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IP Value 2010 - An International Guide for the Boardroom
Towards a CIPO consensus
In the old days, to be the head of intellectual property at
an organisation probably meant looking after its filing
operation, ensuring the renewals were done on time,
deciding when and where to enforce, and keeping an eye
out for the latest legal developments. How times change.
Quantifying the financial impact of reputation
When Rembrandts in the Attic was published in 1999
the possibilities seemed limitless. No longer would
intellectual property be a legal backwater. Rather, a chief
executive officer need only rummage through the attic
to uncover priceless patent assets and turn years of
unfocused research and development into significant
new revenue streams. Of course, the reality turned out
to be much more complex.
In times of crisis, companies can leverage reputation and brand power
To many, Wall Street has become an emblem of greed,
power and elitism in the wake of the financial and
economic crisis. People have lost faith and trust in the
system. This is fatal, as trust is at the foundation of
how the markets work. As Chief Executive Officer
(CEO) Duncan Niederauer said in a recent NYSE Euronext
advertising initiative, you have to have trust in the
system. When investors come to the market feeling
confident and willing to invest, it translates into
business and job creation. This chain is vital.
From acorns to oak trees: how patent audits help innovations reach their full potential
What can Aristotle teach us about intellectual property?
A core component of the ancient Greek philosopher’s
world view was the idea that the true meaning of any
object can be understood only by examining its fullest
potential. So, for example, the essence of an acorn is not
a round nut or squirrel food or even a seed; it is an oak
tree. This higher calling is what guides the acorn along
its path from a tiny seed to germination and growth to
become one of the largest, strongest trees in the forest.
Legal perspectives: Cross border
Europe
Using Community design rights to protect creativity
Historically, IP rights have been obtained and enforced
nationally. However, economic cooperation and closer
integration between EU member states have led to
increasing harmonisation of national IP laws. The EU
authorities have begun to develop a common approach
towards IP rights throughout Europe. In addition, there
are EU-level tools of protection, such as the Community
trademark and the Community design, which allow
rights holders to benefit from a single right enforceable
in all EU member states, through one application and
one administrative process.
Europe
When patents become standard: litigation for ‘essential’ patents
Over the past few years, litigation over the infringement
of patents that are deemed to be essential to comply
with certain technical standards has grown significantly
throughout the world. Litigating such standard-essential
patents is different from litigating ordinary patents.
While it may be easier for patentees to demonstrate that
a standard-essential patent is being infringed, the rules
of the relevant standard-setting organisation, as well as
antitrust considerations, may offer entirely new
defences to the defendant. This chapter summarises the
most important aspects that arise when dealing with
standard-essential patents.
Europe
Sponsored keywords – greater clarity needed in Europe
In an internet economy that is struggling to settle on a
viable business model, keyword advertising has proved
to be a contender. Google, Yahoo! and Microsoft all offer
services that allow companies to sponsor keywords to
ensure that their advertisements appear in sponsored
links close to the ‘natural’ search results generated by a
search engine. Keyword advertising has become such an
important part of an effective advertising strategy that
popular keywords have become valuable commodities.
Europe
The IP law and competition law overlap: lessons to learn for patent owners
Recently intellectual property has again become a focus
of attention for competition law experts. Criticism
has been levelled from various sides regarding the
alleged abuse of dominant market positions resulting
from key IP rights in different business sectors. The
public view means that intellectual property is
sometimes condemned as being anti-competitive,
as well as being bad for the social and economic
development of nations
Europe
New rules for divisional patent applications: patent strategy will need to change
On April 1 2010 the European Patent Convention will
be amended in a manner that will have a fundamental
impact on IP business and strategy. The implementing
regulations of the convention will be amended in regard
to the possibility of filing divisional applications.
Similarly, the rules on the European search report
will also be changed.
International
Managing an international trademark portfolio
Trademark law is frequently considered to be one of
the more exotic areas of law. The legal protection of
trademarks, particularly at international level, requires a
high degree of specialisation in the field. It also requires
an understanding of the laws of numerous jurisdictions.
When the trademarks are in the pharmaceutical sector,
things become even more complex.
