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2014 IP Management Services
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    Management report articles

    - Issue 66

    Federal court stakes new ground for reach-through claims

    Reach-through claims – which allow broad protection for an invention – have been a contentious issue for years. The German Federal Court’s recent decision on dipeptidyl-peptidase inhibitors suggests that the matter is far from settled View PDF

    Chinese patent law and protection for genetic resources

    New clauses on the protection of genetic resources were added to the amended Chinese Patent Law four years ago. So far, it appears that the new filing requirements – in particular, the genetic source form – are not placing an undue burden on applicants View PDF

    APIs, imports and the Bolar exemption: concerns and practical measures

    The Mexican legal framework requires some improvements to grant legal certainty to both innovators and applicants for generic and biologic follow-ons View PDF

    Australia sets its own course on the patentability of biotechnology

    Judicial, legislative and political scrutiny of the patentability of biotech and pharmaceutical technologies is presenting significant global challenges to these sectors View PDF

    Patent issues for the Indian life sciences industry

    As the Indian patent regime is continually evolving, applicants seeking to protect their inventions in India must pay careful attention to the legislation and Patent Office guidelines View PDF

    Key issues for senior life sciences executives

    Deciding whether to proceed with litigation or to forgo or settle an infringement claim requires that a broad number of factors be carefully weighed View PDF

    South Korea’s Patent - Approval Linkage System

    Although South Korea’s new Patent- Approval Linkage System will not be fully implemented until 2015, there is already keen interest from global pharmaceutical companies. Yet while the system should strengthen patent rights, it may also increase the number of disputes View PDF

    - Issue 64

    Data Centre

    2013: the IP year in statistics View PDF

    IP in the Life Sciences Industries 2013 - Issue 60

    IP in the Life Sciences Industries 2013

    No matter what stage of the business cycle they have reached, it is critical for companies in the life sciences sector to identify, protect and effectively manage their intellectual property if they want to maximise their chances of enduring success in the marketplace. A well-built, well-maintained IP portfolio enhances competitiveness, increases differentiation and can make a business more attractive to potential investors. It may also provide additional revenue streams where there are opportunities for it to be licensed or sold. View PDF

    - Issue 59

    Strategic brand management in a global marketplace

    In today’s globalised market, it is more important than ever to make smart decisions on trademark selection, registration and enforcement. A successful brand management programme can play a vital role in minimising risk and maximising value View PDF

    IP TRANSLATOR: earthquake or tremor?

    The European Court of Justice’s eagerly awaited decision in the IP TRANSLATOR case marks a turning point in the examination of trademark applications across the European Union. Applicants will need to review their filing strategies accordingly By Christian R Thomas, View PDF

    Protecting packaging and product designs as trademarks

    Protecting trade dress is a delicate matter – not least because the way in which it is promoted directly impacts on enforceability. However, a well-thought-out strategy can result in a trademark right that is valid before the US Patent and Trademark Office View PDF

    Trademarks: evolving law in India

    India’s rise to prominence on the international scene has made it an increasingly attractive market in which to do business. The trademark regime is continually being refined to accommodate this growing interest View PDF

    - Issue 54

    Maximising IP rights in the life sciences industry

    There are various ways in which life sciences companies can create extra value from their IP rights. In some jurisdictions, alternative legal remedies may be available to counter infringement View PDF

    US Supreme Court rejects personalised medicine claims

    A major decision from the US Supreme Court questions the scope of what can be considered as patentable subject matter. It could have major implications in the life sciences industries and beyond View PDF

    The legality of reverse payment settlements in Paragraph IV disputes

    ‘Pay-for-delay’ agreements between innovator and generic manufacturers have been the subject of much controversy. Several cases have raised questions over the legality of these payments View PDF

    Key issues in building a strong life sciences patent portfolio

    Senior executives in the life sciences industries need a keen understanding of how to build and maintain a strong portfolio in order to enforce and defend their IP rights. Well-managed IP rights will also be an enabler of collaboration and further innovation View PDF

