Latest updates

USPTO fraudulent specimen pilot reporting programme discontinued and replaced
Venable LLP
  • USA
  • 26 April 2021

The United States Patent and Trademark Office (USPTO) recently discontinued its fraudulent specimen pilot reporting programme, which enabled the public to report fraudulent specimens via a dedicated USPTO-monitored email address. Instead, trademark owners can now report fraudulent specimens to the USPTO by submitting a traditional letter of protest.

Filing trademarks which claim colours – can you use adjectives?
Castellanos & Co
  • Colombia
  • 26 April 2021

A claim of colours defines a trademark's scope of protection. How to claim colours within a trademark application is an area that has undergone many changes in Colombian prosecution practice. Nevertheless, in a recent resolution, the Trademark and Patent Office finally set out clear regulations on how to proceed.

Overview of draft amendments to Trademark Act
Lee and Li Attorneys at Law
  • Taiwan
  • 26 April 2021

The Taiwan Intellectual Property Office (TIPO) recently published draft amendments to 53 articles of the Trademark Act. Among other changes, the amendments introduce a new TIPO Appeal and Dispute Board, which will be responsible for deliberating on trademark remedy cases. This article summarises the main changes that the amendments introduce.

Logistical and operational challenges in fighting piracy
Montaury Pimenta, Machado & Vieira de Mello
  • International
  • 26 April 2021

There are several ways in which trademarks can lose their power, the most malicious of which is unauthorised use by third parties, known as 'piracy'. Fighting piracy is challenging and requires significant effort from trademark owners. Given trademarks' undeniable importance to their owners, investments to protect them are understandable. Any damage to a trademark's image could ruin a reputation built over several years.

Request for comments on proposed amendments to Patent Law
Reinhold Cohn Group
  • Israel
  • 26 April 2021

The Ministry of Justice and the Patent Office recently published a request for comments on the purported expansive amendments to the Patent Law. Some of the proposed amendments are minor, while others represent radical changes to the existing legislation. Many of the proposed amendments benefit foreign applicants, which are the source of most patent applications in Israel. This article discusses the proposed amendments and the effect that they may have on the Israeli patent system.

SPCs post-Brexit: where are we now?
Pinsent Masons
  • United Kingdom
  • 26 April 2021

Changes to the processes for obtaining marketing authorisations for medicinal products are one of the many differences brought about as a result of the United Kingdom's departure from the European Union. However, behind the high-profile headlines is the knock-on effect that these changes will have on the regime which governs supplementary protection certificates (SPCs) in the United Kingdom. This article considers the changes to the SPC regime and the SPC manufacturing waiver in the United Kingdom.

Civil Code amendments: invention and utility model patents
Sojuzpatent
  • Russia
  • 26 April 2021

In 2020 Federal Law 262-FZ made several amendments to the Civil Code regarding the examination of invention and utility model patent applications. Most of the amendments will take effect in Summer 2021, although some took effect in Autumn 2020. This article discusses the purpose of such amendments and the implications that they may have for parties which file patent applications in Russia.

Extrajudicial admissions: can everything you say be used against you?
GEVERS
  • Belgium
  • 26 April 2021

Extrajudicial admissions are those that are made outside court proceedings. In some countries, such admissions may be used against a party in court proceedings. In Belgium, no specific provisions exist regarding the admissibility of extrajudicial admissions in court proceedings relating to patents. However, case law shows that the courts will take extrajudicial admissions into account and that it can be difficult for parties to take back such statements.

SPC reiterates separate comparison principle in novelty assessment
Wanhuida Intellectual Property
  • China
  • 26 April 2021

In a landmark case, the Supreme People's Court (SPC) IP Tribunal clarified that two reference documents which disclosed technical solutions that point to the same prior art could not be combined in an assessment of claim novelty because such a combination would create a prior art that had not been disclosed by either document yet existed in the mind of the assessor. This case has since been selected as one of the SPC IP Tribunal's guiding cases and an SPC exemplary case.

Do you actually own the intellectual property generated by your employees?
Smart & Biggar
  • Canada
  • 26 April 2021

Employees are the source of some of their employer's most valuable intangible assets – namely, IP assets. For this reason, it is usually in a business's best interest to ensure its ownership of IP assets generated by employees. The rules that apply to employer-employee relationships vary greatly between copyright, patents and industrial designs. Thus, any business with employees should be aware of these unique rules.

