18
Jun
2019
@IAM_magazine RT @erichandIPG: Great discussion this afternoon in Boston at the annual IPBC Global conference on new protection paradigms for innovation,… Read more
International reports
Sent to over 28,000 subscribers, the IAM Weekly email features reports from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, deal making and valuation.
Most recent
IPlytics GmbH
IP analytics
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12 Jun2019
Who are the patent leaders in blockchain?
There are new uses for the underlying technology in cryptocurrency – blockchain – emerging almost every day. While we are yet to see where this technology will be applied in the commercial sector, data from the IPlytics Platform shows that large corporations are starting to build blockchain IP portfolios. Full text
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17 Apr2019
SEPs in the auto industry – the case of 5G
Similar to the transition in the mobile phone industry from feature phones to smartphones, we will see shifts and profit redistribution within the auto industry. Most market experts predict dramatic changes in this market as a result of disruptive technology trends such as self-driving vehicles, electrification and connectivity via technologies like 5G. Full text
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3 Apr2019
Who is patenting AI technology?
When we think of AI, we think of pop-culture’s depiction of an existential threat to mankind. While the reality is much less dramatic, it is important to be aware of how integrated AI already is in everyday life. This article looks at patent filing trends for AI technology and what this means for businesses. Full text
Global Prior Art Inc
IP management
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14 Mar2018
Best practice in IP management: transformations
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
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7 Mar2018
Best practice in IP management: leaner and smarter
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
Murta Goyanes
Brazil
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29 May2019
Amending patent applications after examination requests: the controversy continues
The 25th Federal Court of Rio de Janeiro has handed down a decision on the Federal Public Prosecutors Office’s (MPF) public civil action against the National Institute of Industrial Property (INPI) to challenge Resolution 93/2013, which used provisions from Article 32 of the IP Law. The court ruled in favour of INPI; the MPF has subsequently appealed. Full text
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8 May2019
INPI’s role in patent nullity actions – which side will it choose?
The National Institute of Industrial Property’s (INPI) standing in nullity actions has been raised before federal courts in the past few years, with the understanding that it is a defendant, rather than a mere assistant, in proceedings seeking the annulment of its administrative acts. However, a recent decision handed down by the Superior Court of Justice sheds new light on this issue. Full text
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1 May2019
CAS collaborates with INPI to help battle patent backlog
The Brazilian National Institute of Industrial Property has announced a partnership with CAS, a division of the American Chemical Society that specialises in scientific information solutions. It is hoped that CAS’s information systems will help to speed up patent application processes and reduce the backlog that has hampered the patent system for years. Full text
Bereskin & Parr LLP
Canada
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1 Nov2017
Identifying and enforcing trade secrets
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
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25 Oct2017
Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio
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
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18 Oct2017
(The cult of) personality rights in Canada
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
Vivien Chan & Co
China
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12 Jun2019
Amends to the Trademark Law could put an end to bad-faith filings
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
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3 Apr2019
Protecting app names in China
Designing a unique and striking app name and icon is crucial for developers keen to set their innovations apart from competitors. However, it is important to protect the app name and enforce your trademark rights to prevent others from profiting on the app’s success. Full text
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12 Mar2019
Ford successfully obtained injunction order in China in landmark case
In a strategic lawsuit in which Ford authorised Ford China to file an action on its behalf and apply for an evidence preservation order, an export of counterfeit automobile parts was prevented and a favourable judgment was handed down, which suggests that injunction orders are becoming easier to obtain. Full text
Ehrlich & Fenster of the Ehrlich Group
Israel
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14 Nov2018
Israel Patent Office Annual Report – more Israeli women inventors; shorter examination times
The Israel Patent Office recently published its 2017 Annual Report, revealing interesting trends and changes in the IP registration system in Israel. Full text
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25 Sep2018
Ministry of Health considers granting data exclusivity to biological drugs
The Ministry of Health has invited individuals, organisations and stakeholders to participate in the examination process for the need to amend Section 47D of the Pharmacists Ordinance. Full text
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16 Jan2013
Significant amendment to the Patent Law takes effect
Further to an agreement with the US Trade Commission, the 10th amendment to the Patent Law has now come into force. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. Full text
