Watermark

Innovative inventions? Obviously!

17 Dec 2008 - Australian law provides for a two-tiered patent system: the standard patent and the innovation patent. Innovation patents not only are useful to protect those incremental inventions that cannot be protected under the standard system, but can also be wielded as a powerful tool by the patentee when faced with an allegedly infringing product of a competitor. Full text

How to cut the budget without losing the intellectual asset farm

19 Nov 2008 - In these times of financial uncertainty, many enterprises are obliged to review costs, minimise expenditure (at least in the short term) and try as best they can to preserve the strategic assets of the business for better times. Intellectual assets are not immune from these demands. Full text

High Court considers contributory infringement provisions of Patents Act 1990 for the first time

05 Nov 2008 - The recent decision of the High Court of Australia in Northern Territory of Australia v Collins provides guidance as to the meaning of the contributory infringement provisions under Section 117 of the Patents Act 1990 in patent infringement proceedings. Through the decision, a controversial issue of Australian patent law has been laid to rest. Full text

Ogilvy Renault LLP

Inadvertent lapse of patent rights in Canada

08 Oct 2008 - The Federal Court of Appeal has rendered a decision in DBC Marine, a closely watched case concerning the inadvertent lapse of patent rights. However, the ruling could have implications beyond the inadvertent abandonment of rights in a patent application. Full text

Protecting your natural health products

24 Sep 2008 - Natural health products (NHPs) represent a growing market in Canada. This has made protection and dealing with regulatory authorities more important for manufacturers and sellers than ever. A myth persists that no protection of intellectual property is available for NHPs; but this is a common misconception. Full text

Inequitable conduct in patent prosecution in Canada?

27 Aug 2008 - Since 1927 Canadian courts have held that a patent is not invalid simply as a result of a misrepresentation made during the prosecution of the application, at least in the absence of fraud. Allegations of such misrepresentation are frequently based on the applicant’s response to a request from the patent examiner under Rule 29 of the Patent Rules. Full text

Wilkinson & Grist

Supreme People’s Court consults on interpretation of well-known marks

17 Dec 2008 - The Supreme People’s Court of China has carried out a public consultation on the draft Interpretation of Certain Questions on Application of Law Relating to the Recognition and Protection of Well-Known Marks in the Adjudication of Civil Disputes such as Trademark Infringements. Full text

China demonstrates dedication to improving examination quality

03 Dec 2008 - As a step towards raising the standard of trademark examination and achieving consistency among different examination units, the China Trademark Office recently carried out its first trademark examination quality control inspection. The inspection was considered a success, as a total of 97.45% of sample cases passed the inspection. Full text

Draft changes to the Patent Law under public consultation

08 Oct 2008 - The Patent Law is undergoing its third revision to date and draft amendments to the law have been published for public consultation. Among other things, the draft adopts the absolute novelty standard and imposes a higher patentability threshold for design patents. Full text

Korper I Partneri

Implementation of supplementary patent certificates postponed

10 Dec 2008 - The European Union has asked Croatia to postpone the implementation of the supplementary patent certificate provisions set out in the recently published Act on Amendments to the Patent Act. The request arose following some discrepancies between EU practice and that of the Croatian State Intellectual Property Office. Full text

Overlap between parallel imports and the protection of IP rights

10 Sep 2008 - Although Croatia is not an EU member state, the Market Competition Protection Agency considers EU practice when dealing with conflicts between legislation relating to trademark protection and regulations protecting competition. However, Croatia has yet to establish its own position on this issue. Full text

The impact of public health issues on exclusive patent rights

02 Jul 2008 - Croatian legislation regarding public health issues and their impact on exclusive patent rights is in line with the EU acquis communautaire and other international standards. For example, the research or experimental use exception is recognised under Article 63 of the Patent Law. Full text

