SNIPER Bulletin July 2013

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Searchable Networked Intellectual Property Electronic Resource

SNIPER

Bulletin

August 2013

Note: Due to copyright requirements, IP Australia Library is unable to directly supply copies of these articles to readers outside IP

Australia. Please contact your local library to obtain copies of these articles by interlibrary loan.

IP Australia Library library@ipaustralia.gov.au

Phone: (02) 6283 2301

SNIPER Bulletin Library, IP Australia

SNIPER No.: 2013/01496

Author: Voon, Tania

Title: Acquisition of intellectual property rights: Australia's plain tobacco packaging dispute

Source: European Intellectual Property Review. Vol. 35 No. 2, 2013, pp. 113-118.

Summary: Australia ’s standardised tobacco packaging legislation implemented on 1 December

2012 -- remains subject to challenge in the World Trade Organization and under the Hong

Kong-Australia Bilateral Investment Treaty -- recent decision by the High Court of Australia rejecting a constitutional challenge to the legislation -- s.51 of the Australian Constitution – acquisition of property by government other than on just terms -- court's ruling that plain packaging does not amount to an acquisition of property -- nature and scope of intellectual property.

Subject: Trade dress--case law--Australia

Subject: Trade marks--law and legislation--Australia

Subject: Trade mark owners' rights--case law--Australia

SNIPER No.: 2013/01227

Author: Aziz, Khurram

Title: Aerial battle

Source: Intellectual Property Magazine. May 2013, p. 11.

Summary: Media company Aereo retransmits broadcast TV signals via the internet -- survived a legal challenge to its business from US broadcaster -- court found that Aereo's service is not

"public performances" of copyrighted material -- possible end of free-to-air broadcasting -- permanent switch to internet streaming.

Subject: Copyright infringement--case law--United States

Subject: Television broadcasts--United States

SNIPER No.: 2013/01570

Author: Azim-Khan, Rafi

Title: Aggressive competitors

Source: Intellectual Property Magazine. June 2013, pp. 85-86.

Summary: To what extent one can use intellectual property (IP) rights -- to go on the offensive to try to curtail a competitor's sales or marketing activity -- to shield oneself from another asserting IP rights infringement -- aggressive marketing practices -- European rulings -- O2

Holdings and O2 (UK) v Hutchison 3G -- Pippig Augenoptik v Hartlauer Handelsgesellschaft --

L'Oreal v Bellure -- options against competitors -- trade mark infringement action -- likelihood of confusion -- McDonald's Hamburgers v Burger King -- passing-off.

Subject: Comparative advertising

Subject: Competition (Economics)

SNIPER No.: 2013/01354

Author: Zhou, Bo

Title: Analysis of current protection of right of name as prior right within the framework of the trademark law: application of Article 31 of the Trademark Law and issues pertaining thereto

Source: China Patents and Trademarks. Vol. 111 No. 1, January 2013, pp. 69-74.

Summary: Preemptive registration of other people's names as trade marks in China -- statistics of cases -- Kate Moss -- David Bitton -- Iverson -- principle underlying adjudication -- existing issues -- right of name claimants should be rights holders or interested parties -- trade mark in suit should be entirely identical with another person's name or solely corresponds to him/her -- only when the relevant natural person is still alive is it possible to claim prior right of name -- name in which the right of name is claimed should be of relatively high reputation in the relevant

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SNIPER Bulletin Library, IP Australia field -- judicial recommendations -- confirming and enhancing legal protection of economic interest of signs of personality through protection of the right of name.

Subject: Trade mark owners' rights--China

Subject: Personal names--China

SNIPER No.: 2013/01356

Author: Xu, Fangming

Title: Analysis of issue of support of open-ended claims in description: comments on Rhodia

Chimie v. Patent Reexamination Board


Summary: Rhodia Chimie v. Patent Reexamination Board (PRB) -- administrative case of dispute over the invalidation of an invention patent -- extent of protection of open-ended claims defined with numerical values -- ways to determine absence of support of the claims in the description -- what forms of open-ended claims are supported by the description -- attitude of applicants and patent examination departments -- disclosure in exchange of protection provision.

Subject: Patent validity--China

Subject: Patent claims--China

SNIPER No.: 2013/01617

Author: Gaertner, Mathias

Title: Analysis of technical problems with destroying information stored on magnetic media

Source: International Journal of Intellectual Property Management. Vol. 6 No. 1-2, 2013, pp. 70-

78.

Summary: Information stored on magnetic media such as hard drives -- technical overview on hard drives -- methods of data destruction -- legal and normative overview -- increasing problem of secure destruction of information on this media -- corporate and government organisations require a fast and secure method of deleting information on a hard drive -- comparison of possible economic and secure methods for data destruction.

Subject: Privacy--information technology industry

SNIPER No.: 2013/01711

Author: Zhang, Nan

Title: The analysis on the registrability of the sound mark in the latest Chinese Trademark Law amendment

Source: China Intellectual Property: comprehensive IP report on China. No. 54, March-April

2013, pp. 16-19.

Summary: Sound marks -- China -- registrability of sound marks -- significant international cases -- Shield Mark BC v. Kist (Europe) -- Metro-Goldwyn-Mayer Lion Corp. (Europe) -- use of sonograms in trade mark applications -- legislative changes to allow other non-traditional marks

-- legislative and practical significance -- distinctiveness of sound marks -- trade mark strategies for sound marks.

Subject: Sound marks--registrability--China

Subject: Trade marks--law and legislation--China

SNIPER No.: 2013/01075

Title: Apple v Samsung: can anyone land the killer blow?

Source: World Intellectual Property Review. January-February 2013, pp. 34-36.

Summary: Patent infringement in smart phones and tablets -- battling in ten jurisdictions over two years -- a question of when both companies will negotiate to end litigation -- Apple's patents

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SNIPER Bulletin Library, IP Australia are very narrow and Samsung can change designs to avoid infringement -- Apple v Google -- software patents

Subject: Patent infringement--case law

Subject: Patent litigation

Subject: Computer-related inventions

SNIPER No.: 2013/01638

Author: Pyhälä, Johanna

Title: Are fluid trademarks your cup of tea?

Source: World Trademark Review. No. 44, August-September 2013, pp. 100-101.

Summary: Fluid trade marks -- well-known fluid marks -- reasons for adopting a fluid trade mark

-- when to go fluid -- protecting fluid trade marks -- risks and challenges -- protecting the variants that become part of the rights holder's trade mark portfolio -- protective mechanisms -- trade mark law is relatively ill suited to grapple with fluid trade marks -- likelihood of confusion -- slogans as fluid trade marks.

Subject: Non-traditional marks--Finland

Subject: Intellectual property rights--Finland

SNIPER No.: 2013/01564

Author: Ellis, Joan

Title: Are human genes patentable?


Summary: United States Supreme Court -- Association for Molecular Pathology, et al v Myriad

Genetics, Inc -- patentability of human genes -- most commentators believe that the Court will hold that genomic DNA is unpatentable -- the Myriad case -- patents at issue -- claims in the patents -- the decision by the US District Court for the Southern District of New York -- Myriad's appeal to the Federal Circuit -- impact of a finding that human genes are products of nature and, therefore, not patent eligible.

Subject: Genes--patentability--United States

Subject: Patentability--case law--United States

SNIPER No.: 2013/01324

Author: Lertdhamtewe, Pawarit

Title: Asian approaches to international law: focusing on plant protection issues

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 5, May 2013, pp. 388-398.

Summary: Plant variety protection -- many jurisdictions in Asia previously felt it was not appropriate to grant IP protection in this field -- plant variety protection gained importance through membership to the World Trade Organization (WTO) -- this was something International

Convention for the Protection of New Varieties of Plants had been unable to achieve -- presently more countries in Asia, as developing countries, have implemented some kind of legal protection for plant breeding achievements in accordance with TRIPS -- plant variety protection laws through sui generis systems -- emergence of IP rights law on plant variety protection -- development in the Asian region -- future prospects.

Subject: Plant breeder's rights--law and legislation--Asia

Subject: Plant rights registrability

Subject: Plant rights systems--Asia

SNIPER No.: 2013/01560

Author: Williams, Andrea

Title: Assessing the America Invents Act


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Summary: Provisions of the America Invents Act (AIA) recently came into effect -- introduction of a first-inventor-to-file (FITF) system for patent protection -- elimination of interference proceedings -- introduction of new post grant opposition procedures -- Act expands the definition of prior art -- one year grace period from publication by the inventor -- US and

European patent systems are becoming more similar in nature -- impact of the AIA on the life sciences sector, survey results -- reasons for the mixed response to the AIA.

Subject: United States. Leahy-Smith America Invents Act

Subject: Science and research industry--statistics

Subject: Patents--reform--United States

SNIPER No.: 2013/01529

Author: Eliades, Dimitrios G.

Title: Australian patent enforcement: a proposal for an expert panel opinion: part 1

Source: Les Nouvelles. Vol. 48 No. 2, June 2013, pp. 114-123.

General Note: First article in a series.

Summary: Advisory Council on Intellectual Property (ACIP) review of post-grant patent enforcement -- ACIP issues paper (2006) -- ACIP final report (2010) -- ACIP's conclusions -- government response -- recent relevant developments -- Korean example of an Intellectual

Property Tribunal -- invalidation of a patent -- correction of a patent -- scope of claims -- infringement -- statistics -- suitability of the Korean model in the Australian context -- proposed model: the expert panel opinion -- Korean Intellectual Property Office (KIPO) table of successful petitions -- a mechanism to assist the court -- assistance in alternative dispute resolution (ADR)

-- response to government's concerns -- objectivity of IP Australia experts.

Subject: Australia. Advisory Council on Intellectual Property

Subject: Patent enforcement--Australia

Subject: Dispute resolution--Australia

Subject: Intellectual property systems--Australia

SNIPER No.: 2013/01320

Author: Lundie-Smith, Robert

Title: Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?


Summary: United States Supreme Court ruling in eBay v MercExchange -- implications for patentees looking to enforce their rights in the USA against infringers who have made a successful business out of their infringing acts -- analyses and compares the position of patentees in the UK and the USA seeking to obtain a final injunction against an infringer -- post eBay, the position of a patentee before the US Courts is weaker than that of patentees before

UK courts -- decision in Bard v Gore -- application of the eBay four stage test -- burden of proof

-- hardship to be suffered by the infringer -- taking account of the public interest -- equitable balancing and patent injunctions.

Subject: Injunctions--law and legislation--United Kingdom

Subject: Injunctions--law and legislation--United States

Subject: Intellectual property infringement

SNIPER No.: 2013/01230


Title: The bear and the rabbit


Summary: Lindt v Riegelein -- over the scope of protection of Lindt's 3D 'sitting bunny' trade mark -- Germany's Federal Court of Justice rejected a final appeal by Lindt to protect its gold

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SNIPER Bulletin Library, IP Australia foil-wrapped Easter bunnies being imitated by its German rival -- German court enjoined Lindt from selling a "golden bear" on request from Haribo, a manufacturer of gummy bears who has the name "golden bear" registered -- key issue in the cases concerning trade mark protection of chocolate shapes has concerned distinctiveness of the shape -- shapes are poorly suited to provide distinctiveness of a product.

Subject: Shape marks

Subject: Trade mark distinctiveness

SNIPER No.: 2013/01485

Author: Jewell, Catherine

Title: Berries, beverages and branding

Source: WIPO Magazine. No. 3, June 2013, pp. 18-22.

Summary: Pisco wine combined with the Chilean wineberry Maquire -- Peru claims the exclusive right to use Pisco as an appellation of origin -- MAQUI superfruit -- Chilean wineberry -

- branding to protect the value of a creation -- WIPO's development agenda project 'IP and product branding for business development in developing countries and least developed countries (LDCs)' -- offers practical support to small and medium-sized enterprises (SMEs) -- design and implementation of strategies for the appropriate use of IP in product branding -- One

Village One Brand initiative of the Asia-Pacific Economic Cooperation -- Maquire branding developed with support from the Korean Intellectual Property Office (KIPO) -- project to promote the development of local communities and strengthen community and institutional capacity by focusing on the promotion and strategic use of IP.

Subject: Geographical indicators--developing countries

Subject: Branding--manufacturing and processing industry

Subject: Value of intellectual property--developing countries

SNIPER No.: 2013/01071

Title: Better late than never?: the unitary patent


Summary: Approval by European parliament for a Unitary Patent and associated court -- start date -- ratification needed by thirteen of twenty five signatory states -- has to include the UK,

Germany and France -- courting controversy

Subject: Patent processing

Subject: Patent systems--Europe

SNIPER No.: 2013/01472

Author: Ledford, Heidi

Title: Bioengineers look beyond patents

Source: Nature. Vol. 499 No. 7456, 4 July 2013, pp. 16-17.

Summary: Synthetic-biology company, DNA2.0, pushing open source models -- has deposited gene sequences encoding three of its fluorescent proteins into an open-access collection of recipes for DNA 'parts' -- will not pursue its patent rights against anyone using the sequences -- strategic decision -- DNA2.0 wants to create incentives for other synthetic-biology firms to design custom organisms for which it can synthesize the parts -- possible use of copyright and open-source parts registries as alternatives to patents in the synthetic-biology field -- copyrights cheaper and easier alternatives to patents -- whether engineered DNA sequences can be copyrighted -- DNA2.0's unsuccessful application for US copyright protection of the DNA sequence for fluorescent green protein -- pursuing appeals until the issue can be decided in court

Subject: Intellectual property management--biotechnology industry

Subject: Copyright--biotechnology industry

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SNIPER No.: 2013/01714

Author: Tan, Emily

Title: Blazing the IP trail in China


2013, pp. 44-47.

Summary: Interview with Oliver Lutze, Chief Intellectual Property Officer, Bayer (China) -- combining science and intellectual property careers -- development of Bayer's Chinese IPR department -- concerns over view of patents in general society -- costs of pharmaceutical research and development -- need for strong patent protection to cover costs of developing new drugs -- negative effects of compulsory licensing -- need for continuous learning by IP professionals.

Subject: Lutze, Oliver--interviews

Subject: Pharmaceutical industry--interviews--China

Subject: Industrial research and development--pharmaceutical industry

SNIPER No.: 2013/00002

Author: Cheng, Huai-Chi

Title: The boundary of a WTO Member's obligation to comply with Art. 31(f) of the TRIPS

Agreement: a critical review of granting a compulsory license on Philips CD-R patents by

Taiwan

Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 43 No. 8,

2012, pp. 885-900.

Summary: Dispute arising from determination by Chinese Taipei in 2004 to grant compulsory licence for recordable compact disc (CD-R) patents to a Gigastore Corporation, a Taiwanese manufacturer -- facts and historical background of the Philips compulsory licensing case -- response of the European Commission (EC) to the compulsory licence -- different view to

Chinese Taipei on compliance with Art. 31(f) -- legal arguments according to Art. 31(f) of the

TRIPS Agreement -- requires Members to respect the condition of predominantly domestic supply when granting compulsory licences -- critique of Chinese Taipei's non-compliance with

Art. 31(f) -- boundaries of TRIPS members' obligations to comply with Art. 31(f) -- pre- and post- authorization of compulsory licences -- enforceability of Art. 31(f).

Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)

Subject: Compulsory licensing--information technology industry--Taiwan

Subject: Patent licensing--Taiwan

SNIPER No.: 2013/01253

Author: Chatterton, Edward

Title: Broken English

Source: Intellectual Property Magazine. May 2013, pp. 63-64.

Summary: Trade mark piracy in China -- registering an overseas brand but failing to register a

Chinese equivalent -- very famous overseas brands will be referred to by a Chinese language equivalent of the overseas brand -- using the overseas brand name in China will lead to the natural emergence of a Chinese version of the brand name adopted by Chinese locals -- may not necessarily carry the connotations, or reflect the brand values, which the brand owner would prefer -- bigger risk for the brand owners is when a third party registers the equivalent Chinese brand first -- a brand owned and promoted by a company -- brand name is a personal name which is synonymous with a famous person -- Castel -- Michael Jordan.

Subject: Trade mark registration--case law--China

Subject: Brand management--China

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SNIPER No.: 2013/01439

Author: Petrov, Peter

Title: Bulgarian Supreme Court of Cassation has accepted that damages occur upon import of counterfeit goods

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp. 431-

433.

Summary: Damages available to trade mark owners affected by the importation of counterfeit goods -- Lacoste v Hristos Ltd -- Trade Mark Harmonization Directive -- the IP Enforcement

Directive -- Bulgarian law and Community directives -- Law on Marks and Geographical

Indications (LMGI) -- in previous decisions of importation in Bulgaria of counterfeit goods no damages claims were allowed if goods were seized and not traded -- counterfeit wallets --

Lacoste asked for sum equal to royalty which Lacoste would of received had a licence agreement been in place -- court of first instance allowed action -- court of appeal overturned earlier decision -- Bulgarian Supreme Court of Cassation allowed action in line with legal practices in Europe and awarded damages.

Subject: Counterfeiting--case law--Bulgaria

Subject: Damages--case law--Bulgaria

Subject: Trade mark owners' rights--Bulgaria

SNIPER No.: 2013/01530

Author: Slowinski, Gene

Title: Business models in collaborative research


Summary: Impact of business models on two dimensions of collaborative research -- collaborations as an alternative to incubators -- business models as a tool for assessing the opportunity portfolio and allocation of risk -- set of management recommendations -- opportunity portfolio, new business models and risk allocation -- typical business model components.

Subject: Intellectual property management

Subject: Intellectual property education

SNIPER No.: 2013/01634

Author: Tracey, Simon W.

Title: Can retail store designs be protected as trade dress or 3D marks?


Summary: Apple registered the design and layout if its stores in the United States -- how Apple procured trade dress protection for its stores -- how Europe is reacting to the development.

Subject: Trade dress--retail industry--United States

Subject: Trade mark distinctiveness--United States

SNIPER No.: 2013/01636

Author: Bereskin, Janice

Title: Canada's evolving approach to fluid marks


Summary: Fluid marks -- trade marks with dynamic representation -- deviations from a mark's uniform format -- can place fluid marks at odds with the conventions and key principles of

Canadian trade mark law and practice -- reasons rights holders use fluid marks -- legal issues and risks -- Canadian Intellectual Property Office (CIPO) is modernising its approach to nontraditional marks -- no formal mechanism in place to protect fluid marks per se -- consider the strength of the primary mark -- conduct availability searches before using a variant of a mark.

Subject: Non-traditional marks--Canada

Subject: Risk--management--Canada

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SNIPER No.: 2013/01587

Author: Portnoy, Erica

Title: The case for criminal IP enforcement

Source: Managing Intellectual Property. No. 230, June 2013, pp. 28-30.

Summary: Few intellectual property (IP) owners enforce their IP in the United States through criminal procedures -- criminal authorities have been largely uninterested in IP cases or unable to commit resources -- changing as the US government dedicates more money to IP cases and makes it clear that IP is a priority -- pursuing a criminal case in the US -- do sufficient work internally -- turn over a complete and convincing case to the authorities -- argue for the broader significance of the infringement.

Subject: Intellectual property infringement--United States

Subject: Criminal law--United States

SNIPER No.: 2013/01526

Author: Hallett, Peter

Title: Certification marks: are they really worth the hassle?: an Australian perspective


Summary: Cost and time to register is considerable -- licensing of certification marks versus ordinary marks -- licensing an ordinary trade mark can achieve an equivalent outcome to licensing a certification mark -- whether a certification scheme for products or services should be implemented by way of ordinary mark or certification mark will depend on the nature of the proposed scheme -- Heart Foundation tick as used by McDonalds in the takeaway food market -

- "Australian Made" stylised kangaroo certification mark -- PINK LADY apples.

Subject: Certification trade marks--Australia

Subject: Trade mark licensing--Australia

Subject: Trade mark registration--Australia

SNIPER No.: 2013/01235

Author: Fong, Karen

Title: The challenge of the new gTLDs


Summary: Introduction of hundreds of new top-level domains -- widespread confusion and uncertainty as to exactly what is happening and what the implications will be -- the new system -

- new gTLD programme -- Trademark Clearinghouse (TMCH) -- sunrise and trade mark claims periods -- implications for brand owners -- what brand owners should be doing

Subject: Domain name registration

Subject: Brand management

SNIPER No.: 2013/01618

Author: Qi, Aimin

Title: The Chinese approach to spam regulation legislation


94.

Summary: China's spam legislation -- Measures for the Administration of Internet E-mail

Services -- administrative rules for spam regulation -- conflict between the sender's freedom of speech and the recipient's privacy and personal information rights -- proposes that the implied deny regime may be adopted in future Chinese anti-spam legislation -- industry self-discipline norms -- legal responsibility.

Subject: Internet--law and legislation--China

Subject: Marketing--China

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Subject: Information technology industry--China

SNIPER No.: 2013/01236

Author: Heizler, Laurie

Title: Closed gTLDs and other pitfalls


Summary: Internet Corporation for Assigned Names & Numbers (ICANN) -- new generic toplevel domains (gTLDs) -- gTLD expansion will provide significant opportunities to companies looking to capitalise on an entire web space -- more opportunities for piracy, cybersquatting, and consumer confusion -- tips for trade mark owners -- new gTLDs programme -- open and closed gTLDs -- closed gTLDs, the arguments -- Trademark Clearinghouse (TMCH) -- sunrise period -- trade mark claims service -- recommendations.

Subject: Domain names

Subject: Trade mark enforcement

SNIPER No.: 2013/01527

Author: Goonewardene, Julie

Title: Closing trap doors over the valley of death: university leadership alignment and entrepreneurial commitment


Summary: Innovation a critical part of a nation's economic recovery strategy -- barriers to success experienced by America's university innovation ecosystem -- geographic location inhibitor -- investment dollars are clustered on the East and West coast -- universities in the

Midwest and Plains states find it harder to secure corporate partners -- status quo -- ownership of the innovation/commercialization agenda is vague -- leadership to be aligned and committed to transforming and expanding academic culture-- innovation and commercialisation is key.

Subject: Technology transfer--education and training industry

Subject: Intellectual property management--education and training industry

SNIPER No.: 2013/01590

Author: Arner, Erika H.

Title: CLS Bank v Alice leads to an even murkier morass


Summary: US Federal Circuit -- rehearing the CLS Bank v Alice Corp case on patent eligibility of computer-related inventions -- hopes the court would clarify a murky area -- seven separate opinions -- no precedential holdings on the key legal issues -- ruling has led to more uncertainty

-- concern that many software and business method patents could be invalid -- some points of agreement -- difference between patent eligibility and patentability -- difficulty agreeing on a test for patent eligibility -- case could be ripe for Supreme Court review.

Subject: Computer-related inventions--patentability--United States


SNIPER No.: 2013/01584

Author: Pyrah, Alli

Title: CLS ruling undermines software patents


Summary: CLS v Alice -- US Federal Circuit -- en banc ruling invalidated Alice's patents covering a computerised trading system -- Court was attempting to answer questions concerning the scope of the abstract ideas exemption -- when, if ever, computer implementation can make an otherwise abstract idea eligible for patent protection -- judges were split -- debate over what constitutes a patent-ineligible abstract idea has been the subject of judicial

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SNIPER Bulletin Library, IP Australia disagreement for years -- "machine-or-transformation test" -- Supreme Court is likely to hear the case -- strategies for protecting software.

