SNIPER Bulletin January 2014

SNIPER Bulletin

Searchable Networked Intellectual

Property Electronic Resource

January 2014

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ISSN: 2202-753X

SNIPER No.: 2013/02900

Author: Rimmer, Matthew

Title: 23andMe Inc: patent law and lifestyle genetics

Source: Journal of Law, Information and Science. Vol. 22 No. 1, Summer 2012, pp. 132-164.

Summary: Critical evaluation of the legal issues raised by 23andMe Inc. in respect of patent law, health law and bioethics -- 23andMe provides consumers with several types of genetic information

-- DNA ancestry and genetic history -- genetic research -- 23andMe Inc. builds a portfolio of intellectual property rights around its products and services, with a view to obtaining patent protection -- range of community reactions with its provocative combination of genetic testing and social networking -- considers questions of patentable subject matter raised by the case of

23andMe Inc. -- examination of patent applications made by 23andMe Inc. -- intersection between patent law, informed consent and benefit sharing -- patent infringement and available defences and exceptions.

Subject: Patenting of life forms--United States

Subject: Patentability--United States

Subject: Ethics

SNIPER No.: 2013/02391

Author: Aronoff, Robert

Title: Acquiring patents to support innovation and value

Source: Intellectual Asset Management. No. 61, September-October 2013, pp. 39-46.

Summary: Purchasing intellectual property -- buying patents rather than developing them in house

-- strategies that motivate current and future corporate patent buyers -- a dangerous obsession: litigation and trolls -- refocus patent strategy on the long term -- R&D investment does not guarantee innovation -- companies that spend the most on R&D -- strategic patent acquisitions: necessary for survival -- supporting short and long-term objectives -- best practices in buying patents on future innovations -- relationship between 'good' patent holdings and market value -- buying the right patents to augment the innovation pipeline -- Apple's potential IP return on it's

R&D investment.

Subject: Value of intellectual property

SNIPER No.: 2013/02665

Author: Wang, Fang

Author: Wang, Meifang

Author: Jin, Jing

Title: Adaptive amendment to dotted lines in design patent views

Source: China Patents and Trademarks. Vol. 114 No. 3, July 2013, pp. 58-62.

Summary: Design representations -- China -- allowed and disallowed uses of dotted lines -- issues with applications files in China -- need for changes to foreign applications filed in China -- dotted lines that must be changed into solid lines -- dotted lines that must be deleted -- dotted lines that may be deleted or changed to solid lines.

Subject: Representations (Designs)--China

Subject: Industrial design applications--China

SNIPER Bulletin – January 2014 Page 1 of 83

SNIPER No.: 2013/02520

Author: Bentham, Paul

Author: Futter, David

Author: Powling, Georgina

Title: Agile development and IP: think before you sprint

Source: Intellectual Property Magazine. November 2013, pp. 61-62.

Summary: Standard software development projects apply the 'waterfall' approach -- agile is an umbrella term for an alternative group of software development methods, markedly different to the waterfall approach -- reasons for doing agile -- rethinking intellectual property for agile -- collaboration and ownership -- collaboration and risk -- incremental IP assignments -- freedom to operate.

Subject: Information technology industry

Subject: Business collaboration

SNIPER No.: 2013/02414

Author: Smyth, Darren

Title: Any evidence of plausibility admissible: but not enough

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 11, November 2013, pp. 808-

809.

Summary: Post-dated evidence is admissible in deciding the plausibility of the alleged technical advance of the patent -- Generics [UK] Ltd (t/a Mylan) v Yeda Research And Development Co Ltd and Teva Pharmaceutical Industries Ltd -- legal context -- Yeda patent licensed to Teva -- copolymer-1 a treatment for multiple sclerosis -- Mylan sough revocation of patent and noninfringement in relation to product with different tyrosine ratio than the patent -- question of validity and treatment of later evidence -- the tyrosine content of Mylan's product and whether the difference was enough to prevent infringement -- Court of Appeal upheld earlier decision to refuse a declaration of non-infringement -- practical significance.

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

Subject: Evidence--case law--United Kingdom

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

SNIPER No.: 2013/02492

Author: Rein, Fred

Author: Hassett, Annemarie

Title: Appeals court agrees with Teva over 'public use'

Source: Intellectual Property Magazine. October 2013, p. 68.

Summary: US Court of Appeals for the Federal Circuit invalidated all patent claims asserted by

Pronova Biopharma Norge AS against Teva Pharmaceuticals USA Inc and Par Pharmaceutical,

Inc -- Abbreviated New Drug Application for a generic version of Lovaza capsules -- patent-in-suit is licensed to GlaxoSmithKline which markets Lovaza.

Subject: Patent claims--United States

Subject: Patent litigation--United States


SNIPER No.: 2013/02586

Author: Stern, Richard H.

Title: Association for Molecular Pathology v Myriad Genetics: sieving the gene pool

Source: European Intellectual Property Review. Vol. 35 No. 11, 2013, pp. 685-690.

Summary: Myriad Genetics case -- Supreme Court decision a split judgment and compromise -- not internally consistent in it's treatment of DNA and cDNA -- gene technology -- products of nature

-- Supreme Court opinion in Myriad -- no use of case law on products of nature -- equation of nature phenomena and products of nature -- "old" DNA -- fact v law -- statutory or constitutional -- opinion is interpreting the statute to find DNA patent-ineligible or instead interpreting the

Constitution.

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

Subject: Genes--patentability--United States

SNIPER No.: 2013/02698

Author: Jessup, Leah

Author: Cade, Anita

Title: Australian ski resort owners lose fight over use of geographic descriptor

Source: World Intellectual Property Report. Vol. 27 No. 11, November 2013, pp. 3-5.

Summary: Difficulties in claiming exclusivity over a geographic name -- Federal Court of Australia decision in Kosciuszko Thredbo Pty Limited v. ThredboNet Marketing Pty Limited [2013] FCA 563 -

- the companies operating the Thredbo Village and Resort took action seeking to restrict another company offering accommodation in Thredbo from using the word "Thredbo" in its marketing --

Court has found largely in favour of Thredbo Net -- facts of the case -- whether "Thredbo" had acquired secondary meaning -- whether creation of the website amounted to misleading or deceptive conduct -- domain names, websites, slogans and a booking link using the word

"Thredbo".

Subject: Commercial names--case law--Australia

Subject: Passing-off--tourism and recreation industry--Australia

SNIPER No.: 2013/02417

Author: Smith, Adrian

Author: Bienert, Alexander

Title: Aveda v Dabur Uveda: Thomson Life confused


815.

Summary: The High Court of England and Wales found likelihood of confusion between a composite word mark and an earlier registered word mark -- Aveda Corporation v Dabur India

Limited -- DABUR UVEDA -- earlier registration of AVEDA -- skin care products -- The United

Kingdom Intellectual Property Office (UKIPO) rejected Aveda's opposition -- opposition based on s

5(2)(b) of the Trade Marks Act 1994 -- judge cited Medion v Thomson Multimedia Sales

('THOMSON LIFE') -- principle in THOMSON LIFE extended and likelihood of confusion found based on simple similarity and the fact that the marks applied to similar goods -- visual and aural similarity between AVEDA and UVEDA -- other European cases -- controversial decision -- other court decisions with arguably better outcomes.

Subject: Confusing similarity--case law--United Kingdom


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

Subject: Confusing similarity--Europe

SNIPER No.: 2013/02687

Author: Remington, Michael J.

Author: Li, Kexin

Title: The balance of interests in US copyright law

Source: China Intellectual Property: comprehensive IP report on China. Vol. 56 No. 7-8, July-

August 2013, pp. 72-77.

Summary: Copyright systems -- United States -- constitutional basis for copyright -- achieving balance between author, distributor and user needs -- statutory developments -- extension of copyright terms -- increased complexity of legislative framework -- case law developments --

Bikram's Yoga College of India v. Evolation Yoga -- copyright protection of yoga poses -- Capitol

Records, Inc. v. Thomas-Rasset -- unauthorised digital downloading -- Associated Press v.

Meltwater U.S. Holdings, Inc. -- fair use exceptions -- Kirtsaeng v. John Wiley and Sons Inc. -- first sale doctrine -- ability of copyright regimes to accommodate societal changes.

Subject: Copyright systems--United States

Subject: Electronic copyright--United States

SNIPER No.: 2013/02495

Author: Blum, Jeremy

Author: Collis, Patricia

Title: Battle plans

Source: Intellectual Property Magazine. October 2013, pp. 74-75.

Summary: Key strategies available to brand owners to obtain wide-ranging trade mark coverage -- how one can own a trade mark that is perpetually non-vulnerable to revocation -- how a preliminary injunction is an important tool for an aggressive trade mark holder to take urgent action.

Subject: Trade mark owners' rights

Subject: Trade mark enforcement

SNIPER No.: 2013/01369

Author: Falck, Andreas von

Author: Gundt, Miriam

Title: Better protection for patentees: preliminary injunctions in the EU for pharmaceutical patent matters

Source: Pharmaceutical Patent Analyst. Vol. 2 No. 3, May 2013, pp. 291-293.

Summary: Preliminary injunctions for pharmaceuticals -- Europe -- legal test for injunctions -- threat of infringement and actionable behaviour -- patent validity.

Subject: Injunctions--pharmaceutical industry--Europe

Subject: Patent litigation--pharmaceutical industry--Europe

Subject: Patent infringement--pharmaceutical industry--Europe

Subject: Patent validity--pharmaceutical industry--Europe


SNIPER No.: 2013/00921

Title: Biosimilars battle rages on, Amgen fights both sides

Source: Nature Biotechnology. Vol. 31 No. 4, April 2013, p. 269-270.

Summary: Biosimilars -- United States -- attempt to use state legislation to prevent substitution of generic medications -- patient safety arguments -- Amgen attempts to maintain originator protections while producing copies of competitor products -- European policy framework for biosimilars -- pressure from US Federal pharmaceutical payments -- Europe follows US lead on heparins

Subject: Pharmaceuticals--United States

Subject: Intellectual property abuse--pharmaceutical industry--United States

SNIPER No.: 2013/02662

Author: He, Huaiwen

Title: Blind angle of Chinese estoppel doctrine: implicit disclaimer but double benefits of doubt: comments on Supreme People's Court's civil judgment no. Mintizi 306/2001


Summary: Estoppel -- doctrine of equivalents -- patent claims -- China -- Zhongyo Elec Co. v.

Shanghi Jiuying Tech. Co. -- explicit disclaimer and estoppel -- implicit disclaimer and double benefit of the doubt -- leading United States cases on implicit disclaimer and estoppel -- reforms in

Chinese patent law.

Subject: Doctrine of equivalents--case law--China

Subject: Doctrine of equivalents--case law--United States

Subject: Patent claims--case law--China

SNIPER No.: 2013/01581

Author: Simmons, William J.

Title: Bowman v. Monsanto and the protection of patented replicative biologic technologies

Source: Nature Biotechnology. Vol. 31 No. 7, July 2013, pp. 602-606.

Summary: Patent infringement in transgenic replicative technologies -- United States -- Bowman v. Monsanto -- infringement through use of saved seed from Monsanto's genetically modified

'Roundup Ready' soybean -- Monsanto's patented soybean technology -- Bowman's use of soybean seeds contrary to signed usage agreement -- likelihood of abuse by competitors, patent exhaustion found not applicable to this specific use -- Supreme Court finding 'limited', not necessarily applicable to all self-replicating products.

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

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

Subject: Genetic modification--case law--United States

SNIPER No.: 2013/02538

Author: Al-Noubani, Renad

Author: Abu-Zulekha, Deema


Author: Shaban, Charles

Title: Brand commercialisation strategies for the Middle East and North Africa

Source: World Trademark Review. No. 46, December 2013-January 2014, pp. 53-55.

Summary: Middle East welcoming foreign business -- placing greater emphasis on the importance of intellectual property protection -- increasing numbers of United States and European companies are recognising the opportunities for growth in the Middle East and North Africa -- protecting and enforcing brands -- brand commercialisation -- licensing -- franchising -- commercial agencies -- regional differentiations -- business partners.

Subject: Intellectual property management--Middle East

Subject: Intellectual property management--North Africa

SNIPER No.: 2013/02413


Author: Flutter, Paula

Title: A brighter future for consumable suppliers?


808.

Summary: Patent not infringed by the supply of consumable coffee capsules -- Nestec SA, Nestlé

Nespresso SA and Nespresso UK Limited v Dualit Limited, Product Sourcing (UK) Limited and

Leslie Alexander Gort-Barten -- s60(2) of the United Kingdom's Patents Act 1977 -- portionised coffee machine -- Dualit provides coffee capsules -- capsule features included in claim -- analysis of decision -- doctrine of exhaustion of rights -- whether a coffee capsule was an essential element of the invention -- whether coffee capsules were a staple commercial product -- question of whether supplying a capsule led to 'making' an invention -- decision a win for consumable product suppliers.

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

Subject: Spare parts--case law--United Kingdom

SNIPER No.: 2013/02411

Author: Schneider, Marius, 1972-

Title: Call for an African IP practitioners' association

Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 11, November 2013, p. 805.

