Journal of Intellectual Property Law & Practice - current issue

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2015: the year of blocking injunctions?

Tue, 03/03/2015 - 10:49
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Patent protection for isolated genes in Australia

Tue, 03/03/2015 - 10:49

The Federal Court of Australia has held that isolated genes are patentable under Australian Patent Law.

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Accidental omission of corresponding patent information and revocation in India

Tue, 03/03/2015 - 10:49

An Indian court holds that revocation is not automatic under s 64(1)(m) of the Patents Act 1970, since it is always open to the court to examine the question whether the omission to furnish the information relating to corresponding patent applications in foreign countries was intentional. Revocation follows only if the court is of the view that the omission to furnish the information was deliberate.

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The beginning of the end for the UK Patent Box?

Tue, 03/03/2015 - 10:49

In response to part of the highly publicized Base Erosion and Profit Shifting (BEPS) project of the Organisation for Economic Co-operation and Development (OECD), the UK and German governments have released a joint statement entitled Proposals for New Rules for Preferential IP Regimes. The statement confirms that the UK Patent Box, in force since April 2013, will be closed to new entrants in June 2016, with the total abolition of the scheme by June 2021.

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Rage against the (translation) machine

Tue, 03/03/2015 - 10:49

A patent application is remitted to the Examining Division for reconsideration in light of a certified translation of a prior art document, due to ambiguity of the machine translation provided.

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ZIMA found to be inherently registrable for tomatoes

Tue, 03/03/2015 - 10:49

An appeal from a decision of the Registrar of Trade Marks has found that ZIMA is not descriptive of a type of tomato, and so is entitled to registration.

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How to prove if a shoe is protected by copyright--and who owns it?

Tue, 03/03/2015 - 10:49

This case concerns mainly the issue of whether it is sufficient to hold oneself out as being the author in order to be entitled to copyright protection when the authorship is not disputed or, on the contrary, if there is a need, even without dispute, to prove a creation process.

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Third party's abusive BENFICA trade mark rejected for notoriety and bad faith

Tue, 03/03/2015 - 10:49

The Turkish Patent Institute has rejected a third party's abusive BENFICA trade mark application on grounds of it being a well known mark and because the application was filed in bad faith.

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Blocking injunctions protect trade mark rights on the internet

Tue, 03/03/2015 - 10:49

In a groundbreaking decision, the England and Wales High Court (High Court) extended the practice of issuing blocking injunctions, a practice that had gained popularity in the copyright context, to protect trade mark rights on the internet.

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Interflora: a pyrrhic victory as both parties return to the drawing board

Tue, 03/03/2015 - 10:49

The Court of Appeal has allowed Marks & Spencer's appeal in the latest round of the Interflora litigation and, unusually, has remitted the case to the High Court for retrial.

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UK claim construction: return of the Protocol questions and file wrapper estoppel

Tue, 03/03/2015 - 10:49

The law of patent construction in the UK has been largely settled since the 2004 House of Lords' decision in Kirin-Amgen which, in confirming purposive construction as the correct approach, ruled out any US-style doctrine of equivalence. It also doubted the utility of the Protocol Questions, despite their regular application by the UK courts and the adoption of similar questions in other EU jurisdictions.

The law on file wrapper estoppel, the use of a patent's prosecution history to estop the patentee from arguing a different construction during litigation, has been settled for even longer. The UK courts have felt strongly that it should not be necessary to read the prosecution history in order to determine a patent's scope. Germany and Canada concur with the UK's approach, however, the US courts take the opposite stance with file wrapper estoppel providing a counterbalance to its doctrine of equivalents.

Mr Justice Arnold's judgment in Actavis v Eli Lilly has reopened both these issues. Arnold J not only applied the previously defunct Protocol Questions in construing Eli Lilly's Alimta patent but then used the patent's prosecution history in deciding that its claim did not extend to cover Actavis's variant. This comes close to the US approach criticized by Lord Hoffmann in Kirin-Amgen and may lead to a resurrection of the Protocol Questions as a doctrine of equivalence, even if not explicitly recognized as such.

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Interlocutory injunction applications in Australia

Tue, 03/03/2015 - 10:49

In Australia, patentees can apply to the court for an interlocutory injunction to prevent a competitor entering the market before the court finally determines whether the patentee's rights would be infringed. An interlocutory injunction will be awarded if (a) the patentee has a prima facie infringement case and (b) the balance of convenience favours the injunction. In practice, unless the infringement case is particularly weak, or the invalidity case almost irresistible, a prima facie case will invariably be established. As a consequence, most interlocutory injunction applications are decided on the balance of convenience.

Assessing the balance of convenience entails a complex task of weighing all the surrounding factors to determine whether granting the interlocutory injunction is in the interests of justice. While the relevant circumstances are specific to each case, a number of common factors arise in most interlocutory injunction applications, such as the extent and nature of the parties' respective potential loss, the patentee's prospects of establishing infringement and the respondent's awareness of the patentee's rights before it sought to enter the market. When contesting an interlocutory injunction application, a party's litigation strategy must pay close regard to these factors to maximise their prospects of success.

A review of recent patent interlocutory injunction applications shows that a high proportion of interlocutory injunctions are granted. This is primarily a function of the test applied by the court. It appears that a respondent must establish that there are exceptional circumstances in order to avoid the grant of an interlocutory injunction.

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The power of national courts and the Unified Patent Court to grant injunctions: a comparative study

Tue, 03/03/2015 - 10:49

Continental Europe and the United Kingdom give diverging answers to the question of whether the granting of a cease and desist order (‘permanent injunction’) in favour of the proprietor of a European patent (EP) may in a specific case be refused due to considerations of proportionality.

The authors discuss the differences between Continental Europe and the United Kingdom and argue that the future Unified Patent Court (UPC), under the Agreement on a Unified Patent Court (UPCA) and the 17th version of the Rules of Procedure (RoP), can make use of a pan-European ‘lowest common denominator’ when deciding whether proportionality should play a role in deciding on an injunction claim.

A German-language version of this article will appear in JIPLP's sister publication, GRUR Int.

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Browsing through the looking glass: from copyright to wonderland?

Tue, 03/03/2015 - 10:49

In PRCA v NLA, the Supreme Court and the Court of Justice of the European Union effectively decided that the so-called temporary copy exception in Article 5(1) of the InfoSoc Directive applies so as to render permissible the copies of copyright-protected works made in the cache of a computer and on a computer screen when accessed using a web browser.

In this article, a member of the NLA's legal team provides his own view of the case concluding that, quite apart from the policy argument that such temporary copies should be permissible, it is far from clear whether Article 5(1) was intended to achieve that objective and the potential consequences of the decisions remain uncertain.

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Legal implications and patentability of human stem cells: Australia and Japan compared

Tue, 03/03/2015 - 10:49

This article reviews how the criteria for patentability apply to inventions involving human embryonic stem cells in both Australia and Japan, provides an analysis of the current position of the law, and discusses the possible implications in relation to the patenting of human stem cells.

It also examines a recent court case, Cancer Voices Australia and another v Myriad Genetics Inc and another, the first judicial decision in Australia to consider the patentability of isolated DNA or Ribonucleic Acid (RNA) sequences that challenged the statutory provisions within the Patents Act 1990 (Cth).

This article concludes that Japan is comparatively moderate in granting stem cell patents and has a far less ambiguous approach to stem cell patents than Australia.

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The law in the panels

Tue, 03/03/2015 - 10:49
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Copyright reform: end of a dream?

Tue, 02/10/2015 - 10:34
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