Second-instance court nullifies acquittal due to incorrect interpretation of IP crime
Grau & Angulo
  • Spain
  • 26 April 2021

The Madrid Court of Appeal recently nullified a first-instance trial court judgment which had acquitted the defendants of a criminal offence. The appeal court found that the trial court had been wrong to declare the facts of the case as a misdemeanour against intellectual property (and not a criminal offence) and determine that the statute of limitations for misdemeanours had lapsed.

Role of patent data in innovation lifecycle: marketing and monetisation stages
GEVERS
  • International
  • 19 April 2021

Patent-related data is a recognised source of information about technological innovation programmes and the patenting strategies of parties in a particular field. Parties often use data reporting tools (eg, mapping or landscaping) to provide an overview of a competitive activity. This article focuses on how parties can use patent data at the marketing and monetisation stages of a product's innovation lifecycle.

Supreme People's Court issues judicial interpretations on IP rights disputes which involve ISPs
Wanhuida Intellectual Property
  • China
  • 19 April 2021

The Supreme People's Court recently promulgated two judicial interpretations regarding IP rights disputes that involve internet service providers (ISPs): the Reply to Several Issues Concerning the Application of Law in Online IP Rights Infringement Disputes, which applies to all ISPs, and the Guiding Opinions on the Trial of Civil IP Rights Cases Involving E-Commerce Platforms, which target e-commerce platforms. This article summarises the key points of these two judicial interpretations.

Court issues decision in first patent linkage case
Lee and Li Attorneys at Law
  • Taiwan
  • 19 April 2021

The Judicial Yuan recently published the IP Court's judgment in Taiwan's first patent linkage case. The IP court granted an injunction to prevent the manufacture of a generic drug which was found to have infringed a new drug's patent based on the doctrine of equivalents. The IP Court's watershed decision in this case will significantly affect both the patent linkage system and patent linkage litigation for years to come.

Cancellation of trademark registrations
OMC Abogados & Consultores
  • Peru
  • 19 April 2021

It is possible to cancel the registration of a trademark where it can be proved that the owner, licensee or other authorised party has not used the trademark in Peru for three consecutive years. Parties may also request the cancellation of a trademark registration on grounds of lack of use during an opposition procedure.

Refill products infringe trademark
Graf & Pitkowitz Rechtsanwalte GmbH
  • Austria
  • 19 April 2021

The Supreme Court recently held that selling refill products for a dispenser that is manufactured by another party without indicating that the refill product is not produced by the dispenser's manufacturer constitutes trademark infringement. The decision clarifies that parties must label refill products to prevent the relevant public (ie, the users of the refill product) thinking that the manufacturer of the refill product is also the manufacturer of the dispenser.

Supreme Court weighs in on fair use and finds that Google's use of Java SE API is fair
Venable LLP
  • USA
  • 19 April 2021

After 10 years of litigation, the Supreme Court has put an end to the copyright case of the century, Google v Oracle, ruling that Google's use of Oracle's application programming interface Java code in the development of its Android operating system is a fair use as a matter of law. In the doctrine-expanding six-to-two opinion, the court found that all four fair use factors weighed in Google's favour.

Strengthened provisions for keeping designs secret
NAM & NAM
  • South Korea
  • 19 April 2021

Unlike patent applications, which are published in full after a fixed period to prevent redundant research and investment, the details of design applications are disclosed via publication in the Design Gazette at the time of registration. Parties may postpone the disclosure of a design using the secret design system. A recent amendment to the secret design system aims to offer applicants stronger protection and enable the strategic management of applications for new product designs.

Rights in audiovisual works under Copyright Law
A & K Metaxopoulos & Partners Law Firm
  • Greece
  • 19 April 2021

Pursuant to the Copyright Law, authors, artists, performers and producers who are involved in the creation of an audiovisual work are entitled to various rights relating to the broadcasting and reproduction of the work. This article explores the rights to which each party is entitled and the role of collective management organisations in the administration of such acts.

Barcelona Court of Appeal confirms legitimacy of Tommy Hilfiger's use of TH sign
Grau & Angulo
  • Spain
  • 19 April 2021

In a recent judgment, the Barcelona Court of Appeal confirmed the judgment of Barcelona Commercial Court 6 which dismissed a trademark infringement action brought against Hilfiger Stores Spain (HSS), SL. The appeal court partially upheld HSS's counterclaim against the plaintiff's trademark – which was registered for goods in Class 25 (ie, clothing, footwear and hats) – for cancellation on grounds of non-use. The trademark was revoked for clothing and footwear but remains registered for hats.

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