Subject: Computer-related inventions--patentability


SNIPER No.: 2013/01565

Author: Parsons, Giles

Title: Coffee wars


Summary: Nestec SA & others v Dualit Ltd & others -- High Court of England and Wales --

Nestec claimed that by supplying coffee capsules which fitted Nespresso machines, Dualit infringed the patent -- priority -- novelty destroyed by patentee's use -- can faulty and unintended use destroy novelty? -- if the patent was valid, would Dualit's supply of capsules have infringed?

Subject: Patent infringement--case law--United Kingdom

Subject: Patent priority--case law--United Kingdom

Subject: Patent novelty--case law--United Kingdom

SNIPER No.: 2013/01620

Author: Tanaka, Yoshitoshi

Title: Collaboration between IP department and other departments promote IP utilisation

Source: International Journal of Intellectual Property Management. Vol. 6 No. 1-2, 2013, pp.

111-128.

Summary: Intellectual property rights (IPR) -- strategic value of IPR -- survey to determine the level of integration of IP departments with other departments within Japanese government -- achievement level of collaboration on strategic roles of IP -- activities such as filing registration -

- joint research and development -- mergers and acquisitions -- technology standardisation -- collaboration with functional departments.

Subject: Value of intellectual property--Japan

Subject: Business collaboration

SNIPER No.: 2013/01622

Author: Stankovic, Mirjana

Title: Collective management of music copyrights in Macedonia: climbing up the ladder in the corner of Europe


143-158.

Summary: Problems with music copyright enforcement in Macedonia, focus on collective management -- legal observations -- economic observations -- cultural observations -- survey undertaken of domestic Macedonian music stakeholders -- proposals for a sustainable model of collective management of music copyrights in Macedonia -- concerns and criticisms -- music copyrights collective management system.

Subject: Copyright--reform--Macedonia

Subject: Copyright enforcement--Macedonia

Subject: Electronic rights management--Macedonia

SNIPER No.: 2013/01244

Author: McAllister, James

Title: Coming of age


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Summary: Community trademark (CTM) -- basis for a more harmonious and accessible system of trade mark protection across the member states of the European Union -- range of initiatives that will modernise the CTM Regulation and Trade mark Directive -- new identity as the

European trade mark -- key reforms -- streamline and harmonise national registration procedures -- proposals to align the principal procedural rules -- what this will mean for trade mark owners -- proposals to achieve greater approximation of substantive law -- modernise and improve the provisions of the Trade Mark Directive and CTM Regulation by clarifying and incorporating jurisprudence -- revise the trade mark fees structure at national and EU level.

Subject: Trade marks--reform--Europe

Subject: Harmonisation of laws--Europe

SNIPER No.: 2013/00959

Author: Folliard-Monguiral, Arnaud

Title: Community trade mark round-up 2012

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 4, April 2013, pp. 277-296.

Summary: Most significant trade mark cases decided in 2012 by the Court of Justice of the

European Union (EJC) and the General Court (GC) -- procedural issues -- Community trade marks -- seniority claims -- right to be heard -- scope of the examination of facts -- discretionary power -- notion of 'decision' -- language regime -- locus standi and good faith -- appeals before the Board of Appeals transfers -- costs -- restitution in integrum -- proceedings before the GC and the CJEU -- admissibility of the application -- request to lodge a reply -- review of legality -- change of factual background -- limitation of the CTM -- proposed amendments to the statute of the Court of Justice -- absolute grounds for refusal -- graphic representation -- distinctive character and descriptive signs -- -- figurative signs -- functional shapes -- signs contrary to the grounds of morality -- bad faith -- acquisition -- relative grounds for refusal -- likelihood of confusion -- distinctiveness through use -- registration by an agent or representative -- non registered marks and other signs used in the course of trade -- marks with reputation -- genuine use -- use in a form differing from the form of the registration -- enforcement of the exclusive right.

Subject: Community trade mark

Subject: Trade mark infringement--case law Europe

Subject: Legal procedure--Europe

Subject: Trade marks--law and legislation--Europe

SNIPER No.: 2013/01359

Author: Tsoutsanis, Alexander, 1976-

Title: Comparison of patent claim construction between Netherlands and Germany on basis of

AGA. v Occlutech

Source: World Intellectual Property Report. Vol. 27 No. 6, June 2013, pp. 32-34.

Summary: Patent infringement case in Europe -- medical devices -- AGA v. Occlutech -- decisions of courts in United Kingdom, Germany and Netherlands -- approaches to interpretation of patent claims in Germany and Netherlands -- judicial balance between reasonable protection and reasonable certainty -- doctrine of equivalence -- whether a

"pioneering invention" -- use of file wrapper estoppel -- convergence in the way national courts determine the scope of protection of European patents

Subject: Patent infringement--case law--Germany

Subject: Patent infringement--case law--Netherlands

Subject: Doctrine of equivalents--Europe

SNIPER No.: 2013/01325

Author: Köhler, Helmut

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Title: 'Congratulations, you have won!': new standards apply to announcements of wins: a discussion of Purely Creative and Others


Summary: CJEU judgment in Purely Creative and Others in relation to Item 31 of the Directive on Unfair Commercial Practices and Item 17 of the German Act Against Unfair Competition

(UWG) -- reinforces consumer protection against bogus announcements of wins which cause consumers to make expensive enquiries about the prize won -- creating a false impression -- classifying the constituents -- consumers' actions 'in relation to claiming the prize' -- consumer's cost of obtaining the information -- clear and comprehensible information for consumers -- tie-in between purchase transactions and winning.

Subject: Consumer protection--law and legislation--Germany

SNIPER No.: 2013/01642

Author: Parra, Gerardo

Title: Consider the implications


Summary: Marketing techniques are increasingly incorporating 'fluid' trade marks -- marks that are used in a different way from that in which they were originally registered -- fluid use may have negative consequences under Mexican law -- Industrial Property Law -- first-to-register country -- consider whether registration of the new version is justified -- negative consequences of fluid use -- vulnerable to a cancellation action -- slogan marks -- exploring other mechanisms of protection -- advantage of copyright protection.

Subject: Non-traditional marks--Mexico

Subject: Trade mark cancellation--Mexico

SNIPER No.: 2013/01353

Author: Chen, Wenxuan

Title: Construction of means-plus-function feature: proper protection and avoidance of compressed space for innovation


Summary: Means-plus-function features to present a technical solution when drafting patent claims -- secure a relatively wide extent of protection -- suggests it is impossible for an inventor to come up with all the technical solutions that are capable of performing said functions -- case study ICU Medical Inc. v. Foshan City Nanhai Baihe Medicare Technology Co., Ltd. -- legal concepts, policy goals and construction methods followed and adopted in the construction of means-plus-function features -- judicial interpretation -- encouraging disclosure.

Subject: Patent examination--China

Subject: Patent claims--China

SNIPER No.: 2013/01229

Author: Phillips, Tom

Title: The content catchers


Summary: Incopro provides worldwide content protection to media companies -- bespoke software to identify and issue takedown notices over infringing content -- network of international firms to aid enforcement on the ground -- development -- tricks of the trade -- small but effective.

Subject: Intellectual property enforcement

Subject: Intellectual property rights

SNIPER No.: 2013/01499

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Author: Karapapa, Stavroula

Title: A copyright exception for private copying in the United Kingdom


Summary: Narrow private copying exception to be introduced in the UK in the aftermath of the

Hargreaves review -- impact of private copying in the digital world -- harm and fair compensation

-- define what harm is in the context of copyright exceptions -- need to impose internal limitations to the scope of the exception for harm to kept minimal -- private or personal use -- permitted activities -- lawfulness of the source copy -- exception for copying of content legally purchased by an individual to another medium or device for private use -- consumers' reasonable expectations without causing more than minimal harm to the right holders' interests and without requiring an accompanying introduction of a fair compensation scheme.

Subject: Copyright use--law and legislation--United Kingdom

Subject: Copyright owners' rights--United Kingdom

Subject: Copyright levies

SNIPER No.: 2013/01491

Author: Longdin, Louise

Title: Copyright in high technology and haute cuisine: distinguishing inspiration and infringement


Summary: Recipes and computer programs have much in common as far as copyright subsistence and infringement are concerned -- Court of Justice ruling in SAS Institute Ltd v

World Programming -- first comer's claims of copyright subsistence and infringement in software can be successfully defeated where constituent elements in sets of instructions are pure ideas -- determine whether a second comer has been merely (and lawfully) inspired by a first comer's product or has infringed copyright in it -- copyright in computer programs and recipes -- judicial analogies between programs and recipes -- identifying form, function and fact in programs and recipes.

Subject: Copyright--information technology industry--Europe

Subject: Copyright infringement--case law--Europe

Subject: Copyright--hospitality industry

SNIPER No.: 2013/01559

Author: Dine, Jeffrey M.

Title: Copyright's stars and stripes


Summary: United States Copyright Act of 1976 -- obsolescence of the Copyright Act -- patchwork amendments to the Copyright Act -- movement toward reform -- register of copyrights' vision -- substantive areas for reform -- orphan works -- library and archive exception

-- enforcement.

Subject: Copyright--reform--United States

SNIPER No.: 2013/01488

Author: Turner, John L., 1973-

Title: The costs and benefits of United States patents

Source: Boston University School of Law Working Paper. No. 13-24, June 12, 2013.

General Note: Also published on Social Science Research Network (SSRN).

Summary: Study finds that costs of US patents exceed benefits overall -- gap between costs and benefits has grown over time -- increase in gap partly due to non-practicing entity (NPE) lawsuits, lawsuits filed over computers/communications patents, and lawsuits brought against non-manufacturing, software and telecommunications firms -- growth in costs outstrips growth in

-14-

SNIPER Bulletin Library, IP Australia lawsuits partly due to higher-than-average per-event dollar costs in these fast-growing categories -- study methodology -- use of detailed data set to estimate costs and benefits -- costs estimated by combining data from Derwent Litalert and dataset of non-practicing entity

(NPE) lawsuits collected by Patent Freedom -- event study approach used to estimate losses suffered by alleged infringers during 1984-2009 -- benefits estimated using market-value regressions to estimate value of patent rents for publicly-traded US firms during 1972-2002

Subject: Patents--economics--United States

Subject: Patent litigation--costs--United States

Subject: Patent trolls--United States

SNIPER No.: 2013/01532

Author: Wanetick, David

Title: Costs of capital: you can love more than just one


Summary: Valuation of intellectual property assets -- royalty revenues -- assigning different costs of capital to different projected streams of royalty revenues in accordance with the provisions delineated in the licence agreement.

Subject: Intellectual property licensing

Subject: Value of intellectual property

Subject: Standards (Technical)--intellectual property industry

SNIPER No.: 2013/01556

Author: Pancholi, Sheila

Title: Costs of cybercrime


Summary: European Commission (EC) -- recently published a European Union (EU) Cyber

Security Strategy encompassing a proposed Directive on Network and Information Security (NIS

Directive) -- aims -- actions required to achieve what the EU has termed 'an open, safe and secure cyberspace' -- the new directive -- what constitutes cybercrime -- examples of what constitutes cybercrime -- financial losses -- recent trends that threaten to increase the incidence of cybercrime -- concerns over the directive -- practical steps to provide a defence against possible cybercrime.

Subject: Cybersquatting

Subject: Internet--law and legislation

SNIPER No.: 2013/01247

Author: Isaac, Brian

Title: Counterfeit knock-out


Summary: Canada's Combating Counterfeit Products Act (CCPA) -- amendments to the

Copyright Act and Trademarks Act to reform laws for combating counterfeit goods -- trade mark and copyright border measures -- adds prohibitions to the Trade Marks Act -- CCPA amends the

Copyright Act to expand the definition of infringement to cover export of counterfeits -- proposed trade mark offences -- amendments to the criminal offence provisions in the Copyright Act -- substantive changes relating to the trade mark application process -- key amendments.

Subject: Counterfeiting--Canada

Subject: Intellectual property law--reform--Canada

SNIPER No.: 2013/01258

Author: Marfé, Mark

Title: Counting the cost

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Summary: Schütz (UK) Ltd v Werit (UK) Ltd -- United Kingdom Supreme Court -- decision on the extent to which replacing a consumable part of a larger patented product should be regarded as patent infringement -- background to the case -- should reliance on s.68 be pleaded? -- sufficiently pleaded in this case? -- cost sanctions under s.68 -- the second licence.

Subject: Patent infringement--case law--United Kingdom

Subject: Patents--law and legislation--United Kingdom

SNIPER No.: 2013/01701

Author: O'Sullivan, Nina

Title: Court of Appeals upholds validity of Genentech patent: (1) Regeneron Pharmaceuticals

Inc (2) Bauer Pharma v Genentech Inc

Source: Bio-Science Law Review. Vol. 13 No. 1, 2013, pp. 17-20.

Summary: Patent validity one of insufficiency -- issue of infringement -- meaning of 'an isolated hVEGF receptor' -- no reference to a fragment of a receptor in part (c) of the claim -- a striking omission -- specification contained a description of the therapeutic uses of the antagonists of the invention, identifying a wide range of non-neoplastic diseases and disorders -- insufficiency arguments in relation to therapeutic agents and treatments -- validity and novelty.

Subject: Patent validity--United Kingdom

SNIPER No.: 2013/01585

Author: Crompton, Simon

Title: Cowgirls and Grab-U: INTA 2013


Summary: International Trademark Association (INTA) Annual Meeting -- Jerry Jones keynote address -- Dallas Cowboys NFL franchise -- INTA past, present and future -- ambush marketing

-- how the European Union is negotiating its trade deals -- pitfalls of social media.

Subject: International Trademark Association--meetings

Subject: Ambush marketing

SNIPER No.: 2013/01619

Author: Chambers-Jones, Clare

Title: Cyber economic crime and Commonwealth laws


110.

Summary: Legal issues affecting Commonwealth countries of virtual/cyber financial crime -- virtual financial crime a threat to global economies -- virtual money laundering -- creating an international agreement to prevent, detect and punish virtual criminals -- role of the

Commonwealth -- case studies in Australia and Nigeria, whose domestic jurisdictions aim to tackle cybercrime -- jurisdictional elements to consider in-line with international laws -- technological enforcements -- Commonwealth jurisdictions as an example of how global regulators could use it to promote a joint response to virtual financial crime -- international law of cybercrime.

Subject: Crime--information technology industry--Commonwealth countries

Subject: Privacy--Australia

Subject: Privacy--Nigeria

Subject: Cybersquatting--Australia

Subject: Cybersquatting--Nigeria

SNIPER No.: 2013/01246

Author: Thompson, Sandra P.

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Title: Damage control


Summary: Apple Inc v Samsung Electronics Co Ltd -- jury awarded Apple $1.05 billion in damages -- Judge Koh reviewed the damages award -- the jury on the case -- determining the appropriate damages -- effectiveness of a jury in patent cases -- whether all patent cases should continue to use juries

Subject: Patent infringement

Subject: Damages--case law--United States

SNIPER No.: 2013/01495

Author: Smith, Joel

Title: Databases hosted outside the United Kingdom can infringe rights in UK databases


Summary: Football Dataco v Sportradar -- Court of Justice of the European Union (CJEU) decision -- data is uploaded from a database in Member State A which is protected by sui generis rights in Member State B -- sent to the computer of a person in Member State B at that persons request, for the purposes of storage in that computers memory and display on its screen -- act of re-utilisation -- infringement of the sui generis database right -- article 7 of the

Database Directive 96/9.

Subject: Database rights--case law--Europe

Subject: Database rights--law and legislation--Europe

Subject: Copyright infringement--case law--Europe

SNIPER No.: 2013/01233

Author: Liedtke, Christian

Title: A defeat for the German press


Summary: Whether online news aggregators should be allowed to utilise newspaper articles for free or whether those who create original content deserve compensation -- German federal government (Bundesregierung) proposed legislation to amend the German Copyright Act to include an ancillary copyright for news publishers -- ancillary copyrights -- economic realities -- effect of news aggregators -- German government's proposal was significantly weakened during the legislative process -- key aspects -- property interests of those that create original content should be protected against uncompensated commercial exploitation by others.

Subject: Neighbouring rights--Germany

Subject: Copyright--law and legislation--Germany

SNIPER No.: 2013/01593

Author: Slater, Wayne

Title: The Designs Act 2003: 10 years on


Summary: Australian Designs Act 2003 -- filing trends under the 2003 Act -- functional features

-- Icon Plastics -- Astra / Zeneca -- Apple Computer -- dotted lines -- litigation under the Designs

Act 2003 -- getting the most out of design registration.

Subject: Australia. Designs Act 2003

Subject: Industrial designs--law and legislation--Australia

SNIPER No.: 2013/01717

Author: Shao, Peizhang

Title: Determination of infringement upon utility model patent and corporate response

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2013, pp. 68-72.

Summary: Utility model infringement -- China -- scope of protection for utility models -- conditions for utility model infringement -- exploitation of the utility model -- without owner consent -- actual damage suffered -- not required to be intentional -- litigation strategies for utility model infringement -- offensive strategies -- defensive strategies.

Subject: Minor patents--China

Subject: Patent infringement--China

SNIPER No.: 2013/01355

Author: Chen, Zhixing

Title: Determination of similar goods in judicial protection of trademark right and reasoning thereaof: a study of judicial review of trademark grant and affirmation in the decade following

China's accession to WTO


Summary: Review of practice of similar good determination -- cases in which opposite determinations of similar goods are made by Trademark Review and Adjudication Board (China)

(TRAB) and Courts -- basic rules for determining similar goods -- sufficient reasoning in similar goods determination -- impact of likelihood of confusion and mistaking on the part of relevant set or recommendations for improving similar goods determination.

Subject: Confusing similarity--China

Subject: Trade mark distinctiveness--China

SNIPER No.: 2013/01326

Title: Determining the patentrelated portion of infringer's profit: Bottle Carrier (Flascheträger):

German Federal Court of Justice


Summary: German Federal Court of Justice (BGH) decision of 24 July 2012 - Case No X ZR

51/11 -- compensation for patent infringement -- BGH treated the recovery of profits, as well as an award of damages or reasonable royalties, as a remedy to compensate the patentee for the prejudice suffered -- calculation of the patent-related portion of the infringer's profits

Subject: Account of profits--Germany

SNIPER No.: 2013/01252

Author: Masilamani, Nitin

Title: Director's cut


Summary: 20th Century Fox filed suit to prevent the release of an Indian movie "Knockout" -- allegedly infringed its copyrights in "Phone Booth" -- Fox initially secured an interim injunction --

Indian producers were called upon to deposit a sum of money with the High Court pending disposal of the suit -- interim stage -- "look and feel" type test for film related copyright infringement -- interim order in the proceedings provides significant guidance to production houses and script writers seeking to enforce their copyrights.

Subject: Copyright infringement--culture and entertainment industry--India

Subject: Copyright infringement--case law--India

SNIPER No.: 2013/00003

Author: Brown, Abbe E. L. (Abbe Elizabeth Lockhart)

Title: Do you see what I see?: disability, technology, law and the experience of culture


2012, pp. 901-929.

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Summary: How technologies help the disabled, especially the blind, in accessing culture,

(especially books) -- how the law helps of hinders that access -- role of copyright law -- case study of blindness and access to books -- existing international, European and UK legal frameworks -- difficulties of deploying technologies -- initiatives to improve the unsatisfactory socio-legal situation

Subject: Copyright--social aspects

Subject: Copyright infringement--culture and entertainment industry

SNIPER No.: 2013/01512

Author: Synodinou, Tatiana-Eleni

Title: E-books: a new page in the history of copyright law?


Summary: Legal issues relating to the creation, marketing and use of e-books -- legal position of e-books in copyright law -- emphasis on the distinctive characteristics and unique features of e-books -- creation of the e-book in light of the copyright law -- cultural asset or extension of the printed book -- digitisation and the author's economic rights -- limitations placed on digitisation by the moral rights of authors -- challenges involved in the marketing and licensing of e-books -- public lending of e-books -- private copying and other copyright exceptions

Subject: Moral rights--culture and entertainment industry

Subject: Electronic copyright

SNIPER No.: 2013/00005

Author: Nadde-Phlix, Souheir

Title: Economic partnership agreements of the EU: a step ahead in reforming international IP

Law?: workshop of The Max Planck Institute for Intellectual Property and Competition Law, June

2011


2012, pp. 951-.

Summary: Report of workshop -- TRIPS-plus obligations in recent European Union (EU)

Economic Partnership Agreements (EPAs) and Free Trade Agreements (FTAs) -- coherence and diversity of the IP system -- impact on international law -- elements for a future international

IP system -- implementation of EU EPAs obligations in both developing countries and the EU -- papers from the workshop to be published in a book entitled, "EU Bilateral Trade Agreements &

Intellectual Property for Better or Worse "


Subject: Free trade--treaties--Europe

Subject: International trade

SNIPER No.: 2013/01319

Author: Anderson, Mark S.

Title: Emails (and other pure information) are not property


Summary: Fairstar Heavy Transport NV v Adkins and another [2012] EWHC 2952 (TCC),

Edwards-Stuart J, Technology and Construction Court, England and Wales, 1 November 2012 -

- no property right in emails -- property does not exist in pure information under English law -- other rights not considered for jurisdictional reasons -- whether Fairstar has an enforceable proprietary claim to the content of the e-mails held by Mr Adkins (and/or Claranet) -- received or sent by Mr Adkins acting on behalf of Fairstar -- no proprietary right.

Subject: Privacy--case law--United Kingdom

SNIPER No.: 2013/01643

-19-


Author: Nesterov, Alexander

Title: Embracing the new


Summary: A trade mark is considered static -- fluid marks are not static -- idea is to use the original mark in a number of variants that coexist with the mark as originally registered -- refreshing the mark -- helps to keep consumers interested in the goods or services -- types of marks that can be registered -- no explicit provisions in respect of fluid trade marks -- use of a trade mark -- Russian Civil Code -- cancellation actions -- risk of infringement -- related rights.

Subject: Non-traditional marks--Russia

Subject: Trade marks--law and legislation--Russia

SNIPER No.: 2013/01507

Author: Morton, Jeremy

Title: Emerging trends in the Patents County Court


Summary: Reforms to the Patents County Court (PCC) designed to make the PCC a more efficient forum for low value IP disputes -- analysis of cases in the Patents County Court -- key findings October 2010 to early 2012 -- reviews trends in the firms on record as representing litigants in the PCC -- observations of the PCC in 2012.

Subject: Patent litigation--analysis

SNIPER No.: 2013/01516

Author: Schautschick, Philipp

Added author: Intellectual Property Research Institute of Australia

Title: Empirical studies of trade marks: the existing economic literature

Source: IPRIA Working Paper, no. 07.13. June 2013

Summary: Empirical studies employing trade mark data that exist in the economic literature to date -- use of trade marks by firms in Australia, the United Kingdom and the United States -- different attempts to gauge the function of a trade mark as indicator of innovation and product differentiation -- association of trade marks with dimensions of firm performance and productivity

-- accounts of studies that focus on the social costs and value of trade marks -- importance for firm survival -- impact on demand -- firms' incentives to innovate but also to raise rivals' costs -- first endeavours to investigate the interplay between different types of intellectual property rights.