    - Issue 53

    Trademarks and sponsored links: the stream is not drying up

    Google’s contentious AdWords programme has exercised Europe’s courts in recent years, giving rise to conflicting decisions and considerable uncertainty View PDF

    Border seizure in the European Union –a universal legal tool

    Under the EU customs regime, rights holders can have counterfeit goods confiscated at the borders. However, it is questionable whether the regime adequately considers the rights of alleged infringers View PDF

    Welcome to the world of ‘.anything’: protecting brand owners’ existing legal rights under ICANN’s new gTLD programme

    ICANN’s new gTLD programme could revolutionise the Internet. Brand owners should familiarise themselves with the new and evolving procedures if they are to avoid being left behind View PDF

    Battle for a reputed brand – top court clash in curious case of rebranding

    Two divergent top court rulings in a case concerning rebranding and trademark infringement have caused a legal storm in Finland. The Supreme Court’s decision to find no trademark infringement was received as a surprise View PDF

    Developing an effective international anti-counterfeiting strategy

    Ratification of ACTA is proving controversial in Europe – especially in Poland, which has had something of a chequered past when it comes to IP protection View PDF

    Rules of engagement: brands and social media

    Social media affords invaluable opportunities to enhance brand awareness, strengthen customer relations, garner market research and bolster sales – but only if used wisely View PDF

    IP in the life sciences industries 2011 - Issue 48

    Patentability of stem cells

    Stem cells can “transform into a dazzling array of specialised cells that make us what we are”. As such, they have great potential in many different areas of health and medical research, but their patentability has long been the source of controversy View PDF

    Pharma patents: tips and tricks to optimise and secure patent protection

    The successful building and handling of a strong pharmaceutical patent portfolio requires a great deal of engagement and proactivity. Neglecting just one factor could be sufficient to compromise an otherwise high-quality patent; a patent is only as strong as its weakest link View PDF

    Bilski’s impact on medical method patents

    The Bilski court held that abstract ideas cannot be patented, but recent months have provided clear indications that medical treatments and methods are patentable. However, patent applicants and practitioners should not allow this to distract them from the other requirements for patenting; all claims must still pass the novelty, obviousness and disclosure requirements View PDF

    SPCs: uncertainties, opportunities and threats

    Although supplementary protection certificates (SPCs) have been available since 1993, uncertainty remains concerning their grant, validity and scope. A number of cases concerning the interpretation of some fundamental aspects of the SPC regulations are now before the European Court of Justice View PDF

    Regulatory activities and infringement of pharmaceutical patents in Sweden – what is the connection?

    The EU IP Rights Enforcement Directive makes interlocutory injunctive relief available where infringement has been attempted or where preparations for infringement have been made. So, can the act of seeking and obtaining marketing authorisation or price approval for a generic product qualify as an attempt to infringe or prepare for infringement? View PDF

    Approval of follow-on biologics in Mexico

    Although the period for the Mexican Ministry of Health to issue regulations on the approval of biocomparables has expired, the draft regulations are still being reviewed, with input from the Mexican Association of Pharmaceutical Research and the National Association of Drug Manufacturers View PDF

    Patent licensing in the life sciences industry

    It is not always easy to gain ownership of valuable IP assets through one’s own inventiveness. As such, a key way of remaining profitable and competitive is by acquiring licences from the legitimate owners of IP assets. In recent years, many pharmaceutical and biotechnology giants have begun licensing Indian technology View PDF

    Trade secret protection - Issue 42

    Trade secrets in Mexico

    The Mexican legal system establishes protection for some, though not all, information. The elements that any given information must include in order to be considered as a trade secret are set out in Articles 82 and following of the Industrial Property Law. View PDF