Markides, Markides & Co Law Office

Co-ownership of a Cypriot patent

29 Oct 2008 - In enacting the Patent Law the Cypriot legislative authorities missed an opportunity to enact comprehensive legal rules regulating the rights and obligations of each co-owner of a patent towards each other and towards third parties. As a result, uncertainty surrounds the issue of the co-ownership of patents. Full text

Registering marks in Cyprus: a guide for foreign rights holders

30 Apr 2008 - Cyprus can serve as a useful point of entry into the EU market for foreign rights holders. However, before launching on the market, rights holders would do well to ensure that their trademarks are properly registered, and in doing so should bear in mind some of the peculiarities of registering trademarks in Cyprus. Full text

The politics of intellectual property in Cyprus: an introduction

05 Mar 2008 - Before trying to understand IP law in Cyprus, it is important that foreign practitioners have some appreciation of the political elements that shape the operation of all laws in Cyprus. These have had a particular effect on IP protection and enforcement in the north of the island, which has been occupied by Turkey since 1974. Full text

Zacco

IP rights strategy in practice: Arla Foods

03 Dec 2008 - For many years Arla Foods has dealt with IP rights, in particular trademarks, and the company is aware of how important trademarks are to its success. In this article Jakob Balling, Arla's IP specialist, discusses the company’s recently adopted five-year company strategy, in which brands and trademarks play a prominent role. Full text

Patent challenge is finally resolved after 28 years

15 Oct 2008 - On 21st August 2008 the Danish Supreme Court handed down a final ruling in a patent dispute that had been running for 28 years. Even after the presentation of a pertinent French patent, Fritz Amstrup used all the available appeal options - but at no time did he produce anything to justify the granting of the patent. Full text

Do you have permission?

09 Jul 2008 - When a company is considering registering a new trademark for a drug, it should search to check earlier trademarks. However, it must also check whether the trademark will be approved by the Danish Medicines Agency and whether it will be possible to market the medicinal preparation under the chosen trademark. Full text

Baker & McKenzie SCP

New dispute resolution procedure for ".fr" domain names

22 Oct 2008 - AFNIC, the registry responsible for the ".fr" country-code top-level domain, has implemented a new online dispute resolution procedure dedicated to “obvious” infringements. The most significant advantage is that AFNIC now handles the whole procedure itself, from examination of the application to enforcement of the decision. Full text

Use of trademarks as keywords: Supreme Court requests ECJ ruling

02 Jul 2008 - In recent years the French courts have tended to find search engines liable for selling trademarks as keywords, although the legal grounds for such decisions have varied widely. However, this situation may soon be resolved since the Supreme Court has requested a preliminary ruling from the European Court of Justice on these issues in three cases against Google. Full text

New law gives rights holders better weapons against counterfeiters

24 Oct 2007 - The French Senate has adopted a draft law that gives rights holders new and significantly improved legal weapons against counterfeiters. Initially intended to implement the EU IP Rights Enforcement Directive, the law standardises and improves the procedures available to holders of trademarks, designs and models, copyrights and patents. Full text

Cohausz & Florack

Are patent trolls waiting at the gates?

11 Jun 2008 - Although cases between major players and so-called “patent trolls” have been big business in the United States, so far such litigation has not reached Europe. However, with a recent infringement suit reportedly valued at €12 billion and reports that the German patent litigation system could prove fertile ground for patent trolls, could it be that Germany is facing a patent revolution? Full text

Judge Thomas Kühnen is appointed chair of leading German IP appeals court

20 Feb 2008 - Experienced patent judge Thomas Kühnen has been appointed as presiding judge of the Second Civil Senate of the Dusseldorf Higher Regional Court. The appointment of such an expert – in his former position Kühnen helped preside over the landmark MPEG-2 Cases – is good news for patent litigation in Germany. Full text

Cheaper patents for all as France ratifies London Agreement

13 Feb 2008 - The London Agreement is due to come into force in a matter of months after France deposited the instrument of ratification with the German Ministry of Justice on 29th January. The agreement, which will enter into force on 1st May, will make patenting in Europe about 30% cheaper by reducing post-grant translation costs. Full text

Wilkinson & Grist

Court issues Norwich Pharmacal order against website-hosting service provider

26 Nov 2008 - The Hong Kong High Court has granted Norwich Pharmacal relief to three North American satellite broadcasters to disclose owners of certain websites providing hardware and software that allows the descrambling of the broadcasters' encryption technology. Full text

NAKED mark not registrable for condoms

01 Oct 2008 - The trademarks registrar has rejected an application to register the mark NAKED for condoms on the grounds that the mark was descriptive and devoid of any distinctive character. The registrar considered that consumers would perceive the mark as describing a characteristic of the goods rather than as a badge of origin. Full text

New offence under the Trade Descriptions Ordinance

10 Sep 2008 - The Trade Descriptions (Amendment) Ordinance 2008, which was published in the Government Gazette on 27th June 2008 but has yet to come into force, introduces a new offence of false or misleading representation in regard to a seller’s connection with another party, which is akin to statutory passing off. Full text

A&L Goodbody

IP tax incentives to form key pillar of Irish economic recovery plan

10 Dec 2008 - The Irish government recently announced improved IP tax incentives in the hope that Ireland will become a global centre for IP development. It is also reported to be close to announcing a plan involving a range of tax incentives to entice foreign companies to establish research and development (R&D) activities in Ireland and to foster the development of indigenous R&D. Full text

Passing off: two key decisions from the High Court

10 Sep 2008 - Two recent cases before the Irish High Court highlight the value of an action for passing off as a means of protecting brand features in the absence of trademark registration. The first considered a claim against United Biscuits, while the second involved St Patrick’s Whiskey. Full text

Record companies take on ISP over file sharing

25 Jun 2008 - Four major record companies have launched a case against Eircom, Ireland’s largest internet service provider, in conjunction with the Irish Recorded Music Association. They claim that Eircom is infringing their copyright through members who share and download copyrighted material. Full text

Gilat, Bareket & Co, Reinhold Cohn Group

No miracle for publisher of religious law code

26 Nov 2008 - The Jerusalem District Court has dismissed claims of copyright infringement, misappropriation, passing off, unjust enrichment and defamation brought by Ketuvim Almog Ltd, the publisher of an indexed edition of Maimonides's Mishneh Torah (a classic code of Jewish religious law), against
a Jewish institute of learning. Full text

Parallel registration of two GALILEE WINERY marks allowed

01 Oct 2008 - In cross-opposition proceedings, the deputy registrar of trademarks has dismissed oppositions to the registration of the marks GALILEE WINERY and GALILEE MOUNTAINS WINERY for goods in the same class, holding that both marks could coexist on the register. Among other things, the registrar held that the market for wine and that for other alcoholic beverages are clearly distinguishable. Full text

Descriptive use exception does not obviate need for disclaimer

27 Aug 2008 - The registrar of trademarks has upheld a decision to make the registration of three device marks containing the words "lady speed stick" conditional on the applicant including a notice of disclaimer for "lady" and "stick". Among other things, the registrar held that the applicant could not rely on the descriptive use exception under Section 47 of the Trademarks Ordinance. Full text

Jacobacci & Partners

Restitutio in integrum: a recent Board of Appeals decision

19 Nov 2008 - The Board of Appeals of the Italian Patent Office has issued a decision confirming that an appeal must be decided according to the law in force at the time a petition for restitutio in integrum was rejected at first instance. It also confirmed that adequate diligence is a precondition for restitutio in integrum. Full text

EPO prior art searches now apply to national patent applications

30 Jul 2008 - A new search and examination regime for patent applications has entered into force, according to which an Italian application filed on or after that date will be subject to a search report and patentability opinion issued by the European Patent Office, and to a further examination on the merits by the Italian Patent and Trademark Office. Full text

PTO expected to relax its approach to restoration applications

07 May 2008 - The Patent and Trademark Office’s (PTO) practice in relation to restitutio in integrum is expected to relax following a recent decision involving a German holder of a European patent. The PTO Board of Appeals held that the law requires only that evidence be submitted that the degree of diligence demanded by the circumstances has been applied. Full text

Uchida & Samejima Law Firm

IP High Court sets new precedent for adding new material

17 Sep 2008 - Japanese patent practice is known as the strictest in the world in regard to the prohibition on adding new material. However, the Grand Panel of the IP High Court recently rendered a judgment that may lower the standard for the prohibition on adding new material. Full text

Indirect online infringement: a growing trend

25 Jun 2008 - In Japan, the courts have tended to judge the owners of online services which allow the copying of television programmes or music files as being guilty of indirect copyright infringement, even though it is the users who make the copies. However, new systems are in the pipeline which should benefit online service owners. Full text

Securitising patents in the global credit crunch

09 Apr 2008 - Although there has been only one patent securitisation in Japan to date, the deal reveals valuable pointers for the way that future transactions might proceed. In addition, the new Trust Law offers alternative structures for securitising patents, which could make such transactions more popular in future. Full text

Olivares & Cia

Using the criminal law to fight online piracy

15 Oct 2008 - To date, the Mexican criminal law system has proved to be an effective means of fighting certain forms of online piracy. One recent example was a criminal action brought by the member studios of the Motion Picture Association of America against SigloX.com, an illegal television website. Full text

New IP Court gears up for business

14 May 2008 - The Federal Court of Tax and Administrative Affairs has published a decree establishing a specialised IP court. Once three magistrates are appointed by the president and approved by the Senate, the court will hear all IP trials in Mexico. It is hoped that the court will be able to deliver swifter and more consistent decisions in this area. Full text

Pharma regulations signal new regime for generic registrations

05 Mar 2008 - A new decree modifying several provisions of the Regulations for Health Consumables has been published in the Official Gazette. The decree eliminates the distinction between ‘generics’ and ‘interchangeable generics’, and establishes that henceforth generic medicines will need to prove interchangeability with a medicine of reference. Full text

Nederlandsch Octrooibureau

EPC 2000 improves position of Dutch patent proprietors

10 Dec 2008 - Under Dutch patent law, patent proprietors may amend claims after grant. The conditions for such amendments are identical to the conditions imposed by the European Patent Convention (EPC) 2000 on amendments of granted patents during opposition proceedings, and substantially similar to the conditions under which the EPC 2000 allows national law to revoke patents. Full text

Second and further medical use claims under the EPC 2000

08 Oct 2008 - The European Patent Convention (EPC) 2000 provides for the patentability (subject to the requirements of novelty and inventive step) of a known substance or composition not only for its first use as a medicament, but also for further medical uses. Recently a referral to the Enlarged Board of Appeal was made regarding the allowability of dosage regimes in (further) medical use claims under the EPC 2000 - an issue that was generally considered resolved under the old EPC. Full text

Supplementary protection certificates: when is a product protected by a basic patent?

07 May 2008 - In Ranbaxy v Warner-Lambert the Court of Appeal of The Hague has provided criteria for assessing Article 3(a) of the Supplementary Protection Certificate Regulation. It remains to be seen how this decision will influence the practice of the Netherlands Patent Office. Full text

Advokatfirmaet Grette DA

Supreme Court reasserts principle of restraint in Norwegian Patent Office judicial review cases

17 Dec 2008 - Few patent cases make it all the way to the Supreme Court. However, in November 2008 the Supreme Court heard and decided an appeal in a case concerning judicial review of the Norwegian Patent Office’s refusal to grant a patent. In the decision the Supreme Court reassessed the well-established Swingball principle. Full text

Appeal court applies doctrine of equivalents in lansoprazole case

02 Jul 2008 - The Borgarting Court of Appeal has issued another decision confirming the use of the doctrine of equivalents in cases involving analogy method patents. The court held that ratiopharm had infringed Takeda’s patent for preparing lansoprazole and awarded damages of Nkr28.5 million. Full text