Summary: Promotion of IP and the education of IP practitioners through the establishment of IP associations -- European IP practitioners may be members of national, regional and niche organisations -- no pan-African right-holders' association -- some African IP professionals belong to local groups or attend International Trademark Association (INTA) meetings -- unfortunately

Africa not a high priority for INTA and attending INTA events requires overcoming financial and visa related obstacles -- potential benefit of an African IP practitioners' association to IP practitioners, right-holders, national and regional IP offices -- development of Africa and the need for IP protection -- suggestions for overcoming financial and logistic issues in establishing such an association.

Subject: Intellectual property industry--Africa

Subject: Intellectual property education--Africa

SNIPER No.: 2013/02702


Author: Turco, Antonio

Author: Remtulla, Tariq

Title: Canadian Court of Appeal upholds decision on patent invalidity and punitive damages


Summary: Canadian Federal Court of Appeal decision in Bell Helicopter Textron Canada Limiteé v. Eurocopter SAS -- affirmed trial decision that invalidated most of the claims of a patent for failure to meet the promised utility -- Court sanctioned the concept of punitive damages for wilful patent infringement -- facts of the case -- key concepts addressed -- utility and doctrine of sound prediction -- sound prediction applied to mechanical arts -- application to facts -- awarding punitive damages in patent infringement cases -- punitive damages appropriate in the circumstances -- awarding punitive damages before the quantum of general damages has been determined -- effect of the decision on businesses operating in Canada.

Subject: Patent infringement--case law--Canada

Subject: Patent utility--case law--Canada

Subject: Damages--Canada

SNIPER No.: 2013/00585

Author: Bodden, Gabriela

Title: Caribbean intellectual property in a nutshell

Source: Intellectual Asset Management. Building and Enforcing Intellectual Property Value 2013, pp. 60-64.

Summary: Intellectual property systems -- Caribbean -- international filings -- counterfeiting -- remedies in international trade agreements -- intellectual property enforcement -- Antigua -- Aruba

-- Bahamas -- Bermuda -- Bonaire -- British Virgin Islands -- Caribbean Netherlands -- Cayman

Islands -- Cuba -- Curacao -- Grenada -- Guyana -- Jamaica -- Montserrat -- Saba -- St Eustatius --

St Lucia -- St Maarten -- Surinam -- Trinidad and Tobago -- Turks and Caicos Islands -- Caribbean

Community (CARICOM).

Subject: Intellectual property--Caribbean

SNIPER No.: 2013/01578

Author: Ratner, Mark

Title: cDNA is patentable, but not genes

Source: Nature Biotechnology. Vol. 31 No. 7, July 2013, p. 574.

Summary: Patentability of unmodified human genes -- Association for Molecular Pathology v.

Myriad Genetics, Inc. -- Supreme Court decision -- potentially minimal impact of Myriad's business.

Subject: Patentability--biotechnology industry--United States

Subject: Gene sequences--patentability--United States

SNIPER No.: 2013/02490

Author: Calvaruso, Andrea

Author: Correa, Ana

Title: Challenging a gTLD LRO decision via declaratory judgment action



Summary: Lawsuit challenging an ICANN Expert Determination under ICANN's new gTLD

Program -- gTLD applicant Del Monte International GmBH filed a complaint for declaratory relief against objector Del Monte Corporation in US District Court -- seeking to overturn the decision rejecting DM International's registration of the gTLD '.delmonte' on the basis of DM Corp's Legal

Rights Objection -- difficult standards trade mark owners must meet to block a new gTLD application via ICANN's Legal Rights Objection ("LRO") proceedings -- ICANN'S new gTLD program -- legal rights objections -- brand owner's recourse after gTLDs delegation -- Del Monte's legal rights objection decision -- complaint in the US District Court -- actions for in-house counsel.

Subject: Domain name registration--case law--United States

Subject: Intellectual property litigation--United States

SNIPER No.: 2013/02689

Author: Nie, Kevin

Title: The changes of exchange mode in the field of pharmaceutical technology

Source: China Intellectual Property: comprehensive IP report on China. Vol. 57 No. 9-10,

September-October 2013, pp. 30-31.

Summary: Pharmaceutical patent auctions -- China -- CTEX Patent Auction (Biopharmaceuticals

Section) -- regulation of pharmaceutical industry -- need for better intellectual property focus -- innovation in technology exchanges -- CTEX operations in practice.

Subject: Financial management--intellectual property industry--China

Subject: Intellectual property management--pharmaceutical industry--China

Subject: Technology transfer--pharmaceutical industry--China

SNIPER No.: 2013/02723

Author: Suttmeier, Richard P.

Author: Xiangkui, Yao

Title: China's IP transition: rethinking intellectual property rights in a rising China

Source: NBR special report. No. 29, 2011.

Summary: Factors shaping the evolution of China's IP regime -- drive to prioritise intellectual property protection to promote indigenous innovation -- movement toward greater harmonisation -- international IP norms evident -- direction not assured.

Subject: Intellectual property--China

Subject: Intellectual property systems--China

SNIPER No.: 2013/02771

Author: Andersen, Birgitte, 1967-

Author: De Silva, Muthu

Author: Levy, Charles

Added author: Big Innovation Centre

Added author: UK Intellectual Property Office

Title: Collaborate to innovate: how business can work with universities to generate knowledge and drive innovation


Source: Collaborate to Innovate. 2013.

General Note: This is an independent report produced by the Big Innovation Centre with the support of the Intellectual Property Office.

Summary: Businesses and universities collaborate successfully -- room to improve how some universities and businesses collaborate to generate new knowledge -- adopting communication, collaboration and negotiation-related management practices is a key to successful collaborations -- need to be supported by university infrastructure -- Laber Toolkit -- utilisation of specific Open innovation networks -- learn from past experience of innovation voucher schemes -- encourage university-business placements -- IP protection strategies should be open and flexible --

Technology transfer offices strengthen institutional links -- paradigm shift from 'knowledge transfer' to 'knowledge co-creation' -- pursuing good practices -- specific messages for universities -- messages for policy makers and funders.

Subject: Technology transfer--research--United Kingdom

Subject: Business collaboration--research--United Kingdom

SNIPER No.: 2013/02739

Author: Nicol, Dianne

Title: Collaborative licensing in biotechnology: a survey of knowledge, experience, and attitudes in

Australia

Source: Biotechnology Law Report. Vol. 29 No. 5, October 2010, pp. 465-483.

Summary: Patents in medical biotechnology -- difficult to measure the extent to which the patent system actually achieves this end -- strong patent protection is essential to the survival of biotechnology industry participants is subject to debate -- implications of patenting upstream biomedical technologies -- role for collaborative licensing strategies -- study undertaken sought to assess current patenting and patent licensing practices in Australia in the area of medical biotechnology against the backdrop of the Nicol-Nielsen study undertaken in 2002-2003 -- evaluate knowledge of, experience with, and attitudes toward collaborative licensing strategies that might better facilitate biomedical research and the development of new biomedical products, including drugs, diagnostics, and therapies -- cross licensing -- patent pooling – clearing houses -- results of the survey.

Subject: Biotechnology industry--research--Australia

Subject: Patent licensing--biotechnology industry--Australia

Subject: Patent licensing--pharmaceutical industry--Australia

SNIPER No.: 2013/02748

Author: Hilty, Reto M, 1958-

Author: Jaeger, Thomas, LL. M.

Author: Lamping, Matthias, 1983-

Author: Romandini, Roberto

Author: Ullrich, Hanns

Added author: Max-PlanckInstitut für Immaterialgüter- und Wettbewerbsrecht

Title: Comments on the preliminary set of provisions for the Rules of Procedure of the Unified

Patent Court

Source: Max Planck Institute for Intellectual Property and Competition Law Research Paper. No.

13-16, 1 October 2013.


General Note: Re-formatted version of comments submitted by the Max Planck Institute for

Intellectual Property and Competition Law in the public consultation on the 15th draft for Rules of

Procedure for the Unified Patent Court conducted between June and October 2013.

Summary: Draft Rules of Procedure of the Unified Patent Court (UPC) -- potential for incentives to favour patent owners -- UPC autonomy -- uniformity -- balance -- optional splitting of infringement and revocation proceedings -- objections in infringement proceedings -- injunctions in infringement proceedings -- rules to operate within strict limits.

Subject: Unified Patent Court--procedure

Subject: Legal procedure--Europe

SNIPER No.: 2013/02778

Added author: Organisation for Economic Co-operation and Development

Title: Commercialising public research: new trends and strategies

Source: Commercialising Public Research: New Trends and Strategies. 2013.

Summary: Recent trends in government and university level policies to enhance the transfer and exploitation of public research -- benchmarks the patenting and licensing activities of public research institutions (PRIs) and universities in a number of OECD countries and regions -- EU,

Australia, Canada and US -- case studies of leading institutions in Finland, Germany, Czech

Republic, Japan, United States -- good practices for increasing the number of university invention disclosures -- accelerating licensing contracts -- promote more open innovation practices between universities and firms -- knowledge transfer channels and the commercialisation of public research

-- benchmarking knowledge transfer and commercialisation -- policies to enhance the transfer and commercialisation of public research -- financing of public research-based spin-offs.

Subject: Technology transfer--education and training industry


Subject: Patents--education and training industry

Subject: Intellectual property licensing

Subject: Innovation (Technological)--statistics

SNIPER No.: 2013/00578

Author: Bühling, Jochen, 1961-

Title: The competition/IP law nexus in Europe


Summary: Interface between competition and intellectual property law -- European Commission investigations -- legal background -- standards-essential patents -- patent licensing -- pharmaceutical sector.

Subject: European Commission

Subject: Patents--Europe

Subject: Competition law--Europe

Subject: Standards (Technical)--Europe

Subject: Pharmaceutical industry--Europe


SNIPER No.: 2013/02737

Author: Hubbard, William R.

Title: The competitive advantage of weak patents

Source: Boston College Law Review. Vol. 54 No. 5, Article 3 2013, pp. 1909-1965.

Summary: United States patent law -- enhancing competitive advantage -- determinants of competitive advantage -- factor conditions -- domestic rivalry -- U.S. patent law and competitive advantage -- U.S patent law and factor conditions -- patents and general competition -- U.S patents and competition by U.S. firms -- current approaches to U.S. patent law and competitive advantage

-- effects of weakening U.S. patent law -- cost/benefit recalibrations to U.S. patent law -- patent harmonisation and competitive advantage -- experimental use defence -- prior use defence.

Subject: Patents--economics--United States

Subject: Intellectual property management--United States

Subject: Value of intellectual property--United States

SNIPER No.: 2013/02666

Author: Rui, Songyan

Title: A comprehensive analysis of adjudication of trademark administrative cases


Summary: Administrative trade mark case law -- China -- "unhealthy influences" and public morality -- good faith registration -- distinctive character -- descriptiveness -- three-dimensional marks -- ad words -- well-known marks -- evidence of reputation -- cross-class confusion with wellknown marks -- dilution -- geographical indications -- bad faith and free riding -- degree of similarity of marks -- non-infringement of prior rights -- prior copyright -- removal for non-use.

Subject: Trade marks--case law--China

SNIPER No.: 2013/02580

Author: Kurts, Ann

Title: Consequences of the US Supreme Court decision on gene patenting


Summary: Supreme Court decision in Association for Molecular Pathology v Myriad Genetics -- patent on diagnostic test for BRCA1 and BRCA2 -- decision has been long awaited for both sides of the gene patenting debate -- practical effects of this decision -- USPTO practice -- Myriad's response -- third-party views -- Secretary's Advisory Committee on Genetics, Health, and Society

(SACGHS) report to the US Secretary of Health and Human Services -- examining the impact of gene patenting in the human health sector -- part of the report focused on the Myriad patents --

Australian inquiries and legislation -- Senate Community Affairs Committee on matters relating to the patenting of human genes and genetic materials -- reports from the Australian Law Reform

Commission (ALRC) and Australian Government Advisory Council on Intellectual Property (ACIP) -

- Intellectual Property Laws Amendment (Raising the Bar) 2012 introduced the experimental use exception from patent infringement -- Australian litigation -- position of the Australian Federal Court is diametrically opposed to that of the US Supreme Court on this issue -- European position -- international treaties -- Nagoya Protocol.




SNIPER No.: 2013/02700

Author:

Nørgaard, Jens Viktor

Author: McNeill, Rebecca M.

Title: Considerations for US Patent Attorneys when drafting patent applications to maximize prosecution opportunities in Europe


Summary: Comparison and contrasting of requirements for patent applications in the US and

Europe -- recommendations for US patent application drafters to best protect their inventions in the

Europe without disadvantaging their US strategy -- literal approach of the European Patent Office

(EPO) to reading documents -- drafting applications with regard to potential future amendments -- priority -- novelty -- inventive step -- enablement -- methods of treatment and diagnostic uses -- unity of invention

Subject: Patent specifications--United States

Subject: Patent specifications--Europe

SNIPER No.: 2013/00584

Author: DuPré, John L.

Author: Hamann, John D.

Title: Controlling costs in patent litigation


Summary: Managing costs in patent litigation -- United States -- litigation teams and staffing -- discovery practices -- electronic discovery -- motion practices -- trial preparation practices.

Subject: Patent litigation--costs--United States

Subject: Legal procedure--costs--United States

SNIPER No.: 2013/02581

Author: Silverman, Iona

Title: Copyright and fashion: friends at last?


