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Intellectual Property

24 June 2019
David Schwartz Canada introduces Bill C-100: step towards ratification of NAFTA 2.0

Canada - Smart & Biggar/Fetherstonhaugh

In a step towards ratifying the United States-Mexico-Canada Agreement (USMCA), the government recently introduced Bill C-100, entitled "An Act to implement the Agreement between Canada, the United States of America and the United Mexican States", in Parliament. If ratified, the USMCA will replace the North American Free Trade Agreement and will require several changes to Canada's IP laws.

Author: David Schwartz
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Katie Lee Federal Court dismisses Servier's application for order of prohibition regarding salt patent

Canada - Smart & Biggar/Fetherstonhaugh

The Federal Court recently dismissed Servier's application for a prohibition order under the pre-amended Patented Medicines (Notice of Compliance) Regulations for Canadian Patent 2,423,825 regarding a perindopril arginine/amlodipine product (Servier's Viacoram). Apotex had alleged that the patent was invalid for obviousness, overbreadth, inutility and insufficiency.

Author: Katie Lee
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Zhanhua Sun CNIPA releases draft amendment to patent examination guidelines

China - Wanhuida Peksung IP Group

The China National Intellectual Property Administration has released the Draft Amendment to the Patent Examination Guidelines. The draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings regarding patents. This article analyses the major proposed changes to patent examinations.

Authors: Zhanhua Sun, Xiaoling Duan
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Chisako Yagi TOP-SIDER case: improper use and cancellation of trademark registration

Japan - Nishimura & Asahi

A recent IP High Court case concerned the cancellation of a trademark registration due to a non-exclusive licensee's improper use of the registered mark. Cases regarding cancellation based on Article 53 of the Trademark Act are rare, and cases in which requests to cancel a trademark registration on this basis are granted are even more so. As such, this case is an interesting example of how the IP High Court determines improper use of a registered trademark.

Author: Chisako Yagi
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Héctor Elias Chagoya Senate ratifies USMCA: overview of IP chapter

Mexico - Becerril, Coca & Becerril SC

Mexico recently became the first country to ratify the United States-Mexico-Canada Agreement (USMCA), Chapter 20 of which is one of the most comprehensive IP chapters in any trade agreement. Although the 2018 amendments to Mexico's IP laws provided for most of the specific rights required under the USMCA, the country still has a lot to do to provide for the obligations regarding geographical indications, data exclusivity, trade secrets and enforcement.

Author: Héctor Elias Chagoya
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Bram Woltering Unauthorised filing of trademarks by agent or representative

Netherlands - AKD The Netherlands

The District Court of Gelderland recently rendered a judgment on the subject of unauthorised agent or representative filings. It deemed that a third party was so closely involved in the distribution agreement between two other parties that it could be ordered to transfer the trademarks that it had registered unauthorised, despite the third party arguing that it could not be regarded as an agent, representative or distributor of the two other parties.

Author: Bram Woltering
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Paula Gutiérrez Important changes to Copyright Act

Spain - Grau & Angulo

In March 2019 the Copyright Act was amended to bring Spanish copyright law into line with that of the European Union. In addition, the reform has reinforced the rights of authors and publishers, introduced new regulations on the functioning of collecting societies in order to increase the transparency and control of their operations in favour of authors and strengthened the regulations on combating piracy.

Author: Paula Gutiérrez
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Recent updates

David Schwartz Prior user rights under recently amended Patent Act

Canada - Smart & Biggar/Fetherstonhaugh

Authors: David Schwartz, Michael Sgro
Ruey-Sen Tsai Registering Chinese translations or transliterations of foreign trademarks

Taiwan - Lee and Li Attorneys at Law

Authors: Ruey-Sen Tsai, Celia Tao
Hewen Zhao Exception in determining functional features in patent infringement disputes

China - Wanhuida Peksung IP Group

Author: Hewen Zhao
Mathoto Masetla-Mafa Who can apply for a patent? Applicant versus inventor

South Africa - KISCH IP

Author: Mathoto Masetla-Mafa
Octavio Espejo Change to IMPI's letters patent practice

Mexico - Becerril, Coca & Becerril SC

Author: Octavio Espejo
Hans Eriksson Watch out! Patent and Market Court of Appeal finds watch protected by copyright

Sweden - Westerberg & Partners Advokatbyrå Ab

Authors: Hans Eriksson, Petter Larsson
Seema S Mansoor Proposed amendments to Patents Ordinance

Pakistan - Vellani & Vellani

Authors: Seema S Mansoor, Erum Rasheed
Alexander Vida Red Bull doesn't always give you wings: trademark applicant defeated by energy drink giant

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida

Upcoming events

Software IP 2019

2 October 2019 – Silicon Valley, Hyatt Place San Jose

Software is not just a thriving industry in its own right; these days it’s also an integral part of most industries. But as quickly as innovation arise, so to do challenges for IP executives and their advisers. IAM’s third annual Software IP event heads to Silicon Valley (2 October) to provide a platform for discussion around creating value from software IP and devising new protection strategies in areas such as AI, open source and SaaS.

For more details go to:

Patent Licensing 2019

3 October 2019 – San Francisco, Mission Bay Conference Centre

Although the licensing landscape is turbulent, there are still major opportunities for both licensors and licensees to conclude win-win agreements. But to do this, dealmakers need strategies to overcome the many obstacles and hurdles that they face, both internally and externally. IAM’s fifth annual Patent Licensing conference (San Francisco, 3 October) will provide licensors and licensees with best practices and innovative techniques for successfully negotiating deals.

For more details go to:

Brand Protection Online Europe 2019

14 October 2019 – London, etc.venues Monument

In the developing digital age, the requirements of brand protection have evolved in response to increasing threats around cybersecurity, advances in technology and the shifting roles and responsibilities within a business. Following a successful launch in Chicago earlier this year, Brand Protection Online heads to London on 14 October, gathering senior brand experts to discuss state-of-the-art online brand protection strategies.

For more details go to: