SNIPER Bulletin Searchable Networked Intellectual Property Electronic Resource January 2015 Note: Due to copyright requirements, IP Australia Library is unable to directly supply copies of these articles to readers outside IP Australia. Please contact your local library to obtain copies of these articles by interlibrary loan. IP Australia (this Agency) encourages the dissemination and exchange of information provided in this publication. The Commonwealth owns the copyright in all material produced by this Agency. All material presented in this publication is provided under a Creative Commons Attribution 3.0 Australia, with the exception of: ∙ the Commonwealth Coat of Arms ∙ this Agency’s logo, and ∙ content supplied by third parties. The details of the relevant licence conditions are available on the Creative Commons website, as is the full legal code for the CC BY 3.0 AU license. Attribution Material obtained from this publication is to be attributed to this Agency as: © Commonwealth of Australia 2013. Third party copyright Wherever a third party holds copyright in material presented in this publication, the copyright remains with that party. Their permission may be required to use the material. This Agency has made all reasonable efforts to: ∙ clearly label material where the copyright is owned by a third party, and ∙ ensure that the copyright owner has consented to this material being presented in this publication. Contact us Enquiries about this publication can be sent to: IP Australia Library Email: library@ipaustralia.gov.au Phone: (02) 6283 2301 ISSN: 2202-753X SNIPER No.: 2014/01911 Author: Maggs, Andrew Title: Actavis v Pharmacia Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September 2014, pp. 520-523. Summary: Undertakings required from a patentee to obtain a stay of United Kingdom (UK) validity proceedings pending the outcome of European Patent Office (EPO) opposition proceedings -history of similar situations before UK courts -- principles set out by the Court of Appeal -- in Actavis v Pharmacia Arnold J stayed proceedings in the UK pending the outcome of opposition proceedings at the EPO -- undertakings offered by Pharmacia in seeking the stay -- first hearing -second hearing -- commercial certainty a key consideration -- antitrust implications -- injunctions post-Virgin v Zodiac. Subject: Patent opposition--case law--United Kingdom Subject: Patent opposition--case law--Europe Subject: Patent litigation--United Kingdom SNIPER No.: 2014/02013 Author: Escobar, Marcela Title: Advantages of Andean trademark system from a Peruvian perspective Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 197-201. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Regional trade mark systems -- Peru -- Andean Community -- Andean oppositions -non-cancellation actions -- notoriety of trade marks and well-known marks -- free trade of goods in the Andean Community. Subject: Comunidad Andina Subject: Trade mark systems--Peru Subject: Trade marks--Peru Subject: Free trade--Andean Community SNIPER No.: 2014/01908 Author: Tridico, Anthony C. Author: McAnulty, Timothy P. Title: The adventures of Alice in section 101 land Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September 2014, pp. 511-513. Summary: United States (US) Supreme Court held that computer based techniques aimed at settlement risk in financial transactions were not patentable -- Alice Corp Pty Ltd v CLS Bank International and CLS Services Ltd -- background to case -- patents assigned to Alice Corporation Pty Ltd deemed to be invalid because they claimed an abstract idea -- invalidity under 35 U.S.C. section 101 -- Alice confirms Mayo Collaborative Services v Prometheus test -- two-step Mayo analysis -- lessons from Alice -- offensive and defensive patent strategies after Alice -- covered business method and section 101 -- Court has still left room for software patents as the Alice decision has a narrow focus relating to abstract ideas. SNIPER Bulletin – January 2015 Page 1 of 43 Subject: Business methods--case law--United States Subject: Computer-related inventions--case law--United States Subject: Patent validity--case law--United States SNIPER No.: 2014/01909 Author: Tridico, Anthony C. Author: Johns, Christopher C. Author: McAnulty, Timothy P. Title: Alice's adventures part II: the rabbit hole at the USPTO Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September2014, pp. 514-515. Summary: Guidance provided by the US Patent and Trademark Office (USPTO) following the Supreme Court decision in Alice Corp v CLS Bank seen as inadequate -- USPTO issued a new Memorandum -- preliminary examination instructions in view of the Supreme Court Decision in Alice Corporation Pty Ltd v CLS Bank International et al -- confusion remains about what an abstract idea is -- examiners have received sketchy workable guidance -- USPTO issued a Request for Comments in response to Alice -- best advice may be caution and patience. Subject: Patent examination--procedure--United States Subject: Business methods--patentability--United States Subject: Computer-related inventions--United States Subject: Patent validity--United States SNIPER No.: 2014/01990 Author: Proulx, Guy L. Author: Merino, Donald N. 1937Title: The art of anticipation: maximising value in patent sales Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 51-55. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patent value and sales -- maximising sale returns -- understand market needs -understand how patent portfolio fits the market -- make a good first impression with potential buyers -- need for good timing -- state of the art -- Nortel and Kodak patent sales Subject: Patent assignment Subject: Value of intellectual property Subject: Intellectual property management SNIPER No.: 2014/02004 Author: Cole, Corinne Author: McLeod, Kim Author: Adams, Matt Title: Australia and New Zealand: working together to protect IP rights SNIPER Bulletin – January 2015 Page 2 of 43 Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 143-146. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patent examination -- Australia -- New Zealand -- single application process (SAP) -single examination process (SEP) -- new NZ Patents Act and Regulations -- patentability of medical treatment methods confirmed by High Court of Australia -- special protection for Ka Mate haka in NZ -- invisible AdWords -- InterCity Group (NZ) Limited v. Nakedbus NZ Limited -launching a new product in New Zealand -- Cadbury Black Forest chocolate versus Whittaker's Berry Forest chocolate. Subject: Intellectual property--Australia Subject: Intellectual property--New Zealand SNIPER No.: 2014/02055 Author: Ellsmore, James Author: Swinson, John V. Author: O'Connell, Kim Title: Australian court rejects patentability of computer-implemented method of creating index Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 37-38. Summary: Full Federal Court of Australia decision in Research Affiliates LLC v. Commissioner of Patents -- held that a computer implemented method of creating and investment index was not patentable -- substance of the invention was not patentable subject matter and simply implementing it via a computer would not render it patentable -- facts of the case -- existing legal position -- earlier decisions -- analysis of the Full Court decision -- significance Subject: Computer-related inventions--patentability--Australia Subject: Computer-related inventions--case law--Australia SNIPER No.: 2014/02037 Author: IP Australia Added author: Australia. Department of Industry Title: Australian medical devices: a patent analytics report [electronic resource] Source: Australian Medical Devices: a Patent Analytics Report. 2014. Summary: Australia's relative importance in innovative activity in medical devices -- over 2,706 medical device patents originated in Australia between 2001 and 2012 from individuals, companies, academic institutions and public research organisations -- Australia ranks 13th in medical device patents globally, comparable to China and the Netherlands -- ranks 8th in positive technological specialisation in medical devices, comparable to Switzerland and New Zealand -- the technology sub-fields with the most inventions are Surgical and Electromedical/Diagnostics; and Implants and Vision also show growth in activity between 2001 and 2012. Subject: Patents--trends--Australia Subject: Patents--health and community services industry--Australia Subject: Medical procedures and devices--trends--Australia Subject: Innovation (Technological)--economics--Australia SNIPER Bulletin – January 2015 Page 3 of 43 SNIPER No.: 2014/01969 Author: Kim, IlSoo Author: Kim, Jandy Author: Kim, Joo Sup Title: An automated system for estimating patent value Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 61-66. Summary: Patent valuation -- need for accurate and widely accepted valuation method -problems with estimating patent-generated profits using current methods -- differing types of owner -- patent contribution to product -- predicting future profits -- proposed new method for estimating patent profits -- market size and profit -- profit attributable to each patent -- patent life -smartphone case study. Subject: Value of intellectual property SNIPER No.: 2014/02025 Author: Bonadio, Enrico Title: Bans and restrictions on the use of trade marks and consumers' health Source: Intellectual Property Quarterly. No. 4, 2014, pp. 326-345. Summary: To what extent the use of brands on packaging in the field of tobacco, alcohol and food can be prohibited or restricted by governments to protect consumers' health -- packaging-related measures adopted or proposed in these industries -- Europe, United States, Australia and other countries -- differences between the concepts of "registration" and "use" of brands -- the TRIPS Agreement and the Paris Convention do not offer trade mark owners a positive right to use brands, but just a negative right (i. e. the right to prevent third parties from exploiting the sign) -- the measures analysed in the article lawful and compliant with those international treaties -- they also seem also to be capable of meeting the desired target, namely consumers' health. Subject: Trade mark use Subject: Branding Subject: Trade dress SNIPER No.: 2014/02017 Author: Barlocci, Anna Author: Rooij, Mathieu de Title: Beyond the unitary patent: nothing new under the sun? Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 219-223. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Effects of unitary European patent in Spain -- Spanish opposition to unitary patent package -- patent validations in Spain -- forum shopping and patent torpedoes -- national filings. Subject: Regional patents--Spain Subject: Patent systems--Spain Subject: Patent examination--Spain SNIPER Bulletin – January 2015 Page 4 of 43 SNIPER No.: 2014/01977 Author: Kappos, David Title: Big data and intellectual property Source: Intellectual Asset Management. No. 68, November-December 2014, p. 20. Summary: Intersection between big data and intellectual property -- opportunities to derive knowledge from large data sets -- definition of big data – using data correlations to generate business value -- little current consideration of relationship between IP and big data -- data as an intangible asset class -- potential use of patents, copyright and trade marks to protect big data and related insights -- impact for standards-setting organisations. Subject: Data mining Subject: Intellectual property Subject: Information economy SNIPER No.: 2014/01979 Author: Zhang, Tao Author: Fu, Dian Author: Zhou, Wenyu Title: Building a high-quality patent portfolio in China and the United States Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 33-40. Summary: Need to control patent quality to ensure return on investment (RoI) -- China and United States -- filing only high quality applications -- need to question whether patent office is likely to grant a patent -- whether others are likely to use the invention in the next 2-20 years -- ensuring high patent quality -- defining high quality -- how to produce high quality patents. Subject: Patents--China Subject: Patents--United States Subject: Business planning SNIPER No.: 2014/01966 Author: Phelps, Marshall Author: Kline, David, 1950Title: Building a white-hat brand in the patent industry Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 41-48. Summary: Crisis of public confidence in intellectual property and patent licensing -- need to build positive 'white hat' brands and differentiate from patent trolls -- impact of open source ethos -- large technology companies don't believe patent system is in their interest -- many problems for patent industry created by the industry itself -- damage caused by patent trolls -- need for ethical behaviours by patent licensors -- monetisation of global brand portfolios -- need for visionary IP creation that does not depend on litigation -- creating a more transparent market for intellectual property -- need for ethical and responsible conduct by patent owners. Subject: Intellectual property management--intellectual property industry--United States Subject: Ethics--intellectual property industry--United States Subject: Non-practicing entities--United States SNIPER Bulletin – January 2015 Page 5 of 43 SNIPER No.: 2014/02019 Author: Ramage, W. Edward Title: Business method patents under fire in the United States Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 231-235. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Computer-implemented business method patents -- United States -- Bilski v. Kappos -Prometheus Laboratories v. Mayo Collaborative Services -- Alice Corporation Pty Ltd v. CLA Bank International -- Ultramercial, Inc. v. Hulu, LLC -- guidance from United States Patents and Trademarks Office (USPTO) -- significant numbers of business method and computerimplemented inventions at risk after Alice decision. Subject: United States. Patent and Trademark Office--procedure Subject: Business methods--case law--United States Subject: Computer-related inventions--case law--United States SNIPER No.: 2014/02034 Author: Vleeschauwer, Marc de Title: The Canadian Patent Examiner Continuous Training Program Source: World Patent Information. Vol. 39, December 2014, pp. 73-78. Summary: Canadian Intellectual Property Office (CIPO) created the Patent Examiner Continuous Training Program in 2009 -- overview of the program -- training is on IP, science and technology or personal development -- format and provider vary according to need -- factors that influence training needs -- categories of training offered -- training providers -- training medium used -examples of recent training activities -- CIPO's experience may be useful for other intellectual property offices developing a training program for their examiners. Subject: Canadian Intellectual Property Office Subject: Patent examination--Canada Subject: Intellectual property offices staff--Canada SNIPER No.: 2014/02005 Author: Bartoszewicz, Lola Author: Lowthers, Erica L. Title: Canadian patents: what savvy businesses need to know Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 149-153. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patents -- Canada -- ways to expedite patent prosecution -- advanced examination -Patent Prosecution Highway (PPH) -- green and clean technologies -- ways to delay patent prosecution -- post-grant amendments -- enforcement and remedies -- Health Canada Patent Register linking drug regulatory approval to patent protection -- double patenting and divisional applications -- advantages to patentees from Canadian patent protection. Subject: Patents--Canada SNIPER Bulletin – January 2015 Page 6 of 43 SNIPER No.: 2014/02035 Author: Adams, Stephen R. Title: Centenary patent 2014: Judson, Sundback and the zip fastener Source: World Patent Information. Vol. 39, December 2014, pp. 79-84. Summary: Centenary in 2014 of the filing of a key US patent in the development of the modern zip fastener -- Gideon Sundback was the named inventor -- improved the original designs of Whitcomb Judson -- Sundback also responsible for many additional patents during his time working for the Hookless Fastener Company -- some of his inventions were patented outside of the US as well -- despite retaining foreign rights to himself, he did not make a great fortune from inventing -- his last patent was granted posthumously in 1959. Subject: Patents--history SNIPER No.: 2014/02057 Author: Simone, Joseph Title: China Supreme Court issues draft rules on Trademark Registry disputes Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 41-43. Summary: China's Supreme People's Court (SPC) issued draft rules entitled "Provisions of the SPC on Certain Issues Related to Trials of Administrative Cases Involving the Grant and Confirmation of Trademark Rights" on October 14, 2014 -- provide guidance on the implementation of various provisions of the recently revised Trademark Law, which entered into effect on May 1, 2014 -- intended mainly to assist courts, and indirectly the China Trademark Office (CTMO) and Trademark Review and Adjudication Board (TRAB), in handling registry disputes, including cancellations, oppositions and appeals of rejected applications -- summary of main provisions Subject: Trade marks--law and legislation--China Subject: Legal procedure--China SNIPER No.: 2014/01905 Author: Mak, Toby Author: Zhang, Jie Title: Chinese Trade Mark Law: major changes and practice notes, following the third amendments Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 8, August 2014, pp. 462-465. Summary: New Chinese Trade Mark Law -- major changes in the Trade Mark Law and the related practice notes -- number of possible contentious issues -- expectations to the new Chinese Law to satisfactorily address changes to the commercial environment and the international trade mark practice. Subject: Trade marks--law and legislation--China Subject: Trade marks--reform--China SNIPER Bulletin – January 2015 Page 7 of 43 SNIPER No.: 2014/01968 Author: Spours, Peter Title: Cinderella story: is prior art the hidden beauty of intellectual property? Source: Intellectual Asset Management. No. 67, September-October 2014, p. 59. Summary: Use of prior art libraries to defence against patent assertions and non-practising entities (PAEs) -- ability to invalidate assertion is valuable in litigation -- useful to have a wideranging historical collection of devices, software, manuals, films, interviews, etc. that are relevant to industry -- use of collected prior art highly persuasive in US Patent and Trademark Offices (USPTO) re-examination procedures -- often less costly to acquire and use prior art than to purchase contested patents. Subject: Inventive step--United States Subject: Non-practicing entities Subject: Patent litigation SNIPER No.: 2014/02036 Author: Spear, Brian Title: Coal: parent of the industrial revolution in Great Britain: the early patent history Source: World Patent Information. Vol. 39, December 2014, pp. 85-88. Summary: History of coal and related industries in the United Kingdom -- extensive analysis of Great Britain 17th and 18th century patents -- technologies covered include mine drainage, glass making and metal smelting Subject: Patents--history Subject: Patents--mining industry--United Kingdom SNIPER No.: 2014/02052 Author: Mgbeoji, Ikechi, 1968Title: The Comprador complex: Africa's IPR elite, neo-colonialism and the enduring control of African IPR agenda by external interests Source: Intellectual Property Journal (Carswell). Vol. 26 No. 3, September 2014, pp. 313-330. Summary: Intellectual property rights (IPR) law practice and administration in Africa has long been dominated by a clientelist focus -- clients include Western corporations, institutions, and stakeholders -- the triage of local elite, foreign clients and international IPR institutions has a long history in the colonial origins of IPR in Africa -- recent developments, especially, the emergence of a new cadre of IPR scholars, institutions, and NGOs suggest that the status qua may be upended soon Subject: Intellectual property rights--Africa Subject: Intellectual property industry--Africa SNIPER Bulletin – January 2015 Page 8 of 43 SNIPER No.: 2014/02022 Author: Aplin, Tanya Frances, 1972Title: A critical evaluation of the proposed EU Trade Secrets Directive Source: Intellectual Property Quarterly. No. 4, 2014, pp. 257-279. Summary: The European Commission issued a proposed Trade Secrets Directive on November 28, 2013 -- aim of tackling the legal fragmentation in the protection of trade secrets that currently exists in the EU -- critical evaluation of the proposed Directive and the Council's General Approach adopted on May 26, 2014 -- argues for scepticism of claims that harmonisation will bring substantial economic gains -- only a modest amount of harmonisation is likely to come from implementation of this Directive if adopted -- likely to see a patchwork of laws continuing to regulate the protection of trade secrets in the EU. Subject: Trade secrets--law and legislation--Europe SNIPER No.: 2014/02011 Author: Snyder, Kristine S. Author: Varmann Jørgensen, Celine Title: Current developments and rulings in IP law and practice Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 185-189. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Developments in Norwegian intellectual property law -- strengthening of IP enforcement rules -- calculation of damages -- increased criminal penalties -- improved preventive measures -- right to information for rights holders -- exclusive jurisdiction -- preliminary injunctions and customs control -- opt-out of OHIM common practice on black and white trade marks -prohibition of personal import of prescription drugs via shipment -- Google AdWords and good business practice -- unfair competition standard -- Teppeabo AS v. Teppeland AS -- trade mark registration for ALFRED NOBEL in relation to spring water -- deception and first-to-file principles. Subject: Intellectual property enforcement--Norway Subject: Trade mark examination--Norway Subject: Trade mark applications--Norway SNIPER No.: 2014/01927 Author: Friedgut, Martin Author: Caldwell, Amanda Author: Heerey, Peter Author: Cordiner, Tom Author: Nash, Alan Author: Reynolds, Simon Title: Current developments: Australia Source: Intellectual Property Forum. No. 98, September 2014, pp. 73-80. SNIPER Bulletin – January 2015 Page 9 of 43 Summary: New directions under the Patents Regulations 1991 and Trade Marks Regulations 1995 -- amendments to several parts of the Trade Marks Office Manual of Practice & Procedure -Vaysman v Deckers Outdoor Corporation Inc -- trade mark infringement -- copyright infringement -UGG mark -- Damorgold Pty Ltd v JAI Products Pty Ltd -- patent licensing -- Telstra Corporation Limited v Phone Directories Company Pty Ltd -- passing off, misleading and deceptive conduct regarding the colour yellow -- Lisica v Commissioner of Patents -- patent claims -- AstraZeneca AB v Alphapharm Pty Ltd -- patent costs -- Fieldturf Tarkett Inc v Tigerturf International Limited -patent opposition -- claims lacking novelty Subject: Trade mark infringement--case law Subject: Copyright infringement--case law Subject: Confusing similarity Subject: Patents--case law Subject: Inventive step SNIPER No.: 2014/01965 Author: Schoppe, Laura A. Title: Cutting-edge tech: a how-to guide for corporate licensing officers Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 18-25. Summary: Technology transfer from universities into commercial ventures -- United States -trends in university and government licensing -- how to find licensable university and government technologies -- need for strategic searching by corporates -- use of social media tools -- need to understand university and government processes and limitations -- securing