Summary: Explores the application of copyright to the range of products made by the fashion industry -- various jurisdictional differences and ever-changing legal landscape -- concept of a

"protectable" work -- recent EU case law indicates the concept of protectable work can be harmonised so that the same "open list" test applies across Europe -- a change which would hugely benefit the fashion industry -- slower legislative changes in the United States -- considers the impact the Fashion Bill might have had on fashion houses in the United States -- ideas for designers how best to apply copyright law to protect works of fashion.

Subject: Fashion and design industry

Subject: Copyright owners' rights--fashion and design industry--Europe

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

Subject: Trade mark owners' rights--fashion and design industry

Subject: Copyright infringement


SNIPER No.: 2013/02657

Author: Jessup, Leah

Title: Copyright in the social media realm: publishing of Twitter pic ruffles more than a few feathers

Source: Internet Law Bulletin. Vol. 16 No. 6, October 2013, pp. 146-149.

Summary: Twitter case under US law -- posting content through social media and using content posted by others -- photographer Daniel Morel published images of the Haiti earthquake on Twitter

-- French news agency Agence France-Presse (AFP) and the Washington Post infringed Morel's copyright -- pictures transferred later transmitted to stock photo agency Getty Images -- case draws attention to the importance of understanding the rights of providers, users and third parties provided by the terms of service that control social media platforms -- Twitter's terms of service, the agreements that control the use of social media platforms can change as quickly as the technology through which they operate -- licence defence -- Digital Millenium Copyright Act

(DCMA) safe harbour defence -- clients rights to publish -- lack of conduct court's orders on infringement -- implications for users of social media.

Subject: User-generated content

Subject: Social networking--United States

Subject: Copyright infringement--United States

SNIPER No.: 2013/02671

Author: Liu, Frank

Title: Counterfeit fighting strategy and experiences of multinational enterprise

Source: China Intellectual Property: comprehensive IP report on China. Vol. 55 No. 5-6, May-June

2013, pp. 48-51.

Summary: Anti-counterfeiting strategies -- China -- finding counterfeits -- typical counterfeit manufacturers -- shadow companies -- use of other's trade marks as trade names -- pretend authorised distributors -- shelf companies and website sales of counterfeits -- countermeasures.

Subject: Counterfeiting--China

SNIPER No.: 2013/01576

Author: Squicciarini, Mariagrazia

Author: Dernis, Hélène

Added author: Organisation for Economic Co-operation and Development. Directorate for

Science, Technology and Industry

Title: A cross-country characterisation of the patenting behaviour of firms based on matched firm and patent data

Source: OECD Science, Technology and Industry Working Papers. 2013/05, 10 September 2013.

Summary: Patenting behaviour of firms -- profile of patenting and non-patenting firms, 1999-2010 -

- patenting activity by firm size -- patenting activity by ownership status -- firm age and patenting activity -- patenting activity by sector -- patent renewals by sector.

Subject: Patents--statistics

SNIPER No.: 2013/02583

Author: Cukier, Ashley


Title: Dalí gives greater clarity to the resale Directive


Summary: Directive 2001/84 enshrined into European law the right of artists to receive a royalty when their works are resold -- contemplates the historical origins of the right, arguments for and against it, and the mechanics of how the right will operate in practice -- analyses in detail the recent case of Dalí v ADAGP, where the Court of Justice of the European Union (CJEU) considered the Directive for the first time -- resolved dispute over resale royalties pertaining to some of the Spanish surrealists works -- artist's resale right or droit de suite -- EU harmonisation

Directive 2001/84.

Subject: European Parliament. Directive 2001/84/EC of the European Parliament and of the

Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art

Subject: Droit de suite--case law--United Kingdom

Subject: Artistic works--United Kingdom

SNIPER No.: 2013/02389

Author: Berman, Bruce M.

Title: DC watchdog gets serious about foreign theft of US intellectual property

Source: Intellectual Asset Management. No. 61, September-October 2013, p. 26.

General Note: Commission of the Theft of American Intellectual Property report, see also

2013/02722.

Summary: Findings of the Commission of the Theft of American Intellectual Property -- no mention of domestic IP threat inflicted on the US economy -- poor legal environments for IP rights -- protectionist industrial policies -- IP theft justified by an uneven playing field, which benefits developed countries -- focus on frivolous patent suits -- domestic patent infringement

Subject: Intellectual property infringement--United States

SNIPER No.: 2013/02663

Author: Xiong, Yanfeng

Author: Yang, Michelle

Author: Wu, Yuhe

Author: Li, Johnson

Author: Wang, Jinjing

Author: Wang, Scott G.

Author: Li, Rongxin

Author: Ke, Ke

Author: Zhang, Dongli

Author: Chen, Ran

Author: Li, Xiao

Author: Chen, Hongxu

Title: Definition and determination of obvious substantive defects in reexamination ex officio



Summary: Patent re-examination -- China -- basis of and issues with ex officio examination in patent re-examination procedure -- Guidelines for Patent Examination relating to substantive defects -- court opinions on Guidelines -- relevant United States and European provisions -- following court principles not a loss of level of adjudication by examiners -- analysis.

Subject: Patent examination--China

Subject: Patent validity--China

Subject: Patent claims--China

SNIPER No.: 2013/02886

Author: Dommen, Caroline

Added author: Quaker United Nations Office

Title: Definition of "Breeder" under UPOV: why it matters

Source: Briefing papers (Quaker United Nations Office). No. 2, 2013.

Summary: Food, biological diversity and intellectual property for the October 2013 International

Union for the Protection of New Varieties of Plants (UPOV) session -- members will be considering the explanatory notes on the definition of the Breeder -- delegates, particularly from developing countries, should carefully consider their countries' objectives and realities in the area of agriculture and plant breeding when discussing this document -- particularly in relation to the role that smallholder farmers play in plant breeding.

Subject: International Convention for the Protection of New Varieties of Plants (1961 December 2)

Subject: Farmers' rights--negotiations

Subject: Plant breeder's rights--treaties

Subject: Plant rights systems

SNIPER No.: 2013/02631

Author: Tirovi ć, M.

Author: Hartwell, Ian P.

Title: Design optimisation: challenges in protecting intellectual property

Source: International Journal of Intellectual Property Management. Vol. 6 No. 3, 2013, pp. 159-

177.

Summary: Computer-based design optimisation methods -- oil and automotive industries patent protection of such methods and the resulting products may be problematic in regards to obviousness -- research work on optimisation methods applied to the design of high performance car brake callipers -- risk of invalidity may be reduced by making the design method and the product design resulting from that method the subject of separate patent applications -- inventive step.

Subject: Industrial design registrability--manufacturing and processing industry

SNIPER No.: 2013/02667

Author: Qu, Linggang

Title: Determination of infringement in trade mark and service mark conflicts



Summary: Conflicts between trade marks and services marks -- China -- extent of relationship between contested marks -- intended use and users -- Xin Yuan Zhai case -- Xu Lin Shan case -- determination of infringement -- differentiation between trade marks and service marks -- manner of use -- determination of similarity -- recommendations for examination of trade and services marks.

Subject: Trade mark infringement--China

SNIPER No.: 2013/02420

Author: McDonald, Garth

Title: Determining a fair licence fee for a celebrity photograph


821.

Summary: Judge rules that the exclusive nature of a photograph and the celebrity status of the subjects makes a fair licence fee greater than that offered by the defendant -- Jason Sheldon v

Daybrook House Promotions -- Ke$ha and LMFAO -- The Enterprise and Regulatory Reform Act

2013 -- use of 'orphan works' -- use of photographs by third parties from the internet -- case looked at the process for determining a fair licence fee for use of a photograph -- photographer sent Daybrook House Promotions Ltd an invoice for use of the photograph in their advertising campaign -- photo freely available on Tumblr website -- parties disagreed on what a fair licence fee should be -- assuming infringement had taken place royalties were estimated -- estimates provided by parties using various sources -- judgement based on the commercial realities of professional photography -- remains to be seen if courts decide that infringement actually took place.

Subject: Copyright owners' rights--case law--United Kingdom

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

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

SNIPER No.: 2013/02575

Author: Chu, Jonathan M.W.W.

Title: Developing and diffusing green technologies: the impact of intellectual property rights and their justification

Source: Washington and Lee Journal of Energy, Climate, and the Environment. Vol. 4 No. 1,

Article 4 2013, pp. 53-102.

Summary: Green technology -- clean energy technology -- other green technologies -- why green technology and access to it is important -- intellectual property and technology positive and negative strategies -- encourages innovation by incentives -- discourage delays in investment and technology transfer -- technological IP -- layout designs -- confidential information -- non technological IP trade mark rights -- design rights -- copyright.

Subject: Environmental issues in intellectual property

Subject: Compulsory licensing

Subject: Industrial research and development

SNIPER No.: 2013/00591

Author: Schüll, Gottfried

Title: Digital data products: no end to patent piracy



Summary: Patent piracy in the digital environment -- Germany -- recent case law -- DVD replicator

-- protection of digital data products -- digital data products in the marketplace -- defences to patent piracy.

Subject: Piracy--Germany

Subject: Patent infringement--Germany

Subject: Computer-related inventions--Germany

SNIPER No.: 2013/02744

Author: Branstetter, Lee

Author: Fisman, Raymond

Author: Foley, C. Fritz

Title: Do stronger intellectual property rights increase international technology transfer?: empirical evidence from U.S. firm-level panel data

Source: Quarterly Journal of Economics. Vol. 121, No. 1, June February 2006, pp. 321-349.

Summary: Examines how technology transfer within U. S. multinational firms change in response to a series of IPR reforms undertaken by sixteen countries over the 1982-1999 period -- analysis of detailed firm-level data reveals that royalty payments for technology transferred to affiliates increase at the time of reforms, as do affiliate R&D expenditures and total levels of foreign patent applications -- increases in royalty payments and R&D expenditures are concentrated among affiliates of parent companies that use U. S. patents extensively prior to reform -- expected to value

IPR reform most -- for this set of affiliates, increases in royalty payments exceed 30 percent.

Subject: Technology transfer--United States

Subject: Intellectual property rights--research--United States

SNIPER No.: 2013/02388

Author: Jarczyk, David R.

Author: Wiora, John J.

Author: Lambert, Danielle M.

Title: Drivers of IP value: the most active companies in intellectual property


Summary: IP connections -- actively managing an IP portfolio to drive value -- IP deal making -- 50 most active companies in IP during 2012 -- interconnectivity of IP tools -- royalty rate trends for the pharmaceutical industry -- patenting -- history of a patent -- trademarking -- Apple Inc IP counts and IP activity -- M & A activity -- meet the IP elite -- methodology -- IBM -- Tyco Healthcare --

Panasonic Corporation -- patent and assignment filings -- trade marking and assignment filings -- patent licensing.

Subject: Patent licensing

Subject: Intellectual property management


SNIPER No.: 2013/02656


Author: McLeod, Chris

Author: Neil, James

Title: Employees, social media and confidential information: uneasy bedfellows

Source: Internet Law Bulletin. Vol. 16 No. 6, October 2013, pp. 134-137

Summary: Use of social media LinkedIn connections -- employees' relevant obligations -- customer client lists considered trade secrets -- use of LinkedIn encouraged by employers -- not considered a trade secret at this stage by a court in Australia -- guidance from the decisions of courts in other jurisdictions -- United States decision Eagle v Morgan -- United Kingdom decision

Hays v Ions -- what businesses can do to protect themselves -- social media policy -- use of

LinkedIn when accessed through employer-provided IT services for the benefit of the employer.

Subject: User-generated content

Subject: Social networking

Subject: Intellectual property rights--information technology industry

Subject: Risk--management

SNIPER No.: 2013/02585

Author: Liu, Deming

Title: English copyright law makes the poor "snowman" sculpture poorer


Summary: Sculpture copyright: history and exceptions -- evaluates the two exceptions to sculpture copyright under English copyright law -- section 62 ambiguities in respect of sculptures situated in premises open to the public and permanently situated in public only -- moral rights germane by the exceptions -- right of attribution -- right of integrity -- right against false attribution -- exceptions approaches of China and the United States -- recommends an amendment to the law -- follow the

US and China approach by restoring the commercial exploitation of copyright in respect of public sculpture.

Subject: Copyright ownership--United Kingdom

Subject: Artistic works--law and legislation--United Kingdom

Subject: Culture and entertainment industry--United Kingdom

SNIPER No.: 2013/02725

Author: Brant, Jennifer

Author: Lohse, Sebastian

Title: Enhancing intellectual property management and appropriation by innovative SMEs

Source: ICC Innovation and Intellectual Property series research paper. No. 1, 2013.

General Note: Publication number: 450/1081-1.

Summary: Overview of the various internal and external factors that may influence SMEs' approaches to IP management -- main types of strategies they adopt -- how SME's might improve their IP management -- recommendations for policy-makers -- analysis focuses on the protection of inventions and physical processes draws on academic literature covering a range of emerging and developed countries -- interviews with business leaders from innovative SMEs in high technology sectors.



