Latest updates

International Patent Classification: one factor in determining whether motivation to combine multiple citations exists
Lee and Li Attorneys at Law
  • Taiwan
  • 24 February 2020

According to the Patent Examination Guidelines, in order to determine whether a patent application can be easily accomplished by persons ordinarily skilled in the art in view of the citations, it is necessary to consider whether there is motivation to combine multiple citations. Further, such motivation depends on whether the multiple citations are relevant or common in their technical contents.

Supreme People's Court Honda OEM case: end of a long story?
Wanhuida Intellectual Property
  • China
  • 24 February 2020

When goods are manufactured in China by an original equipment manufacturer factory for export, the foreign buyer is not always the owner in China of the trademark that is affixed on the goods. But what if the trademark is registered in the name of a third party and such third party decides to sue the factory for infringement and stop the export of the goods? This is a long-debated question of which the courts have demonstrated different understandings.

Obtaining patent protection for software in Europe
GEVERS
  • European Union
  • 24 February 2020

Under the European Patent Convention, a computer program per se is not considered a patentable invention; rather, program listings per se are protected by copyright. However, in many cases, a computer program can be considered a technical solution to a technical problem and is thus patentable. For a European patent to be granted, applicants must show that this solution is novel and involves an inventive step with respect to prior art.

Copyright protection and Fair Trade Act: handbag design issues
Lee and Li Attorneys at Law
  • Taiwan
  • 17 February 2020

In the ever-changing fashion industry, every signature handbag design represents the designer's endeavour and the brand's goodwill. However, whether a handbag design is protected under the Copyright Act remains controversial. In recent civil decisions, the IP Court has demonstrated how the Taiwanese courts approach this issue.

SPC clarifies requirements for citing prior use defence in trademark infringement cases
Wanhuida Intellectual Property
  • China
  • 17 February 2020

A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.

Conditional acceptance of trademark applications
KISCH IP
  • South Africa
  • 17 February 2020

Trademark applications are examined by the Office of the Registrar of Trademarks approximately eight to 10 months after their date of application. This article discusses several possible conditions that examiners often prescribe for accepting trademark applications and which applicants must therefore consider before filing.

Broadest reasonable interpretation, presumption of validity and doctrine of claim differentiation
Lee and Li Attorneys at Law
  • Taiwan
  • 10 February 2020

A patent's scope is defined by the language of the claim. Due to the polysemy of language, a term may have different meanings to different people. Divergent interpretations of a term can influence a claim's scope and affect the determination of infringement or patent validity. Therefore, disagreements and debates regarding claim constructions always exist in patent litigation. The Supreme Administrative Court ruled on this issue in a recent case involving the patent for an electronic payment system.

Appeal court upholds criminal sentence for possession of infringing handbags
Grau & Angulo
  • Spain
  • 10 February 2020

The Barcelona Court of Appeal has confirmed a criminal sentence of six months' imprisonment, a fine and compensation of legal costs for the possession of 240 round bags which infringed the famous Robin Ruth Group design. The judgment follows from a trial court's decision to issue a condemnatory sentence based on Article 273.3 of the Criminal Code.

Trademarks Office issues new limits on time extensions to respond to office actions
Smart & Biggar
  • Canada
  • 10 February 2020

Following a recent practice notice, the Trademarks Office will not grant time extensions for office actions issued on or after 17 January 2020 unless exceptional circumstances are demonstrated. The Trademarks Office has also expanded the list of potential exceptional circumstances.

Disputes over geographical indications
Wanhuida Intellectual Property
  • China
  • 10 February 2020

Geographical indications identify goods as originating from a certain region or locality, where a given quality, the reputation or another characteristic of the good is essentially attributable to the natural or humanistic features of the indicated place. However, if an indication is accredited as a geographical indication in its country of origin, is this sufficient for it to be granted protection in China without being registered as a trademark?

Life sciences intellectual property: 2019 highlights
Smart & Biggar
  • Canada
  • 03 February 2020

There have been a number of key developments in Canadian life sciences IP and regulatory law over the past 12 months, including significant amendments to the Patented Medicines Regulations, a number of biosimilars developments relating to approvals, pending submissions and naming and the second anniversaries of the certificate of supplementary protection regime and the Patented Medicines (Notice of Compliance) Regulations.