Subject: Trade marks--statistics

Subject: Economics

SNIPER No.: 2013/01435

Author: Ali, Suleman

Title: Enantiomers are obvious even though they have unpredictable properties


425.

Summary: Court of Appeal upholds High Court finding that enantiomer and its therapeutic use obvious from racemate mixture disclosure -- Novartis AG v Generics (UK) Limited (t/a Mylan) -- previous decisions where enantiomers resolved from racemate mixtures were deemed inventive

-- tests used by courts in their analysis -- history of case -- rivastigmine -- treatment of

Alzheimer's disease -- rivastigmine as one of the enantiomers -- arguments used by Novartis -- analysis of judgment by Justice Kitchin -- decision will make it less likely that simply resolving a racemate into an enantiomer will be regarded as inventive.

Subject: Patent validity--case law--United Kingdom

Subject: Inventive step--case law--United Kingdom

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SNIPER No.: 2013/01228


Title: End of the line for Gleevec


Summary: Supreme Court in India -- ruled Novartis should not be given a patent for a cancer drug because it was too similar to Novartis's earlier version -- first big test of evergreening -- law interpreted with the history of the pharmaceutical industry in mind -- court found that Novartis did not convincingly show that the drug offered "enhanced or superior efficacy" -- evergreening is controversial -- judgments favouring the generics industry -- decreasing drug costs -- impact on the pharmaceutical industry -- impact on Novartis.

Subject: Evergreening--case law--India

Subject: Pharmaceuticals--India

SNIPER No.: 2013/01243

Author: Pudelka, Glenn G.

Title: Ending the lockout: permanent exceptions to the DMCA possible?


Summary: Digital Millennium Copyright Act (DMCA) in the US-- Copyright Office determines appropriate exemptions to the act's anti-circumvention provisions -- eliminating an exemption that allowed mobile phone users to 'unlock' their devices for use on different cellular networks -- several Senate and House bills to permanently permit unlocking mobile devices not under contract with a service carrier -- DMCA establishes a wide range of rules for the digital marketplace.

Subject: Fair use (Copyright)--United States

Subject: Circumvention--United States

SNIPER No.: 2013/00958

Author: Barazza, Stefano

Title: The enforcement Directive and invalidation procedures: an unsurprising negative verdict

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 4, April 2013, p. 275-276.

Summary: Case C-180/11 Bericap v Plastinnova, Court of Justice of the European Union, 15

November 2012 -- preliminary ruling -- court clarifies the provisions of Directive 2004/48 -- interpreted in light of the TRIPS Agreement and the Paris Convention -- concerns only enforcement and infringement of intellectual property rights -- cannot be applied to an invalidation procedure -- established by an EU Member State in relation to a utility model -- reexamine the question of establishing a set of harmonised rules aimed to discipline the invalidation procedures --potentially yield significant importance in the evaluation of actual or future acts of infringement.

Subject: Patent validity--Europe

SNIPER No.: 2013/01608

Author: Németh, Gábor

Title: Enhancing technology transfer at universities through collaboration with patent offices

Source: IPR Helpdesk Bulletin. No. 10, July-September 2013, pp. 3-4.

Summary: Academic intellectual property a vital contributor to a country's economic development -- converting this knowledge into socio-economic benefits -- awareness of academic decision makers of intellectual property -- universities to develop IPR management policies -- IP awareness and educational tools -- involvement of the European Patent Office -- summarises the report "Enhancing technology transfer at universities through collaboration with patent offices: best practice and emerging needs" (Vincent Lamande and Nicolas Penet, 2012).

-21-


Subject: Technology transfer

Subject: Value of intellectual property--education and training industry

SNIPER No.: 2013/01511

Author: Manoranjan, Ayilyath

Title: EU border measure regulation: a threat to access to public health in developing countries and least developed countries


Summary: Doha Declaration on TRIPS and Public Health -- assesses the effectiveness of the

Doha Declaration in facilitating access to medicines -- Uruguay to Doha -- pre-TRIPS era -- features of TRIPS Agreement -- Doha Declaration -- issues raised by EC Regulation 1383/2003

-- border regulation measures -- practice of using the terms "counterfeit drugs" and "generic drugs" synonymously in implementing the regulation.


Subject: Pharmaceutical industry--developing countries

SNIPER No.: 2013/01309

Author: Leppink, Willem

Title: European trade mark law, quo vadis?


Summary: Court of Justice of the European Union -- influence in European trade mark law -- role of the Court of Justice of the EU (CJEU) in the creation of trade mark law -- inability of the

EU to distinguish in its legislation between counterfeits and other infringements -- CJEU takes decisions that the legislator has failed to take -- Opel/Atec case -- judgment in ONEL -- territorial borders of the Member States to be disregarded in the assessment of whether a trade mark has been put to genuine use in the EU -- implementation of the Trade Mark Study by the

Max Planck Institute into the European Trade Mark Harmonization Directive and the CTMR -- a good start to move the emphasis on the legislator rather than on the court -- Anti-Piracy

Regulation will be expanded to parallel trade -- unclear distinction between counterfeits and other judgments.

Subject: Trade mark litigation--Europe

Subject: Counterfeiting--Europe

SNIPER No.: 2013/01350

Author: Ren, Xiaolan

Title: Examination and system design in relation to amendment going beyond scope of disclosure: thoughts from Supreme People's Courts judgments made in two administrative cases


Summary: Two administrative patent cases involving application of Article 33 of Patent Law -- presents views arising from the adjudications -- Jiangsu Xiansheng medicament case -- invention relating to composite preparation of amlodipine and irbesartan -- Zeng Guansheng case -- invention of a mineral traditional Chinese medicament -- provisions pertaining to amendment to patent applications and the legislative aim -- thoughts on patent examination -- impact of the cases on patent system design.


Subject: Patent amendment--pharmaceutical industry--China

SNIPER No.: 2013/01352

Author: Peng, Meixiang

Title: Examination of novelty and inventiveness of claims containing mathematical formula

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Summary: Mathematical formulas are allowed in claims in the extent of protection -- Guidelines for Patent Examination in China -- mathematical formulas role to define claims -- methods of substitution and examination of novelty or product claim defined by mathematical formulae -- examination of inventiveness of claims defined with mathematical formula and determination of selection inventions.

Subject: Patent novelty--China

Subject: Inventive step--China

SNIPER No.: 2013/01589

Author: Wilson, David

Title: Experts in the hot tub


Summary: Introduction of new rules in the United Kingdom -- allows expert witnesses to give evidence concurrently -- known as "hot-tubbing" -- the new rules -- position in Australia -- hottubbing has been used effectively for a number of years in intellectual property litigation.

Subject: Expert witnesses--Australia

Subject: Expert witnesses--United Kingdom

SNIPER No.: 2012/02638

Author: Clarke, Philip M.

Title: Expiry of patent protection on statins: effects on pharmaceutical expenditure in Australia

Source: Medical Journal of Australia. Vol. 192 No. 11, 7 June 2010, pp. 633- 636.

General Note: See also letter in response to this article by Steven R.A. Simoens: 2012/02639

Summary: Study comparing changes in the costs of statins following patent expiry in Australia and England -- estimating pharmaceutical expenditure in Australia over the next decade -- uses various assumptions about price and use of generic statins -- find estimates of billions of dollars in potential savings associated with various scenarios -- projected savings based on government and consumers paying prices equivalent to those in England -- increasing the current off-patent statin use in Australia from about 25% of prescriptions to between 50% and

100%.

Subject: Patent expiry--pharmaceutical industry--Australia

Subject: Pharmaceuticals--costs--Australia

SNIPER No.: 2012/02639

Author: Simoens, Steven

Title: Expiry of patent protection on statins: effects on pharmaceutical expenditure in Australia

Source: Medical Journal of Australia. Vol. 194 No. 1, 3 January 2011, pp. 52-54.

General Note: Letter in response to the article by Philip M. Clarke and Edmund M. Fitzgerald.

See also: 2012/02638.

Summary: Letter to the editor -- comments on Clarke and Fitzgerald's findings -- warns that size of reported savings needs to be interpreted with caution -- scenario of 100% generic substitution not seen in any European country and may not be desirable for therapeutic reasons

-- selection of comparator country makes a difference to results -- using a tendering system for statins may create unintended effects -- article gives insufficient detail on how savings can be realised through uses of generic medicines -- includes reply to this letter from Clarke and

Fitzgerald

Subject: Pharmaceuticals--costs--Australia

Subject: Pharmaceuticals--costs--Europe

SNIPER No.: 2013/00004

-23-


Author: Riis, Thomas, 1966-

Title: Extended Collective Licenses in action


2012, pp. 930-950.

Summary: Extended Collective Licenses (ECLs) -- touted as expedient means to solving copyright's complications in the information society -- whether ECLs, and collecting societies established as part of the ECL system, constitute special benefits or problems compared to the normal effects of collectivisation and the operation of societies -- how ECLs work in practice -- focus on Danish law and the Danish collecting society, "Copydan" -- ECLs regarded as practical and uncontroversial way of solving problems of access in mass-user situations -- situation in other Scandinavian countries

Subject: Copyright licensing

Subject: Copyright licensing societies--Denmark

SNIPER No.: 2013/01549

Author: Davies, Sophie

Title: Facing the music


Summary: European Commission Joint Research Centre (JRC) published a working paper entitled "Digital Music Consumption on the Internet: Evidence from Clickstream Data" -- the study sought to identify the effects of illegal downloading on legitimate digital music sales -- it concluded that illegal downloading has little or no effect on legitimate sales of music -- the study was heavily criticised by music industry bodies -- the study -- criticisms of the findings -- overarching concerns.

Subject: Electronic copyright--culture and entertainment industry

Subject: Piracy--culture and entertainment industry

SNIPER No.: 2013/01508

Author: Harding, Iona

Title: Fashion and copyright: weaving our way towards increased protection


Summary: Patent County Court's decision in Abraham Moon & Sons v Thornber -- copyright infringement of the design of a woollen plaid fabric for use in upholstery and furnishing -- infringement alleged on three protected works: Skye ticket stamp (a literary work or artistic work); the original patchwork blanket and the fabric sample from the Skye section range in the sage colour -- Section 21 Copyright Designs and Patents Act 1988 (CDPA) -- harmonisation: what is a copyright "work" -- copyright and the fashion industry -- the case addresses many facets of copyright law

Subject: Copyright infringement--case law--United Kingdom

Subject: Copyright owners' rights--fashion and design industry--United Kingdom

SNIPER No.: 2013/01483

Author: Dechezleprêtre, Antoine

Title: Fast-tracking green patent applications


General Note: Related papers of findings, see also 2013/00664 and 2012/02777.

Summary: Measures to fast-track "green" patent applications -- findings of two papers, Fast track "green" pate nt applications (Antoine Dechezleprêtre, 2013) and Building the global green patent highway (Eric Lane, 2012) -- overview of the programs implemented across intellectual property offices -- Australia, Canada, Israel, Japan, Korea and United Kingdom (UK) -- eligibility requirements -- process requirements -- whether help to accelerate diffusion of green

-24-

SNIPER Bulletin Library, IP Australia technology -- applicant participation -- technology distribution -- time-to-grant -- value of patents

-- green technology knowledge diffusion -- programme users -- low participation -- types of technology -- program users -- high-high value patents -- green technological knowledge diffusion -- high participation rate in the UK.

Subject: Environmental issues in intellectual property

Subject: Patent applications

SNIPER No.: 2013/01541

Author: Fyfield, David

Title: Fee-fi-fo-fum


Summary: How to spot a patent troll -- patent trolls object to the negative connotations of the term and the suggestion they unfairly exploit the patent system -- arguments they have a positive role -- negative effects of patent trolls -- amount and cost of patent litigation involving patent trolls appears to be rising in the United States -- little written about patent trolls operating in the United Kingdom and Europe -- high cost of patent litigation -- commonly cited as supporting the growth of the patent troll business model -- possible reasons there are few patent trolls operating in Europe and the UK -- factors that may encourage patent trolls in the US --

Rackspace taking a public stand against patent trolls -- other mechanisms for challenging a patent's validity.

Subject: Patent trolls


SNIPER No.: 2013/01245

Author: Sunshine, David B.

Title: Fifty shades of copyright


Summary: Fan fiction -- lawsuit filed by Fifty Shades Limited and Universal City Studios against

Smash Pictures and others -- unlawful production and distribution of pornographic adaptations of James' Fifty Shades of Grey novels -- the Fifty Shades litigation -- Smash raised interesting and potentially novel arguments regarding copyright protection in fan fiction works -- does fan fiction enter the public domain? -- is Fifty Shades subject to copyright protection?

Subject: Fair use (Copyright)

Subject: Copyright owners' rights

SNIPER No.: 2013/01629

Author: Ellis, Jack

Title: Firm footing?: brands in the trademark legal services market


Summary: Law firms forced to reassess and refocus on what makes them stand out in the marketplace -- importance of brands for trade mark practices -- difficult for trade mark service providers to distinguish themselves -- diverse range of strategies -- rebranding -- creating a brand identity -- building a reputation -- maintaining strong professional relationships -- building recognition for the firm in the community and the wider trade mark profession -- firm brand names -- issue of serving a wide range of clients across various industries -- boutique brands -- boutiques and rebranded firms start out with little or no market recognition -- building visibility -- client lists.

Subject: Attorneys--intellectual property industry

Subject: Brand management--intellectual property industry

SNIPER No.: 2013/01318

-25-


Author: Rosati, Eleonora

Title: First Circuit applies idea/expression dichotomy and originality to news photographs


Summary: Donald A Harney v Sony Pictures Television, Inc, and A&E Television Networks,

LLC, No 11-1760 (1st Cir, 7 January 2013) -- US Court of Appeals for the First Circuit -- alleged copyright infringement in a photograph by a Sony TV film -- held that what was reproduced by the non-protectable elements in the plaintiff's work -- substantial similarity -- holistic comparison of the two works -- idea-expression dichotomy and originality proved inconsistent over time -- judicial disputes difficult to predict.

Subject: Copyright infringement--United States

Subject: Moral rights--United States

Subject: Artistic works--United States

SNIPER No.: 2013/01542

Author: Babbitt, Michael G.

Title: Five of the best


Summary: Non-practising entities (NPEs) -- NPEs account for the majority of patent cases filed in the United States -- crucial for business to understand and implement litigation strategies that reduce the cost to defend these cases -- win the case before trial -- legal strategies and the underlying case law that businesses may use to help defeat patent trolls early in litigation -- motion to dismiss the complaint for failure to plead infringement with sufficient detail -- dispositive motion on patentability -- early summary judgment on patent indefiniteness or noninfringement -- motion based on improper joinder of defendants -- inter partes review in the patent office.



SNIPER No.: 2013/01509

Author: Tarr, Julie-Ann

Title: A fork in the Australian road?: ownership of patented employee inventions


Summary: Employee ownership of inventions a complex matter in R&D involving multiple parties with diverse interests -- Australian courts struggling to reach equitable results in light of precedent -- recent decisions made in Australia, United States and the United Kingdom -- attempts to balance the variables equitably for insights into potential Australian reform -- ownership of employee inventions -- University of Western Australia v. Gray -- Royal Children's

Hospital v Robert Alexander -- Board of Trustees of the Leland Stanford Junior University v

Roche Molecular Systems -- LIFFE Administration and Management v. Pinkava -- statutory compensation schemes for employee inventors.

Subject: Technology transfer

Subject: Patent entitlement--case law--Australia

SNIPER No.: 2013/01231

Author: Lee, Edward

Title: Foul play over US trademark


Summary: United States law on trade mark registrability -- idiosyncratic application of this law -- dispute between Native Americans and the Washington DC professional football team the

"Redskins" -- attempted registration of 'Dough-boy' -- group of Native Americans sought cancellation of the Redskins marks as disparaging to Native Americans -- denied cancellation

-26-

SNIPER Bulletin Library, IP Australia due to procedural obstacles -- determining whether a mark may be disparaging -- trial evidence in the Blackhorse case.

Subject: Trade mark registrability--United States

Subject: Trade mark cancellation--United States

SNIPER No.: 2013/01248

Author: Fox Murphy, Kathleen

Title: FRANDly fire


Summary: United Kingdom High Court -- IPCom's standard essential patent as against Nokia, was invalid and infringed -- determination of Fair, Reasonable and Non-Discriminatory (FRAND) licence terms for the patent -- extent of disclosure ordered -- who should be allowed into the confidentiality club to inspect the third party licence agreements and who should be excluded? -- additional restrictions by means of the terms of the confidentiality undertaking.

Subject: Intellectual property licensing

Subject: Confidentiality agreements

SNIPER No.: 2013/01538


Title: FRANDly rates

Source: Intellectual Property Magazine. June 2013, p. 16.

Summary: Standards essential patents (SEPs) -- court in Seattle set a rate patent holders can expect to collect from licensing such technology -- fair, reasonable and non-discriminatory

(FRAND) royalty for patents seen as crucial for the existence of certain tech sectors, in the

Microsoft v Motorola contract case -- decision could change on appeal -- next step in the Seattle

FRAND action is a decision on Microsoft's claim that Google's Motorola breached its FRAND contract -- making a blatantly unreasonable initial royalty demand.

Subject: Standards (Technical)

Subject: Intellectual property licensing--case law

SNIPER No.: 2013/01562

Author: Daniels, Mark

Title: Freedom to browse


Summary: Public Relations Consultants Association Ltd (Meltwater) v The Newspaper

Licensing Agency -- relating to the provision of news monitoring services online and by email -- findings of the High Court and the Court of Appeal -- United Kingdom Supreme Court -- whether or not viewing web pages fell within the temporary copying exception -- reference to the Court of Justice of the European Union (CJEU) -- many normal internet activities amount to copyright infringement -- copyright law still does not work with the internet.


Subject: Copyright infringement--culture and entertainment industry--United Kingdom

SNIPER No.: 2013/01626

Author: Little, Trevor

Title: From filing agency to enforcer

Source: World Trademark Review. No. 44, August-September 2013, p. 10.

Summary: Philippines acceded to the Madrid Protocol on July 25 2012 -- international trade mark applications flooded in -- local brands also seeking international protection -- major impact on the workings of the Intellectual Property Office (IPO) of the Philippines -- agency moving to coordinate enforcement activities on behalf of brand owners -- new possibilities for domestic

-27-

SNIPER Bulletin Library, IP Australia small and medium-sized enterprises (SMEs) -- IPO now has wider responsibilities -- established satellite offices around the country to cover its geographical spread -- Republic Act 10372 -- amends the IP Code of the Philippines to allow the IPO to take a more active role on behalf of brand owners -- provisions of the act -- enhanced enforcement capabilities conferred on the IPO

-- establishment of the Bureau of Copyright and Other Related Rights -- establishment of geographical indication (GI) unit.

Subject: Intellectual property offices--procedure--Philippines

Subject: Intellectual property law--reform--Philippines

SNIPER No.: 2013/01630

Author: Charles, Lise

Title: From gTLD risks and social media exploitation to brand resilience and the benefits of a fluid approach: inside INTA 2013


Summary: Opening keynote delivered by Jerry Jones, owner of the Dallas Cowboys -- brand visibility is the secret to successful monetisation -- fluid marks -- how luxury brands can grow without diluting their cachet -- how brands can use various social media platforms -- benefits and risks of using social media -- pitfalls presented by social media -- general tips for social media providers -- assessment of the new generic top-level domain (gTLD) programme -- ethics of trade mark bullying -- overview of mediation and the benefits that this form of dispute resolution might offer trade mark owners.


Subject: User-generated content

SNIPER No.: 2013/01645

Author: Gekas, Jami

Title: The future of branding


Summary: Instead of static marks, innovative rights holders are breaking the rules by using

'fluid' marks -- examples of fluid marks -- variants are designed to coexist with the underlying mark -- best marks for a successful fluid mark -- Nickelodeon -- Snickers -- Google Doodles -- trade mark use in the United States -- trade mark abandonment -- clearing variations of a fluid mark -- standard version of a mark should be registered -- using alternative forms of protection for variants -- common law rights -- copyright protection.

Subject: Non-traditional marks--United States

Subject: Trade mark use--United States

SNIPER No.: 2013/00920


Title: Gene patents in the dock

Source: Nature. Vol. 496 No. 7444, 11 April 2013, p. 150.

Summary: United States Supreme Court preparing to hear arguments in Myriad Genetics case

-- whether human genes are actually patentable -- implications of the Court's decision for business and medicine may be narrower than believed -- case limited to patents that cover the sequence of a gene rather than methods used to analyse it -- impact of the outcome on personal genomics -- concerns that a network of individual gene patents could threaten future of personalized medicine and whole genome sequencing -- whether patent claims interpreted too broadly -- tests for mutations in BRCA1 and BRCA2 genes may not become more widely available even if Myriad's patents are ruled invalid -- Myriad's patents on methods of analysing

BRCA genes for links to cancer are outside scope of this case.

Subject: Patenting of life forms--United States

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Subject: Medical procedures--United States

SNIPER No.: 2013/01316

Author: Micara, Anna Giulia

Title: Genuine use of trade marks: the CJEU clarifies territorial scope


Summary: Case C-149/11, Leno Marken BV v Hagelkruis Beheer BV, Court of Justice of the

European Union (CJEU), 19 December 2012 (Onel) -- genuine use of a Community Trade Mark

-- use in one member state is not necessarily sufficient to have genuine use in the Community -- some circumstances the territorial scope is limited to the territory of a single member state -- whether Article 15 of Regulation 207/2009 should be interpreted as meaning that use in a single

Member State is sufficient to constitute genuine use in the Community -- unsure how the caseby-case assessment will be applied by national courts.


Subject: Trade mark use--Europe

Subject: Trade mark systems--Europe

SNIPER No.: 2013/01547

Author: Dehlinger, Peter J.

Title: The Georgia-Pacific test


Summary: Ultimate leverage a patent troll has over an accused infringer is the "reasonable royalty" damage award that a court or jury might award -- usually determined according to the

Georgia-Pacific test -- SHIELD Act legislation being contemplated by US Congress -- patent troll business model -- curtailing patent troll litigation -- targeting the potentially high 'reasonableroyalty' damage award if infringement of a valid patent is found -- Georgia-Pacific factors commonly used to calculate a reasonable-royalty damage -- notoriously malleable and have been used to justify inflated royalty awards -- reforms proposed to temper the current test.


Subject: Patent litigation--case studies--United States

SNIPER No.: 2013/01250

Author: Thornham, Chris

Title: Get off my cloud


Summary: Cloud computing -- patents for inventions in this area may be obtainable -- patents are national rights -- whether they can be enforced when the user is in one place and the computing resources are elsewhere, in the hands of a different party that may be in a different country -- who may be liable for patent infringement? -- user -- competitor -- concerns.


Subject: Patent infringement

SNIPER No.: 2013/01481

Author: Dutta, Soumitra

Added author: Insead

Added author: World Intellectual Property Organization

Added author: Cornell University

Added author: Booz & Company

Added author: Confederation of Indian Industry

Added author: du Telecom

-29-


Added author: Hua wei ji shu you xian gong si

Title: The global innovation index 2013: the local dynamics of innovation

Source: Global Innovation Index. 6th edition, 2013.

General Note: Sixth report in a series.

