International reports

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

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

New Silk Road paths have emerged in recent decades, providing for the movement of counterfeit goods across Russia and former Soviet Union states. As a result of the unstable political and economic situations in some of these regions, monitoring and combating the flow of fake goods along these routes is a significant challenge. Nevertheless, Russia has been developing ways to impede the traffic within its own territory. Full text

Changes made at the end of 2019 to several procedural codes could make it more difficult, expensive and time intensive for trademark owners to obtain domain names from infringing registrants who use Russia’s country-code top-level domain ‘.ru’. Full text

Foreign brand owners in China are becoming increasingly concerned about stores using their trademarks on signboards without permission. This is complicated by the fact that these shops are selling genuine goods that are the result of parallel imports. Full text

The Judicial Committee of China’s Supreme People’s Court has listed the ruling on the Christian Dior 3D trademark of 26 April 2018 as Guiding Case 114. The judgment overturned the decisions of the Trademark Review and Adjudication Board, the Beijing IP Court and the Beijing High Court, which had refused the registration of Christian Dior’s 3D trademark. The Supreme People’s Court ruling will therefore be binding on Chinese courts. Full text

A rundown of the China National Intellectual Property Administration's most recent patent filing statistics and what the office is planning for the rest of 2020. Full text

Third-party patent databases are useful tools for analysing patent and non-patent literature, providing user-friendly interfaces and key data visualisation. However, there are a number of factors to consider when selecting the appropriate database for a particular task. Full text

A combination of AI and blockchain technologies could significantly lower the amount of time and labour required for patent analysis or scrutiny, reducing the likelihood of human error in search queries and leading to more accurate results. Full text

A growing number of automotive and electronics organisations across the world are working with new clients to create self-driving vehicles and the race is heating up to own IP rights and protect various technological advancements in this domain. However, obtaining IP protection for autonomous vehicles and related advancements needs careful planning. 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

Recent case law shows that if a company wishes to make parallel imports into Taiwan, the principle of exhaustion cannot be relied on. Full text

The Taiwan Intellectual Property Office has announced that it will start accepting fast-track trademark applications as of 1 May 2020. Here is all you need to know about the scheme. 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.