researcher-inventor buy-in for commercialisation -- need to establish business terms -- using creativity to negotiate deals -- value of long-term relationships -- tips for engaging with technology transfer offices. Subject: Technology transfer--education and training industry--United States Subject: Value of intellectual property--education and training industry--United States Subject: Intellectual property management--education and training industry--United States SNIPER No.: 2014/02054 Author: Blum, Jeremy Author: Byrne, Daniel Title: Developments in trade mark law: blocking access to counterfeit websites Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 34-36. Summary: Trade mark owners fight against online counterfeiting -- UK decision in Cartier International AG & Ors v. British Sky Broadcasting Limited & Ors -- confirmed the UK had jurisdiction to impose injunctions against intermediaries such as internet service providers (ISPs) where their services are being used by other parties to commit trade mark infringement online -had jurisdiction to order ISPs to take steps to block websites which were infringing trade marks of the claimants -- facts of the case -- analysis of the decision Subject: Trade mark infringement--United Kingdom Subject: Counterfeiting Subject: Legal jurisdiction SNIPER Bulletin – January 2015 Page 10 of 43 SNIPER No.: 2014/02029 Author: Van Dulken, Stephen, 1952Title: Do you know English?: the challenge of the English language for patent searchers Source: World Patent Information. Vol. 39, December 2014, pp. 35-40. Summary: The complex and inconsistent nature of the English language presents problems for patent searchers researching the prior art -- true for native speakers as well as for those who use it as a second language -- problems include confusion in translations -- Patentese, the jargon used by patent attorneys -- terminology -- can take time to be adopted -- faux amis, words which you think you know as they look identical to foreign words -- the oddities of English spelling -- multiple meanings for the same words -- words that have opposite meanings -- synonyms -- Americanisms as different spellings and different words -- words that are both nouns and verbs -- compound nouns, which are often spelt as two words -- spelling mistakes -- syntax -- suggestions -- using broad classes together with keywords -- looking for synonyms -- allowing for two words in compound nouns -- using adjacency operators -- combining sets of results -- using citation searching as an additional search -- thesaurus of recommended words and spellings would be useful if adopted by those preparing abstracts. Subject: Patent searching SNIPER No.: 2014/01982 Author: Jarczyk, David R. Author: Wiora, John J. Author: Lambert, Danielle M. Title: Drivers of IP value: the most active companies in intellectual property revisited Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 73-81. Summary: Intellectual property value -- strategies used to build intellectual property value -- patent count not necessarily synonymous with innovation -- business intelligence and transparency through interconnected data -- licence agreements -- patents -- trade marks -- mergers and acquisitions (M&As) -- practical applications for connected data -- commercialisation -- valuation. Subject: Value of intellectual property Subject: Intellectual property management SNIPER No.: 2014/02007 Author: Caen, Thierry Title: ECJ rules on SPCs: and French courts react Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 163-167. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Supplementary protection certificates (SPCs) -- France -- interpretation of the European Regulation on Supplementary Protection Certificates (SPCs) for Medicinal Products by European Court of Justice -- Medeva, University of Queensland and Daiichi Sankyo decisions -Novartis v. Actavis -- Eli Lilly decision -- post-Medeva decisions in France -- Irbesartan decision -patent limitations -- Novartis v. Actavis order -- Neurim pharmaceutical judgment. Subject: Patent extension--case law--France Subject: Patent extension--pharmaceutical industry--France SNIPER Bulletin – January 2015 Page 11 of 43 SNIPER No.: 2014/02000 Author: Thomas, Christian R. Title: Effective use of Community designs Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 113-117. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: European Community Designs -- eligibility for protection -- general requirements -novelty -- individual character -- novelty and individual character are assumed -- clarity of the application -- graphic representations -- broken lines and boundaries -- neutral background -advantages associated with multiple applications -- complex products -- details of products -- sets of articles -- variety of articles -- enforcing design rights -- main procedural principles -- claims on the merits in proceedings -- preliminary proceedings. Subject: Community Design Subject: Industrial designs--Europe Subject: Industrial design registrability--Europe Subject: Industrial design enforcement--Europe SNIPER No.: 2014/02003 Author: Signorelli, Lucy Author: Garnett, Nicky Author: Strachan, Danie Title: Enforcing IP rights in Africa Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 135-140. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property enforcement -- substantive examination -- anti-counterfeiting activities -- expanding business footprints into Africa -- competition and consumer rights -- Algeria - Angola -- Botswana -- Burundi -- Djibouti -- Egypt -- Eretria -- Ethiopia -- Gambia -- Ghana -Kenya -- Lesotho -- Liberia -- Libya -- Madagascar -- Mauritius -- Mozambique -- Namibia -Ruanda -- Sao Tome and Principe -- Seychelles -- Somalia -- South Africa -- Tanzania -- Tunisia -Uganda -- Zambia. Subject: African Regional Intellectual Property Organization Subject: Organisation africaine de la propriété intellectuelle Subject: Intellectual property enforcement--Africa Subject: Counterfeiting--Africa SNIPER No.: 2014/02058 Author: Maggs, Andrew Title: English Patents Court sets novel test for inventive step in Teva v. Leo Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 44-48. SNIPER Bulletin – January 2015 Page 12 of 43 Summary: English Patents Court decision in Teva v. Leo -- held claims of two patents relating to a combination formulation for treating psoriasis invalid as lacking inventive step -- did not follow the test in the Court of Appeal's Pozzoli v. BDMO decision -- facts of the case -- analysis of the decision -- impact of patent rights and regulatory issues on the skilled addressee -- how the Patent Court's approach to obviousness departed from Pozzoli -- whether Patents Court bound to follow Pozzoli -- whether the decision would be different if Pozzoli test followed -- what should be assessed in "obvious to try" cases -- impact of current rights, regulatory issues on pharmaceutical clinicians -- whether something can be common general knowledge but not referred to in any publicly available document -- level of evidence required to prove "inventive selection" Subject: Inventive step--United Kingdom Subject: Inventive step--pharmaceutical industry--United Kingdom SNIPER No.: 2014/01998 Author: Allekotte, Bernd Author: Blumenröder, Ulrich Title: The EU Technology Transfer Block Exemption Regulation Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 101-105. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: European Technology Transfer Block Exemption Regulation revision -- overview -passive sales restrictions -- grant-backs -- no-challenge and termination clauses -- settlement agreements -- technology pools -- analysis. Subject: European Parliament. Regulation (EU) No 316/2014 of 21 March 2014 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements Subject: Technology transfer--law and legislation--Europe SNIPER No.: 2014/02053 Author: Tumbridge, James R. Title: The EU-Canada Trade Agreement: considerations for businesses Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 31-34. Summary: Trade agreement between Canada and the European Union ("CETA") -- will eliminate nearly all import duties between Canada and the EU -- challenges and disputes for businesses -issues businesses should have in mind, especially for IP and the dispute system -- changes needed to Canada's IP regime -- pharmaceuticals -- data protection -- trade mark changes -combatting counterfeits -- geographic indications to be recognized -- claimed improvements to the Investor-to-State Dispute Settlement (ISDS) procedures -- CETA fair and equitable treatment obligation Subject: Free trade--Canada SNIPER Bulletin – January 2015 Page 13 of 43 SNIPER No.: 2014/02002 Author: Ericsson, Lena Author: Bruck, Hanna Title: Examining the latest Community trademark developments Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 127-130. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Trade marks -- European laws and practice not fully harmonised -- OHIM Convergence Program -- trade mark degeneration -- Kornspitz decision -- scope of protection for black and white versus colour trade marks -- Pico Food GmbH v. OHIM -- likely future developments. Subject: Office for Harmonization in the Internal Market (Trade Marks and Designs) Subject: Trade marks--case law--Europe Subject: Trade mark systems--trends--Europe Subject: Harmonisation of laws--Europe SNIPER No.: 2014/02096 Author: Lai, Jessica C., 1985Title: The exhaustion doctrine and genetic use restriction technologies: a look at Bowman v Monsanto Source: Journal of World Intellectual Property. Vol. 17 No. 5-6, November 2014, pp. 129-141. Summary: Relationship between intellectual property rights and technologies used to protect them -- copyright and digital rights management technologies (DRMs) -- challenges raised by certain biotechnologies and their inherent reproductive nature -- caused patent and plant variety right (PVR) owners to create genetic use restriction technologies (GURTs) to protect their rights -arguments that GURTs exceed the rights of patentees and PVR owners, and prevent permitted uses from being undertaken -- recent case law on the exhaustion doctrine -- exactly what it is that GURTs do -- permitted uses in patent and PVR law -- US Supreme Court decision in Monsanto v Bowman -- "terminator seeds" -- the nature of GURTs -- the patent specification -- the limited exceptions to patent infringement -- all mean that GURTs fit well with patent law and policy -different situation for GURTs used to protect PVRs -- due to the different standards for registration and more extensive exceptions to infringement Subject: Patent exhaustion Subject: Plant rights exhaustion SNIPER No.: 2014/02001 Author: Kraak, Hajo Author: Cromsigt, Jenny Title: Finding the perfect balance: golden rules for cost-effective outsourcing Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 119-124. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks SNIPER Bulletin – January 2015 Page 14 of 43 Summary: Outsourcing of intellectual property legal services -- analyse strengths of in-house department and make a plan of action -- choose an outsourcing model that fits -- liaison, prosecution, area, and ad hoc models -- need to choose the right partner -- act as a client and communicate with the service provider -- invest in a solid relationship -- five pitfalls to be avoided. Subject: Outsourcing--intellectual property industry SNIPER No.: 2014/01972 Author: Sekac, Matthew Title: For patent practitioners, translation is everywhere Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 77-84. Summary: Approaches to patent translation -- need for rethink for on how translations are handled -- translation is more than just a commodity -- where translations are needed -- foreign filing and patent prosecution -- freedom to operate assessments -- licensing negotiations -- litigation -augmented and reactive buying practices -- foreign patent law firms are not language specialists -need to deal with translation sourcing in a more centralised way. Subject: Translations Subject: Patents SNIPER No.: 2014/01992 Author: Köllner, Malte Title: Foreign filing and effective use of the Patent Cooperation Treaty Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 63-67. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Options and issues for international patent filing -- challenges when seeking patents in different countries -- foreign filing trends in 2014 -- costs -- when to use and not use the Patent Cooperation Treaty (PCT) -- cost savings from Chapter II PCT filing -- whether the PCT should be combined with patent prosecution highways (PPH). Subject: Patent Co-operation Treaty (1970 June 19) Subject: International patent applications SNIPER No.: 2014/01902 Author: Mak, Toby Title: A FRAND decision in China between Huawei and InterDigital: how patents could be relevant Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 8, August 2014, pp. 454-456. Summary: FRAND decision in China between Huawei and InterDigital -- second instance decision by the Guangdong High People's Court -- appeal against the first instance decision by the Shenzhen Intermediate People's Court -- Chinese anti-trust law -- decision of the first instance court -- decision at the second instance -- relevance of patents in an anti-trust case in China. Subject: Patent licensing--Communication services industry Subject: Patent infringement--case law--China Subject: Standards (Technical)--communication services industry SNIPER Bulletin – January 2015 Page 15 of 43 SNIPER No.: 2014/01963 Title: Going in with eyes wide open Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 4, 6. Summary: Strategic flexibility coming from patent ownership and licensing -- Tesla permitting good-faith use of their patents, effectively cross-licensing -- patent monetisation partnership between Acacia Research and Renesas Electronics -- Licence On Transfer Network (LOTNet) -LOTNet solution may not be suitable for all patent owners. Subject: Patent licensing Subject: Patent owners' rights Subject: Non-practicing entities SNIPER No.: 2014/01898 Title: Gucci loses GG trade mark: an important lesson in keeping records and evidence Source: European Intellectual Property Review. Vol. 36 No. 9, 2014, pp. 601-606. Summary: Gucci's trade mark has been revoked in various classes on the grounds of non-use -decision of the United Kingdom (UK) Intellectual Property Office -- GG logo -- continuous period of non-use for a period of five years or more will leave a mark susceptible to revocation -- The Trade Marks Act 1994 -- Community Trade Marks Regulation -- history of Gucci GG logo case -importance of keeping evidence demonstrating use of a registered or unregistered trade mark for brand owners -- Gerry Weber -- differing factors for UK registered marks and Community registered trade marks -- consequences after a trade mark is revoked. Subject: Trade mark cancellation--United Kingdom Subject: Famous trade marks--United Kingdom Subject: Branding SNIPER No.: 2014/02015 Author: Markieta, Jarosˆaw Title: How patent holders can make use of border protection Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 209-212. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Customs protection and border measures -- Poland -- establishing customs protection - initiating border protection proceedings -- simplified procedure -- court proceedings -- business intelligence -- small consignments. Subject: Customs--Poland SNIPER No.: 2014/01989 Author: Monk, Art Title: How to build a patent sales programme Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 43-48. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks SNIPER Bulletin – January 2015 Page 16 of 43 Summary: Developing and operating a patent sales program -- common patent portfolio issues -need for active portfolio management -- portfolio sort and review -- portfolio assessment criteria -portfolio structure and monetisation options -- divestment decision making -- values determined by intended use of patent. Subject: Patent assignment Subject: Patent licensing Subject: Value of intellectual property Subject: Intellectual property management SNIPER No.: 2014/01988 Author: Carbonneau, Louis Title: How to work with patent brokers and buyers Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 37-41. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Development and use of patent marketplaces – actions to take and not take before approaching a patent broker -- how to select a broker -- broker compensation models -- types of buyers -- what makes a patent sell -- what a patent is worth -- patent sale process -- closing a deal. Subject: Patent assignment Subject: Intellectual property management SNIPER No.: 2014/02021 Author: Bazzani, Hugo Title: How will new IP legislation affect rights holders? Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 243-246. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property legislation reform -- Venezuela -- Industrial Property Act 1955 -emergence of IP financing and valuation models -- changes in practice at customs and other enforcement agencies -- key cases -- FRIGURT v. MIGURT -- S Tous SL case. Subject: Intellectual property law--Venezuela Subject: Intellectual property systems--reform--Venezuela Subject: Trade marks--case law--Venezuela SNIPER No.: 2014/02027 Author: Li, Zheng Author: Atherton, Mark Author: Harrison, David Title: Identifying patent conflicts: TRIZ-led patent mapping Source: World Patent Information. Vol. 39, December 2014, pp. 11-23. SNIPER Bulletin – January 2015 Page 17 of 43 Summary: Novel method of patent mapping for visualising conflicts between patent claims -incorporates the Theory of Inventive Problem Solving (TRIZ) -- method uses TRIZ engineering parameters as the criteria for evaluating dissimilarities between patent claims -- produces a visualisation based on Multi-Dimensional Scaling (MDS) that can be compared with legal judgments -- advantages of the method -- it reduces evaluation complexity by transforming claimto-claim comparisons into claim-to-criteria comparisons -- it provides a means of comparing judgment standards between different legal authorities in mechanical engineering terms -- reliability and validity of the method are tested through focus groups using a case study on aircraft seats -scope of the method is limited to the field of mechanical invention Subject: Patent claims--analysis SNIPER No.: 2014/01921 Author: Wheeldon, Sheana Title: In conversation with Clive Elliott QC Source: Intellectual Property Forum. No. 98, September 2014, pp. 6-11. Summary: One of the most senior specialist IP barristers in New Zealand -- completed law degree in South Africa -- became involved with trade marks while working in the legal department at Unilever in Durban -- developed the litigation department while working at Baldwins in New Zealand in the 1980s -- took silk and became a QC in 2013 -- believes the legal profession to be under serious pressure Subject: Elliott, Clive--interviews Subject: Lawyers--New Zealand SNIPER No.: 2014/01926 Author: Franklin, Anthony Title: "In the light of" common general knowledge: obviousness after the Full Court decision in AstraZeneca v Apotex Source: Intellectual Property Forum. No. 98, September 2014, pp. 67-72. Summary: Issue of the proper definition of the reference material for obviousness -- interpretation of ss. 18(I)(b)(ii) read with the "prior art base" definition in Schedule 1 ss. 7(2) and (3) of the Patents Act 1990 -- article presents the argument that the Full Court was wrong and Australian courts generally misinterpret the relevant provisions of the Act Subject: Australia. Patents Act 1990 Subject: Inventive step--case law--Australia SNIPER No.: 2014/02051 Author: Berryman, Jeffrey Bruce Title: Injunctions contra mundum: the ultimate weapon in containment Source: Intellectual Property Journal (Carswell). Vol. 26 No. 3, September 2014, pp. 287-312. SNIPER Bulletin – January 2015 Page 18 of 43 Summary: English courts have developed over the last 15 years the injunction contra mundum, one made against all the world and used primarily to prevent infringement of privacy and breaches of confidence -- the order has attracted recent criticism -- frequently sought by celebrities to suppress publicity about their private and family life -- the order intersects a number of substantive areas of law -- the developing tort of privacy -- freedom of speech -- the Internet and prior restraint -- open court principle -- defamation -- ability to enforce court orders across jurisdictional boundaries -- difficulties of introducing such an injunction into Canadian common law -- whether it is necessary Subject: Injunctions--Canada Subject: Legal procedure--Canada Subject: Privacy SNIPER No.: 2014/02023 Author: Vousden, Stephen Title: Innoweb, search-engines and engineering legitimacy in EU law Source: Intellectual Property Quarterly. No. 4, 2014, pp. 280-306. Summary: Some websites allow users to search multiple websites simultaneously, saving the user time -- wording of the EU Database Directive suggested that there was nothing wrong with this -judgment in Court of Justice for the European Union (CJEU) lnnoweb case -- reinterpreted the wording of the Directive -- CJEU appears to have created a new rule that stops firms running these parallel-search websites -- argument that a close inspection of the CJEU's reasoning suggests that the Court may have misdescribed the science of database technology -- may have exceeded its jurisdiction -- casts doubt on the Court's legitimacy -- implications of the decision. Subject: Database rights--case law--Europe Subject: Internet--case law--Europe SNIPER No.: 2014/02056 Author: McIlraith, Gary Title: Internet changes and their impact on brand protection strategies Source: World Intellectual Property Report. Vol. 28 No. 12, December 2014, pp. 39-40. Summary: New generic Top Level Domains (gTLDs) -- online opportunities for brand owners -ability to manage and control their own space on the internet -- need for businesses to be well prepared for these changes to the web -- key is stakeholder engagement and well-developed gTLD strategy -- risks for business -- intellectual property and brand reputation -- cost-effective gTLD trade mark policing program -- online strategies -- sound strategy should move from costly defensive domain registrations to owning digital domain assets Subject: Domain names Subject: Internet Subject: Brand management SNIPER Bulletin – January 2015 Page 19 of 43 SNIPER No.: 2014/01903 Author: Mak, Toby Title: Invalidation of Cubist Pharmaceuticals, cubicin Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 8, August 2014, pp. 457-459. Summary: Methods of (medical) treatment claims -- not accepted in China -- rewritten into Swisstype claims -- Swiss-type claims are not suitable for inventions involving merely changes in the dosage regimen and/or timing of administration -- Chinese patent for the drug cubicin -- limitation on unit dose considered as a technical characteristic in evaluating patentability -- first ruling from the Supreme Court regarding the dosage amount and timing of administration on determination of patentability in China. Subject: Swiss-type claims--China Subject: Medical procedures and devices--patentability--China Subject: Medical procedures and devices--case law--China SNIPER No.: 2014/01967 Author: Zaid Hamza Title: IP-based financing, Singapore-style Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 51-56. Summary: Intellectual property financing scheme -- Intellectual Property Office of Singapore (IPOS) -- use of granted patents by Singapore-incorporated companies as finance security -strategic positioning by Singapore government -- key features of the scheme -- why security is only available on patents, and not trade marks or copyright -- feedback from Singapore banking community -- opportunities for companies with strong patent portfolios -- practical issues regarding IP-based financing -- Singapore as Asia's IP hub -- quick facts about the Singapore IP financing scheme. Subject: Intellectual Property Office of Singapore Subject: Intellectual property management--Singapore Subject: Finance--Singapore Subject: Financial management--Singapore Subject: Patents--Singapore SNIPER No.: 2014/01974 Title: IP-related statistics from the recent past Source: Intellectual Asset Management. No. 67, September-October 2014, p9. 94-95. Summary: Intellectual property facts and figures -- most favourable US federal district courts to patent holders, 1995-2013 -- stock performance of selected publicly traded IP-centric companies, May-June 2014 -- top 30 patent assignees and assignors by number of transactions, May-June 2014 -- countries ranked by value of royalties and licence fee receipts as percentage of total trade. Subject: Intellectual property--statistics Subject: Intellectual property--trends SNIPER Bulletin – January 2015 Page 20 of 43 SNIPER No.: 2014/01983 Title: IP-related statistics from the recent past Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 82-83. Summary: Intellectual property statistics -- IP royalty balance, selected countries, 2001-2012 -number of patent examiners, IP5 offices, 2006-2012 -- stock performance of selected publicly traded IP-centric companies, July-September 2014 -- top 30 patent assignees and assignors by number of transactions, July-August 2014. Subject: Intellectual property--statistics Subject: Intellectual property--trends SNIPER No.: 2014/01971 Author: Neu, Michel, 1979Title: Is your country ready for open innovation? Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 71-75. Summary: Use of open innovation to improve national competitive position -- royalties, licence payments and receipts -- types of innovation culture -- technology broker -- technology sponge -technology isolationist -- technology fountain -- implications for global trade balance -- impact on manufacturing added value and percentage of gross domestic product (GDP) -- case studies -France as technology fountain -- Germany as technology broker -- China as technology sponge -defining innovation policies. Subject: Innovation (Technological)--economics SNIPER No.: 2014/01984 Author: Imai, Masahito Title: Japanese IP court seeks a little help from friends on FRAND licensing dispute Source: Intellectual Asset Management. No. 68, November-December 2014, p. 84. Summary: Licensing of standards-essential patents -- Japan -- first use of amicus briefs by IP High Court of Japan -- Apple v. Samsung -- requirement for licensing of standards-essential patents on fair, reasonable and non-discriminatory (FRAND) terms -- injunctions -- grounds for enforcement of standards-essential patents -- damages not to exceed royalty payable under FRAND terms except for exceptional circumstances -- partial overturning of Tokyo District Court declaratory decision. Subject: Standards (Technical)--case law--Japan Subject: Mobile computing--case law--Japan Subject: Patent infringement--case law--Japan Subject: Patent licensing--case law--Japan Subject: Damages--case law--Japan SNIPER Bulletin – January 2015 Page 21 of 43 SNIPER No.: 2014/02049 Author: Binnie, W. Ian Author: Park-Thompson, Vanessa Title: "Keep your greedy hands off my genes!": the U.S. Supreme Court's invalidation of gene patents is a victory for basic principles of patent law, but public policy concerns remain unresolved Source: Intellectual Property Journal (Carswell). Vol. 26 No. 3, September 2014, pp. 249-268. General Note: The Harold G. Fox Moot Lecture Summary: United States Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics Inc -- held that naturally occurring DNA segments are products of nature and therefore not patentable subject matter -- overturned more than 30 years of US Patent and Trademark Office practice -- Myriad's gene patents -- basic principles of patent law raised by gene patents -- whether a discovery or an invention -- "products of nature" not patentable subject matter -- the Myriad genetics controversy -- public policy concerns -- US Supreme Court decision that genes are unpatentable discoveries -- different view taken by the Federal Court of Australia -- approach taken by Europe and the UK -- Canada's "Harvard Mouse" limitation on patenting "higher life forms" portrayed as a "common sense" exception -- whether gene sequencing provides a "quid pro quo" in exchange for patentability -- whether the denial of subject matter patentability reflects sound public policy and "convenience" Subject: Gene patents--United States Subject: Gene patents--Canada Subject: Ethics SNIPER No.: 2014/01995 Author: Fuller, Stuart Title: Keeping one step ahead of the evolving Internet: a beginner's guide Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 81-85. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Domain name management -- liberalisation of internet domain names -- relaxation of rules by Internet Corporation for Assigned Names and Numbers (ICANN) -- managing online presence in light of of new general top level domains (gTLDs) -- new opportunities and disadvantages for brand holders -- next steps for brand holders. Subject: Internet Corporation for Assigned Names and Numbers Subject: Domain names--management Subject: Brand management Subject: Internet SNIPER No.: 2014/01987 Author: Garat, Renaud Title: Key issues in valuation Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 27-34. SNIPER Bulletin – January 2015 Page 22 of 43 General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patent valuation -- difference between valuation and evaluation -- many patent portfolio valuation metrics available -- contrasting uses for difference valuation methodologies -- global valuation models -- goal-driven evaluation -- valuation metrics are not absolute -- need to compare patent portfolios against portfolios with comparable benchmarks -- business needs drive evaluation methods -- speeding (research and development (R&D) -- mitigation of risks in product development -- sustaining competitive advantage when going to market -- using asset monetisation to maximise profit -- technical, legal and geographic metrics -- ranked portfolio candidates -prerequisites for patent evaluation -- patent evaluation and the corporate board. Subject: Value of intellectual property Subject: Intellectual property management SNIPER No.: 2014/02031 Author: Eíto-Brun, Ricardo Title: Knowledge dissemination patterns in the information retrieval industry: a case study for automatic classification techniques Source: World Patent Information. Vol. 39, December 2014, pp. 50-57. Summary: Study analysing a collection of U.S. patents granted between 1990 and 2012 for the subject "automatic document clustering and classification" -- key technology within the Information Retrieval and Text mining disciplines -- using citation analysis aims to identify the most productive and influential companies and journals -- patterns followed in the transfer and sharing of technical knowledge -- identifies companies with higher productivity (granted most number of patents) and higher impact ( organizations whose patents received the most number of citations) -- compares generated rankings with those obtained using traditional bibliometric indicators -- shows the evolution of the market key players based on patent citation -- bibliometric indicators are used to characterize companies -- proposed methodology can be applied to any other subject area Subject: Innovation (Technological)--knowledge industry Subject: Technology transfer--analysis SNIPER No.: 2014/02008 Author: Schüll, Gottfried Title: Let's fall in love: with the German language Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 169-171. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Unitary European patent -- languages and translations -- choosing the right language for court proceedings -- why the German language is the right choice for German courts. Subject: Unified Patent Court--procedure Subject: Patent litigation--procedure--Germany Subject: Patent litigation--procedure--Europe SNIPER Bulletin – January 2015 Page 23 of 43 SNIPER No.: 2014/01973 Author: Keller, Gary Title: Leveraging global collaborations to grow early-stage IP commercialisation Source: Intellectual Asset Management. No. 67, September-October 2014, pp. 86-93. Summary: Early-stage intellectual property commercialisation roundtable -- building on business relationships to feed innovation pipelines -- identifying collaborators to add value and establish relationships -- determining IP sharing to establish initial relationships -- priorities for partnership -due diligence processes -- important issues in ensuring operational success -- geographic preferences for developed, developing and least developed countries -- preferable types of earlystage collaboration time and resources required -- ways of connecting with potential collaborators - trends. Subject: Lechter, Michael A.--interviews Subject: Hiziroglu, Omer--interviews Subject: Wilson, Mark--interviews Subject: Technology transfer--interviews Subject: Business collaboration--interviews SNIPER No.: 2014/02028 Author: Yang, YunYun Author: Klose, Thomas Author: Lippy, Jonathan Author: Barcelon-Yang, Cynthia Author: Zhang, Litao Title: Leveraging text analytics in patent analysis to empower business decisions: a competitive differentiation of kinase assay technology platforms by I2E text mining software Source: World Patent Information. Vol. 39, December 2014, pp. 24-34. Summary: Developing new molecular entities for clinical applications -- leveraging available technologies for high-throughput screening (HTS) -- enables the rapid delivery of comprehensive data packages for drug discovery programs -- pharmaceutical companies like Bristol-Myers Squibb (BMS) must constantly evolve their assay methods to ensure an effective and timely impact to business -- novel three step approach using Linguamatics I2E text analytics software to mine the full text of patents -- to identify kinase assay technology information and kinase group information that is associated with therapeutic areas for drug screening. Subject: Patents--analysis Subject: Patent searching--pharmaceutical industry SNIPER No.: 2014/01996 Author: Nutter, Art Title: Licensing without litigation: unleashing inventors and innovators Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 87-90. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks SNIPER Bulletin – January 2015 Page 24 of 43 Summary: Patent pools -- issues with patent licensing and litigation -- general problems with patent pools -- patent owner problems with patent pools -- manufacturer problems with patent pools -- ability of patent owners to reduce costs and increase income predictability -- ability of product innovators to buy freedom to operate, open markets and add new features. Subject: Patent licensing Subject: Patent pools Subject: Intellectual property management SNIPER No.: 2014/01923 Author: Leonard, Peter G. Title: Living with Australia's new privacy laws Source: Intellectual Property Forum. No. 98, September 2014, pp. 33-54. Summary: Winds of change buffeting privacy regulation -- coverage of Australian privacy laws -Australian Federal privacy law -- brief overview of the March 2014 changes -- Australian Privacy Principles (APPs) -- new enforcement provisions -- Extraterritoriality -- personal information -regulation of collection, use and disclosure of personal information -- "openness" and notification -control of use -- data accuracy -- amount and duration of data holding -- finality principle -- data security and notification of data breaches -- access -- cross-border disclosure and transfer of personal information --credit related provisions -- emerging trends and issues Subject: Privacy--law and legislation--Australia Subject: Human rights--Australia SNIPER No.: 2014/01991 Author: D'Angelo, Vincent Title: Managing your global online brand portfolio Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 58-61. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Brand management online -- all brand portfolios are now digital -- different companies have different digital needs -- importance on online brand strategies -- digital footprints -reputational risk from social media -- immediacy of mobile devices -- steps for successful online brand management -- brand protection and promotion -- monitoring -- enforcement -- strategies for bringing everything together. Subject: Brand management Subject: Internet Subject: User-generated content SNIPER No.: 2014/01981 Author: Calvert, Angela Title: Mind the (cultural) gap Source: Intellectual Asset Management. No. 68, November-December 2014, p. 53. SNIPER Bulletin – January 2015 Page 25 of 43 Summary: Collaboration between universities and corporate entities -- incentives for collaboration -- operation of university technology transfer offices (TTOs) -- de-risking of inventions -requirements for warranty and indemnity in licensing -- need for guaranteed development to commercial product -- need for understanding of each other’s needs. Subject: Business collaboration Subject: Technology transfer Subject: Intellectual property management SNIPER No.: 2014/01906 Author: Schlich, George W. Author: Eyre, David Title: Morally acceptable sources of human embryonic stem cells: human embryos that never were, or could never be Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September 2014, pp. 505-507. Summary: Advocate General ruled in Opinion that parthenotes are not embryos -- blow to patenting stem cell-based inventions by the earlier judgement of the Court of Justice of the European Union (CJEU) in Brüstle v Greenpeace -- morally acceptable sources of human stem cells -- parthenotes as unfertilised human egg cells that are stimulated to divide and grow but cannot develop into a human being -- International Stem cell Corporation v Comptroller General of Patents -- outlook for patenting early stem-cell based inventions may be improving if the Opinion is followed by the CJEU. Subject: Patenting of life forms--case law--Europe Subject: Patentability--biotechnology industry--Europe Subject: Biotechnology--patentability--Europe SNIPER No.: 2014/01999 Author: Bühling, Jochen, 1961Author: Künzel, Jens Title: The new EU Customs IP Enforcement Regulation 2013 Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 107-110. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: European Regulation on Customs Enforcement on IP Rights -- overview -- subject matter of customs controls and applications -- innovations -- extension of scope -- simplified procedure for destruction of goods -- small consignments -- exceptions for parallel imports and overruns -- costs and liability for damage -- applications granted under the former regulation. Subject: European Parliament. Regulation (EU) No 608/2013 of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 Subject: Customs--law and legislation--Europe SNIPER Bulletin – January 2015 Page 26 of 43 SNIPER No.: 2014/02010 Author: Chagoya, Héctor Title: New IP management regime for government-funded projects Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 179-182. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property management for government-funded projects -- Mexico -- historical absence of regulation -- move to case-by-case approach in 2006 -- 2014 amendments to Law on Science and Technology -- amendments much further reaching than expected in developing open access science repository -- transitional recommendations -- work still to be done. Subject: Intellectual property--policy--Mexico Subject: Intellectual property management--education and training industry--Mexico SNIPER No.: 2014/01901 Author: Thorne, Clive D. Author: Jupp, Harry Title: Patent attorney negligence Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 8, August 2014, pp. 451-453. Summary: Obligations of a patent attorney -- Baillie & Others v Spencer & Others -- High Court decision relating to patent attorney negligence -- scope of a patent attorney's duty of care -objective standard of behaviour of a skilled patent attorney -- need for proper evidence preparation -- importance of properly proofed witness statements and witness training. Subject: Patent attorneys Subject: Expert witnesses Subject: Evidence SNIPER No.: 2014/01925 Author: Brown, Andrew Title: Patent infringement in New Zealand: new liability for suppliers of means to infringe Source: Intellectual Property Forum. No. 98, September 2014, pp. 59-66. Summary: New area of liability for patent infringement -- two important cases referred to - Grimme Landmaschinefabrik GmbH & Co v Scott and KCL Licensing Inc v Smith & Nephew Inc -- Section 134 of the Patents Act 2013 -- current law -- statutory history -- nature of the provision -- key elements - preliminary/ threshold -- key element - knowledge and constructive knowledge -- staple commercial product -- Swiss form claims Subject: Patent infringement--liability--New Zealand Subject: Patent infringement--case law--New Zealand SNIPER Bulletin – January 2015 Page 27 of 43 SNIPER No.: 2014/02026 Author: Grant, Emily Author: Hof, Megan van den Author: Gold, E. Richard Title: Patent landscape analysis: a methodology in need of harmonized standards of disclosure Source: World Patent Information. Vol. 39, December 2014, pp. 3-10. Summary: Identify and analyse trends in the use of patent landscape analysis -- comprehensive literature review of studies using patent landscape analysis -- assess research objectives, sources of patent data, dataset sizes, the structured or unstructured nature of data, and modes of data interpretation -- provide an overview of methods of patent analysis across research fields -- study concludes that, while studies in certain fields seem to follow consistent norms of methodological disclosure, these norms are not universal -- emphasizes a need for greater awareness of the limitations of patent data, for improved transparency through harmonized standards for the disclosure of patent methodology, and for cross-disciplinary sharing of best practices in order to develop methodologies tailored to specific research objectives -- need to harmonize methodological disclosure in patent analyses. Subject: Patents--analysis SNIPER No.: 2014/02098 Author: Mulder, Cees, 1954Title: Patent Law Treaty: promises not delivered-how the negotiations resulted in ambiguities in the Treaty Source: Journal of World Intellectual Property. Vol. 17 No. 5-6, November 2014, pp. 160-190. Summary: The Patent Law Treaty (PLT) -- drafted with the aim to ?streamline and harmonize? formal requirements set by national or regional Patent Offices for the filing of national or regional patent applications and the maintenance of patents -- core issues of the Treaty -- requirements for obtaining a filing date -- relief in respect of time limits -- restoration of priority -- claim that the goals of the PLT were not achieved by the Treaty as concluded -- Treaty contains too many optional requirements (?may require?), which may be implemented as compulsory by the Contracting Parties -- allows them too much freedom when implementing requirements of the Treaty into their national and regional patent laws -- contrary to the aim of harmonization and streamlining of the PLT -- negotiation history of the Treaty -- what went wrong during the negotiations -- reasons for the failure of the Patent Law Treaty -- recommendations for fixing the problems Subject: Patent Law Treaty (2000 June 1) Subject: Patents--treaties Subject: Patents--harmonisation SNIPER No.: 2014/01978 Author: Topic, Matthew V. Title: Patent reform, but not the Washington way Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 23-29. Summary: Roundtable on reform of United States patent system -- goals of patent system and how well these are being met -- abuses by patent owners and infringers, and need for patent system reform -- why recent US legislative reforms failed, and whether this is good or bad -misinformation in the patent reform debate -- predictions for the future of patent reform. SNIPER Bulletin – January 2015 Page 28 of 43 Subject: Cheng, Lee--interviews Subject: Schwartz, David L.--interviews Subject: Spangenberg, Erich--interviews Subject: Patent systems--reform--United States SNIPER No.: 2014/02012 Author: Sadaf, Naeema Author: Sadaf, Saima Title: Patentable subject matter and data protection: uncertainties remain Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 191-195. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patentability -- Pakistan -- invention to be capable of industrial application -- exclusion of non-technical inventions -- whole-content approach to examination -- overriding form of claims -impact of Bilski v. Kappos (United States) -- patenting of transgenic plant cells -- whether Article 39(3) of the TRIPs Agreement (on pharmaceutical data exclusivity) has direct effect. Subject: Patentability--Pakistan Subject: Data exclusivity--pharmaceutical industry--Pakistan SNIPER No.: 2014/01976 Author: Osenga, Kristen Title: Policy makers must realise not all licensing-based businesses are the same Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 15-19. Summary: Patent licensing companies -- not all non-patenting entities (NPEs) are trolls -- lack of standard definition -- need to focus on behaviour of NPE -- place of formerly manufacturing entities -- view corporate behaviour, not business model. Subject: Non-practicing entities--United States Subject: Patent licensing--United States SNIPER No.: 2014/02020 Author: Ayers, Peter Author: Shumaker, John Title: Post-grant review procedures under the America Invents Act Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 237-241. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Inter partes patent review and procedures -- United States -- practice before the Patent and Trademarks Appeal Board (PTAB) -- filing an inter partes review -- filing a covered business method petition -- inter partes review and covered business method timelines -- estoppels from inter partes review and covered business methods. SNIPER Bulletin – January 2015 Page 29 of 43 Subject: United States. Patent Trial and Appeal Board Subject: United States. Leahy-Smith America Invents Act Subject: Business methods--procedure--United States Subject: Patent validity--procedure--United States SNIPER No.: 2014/01924 Author: Riordan, Peter J. Title: A practitioner's guide to a strategic approach to mediation Source: Intellectual Property Forum. No. 98, September 2014, pp. 55-58. Summary: Set-up of the mediation -- four issues of timing, persons attending, selection of mediator and time allowed for the mediation -- process of mediation -- mediation strategy Subject: Dispute resolution--Australia SNIPER No.: 2014/01970 Author: Kappos, David Title: Promise of federal protection brings new hope for critical US IP law Source: Intellectual Asset Management. No. 67, September-October 2014, p. 68. Summary: Trade secret protections -- United States -- proposed Defend Trade Secrets Act -insufficiency of current federal protections -- Economic Espionage Act 1996 -- Tariff Act, s. 337 and the International Trade Commission (ITC) -- action by state attorneys-general -- potential impacts of Defend Trade Secrets Act. Subject: Trade secrets--law and legislation--United States SNIPER No.: 2014/02050 Author: Siebrasse, Norman Author: Duggan, Anthony J. Title: Protection of creators' rights in insolvency Source: Intellectual Property Journal (Carswell). Vol. 26 No. 3, September 2014, pp. 269-285. Summary: Interaction of commercial law and intellectual property rights (IPRs) -- bankruptcy and insolvency laws in Canada may affect IPRs in various