    Trade secrets in the United States

    There is no statutory definition of a trade secret in the United States. However, there is a trend towards achieving some uniformity, with 46 states having adopted various statutes modelled after the Uniform Trade Secret Act (UTSA). The UTSA is a model law drafted by the National Conference of Commissions on Uniform State Laws. States that have not adopted the UTSA (eg, New York), have adopted their own state statutes and/or continue to apply common law. View PDF

    Trade secrets in Japan

    A “trade secret” is defined as any production method, sales system or other useful technical or operational information related to a business activity that is not known to the public and that has been kept in confidence (Section 2(6) of the Unfair Competition Prevention Act). View PDF

    Trade secrets in Germany

    In Germany, “trade secrets” comprise a broad variety of information, including technical know-how, commercial data and other business information. Examples of information that can constitute a trade secret include lists of addresses, documents of commercial offers, composition of materials, sources of supply, computer programs and their source code, information about production processes, lists of customers or suppliers, market research data, price calculations and drawings. View PDF

    IP litigation strategy 2010 - Issue 39

    The landscape of change in China

    China As China speeds towards becoming an innovation-based economy, foreign businesses have no choice but to engage with the Chinese IP system. However, uncertainties in the efficacy of that system mean that due diligence is more vital than ever for rights holders View PDF

    Is Japan a hostile environment for patents?

    Japan Despite low attorney fees, high damages and relatively fast trials, the number of patent cases being initiated in Japan is falling. Some commentators argue that Japanese patent litigation is actually antipatent, which may be affecting the number of cases filed View PDF

    The role of the expert witness in calculating damages

    USA The Federal Circuit Court of Appeals has set aside a US$358 million damages award in Lucent v Gateway, finding that the evidence was insufficient to support the jury’s verdict. The case provides some useful guidance on the role of expert witnesses in working out damages View PDF

    Trying patent cases in US federal courts: telling the story behind the technology

    USA Presenting patent cases is as much about how you tell it as what you tell. A compelling, well-rehearsed story about the obstacles an inventor has overcome to secure a patent is key to helping a judge and jury comprehend complex technical issues View PDF

    Patent pools - Issue 37

    Patent pools in practice

    USA Patent pools help markets develop and accelerate the adoption of technology standards while saving patent owners time and expense. They can bring order to a chaotic IP landscape View PDF

    Patent pools in China

    Hong kong China was initially suspicious of patent pools, viewing them as a threat to national interests. However, there is now a growing appreciation of the importance of joining pools and creating its own technologies, rather than resisting them View PDF

    Patent pools in high-tech industries

    USA Patent pools are the ideal solution wherever an independently administered, one-stop patent licence would be a convenient alternative providing efficient access to core patented technology View PDF

    A FRANDly dud – patent smurfs defeated

    Germany A recent German Federal Court of Justice decision on the FRAND defence strikes the perfect balance between the interests of patent owners and those of parties seeking a licence to their technology View PDF

    A guide to business method and software patent protection - Issue 35

    Computer-implemented inventions – the German view

    Germany The German Federal Court of Justice is essentially in line with the EPO Boards of Appeal in their rulings on the patentability of computerimplemented inventions. Both require that an invention have a technical character in order to be patentable View PDF

    Business method and software patent trends in India

    India Stakeholders agree that stronger protection is needed for software inventions in India, but the form that protection should take – and the patentability of such inventions themselves – are more contentious issues View PDF

    The hows and whys of software patent protection

    China Obtaining patent protection for software can be challenging since requirements vary from jurisdiction to jurisdiction – as historical and prevailing trends in the United States, Europe and China bear out View PDF

    Netherlands Obtaining patent protection for software can be challenging since requirements vary from jurisdiction to jurisdiction – as historical and prevailing trends in the United States, Europe and China bear out View PDF

    USA Obtaining patent protection for software can be challenging since requirements vary from jurisdiction to jurisdiction – as historical and prevailing trends in the United States, Europe and China bear out View PDF

    Patentable subject matter in the US: past, present and future

    USA The landmark Bilski decision has left commentators divided as to the fate of business method and software patents in the United States: some believe they will be harder to obtain and enforce, while others view the ruling as confirmation of their viability View PDF

    Commercialising university IP - Issue 34

    The Indian version of the Bayh-Dole Act

    India A bill that would allow governmentfunded academic institutions to patent their inventions has received a mixed reception. It should result in greater interaction between industry, academia and government, but some fear it does not protect the public interest View PDF

    How does your licence agreement address timely issues?