Subject: Small and medium enterprises

SNIPER No.: 2013/02541

Author: Hu, Gang

Title: Evicting the squatters: China amends Trademark Law


Summary: Standing Committee of the National People's Congress approved the latest round of amendments to the Trademark Law -- focus on efficiency -- reducing registration times -- optimising the examination procedure-- facilitating applicants and strengthening trade mark protection -- sound marks -- multi-class applications -- re-establishing the office action system -- preventing bad faith applications -- well-known trade marks -- changes in opposition procedures -- protecting registered trade marks.

Subject: Trade marks--reform--China

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

SNIPER No.: 2013/02684

Author: Lin, Shen

Author: Yang, Weiming

Title: Examining points in telecommunications for invention patent applications relating to billing systems


August 2013, pp. 64-66.

Summary: Patents for telecommunications billing methods -- China -- patent eligibility of business methods -- characteristics of patent applications for communications billing systems -- keys to examining patents for communications billing systems.

Subject: Business methods--communication services industry--China

Subject: Patent examination--communication services industry--China

Subject: Communication services industry--patentability--China

SNIPER No.: 2013/01201

Author: Chuah, Jern Ern

Title: The expedited examination process in Malaysia

Source: Expert Guides. Patent Practitioners, March 2013, pp. 13-15.

Summary: Patent examination options -- Malaysia -- expedited examination -- approval process -- examination requirements -- amendment if adverse report issued -- strict procedural and time constraints.

Subject: Patent examination--Malaysia

Subject: Patent processing--Malaysia

SNIPER No.: 2013/02540

Author: Beckham, Brian

Title: Exploring the URS as a trademark enforcement option for new gTLDs



Summary: Internet Corporation for Assigned Names and Numbers' (ICANN) new generic top-level domain (gTLD) programme -- Uniform Rapid Suspension system (URS) -- Uniform Domain Name

Dispute Resolution Policy (UDRP) -- key tools available to trade mark counsel to help stem the tide of infringement in new gTLDs -- enforcement tools for avoiding abuse at the top level are nearing completion -- ICANN will provide several post-delegation enforcement mechanisms aimed at addressing infringing behaviour at the top level -- URS is a mandatory rights protection mechanism for all new gTLDs -- the good, the bad and the ugly of the URS -- principal procedural rules -- key issues that practitioners may be considering in deciding whether to opt for the URS or the UDRP.

Subject: Domain name dispute resolution

Subject: Domain name registration

SNIPER No.: 2013/02151

Author: Quirk, Andrew

Author: Mirandah, Gladys

Title: Factor the law into ASEAN franchising

Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 6, June-July 2013, pp. 42-47.

Summary: Franchising -- considerations for different ASEAN countries -- frequently changing regulations -- issues to consider when planning on bringing a foreign franchise to Asia -- precontractual formalities -- post-contractual formalities

Subject: Franchising--Southeast Asia

Subject: Franchising--law and legislation--Indonesia

Subject: Franchising--law and legislation--Malaysia

Subject: Franchising--law and legislation--Thailand

Subject: Franchising--law and legislation--Singapore

Subject: Franchising--law and legislation--Thailand

Subject: Franchising--law and legislation--Vietnam

SNIPER No.: 2013/02403

Author: Mandy, A. Sasha

Title: Federal Court of Canada ruling adds uncertainty over question of novelty and disclosure

Source: World Intellectual Property Report. Vol. 27 No. 10, October 2013, pp. 41-43.

Summary: Patent infringement -- equipment and service providers in tar sands industry exerting patents against competitors -- Varco Canada Limited v Pason Systems Corp -- facts of the case -- whether product testing destroyed novelty -- opportunity to access information -- infringement -- prior public disclosure -- case adds uncertainty as to what constitutes a disclosure which makes the subject matter of the invention available to the public

Subject: Patent infringement--case law--Canada

Subject: Patent novelty--case law--Canada

SNIPER No.: 2013/02660

Author: Middleton, Kiralee


Title: Fifty shades of copyright grey

Source: Internet Law Bulletin. Vol. 16 No. 7, November 2013, pp. 167-170.

Summary: Non-commercial creative works, such as fan fiction, remained almost unregulated prior to the internet -- potential for non-commercial fan fiction authors to be sued under copyright infringement -- Fifty Shades of Grey novels by E L James considered fan fiction based on

Stephanie Meyer's popular Twilight books -- adequacy of the current law or reform needed to make an allowance for these types works -- copyright and trade mark infringement law suit -- policy issues -- possible reforms -- creative commons -- fair use defence by no means an assured protection.

Subject: Fair use (Copyright)

Subject: Copyright owners' rights--culture and entertainment industry

SNIPER No.: 2013/02509

Author: Murray, Adrian

Title: Fracking's patent strategy


Summary: Process of hydraulic fracturing -- maximising the volume of gas or oil that can be extracted -- whether the economic and political advantages outweigh environmental concerns -- fracking was subject to a moratorium in the United Kingdom -- now has the backing of government

-- intellectual property involved in fracking -- the future of fracking -- whether environmental activism will cross over into patent action -- whether government policy also affects IP rights in fracking -- other issues to consider.

Subject: Environmental issues in intellectual property

Subject: Mining industry

SNIPER No.: 2013/02633

Author: Gargate, Gouri

Author: Jain, Karuna

Title: A framework to comprehend the position of intellectual property rights in complex organisational capital


216.

Summary: Provides an IC-FC-OC-IPR framework for efficient intellectual property management

(IPM) of an organisation -- nature of the research is exploratory -- the framework describes context and position of intellectual property rights in a complex organisational capital -- three new constructs are introduced which categorise IPM at three different levels -- IPM activity matrices can be developed using three constructs and related three measurement parameters -- integration of innovation process and IPM is practiced in Fortune 500 organisations -- considering organisations in developing world, the scenario is different -- these organisations are struggling for efficient IPM -

- this paper gives structured framework to address this research gap -- limitation of this paper is that the framework has been validated in electrical industry sector.



SNIPER No.: 2013/02150


Author: Glass, Gregory

Author: Ee, Joel Loo Sean

Author: Ilas-Panganiban, Divina PV

Author: Jahja, Prudence

Author: Zheng, On Hung

Author: Goh, Daena

Author: Casuela, Pericles R.

Author: Nguyen, Thom Thi Mai

Author: Hull, Konrad

Author: Hare, Rhonda

Author: Cummiskey, James

Author: Adcock, Alan

Author: Leong, Constance C. L.

Title: Franchising the future


Summary: The franchising model in countries of the Association of Southeast Asian Nations

(ASEAN) -- Singapore -- Malaysia -- Indonesia -- Philippines -- Thailand -- Vietnam -- Brunei -- explanations from local lawyers on why franchising has become such a popular way of doing business -- why franchising is expanding into less-developed countries such as Myanmar,

Cambodia and Laos.

Subject: ASEAN

Subject: Franchising--Southeast Asia

SNIPER No.: 2013/02419

Author: Clark, Birgit

Title: 'Freckles on her nose, diddle diddle dee': copyright protection of a literary figure


819.

Summary: Limited adoption of the characteristics of a literary figure by a third party in their advertisements seen as 'fair use' -- German Federal Court of Justice (BGH) Case I ZR 52/12 -- works protected are defined in Article 2 of the German Copyright Act (UrhG) -- claimed infringement of the copyright in fictional character Pippi Longstocking -- late Swedish author Astrid

Lindgren -- lower courts agreed with claimant that defendant's use could not be seen as 'fair use' --

BGH however decided that defendants use did not qualify as copyright infringement -- analysis of decision -- German court decision on other imaginary characters -- question marks over the decision -- case remitted to the Court of Appeal to decide on the protection applied under competition law.

Subject: Copyright infringement--case law--Germany

Subject: Fair use (Copyright)--case law--Germany

SNIPER No.: 2013/02515

Author: Cutler, Matthew L.


Title: GAO report: looking for the real troll


Summary: Government Accountability Office (GAO) -- study on the consequences of patent litigation by non-practising entities (NPEs) -- patent litigation trending higher -- GAO report found

NPEs were only part of the problem -- report blames the United States Patent and Trademark

Office (USPTO) -- the court system -- capitalistic instinct -- GAO report also praises the USPTO and courts for implementing significant changes -- GAO's mission -- need for further investigation of NPE litigation activity is borne out in the numbers uncovered by GAO -- role of the district courts

-- role of the patent office.

Subject: Patent trolls--United States


SNIPER No.: 2013/02752

Author: Jaffe, Adam B.

Author: Trajtenberg, Manuel

Title: Geographic localization of knowledge spillovers as evidenced by patent citations

Source: Quarterly Journal of Economics. Vol. 108, No. 3, August 1993, pp. 577-598.

Summary: Comparison of the geographic location of patent citations with that of the cited patents -

- evidence of the extent to which knowledge spillovers are geographically localised -- finds that citations to domestic patents are more likely to be domestic -- more likely to come from the same state and Consolidated Metropolitan Statistical Areas (SMSA) as the cited patents -- when compared with a "control frequency" reflecting the pre-existing concentration of related research activity -- these effects are particularly significant at the local (SMSA) level -- localisation fades over time, but only very slowly -- no evidence that more "basic" inventions diffuse more rapidly than others.



SNIPER No.: 2013/02582

Author: Adeney, Elizabeth

Author: Antons, Christoph

Title: The Germania 3 decision translated: the quotation exception before the German

Constitutional Court


Summary: Germania 3 landmark German case decided in 2000 -- excerpts taken from the works of Marxist playright Bertolt Brecht and large passages were featured in Heiner Müller's play

Germania 3 -- United Kingdom set to introduce limited "quotation" exception into its copyright law -- a similar but broader exception is currently under discussion in Australia -- it is an opportune time to consider what the legal notion of "quotation" is or may be -- in Germany the freedom to quote is one of the main limitations on copyright -- judicially considered by the highest courts in the country

-- a translation of the German Constitutional Courts decision on what constitutes an allowable quotation, in the light both of copyright law and of constitutional guarantees.

Subject: Fair use (Copyright)--case law--Germany

Subject: Copyright--reform--United Kingdom


SNIPER No.: 2013/02759

Author: Schwab, Klaus, 1938-

Author: Sala-i-Martin, Xavier

Author:

Brende, Børge

Author: Annoni, Paola

Author: Blanke, Jennifer

Author: BilbaoOsorio, Beñat

Author: Browne, Ciara

Author: Corrigan, Gemma

Author: Campanella, Edoardo

Author: Crotti, Roberto

Author: Dijkstra, Lewis

Author: Drzeniek Hanouz, Margareta 1971-

Author: Geiger, Thierry

Author: Gutknecht, Tania

Author: Ko, Caroline

Author: Serin, Cecilia

Added author: World Economic Forum

Title: The global competitiveness report 2013-2014

Source: Global Competitiveness Report. 2013-2014.

General Note: Eighteenth report in a series.

Summary: Ranking of international competitiveness -- sustaining growth, building resilience -- the sustainable competitiveness of nations -- business executive opinion survey -- country and economics profiles -- data tables -- technical notes.

Subject: Competition (Economics)--reviews

SNIPER No.: 2013/02390

Author: Redfearn, Nicholas

Author: Smith, Tim

Title: Going bespoke: keeping IP strategies current in China's evolving landscape


Summary: IP strategies tailored to meet the challenges that China presents -- changing landscape for doing business in China -- rise of Chinese companies -- changing nature of IP issues -- forming

IP strategies in China today -- doing nothing not an option -- being proactive -- domestic utility model applications in Australia -- know and actively manage your intellectual assets -- inventor remuneration -- education -- China's heavy investment in judicial IP training -- IP registration -- layer your intellectual property -- first filing - identify the real commercial threats and measure the results -- IP watch services -- prepare for conflict -- get to know your embassy -- engage with local government -- engage with the court system -- review strategies frequently.

Subject: Intellectual property management--China

Subject: Intellectual property systems--China


SNIPER No.: 2013/02658

Author: Paltiel, Minna

Author: Neil, James

Title: Google's change in policy regarding authorised use of trade marks as keywords: still not free reign for advertisers: Interflora Inc v Marks and Spencer Plc

Source: Internet Law Bulletin. Vol. 16 No. 6, October 2013, pp. 150-154.

Summary: Interflora Inc v Marks and Spencer Plc (lnterflora v M&S) -- first decision dealing with third-party use of a trade mark as a keyword since Google changed its policy to no longer restrict advertisers using trade marks as keywords in Google's AdWords program -- UK High Court found that that use by Marks and Spencer (M&S) of Interflora trade marks as keywords adversely affected their function in distinguishing the origin of goods and services -- although decided in a different jurisdiction the case has important implications for trade mark owners and advertisers in

Australia -- likelihood of confusion -- evidential onus is on the advertiser -- comparative advertising

-- trade marks, keywords and domain names.

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

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

SNIPER No.: 2013/02731

Author: Odell-West, Amanda

Title: Has the commodore steered the fleet on to the rocks?: biotechnology and the requirement for industrial applicability

Source: Intellectual Property Quarterly. No. 4, 2013, pp. 279-302.

Summary: Pan-European litigation concerning a patent for a newly discovered human protein and its encoding gene sequence -- parallel revocation proceedings instituted at the European Patent

Office (EPO) and in the High Court -- the invention was not patentable -- the patent was eventually maintained in both jurisdictions -- Supreme Court overlooked the Court of Justice of the European

Union (CJEU) jurisprudence concerning the standard for industrial application under the

Biotechnology Directive -- followed inconsistent EPO jurisprudence -- result is a doctrinally muddled, "sliding-scale" standard for inventions arising in biotechnology -- ramification of a patent policy that supports early-research inventions in biotechnology.

Subject: Biotechnology

Subject: Genes--patentability

SNIPER No.: 2013/01116

Title: Has the ideas machine broken down?

Source: The Economist. Vol. 403 No. 8818, 12-18 January 2013, pp. 19-22.

Summary: Effect of innovation and new technology on economic growth -- whether Silicon Valley is stagnant -- appearance of a technological plateau -- patent filing statistics -- number of people working in research and development -- progress seems slow by comparison to early- and mid-

20th century -- manufacturing productivity growing -- time taken for full exploitation of a technology

-- changing role of government and private research -- welfare gains from productivity advances.

Subject: Innovation (Technological)--trends

Subject: Patents--trends

Subject: Industrial research and development--trends


Subject: Economic development--trends

SNIPER No.: 2013/02899

Author: Lopert, Ruth

Author: Gleeson, Deborah

Title: The high price of "free" trade" U.S. trade agreements and access to medicine

Source: Journal of Law, Medicine and Ethics. Vol. 41, No. 1 Spring 2013, pp. 199-223.

Summary: United States' pursuit of TRIPS-Plus levels of intellectual property protection for medicines in bilateral and regional trade agreements -- U.S. efforts through these agreements to influence and constrain the pharmaceutical coverage programs of its trading partners -- U.S. nevertheless succeeded in its bilateral FTA with South Korea (KORUS) in establishing prescriptive provisions pertaining to the operation of coverage and reimbursement programs for medicines and medical devices -- potential to adversely impact future access in Korea -- draft texts leaked from the current Trans Pacific Partnership Agreement (TPPA) negotiations show that U.S. objectives include not only AUSFTA-Plus and KORUS-Plus IP provisions but also ambitious inroads into the domestic health programs of its TPPA partner -- highlights the apparent conflict between trade goals -- pursued through multilateral legal instruments to promote economic "health"- and public health objectives -- development of treatments for neglected diseases -- pursuit of efficiency and equity in priority setting -- procurement of medicines at prices that reflect their therapeutic value and facilitate affordable access.

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

Subject: Intellectual property rights--treaties

Subject: Pharmaceuticals--developing countries

Subject: Free trade--treaties--United States

SNIPER No.: 2013/00576

Author: Stewart, Robert A.

Author: Rumano, Edi

Title: How IP issue are becoming more important to listed companies


Summary: Importance of intellectual property to NYSE Euronext listed companies -- patent protection in a changing global landscape -- copyright, trade marks and trade secrets often underrated -- changing face of technology -- IP not just important to large multinationals -- future changes and challenges in IP protection.


Subject: Business planning

SNIPER No.: 2013/00985

Author: Song, Jinchen

Author: Xie, Jiayan

Title: The impact of a new trade mark law

Source: Managing Intellectual Property. China IP Focus, 2013, pp. 24-28.


Summary: Amended Chinese trademark Law -- progress of the Third Amendment -- changes to trade mark registration process -- allowability of sound marks -- introduction of multi-class applications -- filing deadlines for administrative lawsuits -- fair market competition -- well-known and highly distinctive marks -- bad faith registration of similar marks -- trade mark priority and use.



SNIPER No.: 2013/00583

Author: Ramage, W. Edward

Title: The impact of Mayo v Prometheus


Summary: Patent method claims for pharmaceuticals -- patent infringement -- United States --

Mayo Collaborative Services v. Prometheus Laboratories, Inc. -- the Prometheus patents -- US

Supreme Court decision -- United States Patent and Trademark Office (USPTO) guidance to patent examiners -- post-Mayo jurisprudence -- Association for Molecular Pathology v. Myriad

Genetics, Inc. -- SmartGene v. Advanced Biological Laboratories -- Nazomi Communication, Inc. v.

Samsung Technologies, Inc.

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

Subject: Patentability--case law--United States

Subject: Patent examination--procedure--United States

SNIPER No.: 2013/02757

Author: Ghosh, Shubha

Added author: ICTSD Programme on Innovation, Technology and Intellectual Property

Added author: International Centre for Trade and Sustainable Development

Title: The implementation of exhaustion policies: lessons from national experiences

Source: Issue Paper (International Centre for Trade and Sustainable Development). No. 40,

November 2013.

Summary: Intellectual property exhaustion -- the exhaustion doctrine -- policies underlying exhaustion across and within copyright, patents and trade marks -- exchange in goods and services in a global market -- price discrimination -- incentives for creation -- application of exhaustion in individual IP rights -- copyright -- patents -- trade marks -- regional national practices

-- United States -- European Union -- Canada -- India -- Japan -- Brazil -- China -- assessment of exhaustion doctrine as it is practiced.

Subject: Intellectual property exhaustion

Subject: Copyright exhaustion

Subject: Patent exhaustion

Subject: Trade mark exhaustion

SNIPER No.: 2013/00589

Author: Høiberg, Susanne

Author: Aagaard, Louise


Title: Improving legal certainty in patent cases


Summary: Patent enforcement -- Denmark -- centralised Danish patent court -- advantages of an independent patent court -- application of European Patent Office case law -- preliminary injunctions.

Subject: Patent enforcement —Denmark

Subject: Patent litigation--procedure--Denmark

Subject: Injunctions--Denmark

SNIPER No.: 2013/01030

Author: Marshall, Eliot

Title: In a flurry of metaphors, Justices debate a limit on gene patents

Source: Science. Vol. 340 No. 6131, 26 April 2013, p. 421.

Summary: Association of Molecular Pathology (AMP) v Myriad Genetics, Inc. -- United States

Supreme Court hearing -- patenting of BRCA1 and BRCA 2 breast cancer genes -- highly technical scientific evidence presented at hearing -- attempts by Justices to fit scientific information into legal framework -- need to express key issues in lay language -- economic impact of banning gene patents -- compromise position proposed by US Solicitor General -- whether a distinction is possible between naturally occurring genes and artificial DNA constructs.


Subject: Patents--biotechnology industry--United States

SNIPER No.: 2013/01517

Author: Holman, Christopher

Title: In Myriad the Supreme Court has, once again, increased the uncertainty of U.S. patent law

Source: Biotechnology Law Report. Vol. 32 No. 5, October 2013, pp. 289-293.

Summary: Gene patents -- United States -- Association for Molecular Pathology v. Myriad

Genetics -- biomolecules isolated from a natural source -- synthetic versions of naturally occurring biomolecules -- how much difference in structure is required for patent eligibility -- implications for biotechnology.



SNIPER No.: 2013/02736

Author: Pearce, David

Title: In search of a technical effect

Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent

Agents. Vol. 42 No. 10, October 2013, pp. 580-582.

Summary: Law and practice on what is considered patentable at the United Kingdom and

European patent offices -- aligning outcomes -- UK 'signposts' approach -- problems of alignment -- what is not technical -- decision from the EPO Boards of Appeal, T 1670/0 (Shopping with mobile device/NOKIA) -- 'fallacies' in the arguments presented for a technical effect.


Subject: Patentability--United Kingdom

Subject: Patentability--Europe

SNIPER No.: 2013/01579

Author: Jayaraman, Killugudi

Title: India blacklisted


Summary: India placed on US Federal Trade Commission's (FTC) Special 301 watch list -- disagreement over India's policies on compulsory licensing of pharmaceuticals -- US desire for a better balance between innovation and access to medicines -- argument that India is undermining the balance between originators and generics, becoming a generic-only jurisdiction.

Subject: Trade--India

Subject: Compulsory licensing--pharmaceutical industry--India

SNIPER No.: 2013/02742

Author: Allred, Brent B.

Author: Park, Walter G.

Title: The influence of patent protection on firm innovation investment in manufacturing industries

Source: Journal of International Management. Vol. 13, No. 2, June 2007, pp. 91-109.

Summary: Trends in patent protection and laws -- measures of patent protection -- the influence of patent protections on innovation debate -- patent right's influence on firm innovation -- level of patent rights -- change in patent rights -- data for 706 firms competing in ten manufacturing industries across 29 countries were gathered and analysed results -- limitations future research -- found that the influence of patent rights on firm-level innovation varies across industries -- the impact appears greatest in the scientific instruments and industrial chemicals industries.

Subject: Patent rights--statistics

Subject: Manufacturing and processing industry--statistics

SNIPER No.: 2013/02746

Author: Husovec, Martin


Title: Injunctions against innocent third parties: the case of website blocking


13-14, 28 April 2013.

General Note: Also published in: 4 JIPITEC 2, pp. 116-119.

Summary: Website-blocking injunctions -- European law -- injunctions against internet intermediaries whose services are used by third parties to infringe copyright -- consequences of these injunctions -- in rem injunctions versus tort law injunctions -- importance of in rem injunctions

-- practical examples -- website blocking injunctions -- effectiveness -- methods -- collateral damage -- right to a fair trial -- abuse -- legality -- position of injunctions within enforcement systems -- economic consequences -- costs.

Subject: Injunctions--Europe

Subject: Copyright infringement--Europe


Subject: Carriage service providers--Europe

Subject: Internet

SNIPER No.: 2013/02738

Author: Organisation for Economic Co-operation and Development

Title: Innovation in firms: a microeconomic perspective

Source: Innovation in Firms: a Microeconomic Perspective. 2009.

Summary: Innovation a key factor for economic growth -- how does the process takes place at the level of individual firms -- presents the main results of the OECD Innovation Microdata Project -- first large scale effort to exploit firm-level data from innovation surveys -- view to addressing common analytical questions -- innovation indicators -- exploring non-technological and mixed modes of innovation across countries -- innovation and productivity: estimating the core model across 8 countries -- innovation and productivity: extending the core model -- innovation and intellectual property rights.


Subject: Knowledge society--statistics

Subject: Economic development--statistics

SNIPER No.: 2013/02690

Author: Nie, Kevin

Title: The innovation of patent auction service mechanism: interview with Li Zhonghua, Vice

President of China Technology Exchange



Summary: Patent auctions -- China -- China Technology Exchange -- pharmaceutical patents auctions -- partnership with Tianjin Institute of Pharmaceutical Research (TIPR) -- innovation in patent exchanges -- areas for future development -- core issues in technology trading.

Subject: Li, Zhonghua--interviews




SNIPER No.: 2013/02415


Title: Insufficiency finally upheld as ground for invalidity of antibody claim


811.

Summary: High Court of Justice (EWHC) decides that a patent for the treatment of Alzheimer's disease is invalid due to insufficiency -- Eli Lilly & Company v Janssen Alzheimer Immunotherapy -

- historically invalidating an antibody patent for insufficiency was difficult -- previous legal cases --

Eli Lilly & Company v Human Genome Sciences -- Regeneron Pharmaceuticals Inc, Bayer Pharma

AG v Genentech Inc -- patent in case relates to antibodies to a protein which can form plaques associated with amyloidosis -- EWHC consideration on inventive step -- EWHC consideration to sufficiency -- analysis of decision -- question mark over whether the decision is limited in scope.


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

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

Subject: Patent validity--Pharmaceutical industry--United Kingdom

SNIPER No.: 2013/02732

Author: Quiquerez, Alexandre

Title: Intellectual property holding companies: an international legal perspective


Summary: Companies established for the specific purpose of holding intellectual property (IP) rights on behalf of a corporate group or an individual -- forms of IP holding company -- international legal issues raised by these financial engineering techniques -- economic importance of holding companies -- emergence of IP holding companies -- reasons for creating IP holding companies -- financial value of IP -- purpose and methods of this research -- features of an IP holding company.

Subject: Competition law

Subject: International law

Subject: Taxation

SNIPER No.: 2013/02743

Author: Chen, Yongmin

Author: Puttitanun, Thitima

Title: Intellectual property rights and innovation in developing countries

Source: Journal of Development Economics. Vol. 78 No. 2, December 2005, pp. 474-493.

Summary: Intellectual property rights (IPRs) and innovation in developing countries -- model developed to illustrate the trade-off between imitating foreign technologies and encouraging domestic innovation in a developing country's choice of IPRs -- innovations in a developing country increase in its IPRs, and a country's IPRs can depend on its level of development nonmonotonically, first decreasing and then increasing -- empirical analysis, with a panel of data for 64 developing countries, confirms both the positive impact of IPRs on innovations in developing countries and the presence of a U-shaped relationship between IPRs and economic development.

Subject: Intellectual property rights--developing countries

Subject: Intellectual property rights--research

SNIPER No.: 2013/02867

Author: Ben-Oliel, Daniel

Title: The international patent propensity divide

Source: North Carolina Journal of Law & Technology. Vol. 15 No. 1, October 2013, pp. 49-100.

Summary: Argument for an innovation-based growth theory for developing countries -- proposed theory adheres to the growing importance given by theoreticians and policy makers to re-visiting the neoclassical economics “one size fits all” innovation policy propagated by current international intellectual property instruments -- a unique statistical country panel data model for comparing patent propensity rates as a proxy for national innovation over sixteen years (1996-2011) -- between two groups of countries straddling the developing-developed countries divide – “Emerging

Economies ” and “Advanced Economies” -- patenting in economic growth theory -- towards nonlinear innovation patenting -- emerging economies upward convergence -- suggests strong


intellectual property rights benefits both the richest and the poorest nations, but not middle-income countries, such as Emerging Economies.