Court confirms that equivalents doctrine applies to ‘analogy method’ patents

12 Mar 2008 - In Pfizer v Sandoz the Borgarting Court of Appeal has held that Sandoz’s method for the production of generic Sertraline infringed Pfizer’s patent under the doctrine of equivalents. The decision is significant in that it confirms that the doctrine of equivalents also applies to so-called ‘analogy method’ patents. Full text

RPTO offers new Ideas Envelope service

08 Oct 2008 - The Romanian Patent and Trademark Office has launched the Ideas Envelope, a new service allowing the deposit and protection of documents containing works and creations that cannot be protected under existing IP laws. Although the service does not confer IP protection, it may be effective in establishing the origin of contested works. Full text

Court overturns practice of refusing common shape marks

21 May 2008 - Following a protracted legal battle, the Bucharest Court of Appeal has compelled the State Office for Inventions and Trademarks to revise its practice of refusing to register trademarks containing common shapes. The court held that a trademark’s distinctive character must be assessed by considering the trademark as a whole. Full text

Romanian geographical indicators go European as system is harmonised

20 Feb 2008 - A new system on protection for geographical indications and designations of origin is helping to bring the Romanian regime into line with the current Community approach in this area. However, a number of contradictory provisions in national legislation must still be amended before full harmonisation can be achieved. Full text

Criticism grows over World Cup prohibited marks

10 Oct 2007 - Controversy has surrounded the publication of a list of FIFA trademarks and words, which the minister of trade and industry proposes be declared as prohibited marks in preparation for the 2010 World Cup. Critics argue that none of these marks is unique to FIFA and the list could potentially lead to absurdities, such as making any 2010 calendar illegal. Full text

Supreme Court swings trademark law back to European roots

11 Jul 2007 - The Supreme Court has ruled that an advertisement for car polish featuring a BMW car did not infringe BMW’s marks. The decision not only brings South African trademark law further into line with EU legal practice, but has also been welcomed for ensuring that IP rights cannot be used to restrict competition in the market. Full text

Gómez-Acebo & Pombo Abogados

Using the hypothetical royalty fee to assess patent infringement damages

10 Dec 2008 - In recent years the Spanish courts have taken a divided approach to the application of the hypothetical royalty fee criterion when assessing damages for patent infringement. However, a recent Supreme Court decision has resolved the conflict in favour of the patentee-friendly approach. Full text

Appeal court clarifies patent issues in Pfizer decision

10 Sep 2008 - The Barcelona Court of Appeal has issued a decision dealing with a number of key issues in the field of patents. In particular, the court clarified the meaning and scope of Article 61.2 of the Patents Act, and considered whether damages should be applied automatically in cases of patent infringement. Full text

Ownership of designs and models resulting from commission

02 Jul 2008 - In a recent case involving a Community design created as a commissioned piece of work, Alicante Mercantile Court No 1 has referred several questions to the European Court of Justice. At present, Spanish national legislation treats designs created by an employee and designs created on commission in the same manner. Full text

Mannheimer Swartling

The Pirate Bay Case: latest developments

12 Nov 2008 - The proceedings against the founders of The Pirate Bay website in Sweden which were initiated in 2006 are still ongoing. The website facilitates the sharing of a wide range of files which are reproduced and made available to the public without the consent of the relevant rights holders. The main hearing has now been set for mid-February 2009. Full text

Strengthened protection for trade secrets

29 Oct 2008 - Since the entry into force of the Act for the Protection of Trade Secrets almost 20 years ago, the conditions for running businesses have changed in many ways. To deal with this, the government appointed an inquiry to review certain issues regarding the protection of trade secrets and to consider whether the act should be amended to fulfil the needs of modern businesses more effectively. Full text

