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Rethinking what international patenting really says about Chinese innovation

Fri, 11/28/2014 - 09:06

Chinese patenting abroad has risen impressively in recent years, and analyses have pointed to these numbers to conclude that Chinese patent quality and value, and China's overall innovation trajectory, are more positive than conventional wisdom indicates. This article critically assesses these conclusions.

The article posits that although international patenting data have often been used as indicators of the quality and value of firms'/other entities' patents, and countries' overall innovation trajectories, there are several overlooked reasons why such data are not as representative of these components in China as recent analyses suggest. The assessment—which draws on a literature review, statistical analysis and consultations with Chinese firms—shows that without careful consideration of China-specific ‘institutional and scale’ as well as ‘rational-firm’ considerations, conclusions drawn from international patenting statistics about Chinese entities' patent quality and value are misleading. This understanding provides a more tempered and objective outlook on China's innovation trajectory and concludes that several different approaches, which do not utilize only certain single metrics based on international filing or grant data (including for triadic patent families or Patent Cooperation Treaty filings or other metrics), are needed in order to make robust assessments of Chinese entities' patent quality and value.

This article provides practical insights about how to interpret more accurately the rise in Chinese entities' international patenting filings. The analytical considerations and approach developed can be used by businesses to improve strategic planning and advice-giving, and academics and government analysts to more accurately conduct research and draw policy conclusions related to China's innovation outlook.

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Protecting incremental invention in India

Fri, 11/28/2014 - 09:06

India has made several amendments to its patent legislation in accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and has provided product patent protection for drugs since January 2005. Since TRIPS, India has emerged as one of the major players in the global pharmaceutical industry.

Though India's development in terms of intellectual property is universally recognized, recent judgments in the pharmaceutical field have created an impression among innovator companies that incremental/improvement inventions are difficult to protect in India. Thus India's unique patent law and product patent protection rulings have received a mixed reception, with both appreciation and criticism from across the world.

This article discusses some case studies—Novartis v Union of India (Glivec), Roche v Cipla (Tarceva) and Merck v Glenmark (Januvia)—and analyses the appropriate way forward to protect incremental innovation in line with Indian patent law.

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Alligators, crocodiles and cutlasses: trade mark infringement in Guyana

Fri, 11/28/2014 - 09:06

The markets of the developing world present a rich environment for infringement of trade marks and intellectual property, offering perpetrators quick and substantial profit with limited risk of interference from local law enforcement.

In Guyana, such a scheme infringed on the trade mark of a United Kingdom-based tool manufacturer and played on the cultural heritage buyers had with both the tool and the trade mark.

Fieldwork in developing nations is critical to investigate and re-investigate infringements of trade marks and intellectual property.

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Copyright exceptions for the digital age: new rights of private copying, parody and quotation

Fri, 11/28/2014 - 09:06

This article considers the impact of the entry into force of the new UK copyright exceptions concerning private copying, parody and quotation.

This article examines the scope of each exception, explores areas of uncertainty and assesses their likely practical impact. It also considers whether the ‘private copying’ exception is intra vires.

The article concludes that the UK government has adopted an overly cautious approach to reform in this area, which fails to fully achieve its stated goal of producing copyright exceptions ‘fit for purpose’ for the digital age.

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The Apple store and unconventional trade marks: how easy are they to enforce?

Fri, 11/28/2014 - 09:06

Following the judgment of the Court of Justice of the European Union in Apple Inc, regarding the potential registrability of a store front and layout as a trade mark, this article considers its potential enforcement value, if registered. It reviews some of the main cases relating to both the scope of protection afforded by such marks and the potential grounds of infringement.

The article notes that so-called unconventional marks are often used in conjunction with word marks or other branding, and this will apply equally to potentially infringing signs. The impact of this other branding on the assessment of infringement is considered.

The article concludes that, over and above the challenges associated with the registrability of unconventional marks, there are hurdles to their enforcement. Nonetheless, in certain contexts, obtaining this type of trade mark will provide greater protection, for example where passing off may be difficult to establish.

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Drospirenon and Damping Unit: lifesaver for a German doctrine of equivalents or very old wine in new skins?