Subject: Patents--economics

Subject: Patents--research

Subject: Industrial research and development--statistics

SNIPER No.: 2013/02589

Author: Jones, Joseph

Title: Internet pirates with Article 10 kept at Bay: Neij and Sunde Kolmisoppi v Sweden


Summary: Copyright infringement -- European Court of Human Rights (ECtHR) judgment -- The

Pirate Bay conviction for assisting copyright infringement on the internet was justified -- did not violate freedom of expression -- article 10 of the European Convention on Human Rights -- interference with the applicants freedom of expression -- whether the interference was prescribed by law -- legitimate aim -- wide margin of appreciation interference was necessary in a democratic society -- highlights the conflict between freedom of expression and copyright enforcement -- specific regard to the internet -- increasing role of rights jurisprudence within intellectual property disputes.

Subject: Copyright infringement--case law--Sweden

Subject: Copyright infringement--culture and entertainment industry

Subject: Carriage service providers--Europe

SNIPER No.: 2013/02404

Author: Strobel, Eva-Maria

Title: Internet service providers run liability gauntlet in Switzerland


Summary: Swiss Federal Supreme Court decision -- ordered hosting provider to remove infringing blog posted on one of its websites -- called on Swiss legislator to assess whether there is a need to protect internet service providers (ISPs) from any "significant (liability) consequences" that they may be facing under existing Swiss laws -- facts of the case -- legal basis of the decision -- Swiss

Civil Code -- no exception for ISPs liability -- need for ISPs to mitigate risks under current laws.

Subject: Carriage service providers--case law--Switzerland

Subject: Carriage service providers--liability--Switzerland

Subject: User-generated content--case law--Switzerland

SNIPER No.: 2013/00590

Author: Santarelli, Luc

Author: Caen, Thierry

Title: Investigative seizures and preliminary injunctions: a winning team


Summary: Patent infringement and enforcement -- France -- investigative infringement seizure -- case studies -- provisional measures and injunctions -- court actions and validity.


Subject: Patent enforcement--France

Subject: Patent litigation--procedure--France

Subject: Injunctions--France

Subject: Delivery up--France

SNIPER No.: 2013/01204

Author: Richards, John, 1944-

Title: IP challenges posed by three dimensional printing


Summary: Patent infringement -- three dimensional printers -- United States -- direct and indirect infringement -- use of copyright infringement provisions -- trade dress -- utility patents and design patents -- direct infringement actions against 3D printer users -- indirect infringement actions against printer and materials manufacturers and suppliers -- inducement of infringement -- patent features of a design.

Subject: Patent infringement--United States

Subject: Industrial designs--United States

Subject: Copyright--United States

Subject: Minor patents--United States

Subject: Trade dress--United States

SNIPER No.: 2013/02722

Author: Commission on the Theft of American Intellectual Property (U.S.)

Added author: National Bureau of Asian Research (U.S.)

Title: The IP Commission report: the report of the Commission of the Theft of American

Intellectual Property

Source: IP Commission Report. 2013.

Summary: Measuring the scale and scope of the loss of American intellectual property -- types of

IP theft -- patent violations -- trade-secret theft -- trade mark violations -- copyright infringement --

United States government responses -- developments in China -- short-term solutions: agile administration executive action -- medium-term solutions: legislative and legal reform -- long-term solutions: capacity building -- cyber solutions -- potential future measures.

Subject: Intellectual property infringement--United States

Subject: Intellectual property infringement--China

SNIPER No.: 2013/02152

Author: Yao, Guanyang

Title: IP enforcement at trade fairs in China


Summary: Foreign companies in China -- finding unauthorized copies of their products at trade fairs -- relevant legislation -- Measures for IP Protection at Trade Fairs became effective as of

March 1, 2006 -- regulates requirements for complaints, actions by local Intellectual Property


Administrative authority and liability of infringers -- interpretation of the most important articles in the Measures -- practical example of a patent infringement case in a trade fair

Subject: Intellectual property enforcement--China

Subject: Counterfeiting--China

Subject: Patent enforcement--China

SNIPER No.: 2013/02148

Author: Zhang, Anna

Author: Lai, Stanley

Author: Ng, See Hui Michelle

Author: Robinson, Kristian

Author: Chen, Jason

Author: Koh, Gerald

Author: Bogsch, Adam

Author: Goh, Audrey

Author: Ravindran, M.

Author: Dube, Bharat

Author: Proulx, Guy L.

Author: Koh, Patsy

Author: Xavier, Renee

Author: Poh, Daniel

Author: Low, Wendy

Title: The IP master


Summary: Singapore's plans to become Asia's IP hub -- government's IP Hub Master Plan -- reactions from IP lawyers and entrepreneurs -- expectations from the plan -- IP financing scheme --

Singapore as a hub for experts -- dispute resolution -- further details about the master plan programmes still to be released

Subject: Intellectual property industry--Singapore

Subject: Intellectual property management--Singapore

SNIPER No.: 2013/02678

Author: Zhang, Anne

Title: IP mysteries in reverse engineering


August 2013, pp. 16-18.

Summary: Intellectual property implications of reverse product engineering -- whether a reverse engineering product is a copycat -- legal recognition of reverse engineering -- litigation strategies -- improper acquisition and of use trade secrets -- integrated circuits and layout designs -- software -- evidence and infringement identification by rights owners -- use of reverse engineering as a business cooperation and collaboration tool -- infringement.


Subject: Intellectual property--information technology industry--China

Subject: Circuit layout rights--China

Subject: Computer-related inventions--China

SNIPER No.: 2013/02755

Author: Fikremarkos Merso



Title: IP trends in African LDCs and the LDC TRIPS transition extension

Source: Policy Brief (International Centre for Trade and Sustainable Development). no. 16, June

2013.

Summary: Transition period granted to least developed countries (LDCs) under the TRIPS

Agreement and the 2005 extension -- overview of intellectual property trends in African LDCs -- recent IP-related developments -- proposal to implement a Pan-African Intellectual Property

Organization (PAIPO) and harmonise national IP laws -- initiatives to use IP to promote socioeconomic development -- limited interest in plant variety protection -- IP challenges facing African

LDCs -- events following the 2005 extension -- challenges facing priority needs assessments --

2012 request for a second extension -- the way forward.

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

Subject: Intellectual property--developing countries

Subject: International trade--treaties

SNIPER No.: 2013/02652

Author: Heindl, Sabiene

Title: Is the novel an endangered species in the internet age?

Source: Internet Law Bulletin. Vol. 16 No. 4, August 2013, pp. 100-102.

Summary: Publishing industry internationally facing a number of challenges in the internet age -- future optimistic for those who are able to creatively leverage and monetarise their intellectual property through ebooks, playable books and apps to create authentic digital engagement -- the growing digital piracy dilemma -- Google battle for the books -- ibook settlement -- greatest challenge for the publishing industry is to continue to creatively utilise its intellectual property for the engagement of readers.

Subject: Value of intellectual property--culture and entertainment industry

Subject: Copyright owners' rights

Subject: Literary works

SNIPER No.: 2013/02653

Author: McDonald, Angela

Author: Eade, Lauren

Author: Lennon, Lisa

Title: Is there any use crying over spillover reputation?: renewed hope of protection for owners of international marks



Summary: Australian Trade Marks Office (ATMO) and courts appear more open to protecting spillover reputation Australia in the absence of local use of the relevant trade marks -- recent cases provide useful guidance on the type of evidence required to establish spillover reputation -- NEXT -

- TIVO -- WINNEBAGO -- online sources can assist in establishing spillover reputation of an international mark in Australia -- evidence needs to reflect a high volume of online webpages referring to the mark -- influence of the internet -- reluctance to recognise online sources -- emerging trends.

Subject: Trade mark use--Australia

Subject: International trade marks

Subject: Famous trade marks

SNIPER No.: 2013/01203

Author: Bareket, Eran

Title: Israeli patent law developments in 2011 and 2012


Summary: Patent systems and law -- Israel -- establishment of Israeli Patent Office as

International Searching Authority (ISA) and International Preliminary Search and Examining

Authority (IPSEA) for international applications -- harmonisation of Israeli patent law with international laws -- patent term extension -- effect of unjust enrichment and misappropriation on patent monopolies -- Merck and Co. Inc. v. Teva Pharmaceutical Industries Ltd. -- trade secrets and generics pharmaceuticals -- Pfizer Pharmaceuticals Israel Ltd. v. Ministry of Health -- selection patents -- Dr. Bayer v. Plurality Ltd. -- patent term extension for medical purposes -- Neurim

Pharmaceuticals Ltd v. Patent Commissioner -- publication of new patent examination guidelines -- ongoing overhaul of Israeli patent regime.

Subject: Patent systems--Israel

Subject: Patents--law and legislation--Israel

Subject: Patents--pharmaceutical industry--Israel

SNIPER No.: 2013/02701

Author: Marchesoni, Evelina

Title: Italian court allows SPCs for combinations of active ingredients


Summary: European-wide litigation concerning Sanofi's combination supplementary protection certificate (SPC) for irbesartan and hydrochlorothiazide (HCTZ) -- several decisions and orders issued by Court of Milan -- background of the cases -- patent infringement and preliminary injunctions proceedings -- validity of the combination SPC challenged -- grounds of first instance decision -- grounds of appeal decisions -- interpretation of the SPC Regulation and Court of Justice of the European Union (CJEU) case law on combination SPCs as carried out by Italian judges -- differing interpretations across Europe

Subject: Patent extension--pharmaceutical industry--Italy

Subject: Patent extension--pharmaceutical industry--Europe

Subject: Pharmaceuticals--Italy

SNIPER No.: 2013/02672


Author: Qi, Jimin

Title: Judicial determination and assumption of liabilities of trademark infringement in domain name disputes


2013, pp. 51-57.

Summary: Trade marks and domain names -- China -- Swarovski Aktiengesellschaft v. Shanghai

Wangxing Information Technology Co. Ltd. -- Swarovski domain name registrations -- trial and judgment by People's Court of Huangpu District, Shanghai -- commentary and analysis -- liability for trade mark infringement in domain name disputes -- infringement exemptions -- joint infringement -- liability for domain name infringement.

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

Subject: Domain names--case law--China

SNIPER No.: 2013/00579

Author: Wacker, Paul-Alexander

Title: Key considerations in transnational patent litigation


Summary: Abuse of dominant market position -- small and medium enterprises (SMEs) disadvantaged when confronting financially stronger infringers -- legal processes and discovery procedure.

Subject: Patent infringement

Subject: Patent enforcement

Subject: Small and medium enterprises

Subject: Legal procedure

SNIPER No.: 2013/01623

Author: Brusoni, Stefano

Author: Criscuolo, Paola

Author: Geuna, Aldo, 1965-

Title: The knowledge bases of the world's largest pharmaceutical groups: what do citations to non-patent literature reveal?

Source: Economics of Innovation and New Technology. Vol. 14 No. 5, July 2005, pp. 395-415.

Summary: Analysis of database of 33,127 European Patent office patents and 41,931 citations to

'non-patent document' of the 30 largest pharmaceutical groups from 1990 to 1997 -- concepts of knowledge specialisation and knowledge integration in mapping knowledge bases -- knowledge specialisation studied developing indicators of breadth -- breadth measured by analysing the evolution of specialisation by scientific field over time -- knowledge integration studied developing indicators of depth -- depth measured by analysing the evolution of integration across different typologies of research -- examination of the knowledge base shows groups have incrementally increased the breadth of their knowledge -- moving towards fields related to biopharmaceutical research -- groups show depth in knowledge integration in fields such as biotechnology, biochemical research and neurosciences

Subject: Pharmaceutical industry


Subject: Patents--analysis

SNIPER No.: 2013/02758

Added author: Organisation for Economic Co-operation and Development. Directorate for

Science, Technology and Industry

Title: Knowledge networks and markets

Source: OECD Science, Technology and Industry Policy Papers. No. 7, 19 June 2013.

Summary: Information, knowledge and associated intellectual property -- knowledge flows and open innovation strategies -- how organisations engage in open innovation -- whether there is a trend towards increased openness -- knowledge networks and markets -- markets for IP rights -- size of markets for IP rights -- IP transaction strategies -- intermediaries -- patent assertion entities

-- use of IP rights for financing purposes -- public policies and the market for IP rights -- IP regime features and enforcement -- government-sponsored patent fund initiatives -- markets and networks for knowledge originating in public sector research organisations -- knowledge transfer modes -- policy development -- potential implications -- potential barriers to knowledge flows through mobile knowledge workers -- knowledge flows, job mobility and non-competition agreements -- measurement implications.

Subject: Knowledge society

Subject: Information economy

Subject: Intellectual property

SNIPER No.: 2013/02661

Author: Liu, Xiaojun

Title: Latest developments in adjudication of IP cases by Beijing Higher People's Court in 2012


Summary: Patent case law 2012 -- China -- patent invalidity -- Star Paging Company v. Patent

Reexamination Board -- Shenyang Haiwai ElectricEquipment Co. v. Patent Reexamination Board and Shenyang Ruifeng Electric Equipment Co. -- Pingxiang City Xinan Industry Co. Ltd. v. Patent

Reexamination Board and Lai Yongfa -- Tianjin Tractor Manufacturing Co. Ltd. v. Patent

Reexamination Board and Xuzhou Kaier Machiner Co. Ltd. -- patent rejection -- Ineos Europe Ltd. v. Patent Reexamination Board -- patent claims -- Shenzhen City Julong Kejiao Hi-tech Co. Ltd. v.