Summary: Innovation -- economic growth and development -- global innovation rankings 2013 -

- country/economy profiles -- data tables -- sources and definitions -- technical notes -- Local dynamics keep innovation strong in the face of crisis (Soumitra Dutta, Daniela Benavente,

Bruno Lanvin and Sacha Wunsch-Vincent) -- The evolving geography of innovation: a territorial perspective (Annalisa Primi) -- Measuring regional innovation: a European perspective (Hugo

Hollanders) -- The role of enterprise champions in strengthening innovation hubs (Barry

Jaruzelski, Rasheed Eltayeb, Tamer Obied and Hatem Samman) -- Open innovation: the view of an ICT leader in distributed global innovation (Qian Xiangjiang, James Peng and Joe Kelly) --

Local innovation dynamics: examples and lessons from the Arab world (Jean-Eric Aubert,

Tamer Taha, and Anuja Utz) -- Innovation clusters initiative: transforming India's industry clusters for inclusive growth and global competition (Samir Mitra) -- Creating local innovation dynamics: the Uruguayan experience (Fernando Amestoy)

Subject: Innovation (Technological)--statistics

SNIPER No.: 2013/01540

Author: Parr, Andrew

Title: Good for your image


Summary: Guernsey updating its intellectual property laws -- introduced new legislation for the protection and exploitation of image rights -- need to protect the image of an individual has become increasingly prevalent -- high-profile individuals like sportspersons, musicians and other entertainers -- these rights can be exploited to generate significant revenues -- English law does not recognise what an image right is -- problems with the use of copyright and registered trade marks for protection -- Guernsey is the first jurisdiction in the world to establish a legal code solely for the registration and protection of image rights -- key feature of the legislation -- basic premise of the legislation -- benefit -- licensing rights to third parties -- defining an "image" -- takes "life time" into consideration -- image rights registered under statute -- enforcing registered rights -- registrations have to be submitted by a registered image rights agent -- Guernsey as a

"one-stop shop".

Subject: Personality rights--Guernsey

Subject: Intellectual property law--reform--Guernsey

SNIPER No.: 2013/01631

Author: Mühlendahl, Alexander von

Title: The good, the bad and the missing in the plans for Europe


Summary: European Commission -- published proposals to amend the EU Community

Trademark Regulation -- recast the European Trademark Directive -- update substantive law -- expand harmonisation to trade mark procedures -- reshape the organisation -- address imbalances between revenues and expenditures at the Office for Harmonisation in the Internal

Market (OHIM) -- European trade marks and OHIM -- substantive law proposals -- the good -- the bad -- questionable -- the missing -- procedures under the proposed regulation -- the good -- the bad -- procedures under the proposed directive -- cooperation.



SNIPER No.: 2013/01489

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Author: Scanlon, Luke

Title: Government must change copyright law to protect website browsing


Summary: Recent court decision involving the media monitoring agency Meltwater and the

Newspaper Licensing Agency (NLA) -- act of opening a web browser to view copyright works requires the permission of a copyright owner -- author argues that the copyright laws have never prevented individuals from listening to music or reading the page of a book and they should not be interpreted as having the effect of restricting a person's access to a webpage -- approaches taken by the High Court and Court of Appeal in the Meltwater case -- purpose of copyright law.

Subject: Fair use (Copyright)--case law--United Kingdom

Subject: Copyright infringement

SNIPER No.: 2013/01381

Author: James, Mark

Title: Guilty by association: Olympic Law and the IP effect

Source: Intellectual Property Quarterly. No. 2, 2013, pp. 97-113.

Summary: Olympic and Paralympic Games held in London 2012 -- issues surrounding security, ticket allocations, transport and spiralling costs -- intellectual property rights framework subject to critical examination -- Olympic "brand police" began investigating ambush marketing of, and illegal associations with, London 2012 -- perceived to be undermining the exclusive marketing position of the official sponsors -- extensive powers to police the London 2012 brand -- provided by a new type of intellectual property right, the London Olympic Association Right (LOAR) -- breach of the LOAR is a criminal offence -- offending advert could be removed -- any item used to create it confiscated -- powers created under the 2006 Act -- purview of, and need for the

LOAR -- new forms of intellectual property rights are being created and are being driven by a private body -- these types of extensions to the intellectual property landscape, what we term

"super IP", ought to be resisted.

Subject: Ambush marketing

Subject: Olympic insignia

SNIPER No.: 2013/01440

Author: Meale, Darren

Title: A hotel by any other name: the 'own name' defence in Hotel Cipriani, Part Two


435.

Summary: Use of Cipriani name in Cipriani family's management of restaurant held to infringe -

- Hotel Cipriani Srl & Ors v Fred 250 Ltd, Giuseppe Cipriani and Cipriani International SA --

European legal tradition of avoiding liability for infringement by claiming to be trading under own name -- background of case -- sale of Hotel Cipriani (HC) by family and now owned by Orient

Express Group -- Community trade mark for CIPRIANI held by HC -- attempt by Cipriani family to use surname -- Cipriani London -- by G. Cipriani -- Managed by Giuseppe Cipriani -- use as a badge of origin -- the 'own name' and descriptive use defences -- use in accordance with honest practices -- practical significance.

Subject: Commercial names--case law--United Kingdom

Subject: Trade mark infringement--case law--United Kingdom

SNIPER No.: 2013/01621

Author: Tanaka, Yoshitoshi

Title: How can we integrate IP strategy with corporate strategy?: combining IP strategy with management strategy making process

-31-



129-142.

Summary: Lack of IP strategy -- better understanding of the strategy making process -- IP personnel -- fostering growth of the enterprise -- fundamentals of strategy making -- IP strategy menu -- core technology strategy -- improvements patents strategy -- invalidation strategy -- enforcement strategy -- licensing strategy -- negotiating up strategy -- standardisation strategy -- alliance strategy -- joint research and development strategy -- inventor's motivation strategy -- IP training/education strategy -- secrecy strategy -- overseas business strategy -- integration of IP strategy with corporate strategy -- case studies -- opportunities, threats, strengths and weaknesses -- IP strategy making.



SNIPER No.: 2013/01611

Author: Miguelez, Ernest


Title: How does geographical mobility of inventors influence network information?

Source: WIPO Economic Research Working Paper. No. 7, April 2013.

Summary: Influence of spatial mobility of knowledge workers on the formation of ties of scientific and industrial collaboration across European regions -- co-location to ease formal collaboration between individual and firms -- fixed effects logit model -- inventor's mobility -- setting up of research collaboration ties is costly -- knowledge linkages -- co-patents in the

European biotech industry.

Subject: Inventors--Europe


Subject: Biotechnology industry


SNIPER No.: 2013/00956

Author: Smyth, Darren

Title: How is the scope of protection of a registered Community design to be determined?


Summary: Registered Community design -- Samsung Electronics (UK) Ltd v Apple Inc [2012]

EWCA Civ 1339, Court of Appeal, England and Wales, 18 October 2012 -- Court of Appeal decision -- legal test for infringement of a Community registered design -- scope of protection -- set out in Article 10 of the Community Design Regulation 6/2002 -- confirms aspects of the approach established by previous cases -- leaves unresolved issues concerning the significance of the 'design corpus' and unanswered questions about product features not claimed as part of the design -- second issue concerns the related question of the significance of dotted lines in a representation -- scope of protection of a registered design is narrow -- uncertainty for applicants and their representatives concerning how to indicate in an application the features for which protection is sought.

Subject: European Parliament. Regulation (EC) No 6/2002 of 12 December 2001 on

Community designs

Subject: Industrial design infringement--case law--United Kingdom

SNIPER No.: 2013/01351

Author: Zhang, Xiaodu

Title: How to construe "aesthetic appeal" in definition of design in patent law


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Summary: "Aesthetic appeal" subject matter susceptible to the design patent protection -- recommends that "aesthetic appeal" be added to the Guidelines for Patent Examination in

China -- how to construe "aesthetically appealing" -- whether designs of products hidden when in use are subject matters susceptible to design patent protection -- how to treat patented design dictated by functional considerations in infringement litigation.

Subject: Industrial design rights--China


SNIPER No.: 2013/01586

Author: Singh, Hemant

Title: How to get a preliminary injunction in India


Summary: Increasing number of patent litigation cases in India -- courts' approach to preliminary injunctions is becoming clear -- grant of the patent is no help in establishing validity -

- a "credible challenge" to validity must be established by the defendant -- relatively plain reading of the claims is used to establish infringement -- likelihood of damages is playing a minor role -- patent owners in India would do well to take note of emerging trends in jurisprudence.

Subject: Injunctions--India

Subject: Patents--pharmaceutical industry--India

SNIPER No.: 2013/01314

Author: Lagarde, Laetitia

Title: I say doughnut and you say dónut: why is the CTM system 'different'


Summary: Case T-569/10 Bimbo v OHMI Panrico (BIMBO DOUGHNUTS), General Court

(Seventh Chamber), 10 October 2012 -- General Court upheld the likelihood of confusion --

Spanish pastry maker prevent competitor from using the word 'doughnut' -- on the grounds large part of the Spanish public do not speak English and will perceive the similar element as a fantasy word -- Community Trade Mark -- bakery and pastry products everyday low-cost consumer goods -- public has a reduced level of attention when purchasing them -- likelihood of confusion.

Subject: Trade mark infringement--case law--Spain

Subject: Confusing similarity

SNIPER No.: 2013/01348

Author: Zhang, Guangliang, 1970-

Title: Impact of new Chinese Civil Procedure Law on interim measures in IP civil litigation


Summary: Present situation of the application of the interim measures in IP civil litigation in

China -- application of interim measures under the new Civil Procedure Law in IP civil litigation -

- matters worth probing into relating to application of interim measures -- mutual impact on interim measures provisions.

Subject: Common law--China

Subject: Injunctions--China

SNIPER No.: 2013/01315

Author: Chaudri, Abida

Title: In search of bad faith


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Summary: Case T-227/09, Feng Shen Technology Co Ltd v OHIM, General Court of the

European Union, 21 March 2012, and Court of Justice of the European Union, 7 February 2013

-- zip fasters under the FS mark in Poland -- review of the General Court's judgment -- summary of the decision of the CJEU -- reference to the CJEU in Case C-49/13 -- bad faith claim -- application for alteration of the Board of Appeal's decision -- admissibility of further evidence on appeal to the General Court -- the CJEU judgment -- difficulties in a bad faith challenge -- importance of seeking registered trade mark protection ahead of competition -- filing all relevant evidence at the outset -- attempt to fall within a definition of good faith.

Subject: Fair use (Trade marks)--Europe

Subject: Trade mark infringement--Poland

SNIPER No.: 2012/01704

Author: Sayres, Lauren C.

Title: In the public interest?

Source: Science Translational Medicine. Vol. 4 No. 144, 25 July 2012, pp. 1-3.

Summary: Cell-free foetal DNA (cffDNA) testing -- restrictive patenting and licensing strategies used by some academic institutions and commercial firms -- occurs even when publicly funded research generates the IP for these diagnostic genetic technologies -- threatens the translation and intended benefits of this technology -- uncertain IP landscape -- numerous patents related to cffDNA technology granted by USPTO and the European Patent Office -- unclear whether their validity can be upheld or whether claims overlap -- Sequenom as exclusive licensee of many cffDNA patents in a position to dominate the market -- negative consequences of monopolized market for cffDNA testing

Subject: Patent licensing

Subject: Medical procedures

SNIPER No.: 2013/00954

Author: Rajasingh, Betsy Vinolia

Title: India enacts laws to protect copyright over digital content


Summary: Amendment to India's Copyright Act (1957) -- protect copyright over digital content -- introduction of provisions relating to anti-circumvention of technological protection measures -- protection of rights management information -- Copyright (Amendment) Act 2012 -- amendments make India copyright law compliant with the provisions under WIPO Copyright

Treaty 1996 (WCT) and the WIPO Performances and Phonograms Treaty 1996 (WPPT; jointly, the so-called Internet Treaties) -- India's status of non-signatory remains -- absence of corresponding obligation to enact provisions concerning DRM in India -- legislative history of the amendments -- anti-circumvention of technological protection measures (TPM) and rights management information (RMI) -- practical significance.

Subject: India. Copyright Act, 1957

Subject: Copyright--law and legislation--India

Subject: Electronic rights management--law and legislation--India

SNIPER No.: 2013/00955


Title: The individual character of design: freedom and the 'saturation of the state of the art'


Summary: Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, General Court of the

European Union, 13 November 2012 -- General Court, reviewing a decision of the OHIM's

Board of Appeal -- lack of individual character of a design concerning a thermosyphon for radiators -- assessment of the notions of 'informed user' and 'degree of freedom of the designer'

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-- observing that the 'saturation of the state of the art' (crowded field) may be relevant to assess the degree of awareness of the informed user -- Antrax owned eight Community design registrations 'radiators for heating' -- invalid for lack of novelty -- claimed differences between the disputed designs and the prior art were sufficient to allow the informed user to distinguish the different designs, presented an individual character -- useful overview of all the elements involved in the evaluation of the individual character of a design -- enriching the notions of

'informed user' and 'degree of freedom.'

Subject: Industrial design rights--Europe

Subject: Intellectual property law--Europe

SNIPER No.: 2013/01674

Author: Battistelli, Benoît

Title: Information is everything

Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 7-10.

Summary: European Patent Office (EPO) -- sharing of patent data -- Espacenet -- Cooperative

Patent Classification (CPC) -- Patent Translate translation service -- unitary European patent -- patent search by European patent examiners -- workloads for patent professional and patent offices -- efficiency gains through re-engineering procedure -- knowledge age and information management -- effects on patent quality.

Subject: Espacenet (Computer network)


Subject: Patent searching--Europe

Subject: Information management--Europe

SNIPER No.: 2013/00962

Author: Fhima, Ilanah Simon

Title: Initial interest confusion


Summary: Trade mark law in the UK -- focuses on confusion at time of sale -- Och-Ziff

Management Europe Ltd and Anor v Och Capital LLP & Ors -- presale and initial interest confusion -- emergence of initial interest confusion -- does initial interest confusion fit within the scheme of the Directive? -- is there a need for damage under Article 5(1) (b) -- wording of the

Directive -- consistancy with the other heads of damage -- internet and advertising cases -- Noncontemporaneous confusion cases: the CJEU's approach -- unfair advantage -- case for

'operative' confusion.


Subject: Trade marks--law and legislation--United Kingdom

Subject: Passing-off

SNIPER No.: 2013/01627

Author: Clover, Sara-Jayne

Title: Inside track: MasterCard


Summary: MasterCard has evolved from a credit card provider into a leading e-commerce facilitator and innovator of contactless payment systems -- huge international trade mark portfolio -- cross-border collaboration -- assertive anti-counterfeiting campaign -- corporate responsibility programmes -- projecting a positive brand image -- monitoring social media -- monitoring competitors -- broadening scope of protection -- challenges post-financial crisis -- pace of the digital age -- communicating with the business that there are sometimes risks associated with managing a brand.

Subject: Brand management--financial services industry

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Subject: Trade marks--financial services industry

SNIPER No.: 2013/00946

Author: Charak, Annette M.

Title: Intellectual property rights and tax matters

Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 8, March-April 2013, pp. 173-

176.

Summary: Transferring IP has tax consequences for both the transferor and the transferee -- what is income? -- income v capital -- intellectual property - depreciating assets -- CGT regime -

- CGT assets and CGT events -- "value" paid or received -- impact of a CGT event -- when does income have its source in Australia -- royalty payments -- double tax agreements -- conclusion

Subject: Intellectual property rights--Australia

Subject: Taxation--Australia

SNIPER No.: 2013/01615

Author: Roy, Deepak

Title: Intellectual property strategy for competitive advantage


61.

Summary: Examines the correlation between intellectual property strategy, competitive advantage and performance among the information technology (IT) companies operating in

Pune, India -- significant impact -- needs to be used as a strategic tool by top management to compete effectively in the marketplace -- recommends periodic IP audits to valuate the intangible assets owned by the company.

Subject: Value of intellectual property--information technology industry--India


SNIPER No.: 2013/01498

Author: Moir, Hazel V. J.

Title: An inventive step for the patent system?


Summary: Inventive step is the critical variable in determining balance between patent costs and patent benefits -- knowledge spillovers from new inventions offset the costs of restraining competition -- spillover benefits -- author argues that for benefits to offset costs the minimum standard of inventiveness must be a contribution to new knowledge -- current test on patentable subject-matter.

Subject: Inventive step

Subject: Innovation (Technological)

Subject: Patentability

SNIPER No.: 2013/01568

Author: Pygall, Alexandra

Title: IP assets


Summary: Intangible and tangible assets -- enterprises have begun to recognise the value of their intangible assets -- trend towards businesses relying far less on physical assets -- enterprises now place significant emphasis on securing, defending and enforcing intellectual property rights -- creating and maintaining the value of intellectual property (IP) -- identify -- protect -- infringement -- calculating value -- current methods -- value fluctuation -- generating value -- licensing -- disposal -- security -- tips for treating IP as a business asset.


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SNIPER No.: 2013/01513

Author: Tessensohn, John A.

Title: IP High Court of Japan rescues TARZAN trade mark in distress


Summary: Intellectual Property High Court of Japan (IPHCJ) invalidated a third party's trade mark registration -- forty four registered trade marks relating to TARZAN in Japan but no trade mark registration in Class 7 covering "robots for plastic molding machines" -- Japan is a strict first to file jurisdiction -- Edgar Rice Burroughs Inc v Star Seiki KK -- "Tarzan" as the title of

Burroughs' novel -- effective period of copyright in Japan of the TARZAN series -- derivative works and licensing agreements -- bad intent to 'misappropriate' the trade mark.

Subject: Trade mark registration--case law

Subject: Trade mark registrability--Japan

Subject: Trade mark use--case law

Subject: Fair use (Trade marks)

SNIPER No.: 2013/01713

Author: Nie, Kevin

Title: "IP is an important commercial asset to Philips"


2013, pp. 24-29.

Summary: Interview with Ruud Peters, Executive Vice President and Chief Intellectual Property

Officer, Koninklijke Philips Electronics -- intellectual property management -- framework of

Philips' IP department -- coordination with other business areas -- importance of intellectual property to businesses -- common IP issues across industry -- benefits of patent licensing -- IP trading marketplaces -- Intellectual Property Exchange International (IPXI) -- Philips' R&D, innovation and IP management strategies in China -- tips for Chinese business working in an international market -- development of Chinese IP industry.

Subject: Peters, Ruud J.--interviews

Subject: Manufacturing and processing industry--interviews

Subject: Intellectual property management--interviews

SNIPER No.: 2013/01591

Author: Bevitt, Chris

Title: IP law toughens up

Source: Managing Intellectual Property. No. 230, June 2013, p. 51.

Summary: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 -- modifications to patent and trade mark law and practice -- will make it more difficult to obtain patents in Australia

-- inventive step requirements are now more stringent -- common general knowledge must now be assessed on a worldwide basis -- sufficiency and usefulness standards have been raised -- changes to the patent opposition process -- genetic and biological material which has been isolated is patentable subject matter -- Government's Advisory Council on Intellectual Property

(ACIP) is reviewing whether the innovative step requirement for innovation patents is set too low

-- review of pharmaceutical patents -- procedural changes for trade mark oppositions -- applicant must lodge a notice of intention to defend the opposition proceedings -- highlights of the Australian Intellectual Property Report 2013 -- copyright.

Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012

Subject: Intellectual property law--reform--Australia

SNIPER No.: 2013/01249

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Author: Pygall, Alexandra

Title: IP licences and insolvent licensors in the life sciences sector


Summary: United Kingdom insolvency procedures -- administration -- liquidation -- company voluntary arrangement (CVA) -- receivership -- features of life sciences licences -- effect of licensor's insolvency -- terms of licence -- compliance with licensor obligations -- sale of licensed intellectual property -- disclaimer / repudiation -- challenge to transactions -- jurisdictional differences -- checklist of UK considerations for a licensee -- before and during entering into the licence -- if the licensor becomes insolvent -- challenging to provide protection to licensees.

Subject: Intellectual property licensing--science and research industry

Subject: Bankruptcy

SNIPER No.: 2013/01382

Author: Matulionyt›, Rita

Title: Iran: in search of a balanced approach to copyright


Summary: Wave of new intellectual property (IP) laws in the Middle East countries -- many have adopted modern copyright laws -- undertaken a range of efforts to enforce them -- prerequisite for World Trade Organization (WTO) membership -- Islamic Republic of Iran (Iran) is intending to join WTO and is updating its IP standards -- acquired an observer status -- pursuing further accession procedures -- new Iranian copyright law -- experience gained by other developing countries -- Iran is in a different situation -- current socio-cultural and legal situation in Iran -- what steps might be needed in order to establish a functioning and balanced copyright system -- copyright and development policies -- what lessons have been learned from it up to now -- current situation of the creative markets and copyright law in Iran -- issues that could be taken into account by Iranian legislators when establishing a better functioning and balanced copyright system.

Subject: Copyright--reform--Iran

Subject: International law

SNIPER No.: 2013/00952

Author: McMahon, Rossa

Title: Irish Patents Office substantially revokes specification for registration which exceeded demonstrable use of the mark


Summary: Nutrichem Diät + pharma GmbH v Compagnie Gervais Danone [2012] IPO 219362 -

- significantly restricted Danone's registration of its well-known ACTIVIA mark -- the variety of products for which the mark was used mostly related to yoghurt and not the wide variety of products in its specification -- revocation of a trade mark registration -- not put to genuine use in

Ireland -- examination into whether Danone could provide evidence of use -- Nutrichem argued that the mark was put to genuine use in Ireland only for yoghurt and tha t, while Danone’s

ACTIVIA range included 36 varieties of yoghurt -- yoghurt was an accurate description for all of them -- good will and brand recognition -- balance needed between drafting a specification with sufficient breadth but without branching out into broad descriptions.

Subject: Trade mark cancellation--manufacturing and processing industry--Ireland

Subject: Trade mark distinctiveness--Ireland

SNIPER No.: 2013/01639

Author: Hess, Christian

Title: Is German trademark law prepared for modern advertising?


-38-


Summary: Need to attract consumers' attention through various forms of advertising that incorporate variations of registered trade marks -- stands in contrast to the general principle of trade mark law, static use -- rights holder must use the trade mark in its registered form -- when fluid trade marks are used -- can enhance the advertising value of a brand -- original registered trade mark must be used -- risk of potential infringer raising the non-use defence in infringement proceedings -- trade mark use in Germany -- exception to the rule -- case law -- protecting fluid marks against infringement.

Subject: Non-traditional marks--Germany

Subject: Marketing--Germany

Subject: Trade mark use--Germany

SNIPER No.: 2013/01510

Author: Daly, Maureen

Title: Is there an entitlement to anonymity?: a European and international analysis


Summary: Balancing the right of privacy against the right to identify an anonymous user involved in illegal activity -- defend and enforce intellectual property rights -- Europe: the legal framework -- Ireland -- England -- France -- Germany -- The Netherlands -- Spain -- United

States -- good faith standard -- prima facie case standard -- summary judgment standard --

Canada -- Norwich orders -- rules of civil procedure -- Israel -- application of the proportionality principle in the context of intellectual property infringement.

Subject: Privacy

Subject: Intellectual property--social aspects

SNIPER No.: 2013/01710

Author: Freeman, Iain

Title: Issues surrounding the use of third-party trade marks in keywords: InterCity Group (NZ)

Ltd v Nakedbus (NZ) Ltd

Source: Internet Law Bulletin. Vol. 16 No. 3, July 2013, pp. 80-81.

Summary: High Court of New Zealand decision -- an interlocutory injunction to restrain the use of a registered trade mark in advertising by a rival bus company -- registered trade mark

INTERCITY -- defendant advertised heavily in electronic format and it used the words "inter city" and "inter-city" as part of the description of the bus service that it provided -- defendant also purchased Google AdWords -- paid advertisements to increase its likelihood of appearing on internet searches -- also a claim that Nakedbus had breached s 89 of the Trade Marks Act 2002

(NZ) on the grounds that the use of the word was identical or confusingly similar to the mark --

Australian position on AdWords.

Subject: Keyword advertising--case law--New Zealand

Subject: Trade mark use--case law--New Zealand


SNIPER No.: 2013/01641

Author: Tarantini, Nicola

Title: The Italian perspective on fluidity


Summary: Companies are beginning to use novel and innovative images and stimuli to capture consumers' attention -- Google's visual modification of its trade mark -- whether changes to a trade mark that do not alter its distinctive character are worthy of protection -- modifications to trade marks are subject to protection -- covered by a range of instruments under Italian law -- national or Community design -- Civil Code -- publication of an IP claim -- recent examples

-39-

SNIPER Bulletin Library, IP Australia demonstrating how fluid trade mark practice and related legal protection doctrine could open the door to considerable success -- is likely to lead to lead to copycat behaviour.

Subject: Non-traditional marks--Italy

Subject: Trade mark owners' rights--Italy

SNIPER No.: 2013/01566

Author: Price, Richard

Title: It's all Greek to us


Summary: Fage UK Ltd & another v Chobani UK Ltd & another -- United Kingdom High Court -- passing-off dispute related to Greek yoghurt -- facts of the case -- arguments about the law -- whether the claimant built up a substantial goodwill attached to the trade name by which they have described their product -- whether the defendant's use of the same, or a similar name, causes or threatens substantial damage to that goodwill -- Fage had succeeded in demonstrating substantial goodwill in Greek yoghurt -- damage had occurred through erosion distinctiveness -- permanent injunction was granted -- costs were awarded to Fage -- Chobani was ordered to make a substantial interim payment towards them.

Subject: Passing-off--case law--United Kingdom

Subject: Expert witnesses

SNIPER No.: 2013/01224

Author: White, Catherine

Title: It's all part of the plan


Summary: Singapore government's "IP Hub Master Plan" report -- lists accepted recommendations proposed by its IP Steering Committee -- competition -- reaction -- interview with Tan Yih San, chief executive officer of the Intellectual Property Office of Singapore (IPOS).

Subject: Tan, Yih San--interviews

Subject: Intellectual property systems--Singapore

SNIPER No.: 2013/01707

Author: Heindl, Sabiene

Title: ITV v TV Catchup

Source: Internet Law Bulletin. Vol. 16 No. 2, June 2013, pp. 51-52.

Summary: ITV Broadcasting Ltd and others v TVCatchup Ltd -- Court of Justice of the

European Union (CJEU) -- TV Catchup operates a website that provides users with "live" streams of free-to-air UK television broadcasts -- copyright allegations -- questions for the CJEU

-- CJEU ruling -- what this means for Australia -- CJEU's ruling similarly prevents third parties from retransmitting broadcasts over the internet without authorisation.

Subject: Television broadcasts--United Kingdom


SNIPER No.: 2013/01363

Author: Takahashi, Michiru

Title: Japan IP High Court relaxes requirements to prove lost profits in patent infringement suits


Summary: Application of a provision in the Japan Patent Act providing for presumption of damage amounts in patent infringement cases -- whether patent holder is required to practice the patented invention in order for Article 102 Paragraph 2 of the Patent Act to be applied -- amount of profits earned by defendant presumed to be the amount of damages sustained by the plaintiff -- Intellectual Property High Court of Japan en banc decision in Sangenic Intl Ltd v.

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Aprica Children's Products Inc -- facts of the case -- analysis of the decision -- implications --

Aprica has appealed the decision to the Supreme Court

Subject: Damages--case law--Japan

Subject: Patent infringement--Japan

SNIPER No.: 2013/01563

Author: Clark, Simon

Title: Keeping tabs


Summary: Court of Justice of the European Union (CJEU) -- Colloseum Holding AG v Levi

Strauss & Co -- possible for a registered trade mark to be 'genuinely used' in the European

Union (EU), if it has become distinct as a result of being used as part of a composite trade mark or in conjunction with another trade mark -- 'genuine use' -- the dispute -- the decision of the

CJEU -- relevance to other proprietors.

Subject: Trade mark use--case law--Europe

Subject: Trade mark registrability--case law--Europe

SNIPER No.: 2013/01594

Author: Bevitt, Chris

Title: Key trade mark cases from 2012


Summary: Memorable year for businesses dealing with parallel importing -- Paul's v Sporte

Leisure -- Paul's v Lonsdale -- Federal Court considered the effect of a breach of territorial restrictions by a licensee when applying a trade mark to goods -- Facton v Toast Sales

2012 -- Facton v Mish Mash Clothing 2012 -- Sanitarium health Food Company v Irrewarra

Sourdough 2012 -- Australia Post v Digital Post Australia 2012 -- importer beware -- recurring issues.

Subject: Parallel importing--case law--Australia

Subject: Trade marks--case law--Australia

SNIPER No.: 2013/01551

Author: Prinsley, Mark

Title: Killer style


Summary: Enterprise and Regulatory Reform Act 2013 (ERRA) -- wide ranging reforms -- changes to copyright law have sections of the creative industries up in arms -- extending the period of copyright for industrially exploited designs -- licensing of "orphan" works -- introduction of a system of collective licensing and changes to the collecting society regime -- impact of the reforms.

Subject: Copyright--reform--United Kingdom

Subject: Copyright terms--United Kingdom

SNIPER No.: 2013/01708

Author: Quek, Jane

Title: The launch of the Trademark Clearinghouse and what it means for your clients


Summary: Internet Corporation for Assigned Names and Numbers (ICANN) launched

Trademark Clearinghouse (TMCH) -- ICAAN's generic toper level domain (gTLD) program -- identical trade marks from different owners may coexist in the TMCH -- key services provided by the TMCH -- Sunrise Service -- application to verify and register trade marks -- Claims Service -- risks lawyers and their clients should know about -- what does "identical match" mean --

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SNIPER Bulletin Library, IP Australia specifications and classes -- notification, not prevention -- timing -- jurisdiction -- managing multiple registrations -- practical steps -- useful to view the TMCH services as mechanisms to mitigate and protect, rather than to entirely prevent intellectual property right infringements.



Subject: Domain name registries

SNIPER No.: 2013/01715

Author: Lin, Zongliang

Title: Litigation strategy for statutory license: an analysis of The Wangs v. Three Gorges

Company, Dasheng Company, Guangzhou Audio & Video Publishing House et al. for copyright infringement dispute


2013, pp. 54-59.

Summary: Copyright statutory licensing -- copyright infringement -- Yakexi musical work --

China -- The Wangs v. Three Gorges Company, Dasheng Company, Guangzhou Audio & Video

Publishing House -- facts of the case -- first instance decision by People's Court of Jiujiang City

-- appeal to Higher People's Court of Jiangxi Province -- retrial by Supreme People's Court -- analysis of the case -- dealing with failure to pay by statutory licensee -- remuneration right is not an exclusive right -- relationship between copyright owner and statutory licensee.

Subject: Musical works--case law--China

Subject: Copyright licensing--case law--China

Subject: Copyright infringement--case law--China

SNIPER No.: 2013/01493

Author: Malkawi, Bashar H.

Title: A long "TRIP" home: how the Berne Convention, TRIPS Agreement and other instruments complement the international copyright system


Summary: History and development of copyright -- development of an international copyright system that takes into consideration the particular needs and developmental objectives of developing countries -- copyright protection in the Berne Convention -- current international agreements protecting copyright with emphasis on TRIPS and selected bilateral free trade agreements -- recent developments in the international protection of copyright through the negotiating and signing of Anti-Counterfeiting Trade Agreement (ACTA) -- economic needs for developed countries who seek strong copyright protection -- development needs for developing countries who seek a lower level of copyright protection -- developing countries should develop new negotiating tactics to be more successful in any future multilateral treaty on copyright.

Subject: Copyright owners' rights--law and legislation--developing countries

Subject: Copyright--treaties

Subject: Copyright--history

SNIPER No.: 2013/01588

Author: Barraclough, Emma

Title: The Madrid protocol comes of age


Summary: Madrid Protocol entered into force in Columbia -- New Zealand and Mexico came online recently -- Protocol will enter into force in India in July -- Rwanda announced it too would join -- prospect of truly international trade mark rights -- further growth is expected -- benefits to trade mark owners -- interview with Chaitanya Prasa, Controller General of Patents, Designs and Trademarks & Registrar of Geographical Indications, India -- World Intellectual Property

-42-


Organisation's (WIPO) Global brand Database -- Latin America held back from joining Madrid -- key to the shift in Latin America -- which states will be next to join? -- Madrid promotes harmonisation -- will Brazil be next to join? -- growth of Madrid Protocol membership.

Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).

Protocols, etc., 1989 June 27

Subject: International trade marks

SNIPER No.: 2013/01544

Author: Fry, Robin, 1955-

Title: Making ground?


Summary: Law Commission recognised the un-reconciled laws in the area of 'groundless threats' -- consulting on possible significant changes -- pre-action letters in the United Kingdom -

- statutory provisions referring to the specific intellectual property (IP) rights -- patents -- trade marks -- United Kingdom Courts have found that even the most oblique approach can constitute a tacit threat -- threats regime in Europe and the United States -- specific IP threats regime has been adopted in other countries.

Subject: Intellectual property abuse

Subject: Intellectual property law--reform

SNIPER No.: 2013/01675

Author: Wild, Joff

Title: The man at the top


Summary: Interview with Benoît Battistelli, President, European Patent Office (EPO) -- creation of unitary patent -- differential fee structure for different types of applicant -- improved relationships between EPO and European national offices -- 'raising the bar' project to increase patent application quality -- rise of anti-patent sentiment in parts of Europe.

Subject:

Battistelli, Benoît--interviews


Subject: Patent searching--Europe

SNIPER No.: 2013/01237

Author: Corstens, Jan

Title: Master of your domain


Summary: Entrance of new top level domains (TLDs) to the web -- new opportunities and new threats -- introduction of the Trademark Clearinghouse (TMCH) -- questions have arisen about the TMCH -- submitting your trademark record in the Clearinghouse -- marks that qualify for

TMCH submission -- information that must be submitted -- what do the TMCH fees cover? -- who qualifies as a trade mark agent? -- identical trade marks in the Clearinghouse -- why enter a mark into the TMCH? -- Uniform Domain-Name Dispute-Resolution Policy (UDRP) -- Uniform

Rapid Suspension (URS) -- any plans for TMCH to protect marks from infringement for existing

TLDs such as .com?



SNIPER No.: 2012/02607

Author: Gotsch, Matthias

Title: Measurement of innovation activities in the knowledge intensive services industry: a trademark approach

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Source: Measurement of innovation activities in the knowledge intensive services industry.

2010.

General Note: Later published in: The Services Industry Journal Vol. 32, No. 13 October 2012, pp. 2167-2184

Summary: Innovation measurement in services is very complex because of the lack of adequate innovation indicators -- new empirical approach -- study exploring the extent to which trade marks are suitable as innovation indicators for knowledge intensive services (KIS) -- used data from the German section of the ‘Community Innovation Survey’ -- survey with 278 participating firms is conducted -- results of the two independent empirical studies demonstrate that a trade mark can be used as an innovation indicator, at least for knowledge-intensive business services (KIBS) and product innovations -- results also illustrate which firm-inside and environmental features explain the use of trade marks as an intellectual property protection measure

Subject: Trade marks


SNIPER No.: 2013/01612

Author: Miguelez, Ernest


Title: Measuring the international mobility of inventors: a new database

Source: WIPO Economic Research Working Paper. No. 8, May 2013.

Summary: Database that maps migratory patterns of inventors -- information extracted from patent applications filed under the Patent Cooperation Treaty -- brain drain -- usefulness and reliability of the underlying data -- overview of inventor migration patterns -- United States exhibits the highest inventor immigration rate, followed by Australia and Canada -- importance of skilled migration.

Subject: Inventors--analysis


SNIPER No.: 2013/01487

Author: Bevilacqua, Theresa M.

Title: Monsanto v Bowman: Supreme court upholds patents holders' rights


Summary: United States Supreme Court decision in Bowman v. Monsanto Co., Case No. 11-

796 -- bought seed from a grain elevator known to contain Monsanto's transgenic seed --

Roundup Ready soyabean -- unanimous ruling expressed strong support for the protection of the intellectual property (IP) involved in agricultural biotechnology -- court rejected farmer's defence -- patent exhaustion not applicable -- narrow decision but significant implications for agricultural biotechnology -- unique concept of biotechnology crops -- under the Court's decision, the rule that patent exhaustion applies only to the item sold -- not to reproductions -- applies fully to patented seeds that naturally self-replicate

Subject: Patent infringement--case law--United States

Subject: Genetic engineering--agriculture industry

SNIPER No.: 2013/01548

Author: Harper, Shona

Title: Music's low note


Summary: European principle of exhaustion of copyright -- enshrined in various pieces of legislation -- reflects the piecemeal nature of copyright protection for different works in European

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SNIPER Bulletin Library, IP Australia legislation -- UsedSoft ruling by the Court of Justice of the European Union (CJEU) -- first-sale doctrine in the United States -- Capital Records v Redigi Inc.

Subject: Copyright exhaustion--case law--Europe

Subject: Copyright exhaustion--culture and entertainment industry--United States

SNIPER No.: 2013/01583

Author: Hatch, David

Title: Myriad case leans towards compromise


Summary: Supreme Court hearing in the United States Myriad case -- a compromise position proposed by the solicitor general may appeal to the justices -- "complementary DNA" or cDNA would be eligible for patent protection -- human DNA would not qualify -- justices seem to be in favour -- strong opposition by critics of Myriad -- other avenues for the court -- previous judicial decisions that could influence the Myriad case -- Diamond v Chakrabarty -- Mayo Collaborative

Services v Prometheus.

Subject: Genes--case law--United States


SNIPER No.: 2013/01372


Title: Myriad ruling causes confusion

Source: Nature. Vol. 498 No. 7454, 20 June 2013, pp. 281-282.

Summary: US Supreme Court's ruling in Myriad that naturally occurring human genes cannot be patented -- mixed reactions to the decision -- medical diagnostics company, Ambrey Genetic, celebrating -- biotechnology industry upset -- grey area between this ruling and Court's second point that patents can be claimed on modified DNA -- confusion over how much modification is enough for a patent claim -- confusion over definition of the term synthetic DNA -- effects of the decision -- lower courts and patent examiners will need to interpret the decision -- biotech companies may use trade secrets instead of patents

Subject: Patenting of life forms--case law--United States


SNIPER No.: 2013/00960

Author: Kirova, Binka

Title: The name of the thing, or an attempt at semiotic and semantic analysis of trade marks


Summary: Signs as trade marks -- the science which studies signs and sign processes is called semiotics -- relationship between signs and the law of trade marks -- Article 4 of Council

Regulation 207/2009 of the Community trade mark -- plan of expression -- plan of contents -- images (icons) -- indicators (indices) -- symbols -- Go Eco -- associated with green, health, freshness, nature -- Vita Fresh -- association with light, vibrant, vital -- Red Bull -- association with power and aggression.


Subject: Trade marks


SNIPER No.: 2013/01704

Author: Paltiel, Minna

Title: Navigating cyberspace: Australian precedent regarding internet liability


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Summary: Internet law decisions -- liability of providers of internet services and facilities -- who is liable -- Google AdWords case -- the ACCC action -- the "mere conduit" issue -- application of the law in cyberspace -- comparison with liability for publishing defamatory material -- recent developments -- iiNet case -- Digital Agenda amendments -- provision of a facility and liability --

Parliament and industry codes -- NRL v Optus -- who made the films -- technology neutral interpretation -- navigating in cyberspace.

Subject: Carriage service providers--liability--Australia

Subject: Copyright--liability--Australia

Subject: Copyright infringement--case law--Australia

SNIPER No.: 2013/01702

Author: Mester, Gabor

Title: Neural precursor cells II: decision of the German Supreme Court (Bundesgerichtshof) X

ZR 58/07 (Brüstle/Greenpeace)


Summary: German Supreme Court applies for the first time the Court of Justice of the

European Union (CJEU) decision C-34/10 -- concerning the definition of human embryos and the patentability of their use -- Dr 0liver Brüstle v Green peace e. V. -- isolated neural precursor cells and methods for generating them from embryonic stem cells -- narrow interpretation of

'use' as use entailing destruction holds the promise that 'second generation' stem cell-based inventions that no longer require the destruction of embryos will be amenable to patent protection in the EU -- stem cells obtained from a human blastocyst are not to be regarded as embryos themselves.

Subject: Research on life forms--case law--Germany

Subject: Patenting of life forms--case law--Germany

SNIPER No.: 2013/01640

Author: Bakhru, Rachna

Title: New forms of branding: the sky's the limit?


Summary: Rights holders experimenting with novel ways to promote their products and services -- marketing campaigns incorporating catchy messages and slogans -- 'fluid marks' -- representation is not static and is subject to change -- potential legal issues and risks surround such deviation from an original mark -- factors that rights holders must take into consideration in order to protect their trade marks in India -- possible legal implications of using fluid marks -- existing legal position and judicial trends in India with respect to the protection and enforcement of slogan marks.

Subject: Non-traditional marks--India

Subject: Risk--management--India

SNIPER No.: 2013/01535


Title: New horizons


Summary: Interview with International Trademark Association (INTA) president, Toe Su Aung -- importance of globalisation for INTA and the intellectual property (IP) community -- fostering relationships with other IP offices -- IP protection in countries where counterfeiting is rife and brand owners' rights are threatened -- China -- Singapore's IP Hub Master Plan -- copycat own labels -- argument that tobacco plain packaging will increase counterfeits -- government understanding of IP -- hostile public perception of IP -- "European Observatory on Infringements of IP Rights" -- INTA's goals for 2013 -- challenges -- 3D printing.

-46-


Subject: Aung, Toe Su--interviews

Subject: Intellectual property offices

SNIPER No.: 2013/01607

Author: Jolly, Adam

Title: New horizons on university IP


Summary: Generation of higher levels of innovation and inspire creations of high-growth ventures in Europe -- technology transfer offices (TTO) -- commercialisation of research -- collaboration intellectual partnerships -- developing IP policies -- universities to operate as significant commercial forces in their own right -- culture of disclosure -- incentives for improving the rate of disclosure -- measuring impact -- focus for TTOs switching from one-time patent sales to strategic collaboration with industry -- IP capability in Europe.

Subject: Technology transfer--Europe

Subject: Business collaboration--Europe

SNIPER No.: 2013/01524

Author: Patel, Arvin

Title: The new IP strategy agenda


Summary: Why intellectual property is the key to success in the knowledge economy -- IP is innovation in business -- IP hierarchy of needs -- five levels of competency -- action plan assessing threats and opportunities -- rise of the IP dashboard -- five big IP threats -- right time for IP -- buy, license and litigate -- research methodology -- Gartner's hype cycle of entertainment technologies -- the CEO's secret weapon -- IP considered too valuable to be outsourced to a patent attorney or outside law firm.



SNIPER No.: 2013/01255

Author: Hanswirth, Dori Ann

Title: No free lunch


Summary: The Associated Press v Meltwater US Holdings, Inc and others -- US District Court -

- subscription-based internet media monitoring service Meltwater News committed copyright infringement by selling reports containing snippets of AP articles without a licence -- what is an internet media monitoring service? -- Meltwater's fair use defence -- evidence relied on by the court -- copyright protection of creative expression and not underlying facts -- amount and nature of copying -- Meltwater's practice of copying AP ledes weighed strongly against fair use.

Subject: Fair use (Copyright)--culture and entertainment industry--United States


SNIPER No.: 2013/01257

Author: Hoole, Chris

Title: No need to yell


Summary: Yell Ltd v Yelp! Inc -- short word marks -- United Kingdom Intellectual Property

Office -- background and the hearing officer's decision -- the hearing officer's decision -- the appeal -- the standard of review -- Yell's application to adduce fresh evidence -- the appeal decision

Subject: Trade mark opposition--case law--United Kingdom

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Subject: Trade mark registration--case law--United Kingdom

SNIPER No.: 2013/01254

Author: Dove, Ronald G.

Title: Not a textbook case


Summary: Supap Kirtsaeng v John Wiley & Sons, Inc. -- United States Supreme Court -- whether the US Copyright Act's first-sale doctrine applies to textbooks and other copyrighted works made abroad -- re-selling cheap foreign textbooks for a profit -- the global reach of the first-sale doctrine -- the future of first sale -- strategies for combating grey market importation.

Subject: Copyright exhaustion--case law--United States


SNIPER No.: 2013/01525

Author: Papst, Daniel G.

Title: NPEs and patent aggregators: new, complementary business models for modern IP markets


Summary: Offensive patent aggregation (OPA) strategies -- OPA and non-practicing entity

(NPE) business model -- IP market inefficiencies -- issue of enforcement -- strengthening demand within IP markets -- defensive patent aggregators (DPA), patent pools and patent aggregators -- a countermeasure to OPA and NPEs -- re-establishing symmetry -- reviews selected specialised companies that are using business models derived from these strategies -- what value these firms create, how the value is created and interpretation of findings.



SNIPER No.: 2013/01514

Author: Lim, Yee Fen

Title: Nuts about Nutella: a loss for coffee and chocolate lovers?


Summary: Singapore Court of Appeal (CA) -- decision in Sarika Connoisseur Cafe Pte Ltd v

Ferrero SpA [2012] SGCA -- hot chocolate coffee beverage under the name Nutello -- Nutella one of the main ingredients -- described on the menu as "Espresso with lashings of nutella, perfect for cocoa lovers" -- trade mark infringement and passing-off -- whether the sign is similar to the word mark -- whether the goods are similar -- likelihood of confusion.

Subject: Trade mark infringement--Singapore

Subject: Famous trade marks--Singapore

SNIPER No.: 2013/01625

Author: Gioconda, Joseph C.

Title: NYC law goes after purchasers of counterfeit goods


Summary: New York City Councilwoman Margaret Chin -- introduced legislation that would make it a criminal offence to purchase counterfeit goods knowingly within city limits -- fine and imprisonment -- damage caused by counterfeit goods -- goods do not comply with health, safety or labelling regulations -- counterfeiting directly funds an underground economy -- threatens jobs and economic growth -- directly and indirectly harms brand owners -- exclusivity -- counterfeiting results in extra enforcement costs for the brand owner -- previous anticounterfeiting efforts -- why counterfeiting persists -- get-out clause for genuine mistakes -- likely effects of new legislation.

