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IP Value 2012 - An International Guide for the Boardroom

The year it all changed

A study published by the World Intellectual Property Organisation (WIPO) in mid-November 2011 reported that the global IP market is now worth $180 billion a year. According to the World Intellectual Property Report 2011 – The Changing Face of Innovation, royalty and licensing fee revenue rose from $2.8 billion in 1970 to $27 billion in 1990, and hit $180 billion in 2009. This is faster than global gross domestic product rose over a similar period. In fact, because the statistics recorded by WIPO only went up to the end of 2009, it is possible that two years later the total may now have hit the $200 billion mark. View PDF

NYSE Euronext’s IP challenges

NYSE Euronext is a leading operator of financial markets in Europe and the United States and a provider of comprehensive trading technologies. The company’s exchanges trade equities, futures, options, fixed-income and exchange-traded products. NYSE Euronext’s equities markets – the New York Stock Exchange ®, NYSE Euronext, NYSE Amex ® , NYSE Alternext ® and NYSE Arca ® – represent one-third of the world’s equities trading and the most liquidity of any global exchange group, with approximately 8,000 listed issues (excluding European structured products) from more than 55 countries. NYSE Euronext recently announced its planned merger with Deutsche Borse which, pending regulatory approval, will expand this scope and create a world leader in equities and derivatives trading. View PDF

The current state of innovation in China

Since 1949 the Communist government has implemented a series of five-year plans that have guided the development of China from a poor developing nation to the second-largest global economy behind the United States in terms of both purchasing power and, more recently, gross domestic product (GDP). China has just completed the 11th Five-Year Plan for National Economic and Social Development. This plan highlighted innovation as a focus, and the corresponding science and technology plan articulated the country’s goal to become an innovation-oriented society by 2020. Many of the developments of the past five years illustrate how far China has moved towards that goal. View PDF

Legal perspectives: Cross border

All change at ICANN: domain names enter a new era

The Internet has had a major impact on the way in which companies do business. It is an indispensable facility for companies and businesses to share information with customers and clients and to collate and collect feedback and opinions. Companies with a significant online presence, such as Amazon, Google, eBay, Yahoo! and Facebook, are among the most valuable and successful in the world. View PDF

Doing business through social media: much to gain, but a lot to lose

Most companies, whether multinational corporations or smaller entities, now recognise the benefits of social media in doing business. By revolutionising the way in which companies communicate with existing and potential customers, and by offering a means of interacting with consumers who could not be reached by traditional means, social media has become an indispensable tool for modern marketing. View PDF

Worldwide trademark protection: coverage versus costs

When it comes to international trademark protection, business people are rightfully concerned about two things. The first is having protection in countries where it is critical to safeguard the use of important marks; the second is paying thousands of dollars for protection in places where this cost is simply not justified. This chapter focuses on how to can make an intelligent determination of an appropriate level of protection and the considerations that go into that determination. View PDF

Key considerations in transnational patent litigation

At first glance, the issue of transnational patent litigation appears to be of interest only to patentees, who are interested in designing a strategy to make optimum use of their intellectual property and to enforce their rights. However, this topic is equally important from the perspective of a potential defendant. As part of a comprehensive strategy, companies must consider weaknesses and strengths which may be used to defend against attacks from patentees. This may include actions outside the jurisdiction where a patent case has been initiated. A controlled escalation of a dispute can help to put an end to the whole dispute much more quickly than proceeding through an extensive litigation process. View PDF

Milestones for improving the protection of SME innovations

Although there has been substantial progress in harmonising IP regimes both across the world (with the Patent Cooperation Treaty (PCT) (1970), the Agreement on Trade-Related Aspects of IP Rights (1994) and the Singapore Treaty on the Law of Trademarks (2004)) and in Europe (through the European Patent Convention, the Community trademark, the Community design and the EU IP Rights Enforcement Directive (2004/48/EC)), there is still a long way to go. Even once the proposed US patent reform and the long-awaited European patent have come into force, this is still likely to be the case. View PDF

A unitary patent: not if, but when

A unitary system providing patent protection throughout all EU member states has been the dream of many in the IP world for more than 50 years. Today, after many false starts and numerous changes, this goal appears to be within touching distance. Will it be realised, or is it a case of too little, too late? This chapter looks at past efforts to predict the consequences of change and at the implications that the arrival of a truly unified system would have on established systems and procedures. View PDF

Legal perspectives: North America

Gene patents survive in the United States… for now

The mid-Summer 2011 ruling by the US Court of Appeals for the Federal Circuit in Association for Molecular Pathology v United States Patent and Trademark Office (commonly referred to as ‘Myriad’) has helped to calm some of the ripples in the biotech industry created by the district court’s ruling the previous year. In a split decision (two to one), the appellate court panel determined that isolated genes were not “products of nature” and thus could be patented. However, the majority of the method claims directed to ways to use genes were rejected. View PDF

Who owns federally funded inventions?

Recently, the Supreme Court reaffirmed the principle that an inventor has the right to patent his or her invention. Although this principle is rooted in the Constitution itself, the focus of the case had a decidedly modern twist. For anyone involved in the business of innovation – universities, inventors, start-up companies and companies seeking to collaborate with university researchers – the case underscores the importance of clarifying who owns what at the very earliest stages of the patent process. View PDF

To be a trade secret or not to be a trade secret: practical considerations when protecting IP assets

When attempting to protect their inventions, companies must make a sometimes daunting decision between trade secret protection and patent protection. This dilemma often occurs at the beginning of a research and development project. Should the technology, know-how and other IP assets be protected through trade secret protection or patent protection? It is hard to predict the future, particularly in terms of optimal IP protection. How can you know for certain which aspect of the IP asset is most likely to be commercially successful, or which is more likely to be attractive to competitors in terms of knock-offs, counterfeits or competitive alternatives, when the final result may be a long way off? View PDF

The patent monetisation cookbook: a structured approach to monetising patents

Businesses throughout the world are beginning to focus on the asset value of their patent portfolios. The rise of non-practising entities has also stemmed from the recognition that patents are valuable business assets that can be monetised. Recently, patent assets have been the primary driver of spectacularly large transactions. The speculation around the sale of a portion of Kodak’s patent portfolio, the patent asset-driven purchase of Motorola Mobility by Google for $12.5 billion and the $4.5 billion sale of 6,000 Nortel patents to a consortium including Apple and Microsoft are all excellent examples. Inevitably, transactions such as these have prompted corporate executives and boards to look more closely at their patent holdings with an eye towards monetising those assets. To them and others, monetisation is particularly interesting for patent assets that have been developed – as is often the case – in order to protect clever ideas, but without being aligned to business strategies, and are thus not supporting current business objectives. These shelf assets, the thinking goes, are potential sources of cash. View PDF

Legal perspectives: Latin America & Caribbean

Pirates, plantations, rum and reggae: the complex business of protecting IP rights in the Caribbean

The effectiveness of the various IP registries in the Caribbean region is a common concern for IP rights holders wishing to obtain protection in the islands. While some registries offer excellent service, others are not yet automated and are governed by out-of-date legislation. Some Caribbean countries are working hard to ensure that their IP regimes encourage innovation and are competitive – but this can pose a major challenge as, regardless of the amount of financial investment, what can be done when the relevant legislation is outdated? View PDF

Legal protection of databases: Jamaican litigants test the bounds of the Copyright Act

In early 2011 Jamaica’s Supreme Court issued a critical ruling on the Copyright Act which directly impacts on the telecommunications industry, as well as developers and users of databases in Jamaica. View PDF

Applying the doctrine of equivalents in patent litigation

The scarcity of patent litigation cases in Mexico as compared to other jurisdictions has resulted in a lack of case law in several key areas of patent litigation. One such area is the situation where a product does not have all of the features of the claims of a granted patent, but is so close that it appears that a feature was changed to circumvent patent coverage through the incorporation of an equivalent feature. Under US practice, this is known as the ‘doctrine of equivalents’. View PDF

Standing on its own: Venezuela re-establishes its national IP system

In Venezuela, domain names are issued by and protected through the Centro de Información de la Red de la República Bolivariana de Venezuela. The registry provides protection for second-level domain names for the ‘.co.ve’, ‘.com.ve’, ‘.net.ve’, ‘.org.ve’, ‘.info.ve’ and ‘.web.ve’ extensions. View PDF

Legal perspectives: Europe, Middle East & Africa

On a journey towards a specialised patent court

Over the past few years, patent enforcement in Denmark at court level has become more centralised, which has gradually led to the development of a court with a higher level of experience in patent cases. This is likely to improve legal certainty greatly for both patentees and accused infringers. View PDF

French copyright law: a complex coexistence of moral and patrimonial prerogatives

The French system of the ‘droit d’auteur’ (the right of the author) is generally perceived as being unique, and can be seen as a complex set of rules and principles that is directly opposed to the Anglo-Saxon copyright system. The particularity of the French system is mostly due to a single factor: the French concept of moral rights. View PDF

For your billing consideration: the Rechtsanwaltsvergütungsgesetz

This chapter is a testimonial to the alternative fee arrangement adopted by German law decades ago – and gives us the chance to promote the quality of (some) government regulations. In most jurisdictions, lawyers’ fees are calculated using billing by the hour. However, this is not the only method, nor necessarily the best. Particularly in regard tlitigation, alternative fee arrangements are becoming increasingly popular. View PDF

Qualitatively good, quantitatively poor

In recent years the Israeli patent system has undergone some changes to improve access and protection for patent holders. In addition, the courts have issued some key rulings in IP cases. View PDF

Norway to enforce tough measures for IP rights

In April 2011 the Ministry of Justice issued a proposal to strengthen IP rights enforcement. One reason for the reform being proposed is increased public awareness of the need to combat dangerous counterfeit products (especially pharmaceutical ones). The proposal includes all IP rights laws, with the exception of copyright. View PDF

Professional representatives in IP cases

Polish law provides that, in principle, a party may perform a legal action either personally or through a professional representative. In specific cases, a person may be represented by a family member, a company employee or another person who professionally represents other persons and companies before courts and public offices – a so-called ‘professional representative’, such as an attorney at law, a legal adviser or a patent attorney View PDF