International
IP issues in open innovation and collaboration
An engineer in Company A wants to enter into a
research and development (R&D) collaboration within
a research consortium. After considering the matter,
Company A decides that the rules regarding ownership
and licensing of the intellectual property created or
developed within the consortium are not flexible enough
and so does not participate in any collaborative research
endeavour within the consortium.
Legal perspectives: North America
Canada
Shedding light on selection patents: new business challenges
The landscape of pharmaceutical patents has recently
changed in Canada. A Supreme Court battle pitched
generic drug company Apotex against Sanofi-Aventis
over the validity of Sanofi-Aventis’s selection patent,
which covers the anti-coagulating drug Plavix. The
decision, in favour of Sanofi-Aventis, affirmed the
patentability of Plavix even when one of Sanofi-
Aventis’s earlier patents claimed a mixture that
contained the drug, but which the Sanofi-Aventis
scientists had not identified as being valuable.
United States
Gene patents under attack
Recently patent owners and applicants have run into
stormy waters in the United States. KSR v Teleflex
lowered the bar on finding obviousness, leading to a
significant number of patents being invalidated and
applications rejected on this ground. Business method
patents were curtailed in 2009 by the new ‘machine-or-transformation’ test announced in In re Bilski and face
additional uncertainty over the next year while the
patent community waits to see how the Supreme Court
rules on the appeal.
United States
Re-examination: a dagger and a shield for impacting on IP value
Re-examination of a granted US patent can be a powerful
procedural weapon that can galvanise or destroy a
patent’s value. Everyone responsible for driving a
company’s return on research and development
investment should be familiar with its power. A recent
study by The BTI Consulting Group, Inc highlighted the
need for top management to embrace cost-control as a
risk management tool. Re-examination can be part of
an effective cost-control strategy for risk management
when dealing with IP issues. Third parties can use
re-examination to attack a competitor’s valued patent
and patent owners can use re-examination to strengthen
a patent’s armour and render it more impervious to
attack. Thus, re-examination has achieved prominence
as a weapon which can directly impact on the market
value of a company’s IP portfolio.
United States
Supreme Court takes a second look at patent exhaustion, but is it déjà vu again?
In its much-anticipated decision in Quanta Computer, Inc
v LG Electronics, Inc (128 S Ct 2109 (2008)), the US
Supreme Court – addressing the patent exhaustion
doctrine after a 60-year hiatus – repeated its earlier
Univis rule that “the initial authorized sale of a patented
item terminates all patent rights to that item”. Because
Quanta may generate renewed interest in the exhaustion
doctrine, it is important that patent portfolio managers
and practitioners understand the origins of this doctrine
and the specific analysis in Quanta, to help them deal
with potential patent exhaustion issues that might
surface when drafting licence agreements, and in
planning patent enforcement and settlement strategies.
United States
You thought you bought it, but you only rented it: involuntary termination of copyright ownership
Do you have a business that relies on assets that are
copyrighted in the United States? If so, a nasty surprise
may be coming your way. Your ownership of copyrighted
works purchased or commissioned from external writers
or artists (generally referred to as authors) can be
unilaterally terminated, without your permission, by
the author or the author’s heirs – and there is very
little you can do to stop it. Such a termination can
deprive your business of valuable assets upon which
large investments have been made
United States
How best to get a result at the US Patent and Trademark Office post-KSR
atent applicants face many challenges in the current
environment. Changes to examination practices
introduced since KSR v Teleflex (550 US 398, 2007) and
the increasing load on examiners have made it more
difficult to get patent applications allowed. However,
the authors of this chapter do not believe that KSR has
altered the prosecution picture as much as some
commentators would have us believe. The obviousness
analysis today is very similar to that which existed in
the mid-to-late 1980s.
United States
The future of software and business method patents
In 1787, when the US Constitution was written, there
were no cars, aeroplanes, repeating rifles or electricity.
There was also no such thing as the Internet, mobile
phones, personal digital assistants or nanotechnology.
The transistor, the building block for the computer age
in which we live, first appeared in 1962, and the
techniques for unravelling the mysteries of DNA were
developed in the 1960s. Each of these great inventions
resulted in the issuance of numerous patents by the US
Patent and Trademark Office. Since the adoption of the
Constitution, every new invention has been required to
satisfy the test established by Congress under Article I
of that document.