Patent Reexamination Board and Shanghai Huashi Jingcheng Hi-tech Development Co. Ltd. -- utility model invalidity -- Wu Zhiyong v. Patent Reexamination Board and Zhongshan City Shengtai

Metal Products Co. -- patent re-examination -- Yingchuangdegusai Co. Ltd. v. Patent

Reexamination Board.

Subject: Patents--case law--China

Subject: Patent validity--case law--China

Subject: Patent claims--case law--China

Subject: Minor patents--case law--China

SNIPER No.: 2013/01367

Author: Stirner, Beatrice

Author: Thangaraj, Harry

Title: Learning from practice: compulsory licensing cases and access to medicines


Source: Pharmaceutical Patent Analyst. Vol. 2 No. 2, March 2013, pp. 195-213.

Summary: Compulsory licensing of pharmaceuticals -- export under TRIPS Article 31bis -- capacity of developing and least-developed countries to produce HIV/AIDS medications -- WTO

TRIPS Council decision -- scope and requirements of the WTO decision -- national and regional implementations -- Canada -- Canadian Access to Medicines Regime (CAMR) -- Apotex case for supply to Rwanda -- proposals for amendment of CAMR -- India -- economic incentives for generic manufacturers -- lessons learned from WTO Decision experiences -- Sorafenib compulsory licence in India -- future perspectives.

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

Subject: Compulsory licensing--pharmaceutical industry

SNIPER No.: 2013/02745

Author: Calantone, Roger J.

Author: Cavusgil, S. Tamer

Author: Zhao, Yushan

Title: Learning orientation, firm innovation capability and firm performance

Source: Industrial Marketing Management. Vol. 31, No. 6, September 2002, pp. 515-524.

Summary: Contemporary organisations require a strong learning orientation to gain competitive advantage -- in-depth interviews with senior executives conducted -- a review of the literature -- investigation delineates four components of learning orientation -- commitment to learning -- shared vision -- open-mindedness -- intraorganisational knowledge sharing -- a framework is tested using data from a broad spectrum of US industries -- learning orientation is conceptualized as a second-order construct -- effect on firm innovativeness, which in turn affects firm performance, is examined -- results generally support theoretical predictions.

Subject: Innovation (Technological)--research--United States

Subject: Value of intellectual property--interviews--United States

SNIPER No.: 2013/02519

Author: Rajendra, Arty

Title: Letter of complaint

Source: Intellectual Property Magazine. November 2013, p. 60.

Summary: Coalition of world famous technology brands -- sent an open letter to all EU member states, all MEPs and the European Commission -- deep misgivings about the proposed procedural rules for the new Unified Patent Court (UPC) -- unanimous fear that the draft rules were open to exploitation by patent assertion entities (PAEs) -- focuses on two related issues -- UPC rules allow for but provide little guidance on bifurcation -- lack of guidance surrounding the grant of injunctions.

Subject: Patent trolls--Europe

Subject: Patents--law and legislation--Europe

SNIPER No.: 2013/02674

Author: Zhao, Lin

Author: Yang, Kai, 1963-

Title: Liabilities of group buying sites in trademark infringement cases



2013, pp. 62-65.

Summary: Trade mark infringement -- group buying and e-commerce -- China -- Japan Descent

Ltd. v. Shenzhen Xiu Network Technology Co. Ltd. and Beijing Jinridushi Co. -- facts of the case -- analysis of the decision -- acts of trade mark infringement -- e-commerce business models and related liabilities -- group buying business models and related liabilities.


Subject: Electronic commerce--case law--China

SNIPER No.: 2013/02516

Author: Stewart, Debora R.

Author: Byrd, Judy A.

Title: Licence check


Summary: Billions of dollars paid in royalties -- licensors can audit licensee records to ensure accurate royalty reporting -- they frequently forego the option and trust that the licensee will provide a proper accounting of the royalties due -- 13th Annual Royalty Compliance report -- substantial errors -- types of errors.


Subject: Accounting

SNIPER No.: 2013/02517

Author: O'Shaughnessy, Brian P.

Title: Licensing Executives Society annual meeting tackles issues driving change in the IP industry


Summary: Licensing Executives Society (LES) annual meeting -- keynote speech by Myriad

Genetics' general counsel, Richard Marsh -- panel sessions -- role of intellectual property (IP) in mergers and acquisitions -- how to negotiate and structure deals involving diverse technologies -- valuation of IP and early stage technology -- licensing as a means of deriving value and strategic advantage in an overall IP enforcement regime -- issues surrounding patent trolls -- patentable subject matter in the field of software -- what Congress is proposing with legislation in response to the 'patent troll' phenomena -- awarding peers -- LES presidency.

Subject: Intellectual property industry


SNIPER No.: 2013/02654

Author: Lincoln, Julian

Author: McLennan, Mark

Title: Location, location, location: realestate.com.au defends its territory: REA Group Ltd v Real

Estate 1 Ltd



Summary: REA operates online property portals www.realestate.com.au and www.realcommercial.com.au -- Real Estate 1 operates competing property portals www.realestate1.com.au and www.realcommercial1.com.au -- claims of misleading and deceptive conduct, passing off and trade mark infringement -- composite trade mark registrations that include the domain names -- misleading and deceptive conduct, passing off -- distinctiveness -- search results -- intention of Real Estate 1 trade mark infringement -- key implications -- recommends online businesses ensure their domain names (including top-level domains such as ".com.au") are protected by trade mark registrations.

Subject: Trade mark infringement--business and professional services industry--Australia

Subject: Brand management--Australia

Subject: Trade mark use--Australia

SNIPER No.: 2013/02741

Author: Artz, Kendall W.

Author: Norman, Patricia M.

Author: Hatfield, Donald E.

Author: Cardinal, Laura B.

Title: A longitudinal study of the impact of R&D, patents and product innovation on firm performance

Source: Journal of Product Innovation. Vol. 27, No. 5, September 2010, pp. 725-740.

Summary: Examination of the innovation productivity in a firm -- relationship between a firm's commitment to research and development --- its innovative outcomes are examined -- relationship between patents and product announcements is also investigated -- ability of a firm to benefit from its inventions and innovations is studied by examining their separate effects on firm performance, measured as return on assets (ROA) and sales growth -- drawing on a sample of 272 firms in 35 industries over 19 years -- R&D spending was positively related to patents -- a significant curvilinear relationship exists between R&D spending and product announcements -- not the predicted inverse-U but instead a U-shaped relationship -- negative relationship found between patents and both ROA and sales growth -- the value of patents as protection mechanisms.



Subject: Science and research industry--statistics

SNIPER No.: 2013/02512

Author: Dvorson, Natalya

Title: Lost in transition: preventing loss of an early effective filing date


Summary: America Invents Act (AIA) -- United States switched to a first-to-file system -- AIA encourages early filing by the applicant -- sets greater obstacles for obtaining a patent -- impact of the AIA on the industry -- strategic planning and preserving the benefits of the old rules -- uncertainty for the transitional applications.

Subject: Provisional patent applications--United States

Subject: Inventive step--United States


SNIPER No.: 2013/02688

Author: Zhang, Anne

Title: Malicious registration for overseas trademarks by acquaintance



Summary: Malicious registration of Chinese trade marks in foreign jurisdictions -- registration of

JETbeam flashlight mark in Europe by former business partner -- Chongqing Lifan mark registration in Pakistan -- Susino Umbrella mark in United States -- essential trade mark strategies for Chinese businesses.

Subject: Intellectual property management--China

SNIPER No.: 2013/02584

Author: Singh, Harvinder

Author: Aggarwal, Rashmi

Title: Marketing of geographical indications in India: an analysis


Summary: Analyses Indian geographical indications (GIs) laws as enacted in the Geographic

Indications of Goods (Registration and Protection) Act 1999 -- trade marks in the India context --

Darjeeling tea most notable -- a conceptual of GIs -- GIs in the Indian context -- GIs and brands: a comparison -- elements of branding -- GIs on their way to being brands -- how do "pseudo" brands suffer -- logos a possible link between the GIs and brands -- global initiatives in the use of logos for

GIs -- regulatory evidence from the neighbourhood China and Pakistan -- recommendations.

Subject: Geographical indicators--law and legislation--India

SNIPER No.: 2013/02513

Author: Graulund, Tove

Title: Marques gets the red carpet treatment


Summary: 27th Marques Annual Conference -- risk of dilution by consumers and competitors -- measures to deal with these threats to a trade mark -- the rise of Asia -- the emergence of artificial intelligence -- new insights on Apple v Samsung -- IP Translator -- update and new hot topics from the World Intellectual Property Organization -- how to get a designation of the United States right -- nexus of trade mark rights and free speech rights -- debate of plain packaging in Australia -- changes and the impact that the Internet Corporation for Assigned Names and Numbers' new generic Top-Level Domain (gTLD) programme will have -- talks from the Office for Harmonization in the Internal Market (OHIM).


SNIPER No.: 2013/02590

Author: Scardamaglia, Amanda

Author: Aggarwal, Rashmi

Title: Misleading and deceptive conduct and the Internet: lessons and loopholes in Google Inc v

Australia Competition and Consumer Commission



Summary: Google test case facts -- misleading and deceptive statements contained in sponsored links -- section 18 of the Australian Consumer Law -- first instance the Federal Court -- appeal to the Full Court of the federal Court -- High Court of Australia -- implications -- reinforces the view the prevailing view that it is advertisers not the publishers or website administrators who will be liable for misleading and deceptive content -- decision appears to have averted more questions than it answered -- missed an opportunity to express the importance of policy -- setting the standards for conduct of public debate in trade or commerce in its decision.

Subject: Carriage service providers--liability--Australia

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

Subject: Keyword advertising--case law--Australia

SNIPER No.: 2013/02588

Author: Agnew, James

Title: Misleading use of geographic marks: extending passing off for Greek Yoghurt


Summary: High Court of the United Kingdom grants a permanent injunction preventing Chobani from passing off its American made yogurt in England and Wales under the description Greek yoghurt -- FAGE produces Greek yogurt under the TOTAL brand, dominant producer of yogurt from Greece -- Greek yogurt made by Chobani in the US was a damaging misrepresentation -- extended passing off -- goodwill, misrepresentation and damage -- the meaning of Greek yogurt -- geographical marks -- appellations of origin -- protected designations of origin and protected geographical indications -- scope for change: trade mark law and the European certification mark -- case provide further clarification of the law of extended passing off in the United Kingdom.

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

Subject: Geographical indicators

SNIPER No.: 2013/02670

Author: Nie, Kevin

Title: Model IP cases of China from 2012


2013, pp. 25-47.

Summary: Intellectual property case law 2012 -- intellectual property courts and judges -- China -- trade mark infringement and unfair competition -- damages -- Bayerische Motoren Werke

Aktiengesellschaft v Century Baochi Garment Industrial Co. Ltd. -- trade mark infringement -- group buying sites and e-commerce -- Descente Ltd. v. Beijing Jinridushi Co. and Shenzhen Xiu Network

Technology Co. Ltd. -- patent inventorship and ownership -- Cathay Industrial Biotech Ltd's patent -

- copyright infringement -- distribution of "Painted Skin" (movie) -- Le Shi Internet Information and

Technology Corp. v. Routon Electronic Co. Ltd. -- adaptation rights for "Rouge" (novel) by Lilian

Lee -- Huayan Culture and Arts Co. Ltd. v. Shanghai Local Opera Theatre, Luo Huaizhen and

Chen Liyu -- trade mark infringement -- use of promotional materials by agents and retailers --

Nippon v. Taobao -- trade mark infringement and unfair competition -- decoration on well-known products -- New Balance v. Niubanlun -- trade mark infringement and damages -- Suzhou

Dingsheng Food Co. Ltd v. Suzhou Administration for Industry and Commerce -- copyright infringement -- design on fonts -- Hanyi v. Shuangfei -- patent infringement by manufacturer --

Samsung Kejian Mobile Telecommunication Technology Co. Ltd. v. Dai Gang -- trade mark infringement -- counterfeit clothing -- Crocodile Shirts Co. Ltd. (Crocodile HK) v. Qingdao Ruitian

Garments and Accessories Co. Ltd. -- copyright infringement -- author's rights and character licensing (Ultraman Tiga) -- Shanghai Century Huachuang Cultural Images Management Co. v.


Hubei Xinyijia Supermarket Co. Ltd. -- personality rights and unfair competition -- Yao Ming v.

Wuhan Yunhe Shark Sports Products Co. -- trade mark assignment -- use of iPad marks -- mediation -- Apple Inc. v. Proview Shenzhen -- design patent infringement -- prior art invalidity -- Li

Jiankai v. Huang Zefeng -- trade secret infringement -- assignee standing to sue for infringement after technology transfer -- General Energy Inc. v. Hualu Engineering and others -- trade mark infringement -- well known marks -- Louis Vuitton Malletier v. Shaanxi Xinrun Crystal Island Hotel

Management Co. Ltd. -- software copyright -- Siemens Product Life Cycle Management Software

Co. Ltd. v. Shenzhen Yituo Mike Technology.