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Subject: Counterfeiting--United States

Subject: Intellectual property law--reform--United States

SNIPER No.: 2013/01310

Author: Crowne-Mohammed, Emir Aly

Title: An obvious 'comity of errors': Court admonishes motives of Applications Judge but agrees with the result


Summary: Apotex Inc v Allergan Inc, 2012 FCA 308, Federal Court of Appeal, Canada, 23

November 2012 -- upheld a prohibition order sought by Allergan preventing the Minister of

Health from issuing a notice of compliance to Apotex -- Applications Judge granted prohibition order to further his desire to clarify the jurisprudence -- patented medicinal drug deemed nonobvious in one judgment, but later deemed to be obvious in another judgment from the same court -- Doctrine of Comity.

Subject: Inventive step--case law--Canada

Subject: Patent litigation--Canada

SNIPER No.: 2013/01545

Author: Kuppers, Martin Arthur

Title: On the origin of copyright trolls


Summary: Copyright trolls -- obtain limited ownership interests in works in copyright and enforce such against as many infringers as possible -- do not engage in the creation, distribution or use of creative expression -- core elements of Harry Wall's business -- current business models -- United States' 1976 Copyright Act -- statutory damages -- how a copyright troll operates -- aspects relating to a contemporary specimen -- AF Holdings and Ingenuity 13

'clients' of Prenda Law -- action points for rights holders.

Subject: Copyright litigation--United States


SNIPER No.: 2013/01362

Author: Tessensohn, John A.

Title: Online counterfeiting trends and anti-counterfeiting measures in Japan


Summary: Statistics on counterfeit goods seized by Japanese authorities -- record value of counterfeits seized by Japanese customs in 2012 -- handbags and apparel are the most popular counterfeit goods seized -- three biggest sources of counterfeits are China, Hong Kong and

South Korea -- most seizures related to postal mail as opposed to cargo shipments -- most pirated goods now sold on the internet -- anti-counterfeiting statistics from Japanese police -- ways to stem flow of counterfeit goods -- brand owners need to work closely with Japanese customs to stem flow of counterfeit goods

Subject: Counterfeiting--trends--Japan

Subject: Customs--Japan

SNIPER No.: 2013/01543

Author: Price, Richard

Title: Open for business


Summary: Unified Patent Court (UPC) -- Non-practicing entities (NPEs) will see the court as an opportunity to make advances into Europe -- holders of European Patents will no longer have to manage separate infringement procedures country-by-country -- will generally be able to bring a

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SNIPER Bulletin Library, IP Australia single case to the UPC in order to obtain a judgment that applies throughout the EU -- far fewer non-practicing entities litigating than in the United States -- UPC is an open invitation to the trolls

-- threat of an injunction that applies across the European Union is a powerful weapon to wield -

- current situation -- forum shopping -- tight deadlines to speed up administration of justice -- defences against the trolls -- whether these safeguards will be sufficient to repel the unwanted attentions of patent trolls

Subject: Patent trolls--Europe

Subject: Patent litigation--Europe

SNIPER No.: 2013/00961

Author: Rosati, Eleonora

Title: The Orphan Works Directive, or throwing a stone and hiding the hand


Summary: European Commissions Directive 2012/28 certain permitted uses of orphan works adopted October 2012 -- intends to provide a legal framework to facilitate the digitisation and dissemination of orphan works -- works and other subject matter which are protected by copyright or related rights and for which no right holder is identified or for which the right holder, even if identified, has not been located -- contribute to the key actions of the Digital Agenda for

Europe -- Member States faced with task of adopting implementing legislation -- aimed for easier and cross border copyright licensing -- Commission's top priority -- final text of the

Directive -- role of Court of Justice of the European Union to fill the blanks left by EU legislation.

Subject: European Parliament. Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights

Subject: Copyright owners' rights--Europe

Subject: Copyright--reform--Europe


SNIPER No.: 2013/01357

Author: Mu, Ying

Title: Overview of symposium on difficult issues in adjudication of unfair competition cases


Summary: Fundamental theory of the Unfair Competition Law -- application of principled provisions of Article 2 of the Unfair Competition Law -- protection of commercial signs and trade secrets under the Unfair Competition Law -- relationship between trade secrets and prohibition of employees from joining competitor's businesses -- regulation of unfair competition in the forms of false advertisements, goodwill tarnishment and comparative advertisements -- civil liabilities on unfair competition activities -- relationship between unfair competition law and antitrust law.

Subject: China. Anti-Monopoly Law 2007

Subject: Competition law--China

SNIPER No.: 2013/01500

Author: Zhang, Wenhui

Title: An overview of technology transfer including patent licences and know-how licences in

China


Summary: Concept of technology transfer -- overview of technology transfer in China from both the law and the practice perspective -- two major forms of technology transfer -- patent licence -- know-how licence -- issues on technology transfer that are faced -- case study and analysis -- suggestions to better protect the rights and benefits as a licensor.

Subject: Technology transfer--case studies--China

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Subject: Patent licensing--China

SNIPER No.: 2013/01434

Author: Wilkof, Neil J.

Title: Paradoxes and intellectual property law

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, p. 423.

Summary: Contradictory features of various intellectual property rights -- a mark can become generic by either originally being a common name itself or by becoming so after originally being a distinctive identifier of source -- aspirin -- linoleum -- 'The Dead Sea Scrolls Case' -- merger doctrine not recognised in Israel -- paradoxical that the more accurate the reconstruction of the text the more likely that copyright infringement applies.

Subject: Generic use

Subject: Copyright--Israel

SNIPER No.: 2013/01644

Author: Sawdy, Colin

Title: Passing fad or trend for the future?


Summary: Purpose of fluid trade marks -- risks of using fluid marks -- advantages of fluid marks

-- protecting fluid marks -- United Kingdom (UK) registration procedure -- potential for revocation for non-use -- UK registered designs -- protection under copyright law.

Subject: Non-traditional marks--United Kingdom

Subject: Trade mark registration--United Kingdom

SNIPER No.: 2013/01718

Author: Goddar, Heinz

Title: Patent litigation in Germany: an introduction (part 2)


2013, pp. 74-76.

General Note: Second article in a series of two.

Summary: Patent litigation -- Germany -- nullity proceedings -- plaintiff and reasons to sue -- writ of claims -- course of proceedings -- oral proceedings -- time schedule for Federal Patent

Court (FPC) judgment -- appeal in nullity proceedings -- appeal proceedings before Federal

Court of Justice (FSC) -- interplay between infringement and nullity -- guidelines for patent owners undertaking German patent litigation.

Subject: Patent litigation--Germany

Subject: Legal procedure--Germany

SNIPER No.: 2013/01313

Author: Ventose, Eddy D. (Eddy David), 1976-

Title: Patent protection for diagnostic methods in the United

States: further forays into patent-eligibility


Summary: Perkinelmer Inc and NTD Laboratories Inc v Intema Limited (20 November 2012)

(Fed Cir 2012) -- United States Court of Appeals for the Federal Circuit has determined whether a claim for a method of diagnosis for Down's syndrome was patentable under section 101 of the

Patents Act -- medical method patents -- patent protection for medical and diagnostic methods in the United States -- 'measuring' steps -- additional steps must be sufficient to transform the nature of the claim in a way that amounts to an inventive application



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SNIPER No.: 2013/01546

Author: Amster, John A.

Title: The patent troll toll


Summary: Cisco Systems spending more than $50 million per year fighting patent infringement litigations brought by non-practising entities (NPEs) -- patent troll business model -- key trends that indicate the NPE tax on innovation is here to stay and likely to keep growing -- economics of a typical NPE patent monetisation campaign -- goal for operating companies -- efforts to address the problem legislatively -- key to reducing the tax on innovation is establishing more objective market mechanisms to make the exchange of patent value more efficient -- make the patent market more transparent.


Subject: Patent litigation--United States

SNIPER No.: 2013/01531

Author: Perdue, Glenn

Title: Patent valuation standards in the United States: applying existing standards and terminology to a developing field of practice


Summary: Valuation provider standards -- valuation credentials -- valuation and purpose and standards -- The Appraisal Foundation -- Financial Accounting Standards Board -- taxation -- buying and selling -- investing and financing -- cost-based approaches -- standard of value -- premise of value -- royal determination -- valuation methods based on patent quality -- value in exchange as part of a forced liquidation -- fair market value -- royalty determination.

Subject: Damages--United States

Subject: Patent infringement--United States

SNIPER No.: 2013/01603

Author: Aumand, Livia

Title: Patentability of biologics in Canada: beyond patentable subject matter

Source: Pharmaceutical Patent Analyst. Vol. 2 No. 4, July 2013, pp. 431-433.

Summary: Canadian courts yet to deal with the patentability of biologicals beyond the question of which biologics are patentable subject matter -- recent Canadian case law on utility -- AZT

'promise of the patent' and biologics -- sound prediction and biologics -- suggests sound prediction doctrines will be raised in future Canadian court proceedings with respect to biologics patents -- disclosure requirement -- approach of the Federal Court in Eli Lilly Canada Inc. v.

Novopharm Li -- anticancer drug imatinib -- distinguished the 'promised' utility of a compound claim from the 'promised' utility of a use claim.

Subject: Pharmaceuticals--case law--Canada

Subject: Patent disclosure--case law--Canada

Subject: Patent utility--case law--Canada

SNIPER No.: 2013/01533

Author: Rotundo Zocco, Carmela

Title: Plain packaging: a growing threat to trademark rights


Summary: Laws and regulations requiring that cigarettes be sold in standard sized packs without any stylized trade marks, logos, colours -- Australia the only country to have adopted plain packaging -- Tobacco Plain Packaging Act 2011 -- challenges by the tobacco industry -- litigation in the Australia domestic courts -- potential EU implications -- international

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SNIPER Bulletin Library, IP Australia repercussions -- opinions of the intellectual property associations -- INTA, ECTA, MARQUES,

ITMA, ASIPI AND AIPPI -- potential impact on other industries.

Subject: Trade dress

Subject: Trade mark owners' rights

Subject: Trade mark use

SNIPER No.: 2013/01256

Author: Ballard, Tony

Title: Playing catch up


Summary: ITV Broadcasting Ltd and others v TVCatchup Ltd -- Court of Justice of the

European Union (CJEU) -- the ITV case -- Information Society Directive -- communication to the public (CTTP) -- distribution to the public by sale or otherwise (DTPS) -- InfoSoc Directive requires member states to provide for three rights -- reproduction right, CTTP right and DTPS right -- the Directive protects works against copying on the one hand and distribution on the other.

Subject: Copyright--interpretation--Europe

Subject: Copyright--case law--Europe

SNIPER No.: 2013/01536


Title: Porn trolling in the dock


Summary: Copyright troll -- Prenda Law, suing people for illegally downloading porn movies -- may face a criminal probe after a federal judge fined it more than $81,000 for its activities --

Prenda targeted thousands of anonymous defendants who downloaded a single copyrighted porn movie from the peer-to-peer filing-sharing network BitTorrent -- used the federal courts to secure quick settlements -- the lawyers abused the legal system in suing people too embarrassed to defend themselves -- United Kingdom copyright case involving ACS: Law.


Subject: Fraud--business and professional services industry

SNIPER No.: 2013/01606

Author: Carson, Patricia A.

Title: Post-Therasense inequitable conduct: a pharmaceutical perspective


Summary: Inequitable conduct defence in US patent law -- policies behind inequitable conduct

-- to reform or not reform -- resistance to change -- America Invents Act -- post Therasense effects in the US courts -- rejection of the defence -- Pozen, Inc. v. Par Pharmaceutical, Inc. --

Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. -- Schering Corp. v. Mylan Pharmaceuticals, Inc.

-- Hospira, Inc. v. Sandoz Inc. -- Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA,

Inc. -- Galderma Laboratories, L.P. v. Tolmar, Inc. -- disposal through other procedural mechanisms -- successful inequitable conduct allegations -- effect on appeals -- continued development from the Federal Circuit -- judicial and legislative change.


Subject: Patentability--reform--United States

Subject: Legal procedure--reform--United States

SNIPER No.: 2013/01571

Author: Doctrow, Michael A.

Title: Price is right

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Summary: Best practices for cost-effectively maintaining an international intellectual property

(IP) portfolio -- identifying the IP portfolio -- developing processes and procedures for clearing and protecting new IP -- geographic scope of protection -- staffing can represent one of the most significant costs associated with IP development, maintenance and enforcement -- whether to in-source or outsource legal functions for IP -- costs of outside counsel -- IP clearance and protection.



SNIPER No.: 2013/01251

Author: Mehra, Samta

Title: The price of fame


Summary: Genericide -- mark starts representing the entire product category -- examples of famous marks which might face such a threat -- when does a trade mark become generic? --

Indian context -- loss of trade mark character -- aggressive advertisement and marketing --

"naked licensing" -- constant development of linguistic skills bending towards fashionable adjustments of words -- trade marks for goods that are patented are susceptible to becoming generic once patent protection ends -- protective measures -- Xerox, an Indian case study.

Subject: Generic use--India

Subject: Trade mark enforcement--India

SNIPER No.: 2013/01490

Author: Quintais, João Pedro

Title: Proposal for a Directive on collective rights management and (some) multi-territorial licensing


Summary: Brief descriptive analysis of the recent proposal from the European Commission -- background to the Proposal -- proposal's main provisions -- collective management organisations (CMOs) -- special focus on those establishing a governance and transparency framework for CMOs -- multi-territorial licensing (MTL) for online uses of musical works -- enforcement measures.

Subject: Copyright licensing societies--Europe

Subject: Musical works--Europe

Subject: Copyright licensing--law and legislation--Europe

SNIPER No.: 2013/01242

Author: Graham, Michael R., 1952-

Title: Protecting copyrighted works in the mobile app space


Summary: New threat to content creators' ability to control and profit from the online use of their works -- use of and linking to unlicensed copyrighted works by smartphone apps -- explosive growth in the smartphone application market -- substantial threat to the rights of content developers -- protecting against app infringement of copyright -- identify and secure rights -- use digital tags to identify protected works -- develop application licensing programmes -- monitor third party apps -- identify infringers and application sources -- coordinate and execute takedowns and challenge efforts -- confirm compliance.


Subject: Copyright infringement

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SNIPER No.: 2013/01699

Author: Cook, Trevor M.

Title: Protection for orphan medicinal products in the EU and controversies that have arisen under the EU regime


Summary: Granting patents for orphan medicinal products in the EU -- orphan medicinal products regime may in practice provide much more extensive de facto exclusivity than regulatory data protection -- balancing incentive regime drug discovery where the traditional incentives of patents, and possibly even regulatory data protection are proving inadequate -- scope to secure exclusivity for a new indication of an old product -- expression "similar products" given broad interpretation.

Subject: Pharmaceutical manufacturing--Europe

Subject: Data exclusivity--Europe

SNIPER No.: 2013/01501

Author: Savitsky, Pavel

Title: Protection of product appearance in Russia


Summary: Design rights in Russia -- design patent applications -- legal framework for the protection of product appearance -- practical observations regarding the protection of product appearance on the Russian market -- scope of protection -- protected subject-matter -- criteria for protection -- invalidity claims and defences -- custom border measures -- Russian regulatory issues of design protection as compared with the regulatory situation in the European Union.

Subject: Industrial design rights--Russia

Subject: Industrial design systems--Russia

Subject: Industrial designs--law and legislation--Europe

SNIPER No.: 2013/01311

Author:

Tálas, József

Title: Public interest in pharmaceutical preliminary injunctions in Hungary


Summary: Case Nos 3.P.23948/2011, 8.Pkf.26503/2011 and 8.Pkf.25635/2012, Metropolitan

Court and Appeal Court, Hungary -- Metropolitan Court and Appeal Court have rejected a request for preliminary injunction -- pharmaceutical patent case -- grounds of protecting the interests of patients taking the infringing medicine -- court will have a broad scope within which to exercise its discretion -- interests of third parties may not adversely influence the rights of the patent proprietors.

Subject: Injunctions--Hungary

Subject: Pharmaceutical industry--Hungary

SNIPER No.: 2013/00957

Author: Smyth, Darren

Title: Publicity orders in intellectual property cases: when are they granted and how must a party comply?


Summary: Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430, Court of Appeal for England and Wales, 9 November 2012 -- Samsung and Apple concerning tablet computers, a publicity order has been granted for the first time in the UK in an intellectual property case -- ordering the unsuccessful party to publish the judgment of the court -- in light of Apple ’s subsequent conduct -- Court of Appeal has issued a further judgment which clarifies how a party must comply with such an order -- serves to act as a supplementary deterrent to future

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SNIPER Bulletin Library, IP Australia infringers -- contribute to the awareness of the public at large -- in the case of non-infringement if it serves to dispel commercial uncertainty.

Subject: Industrial designs--case law--United Kingdom

Subject: Intellectual property infringement--United Kingdom

SNIPER No.: 2013/01234

Author: Dunn, Heather Angelina

Title: Question mark


Summary: Standards bodies -- develop criteria for products or services provided by others -- devise instructional materials -- if a standard is met, the standards body licenses a mark to the product or service provider to indicate compliance -- what kind of mark it should establish and license to others? -- trade mark and certification mark regimes are different -- United States

Patent and Trademark Office (USPTO) definitions -- advantages and disadvantages of trade marks -- advantages and disadvantages of certification marks -- making the choice.

Subject: Certification trade marks

Subject: Standards (Technical)

SNIPER No.: 2013/01592

Author: Wright, Jon

Title: Quicker, simpler protection?


Summary: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 -- raising the patentability requirements of the standard patent system -- inventive step requirement -- innovation patent system escaped changes -- purpose of the innovation patent system -- no requirement for the invention to involve an inventive step -- innovative step requirement -- gap between inventive step and innovative step has widened significantly -- attractive prospect for applicants whose inventions are now unlikely to meet the more stringent inventive step requirements -- case law -- Delnorth v Durapost -- Delnorth v Commissioner of Patents --

Dynamite Games v Aruze Gaming Australia -- innovation patent system concerns -- review of the innovation patent system -- "Innovation Patents: Raising the Step" -- tougher rules for innovation patents?

Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012

Subject: Minor patents--reform--Australia

SNIPER No.: 2013/01072

Author: Blumenröder, Ulrich

Title: Reasons to be cheerful: the case for the Unitary Patent


Summary: Cheaper protection for rights holders -- new litigation scheme -- theories discussed -

- high quality of judges -- bifurcation is an overrated issue -- time -- no notable impact of patent trolls -- cost -- popularity of the system


Subject: Patent processing--Europe

SNIPER No.: 2013/01534

Author: Paul, John C.

Title: Recent U.S. court decisions and developments affecting licensing


Summary: Patent licence agreements -- decisions in the United

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States -- Already, LLC v. Nike, Inc -- trade mark invalidity claim -- Arkema Inc. v. Honeywell

International, Inc., -- indirectly infringe patents -- Intel Corporation. v. Negotiated Data Solutions,

Inc. -- reissue patents are treated as licensed patents absent explicit exclusion -- negotiated data solutions decision -- Kirtsaeng v. John Wiley & Sons, Inc. U.S. -- Supreme Court holds that books printed and sold abroad may be freely resold in the U.S. because the copyrights are exhausted under the first-sale doctrine -- Presidio Components, Inc. v. American Technical

Ceramics Corporation -- a lost-profits award and permanent injunction may be available when an infringing product directly competes with the patent owner's non-patented products --

Technology Licensing Corporation v. JVC Americas Corporation -- licensee's former subsidiary retains a licence because the licence extends to entities who were subsidiaries as of the effective date of the Agreement.

Subject: Intellectual property licensing--United States

Subject: Legal procedure--United States

Subject: Damages--United States

SNIPER No.: 2013/01712

Author: Zhang, Anne

Title: The recovery of the global music industry, await Chinese digital music


2013, pp. 20-22.

Summary: Digital music and the music industry -- China -- 2013 IFPI Digital Music Report -- digital music driving industry growth -- use of social media by artist and recording companies -- small Chinese digital music presence -- effects of piracy on Chinese music industry -- need to find methods for blocking electronic copyright infringement -- maturing electronic commerce channels.

Subject: Musical works--China

Subject: Electronic copyright--culture and entertainment industry--China

Subject: Piracy--culture and entertainment industry--China

SNIPER No.: 2013/01380

Author: Gravells, N. P.

Title: Reporter's copyright and sound recordings: a reply to Professor Derclaye


General Note: See Professor Derclay's article: 2013/00705

Summary: Professor Derclaye's argument prompts three comments -- the inclusion of a written record within the concept of sound recording seems counter-intuitive -- it is difficult to see how its inclusion can be supported by the wording of ss.3(3) and 5A of the 1988 Act -- for those reasons the present writer and other commentators have neither accepted the argument nor felt the need expressly to explain why a written record does not constitute a sound recording -- facts of Walter v Lane.

Subject: Copyright--culture and entertainment industry

Subject: Sound recordings

SNIPER No.: 2012/02609

Author: Christie, Andrew, LL. M., Ph. D.

Added author: Intellectual Property Research Institute of Australia

Title: Review of pharmaceutical patent extension and springboarding provisions in various jurisdictions: final report to the Commonwealth Department of Industry, Tourism and Resources

Source: Review of Pharmaceutical Patent Extension and Springboarding Provisions in Various

Jurisdictions. 6 November 2002

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Summary: Comparison of pharmaceutical patent extension provisions in United States,

European Union and Australia -- scope and length of extensions -- empirical data on patent term for the United States, European Union, United Kingdom and Australia -- patent expiry dates -- length of patent extension -- filing and grant dates -- regulatory approval -- reasons for differences in patent expiry dates -- future prospects for closing the gap between patent expiry dates among countries -- other methods for extending market exclusivity -- review of springboarding -- Australian government considering a proposal to revise the Patents Act to allow manufacture for export during the extension period -- allow springboarding on all pharmaceutical patents for developmental and testing activities needed to obtain regulatory approval

Subject: Patent extension--pharmaceutical industry

Subject: Patent terms

SNIPER No.: 2013/01616

Author: Gadomsky, Dmytro

Title: Right to privacy and cybercrime investigation


69.

Summary: Rapid development of information and communication technologies -- threats to welfare of individuals -- protection of legitimate rights and freedoms of individuals -- keeping the private status of information -- right to privacy -- cybercrime -- computers serve as objects, subjects, tools and symbols of cybercrime -- provisions of various conventions.

Subject: Privacy

Subject: Cybersquatting

SNIPER No.: 2013/00001

Author: Grosse Ruse-Khan, Henning, 1974-

Title: The role of TRIPS in a fragmented IP world


2012, pp. 881-884.

Summary: Provisions on IP protection in free trade agreements (FTAs) that go beyond the standards of the WTO TRIPS Agreement (TRIPS-plus) -- created fragmented international IP system -- three areas where TRIPS goes beyond setting minimum standards and functions as a regulatory framework that affects ability of states to introduce additional IP protection -- TRIPS-

Plus IP protection may not "contravene" TRIPS provisions -- TRIPS flexibilities are essential for the object and purpose of TRIPS -- TRIPS functions as a general interpretative framework for

FTAs -- significant role for TRIPS in a fragmented world of bilateral and regional agreements


Subject: Intellectual property rights--treaties

Subject: Free trade--treaties

SNIPER No.: 2013/01539

Author: Dunn, Elizabeth

Title: Royal seal of approval


Summary: "The Royal Foundation of the Duke and Duchess of Cambridge and Prince Harry" -- engaged in a programme of international trade mark protection -- Community trademark (CTM) registration -- main activities of the foundation are those of fundraising and education -- foundation might decide to produce t-shirts for one of its events -- how the Duchess of

Cambridge can prevent her name and image from being exploited by others -- special provisions in the Trade Marks Act 1994 to protect the royal family -- actions the Duchess could

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SNIPER Bulletin Library, IP Australia take without personal registered rights -- action for passing off -- position of "ordinary" celebrities

-- registering their own names as trade marks.

Subject: Personality rights--United Kingdom

Subject: Trade mark registration--United Kingdom

SNIPER No.: 2013/01567

Author: Trenton, Anthony

Title: Saying it with flowers, but more loudly


Summary: Interflora Inc & another v Marks & Spencer Plc -- England and Wales Court of

Appeal -- decision of the Court of Appeal relating to survey evidence -- history of the dispute -- the facts -- first instance decision -- Court of Appeal decision -- consequences of the decision.

Subject: Keyword advertising--case law--United Kingdom

Subject: Evidence--United Kingdom

SNIPER No.: 2013/01323

Author: Buchan, Robert

Title: Scotland's new regime for effective intellectual property dispute resolution


Summary: Reforms to the Scottish Civil Court system -- Scotland on the UK IP map -- new rules -- significantly earlier active case management -- purpose of and powers available at the preliminary hearing -- further case management at the procedural hearing -- swifter resolution and cutting down trial duration -- expert evidence -- more flexible approach to written pleadings -

- repercussions of non-compliance -- new regime set to benefit a large number and variety of local Scottish businesses which are IP rich -- those involved in the oil and gas, renewable energy and life science sectors -- all IP owners with rights and interests to protect in Scotland.

Subject: Dispute resolution--Scotland

Subject: Patent systems--Scotland

SNIPER No.: 2013/01349

Author: Jiao, Yan

Title: Scrutiny of "general knowledge known to the public" in the sense of the patent law


Summary: Concept of general knowledge known to the public -- form of general knowledge known to the public -- adduction of evidence to prove, and determination of -- Guidelines for

Patent Examination in China have clear provisions regarding the meaning of, and the burden of proof of general knowledge known to the public.

Subject: Patent validity--China

Subject: Inventive step--China

SNIPER No.: 2013/01261

Author: Durden, Jayne

Title: Searching question


Summary: Technology has brought major improvements in trade mark practices and processes

-- effective trade mark search and watching -- no substitute for the human touch -- local knowledge and expertise -- foreign language proficiency -- deciding how and where to search -- trade mark registers -- online databases -- comprehensive search by a third-party search provider -- putting together a search strategy -- steps and decisions -- watching for infringement

-- reacting swiftly to protect your trade mark.

Subject: Trade mark searching

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SNIPER No.: 2013/01425

Author: Podszun, Rupprecht, 1976-

Title: Searching the future of newspapers: with a little help from Google and IP law?


May 2013, pp. 259-262.

Summary: Intellectual property in the digital age -- new business model needed for newspaper companies -- declining profits -- use of snippets -- small extracts from newspapers on websites -

- done particularly by Google -- making Google and others pay for snippets -- Paperboy case in

Germany -- Infopaq case in Europe -- German parliament's decision to introduce a neighbouring right for newspaper publishers in the German Copyright Act -- solution to the snippets issue in

France -- Google paid into a "Digital Publishing Innovation Fund" to facilitate transition of newspapers to online

Subject: Copyright infringement--culture and entertainment industry--Europe

Subject: Neighbouring rights--Germany

SNIPER No.: 2013/01226


Title: Second-hand MP3s


Summary: Ability to sell used goods -- cannot resell purely digital goods -- ReGigi tried to change this -- equipped consumers with the ability to sell music they bought but didn't want any more -- Capitol Records sued ReDigi in the United States, alleging copyright infringement -- first-sale doctrine -- judge made it clear that first sale doctrine does not apply -- reproduction has occurred -- question of new versus old is at the heart of the debate.

Subject: Copyright exhaustion

Subject: Copyright infringement--case law

SNIPER No.: 2013/01557

Author: Bennett, Simon

Title: The shape of things to come


Summary: Trade marks -- benefits -- brands try to take advantage by pushing the boundaries of what can be registrable -- reasons for the growth of "exotic" trade marks -- Court of Justice of the European Union (CJEU) -- no special approach to 3D shape marks and or colour marks --

Court's view that consumers do not generally recognise the shape or colours of products as being an indicator of their commercial origin -- exotic trade marks have been rejected by Office for Harmonization in the Internal Market (OHIM) -- Bottega Veneta -- tried to register the shape of its handbags as a Community trade mark -- case rested on acquired distinctiveness -- Kit Kat case -- lessons from the Bottega Veneta case.

Subject: Trade mark registrability--Europe

Subject: Non-traditional marks--case law--Europe

SNIPER No.: 2013/01371

Author: Macilwain, Colin

Title: Sharing information is preferable to patenting

Source: Nature. Vol. 498 No. 7454, 20 June 2013, p. 273.

Summary: US Supreme Court ruling on gene patents -- boost to efforts to increase the free exchange of scientific information -- three global developments showing trend towards the free sharing of scientific information and open innovation -- collaborative approach to research --

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India, Germany, Brazil and China as powerful nations -- less committed to patent protection than the United States -- rise of open innovation movement -- open access policies of

ResearchGate and Wellcome Trust -- dismisses arguments that patent protection needed in biotechnology and pharmaceutical industries -- models of innovation need to reflect interests of the public who are paying for the research, diagnostics and medicine


Subject: Science and research industry


SNIPER No.: 2013/01436


Title: Shopping cart patents held invalid, a key judgment for e-commerce


427.

Summary: U.S Court of Appeals reverses earlier judgment and finds Soverain Software ecommerce patents invalid -- Soverain Software LLC v Newegg Inc -- earlier actions for infringement by Soverain against online retailers -- online retailers found liable for infringement and ordered to pay damages -- lawsuit settled with payment -- most defendants took licences to the patents -- patents describe a network-based sale system -- Newegg argued that patents invalid -- assessment of obviousness -- Graham factors -- CompuServe Mall system -- victory for online retailers -- affirmation of Moniauction principle -- fate of settlements reached unresolved.

Subject: Inventive step--case law--United States

Subject: Business methods--case law--United States

Subject: Electronic commerce--case law--United States

SNIPER No.: 2013/01259

Author: Harvey, Cameron

Title: Simulcast rights


Summary: Phonographic Performance Company of Australia Ltd v Commercial Radio Australia

Ltd -- Federal Court of Australia -- delivering radio programmes via the internet is not a

'broadcasting service' for the purpose of the Copyright Act -- significant commercial impact upon commercial radio stations in Australia -- rights of copyright in sound recordings in Australia -- the issue -- the Court's decision.

Subject: Copyright--case law--Australia

Subject: Copyright--interpretation--Australia

Subject: Neighbouring rights--Australia

SNIPER No.: 2013/01494

Author: Bicknell, Paul

Title: Société des Produits Nestlé SA v Cadbury UK Ltd: colours per se and spatial delimitation


Summary: General issues surrounding spatial delimitation in the context of colour marks -- trade mark application for the colour purple -- examination of the mark -- opposition against the registration of the mark -- High Court provided an explanation of Libertel, Heidelberger

Bauchemie and Dyson on the point of spatial delimitation -- decision of appeal and comment on

Libertel.

Subject: Colour marks--case law--United Kingdom

Subject: Trade mark distinctiveness--case law--United Kingdom

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SNIPER No.: 2013/01426

Author: Hilty, Reto M, 1958-

Title: Software agreements: stocktaking and outlook: lessons from the UsedSoft v. Oracle case from a comparative law perspective


May 2013, pp. 263-292.

Summary: Legal nature of software agreements -- delivery of standard software -- tradability of software via online services -- legal questions for software suppliers and customers -- legal overview of approaches adopted by European countries such as Germany, France and England

-- legal framework in the United States -- decision of the European Court of Justice in UsedSoft v. Oracle -- agreements on delivery of software have to be qualified as licence agreements -- no distinction applied between online technologies or offline 'sales' -- impact of decision on cloud computing

Subject: Copyright licensing--information technology industry--Europe

Subject: Copyright licensing--case law--Europe

Subject: Copyright licensing--information technology industry--United States

SNIPER No.: 2013/00963

Title: Solution with equivalent effect diverging from literal meaning: Pallet Container III

(Palettenbehälter III): German Federal Court of Justice


Summary: Equivalent embodiments of the invention -- German Federal Court of Justice, decision of 17 July 2012 Case no X ZR 113/11 -- a solution differing from the literal sense of the patent claim -- essentially achieves the overall effect that is meant to be achieved -- construction of the patent claim discloses minimum requirements -- specific effect in terms of quantity or quality -- modified means that do not satisfy these requirements -- cannot be regarded as equivalent in the sense of a less advantageous solution even if all the other effects of the patented solution are essentially achieved.

Subject: Patent infringement--Germany

Subject: Industrial designs--Germany

SNIPER No.: 2013/01550

Author: Rangel, Laura Cantero

Title: Spanish imposition


Summary: Preliminary draft bill to modify the Spanish Copyright Act of 1996 -- adopting measures aimed at ensuring a suitable level of protection of copyright in the digital environment in Spain -- extending the administrative procedure for safeguarding legality established with that

Act -- few have shown conformity with the reform proposal -- numerous opposing voices -- proposed amendments to the Copyright Act -- Spanish Civil Procedural Act is subject to modification -- objectives of the preliminary draft bill.

Subject: Copyright--reform--Spain

Subject: Piracy--Spain

SNIPER No.: 2013/01554

Author: Bixby, Jo

Title: The spread of copycat labels


Summary: Copycat and look-a-like products -- product loyalty -- free-riding and the reputation of brands -- L'Oréal v Bellure -- effect on brand owners – investigation conducted by Which? reported its research on look-a-like products in superstores -- brand protection.

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Subject: Trade dress--retail industry


SNIPER No.: 2013/00953

Author: Ellis, Peter

Title: Starbucks v Sky: an invalid mark, a squeeze argument and an absence of passing off


Summary: Starbucks (HK) Ltd and others v British Sky Broadcasting Group Plc and others

[2012] EWHC 3074 (Ch), Chancery Division, England and Wales, 2 November 2012 -- eggshell distinctiveness -- no protectable goodwill arose from visitors to websites which were not directed to the UK -- legal context -- members of a Hong Kong-based media group headed by PCCW

Ltd, owned a trade mark registration in various classes for the figurative word 'now' -- passing off claim against Sky -- PCCW mark was invalid -- comparison made with 'Play-Doh' and

'Playdough'.

Subject: Trade mark infringement--case law--United Kingdom

Subject: Passing-off

SNIPER No.: 2013/01558


Title: States of play


Summary: International Trademark Association's (INTA) annual meeting -- progressing out of the United States and expanding its reach further afield -- global changes -- encourage harmonisation -- educate people so they begin to see the importance of brands in terms of growth and employment -- importance of strong ties with national and regional intellectual property (IP) offices and associations -- goals of the organisation -- increasing foreign participation in the topics and committees -- emerging new field of members -- stronger presence of young, accomplished women -- challenges faced by the association -- negative attitude towards IP rights and enforcement -- plain packaging as an increasing threat.


SNIPER No.: 2013/01528

Author: Reilly, Robert F.

Title: Structuring the intellectual property analysis assignment


Summary: Stages of typical intellectual property analyses -- understand the analysis purpose and objective -- consider the intellectual property highest and best use (HABU) -- discounted elements in an engagement letter -- determine the appropriate type of report -- consider applicable professional standards -- assemble and supervise appropriate trained staff -- collect and confirm sufficient data to perform analysis -- select and perform the appropriate analysis methodology -- reach a replicable and well-supported analysis conclusion -- prepare a welldocumented and well-reasoned analysis report.



SNIPER No.: 2013/00945

Author: Gourley, Odette

Title: Sunny Boy v Sunny Roo


172.

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Summary: SMA Solar Technology AG v Beyond Building Systems Pty Ltd -- solar inverters --

SMA Germany manufactures and distributes quality German-made solar inverters -- owns a number of Australian trade mark registrations including the "Sunny Boy" word mark -- a director in BBS applies to register the mark "Sunny Roo from Byron Bay" -- transfers ownership to new company Ipevo Pty Ltd -- BBS, a former customer, began selling Chinese-manufactured inverters under the "Sunny Roo" mark -- passing off and misleading and deceptive conduct -- trade mark infringement -- claims against Ipevo -- remedies

Subject: Trade mark infringement--case law--Australia

Subject: Confusing similarity--Australia

Subject: Passing-off--Australia

SNIPER No.: 2013/01552

Author: Foot, Paul

Title: Superfast patenting


Summary: United Kingdom Intellectual Property Office's (UK IPO) proposed superfast patent service -- will cut the time it takes to process a patent to 90 days -- current options -- standard patents -- acceleration options -- cutting pendency is problematic due to limitations inherent in the UK IPO's systems -- superfast proposals will require further compression of actions -- UK

IPO is proposing an additional official fee -- uptake of the superfast service -- superfast divisionals -- benefits of the superfast service.

Subject: Patent processing--reform--United Kingdom

Subject: Patent systems--United Kingdom

SNIPER No.: 2013/01433

Author: Marshall, Eliot

Title: Supreme Court rules out patents on 'natural' genes

Source: Science. Vol. 340 No. 6139, 21 June 2013, pp. 1387-1388.

Summary: Myriad Genetics lost a big patent fight on the 13 June in the U.S Supreme Court -- five of its IP claims on BRCA1 and BRCA2 genes disallowed -- found to be "product of nature" and not patentable -- also ruled human genes in the lab-made format known as complementary

DNA or cDNA should remain patentable -- mixed response to decision from researchers and business leaders -- seen as departure from decades of judicial and USPTO precedent supporting patentability of DNA molecules -- possible effect on human embryonic stem cell patents -- Myriad plans to continue testing for BRCA genes in a screening service looking at an array of 25 risky genes



SNIPER No.: 2013/01321

Author: Kundu, Apurba

Title: Surnames as trade marks: an Indian perspective


Summary: People are differentiated on the basis of their surnames -- goods are identified by their distinctive trade marks -- right to use one's own name as a trade name, trade mark or service is not absolute -- registering surnames is generally rejectionable -- Indian position on the use of surnames as trade marks -- position in the United States and Europe -- three classes of name marks -- Indian conflict between Tata, Bata and Mafatlal -- evolution of use of surnames as trade marks in the USA --rare as a basis for registration -- defences to infringement -- Indian jurisprudence should adopt the best precedents of European and American precedents.

Subject: Personal names--India

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Subject: Trade mark registrability--India

Subject: Trade mark distinctiveness--India

SNIPER No.: 2013/01633

Author: Smith, Joel

Title: Survey evidence around the world: a comparative analysis


Summary: Survey evidence has an important role to play in trade mark disputes -- rules vary depending on jurisdiction -- how survey evidence in trade mark disputes is treated by courts in five different jurisdictions -- United Kingdom, United States, Netherlands, Australia and France -- survey evidence is more strictly controlled in some territories than others -- United Kingdom and

Australia -- common themes across jurisdiction -- transparency in dealings, with surveys being shared with opposing parties before trial -- cooperation between parties is encouraged -- courts are keen to avoid excessive costs in relation to gathering survey evidence.

Subject: Evidence

Subject: Trade mark litigation

SNIPER No.: 2013/01555

Author: Ellison, David

Title: Taking online brand safety to the next level


Summary: United Kingdom sits at the vanguard of online brand protection -- achieving online brand safety -- Good Practice Principles -- reputational damage inflicted on a brand from just one of its blind online media buys appearing on an undesirable or unsavoury website -- concerns over ads appearing on highly offensive Facebook pages -- need to reduce the risk of ad misplacement across the digital trading market -- Facebook has set up its first UK Marketing

Advisory Board -- Institute of Practitioners in Advertisers (IPA) working on online brand safety.


Subject: Keyword advertising


SNIPER No.: 2013/01632

Author: Little, Trevor

Title: Talking point: revision proposals for the EU Community Trademark Regulation and the EU

Trademark Directive


Summary: Proposals to revise the EU Community Trademark Regulation and the EU

Trademark Directive -- European trade mark experts offer their reaction to the content and their thoughts on the likely impact should the revisions be adopted -- the MARQUES position -- potential impact on national offices -- the dangers of a compromised trade mark right -- questions over the treatment of parallel imports -- a non-European Union perspective -- improved clarity a welcome objective -- change overdue, still a way to go.



SNIPER No.: 2013/01569

Author: Edge, Charles

Title: Tax back: it's all in the planning


Summary: 'Base erosion' and 'profit shifting' (BEPS) -- report from Organisation for Economic

Co-operation and Development (OECD) -- extent of the effects of BEPS -- fuelling negative

-65-

SNIPER Bulletin Library, IP Australia media attention on companies that have reduced worldwide effective tax rates by legally transferring valuable assets to low tax jurisdictions -- definition of IP for tax / transfer pricing purposes -- methods of valuing IP -- moving IP offshore early -- performing functions relating to further development of IP -- cost sharing as an alternative -- documentation.

Subject: Taxation


SNIPER No.: 2013/01073

Title: Tech transfer and the America Invents Act


Summary: Switch from "first-to-invent" to a "first-to-file" system -- pressure on tech transfer offices to keep up with competition -- face front-loading of costs -- system may increase existing economic difficulties -- quality control -- licensing


Subject: Technology transfer--United States

Subject: Patent systems--United States

SNIPER No.: 2013/01515

Author: Honkasalo, Pessi

Title: There's many a slip 'twixt cup and lip: on overall impression, nature of the product and freedom of the designer


Summary: Finnish Supreme Administrative Court judgment -- design rights decision -- Devisys

Oy v Kuomiokoski Oy (KHO 2012:94) -- holding that the design right of the claimant was not a barrier to accepting a design right application -- National Board of Patents and Registrations

(NBPR) and its Board of Appeal should have also compared the design filed with other designs referred to by the claimant -- anti-slip devices based on the same technical solution where the device is attached to a shoe by a strap -- interpretation applied by NBPR -- error of law.

Subject: Industrial designs--Finland

Subject: Industrial design novelty--Finland

SNIPER No.: 2013/01437

Author: Manning, Kate

Title: Three-dimensional trade marks: nooks and crannies of acquired distinctiveness and technical results


429.

Summary: Board of Appeal of OHIM upholds validity of the Nestlé Kit Kat bar three dimensional

(3D) shape -- Société des Produits Nestlé SA v Cadbury Holdings Ltd -- Class 30 -- Article 52 and 7 of Council Regulation 207/2009 -- Nestlé contested Cancellation Division decision that its trade mark was non-distinctive and thereby invalid -- Board of Appeal agreed that the 3D mark was not inherently distinctive b ut Nestlé had provided evidence of acquired distinctiveness -- evidence of acquired distinctiveness judged from the consumer viewpoint across the whole

European Union and not the separate national markets -- judgment frees shape mark owners from collecting evidence from every territory -- criteria for assessing distinctiveness of a 3D shape is still more difficult than in traditional marks.

Subject: Shape marks--case law--Europe

Subject: Trade mark distinctiveness--case law--Europe

Subject: Evidence--Europe

SNIPER No.: 2013/01628

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Author: Prentoulis, Nikos G.

Title: Time for the Trademarks Administrative Committee to take a stand over dilution

Source: World Trademark Review. No. 44, August-September 2013, p. 18.

Summary: Greek Trademarks Administrative Committee (TAC) -- struggling with dilution arguments -- latest decisions -- oppositions against similar marks between tobacco companies -

- decision involving a clash between an undisputedly famous trade mark and a similar mark registered for both identical and dissimilar products / services in various classes -- organisation of TAC -- impact on rights holders.

Subject: Trade mark dilution--Greece

Subject: Famous trade marks--Greece

SNIPER No.: 2013/01260

Author: Duff, Anderson J.

Title: Time out


Summary: Multi Time Machine, Inc, v Amazon.com and another -- US District Court Central

District of California -- trade mark infringement -- background to the case -- whether shoppers on Amazon are confused as to the source of the products displayed in the list of search results -

- strength of the plaintiff's mark -- evidence of actual confusion -- type of goods and degree of care likely to be exercised by consumers -- labelling and appearance of the advertisements and the surrounding context provided by the screen on which the search results are displayed.

Subject: Trade mark infringement--case law--United States


SNIPER No.: 2013/01553

Title: To battle we go


Summary: World Customs Organization (WCO) -- Global Congress -- what challenges and solutions have been identified by customs services in the fight against counterfeiting and piracy

-- current status and the future of intellectual property (IP) protection in Turkey -- case studies from some key developing markets -- India -- Nigeria -- China -- great strides are being made on the supply side by law enforcement agencies -- an equivalent demand-side strategy is needed.

Subject: Counterfeiting

Subject: Piracy


SNIPER No.: 2013/01232

Author: O'Sullivan, Nina

Title: Torrid torrents


Summary: Justice Arnold issued another website blocking order -- requiring the UK's six main retail internet service providers (ISPs) to block access to three file-sharing websites -- KAT,

H33T and Fenopy (the websites) -- website blocking orders, the jurisdiction -- infringement by users -- infringement by website operators -- use of the ISPs' services to infringe -- proportionality.

Subject: Carriage service providers--United Kingdom

Subject: Copyright infringement--liability--United Kingdom

SNIPER No.: 2013/01427

Author: Fhima, Ilanah Simon

Title: Trade marks and free speech

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May 2013, pp. 293-321.

Summary: European perspective on relationship between free speech and trade mark law -- review of the cases where European courts have considered how to balance free speech and trade mark law -- free speech rhetoric is appearing more frequently in trade mark cases but has had little impact on European trade mark law.

Subject: Free speech--Europe

Subject: Trade mark registrability--case law--Europe

Subject: Trade mark infringement--case law--Europe

SNIPER No.: 2013/01317

Author: Stevens, Paul

Title: 'Trade marks' that aren't signs or that are so imprecise as to be incapable of registration


Summary: JW Spear & Sons Ltd, Mattel Inc & Mattel UK Limited v Zynga, Inc [2012] EWHC

3345 (Ch), High Court, England and Wales, 28 November 2012 -- tile mark infringement --

Scrabble and Scramble with Friends (Zynga) -- judge concluded that the tile mark covered an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile -- distinctiveness inherent in the tile mark -- validity of the trade mark -- tile mark held invalid.

Subject: Trade mark infringement--United Kingdom

SNIPER No.: 2013/01482

Author: Pooley, James

Title: Trade secrets: the other IP right


Summary: What kind of intellectual property is most relied upon by business to protect competitive advantage -- most common form of protection is secrecy -- secrecy does not involve a government registration process -- law of the disclosed and confidential information -- reasons for use-- secrecy disputes are usually secret and do not become part of the public debate -- legal protection -- cyber espionage -- advantages for SMEs -- a legitimate tool for businesses of all sizes.

Subject: Trade secrets--intellectual property industry

SNIPER No.: 2013/01635

Author: Pearson, Lara

Title: 'Trademark bullying': time to get some clear definitions


Summary: Working definition of 'trademark bullying' -- purpose of trade mark law -- trade mark infringement -- dilution -- fair use -- examples of valid and invalid claims -- lack of infringement -- lack of dilution.