ways -- sections 82 and 83 of the Bankruptcy and Insolvency Act are the only provisions in the statute which deal with IP issues -Section 82 gives a trustee in bankruptcy the right to sell patented articles free of any restrictions, subject to the right of the manufacturer or vendor to object to the sale and re-purchase the articles -- Section 83 provides for a scheme governing the rights of an author who has assigned the copyright in her work to a publisher which then becomes bankrupt -- purpose and effect of these provisions -- argument that, despite their age and the fact that they have received little attention in the case law, there are sound policy reasons for retaining both -- provisions were drafted in response to very specific issues -- are too narrowly focused -- should be revised and expanded to comprehensively address the underlying policy concerns -- specific recommendations on how they should be revised -- corresponding provisions should also be enacted for alternative insolvency proceedings, namely the Company and Creditors Arrangement Act (CCAA) proceedings and receiverships Subject: Bankruptcy--Canada Subject: Intellectual property rights--Canada SNIPER Bulletin – January 2015 Page 30 of 43 SNIPER No.: 2014/02097 Author: Lertdhamtewe, Pawarit Title: Protection of Plant Varieties in Thailand Source: Journal of World Intellectual Property. Vol. 17 No. 5-6, November 2014, pp. 142-159. Summary: Thailand’s plant protection regime as a unique sui generis plant protection system -used as a model by several developing nations in Asia -- criticism of the Thai Plant Variety Protection (PVP) law -- whether farmers and breeders actually benefit from the system -- major concerns of the rights of farmers, local communities, and plant breeders -- importance of protection of plant varieties to Thailand -- agriculture is a fundamental economic activity and the livelihood of a large section of the total population -- introducing IPRs in agriculture via the PVP regime is critical to the development of agriculture in Thailand -- need new approach to the IP protection of plant varieties to ensure the unique needs of the nation, the validity of national legislation, and the long-term promotion of agricultural development and sustainability in Thailand. Subject: Plant breeder's rights--law and legislation--Thailand Subject: Agriculture industry--Thailand SNIPER No.: 2014/01980 Author: Lloyd, Richard Title: Randall Rader's patent truth Source: Intellectual Asset Management. No. 68, November-December 2014, pp. 34-50. Summary: Interview with Randall Rader, former Chief Judge, Court of Appeals for the Federal Circuit (FCAFC) -- new position as academic with George Washington Law School -- discord between IP decision making at Court of Appeals and Supreme Court -- impacts of Alice Corp. v. CLS Bank -- carryover of Mayo v. Prometheus -- confused jurisprudence around software patents, bleak future -- optimism for the future of patent jurisprudence -- Octane Fitness v. ICON Health and Fitness -- need for the right kind of reform of the patent system -- divergence between positions of pharma and tech sectors -- patent trolls defined by behaviours, not business models. Subject: Rader, Randall R.--interviews Subject: Patent systems--interviews--United States Subject: Intellectual property industry--interviews--United States Subject: Patent litigation--interviews--United States SNIPER No.: 2014/02014 Author: Bunye, Patricia A. O. Title: Recent developments in IP legislation Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 203-207. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property law reforms -- Philippines -- new copyright provisions -- rules on inter partes proceedings for trade marks and service marks -- Patent Cooperation Treaty -- other laws affecting IP rights -- bills pending before Philippines Congress -- court decisions -- validity of laws and regulations -- Disini v. Secretary of Justice -- infringement -- Republic Gas Corp. v. Petron Corp. -- Birkenstock Orthopaedie GmbH and Co. Kg v. Philippine Shoe Expo Marketing Corp. -- developments in IP practice -- rights enforcement -- patent prosecution. SNIPER Bulletin – January 2015 Page 31 of 43 Subject: Intellectual property law--Philippines Subject: Copyright--law and legislation--Philippines Subject: Intellectual property infringement--Philippines SNIPER No.: 2014/02024 Author: Karapapa, Stavroula Title: Reconstructing copyright exhaustion in the online world Source: Intellectual Property Quarterly. No. 4, 2014, pp. 307-325. Summary: Principle of copyright exhaustion -- once a copy of a work is placed on the market, the right holders control over further distribution of that copy is exhausted -- applies to distribution of hard copies of copyright works -- electronic dissemination of content is not subject to the exhaustion principle -- second-hand markets of digital goods cannot exist -- traditionally, exhaustion is premised on four assumptions that cannot be safely assumed in the online context -it applies to tangible copies only -- it covers goods and not services -- the goods should be sold but not licensed -- the property entitlement should be alienated upon transfer -- courts at worldwide level now starting to revisit these normative impediments to affirm that exhaustion can apply online in specific instances -- doctrinal norms that underpin exhaustion -- conditions under which online copyright exhaustion can apply. Subject: Copyright exhaustion Subject: Electronic copyright SNIPER No.: 2014/02016 Author: Cavescu, Adrian Title: ROPTO takes a wrong turn on the harmonisation highway Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 215-217. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Harmonisation of Romanian trade mark system for European Union accession -removal of ex officio examination for relative grounds for refusal -- confusion for applicants -procedure of Romanian Patent and Trademark Office. Subject: Oficiul de Stat pentru Invenţii şi Mărci (Romania) Subject: Trade mark examination--procedure--Romania Subject: Trade mark systems--reform--Romania Subject: Harmonisation of laws--Romania SNIPER No.: 2014/02018 Author: James, Will Author: Hayes, Jake Title: Selected UK IP highlights for 2014 Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 225-229. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks SNIPER Bulletin – January 2015 Page 32 of 43 Summary: Intellectual property developments in the United Kingdom, 2014 -- Intellectual Property Act 2014 -- Law Commission report on groundless threats -- proposals for UK Bolar exemption -case law -- patents -- stays pending parallel European Patent Office (EPO) proceedings -- IPCom v. HTC -- central limitations -- Samsung v. Apple -- Virgin Atlantic v. Zodiac -- Kennametal v. Pramet Tools -- life sciences -- foreign declarations of non-infringement -- Actavis v. Eli Lilly -employee compensation -- Shanks v. Unilever -- trade marks -- keyword advertising -- Lush v. Amazon -- survey evidence -- Zee Entertainment v. Zeebox -- control of reproduction of an image - Hearst v. AVELA Inc. -- designs -- Magmatic v. PMS. Subject: Intellectual property--United Kingdom Subject: Patents--case law--United Kingdom Subject: Trade marks--case law--United Kingdom Subject: Industrial designs--case law--United Kingdom SNIPER No.: 2014/01910 Author: Jaeger, Michael Author: Wallin, Nicholas Title: "Simplification" can lead to design right abuse: the Intellectual Property Act 2014, and amended first ownership provisions Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September 2014, pp. 517-519. Summary: Streamlining the rules on first ownership of United Kingdom (UK) unregistered design rights -- The Intellectual Property Act 2014 -- first ownership will be conferred to the person who first markets articles of the design in many cases -- surprising implications for product designers -law prior to 1 October 2014 -- problem with the "exclusive authorisation" requirement -simplification of the qualification by first marketing criteria and the probably unintended consequences -- some scenarios -- UK design rights are open to abuse with this change. Subject: Unregistered industrial designs--law and legislation--United Kingdom Subject: Industrial design owners' rights--United Kingdom SNIPER No.: 2014/02033 Author: Chaudhary, Aditi Author: Dulakakhoria, Siddhartha Author: Jana, Tarakanta Title: South Asian Intellectual Property Knowledge Network Source: World Patent Information. Vol. 39, December 2014, pp. 69-72. Summary: The Patent Informatics Division project "Information Driven Innovation in South Asian Association of Regional Cooperation (SAARC) Countries for Knowledge Development and Capacity Building" -- dual role of providing patent informatics services and capacity building in SAARC countries by offering short term training programs -- website "South Asian Intellectual Property Knowledge Network" (SAIPKN) started -- acts as a platform to provide patent informatics services -- promotes capacity building by offering e-learning opportunities on Intellectual Property Rights (IPR) -- informatics services offered through the website are prior art search services and patent landscape analysis -- users can access study materials on IPR through the e-learning module of the website. SNIPER Bulletin – January 2015 Page 33 of 43 Subject: Patent searching--South Asia Subject: Intellectual property industry--South Asia SNIPER No.: 2014/01922 Author: Williams, Garry Title: Standing on the shoulders of idols: the vexed question of the legal protection of formats in the global television market Source: Intellectual Property Forum. No. 98, September 2014, pp. 12-32. Summary: Demand for licensed country-specific versions of successful televisions shows like Pop Idol, Survivor and Who Wants to be a Millionaire? -- guidance for owners of television formats on how to defend themselves against imitations -- the nature of the problem -- whether TV show formats are capable of protection under copyright legislation -- so what is a format? -- when do allegations of format plagiarism usually arise? -- using the law of confidence to protect a format -is the tort of passing off the answer? -- can trade practices/ consumer protection legislation be used to protect formats? -- the vexed question of copyright protection Subject: Television broadcasts Subject: Neighbouring rights Subject: Copyright owners' rights Subject: Copyright--case law SNIPER No.: 2014/02006 Author: Lam, Cedric Title: Staying on top of IP law changes and challenges Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 155-160. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property trends and developments in 2013 -- China -- filing statistics -- trade marks -- china -- domain names -- new laws and guidelines -- well-known marks -- protection of new goods and services -- design protection for graphic user interfaces -- patents and standards -patent disputes -- copyright -- online enforcement -- border protection -- IP licensing and financing - anti-trust -- compensation for employee inventors -- US Special 301 Report -- anti-counterfeiting initiatives -- enforcement statistics -- court statistics -- notable cases -- Hong Kong -- Copyright (Amendment) Bill -- shadow companies -- hub for both IP trading and counterfeit trade. Subject: Intellectual property--China Subject: Intellectual property--Hong Kong SNIPER No.: 2014/01899 Title: Stella McCartney succumbs in Japanese St Ella trade mark invalidation Source: European Intellectual Property Review. Vol. 36 No. 9, 2014, pp. 606-608. SNIPER Bulletin – January 2015 Page 34 of 43 Summary: Intellectual Property High Court of Japan (IPHCJ) agrees with decision to dismiss the invalidation appeal filed by Stella McCartney's fashion company -- Malaysian-owned ST ELLA (stylised script) mark not similar to various STELLA trade mark registrations owned by Stella McCartney -- Wong Kwai Hua filed the ST ELLA (stylised script) mark for cosmetics and other goods in Class 3 -- The Board of Appeals of the Japan Patent Office decision -- IPHCJ decision -different outcome in Australian trade mark opposition decision between the same parties -Japanese courts look at how the mark would be understood and pronounced by the average Japanese consumer. Subject: Trade mark validity--case law--Japan Subject: Confusing similarity--case law--Japan SNIPER No.: 2014/02032 Author: Cavalheiro, Gabriel Marcuzzo do Canto Author: Joia, Luiz Antonio Author: Gonçalves, Ada Cristina Title: Strategic patenting in the upstream oil and gas industry: assessing the impact of the pre-salt discovery on patent applications in Brazil Source: World Patent Information. Vol. 39, December 2014, pp. 58-68. Summary: Discovery of huge hydrocarbon resources in the pre-salt layer of Brazil's Southeastern coast announced in 2007 -- study examining the impact of this discovery on patent applications in Brazil associated with upstream oil and gas technologies -- major increase in patenting in Brazil in this field from 2007 -- 75% of the main companies involved were from the USA -- some similarities and differences noted in the companies' strategies -- similar but less pronounced patenting increase at the USPTO -- provides empirical evidence that the pre-salt discovery significantly affected patent strategizing of Multi-Nationals Companies (MNCs) operating in the upstream oil and gas industry Subject: Patent applications--mining industry--Brazil Subject: Intellectual property management--mining industry--Brazil SNIPER No.: 2014/01975 Author: Beck, George C., 1947Author: Lanza, John D. Title: Supreme Court turns its looking glass on software patents in Alice Source: Intellectual Asset Management. No. 67, September-October 2014, p. 96. Summary: Patentability of software -- United States -- Alice Corp. v. CLS Bank International -- test for patent eligible subject matter -- risk of test being applied inconsistently by US Patents and Trademarks Office (USPTO) -- whether decision will offer relief from actions of patent assertion entities -- patents likely to be slower and harder to acquire -- changes to USPTO patent examination procedures -- likely increased expense in drafting applications -- patents for abstract ideas. Subject: Computer-related inventions--case law--United States Subject: Patentability--case law--United States Subject: Patent examination--procedure--United States SNIPER Bulletin – January 2015 Page 35 of 43 SNIPER No.: 2014/02099 Author: Nwauche, Enyinna S. Title: The Swakopmund Protocol and the communal ownership and control of expressions of folklore in Africa Source: Journal of World Intellectual Property. Vol. 17 No. 5-6, November 2014, pp. 191-201. Summary: Extent to which the Swakopmund Protocol for the Protection of Traditional Knowledge and Expressions of Folklore, adopted by the African Regional Intellectual Property Organisation (ARIPO), conceives of the role of communities in the management of expressions of folklore -disassociation of ownership from control of expressions of folklore -- Protocol has made significant strides by recognizing the ownership of communities of their expressions of folklore -- normative framework of the Swakopmund Protocol may be of little effect because the control of third party use of expressions of folklore is still endowed on ARIPO States and their national competent authorities -- important that ARIPO States in their domestication of the Swakopmund Protocol ensure a significant involvement of communities in the control of third party use of expressions of folklore. Subject: Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore within the Framework of the African Regional Intellectual Property Organization (ARIPO) (2010 August 09) Subject: Traditional cultural expressions--Africa Subject: Indigenous issues in intellectual property--Africa SNIPER No.: 2014/02009 Author: Soni, Pankaj Author: Koundinya, Satyoki Title: Taking the FRAND-ly approach: a first look at FRAND battles in India Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 173-177. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Patent licensing -- India -- standards setting organisations (SSOs) -- standardsessential patents (SEP) -- fair, reasonable and non-discriminatory (FRAND) licence terms -- mobile phone FRAND wars -- FRAND-based litigation -- likely future trends -- right FRAND framework for India. Subject: Patent licensing--India Subject: Standards (Technical)--India Subject: Patent litigation--information technology industry--India Subject: Mobile computing—India SNIPER No.: 2014/02030 Author: Deorsola, Alberto Chenú Author: Mothé, Cheila Gonçalves Author: De Oliveira, Leandra Guimarães SNIPER Bulletin – January 2015 Page 36 of 43 Author: Deorsola, Adriana Brigante Title: Technological monitoring of cyclodextrin: world panorama Source: World Patent Information. Vol. 39, December 2014, pp. 41-49. Summary: Global landscape by technological monitoring of cyclodextrin -- literature survey and patent survey -- both scientific publications and published patent applications from 1981 to 2011 used -- Web of Science database used -- analysis of the main inventors, depositors and the country of the depositors, the main International Patent Classifications, the year of the publication, the country of the publication -- importance of patents as a means of encouraging technological innovation of cyclodextrin technologies Subject: Patents--analysis Subject: Patent searching--science and research industry SNIPER No.: 2014/01994 Author: Adams, Paul Author: Davies, Paul Author: Rae, Georgina Title: The third branch of IP outsourcing Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 73-78. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property outsourcing by operating companies and research organisations -IP strategy and management functions -- precedents and precursors -- emphasis on IP strategy, not IP ownership -- whether to outsource IP strategy, IP management or both -- benefits of this type of IP outsourcing -- outsourcing and multinational corporations. Subject: Intellectual property management Subject: Outsourcing SNIPER No.: 2014/01986 Author: Aronoff, Robert Title: Tips for ensuring value of IP rights is recognised in technology M&A Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 21-25. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Intellectual property rights and technology mergers and acquisitions (M&As) -- need for better integration of IP due diligence and analysis -- better valuation of IP in the M&A context -need to plan for and execute exploitation of IP -- need for sellers to positively influence due diligence efforts by buyers -- advantages from good IP analysis. Subject: Mergers and takeovers Subject: Due diligence Subject: Value of intellectual property Subject: Information technology industry SNIPER Bulletin – January 2015 Page 37 of 43 SNIPER No.: 2014/01993 Author: Dunaud, Patrick Title: Trade secrets and the EU route towards harmonisation Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 68-71. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Trade secret and know-how protection -- trade secret laws and lack of protections -TRIPs Agreement -- United States Uniform Trade Secrets Act -- general lack of European trade secret laws -- issues arising from lack of legal framework -- proposed European Directive on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) against Unlawful Acquisition Use and Disclosure -- international implications. Subject: Trade secrets--law and legislation--Europe SNIPER No.: 2014/01964 Author: Berman, Bruce M. Title: Turning uncertainty into opportunity Source: Intellectual Asset Management. No. 67, September-October 2014, p. 16. Summary: Intellectual property issues in technology mergers and acquisitions (M&A) -- methods for determining IP valuation and dispute settlement -- types of intangible investors in patents -operating companies -- non-practicing entities (NPEs) and public IP companies (PIPCOs) -- private equity buyers -- activist investors -- litigation funders -- asset lenders -- privateers -- likely future developments. Subject: Patent licensing--information technology industry Subject: Value of intellectual property--information technology industry Subject: Non-practicing entities--information technology industry Subject: Mobile computing SNIPER No.: 2014/01997 Author: Gerli, Paolo Title: The unitary European patent and its court regime Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 95-99. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Unitary European patent -- Community Patent Convention -- unitary patent system -effect of the unitary patent -- translation agreements -- Unified Patent Court -- likely effects of unitary system once implemented. Subject: Unified Patent Court Subject: Regional patents--Europe Subject: Patent systems--Europe Subject: Patent litigation--Europe Subject: Translations--Europe SNIPER Bulletin – January 2015 Page 38 of 43 SNIPER No.: 2014/01907 Author: Tridico, Anthony C. Author: Cooley, Daniel C. Author: McCorquindale, John Derek Author: Romrell, Jason L. Title: Update at the Patent Trial and Appeal Board: does the US Patent and Trademark Office (USPTO) block the door to the Federal Circuit? Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 9, September 2014, pp. 508-510. Summary: Increasing popularity of patent review proceedings in the United States (US) -- LeahySmith America Invents Act (AIA) created new tools to challenge US patents -- Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method Review (CBM) -- effectiveness of new tools a major reason for the increase in challenges -- success depends on convincing the Patent Trial and Appeal Board (PTAB) to institute a review of the targeted patent -- Administrative Procedure Act (APA) challenges to institution and non-institution decisions -- mandamus petitions to the Federal Circuit -- direct appeal to the Federal Circuit -- direct appeal to the Federal Circuit of a non-institution decision after the PTAB issues its final written decision -- appeals of constitutional challenges to institution and non-institution decisions -- appeals based on other statutory challenges. Subject: Patent examination--reform--United States Subject: Patent validity--reform--United States Subject: Legal procedure--United States SNIPER No.: 2014/01985 Author: Burt, Scott Title: Why ethics are critical to licensing success Source: Intellectual Asset Management. IAM Yearbook 2015, pp. 15-19. General Note: Forms part of: IAM Yearbook: Building IP value in the 21st century (1st ed.). Yearbook combines previous IP Value and IP Monetisation Yearbooks Summary: Success of patent licensing becoming dependent on ability to distinguish from patent trolls -- United States -- patent licensing industry not strong advocates for reform -- reputation of patent trolls preventing licensing industry from developing positive brands -- licensing industry insights -- factors in selecting a third-party monetisation partner -- need for transparency by licensors. Subject: Non-practicing entities--United States Subject: Patent licensing--United States Subject: Ethics--intellectual property industry--United States SNIPER Bulletin – January 2015 Page 39 of 43 SNIPER No.: 2014/01904 Author: Mak, Toby Title: ZIKO Ltd Yonghe Chemical: successful prior use defense Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 8, August 2014, pp. 459-459. Summary: Defence of prior use -- easy to invoke -- stringent evidence requirements in China -ZIKO Ltd v Yonghe Chemical -- successful prior art defence case. Subject: Patent infringement--case law--China Subject: Prior use (Patents) SNIPER Bulletin – January 2015 Page 40 of 43 © Commonwealth of Australia 2013 Published by: IP Australia Discovery House, 47 Bowes Street, Phillip, ACT 2606 1300 65 10 10 www.ipaustralia.gov.au