International reports

The Internet of Things (IoT) has taken the world by storm over the last decade. One interesting development in the logistics sector has been the increased use of IoT in connected vehicles to enable cruise control, also known as platooning or road-trains. This article focuses on the growth of patent filings in the global truck-platooning market. Full text

In the past few years, e-vehicle sales have greatly risen. While the global market share is still small, forecasts predict that sales will grow by around 40% in 2019. While patents for fuel cell batteries are increasing in number, some major automotive companies have not yet taken the plunge to develop this technology. Full text

In the second part of a two-part series, IPlytics looks at what the leaders in the 5G patent race are doing to stay at the top, and the indicators that other companies will move up in the future. 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

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

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 National Institute of Industrial Property (INPI) has released a report entitled “Use of Industrial Property System by Start-ups”, which combines data provided by the Brazilian Association of Start-ups with information in the INPI and Federal Revenue databases to analyse the use of industrial and intellectual property by start-ups in Brazil. The report found a relatively low number of IP mechanisms in use but determined that the most popular field among start-ups is IT services. Full text

The Code of Civil Procedure establishes a mechanism for the early production of evidence, enabling its use as a crucial instrument for prior assessment in patent infringement scenarios, in which technical evidence can play a decisive role. Full text

The National Institute of Industrial Property has released a new study, which assessed patent applications in the biotech sector filed by national applicants between 2010 and 2016. It aims to verify the demand for a Brazilian institution that serves as a depository for biological material under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. 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

As it marks the 10th anniversary of the implementation of the national IP strategy, the Chinese government has taken the next step in restructuring the offices that administer various IP rights. This includes the implementation of a faster timeframe for patent examination, provisions to curb bad-faith filings and the introduction of the E-commerce Law. Full text

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

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

The trademark sector is changing before our eyes. For decades, brands have based their branding strategies on one or two senses only – what consumers see and, at a later stage, what they hear. However, in the past few decades, we have witnessed a worldwide phenomenon of switching from visual trademarks to marks that incorporate other senses, such as holograms, flavours, 3D shapes, movements, sounds, smells and colours, among others. Full text

One of the biggest technological revolutions known to mankind is underway and it is all about real estate. In the past few years, property technology has become one of the hottest technological areas, with a constant increase in the amount of investments in the real estate sector and the number of new start-up companies developing technological solutions for this field. Full text

According to the Israel Patent Office’s annual reports, there has been a considerable rise in foreign submissions made in Class 14, also known as the Mobile Class. This is not a coincidence – changes in design law have made Israel stand out as a competitor in the global mobile market. 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

The Court of Milan has confirmed that an urgent declaration of non-infringement can be granted even if the allegedly infringing product has already been launched on the market. Full text

The Italian Industrial Property Code has amended existing provisions and added new ones, with the aim of reinforcing the protection of trademark owners’ rights and harmonising the IP laws of EU member states. 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 new updated Industrial Property Law, which came into force earlier this year, has transformed the legal position of holders of non-exclusive trademark licences in Poland. Holders of both exclusive and non-exclusive trademark licences now have the right to enforce the marks they license in their own name, regardless of whether the licence is registered in the Trademark Register. Full text

The EU Regulation on Supplementary Protection Certificates (SPC) for Medicinal Products is due to enter into force on 1 July 2019. The legislation introduces a long-awaited SPC manufacturing waiver, which aims to remedy the unintended consequences of the current SPC model and react to the changes that have occurred in the pharmaceutical industry over the last three decades. Full text

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

On 26 July 2019 the Russian president signed a bill on a new, independent form of intellectual property – geographical indications. The bill introduces amendments to Part IV of the Russian Civil Code and the federal law on the manufacture and circulation of spirits and alcoholic products. Full text

Colour plays a significant role in strengthening brand awareness and distinguishing products and services from those of their competitors. Unfortunately, this has motivated some companies to unfairly capitalise on the reputation of well-known brands by using similar colour schemes, which creates confusion in the marketplace. Registering colour as the distinctive feature or as one of the distinctive features of a trademark can help to prevent such situations. Full text

There may be several scenarios in which a company needs to buy a Russian-registered trademark owned by a third party – either to save time and money or to remove obstacles to registering another mark. This article highlights what interested parties should be aware of during transactions. 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

The Supreme Court has held that if a website owner located in a foreign country knows or should have known that Taiwan would be the major market of its online shopping business, and despite this knowledge engages in the sale of allegedly infringing products in Taiwan, the courts there will have international jurisdiction over the website owner as Taiwan will be considered to be the place where the result of damages emerged. Full text

Given the uncertainty surrounding the utility model patent application process in Taiwan, underlying patent rights can often be abused by patentees. To help utility model applicants, a new measure has been introduced, giving patentees that receive an unfavourable evaluation the chance to provide an additional explanation. 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

It has become common for plaintiffs in an invalidation or determination of non-infringement action to demand a precautionary injunction against a defendant patentee to prevent it from enforcing its rights. However, recent case law suggests that the issue is far from straightforward. 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

There is significant R&D into alternatives to single-use plastics. Knowing how to protect inventions is key in this highly sought-after sector. Part one of a two-part series covers the kinds of plastics that are being developed at the moment. Full text

It is possible to protect the appearance of products throughout the European Union using registered and unregistered Community designs. In order for these to be valid, the design for which protection is sought must be sufficiently different from designs that are already publicly known. Further, the designs may “differ only in details that can be qualified as ‘immaterial’”. But what does the EUIPO consider to be ‘immaterial details’? 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

On 24 June 2019 the Supreme Court's decision in Iancu v Brunetti (588/2019) struck down the Lanham Act's ban on registering "immoral" or "scandalous" marks, furthering the recent line of Supreme Court decisions that reaffirm the importance of the First Amendment right to freedom of speech and further opening the doors to the registration of colourful marks. Full text

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

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

Recent analysis has revealed a trend: certain apparently lesser-known countries are appearing in studies of patent filing in fintech and packaging. Not considering these jurisdictions means risking the loss of a potential market share and growth opportunities that are waiting to be tapped. Full text

Executive awareness of increasing competition and the impact of information is pushing businesses towards innovation and intellectual property towards the centre of business decision making. Therefore, it is essential that the IP knowledge of a company is captured in a centralised system that can help executives to derive actionable insights for crucial business decisions. Full text

In order to create a sound business strategy, it is crucial for senior executives to form a baseline understanding of their IP strategy. However, most senior business executives have little to no involvement in the IP functioning of their team. Here, we discuss the reasons for this and suggest the possible solutions. Full text