Jacobacci & Partners
Italy
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5 Jun2019
Vespa crosses the finish line first
The Turin Court of Appeal has recognised that the shape of Piaggio’s famous Vespa scooter is protected as a 3D trademark, as well as by copyright law. This decision challenges those who do not believe that trademark and copyright protection can coexist. Full text
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15 May2019
Amending claim is no block to damages request
A Milan Court judgment has provided clarity on damages in a case where a patent claim was amended. The court has stated that when an infringed patent is amended, damages will be incurred from the date that the infringement started, even if this took place before the amendment. Full text
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10 Apr2019
The QVEÉ ASSOLUTA case: a question of labels and wine
The Italian Trademark and Patent Office Board of Appeal has reiterated that, in the crowded wine sector, confusion between trademarks is less likely to occur even when certain similarities are present, as most consumers pay close attention to the products that they buy. Full text
Shobayashi International Patent & Trademark Office
Japan
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25 Jul2018
Twitter retweet function causes moral rights infringement
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
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11 Jul2018
Japan considers expanding design protection to cover wider range of designs
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
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27 Jun2018
Business-related patents steadily increase
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
NLO
Netherlands
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18 Apr2018
EPO opposition: corporate in-house IP departments' engagement
European Patent Office opposition data reveals that companies are more likely to outsource opposition work to private firms than to represent themselves. Companies' in-house patent attorneys tend to act as patentees more often than as opponents. Full text
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11 Apr2018
EPO opposition: private practice patent firm’s core technologies
In 2016 UK firms tended to represent patentees and German firms tended to represent opponents in European Patent Office (EPO) oppositions. While most patents subject to EPO oppositions belonged to International Patent Classification (IPC) Class A, most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany. Full text
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4 Apr2018
EPO opposition: private practice patent firm's engagement
As defending and opposing patents before the European Patent Office require different skills, a firm's experience in these two roles may be a factor when choosing a representative. Recent data suggests that private firms in Germany and the United Kingdom continue to dominate the oppositions arena. Full text
Allen & Overy, A Pędzich Spk
Poland
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8 May2019
New approach to trademark registrability
An amendment to the Industrial Property Law aims to implement the provisions in the EU Directive 2015/2436 that approximate EU member states’ trademark laws. The amendment has simplified the definition of a ‘trademark’ and, as a result, has removed the graphical representation requirement when filing an application with the Polish Patent Office. Full text
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10 Apr2019
Registered and ordinary pledges for entry into the trademark register
A company’s logo is recognised as one of its most valuable assets rather than a mere characteristic. This has resulted in an increased interest in securing claims by encumbering trademarks with pledges. However, confusion may arise as to the distinction between a registered and ordinary pledge and its entry into the Polish Patent Office’s trademark register. Full text
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12 Mar2019
What do VAT changes mean for collecting societies?
The minister of finance has issues new rules for correcting value added tax accrued on fees paid by producers and importers of blank media, recording and reproduction devices to copyright collecting societies, clarifying the tax situation for them. Full text
Gowling WLG (International) Inc
Russia
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15 May2019
Domain name disputes in Russia – new developments
Disputes over domain names owned by non-Russians have long posed a legal and financial challenge for rights holders in Russia. However, a 2018 IP Court ruling transformed the legal landscape when it ordered a domain registrar to terminate an infringing domain name. Further, the Ninth Arbitration Court of Appeal has set an interesting precedent by holding a registrar liable as an information intermediary. Full text
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3 Apr2019
Improving accessibility to marketing authorisations for drugs could have some nasty side-effects
The Russian Ministry of Health has introduced a draft bill that clarifies the application process for marketing authorisations for a drug. There is concern that the new accessibility could lead to infringement when authorisation is sought for generic drugs. However, a proposed unified registry could prevent this. Full text
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6 Mar2019
The attractiveness of utility model protection in Russia
While many other countries do not have sufficient protection for utility model patents, Russia has a set of laws that provides comprehensive cover. While this may make the Russian system seem appealing, it is important to look at the pros and cons of invention versus utility model patents. Full text
Hepp Wenger Ryffel AG
Switzerland
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20 Jun2018
Non-enabling disclosure as prior art?
