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Intellectual Property

21 October 2019
Jeremy Want Foreign prosecution history evidence permitted under Section 53.1 of Patent Act

Canada - Smart & Biggar

The Federal Court recently released the first decision in which the scope of Section 53.1 of the Patent Act – the so-called 'file wrapper estoppel' provision – was considered. The court's decision suggests that, notwithstanding the clear language of the provision, foreign prosecution histories may be admissible for the purposes of claim construction in certain extraordinary circumstances.

Authors: Jeremy Want, Matthew Norton
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David Schwartz Get ready now: new Patent Rules in force 30 October 2019

Canada - Smart & Biggar

Two requirements under the new Patent Rules warrant particular attention for new Canadian patent applications and national phase entries: the Patent Cooperation Treaty national phase entry deadline and the requirement for certified copies of priority documents. Applicants should plan now to ensure that applications under the new rules enter the Canadian national phase within 30 months of the earliest priority date.

Author: David Schwartz
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Octavio Espejo Plausibility: new patentability requirement?

International - Becerril Coca & Becerril SC

The concept of plausibility has emerged in numerous prosecution cases in recent years, with global trends suggesting a shift towards treating it as an additional, standalone patentability requirement. However, some commentators have argued that plausibility should not be considered an independent patentability condition due to, among other things, the different criteria for evaluating plausibility.

Author: Octavio Espejo
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Bram Woltering Court rules on inventor's failure to transfer patent

Netherlands - AKD The Netherlands

The Hague District Court recently rendered a judgment regarding an inventor's failure to cooperate with the exploitation of his patents. The claimant had alleged that the defendant's refusal to cooperate with the transfer of the patent to a foundation (which would have subsequently granted the claimant a licence) had prevented it from exploiting the patent, including sub-licensing it to third parties.

Author: Bram Woltering
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Szymon Gogulski Supreme Court judgment on copyright of deceased artist

Poland - Sołtysiński Kawecki & Szlęzak

The Supreme Court recently issued a notable judgment concerning the work of a deceased artist and the alleged infringement of his moral copyright. The decision underlines that it is difficult to limit the activities of people who have been gifted the work of an artist even after the artist's death, especially in the case of a close personal relationship between the artist and the beneficiaries.

Authors: Szymon Gogulski, Jacek Zwara
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Recent updates

Takuya Mima Patent Act revisions: new evidence collection system and damages calculation methodology

Japan - Nishimura & Asahi

Author: Takuya Mima
Alexander Vida Applicant found to have acted in bad faith in order to abuse trademark protection

Hungary - Danubia Patent and Law Office LLC

Author: Alexander Vida
Katie Lee Amended PMNOC Regulations: second anniversary update

Canada - Smart & Biggar

Authors: Katie Lee, Urszula Wojtyra
Christopher Benson Claridge's, candles and cautionary tales

United Kingdom - Taylor Wessing

Author: Christopher Benson
Ursula Baravalle Patentability of living things – a South African approach

South Africa - KISCH IP

Authors: Ursula Baravalle, Thomas Schmidt
David C L Chen TIPO introduces new measure to manage design patent application priority claims

Taiwan - Lee and Li Attorneys at Law

Author: David C L Chen
Daniel R Zuccherino Trademark rights and comparative advertising

Argentina - Obligado & Cia

Author: Daniel R Zuccherino
Héctor Elias Chagoya Intellectual property and public policy

Mexico - Becerril Coca & Becerril SC

Author: Héctor Elias Chagoya

Upcoming events

IoT IP 2019

20 November 2019 – The Charles Hotel, Munich

IAM’s IoT IP conference will provide a platform for senior IP decision makers across multiple industries to discuss how IP strategies are fundamentally changing to meet the demands of the fourth industrial revolution.

For more details go to:

IPBC Latin America 2019

4 December 2019 – São Paulo, Brazil

In its second year, IPBC Latin America heads to São Paulo (4 December) to showcase and explore winning strategies for managing the IP lifecycle to maximise corporate value. Rights holders from Latin America and beyond will delve into the best practices, enforcement techniques and monetisation options that can be utilised to craft world-class IP management and value creation programmes.

For more details go to:

Managing Trademark Assets Europe 2020

28 January 2020 – London, UK

WTR’s Managing Trademark Assets Europe will bring together trademark counsel and brand experts from a variety of industries. It will provide a space in which to benefit from new insights, discuss best practice and share cutting-edge strategies for cost-effectively building and protecting brands.

For more details go to:

IPBC Europe 2020

24-25 March 2020 – Dublin, Ireland

After 2019’s sell-out event in Paris, next year’s IPBC Europe – Europe’s foremost conference about IP value creation – will take place in Dublin from 24 to 25 March, 2020. Being held at the prestigious Shelbourne Hotel, the event will once again be Europe’s leading gathering of senior IP professionals from European companies of all sizes.

For more details go to: