SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
January 2015
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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
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