Fri, 11/28/2014 - 09:06

According to recent German Federal Court of Justice (Bundesgerichtshof, BGH) case law, the argument of equivalent infringement of a patent has become particularly difficult. In two recent decisions, the Düsseldorf Higher Regional Court, certainly the most renowned and decisive patent court of instance in Germany, seemed to have adopted an approach which had been considered antiquated for a long time. This return may come at a price: It could cause a significant loss of legal certainty and marginalize the German patent practice compared to other important jurisdictions, eg to the practice in the U.S. Even though the U.S. Court of Appeals for the Federal Circuit has strengthened the patentee's rights in Ring & Pinion Service Inc. vs. ARB Corporation Ltd.,1 U.S. practice clearly values the aspect of legal certainty higher than the Düsseldorf Higher Regional Court.

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One size does not fit all

Fri, 11/28/2014 - 09:06
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Copyright meets the digital revolution

Fri, 11/28/2014 - 09:06
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Stem cell patents: limiting the application of Brustle?

Fri, 11/28/2014 - 09:06

Advocate General Cruz Villalón has advised the CJEU that unfertilized oocytes activated by parthenogenesis are not human embryos and that therefore stem cell lines derived from them are potentially patentable.

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Assessing damages for unjustified threats of patent infringement

Fri, 11/28/2014 - 09:06

Established loss of chance principles will be used to assess the loss caused by unjustified threats in a patents action, but the court will use a counterfactual scenario to prevent recovery for loss that would have occurred regardless of the threats.

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US Supreme Court: no induced patent infringement without direct infringement

Fri, 11/28/2014 - 09:06

The US Supreme Court issued a unanimous decision which overturned the leading case from the US Court of Appeals for the Federal Circuit regarding induced infringement under 35 USC § 271(b), but left open the question as to the so-called ‘single actor’ rule for direct infringement.

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How is patent eligibility of computer-implemented inventions to be determined in the United States in view of Alice v CLS Bank?

Fri, 11/28/2014 - 09:06

The US Supreme Court has issued its eagerly awaited decision on whether or not claims to computer-implemented inventions are directed to patent-eligible subject matter, avoiding any pronouncement that either business methods or software inventions are patent ineligible per se, but holding that if claims are directed to a patent-ineligible concept such as an abstract idea, generic computer implementation or recitation of conventional computer hardware is not sufficient to provide the ‘inventive concept’ needed to transform the abstract idea into a patent-eligible invention.

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Three colours red? CJEU rules on contourless colour trade marks

Fri, 11/28/2014 - 09:06

In response to a referral from the German Federal Patent Court, the Court of Justice of the European Union (CJEU) confirmed that abstract, contourless colour trade marks must be treated no differently than other non-distinctive marks as regards their registrability and acquired distinctiveness through use. In particular, European Union Member States may not, under their national laws, assess acquired distinctiveness through use of such marks based solely on a fixed percentage of consumer recognition, but must instead base their assessment on all relevant factors and circumstances.

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The registered layout: a new type of trade mark for Apple

Fri, 11/28/2014 - 09:06

The Court of Justice of the European Union (CJEU) has introduced the concept of a new type of registered trade mark—the layout of a retail store—and set out initial parameters and exceptions for its acceptance.

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David versus Goliath chocolate trade mark dispute: does size count when applying the concept of genuine use?

Fri, 11/28/2014 - 09:06

This long-running dispute saw a small and medium enterprise (SME) opposing a large corporation for the exclusivity in the word Walzertraum, which featured in both their trade marks for goods in the same market sector. Resolving this dispute, the CJEU clarified what it is meant by genuine use within the European Union, what criteria are to identify it, what its purpose is, irrespective of the size of the undertakings concerned.

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Argentine court validates first claim of ambush marketing

Fri, 11/28/2014 - 09:06

The Court of Appeals reversed the decision of the lower court denying the injunction filed against Unilever and ordered the defendant to cease immediately the advertising campaign that used the phrase ‘official sponsor of all we learnt while we are growing’ and to remove already-published advertisements on any medium.

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The Italian Supreme Court confirms that it is upon resellers to prove lawful importation of trade marked products into the EU

Fri, 11/28/2014 - 09:06

The Italian Court of Cassation ruled that a trade mark proprietor can oppose the resale of products bearing his mark that were first commercialized by him or with his consent in non EU-countries and then imported into the EU by third parties; it is then upon resellers to show that the products have been lawfully put on sale in the EU.

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The autonomous concept of parody and conflicting fundamental rights: a balancing act

Fri, 11/28/2014 - 09:06

According to the Advocate General ‘parody’ is an autonomous concept that needs to be interpreted coherently throughout the Member States. The parody exception to copyright may only be relied on when the original work is still recognizable in the parody and the parody is in itself sufficiently original. The purpose of the parody will be mocking something or someone but, in doing so, this form of expression may come into conflict with fundamental rights.

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