United States
Written description in chemical and pharmaceutical patents
The written description requirement in the chemical
and pharmaceutical industries is based on a unique,
ever-evolving factual situation applying a technologyneutral
statute. Given the range of issues, drafting,
prosecution and enforcement strategies have become
more complicated, with the courts providing ambiguous
guidance as to what is sufficient. As the Federal Circuit
has warned, adequacy of written description “must be
decided on its own facts” and “the precedential value
of cases in this area is extremely limited” (Noelle v
Lederman, 355 F3d 1343 (Fed Cir 2004)).
Legal perspectives: Latin America & Caribbean
Brazil
Change is in the air as sporting events draw closer
The variety and complexity of proposed changes to
Brazilian IP legislation and practice during the past year
demonstrate that all players (government, courts and the
private sector) have woken up to the key strategic value
of intellectual property as a driver for sustainable
growth in the Brazilian economy
Jamaica
Local pharmaceutical companies win temporary relief from Pfizer
Through a long-awaited ruling under Jamaica’s archaic
Patent Law of 1857, local pharmaceutical companies
Medimpex Jamaica Limited and Lasco Distributors
Limited emerged victors over pharmaceutical giant
Pfizer Limited when judgment was handed down in
their favour on July 29 2009.
Mexico
How to claim damages for IP violations
The Mexican Institute of Industrial Property (MIIP) is
the body responsible for determining whether an IP
infringement has taken place. It issues such a
determination after the conclusion of an administrative
proceeding, which is prosecuted in the same way as a
full trial. These administrative proceedings are governed
by the Industrial Property Law, which also establishes
penalties for those found guilty of infringement –
penalties range from a fine or an administrative arrest
to the permanent closure of the infringer’s business.
Venezuela
What next for industrial property as Venezuela leaves the Andean Community
On September 17 2008 the director of the Venezuelan
IP agency, the Servicio Autónomo de la Propiedad
Intelectual (SAPI), announced that as a result of
Venezuela’s withdrawal from the Andean Community
of Nations, the applicable law for industrial property
was now the Law of 1955. This announcement
effectively annulled the application of the Andean
Community of Nations Decision 486 regulating
industrial property rights in Venezuela.
Legal perspectives: Europe, Middle East & Africa
Croatia
Croatia gets its IP regime in order as EU membership looms
Croatia’s negotiations to join the European Union are
helping to propel this fast-growing economy into the
frontline of developed nations. The chapter on
intellectual property, Chapter VII, is now complete,
meaning that the Croatian IP system is fully harmonised
with that of the European Union. Croatian citizens and
companies are becoming increasingly aware of the
usefulness and importance of intellectual property.
Despite this, the majority of applications for IP
protection are still filed by foreign companies and
individuals, although this can largely be attributed to
the costs involved in pursuing this kind of protection.
Czech Republic
Know your IP rights: protecting your business in the Czech Republic
Since 2000, when the Czech Republic began the last
stage of the process to join the European Union, every
year has seen changes in the field of IP rights. However,
after close to a decade of often radical legislative change,
there is little IP news to report for 2009 and no major
legislative changes are planned for 2010. This is good
news not only for lawyers, who can finally put away
their textbooks, but also – and most importantly – for
those most interested in the IP regime: the companies
and individuals seeking to protect their intellectual
property. The Czech Republic, which has always had
comprehensive IP protection, has now been brought
into line with the rest of Europe. Therefore, if a
company has experience with an IP regime in one EU
member state, the situation in the Czech Republic is
likely to be very similar.
France
How to build an IP rights infringement case
In civil proceedings the burden of proof requires the
plaintiff to provide the judge with the relevant documents
or information in support of its claim. Therefore, in
principle, the plaintiff must prove each element of the
claim in order to convince the judge of its merits.
Germany
And the Academy Award for best IP venue goes to...
Consider the following situation. A new technology
emerges that takes the film viewing experience to a
previously unknown level. The enthusiastic reception
that greets this new technology worldwide confirms that
this is a game changer – the film industry will never be
the same again.
Greece
EU directive provides little help to Greek patent owners
In Greek legal theory and practice, IP rights comprise
copyright and industrial property rights, as defined in
Article 8(18) of Law 2557/199. However, when the EU
IP Rights Enforcement Directive (2004/48/EC) was
implemented into Greek law, the legislature adopted a
much more restrictive view of IP rights than that taken
in the directive. As a result, Law 3524/2007, which was
supposed to harmonise Greek law with the directive,
has so far amended only the Copyright Law (2121/1993).
Although the EU directive refers to every form of
intel lectual property, the Greek implementing law has
not yet had any effect or application on trademark
or patent law. Even if, as is generally expected, the
directive is incorporated into a forthcoming amendment
of the Trademark Law, there has been no discussion
about whether the new law will modify the Patent Law
(1733/87).
Israel
The only road to enforcement: patent infringement lawsuits
In Israel, there is only one possible avenue for patentees
seeking to enforce their rights against infringers: a
lawsuit for patent infringement. Under the Patent
Law, the district courts have exclusive jurisdiction
over patent infringement cases. However, in 1998 the
Supreme Court of Israel held that in cases where an
invention has not been registered as a patent, there
may be circumstances in which a remedy can be
granted under the Unjust Enrichment Act.
Italy
A year in intellectual property – and a look to the future
In recent years some key changes have been made to the
Italian IP legislation, including:
• the introduction in 2003 of 12 specialised IP courts,
which have exclusive competence in IP matters;
• the enactment in 2005 of the IP Code, which
collected all the relevant IP laws into a single code
and introduced some major improvements; and
• the implementation of the EU IP Rights Enforcement
Directive (2004/48/EC) in 2006, which amended
both the Copyright Law and the new IP Code.
Norway
Courts lead the way in IP rights enforcement
In 2008 and 2009 the Norwegian courts ruled on a
fair number of IP cases. The recent trend of increasing
numbers of patent cases reaching the courts has
continued: the Supreme Court heard one patent case in
2008 and two in 2009. This represents a considerable
increase compared to previous years.
Poland
Practical know-how on supplementary protection certificates
Supplementary protection certificates (SPCs) became
legal in Poland when it acceded to the European Union
on May 1 2004. EU Regulation 1768/92, which regulates
SPCs for medicinal products, has been in force in Poland
since that date
Romania
Protecting utility models: a useful Protecting utility models: a useful
Since March 13 2008 it has been possible to protect
‘small inventions’ in Romania. The legal provisions lay
down a framework harmonised with the international
conventions, treaties and agreements to which Romania
is a signatory, offering inventors a useful alternative for
protecting their interests in Romania. The applicable
national laws are:
• the Law on Utility Models (350/2007); and
• Decision 1457 approving the regulation for the
application of the Law on Utility Models.
Russia
Recent IP developments: hot topics and key court decisions
Part IV of the Civil Code of the Russian Federation came
into effect on January 1 2008, bringing together all the
rules governing intellectual property that had previously
been included in a variety of laws. Part IV of the Civil
Code is really an intellectual property code, containing
general provisions applicable to all spheres of intellectual
property and provisions regulating specific areas, such as
copyright, trademarks and inventions. New case law is
also taking shape on the basis of the new IP legislation.
South Africa
Impairment testing of acquired intellectual property in developing economies
When they were first implemented, International
Financial Reporting Standard (IFRS) 3 and International
Accounting Standard (IAS) 38, requiring acquired
goodwill and intangible assets with indefinite useful
lives to be tested annually for impairment, caused some
surprise in the investment community.
Spain
New challenges in the ever-expanding IP field
In recent years the Spanish industrial property
regulations have been modernised, thus raising them to
a level equivalent to the laws of other EU member states
regarding trademarks (in 2002), designs (2003) and
competition (2007). The patent regulations were
modernised in 1986 and then updated to include rules
for unfair competition (1991), biotechnological
inventions (2002) and the Bolar clause (2006). Further,
in 2006 all the industrial property laws were brought
into line with the EU IP Rights Enforcement Directive.
Sweden
Online rights and piracy fight make for a busy year
Over the last year, Swedish IP law has been much
characterised by internet-related matters, in particular
by the implementation of the EU IP Enforcement
Directive and the judgment in the Pirate Bay Case.
Further developments include proposed amendments
to existing law as well as other interesting judgments –
for instance, regarding copyright protection for works
of applied art.
United Kingdom
Recent developments in patent law
The past year has seen some key legal developments in
the patent field. In the first-ever UK decision on this
issue, the High Court ruled on the employee
compensation scheme for patented inventions under the
Patents Act 1977, resulting in a successful claim by two
employees against their former employer. The House of
Lords (replaced since October 1 2009 by the Supreme
Court) clarified the applicable law as to insufficiency,
the subject of its earlier ruling in Biogen. Finally, the
Court of Appeal considered the criteria to apply to a
commercial success defence when dealing with an attack
based on obviousness.
Legal perspectives: Asia-Pacific
Australia
Managing intellectual assets in the changing IP landscape
Most companies operate in a competitive and changing
environment. Those at the helm need to reassess
continually the company’s commercial strategy and
understand the changing IP landscape and the
company’s freedom to operate, while at the same time
seeking to strengthen the company’s position through
effective management of its intellectual assets. A
number of Australian decisions issued this year have
changed the IP landscape and have implications for
the management of a company’s intellectual assets,
including its patenting strategy.
China & Hong Kong
IP law continues to evolve in China and Hong Kong
This chapter looks at the major IP developments in
China and Hong Kong over the past year.
India
Legal issues in advertising: major implications for IP rights
Heraclitus said that “a hidden connection is stronger
than an obvious one”. In the world of advertising many
hidden connections exist, which can be considered from
two key angles:
• the legality of an advertisement or its claims – an
issue that affects the advertiser and the agency, as
well as consumers and society in general; and
• the benefits of advertising from the perspective of
enhanced brand value – this can be measured not
only in monetary terms, but also in terms of the
licensing opportunities to which it may lead.
Malaysia
Recent developments in intellectual property
Over the past year the courts have considered a myriad
of IP issues, contributing to the advancement of IP
law and practice in Malaysia. This chapter highlights
several interesting cases, two of which involved
international marks.
Taiwan
Draft act looks set to rewrite the patent landscape
The Taiwan Intellectual Property Office (TIPO) has
proposed a wide range of amendments to the Patent Act,
even though the current act has been in force only since
July 1 2004. In February and March 2009, TIPO held a
series of public hearings with practitioners and various
interested groups, and eventually published a new draft
Patent Act on August 3 2009. The draft act would
change all but eight of the current act’s 138 articles.
TIPO argues that the proposed amendments will
improve Taiwan’s patent practice and facilitate future
industrial developments.
Thailand
New laws bring expanded rights and additional obligations
Thailand’s IP laws have come under increased scrutiny
as the country pushes to overcome its long-held
reputation as a haven for counterfeiting and piracy.
Efforts to transform this perception – and the
underlying reality – have taken two forms. First,
increased enforcement, led by government officials and
committed IP owners, is having a meaningful impact on
the market. Second, there is a noteworthy trend among
both policymakers and the judiciary to modernise
existing laws and practices. New statutes are being
implemented and existing legislation is being amended
to help Thailand cope with the current challenges and
integrate more fully into the broader framework of
international IP law. Taken together, these legal and
practical changes offer appealing options and expanded
rights to IP owners, while also imposing certain new
obligations of which boardroom-level executives must
be aware. This chapter highlights some of the key
changes that are underway.
Vietnam
Improved IP rights enforcement: benefits for IP rights owners and business
The Vietnamese legislation on the protection of IP rights
is mainly contained in the Intellectual Property Law
(November 29 2005). This law, along with other related
laws such as the Civil Code 2005, the Penal Code 1999,
the Competition Law 2004, the Customs Law 2001 and
the Information Technology Law 2006, forms a clear
legal framework for the protection and enforcement of
IP rights in Vietnam. It is a framework that is seen by
IP rights owners, IP practitioners and observers as
compatible with international rules in the IP area.
