fight counterfeit goods is by extending existing IP protection to a product’s packaging – here is everything rights holders need to know about filing an application to do this in Russia. Full text

According to Russian and Eurasian patent regulations, an application must relate to one invention or a group of inventions. In the latter case, all of the inventions in the group must be linked so as to form a single general inventive concept, which meets the unity of invention requirement. However, there are differences between the Russia Patent and Trademark Office and the Eurasian Patent Organisation’s rules for determining whether claims meet this requirement. Full text

Voluntary restrictions of Eurasian and Russian patents can be hugely beneficial if the scope of the original patent was broader than necessary for enforcement or created validity concerns. The Eurasian patent regime currently provides more opportunities for restriction, while the options for partial renunciation of a Russian patent remain limited. Full text

Trade secret protection is a significant issue for business owners today. While recent developments in IP court practice make it easier for a trade secret holder to protect its intangible assets under the Trade Secret Act, as well as the Criminal Code, it is crucial that the legal requirements of what constitutes a trade secret are met. Full text

Chanel has claimed that a local retail chain in Taiwan infringed its trademark on marketing materials to celebrate the store's 30th anniversary. The Taiwan IP Court noted that although the retail chain had used the CHANEL mark and a picture of the Chanel product on marketing materials, it had also used its own trademark and thus the relevant consumers clearly understood that the CHANEL trademark referred to the prize only. The court maintained that no infringement took place. 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

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

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

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

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 medtech sector is growing at a rapid rate, with strategic M&A contributing heavily to this rise. Big corporations are taking a thorough approach to their acquisition targets based on the balance and value that they could add to their product and patent portfolio. It is therefore crucial to assign the correct value to patent offerings along with products and other assets in order to score a fair deal. Full text