Latest updates

New law reforms IP Act and creates new ministry
Montt y Cia SA
  • Chile
  • December 18 2017

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.

Supreme Court hears oral argument on constitutionality of inter partes review in oil states
Fitzpatrick, Cella, Harper & Scinto
  • USA
  • December 18 2017

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.

Federal Court finds PMPRB unreasonable in determining that patent pertains to medicine
Smart & Biggar/Fetherstonhaugh
  • Canada
  • December 18 2017

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.

TRAB rules that unusual product shape is eligible for 3D trademark registration
Wanhuida Peksung
  • China
  • December 18 2017

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.

Do substantial differences exist in determination of equivalent infringement?
Lee and Li Attorneys at Law
  • Taiwan
  • December 18 2017

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.

Recent developments in Alexion cases
Smart & Biggar/Fetherstonhaugh
  • Canada
  • December 18 2017

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.

Globalisation and the use of geographical names in trademarks
Danubia Patent & Law Office LLC
  • Hungary
  • December 18 2017

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.

Likelihood of confusion of pharmaceutical trademarks
Obligado & Cia
  • Argentina
  • December 18 2017

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.

Criteria for examining motivation to replicate invention of patent application
Lee and Li Attorneys at Law
  • Taiwan
  • December 11 2017

When faced with the challenge of determining whether an invention patent specification has an inventive step when compared with the prior art, the courts must decide whether a person having ordinary skill in the art would be sufficiently motivated to combine the prior art references and replicate the invention. The criteria to make this determination was set out by the Patent Examination Guidelines 2013, and a recent IP Court decision serves as a useful model for this issue going forward.

Beijing High Court releases new jurisdiction rules for civil IP cases
Wanhuida Peksung
  • China
  • December 11 2017

Sources indicate that the Beijing High Court recently released the Provisions on the Adjustment of the Courts' Jurisdiction over Civil IP Cases in Beijing. The new provisions outline the jurisdiction of the Beijing High Court, the Beijing IP Court and the lower-level Beijing courts and abolish the Provisions on the Jurisdiction over First-Instance Civil IP Disputes Heard by People's Courts at Various Levels in Beijing 2008.

Collecting societies and the SIAE – another step towards liberalisation
IP Law Galli
  • Italy
  • December 11 2017

Lawmakers recently intervened in matters concerning collecting societies and copyright through the introduction of Decree-Law 148/2017. This new regulatory amendment further weakens the unjustified monopoly of the Italian copyright collecting agency. However, a number of issues concerning the new wording of Article 180 of the Copyright Law remain, which could result in the retention of inadmissible limitations contrary to EU law and the liberalisation of the market being deferred once again.

Working with Customs: vital and effective way to combat counterfeiters
Kim & Chang
  • South Korea
  • December 04 2017

One of the first lines of defence in preventing the spread of counterfeit and imitation goods is to stop such goods from entering a country at the borders. Accordingly, IP rights owners should always consider using customs' services as a part of their enforcement programmes in South Korea. In particular, IP rights owners should actively assist Customs in seizure cases and conduct training sessions for customs officers to educate them about their brands.

Same facts, different outcome: HIPO and Metropolitan Tribunal disagree on likelihood of confusion
Danubia Patent & Law Office LLC
  • Hungary
  • December 04 2017

A recent Metropolitan Court of Appeal case demonstrates that the determination of likelihood of confusion is often a sensitive issue. This case is notable, as the Hungarian Intellectual Property (HIPO) and the Metropolitan Tribunal came to different conclusions after examining the same facts. Although the HIPO rejected the opposition – holding that the visual and phonetic similarities between the marks in question were weak – the tribunal (and subsequently the court) disagreed.

Supreme Court sets standards for direct and indirect infringement of Swiss-type claims
AKD NV
  • Netherlands
  • December 04 2017

The Supreme Court recently rendered a landmark judgment on second medical use claims – more specifically, Swiss-type claims – which have been the subject of significant legal uncertainty throughout Europe. Although the judgment provides welcome clarification on Swiss-type claims with regard to the possibility of indirect infringement and the standards for direct and indirect infringement, some questions still remain.

Federal Circuit holds that TC Heartland was change of law
Fitzpatrick, Cella, Harper & Scinto
  • USA
  • December 04 2017

The Federal Circuit recently held that TC Heartland represented a change of law and that Micron Technology Inc's failure to raise a venue objection in its initial motion to dismiss did not waive the objection under Rule 12 of the Federal Rules of Civil Procedure. However, the court also explained that there may be other bases on which a defendant could be found to have forfeited a venue objection.

Similarity of device marks to be used as stitched ornamental marks
Nishimura & Asahi
  • Japan
  • December 04 2017

A Japanese company recently claimed that a Chinese company's trademark should be invalidated due to its similarity with the plaintiff's trademarks and the likelihood of confusion as to the source of the designated goods. Although the Japanese Patent Office Trial and Appeal Board rejected the plaintiff's claims, the IP High Court overturned this decision. The conclusive factor in the case was the way in which the similarity of marks should be assessed when they are intended to be stitched on certain goods.

Boundaries of fair use in news-related TV programmes
Lee and Li Attorneys at Law
  • Taiwan
  • November 27 2017

In order to provide full reports on news events, it is often inevitable that the works of others will be used. Should relevant laws be unable to empower journalists to claim fair use under certain circumstances, news reports may fail to be conducive to the formation of public opinion or fail to agree with the main purpose of copyright protection. Exemption regulations concerning fair use in news reports can be found in the Copyright Act.

Patented Medicine Prices Review Board update
Smart & Biggar/Fetherstonhaugh
  • Canada
  • November 27 2017

The Patented Medicine Prices Review Board recently announced the release of a hearing panel's decision regarding the pricing of a breakthrough drug and the publication of a report which compares lists of drugs covered by the public drug plans to determine the extent of overlap in drug coverage. Further, in response to an unopposed request filed by the board to do so, a hearing panel discontinued an excessive pricing proceeding relating to Apotex's Apo-Salvent CFC Free.

Court declares that administrative errors during application cannot void issued patent
Smart & Biggar/Fetherstonhaugh
  • Canada
  • November 27 2017

The Federal Court of Appeal recently ruled that Pfizer's failure to pay the correct issue fee did not render its patent void. In the context of a Section 8 case, Apotex had brought a partial summary judgment motion to have Pfizer's patent declared void for failure to comply with the Patent Act. The court cited the general principle that "pre-patent issuance defects in the administrative process for applying for a patent cannot be relied upon by an alleged infringer to render a patent void".

Two bites of the apple: five facts about drug patent inter partes review final written decisions
Fitzpatrick, Cella, Harper & Scinto
  • USA
  • November 20 2017

As of July 2017 there had been at least 363 inter partes review petitions filed against patents listed in the Food and Drug Administration's Orange Book and 74 filed against patents that have been identified as reading on Purple Book Centre for Drug Evaluation and Research-listed biologic drugs. Of these 437 inter partes reviews, 116 resulted in a final written decision. There are a number of lessons to be learned from these.

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