Implementation of EU IP Enforcement Directive delayed… again

20 Aug 2008 - The Swedish implementation of the EU IP Enforcement Directive is severely delayed. The government’s failure to implement by the original April 2006 deadline recently caused the European Court of Justice to find Sweden guilty of breaching its treaty obligations. Sweden also failed to meet the new deadline of 1st July 2008 and implementation is now scheduled for 1st January 2009. Full text

Lenz & Staehelin

A big year for Swiss IP legislation

05 Dec 2007 - This year has been a significant one for Swiss IP legislation, with five separate amendments to the Patent Act and four to the Copyright Act. Some changes were necessitated by the opening of the Federal Administrative Court at the beginning of 2007, while others serve to ratify and implement international agreements. Full text

Formosa Transnational

New examination standards for computer software-related inventions

13 Aug 2008 - In order to deal with the rapid development of computer software technologies, the Taiwan Intellectual Property Office has issued the amended Patent Examination Standards for Computer Software. The amendments update the standards issued in 1998 to deal with pressing issues. Full text

Big changes will bring Taiwan’s Patent Law up to date

30 Apr 2008 - In order to catch up with the rapid development of technology and changes regarding international IP rights, more than 40 articles of the Patent Law (approximately one-third of the law) are due to be amended. It is hoped that the amended law will improve efficiency and quality in patent applications. Full text

First patenting guidelines for traditional Chinese medicine

16 Jan 2008 - The Taiwan Intellectual Property Office (TIPO) has issued draft patent examination guidelines that are specifically designed for Chinese medicine products. The guidelines, which are the first of their kind in this field, aim to clarify the examination procedure for both TIPO and patent applicants. Full text

Chavalit & Associates Ltd

Supreme Court sets new precedent for figurative marks

10 Sep 2008 - Owners of figurative element marks have struggled to obtain trademark registrations from the IP Office since many limitations are imposed on such registrations. However, two recent Supreme Court judgments have set a new precedent, allowing the registration of Coca-Cola and Sprite bottles as figurative marks. Full text

Teething troubles over Paris Convention and PCT

16 Apr 2008 - Although the Thai government has voted to accede to the Paris Convention and the Patent Cooperation Treaty (PCT), it could be a while before patent applicants can enjoy the benefits of this decision. In particular, several laws will need amending in order to bring them into line with the obligations set out in both the convention and the PCT. Full text

New Copyright Act sets it sights on chaotic royalty collection

09 Jan 2008 - A revised Copyright Act, which contains provisions relating to royalty collection, has been proposed and now passed by the Office of the Council of State. It is hoped that the act will help to resolve deep-seated problems with the collection of royalties, including too many collecting societies and ungoverned royalty rates. Full text

Marks & Clerk

EPO u-turn is good news for UK patent holders

19 Dec 2007 - The European Patent Office has announced that it will participate in a pilot scheme with the US Patent and Trademark Office to accelerate patent applications. This is good news for UK patent holders as the increased harmonisation should result in greater efficiency in terms of time and spend throughout the filing process. Full text

French to give UK pan-European businesses valuable Christmas present

14 Nov 2007 - UK patent applicants can look forward to big reductions in the cost of registering patents when the London Agreement comes into force. While the agreement will reduce translation costs for all applicants, UK businesses will benefit doubly as English has so far been chosen as the official language by all member states with a choice. Full text

Countdown for new UK trademark examination rules

05 Sep 2007 - From October 1 2007 the UK Intellectual Property Office will examine UK trademarks only on the basis of absolute grounds, with a view to realising greater conformity with European Community trademark procedures. But what will this mean in practice? Full text

Kenyon & Kenyon LLP

In Re Bilski and its impact on business method patents

12 Nov 2008 - The US Court of Appeals for the Federal Circuit has issued its decision in In Re Bilski. Although the decision is primarily directed to so-called “business method” patents and is therefore of particular significance to the financial services and online retailing communities, it has broader application to all process patents. Full text