In the latest case relating to AstraZeneca’s anti-cancer drug Faslodex, a registration was revoked by the Patent Court for lack of inventive step due to pre-published scientific articles; the Supreme Court recently remitted the case back to the Patent Court. Full text
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8 Nov2017
Update on supplementary protection certificates in Switzerland
The granting practice of supplementary protection certificates (SPCs) was recently challenged at the Federal Patent Court. In yet another SPC matter, the Federal Patent Court assessed the scope of an SPC in summary proceedings. Full text
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13 Sep2017
Time to revisit your Swiss SPCs
The supplementary protection certificate granting practice in Switzerland is being challenged at the Federal Patent Court – in particular, whether and if so how the granting practice should be brought in line with recent European Court of Justice case law. Full text
Formosa Transnational
Taiwan
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22 May2019
Latest amendments to the Patent Act add muscle to patent filing system
The Legislative Yuan has passed draft amendments to the Patent Act, which are intended to strengthen Taiwan’s legal system for patent filing. The amendments include relaxed restrictions on the range of and deadline for filing divisional applications and an extension of the patent term for design patents. Full text
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15 May2019
Latest IP issues discussed in Judicial Yuan IP Law Seminar
On 6 May 2019 the Judicial Yuan held the IP Law Seminar to discuss issues with how IP law intersects with administrative litigation and criminal litigation. In attendence were judges from the IP Court, along with representatives of judges from the district courts, the Intellectual Property Office, the Ministry of Economic Affairs, the Bar Association, the Patent Attorney Association and the Asia Patent Attorneys Association. Full text
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8 May2019
Supreme Court clarifies reasonable protection measures
The Supreme Court has clarified the definition of ‘reasonable measures’ in a decision that will please companies operating in Taiwan. The judgment challenges the previous assumption that companies must take all possible measures to meet the reasonable measures requirement, which placed a significant burden on them. Full text
Gün + Partners
Turkey
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30 Jan2019
Turkish IP Court delays invalidation action after considering European Patent Convention
An IP Court judge has decided to delay a patent invalidation action until the EPO Boards of Appeal issues its final decision on the matter. The judge took account of Article 138/3 of the European Patent Convention, as well as the principle of procedural economy, to reverse a previous ruling from the court. Full text
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23 Jan2019
Mandatory mediation introduced for patent disputes in Turkey
Mandatory mediation has been introduced for claims involving commercial receivables. It is hoped that mediation will encourage both sides to find an amicable solution; as parties witness the benefits of mediation they might be encouraged to choose this process for other, non-obligatory disputes. Full text
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9 Jan2019
Ex parte injunctions in Turkish IP law
Although they are legally available, ex parte injunctions are quite rare in Turkish IP practice. The IP courts almost always reject requests for ex parte injunctions, preferring to evaluate the alleged infringement only after hearing both parties. However, in a recent case, the IP Court unexpectedly granted a request for an ex parte injunction, due to the urgent nature of the matter. Full text
Carpmaels & Ransford LLP
UK
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24 Apr2019
Changes to the UK Patent Box and their impact on the scheme and its participants
The UK Patent Box scheme was introduced in April 2013 and allows UK companies to elect to pay a reduced rate of corporation tax on profits derived from the exploitation of patents and certain other types of intellectual property. However, although participation in the scheme continues to grow, changes made in July 2016 appear to be having an impact on participants. Full text
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20 Mar2019
How do the differing approaches of the UKIPO and EPO affect applicants?
In the final part of a three-part series, we look at how the UKIPO and EPO’s approaches differ in the way in which they are applied to specific cases and examine situations where patents may be allowed by the EPO but not by the UKIPO and vice versa. Full text
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12 Mar2019
Patentability of computer-implemented or business method subject matter at the EPO
In part two of a three-part series, we focus on the EPO’s examination guidelines with regard to technical features. The Nokia case is a good example of what exactly is required to make a feature and a problem technical and the issues that arise from this provision. Full text
Baker Donelson
USA
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12 Jun2019
Supreme Court resolves circuit split to hold that licensee's trademark rights survive following licence’s rejection in bankruptcy
The Supreme Court has resolved a significant issue of trademark and bankruptcy law that was decades in the making. In Mission Product Holdings Inc v Tempnology, LLC, it held that rejection of the trademark licence agreement constitutes a breach of the contract, but it does not rescind it, nor does it terminate the licensee's rights. Full text
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5 Jun2019
US cannabis pioneers face chaotic advertising laws
Businesses marketing cannabis and cannabidiol products must navigate a tricky path between state and federal laws when it comes to registering trademarks for their products. This confusion persists when it comes to advertising and there seems to be no sign of a resolution any time soon. Full text
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22 May2019
Disney accused of being real pirate in <em>Pirates of the Caribbean</em>
The District Court for the Central District of California has dismissed with prejudice the claims of two scriptwriters in which they asserted that the Walt Disney Company’s Pirates of the Caribbean movie franchise infringed their copyright in an original spec screenplay. The court held that the plaintiffs could not prove unlawful appropriation because the works in question were not substantially similar under the objective extrinsic test. Full text
Ambridge Partners LLC
IP insurance
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27 Feb2019
Does your insurance policy cover your intellectual property?
Given the existing IP coverage gaps in common commercial insurance policies, the insurance market is responding by offering commercially viable IP policies. It is vital that risk managers themselves understand the scope of insurance that can be purchased under an IP insurance policy. Full text
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30 Jan2019
Insurance as a means of minimising IP exposures
Innovation and R&D have long been key to success for companies in most industries. As the economy becomes increasingly global, companies are placing even more emphasis on safeguarding their intellectual property. Full text
GreyB
IP managing innovation
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27 Feb2019
There is a way to get the best of both in-house and outsourced tech scouting
Integrating internal with external knowledge could help to tap the potential of open innovation. The Kernel approach to tech scouting could be a way to get the best of both worlds. Full text
