Latest updates

Countdown begins: getting ready for new patented medicines pricing regime
Smart & Biggar
  • Canada
  • 16 September 2019

The long-awaited amendments to the Patented Medicines Regulations were recently published in Part II of the Canada Gazette. Major changes include the introduction of three new price regulatory factors and a revised schedule of reference countries. Although the new law will not be in force until 1 July 2020, there are immediate implications.

Plant inventions and patent eligibility trends
Becerril Coca & Becerril SC
  • Mexico
  • 16 September 2019

The Mexican Institute of Industrial Property's examination criteria was previously consistent enough to provide patent applicants with legal certainty about the eligibility of plant-related inventions. However, recent changes to the criteria for these kinds of invention have resulted in uncertainty which may affect even the validity of already granted patents.

Who takes the cake? Copyright over baked goods
KISCH IP
  • South Africa
  • 16 September 2019

Professional and amateur bakers are often inspired by the extravagant and intricately designed cakes shown on TV shows. However, this begs the question of whether bakers can reproduce these cakes (or at least try to) without getting into trouble. Perhaps surprisingly, the answer is probably no, as these creations may be subject to copyright protection. Therefore, as with all copyright infringement, it is important to be cautious when taking inspiration from other people's creations.

Copyright conundrum: what you need to know when rebranding
KISCH IP
  • South Africa
  • 09 September 2019

Many corporates and start-ups that enlist third-party graphic designers to create logos or corporate identities during a rebrand are unaware of the legal implications of contracting third parties and thus often find themselves in costly and time-consuming litigation. This is because, under South African law, a third-party graphic designer commissioned to design a corporate's logo will own the copyright in said work. To avoid this situation, a logo must be assigned from a third-party graphic designer to the corporation or start-up immediately.

Intellectual Property Tribunal vacates interim injunction in trademark case
Vellani & Vellani
  • Pakistan
  • 09 September 2019

The Intellectual Property Tribunal recently vacated an interim injunction granted in a case brought by Brands for Less LLC against another retailer concerning its use of the BRANDS 4 LESS mark. The tribunal found that Brands for Less had failed to make an adequate case for granting an interim injunction and stated that a well-known mark may be a good ground for registering IP rights in another territory, but not for injunctive relief, unless a balance of convenience can be established.

Most important patent cases of 2019 thus far
Venable LLP
  • USA
  • 09 September 2019

Thus far, 2019 has been an eventful year for US patent law. Over the past seven months, the Supreme Court and the Court of Appeals for the Federal Circuit (the US appellate court tasked with reviewing all district court patent decisions) have issued several significant rulings that may affect the rights of patent owners. This article reviews the most important of these rulings, including decisions on the application of the on-sale bar and state sovereign immunity.

District court grants significant damages in IP case, paving the way for future decisions
Saikrishna & Associates
  • India
  • 09 September 2019

The Indian district courts rarely grant significant damages in IP cases. However, this recently changed as a district court in Ahmedabad passed a significant judgment restraining the defendants from using the plaintiffs' software and ordering the defendants to pay $81,1795 in damages. This judgment is the first of its kind and will pave the way for other district courts to award damages in infringement suits in accordance with the irreparable loss and damage suffered by plaintiffs.

Intellectual property and public policy
Becerril Coca & Becerril SC
  • Mexico
  • 09 September 2019

The National Development Plan 2019-2024 (NDP) was recently published, just a few days before the release of the Global Innovation Index. Unlike the previous version, the new NDP does not expressly mention patents or intellectual property. This is not a good sign for a knowledge-based economy ranked first in the world for creative goods exports.

Supreme Court of Cassation reverses patent limitation decision
IP Law Galli
  • Italy
  • 09 September 2019

The Supreme Court of Cassation recently reversed a Milan Court of Appeal ruling on patent limitation. The Supreme Court of Cassation found that although the Milan Court of Appeal had held the patent at issue to be valid, it had not granted the patentee's claims for infringement because the patent had been subject to a limitation procedure and the acts of infringement had been carried out before the application for limitation had been filed.

Canada releases final amendments to patented medicines pricing regulations
Smart & Biggar
  • Canada
  • 09 September 2019

Health Canada recently announced the final amendments to the Patented Medicines Regulations. These amendments represent the first substantive revision to the regulations since their introduction in 1987 and are a significant departure from the existing framework. The amendments include new price regulatory factors, updated reference countries and changes in reporting requirements.

Canada nears end of project to modernise patent, trademark and industrial design laws
Smart & Biggar
  • Canada
  • 02 September 2019

Canada's recent accession to the Patent Law Treaty marks the near completion of its long and ambitious journey to modernise its patent, trademark and industrial design laws and harmonise its IP laws with its most important trading partners worldwide. As a result of the recent and upcoming changes, Canadian businesses and right holders alike can expect a more consistent and level playing field for securing IP rights.

Nedbank and IT entrepreneurs in developing patent saga
KISCH IP
  • South Africa
  • 02 September 2019

Two IT entrepreneurs recently applied for an interdict to prevent an asset management company from using (ie, infringing) their invention. The case has raised many questions regarding the validity of certain patents, including what protections are afforded to entrepreneurs. Young entrepreneurs in particular are encouraged to follow this case earnestly to ensure that they are well acquainted with South African patent law and thus able to protect their inventions.

Where is my CIPO mail? What to know about correspondence for Madrid applications
Smart & Biggar
  • Canada
  • 02 September 2019

The Canadian Intellectual Property Office (CIPO) was the first office to allow trademark applicants to use the Madrid e-filing system from day one. Under Canada's new Trademarks Regulations, CIPO is authorised to send correspondence only to the applicant or an appointed Canadian trademark agent and not to foreign representatives. Some but not all communications will also be sent to the International Bureau of the World Intellectual Property Organisation.

Beijing High Court guidelines on administrative trademark cases come with surprises
Wanhuida Peksung IP Group
  • China
  • 26 August 2019

The Beijing High Court recently published an extensive set of guidelines on administrative trademark cases, which are divided into two parts: procedural issues and substantive matters. Although the guidelines clarify a number of matters (eg, the possibility of bringing an action against a ruling of the National Intellectual Property Administration when such ruling was remade in accordance with an effective court judgment), they contain a number of unpleasant surprises.

'Spreading' a work under Dutch copyright law: the gift that should not have been given
AKD The Netherlands
  • Netherlands
  • 26 August 2019

Article 12 of the Copyright Act lists a number of acts that fall within the definition of 'disclosure to the public'. In addition to the more straightforward cases of disclosure, Article 12(1)(2) specifically stipulates that disclosure also includes verbreiding (translated in English as 'spreading') all or part of a work or a reproduction thereof where the work has not yet appeared in print. Although there is little case law on the act of spreading, the subject was recently debated in an Amsterdam Court of Appeal case.

Two tests – problems in application
  • Philippines
  • 26 August 2019

The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether one mark infringes another. However, case law suggests that the court has applied these tests inconsistently and in contravention of the Intellectual Property Code.

PMPRB Steering Committee on the Modernisation of Price Review Process Guidelines releases final report
Smart & Biggar
  • Canada
  • 19 August 2019

The Patented Medicines Prices Review Board (PMPRB) Steering Committee on the Modernisation of Price Review Process Guidelines recently released its final report summarising its deliberations in providing stakeholder feedback on the PMPRB's proposed new framework for the regulation of the prices of patented medicines.

Supreme Court clarifies non-use debate
Deriş Patents and Trademarks Agency
  • Turkey
  • 19 August 2019

The Supreme Court recently issued a decision regarding non-use cancellation actions and the retroactive enforcement of Article 9 of the Industrial Property Code (IP Code). The decision has clarified the longstanding debate and unpredictability concerning the implementation of the IP Code's non-use provision. The courts will now implement Article 9 against non-used trademarks without hesitation.

Federal Court of Appeal dismisses first PMNOC interlocutory appeal granted leave
Smart & Biggar
  • Canada
  • 19 August 2019

Most interlocutory decisions under the Patented Medicines (Notice of Compliance) (PMNOC) Regulations are made by prothonotaries of the Federal Court. The first Federal Court of Appeal decision in an appeal of an interlocutory order under the amended PMNOC Regulations was recently issued. The court found that the prothonotary had been entitled to arrive at a view of what was best for the particular proceeding and saw no reviewable error that would justify its intervention.

Two tests – Supreme Court case law on determining trademark infringement
  • Philippines
  • 12 August 2019

The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the Supreme Court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether a mark infringes another. This article reviews a number of landmark Supreme Court decisions that applied these tests.

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