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Intellectual Property

26 October 2020
David Schwartz Late PCT national phase entry in Canada as of right will soon come to an end

Canada - Smart & Biggar

Substantial amendments to the Patent Act and new Patent Rules came into force in October 2019. A significant change concerns the deadline for entering the Canadian national phase of a Patent Cooperation Treaty application. Under the new provisions, if an application enters the national phase more than 30 months from the earliest priority date, a reinstatement fee must be paid and the applicant must submit a request that its rights be reinstated and a statement that the failure to meet the deadline was unintentional.

Author: David Schwartz
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Daniel Hnatchuk Federal Court of Appeal affirms largest reported Canadian patent infringement award in history

Canada - Smart & Biggar

In previous Federal Court decisions, the court ordered Nova Chemicals Corporation to pay the Dow Chemical Company approximately C$650 million as a result of Nova's infringement of Dow's patent on novel polyethylene blends. This was the largest reported Canadian patent infringement award in history. The Federal Court of Appeal has now issued its judgment and reasons on the appeal.

Author: Daniel Hnatchuk
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Danliang Wang Van Cleef & Arpels' four-leaf clover 3D trademark invalidated in China due to lack of distinctiveness

China - Wanhuida Intellectual Property

The Beijing IP Court recently denied the inherent and acquired distinctiveness of Van Cleef & Arpels' four-leaf clover 3D trademark. Van Cleef & Arpels appealed before the Beijing High Court and the case is pending. The Beijing IP Court has set a high threshold in assessing the registrability of a 3D trademark which consists of a product shape. It remains to be seen whether this view is shared by the Beijing High Court.

Author: Danliang Wang
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Héctor Elias Chagoya Evolution and current status of e-filing for patent applications

Mexico - Becerril Coca & Becerril SC

The COVID-19 pandemic has evidenced the need for an efficient and safe system for the electronic prosecution of patent applications and has forced the Mexican Institute of Industrial Property to make such a system available for applications originally filed in paper format. However, as this article shows, the path to this outcome has not been straightforward.

Author: Héctor Elias Chagoya
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Szymon Gogulski Sole acquisition of author's economic copyrights does not grant monopoly on use of work

Poland - Sołtysiński Kawecki & Szlęzak

A recent disagreement over a logotype illustrates a common situation where acquirers of an author's economic copyrights are convinced that they have exclusive rights to all forms of use and modification of the work without the need to obtain the author's consent. However, the reality is that in addition to the transfer of an author's economic copyright, agreements should also cover the possibility of making changes and using the modified works.

Authors: Szymon Gogulski, Jacek Zwara
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Jae-sang Lim Influence of functional parts when determining design similarity

South Korea - NAM & NAM

When determining the similarity of designs, how is a court's judgment affected when a design element has commonality with a functional element? A recent Supreme Court decision allows some insight into this question. Per existing precedent, the Supreme Court ruled that where the common parts of compared designs are an intrinsic part of the product, or a basic or functional form of the design, such parts should be given low importance.

Author: Jae-sang Lim
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Marcella Ballard Amazon launches new Counterfeit Crimes Unit

USA - Venable LLP

Despite the implementation of several programmes in recent years, the traffic of counterfeit goods remains a problem for Amazon. As such, it recently announced the launch of a new Counterfeit Crimes Unit in an effort to stifle the trade of counterfeit goods on its international marketplace. The unit is a global team that will use Amazon's own internal data, third-party payment service providers and on-the-ground assets to identify bad actors and bring them to justice.

Authors: Marcella Ballard, Kristen Ruisi, Maria Sinatra
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Recent updates

Alexander Vida Likelihood of confusion decision draws on ECJ case law

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida
Tsung-Yuan Shen Is commercial success a factor considered in determining non-obviousness of a patent?

Taiwan - Lee and Li Attorneys at Law

Author: Tsung-Yuan Shen
Cesare Galli Italy nominates Milan as third head office of UPC instead of London

Italy - IP Law Galli

Author: Cesare Galli
Tierney GB Deluzio Why you should designate Canada – and a Canadian agent – in your next Madrid application

Canada - Smart & Biggar

Authors: Tierney GB Deluzio, Mark Evans
Maria Girbau Vehicle workshop owner convicted for using labels featuring BOSCH trademark on his machines

Spain - Grau & Angulo

Author: Maria Girbau
Ian Mirandah New trademark system's 'soft opening'

Myanmar - Mirandah Asia

Author: Ian Mirandah
Marcella Ballard Approaching 420: cannabis trademark scene one year on from USPTO examination guidelines

USA - Venable LLP

Authors: Marcella Ballard, Kristen Ruisi, Maria Sinatra
Hewen Zhao Clear and convincing evidence standard should be applied to prior art taking form of physical objects

China - Wanhuida Intellectual Property

Author: Hewen Zhao

Upcoming events

Patent Litigation 2020

10 November 2020 - Washington DC, United States

IAM’s Patent Litigation returns to Washington DC for its sixth year, bringing together leading IP experts in both litigation and policy. Well established as the must-attend event for anyone interested in how the legal and political climates shape the patent market, panellists will represent a broad cross-section of the patent community.


For more details please visit:
https://cvent.me/WL7rgn?RefId=Lex+listing

IP 2020

17-19 November 2020

From the fight against COVID-19 to the US election, 2020 has been a year of significant change with much of the world adapting to the new normal and the United States gearing up for either a second Trump term or a new Biden administration. IAM’s IP 2020, which will be hosted virtually in November 2020, will provide IP experts an opportunity to break down and assess the latest dynamics of the US patent system – from policy making on Capitol Hill and the most significant Federal Circuit case law to the latest ins and outs of district court litigation and the ongoing evolution of the US Patent Trial and Appeal Board.


For more details please visit:
https://cvent.me/4BorLe?RefId=LEX

IAM Industry Review 2020

30 November – 9 December 2020

Most of the world’s major economies have been subject to some kind of pandemic-induced lockdown in 2020, but that does not mean that everything has stopped. As well as adjusting to the multiple practical and strategic challenges posed by COVID-19, IP professionals in a number of key industries have also had to absorb regulatory developments, potentially game-changing court decisions, new legislation, big deals and a shifting patent landscape. IAM’s Industry Review 2020 will focus on five key business sectors: life sciences; telecoms; automotive; software and AI; and semiconductors. For each one, leading experts will explore the year’s ups, downs and pivotal moments, while dissecting what they will mean for 2021.


For more details please visit:
https://cvent.me/ZQZ3N3?RefId=LexILO

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