Intellectual Property

December 18 2017
Daniel R Zuccherino Likelihood of confusion of pharmaceutical trademarks

Argentina - Obligado & Cia

Argentine law contains no specific rules on the risk of confusion regarding pharmaceutical products and legal commentators and case law provide opposing views of whether common or stricter criteria should be applied. In this context, the most recent legislation and judicial decisions recognise that each particular case should be analysed separately in order to determine which criteria should be applied.

Author: Daniel R Zuccherino
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Urszula Wojtyra Federal Court finds PMPRB unreasonable in determining that patent pertains to medicine

Canada - Smart & Biggar/Fetherstonhaugh

The Federal Court recently found that the Patented Medicine Prices Review Board's assessment that a patent pertained to Galderma Canada's Differin was unreasonable, as it had failed to consider the entire patent. As a result, the court quashed the board's decision requiring Galderma to file pricing information for Differin.

Author: Urszula Wojtyra
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Urszula Wojtyra Recent developments in Alexion cases

Canada - Smart & Biggar/Fetherstonhaugh

The Federal Court of Appeal recently heard Alexion's appeal of a decision striking out its constitutional challenge to the price regulation scheme and confiscatory powers found in the Patent Act. A decision is under reserve. Alexion also has a pending judicial review of the Patented Medicine Prices Review Board's decision that it sold Soliris (eculizumab) at excessive prices.

Author: Urszula Wojtyra
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Juan Pablo Zamora New law reforms IP Act and creates new ministry

Chile - Montt y Cia SA

Law 21,045, which was recently published in the Official Gazette, created the Ministry of Culture, Arts and Patrimony and reformed the IP Act through the creation of the National Cultural Patrimony Service. Under the changes introduced, the Intellectual Rights Department is now under the auspices of the National Cultural Patrimony Service. As a result, all IP matters are now part of the new Ministry of Arts, Cultures and Patrimony.

Author: Juan Pablo Zamora
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Xiangrong Wu TRAB rules that unusual product shape is eligible for 3D trademark registration

China - Wanhuida Peksung

Registering a three-dimensional (3D) trademark is difficult and the Chinese courts have failed to develop reliable jurisprudence on this matter. However, a recent Trademark Review and Adjudication Board decision concerning the world-famous Little Trees car air fresheners reaffirms the registrability and inherent distinctiveness of 3D marks that comprise the unusual shape of a product.

Author: Xiangrong Wu
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Alexander Vida Globalisation and the use of geographical names in trademarks

Hungary - Danubia Patent & Law Office LLC

The owner of the international trademark ELEVEN PARIS filed for an extension of protection in Hungary, which the Hungarian Intellectual Property Office (HIPO) refused on the basis that the inclusion of the geographical name Paris could be misleading. The Metropolitan Tribunal annulled the HIPO's decision and ordered it to re-examine the application. The tribunal's obiter dicta on globalisation and its consequences for the use of geographical names in trademarks are notable.

Author: Alexander Vida
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May Chen Do substantial differences exist in determination of equivalent infringement?

Taiwan - Lee and Li Attorneys at Law

Generally, technical features disclosed in a patent claim relating to mechanical or electrical engineering are more suitable for breakdown into basic comparison units that realise a certain function or deliver a certain result independently. Therefore, the triple-identity test is often used in these technical fields in determining equivalent infringement under the doctrine of equivalents. However, the Supreme Court recently held that it is insufficient to conclude patent infringement with a general triple-identity test.

Author: May Chen
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Christopher Loh Supreme Court hears oral argument on constitutionality of inter partes review in oil states

USA - Fitzpatrick, Cella, Harper & Scinto

The Supreme Court recently heard oral argument in Oil States Energy Services, LLC v Greene's Energy Group, LLC. The Supreme Court's decision in this case will either spare or strike down inter partes review as a means for challenging the validity of issued patents in the United States.

Author: Christopher Loh
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Recent updates

Cesare Galli Collecting societies and the SIAE – another step towards liberalisation

Italy - IP Law Galli

Author: Cesare Galli
May Chen Criteria for examining motivation to replicate invention of patent application

Taiwan - Lee and Li Attorneys at Law

Author: May Chen
Hui Huang Beijing High Court releases new jurisdiction rules for civil IP cases

China - Wanhuida Peksung

Authors: Hui Huang, Paul Ranjard, Huimin Qin, Nan Jiang
Chisako Yagi Similarity of device marks to be used as stitched ornamental marks

Japan - Nishimura & Asahi

Author: Chisako Yagi
Seung Hee Lee Working with Customs: vital and effective way to combat counterfeiters

South Korea - Kim & Chang

Authors: Seung Hee Lee, Jason J Lee
Christopher Loh Federal Circuit holds that TC Heartland was change of law

USA - Fitzpatrick, Cella, Harper & Scinto

Authors: Christopher Loh, Judy Kim
Bram Woltering Supreme Court sets standards for direct and indirect infringement of Swiss-type claims

Netherlands - AKD NV

Authors: Bram Woltering, Peter Claassen
Alexander Vida Same facts, different outcome: HIPO and Metropolitan Tribunal disagree on likelihood of confusion

Hungary - Danubia Patent & Law Office LLC

Author: Alexander Vida

Upcoming events

2nd Pharma and Biotech IP Summit

February 8 2018 - London

IAM’s second annual Pharma and Biotech IP Summit will once again bring together leading IP experts from across life sciences. Last year’s Brexit vote added further uncertainty to an already precarious life sciences IP market and with the Unified Patent Court now thrown into confusion, the political and legislative landscape is one to navigate with caution. Against this backdrop, attendees will hear the latest IP strategies for thriving at a time when regulatory and legislative changes are significantly impacting business models.


For more details go to:
https://goo.gl/j6u71g

IPBC India 2018

March 13 2018 – Mumbai, India

India is a fascinating IP market that is growing at an unprecedented pace. Robust debate over pharmaceuticals, software and standards makes for a vibrant IP policy environment, but should not overshadow the strong protection available to high-tech R&D and manufacturing companies. Complexities abound, rights holders need strategic knowledge to maximise their success in the jurisdiction. Against this background, IAM is pleased to be returning to the Taj Land’s End Hotel, Mumbai, for the second annual IPBC India conference.


For more details go to:
http://bit.ly/IPBCI2018

IPBC Global 2018

June 10-12 2018 – San Francisco, United States

IAM’s 11th annual IPBC Global offers an unrivalled opportunity to put yourself at the heart of discussions involving those who make the world’s IP weather. Featuring top-level IP business experts, the programme will provide a detailed overview of the developing global IP landscape, explore the implications of recent events, focus on emerging business models and review best-practice value creation strategies. It is the one IP event that you cannot afford to miss.


For more details go to:
http://bit.ly/IPBCG18

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