Scope of reasonable protection in medical use claims
Wanhuida Intellectual Property
  • China
  • 03 February 2020

Claims are technical solutions seeking protection and should be a generalisation of the content sufficiently disclosed in a patent description. However, poorly drafted claims that include inappropriate generalisations risk being unsupported by their description. When ascertaining whether a claim of medical use invention is supported, it is crucial to reasonably interpret the scope of the claim.

Barcelona court confirms legitimacy of Tommy Hilfiger's use of TH sign
Grau & Angulo
  • Spain
  • 03 February 2020

Barcelona Commercial Court No 6 recently dismissed an action for trademark infringement brought against Hilfiger Stores Spain, SL and upheld its counterclaim, declaring partial revocation for non-use of the plaintiff's Spanish trademark registered for clothing, footwear and hats (Class 25) and leaving it registered exclusively for occasion hats and women's formal party hats.

Expanded protection for building and interior designs under revised Design Act
Nishimura & Asahi
  • Japan
  • 27 January 2020

The Ministry of Economy, Trade and Industry recently announced on its website that a Cabinet Order of 1 November 2019 had declared that the revised Design Act would come into force on 1 April 2020. This article provides a summary of the revised act's expanded scope of IP protection for building and interior designs.

Post-allowance division requirements under amended Patent Act
Lee and Li Attorneys at Law
  • Taiwan
  • 27 January 2020

Before the amended Patent Act took effect on 1 November 2019, a request for post-allowance division could be filed within 30 days of receiving an allowance decision only if the parent invention application had been allowed at the first examination stage. Under the amended Patent Act, a request for division can be filed within three months of receiving an allowance decision irrespective of whether the parent invention application has been allowed at the first examination or re-examination stages.

Liability of online marketing platforms for counterfeiting activities
Deriş Patents and Trademarks Agency
  • Turkey
  • 27 January 2020

Law 5651 on Regulating Broadcasting on the Internet and Fighting Against Crimes Committed through Internet Broadcasting includes provisions on the responsibilities of content, hosting and access providers to combat online counterfeiting. However, the fact that existing regulations lack specific content liability for online marketing platforms may inhibit consumers and related third parties from enforcing their rights if they purchase counterfeit products.

USMCA amendments: implications for Canadian IP law
Smart & Biggar
  • Canada
  • 27 January 2020

The United States, Mexico and Canada recently signed the Protocol of Amendment to the Agreement between the United States of America, the United Mexican States and Canada (USMCA). If ratified, the amended USMCA will replace the North American Free Trade Agreement and require a number of changes to Canada's IP laws. Many requirements of the original USMCA have already been met by recent changes in Canadian IP legislation, but more amendments will be required to implement the USMCA.

All that jazz: bad-faith trademark applications
Danubia Patent and Law Office LLC
  • Hungary
  • 20 January 2020

Hungarian case law has prohibited acting in bad faith for centuries – particularly since the introduction of the Civil Code 1958 and the Trademark Act 1979. As a result, there are few examples of bad-faith trademark cases. A recent case involving the JAZZY PUB and JAZZY marks aligns Hungarian case law with that of the European Court of Justice, which holds that a finding of bad faith can be made if an applicant was aware of a prior mark when it filed its application.

Federal Court dismisses patent infringement action for delay
Smart & Biggar
  • Canada
  • 20 January 2020

The Federal Court recently dismissed an action for delay following a status review under Section 382.1 of the Federal Courts Rules where the proceeding remained at the documentary discovery stage with outstanding motions pending more than six years after the action had been commenced. The plaintiff's had alleged infringement of Canadian Patent 2,595,723 in respect of water treatment processes used in Cenovus's steam-assisted gravity drainage oil production facilities.

Supreme Court prohibits USPTO from shifting attorneys' fees in certain district court proceedings
Venable LLP
  • USA
  • 20 January 2020

The Supreme Court has unanimously ruled that the US Patent and Trademark Office cannot shift the fees of its attorneys and paralegals to litigants in district court proceedings brought under Title 35, Section 145 of the US Code. Justice Sotomayor explained that, under the centuries-old presumption commonly known as the 'American rule', each litigant pays its own attorneys' fees "win or lose, unless a statute or contract provides otherwise".

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