Trademark registration applications in ‘no-man’s land’

The amended Romanian Trademark Law came into force on May 10 2010. The new law aims to be fully harmonised with the EU Trademarks Directive (2008/95/EC), although it also contains some original provisions. View PDF

Decisions, decisions: the courts lead the way in developing IP right

After two decades of ongoing law reforms, the Spanish courts are now applying a mature legal IP regime. The modern IP law has resulted in specialised and semispecialised courts and appeal courts, with the latter mainly located in Barcelona, Valencia, Bilbao and Madrid. This has allowed the Supreme Court, which is continuously trying to reduce the time taken to rule on appeals, to issue some landmark decisions over the past year. The result has been better comprehension of the economic issues involved in different cases. This chapter looks at some key aspects of IP law involved in recent developments in Spain. View PDF

Modernisation of Swedish IP law continues

The past year has seen a number of important developments in Swedish IP law, including the introduction of a new Trademarks Act and developments in the process of amending the Copyright Act, as well as a number of noteworthy judgments. View PDF

Developing patent law: the courts lead the way

This year has seen several interesting developments in UK patent law. The law relating to obviousness, which has been a recurrent topic in Court of Appeal decisions over the past few years, made a reappearance this year in a case relating to a drug patent. In Merck Sharp & Dohme Corp v Teva Ltd the Court of Appeal dismissed an appeal against an earlier High Court decision granting Teva UK Limited’s application for revocation of Merck Sharpe’s patent relating to ophthalmic compositions for the treatment of glaucoma on the basis of a prior art document published just six days before the priority date of the patent. View PDF

Legal perspectives: Asia-Pacific

Globally aligning the Australian IP environment

Due to a steady increase in jurisprudence created under the three most recent of Australia’s four major IP acts, and through ongoing amendment of the Patents Act 1990 (Cth) in particular, the Australian IP environment is becoming increasingly aligned with those of the world’s major IP jurisdictions. Although in the past the quality of Australian court decisions has varied, the fact that there is now a bench of experienced IP judges (including the chief justice of the High Court of Australia) which pays close attention to decisions in other jurisdictions means that IP case outcomes in Australia can increasingly be expected to mirror those elsewhere. This chapter highlights recent cases and changes. View PDF

Onwards and upwards: the fight to protect IP rights continue

China has continued to refine its legislative framework for the protection of intellectual property. Many new and draft laws and regulations concerning different aspects of IP rights have been issued over the past year. The judiciary and other enforcement authorities have also been active. Further, despite the slowdown in the Chinese economy, patent and trademark filings have increased. View PDF

Extending celebrity status to IP rights

Legendary Bollywood actor Amitabh Bachchan recently lent his voice to an unusual IP rights case in the media and entertainment industry. He spoke out against the unauthorised use of a soundalike of his distinctive deep baritone in an advertisement promoting a brand of gutka (chewing tobacco), an association which was detrimental to his image. Previously, Rajnikant, another legendary actor from the South Indian film industry, issued a legal notice warning against the imitation of his persona and character traits for commercial gain, including unauthorised advertisements, before the release of his film Baba. The legal notice published in various leading regional and national newspapers was an assertion by Rajnikant of his personality rights. While Indian celebrities have intermittently attempted to protect their personality rights, the law on this aspect has taken a long time to develop. View PDF

Recent amendments to the Patent Act

As technology has become more sophisticated and complex in recent years, companies can no longer rely solely on their own development activities. In order to speed up the development of new technologies and introduce to the market value-added products using such technologies, the use of outside resources is inevitable. Thus, there has been a trend towards open innovation, which is where a number of companies share technologies for research, development and production. View PDF

Courts tackle key issues: jurisdiction and broadcasting rights

This chapter explores two key decisions in Malaysian IP law: • Yong Teng Hing B/S Hong Kong Trading Co v Walton International Ltd, a decision handed down by the Federal Court, the highest Malaysian appellate court, on jurisdiction; and • MediaCorp News Pte Ltd v MediaBanc Sdn Bhd ([2010] 6 MLJ 657), a rare High Court decision on the issue of copyright in broadcasting. View PDF

Tackling the import of counterfeit products through border measures

As Sri Lanka is situated in an area where many international business and trade transactions take place – particularly in regard to trade relations between the European Union, the United States and the emerging economies of East Asia – many goods pass through Sri Lankan ports, through various channels of commerce. Among these transactions, a significant number of counterfeit products are often moved within and outside Sri Lanka. Therefore, the protection of IP rights at border crossings is vital to brand and copyright owners in order to safeguard their IP rights and sustain their businesses. View PDF

Overhauling the Trademark Law

In order to harmonise national legislation with international law, satisfy industry needs, optimise the trademark examination system and enhance trademark protection, in recent years the Legislative Yuan has been working on amendments to the Trademark Law, effectively revising more than 85% of the current provisions. The amended act was promulgated on June 29 2011 following a first draft in 2007. Although the effective date of the amended law has not yet been View PDF

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