Subject: Trade mark infringement


Subject: Trade mark dilution

SNIPER No.: 2013/01709

Author: McLeod, Chris

Title: Transferring social media accounts: legal and practical problems


Summary: Businesses derive significant revenue through their social media accounts -- care taken when structuring transactions that include the transfer of ownership or control of social

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SNIPER Bulletin Library, IP Australia media accounts -- social media providers (SMPs) terms of service -- Facebook -- YouTube --

Twitter -- strategies where transfer prohibited or not granted -- when it comes to social media assets SMPs hold all the cards -- ways to temporarily transfer control of social media accounts.


Subject: Social networking

SNIPER No.: 2013/01582

Author: Mayes, Randall E. (Randall Elam)

Title: The U.S. Supreme Court takes on gene patents: is your genetic information an invention or a discovery?: and what difference will that make?

Source: Futurist. Vol. 47 No. 4, July-August 2013, pp. 6-7.

Summary: Legality of gene patents to be decided by U.S Supreme Court -- issues in the Myriad

Genetics case -- plaintiff's claims and arguments refuting these -- alternative scenario to patents

-- trade secrets -- researchers not pursuing medical applications due to lack of incentives -- possible consequences of Myriad decision -- could continue creating regulatory uncertainty for investors and inventors in personalized medicine


Subject: Medical procedures--United States

SNIPER No.: 2013/01360

Author: Smith, Joel

Title: UK Intellectual Property Bill: "more evolution than revolution"


Summary: New UK IP Bill -- proposes provisions to allow for implementation of the Unified

Patent Court -- new criminal penalties for international registered design infringement -- stronger patent opinions -- new opinions service for registered designs -- strengthening and improvement of design rights - -summary of key provisions

Subject: Patent systems--law and legislation--United Kingdom

Subject: Industrial design systems--law and legislation--United Kingdom

SNIPER No.: 2013/01703

Author: Kempton, Luke

Title: UK IPO consultation on exemptions to patent infringement for clinical trials


Summary: Current UK exemptions to patent infringement for clinical trials -- Clinical Trials

Directive to harmonise the regulations across Europe with the aim of reducing the barriers for innovators -- UK IPO Consultation -- three options for changing the current legislation -- option one: change UK patent law to exempt from infringement all activities required to secure regulatory approval to market innovative drugs in all countries -- option two: in the EU and EEA only -- options three: change UK patent law to exempt from infringement all activities required to secure regulatory approval to market innovative drugs and also all activities necessary for health technology assessment for example, data to support assessment by the National Institute for Health and Clinical Excellence (NICE) -- UK IPO's proposal welcomed to reduce uncertainty

-- new proposed amendment to the UK Patents Act does not cover plant protection products at all.

Subject: Experimental use (Patents)--United Kingdom

Subject: Pharmaceutical industry--United Kingdom

Subject: Patent systems--law and legislation--United Kingdom

SNIPER No.: 2013/01361

Author: Allgrove, Ben

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Title: UK Supreme Court rules on interface between copyright and internet browsing


Summary: United Kingdom Supreme Court decision -- Public Relations Consultants

Associations Limited v. Newspaper Licensing Agency Limited and Ors -- user liability for browsing copyright protected material on the internet -- found copies stored in a browser cache and produced on screen fall within temporary copies exception in Article 5(1) of the Information

Society Directive -- do not require authorisation from the copyright holder -- facts of the case -- whether customers of web clipping service Meltwater needed a licence to receive the Meltwater service -- guidance and previous rulings of the Court of Justice of the European Union (CJEU) --

Court of Appeal's judgment -- Supreme Court's reasoning -- point on temporary copies referred to CJEU for preliminary ruling before making final order on the appeal

Subject: Fair use (Copyright)--case law--United Kingdom


SNIPER No.: 2013/01604

Author: Grossman, Jonathan E.

Title: Uncertainty regarding exemption from infringement for studies after approval, or not required, by the US FDA


Summary: Research exemption from patent infringement -- two decision of the Federal Circuit -

- Classen & Momenta -- applied differing interpretations to specific fact patterns -- leading to substantial ambiguity -- whether research related to an already approved drug or research that is not research by the USFDA to gain approval, is exempt from patent infringement -- petitions for rehearing & Certiorari to the Supreme Court -- uncertain scope of the research exemption from patent infringement -- Classen Immunotherapies, Inc. v. Biogen Idec -- Momenta

Pharmaceuticals Inc. v. Amphastar Pharmaceuticals Inc.



SNIPER No.: 2013/01383

Author: Dupont, JeanSébastien

Title: Unchartered territories of trade mark use


Summary: Whether invisible use and subliminal use of a trade mark could be sufficient to infringe the exclusive rights of its owner -- main components of the concept of trade mark use -- non-traditional ways of using trade marks -- how the approach taken to trade mark use has evolved over the years -- invisible use of trade marks -- subliminal use of trade marks -- current approach to trade mark use in British and European Union law -- approach developed by the

Court of Justice of the European Union (CJEU) -- approach taken by the CJEU is unsatisfactory

-- simpler approach based on consumer perception and expectations that British courts had followed -- historical study of the evolution of that traditional approach in Britain -- traditional approach is applied to examples to show how this approach, is more apt than the functionsoriented approach to give a simple and predictable solution to these new problems.

Subject: Trade mark use

Subject: Law--history

SNIPER No.: 2013/01492

Author: Darcy, Jennifer

Title: Under-regulated or under-enforce: intellectual property, the fashion industry and fake goods


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Summary: Worldwide problem of counterfeit luxury fashion goods -- danger counterfeiting is posing to the intellectual property rights of luxury brand owners and fashion designers -- whether the current European IP protection is adequate for the problems -- how counterfeiting works -- who purchases fake items and why -- protection afforded by the brand trade mark as a distinguisher of origin and quality -- trade marks success and failure -- protection of industrial designs -- common law remedy of passing off -- Karen Millen Ltd v Dunnes Stores.

Subject: Counterfeiting--fashion and design industry--Europe

Subject: Intellectual property law--Europe

Subject: Unregistered industrial designs--case law--Europe

SNIPER No.: 2013/01700

Author: Sant, David

Title: The Unified Patent Court: shifting to a new paradigm


Summary: Unitary patent -- Unitary Patent Court (UPC) -- structure of the new court -- transition regimes and opt-outs -- actions relating to unitary patents will always be within the exclusive jurisdiction of the UPC -- how will cases be split between divisions -- procedures in the UPC -- implications of choice of venue -- powers of the UPC -- implications for users -- costs -- languages -- variety of procedural tools -- new power and raised stakes -- duration and simplicity -- good for SMEs.

Subject: Unified Patent Court

Subject: Patent systems--reform--Europe

Subject: Regional patents--Europe

Subject: Divisional applications (Patents)--Europe

SNIPER No.: 2013/01676

Author: Kuhnen, Rainer K.

Title: Unitary patent and Unified Patent Court: the proposed framework


Summary: Adoption of unitary European patent and patent court -- Unitary Patent Regulation and Unified Patent Court Regulation -- unitary patent scheme -- translation regime -- entry into force of Regulations -- Unified Patent Court (UPC) -- structure -- panel composition -- competence -- remaining issues and risks -- whether it will be cheaper -- jurisdiction opt-out -- unitary enforcement and revocation -- ratification risk and duration.

Subject: European Parliament. Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

Subject: European Parliament. Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements

Subject: Community Patent

Subject: Unified Patent Court

Subject: Regional patents--Europe

Subject: Patent litigation--procedure--Europe

SNIPER No.: 2013/01322

Author: Bradstreet, Richard S.

Title: United States v business method patents: trial by trial and error


Summary: Patentable subject matter as intellectual property increasingly difficult to define -- patents in the United States -- business method patents as patentable subject matter -- software

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SNIPER Bulletin Library, IP Australia patents: the accessory after the fact -- trial of method patents in the US -- State Street v

Signature -- AT&T Corporation v Excel -- Bilski v Kappos -- problems with a broader definition of subject matter -- conceptual problems -- use of drafting techniques to sneak into s 101 -- economic and financial issues -- expenses associated with patent litigation -- financial repercussions in large-scale suits -- clever drafting.

Subject: Business methods--United States

Subject: Patentability--United States

SNIPER No.: 2013/01225


Title: Unpacking the patent box


Summary: Patent box -- designed to incentivise innovation and encourage investment -- studies have maligned it as demonstrating little discernible impact on UK innovation -- aims to tax the worldwide profits attributable to patents at 10%, rather than the 23% corporate tax rate that companies registered in the UK normally pay -- virtually no increase in patent applications by UK businesses -- not enough of an incentive to encourage UK innovation -- companies are taking a wait-and-see approach to the patent box.

Subject: Taxation--United Kingdom


SNIPER No.: 2013/01384

Author: Mysoor, Poorna

Title: Unpacking the right of communication to the public: a closer look at international and EU copyright law


Summary: Right of communication to the public -- struggled for a predictable interpretation under European Union (EU) copyright law -- through successive rulings of the Court of Justice of the European Union (CJEU), a body of law is beginning to emerge to interpret the right -- uncomfortable overlap of right of communication to the public with the pre-existing right of public performance -- findings such as the need for an active intervention by the user -- concept of

"new public" -- need for an economic gain resulting from the communication -- have identified elements of the right not obvious from a plain reading of the provisions -- findings have not been consistently applied -- unpack these findings -- critical look at whether such findings are in tune with the jurisprudential basis of the right -- assess their impact on the national laws.

Subject: Copyright--law and legislation--Europe

Subject: International law

SNIPER No.: 2013/01312

Author: Macedo, Charles R.

Title: US jury properly relied upon second considerations of non-obviousness to overcome prima facie obviousness


Summary: Transocean Offshore Deepwater Drilling, Inc v Maersk Drilling USA, Inc, No 2011-

1555, 2012 US App LEXIS 23486 (Fed Cir 15 November 2012) ('Transocean IV') -- US Court

Appeals for the Federal Circuit -- addressing the role of secondary considerations of nonobviousness -- weight to be accorded to them -- found no error in the jury's reliance on overwhelming evidence of secondary considerations of non-obviousness was overcome -- saving the patent claim from invalidation -- illustrates a case where a strong evidentiary showing on secondary indicia of non-obviousness was sufficient to overcome a prima facie case of obviousness.

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Subject: Inventive step--case law--United States

SNIPER No.: 2013/01637

Author: Li, Celia Y.

Title: Use in the absence of protection


Summary: Concept of fluidity -- rights holders make significant and continual changes to their registered trade marks -- variants of a trade mark are not recognised under Chinese trade mark law -- protection of fluid trade marks is a controversial legal issue -- some laws provide that rights holders can use variations of their mark, providing that the variants do no harm to the distinctive character of the underlying mark -- Versus v Versas Ita -- W!nSnow v Snow -- slogans -- examination criteria -- copyright to protect fluid marks or slogans.

Subject: Non-traditional marks--China

Subject: Trade marks--law and legislation--China

SNIPER No.: 2013/01438

Author: Chan, Madeleine Sy

Title: Use of a sub-brand as a badge of origin in conjunction with a parent brand


431.

Summary: Sub-brand can be used as a badge of origin even if used with parent brand --

Federal Court of Australia decision -- Cantarella Bros Pty Limited v Modena Trading Pty Limited

-- assessing whether trade mark should remain registered or has been infringed -- sub-brands used with parent brands are not really used as trade marks -- sub-brands are sometimes called

'limping trade marks' -- cases involving sub-brands -- Cantarella owns trade marks for the word

'ORO' and 'CINQUE STELLE' -- parent or house brand 'Vittoria' -- Modena's use of 'ORO' and

'CINQUE STELLE' -- Modena's arguments -- meaning of the Italian words used by Cantarella -- typescript used by Cantarella -- judge ruled that Cantarella's trade marks were validly registered

-- Modena's use was deemed an infringing use.

Subject: Branding--case law--Australia

Subject: Trade mark registrability--Australia

Subject: Trade mark infringement--Australia

SNIPER No.: 2013/00947

Author: Clark, Rob

Title: Use of experiments in patent specifications for a hearsay purpose: Bristol-Myers Squibb

Company v Apotex Pty Ltd (No 4)


178.

Summary: Interplay between section 60 of the Evidence Act (1995) and r 34.50 of the Federal

Court Rules 2011 -- BMS v Apotex -- details of the experiments in the patent specifications were hearsay statements -- evidence of experimental proof -- parties need to seek leave of the court to tender evidence of experimental proof where the experiment does not comply with the conditions of r 34.50

Subject: Patent specifications--case law--Australia

Subject: Legal procedure--Australia

Subject: Evidence--Australia

SNIPER No.: 2013/01614

Author: Liu, Linlin

Title: The value of 'weak' patent

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35.

Summary: Valuing patent litigation under litigation risk -- referred to as 'weak' patent -- real options theory -- valuation model of weak patents -- holds long the commercialisation project -- sells short on the option to litigate -- Monte Carlo approach -- patent value decreases under litigation risk -- policy perspectives that may alleviate the harm raised by litigation risk -- numerical results using LSM simulations -- sensitivity analysis.

Subject: Patents--economics


Subject: Litigation--costs

SNIPER No.: 2013/01609

Author: More, Brian

Title: Valuing intellectual property: partial examples and tips for SMEs


Summary: Lack of proper IP valuation a barrier for engaging in IP partnerships -- help smallmedium enterprises to better report their IPR in their accounting -- assist to better manage their companies and attract funding -- many models for performing IP valuations -- selecting the right model a critical decision -- legal status a fundamental factor in the value of intellectual property -

- legal problems encountered.


Subject: Small and medium enterprises

SNIPER No.: 2013/01716

Author: Zhang, Monica

Title: We have a passion for IP


2013, pp. 60-63.

Summary: Interview with Cynthia Murphy, Senior Vice President and General Manager,

Thomson Reuters IP Solutions -- intellectual property trends in China -- China became largest patent filing country in 2011 -- no Chinese companies in Thomson Reuters Top 100 innovators -

- development of intellectual property by Chinese industry -- importance of Chinese market to

Thomson Reuters -- factors in Thomson Reuters' business success -- acquisition of

MarkMonitor brand protection business.

Subject: Murphy, Cynthia--interviews

Subject: Patent filing--trends--China

Subject: Innovation (Technological)--trends--China

SNIPER No.: 2013/01497

Author: Ziel ińska, Anna

Title: What are the (time)-limits for collecting societies to bring claims?


Summary: Dispute between Polish Folk Artists Association and Wawel SA -- Polish Supreme

Court ruling -- claims brought by collecting societies regarding copyright are as a rule subject to a 10-year limitation period -- limitation period depends on the respective nature of the claim -- extent to which submission of and access to documents can be demanded to determine remuneration and fees claimed by a collecting society (CS) -- art.105 (2) of the Polish Copyright

Act.

Subject: Copyright licensing societies--Poland

Subject: Copyright--case law--Poland

Subject: Copyright levies--Poland

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Subject: Copyright--law and legislation--Poland

SNIPER No.: 2013/01486

Author: Castro, Ignacio de

Title: What does it cost to defend your IP rights?


Summary: Technology-related dispute resolution practices -- WIPO Arbitration and Mediation

Center (WIPO Center) conducted an international survey -- gauge how alternative dispute resolution (ADR) mechanisms, such as mediation and arbitration, fare compared to court litigation when it comes to resolving such disputes -- technology-related agreements concluded on the past two years -- agreements leading most often to disputes -- choice of dispute resolution clauses -- prime considerations -- objectives of different parties -- mechanisms used to resolve disputes -- observations for dispute resolutions in technology transactions.

Subject: Dispute resolution


SNIPER No.: 2013/01613

Author: Brahem, Meriam

Title: What drives trademarks registration among Tunisian clothing firms?: an econometric investigation


14.

Summary: Determinants of trade mark registration among firms -- empirical study of Tunisian firms operating in the clothing industry -- small and medium enterprises surveyed -- registered trade mark benefits -- geographical market diversification -- investment in quality improvement -- research methodology -- measurement items -- determinants of trade mark registration -- high degree or product innovation -- a more diversified market -- willingness to take financial risks.

Subject: Trade mark registration--fashion and design industry--Tunisia

SNIPER No.: 2013/01705

Author: Knight, Peter

Title: What effect does piracy really have on music sales?


Summary: Effect of illegal music downloads on sales of music through legal digital channels -- survey using unique original data across Europe's five biggest economies -- impact of privacy -- dataset and methodology -- dynamics of "transference" between legal and illegal consumption -- message for copyright holders -- findings also provide useful information to legislators responding to the Copyright and the Digital Economy Review undertaken by the Australian Law

Reform Commission.

Subject: Piracy--culture and entertainment industry--Europe

Subject: Electronic copyright--culture and entertainment industry —Europe

SNIPER No.: 2013/01610

Author: Simeth, Markus


Title: What makes companies pursue an open science strategy?

Source: WIPO Economic Research Working Paper. No. 6, April 2013.

Summary: Research and development -- motivations of firms that disclose research outcomes in a scientific format -- knowledge sourcing from academic institutions -- university-industry collaboration -- econometric analysis access to important scientific knowledge imposes the

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SNIPER Bulletin Library, IP Australia adoption of academic disclosure principles -- overall industry conditions are influential in shaping the cost-benefit rationale of firms.

Subject: Technology transfer--science and research industry

Subject: Science and research industry

Subject: Industrial research and development


SNIPER No.: 2013/01364

Author: Thornton, Penelope

Title: When does retransmission of TV on Internet amount to copyright infringement?


Summary: Retransmissions of linear TV channels over the internet, not made by the original broadcaster, infringe relevant copyrights even though the channels could have been lawfully received via terrestrial television -- European Court of Justice of the European Union (CJEU) decision in ITV Broadcasting Ltd v. TV Catchup Ltd -- facts of the case -- internet live streaming service -- whether "communication to the public" -- US approach contrasts with CJEU decision -

- two conflicting US decisions -- US Court of Appeals for the Federal Circuit decision in

American Broadcasting Companies v. Aereo, Inc. -- found Aereo's retransmission of broadcasts over the internet do not infringe US broadcasters' public performance right contrary to approach taken in Aereokiller case in US -- effect of the technology used to make the retransmission

Subject: Copyright infringement--culture and entertainment industry--Europe

Subject: Copyright infringement--culture and entertainment industry--United States

Subject: Neighbouring rights--case law--Europe

Subject: Neighbouring rights--case law--United States

SNIPER No.: 2013/01537


Title: Whither software patents?


Summary: CLS Bank v Alice Corp -- United States Federal Circuit Court of Appeals failed to reach a consensus on how to determine what software is patentable -- majority found Alice's method and media claims are not directed to patent-eligible subject matter -- court split 5-5 on

Alice's system claims -- court failed to reach consensus on the reasoning behind its conclusions

-- United States Patent and Trademark Office (USPTO) released a note on the implications of the ruling -- Bilski v Kappos -- machine-or-transformation test.

Subject: Computer-related inventions--patentability--United States


SNIPER No.: 2013/01484

Author: Medeiros, John

Title: Why update the IP rights of broadcasters?: a view from Asia


Summary: Widespread misuse of broadcasts -- Rome Convention for the Protection of

Performers, Producers of Phonograms and Broadcasting Organizations (1961) -- treaty protections for broadcasting organisations in need of updating -- urgent needs for Asian broadcasters -- boom in television consumption -- pirate websites -- no compensation paid to creators of content legal protection is a challenge -- far-reaching impact of IP theft -- international broadcasting industry seeking a treaty to protect the rights of broadcasting organisations in the 21st century.

Subject: Neighbouring rights--Asia

Subject: Neighbouring rights--tourism and recreation industry

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Subject: Television broadcasts--tourism and recreation industry


SNIPER No.: 2013/01605

Author: Albutt, Jodie

Title: Will the refusal of patent protection for Glivec® discourage future pharmaceutical innovation in India?


Summary: History of Glivec® and the Indian system -- Supreme Court decision of April 2013 dismissed Novartis AG ’s appeal against the rejection of their patent application for their anticancer drug Glivec -- Indian refusal in contrast with the outcome of almost 40 other countries where patent protection for the drug has been allowed -- sets out a further criterion for the patentability of a new form of a known substance --new pharmaceuticals based on known products must demonstrate an increased therapeutic efficacy to be patentable in India under

Section 3(d) -- decision confirms that a higher bar for the patentability of such pharmaceuticals exists in India -- Novartis indicates the decision could adversely affect innovative drug discovery in India -- best course of action may be to investigate if there is any other way of preventing generics companies from producing the drug in India, for example, by alternative IP protection.

Subject: Patent validity--case law--India

Subject: Pharmaceuticals--patentability--India

Subject: Patents--pharmaceutical industry--India

SNIPER No.: 2013/01074

Title: Wither Marlboro man?


Summary: Restrictions on tobacco packaging and advertising -- Tobacco Plain Packaging

(TPP) Act -- claims of violation to international trade laws and intellectual property rights -- trade mark rights -- possible increase in counterfeiting from standardising cigarette packages

Subject: Australia. Tobacco Plain Packaging Act (2012)

Subject: Trade dress--Australia


Subject: Trade mark owners' rights

SNIPER No.: 2013/01561

Author: Parness, Hillel I.

Title: YouTube rematch


Summary: Viacom v YouTube -- courts testing the interpretation and application of the safe harbours of the Digital Millennium Copyright Act (DMCA) -- safe harbour for service providers -- limiting liability for copyright infringement -- providing the service provider does not have actual

"red flag" knowledge of infringement -- responds expeditiously to notices to remove infringing material -- disagreement over core questions -- Second Circuit 2012 opinion -- red flags, willful blindness and control -- District Court 2013 opinion -- willful blindness and control.


Subject: Intellectual property law--interpretation--United States

SNIPER No.: 2013/01706

Author: Mazzaferro, Adam

Title: Zipping around the kerb: how NOT to use your competitor's trade mark


-77-


Summary: Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd -- Federal Court of

Australia decision -- circumstances in which trade mark infringement can occur when using a competitors registered trade mark on a website and in a domain name -- Kwik Kerb and

Zippykerb competitors in the concrete edging business in Australia -- trade mark infringement -- registration of domain names -- Federal Court decision -- substantially identical -- use as a trade mark -- use in relation to goods or services in respect of which the trade mark is registered -- disclaimers of association.

Subject: Trade mark infringement--manufacturing and processing industry--Australia

Subject: Trade mark use--Australia

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SNIPER Bulletin July 2013

Searchable Networked Intellectual Property Electronic Resource

SNIPER

Bulletin

Note: Due to copyright requirements, IP Australia Library is unable to directly supply copies of these articles to readers outside IP

Australia. Please contact your local library to obtain copies of these articles by interlibrary loan.

IP Australia Library library@ipaustralia.gov.au

Phone: (02) 6283 2301

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SNIPER Bulletin July 2013

Searchable Networked Intellectual Property Electronic Resource

SNIPER

Bulletin

Note: Due to copyright requirements, IP Australia Library is unable to directly supply copies of these articles to readers outside IP

Australia. Please contact your local library to obtain copies of these articles by interlibrary loan.

IP Australia Library library@ipaustralia.gov.au

Phone: (02) 6283 2301

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