    USA Licensing deals are negotiated and licensing agreements written in real time. A robust pro forma licence agreement can save hours of transaction time at critical points in a deal View PDF

    The truth about business method patents

    USA Business method patents are still alive and well in the United States. However, the Federal Circuit’s landmark Bilski decision is a reminder that they must meet the “machine-or-transformation” test, like any other process claim. View PDF

    Options available when commercialising university IP

    China By implementing a sound and flexible IP management process, universities can spot the technologies most suitable for exploitation and give them a good start in life. For those that do so, there are rich rewards to be reaped View PDF

    England By implementing a sound and flexible IP management process, universities can spot the technologies most suitable for exploitation and give them a good start in life. For those that do so, there are rich rewards to be reaped View PDF

    IP and the internet - Issue 32

    Collective licensing of online music in Europe

    The European Commission has been at the forefront of recent rapid changes to online music licensing in Europe View PDF

    Trademarks on the internet – the US perspective

    Uncertainty is the name of the game for trademark owners in the US seeking to understand how internet affects their rights View PDF

    Key online copyright Key online copyright

    The rapid evolution of the internet exemplified by the Web 2.0 phenomenon brings new challenges, in particular for rights owners struggling to police the vastness of the web and cope with the exponential replication of content View PDF

    Keywords, metatags and hyperlinks – the legal position in Europe

    European courts often have conflicting views on how to deal with the legal challenges posed by keywords, metatags and hyperlinks View PDF

    Litigation focus - Issue 31

    Litigation focus

    Because intellectual property is a legal right, in the end it only has value if those that own it are ready to go to court to defend what they have. A company that is prepared to stand by and watch others infringe its patents, trademarks, copyrights or trade secrets will not be in business for long. Certainly, its shareholders will very quickly begin to ask questions. View PDF

    Outsourcing - Issue 25


    There is no doubting that these days outsourcing is a multi-billion dollar business. And it is not hard to see why, as companies are in a position to save substantial amounts of money when they send out work to be done by third parties at a fraction of the amount it would cost for the same to be done in-house View PDF

    IP finance and monetisation - Issue 23

    IP finance and monetisation

    Subscribers to IAM will be familiar with the fact that intangible assets are now more valuable to companies than they have ever been before. View PDF

    Germany focus - Issue 21

    Raising the roof with a successful IP strategy

    In the field of automotive component production, Webasto AG is a seasoned player. Its slick and streamlined IP department, along with excellent lines of communication, means it is well placed to extract maximum value from its rights, as well as get an edge in the market View PDF

    Life sciences companies follow different paths to success

    Nothing signifies Germany’s determination to position itself as a hub in the knowledge economy better than its life sciences industry. And, as in other countries, companies in the sector have contrasting approaches to commercialising their intellectual property View PDF

    Inside Europe’s IP powerhouse

    In this special roundtable, three leading experts discuss major issues currently facing IP owners in Germany View PDF

    Germany’s IP challenge

    Switzerland Although German companies have a strong innovative tradition, they must use intellectual property creatively if they are to be successful in meeting the economic challenges of the 21st century View PDF

    Litigation strategy focus - Issue 20

    Litigation strategy focus

    Because intellectual property is a legal right, in the end it only has value if those that own it are ready to go to court to defend what they have. A company that is prepared to stand by and watch others infringe its patents, trademarks, copyrights or trade secrets will not be in business for long. Certainly, its shareholders will very quickly begin to ask questions. View PDF


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