Intellectual Property updates

Canada

Contributed by Smart & Biggar
Late PCT national phase entry in Canada as of right will soon come to an end
  • Canada
  • 26 October 2020

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.

Federal Court of Appeal affirms largest reported Canadian patent infringement award in history
  • Canada
  • 26 October 2020

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.


China

Contributed by Wanhuida Intellectual Property
Van Cleef & Arpels' four-leaf clover 3D trademark invalidated in China due to lack of distinctiveness
  • China
  • 26 October 2020

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.


Mexico

Contributed by Becerril Coca & Becerril SC
Evolution and current status of e-filing for patent applications
  • Mexico
  • 26 October 2020

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.


Poland

Contributed by Sołtysiński Kawecki & Szlęzak
Sole acquisition of author's economic copyrights does not grant monopoly on use of work
  • Poland
  • 26 October 2020

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.


South Korea

Contributed by NAM & NAM
Influence of functional parts when determining design similarity
  • South Korea
  • 26 October 2020

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.