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Intellectual Property

17 June 2019
David Schwartz Prior user rights under recently amended Patent Act

Canada - Smart & Biggar/Fetherstonhaugh

The Budget Implementation Act 2 has brought about several changes to the Patent Act that affect the scope of protection available under Canadian patents, including a revision of Section 56, which concerns the rights of prior users of patented technologies. However, as many of the Section 56 amendments will require judicial interpretation, the true scope of prior user rights under the revised provision may be unknown for some time.

Authors: David Schwartz, Michael Sgro
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Jamie-Lynn Kraft Top 10 changes to Canada's trademark law

Canada - Smart & Biggar/Fetherstonhaugh

After five years of anticipation, sweeping changes to Canada's trademark law have finally come into force. Among other things, Canadian applicants can now file applications in more than 80 countries around the world through a single international application and declarations of use are no longer required to secure registrations.

Author: Jamie-Lynn Kraft
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Hewen Zhao Exception in determining functional features in patent infringement disputes

China - Wanhuida Peksung IP Group

In patent infringement disputes, it is possible to narrowly construe a feature to the specific embodiment and its equivalent embodiment by arguing that a claimed feature is a functional one. The accused infringer usually adopts this strategy in its non-infringement defence to narrowly construe the scope of patent protection to obtain a favourable position in the infringement comparison. A recent case serves as a reference on how to determine the functional features in patent infringement disputes.

Author: Hewen Zhao
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Ruey-Sen Tsai Registering Chinese translations or transliterations of foreign trademarks

Taiwan - Lee and Li Attorneys at Law

As Chinese (Mandarin) is Taiwan's national language, many foreign companies use Chinese translations or transliterations of their foreign brands (trademarks) in order to expand into the Taiwanese market. However, as Chinese characters can have different pronunciations and meanings, there are often multiple ways of translating or transliterating foreign trademarks into Chinese. The Intellectual Property Court recently addressed this issue in an administrative case relating to a trademark opposition.

Authors: Ruey-Sen Tsai, Celia Tao
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