Subject: Intellectual property--case law--China

Subject: Patents--case law--China


Subject: Copyright--case law--China

Subject: Industrial designs--case law--China

Subject: Trade secrets--case law--China

Subject: Litigation--China

SNIPER No.: 2013/00582

Author: Froese, Ashlee

Author: Lipkus, Nathaniel

Author: Moeser, Andrew

Author: Morgan, Max

Author: Powell, Matthew

Title: Modernisation and flux


Summary: Reform of Canadian intellectual property regime -- copyright legislative reform and

Supreme Court activity -- acceptance of sound mark applications -- proper disclosure requirement for patent applications -- effect of trade agreements on the IP landscape.

Subject: Intellectual property--Canada

Subject: Copyright--reform--Canada

Subject: Sound marks--Canada

Subject: Patent disclosure--Canada

Subject: International trade--Canada

SNIPER No.: 2013/02518

Author: Leane, Deirdre

Title: The money makers: trends in patent monetisation


Summary: Boom times for patent monetisation -- billion dollar patent deals and settlements -- patents are valuable assets -- current trends in patent monetisation -- impact of regulatory changes on patent monetisation -- growing interest -- outsourcing patent monetisation -- changes in the regulatory environment -- increasing globalisation.


Subject: Patent trolls


SNIPER No.: 2013/00580

Author: Clarkson, Paul

Title: Moving ever closer to the unitary patent


Summary: Unitary European patent -- background -- developments in 2012 -- competence of the

European Court of Justice (ECJ) -- splitting of infringement and validity actions -- implications of

European Council decisions to divide work between three locations -- issues still to be resolved.

Subject: Unified Patent Court

Subject: Community Patent

Subject: Regional patents--Europe

Subject: Patent systems--Europe

SNIPER No.: 2013/01577

Title: Myriad diagnostic concerns


Summary: Regulatory framework hindering development of innovative diagnostic tests -- patentability of unmodified human genes -- Association for Molecular Pathology v. Myriad

Genetics, Inc. -- uncertainty over how much modification is required for patentability -- likelihood that diagnostic testing companies will turn to trade secrets -- patents only for test interpretation algorithms -- increased intervention by Food and Drug Administration (FDA).


Subject: Innovation (Technological)--biotechnology industry--United States

Subject: Industrial research and development--biotechnology industry--United States

SNIPER No.: 2013/02686

Author: Grant, Tyron

Author: Kahn, Craig

Author: He, Jacky

Title: Navigating the patent landscape in Africa (Part 2): focus on legal frameworks in place in

Africa for the protection of patent rights


August 2013, pp. 70-71.

Summary: Patent systems -- Africa -- regional systems -- Paris Convention and Patent

Cooperation Treaty (PCT) -- African Regional Intellectual Property Organisation (ARIPO) -- African

Intellectual Property Organisation (AIPO/OAPI) -- Benin -- Botswana -- Burkina Faso -- Burundi --

Cameroon -- Central African Republic -- Chad -- Comoros -- Congo -- Djibouti -- Equatorial Guinea

-- Gambia -- Ghana -- Guinea Bissau -- Ivory Coast -- Kenya -- Lesotho -- Liberia -- Malawi -- Mali -

- Mauritania -- Mauritius -- Mozambique -- Namibia -- Niger -- Rwanda -- Senegal -- Sierra Leone --

Sudan -- Swaziland -- Tanzania (Tanganyika) -- Togo -- Uganda -- Zambia -- Zimbabwe.


Subject: Paris Convention for the Protection of Industrial Property (1883 March 20)--Africa

Subject: Patent Co-operation Treaty (1970 June 19)--Africa

Subject: Organisation africaine de la propriété intellectuelle

Subject: African Regional Intellectual Property Organization

Subject: Patent systems--Africa

SNIPER No.: 2013/00581

Author: Rethinam, Vishnu

Title: Naked licensing


Summary: Trade mark licensing -- naked licensing -- United States -- United Kingdom -- India -- need for due diligence, proper quality control and remediation clauses.

Subject: Trade mark licensing--United States

Subject: Trade mark licensing--United Kingdom

Subject: Trade mark licensing--India

SNIPER No.: 2013/02676

Author: He, Jacky

Author: Grant, Tyron

Author: Meiring, Wayne

Title: Navigating the trade mark landscape in Africa (part 1)


2013, pp. 72-73.

Summary: Trade mark systems -- Africa -- regional systems -- Madrid Protocol and Agreement --

African Intellectual Property Organisation (AIPO/OAPI) -- African Regional Intellectual Property

Organisation (ARIPO) -- Algeria -- Benin -- Botswana -- Burkina Faso -- Cameroon -- Central

African Republic -- Chad -- Comoros -- Congo -- Egypt -- Equatorial Guinea -- Gabon -- Ghana --

Guinea -- Guinea-Bissau -- Ivory Coast -- Kenya -- Lesotho -- Liberia -- Madagascar -- Mali --

Mauritania -- Morocco -- Mozambique -- Namibia -- Niger -- Sao Tome and Principe -- Senegal --

Sierra Leone -- Sudan -- Swaziland -- Togo -- Zambia.

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

Protocols, etc., 1989 June 27--Africa

Subject: Organisation africaine de la propriété intellectuelle

Subject: African Regional Intellectual Property Organization

Subject: Trade mark systems--Africa

SNIPER No.: 2013/02735

Author: Dunlop, Hugh

Title: New EPO guidelines




Summary: EPO Guidelines for Examination revised -- dubious standard of "clear allowability"

Guideline H-11, 2.7.1 -- no room for discretion -- Guidelines C-111, 3.4 and H-11, 7.1 -- need for a new rule permitting an applicant to pay another examination fee and have a second invention examined as an alternative to restricting to just one invention.

Subject: Patent examination--procedure

Subject: Translations--policy--Europe

Subject: Patent fees--Europe

SNIPER No.: 2013/00588

Author: Azuaje, Geovanny

Title: New Organic Labour Law initiates changes to IP legislation


Summary: Copyright ownership -- Venezuela -- Organic Labour Law -- legislative definitions -- IP ownership and public and private sector employment contracts -- other amendments -- Venezuela joining of Mercosur (Southern Common Market).

Subject: MERCOSUR (Organization)

Subject: Copyright--reform--Venezuela

Subject: Copyright entitlement--Venezuela

Subject: Free trade--treaties--South America

SNIPER No.: 2013/02149

Author: Chan, Johnny

Author: Xavier, Renee

Author: Ng, See Hui Michelle

Author: Girvin, Cecelia

Author: Ng, Max Chee Weng

Author: Sethu, Murugesan

Author: Tan, Bryan

Author: Keng, Lau Kok

Author: Tan, Henn

Title: A new patent world


Summary: Singapore's signing of IP-related agreements with other countries -- changes to the

Intellectual Property Office of Singapore (IPOS) -- potential benefits and challenges -- views from local lawyers and corporate counsel -- IPOS memorandum of understanding (MOU) with Brazil's

National Industrial Property Institute -- whether IPOS should consider signing similar deals with other South American countries -- potential benefits of these collaborations to Singapore -- suggested countries to be added to Singapore's agreement on piloting the Patent Prosecution

Highway (PPH) -- whether the fact that companies can have patents examined and granted in

Singapore will encourage them to establish or expand R&D in Singapore -- other challenges for

IPOS and possible solutions -- programmes to promote IP awareness among SMEs -- whether messages against buying fakes are getting to the general public


Subject: Intellectual property industry--Singapore

Subject: Intellectual property management--Singapore

Subject: Intellectual property offices--Singapore

SNIPER No.: 2013/02521

Author: Bezrukova, Olga M.

Author: Treshchev, Sergey A.

Title: The new Russian IP court: radical changes or old battlegrounds?


Summary: First specialist court in the Russian justice system -- purpose of the new intellectual property (IP) Court in Moscow -- to deal with cases involving the existence of a right and involving a breach of rights to IP items -- landmark issues to date -- IP court as a workload equaliser -- current number of specialist judges with exclusive jurisdiction in the IP court is not sufficient -- special court requests -- need for experts.

Subject: Patent litigation--procedure--Russia

Subject: Legal jurisdiction--Russia

SNIPER No.: 2013/02706

Author: Robinson, W. Keith

Title: No "direction" home: an alternative approach to joint infringement

Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 139-202.

General Note: Originally published in: American University Law Review, Vol. 62 No. 1, 2012, pp.

59-122.

Summary: Patent infringement in the United States -- legislative background -- joint infringement -- confusion -- Federal Circuits' new joint infringement test focuses solely on whether an accused infringer induced a third party to perform some or all of the claimed method -- other practical factors should be considered in determining liability for joint infringement -- rationale for a more flexible approach -- limitations of the legislation -- limitations of the judiciary -- claim drafting -- international approaches --resistance to change -- proposals for reform -- suggests two-part test for determining if a method claim is infringed when separate entities each perform separate steps of a method claim -- first part of test applies to claims directed to a single entity or claims not requiring participation of multiple entities -- second part of test applies to claims that specifically require participation of multiple entities -- advantages of the proposed approach


SNIPER No.: 2013/02423

Author: Sousa e Silva, Nuno de An aújo

Title: Novelty is not enough: Spanish Supreme Court rejects unity of the art in an enigmatic decision


826.

Summary: Full design and copyright cumulation model rejected by Spanish Supreme Court --

Decision 561/2012 -- legal context -- Article 3(2) and 10 of the Spanish Intellectual Property Law

(the Spanish Copyright Act) -- Spanish Law on the Legal Protection of Industrial Designs -- design


contest for lamp-posts -- Farola Y design -- granting of an exclusive licence to a competitor while original contracted party continued to manufacture and sell the lamp-posts -- suit filed against

Roura for infringement of copyright and injunction sought -- lower court decisions -- analysis of appeal to Supreme Court -- three models of cumulation -- problematic to seek copyright protection for design under Spanish law.

Subject: Industrial design rights--case law--Spain

Subject: Copyright owners' rights--case law--Spain

SNIPER No.: 2013/02750

Author: Grosse Ruse-Khan, Henning, 1974-


Title: Overlaps and conflict norms in human rights law: approaches of European courts to address intersections with intellectual property rights


13-18, 18 November 2013.

General Note: Also published in forthcoming publication: Ch. Geiger (ed), Research Handbook on

Human Rights and Intellectual Property, Cheltenham, UK / Northampton, MA, Edward Elgar

(2014).

Summary: Relationship between intellectual property and human rights -- Europe -- European

Court of Justice (ECJ), international IP rules and Article 17(2) of the EU Charter -- IP enforcement and human rights -- Productores de Música de España (Promusicae) v Telefónica de España SAU

-- Scarlet Extended NV v. Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA

(SABAM), -- Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v.

Netlog NV -- harmonisation interpretation or internalisation of international IP law -- narrow view that prioritises EU Charter rights over international IP flexibilities -- right to property, EC human rights and external rules -- conflict resolution in right to property cases -- resolving conflicts between IP and human rights.

Subject: Intellectual property rights--Europe

Subject: Human rights--Europe

SNIPER No.: 2013/00653

Author: Rhodes, Catherine (Catherine Anne)

Author: Harris, John, 1945-

Author: Chan, Sarah

Author: Sulston, John

Added author: University of Manchester. Institute for Science, Ethics and Innovation

Added author: University of Manchester. Brooks World Poverty Institute

Title: The 'ownership' of science

Source: Prometheus: Critical Studies in Innovation. Vol. 29 No. 3, September 2011, pp. 325-336.

Summary: Effects of intellectual property on progress of science and innovation -- Manchester

Manifesto Group -- complex questions around who owns and should own science -- science and the public good -- innovation and the public good -- reciprocal responsibilities of science and society -- access to benefits of research -- effects of current models on innovation -- scientific progress -- broader issues -- global nature of modern science and innovation -- principles, policy considerations and progress -- alternative models for protecting innovation -- assessing innovation


models -- need to account for global dynamics -- responses to the Manifesto -- knowledge sharing as a critical component of IP rights -- compulsory licensing -- financial benefits to universities of patenting activity -- argument that pharmaceutical R&D would collapse without patents.

Subject: Manchester Manifesto Group

Subject: Intellectual property--social aspects

Subject: Innovation (Technological)--social aspects

Subject: Patents--social aspects

Subject: Public interest

SNIPER No.: 2013/00965

Author: Jain, D. (Dipak)

Author: Conley, James G.

Added author: Insead

Title: Patent expiry and pharmaceutical patent opportunities at the nexus of pricing and innovation policy

Source: INSEAD Working Papers. 2012/89/MKT, 2012.

Summary: Pharmaceutical patent expiry -- pricing -- innovation policy -- literature review -- ground rules of pharmaceutical competition -- economic and legal perspectives -- pharmaceutical marketing models -- case studies -- AstraZeneca, Prilosec and Nexium -- priming the promotion pump -- generic manoeuvring for entry -- AstraZeneca use of 'sandwich' approach -- Eli Lilly,

Prozac and Zyprexa -- guidance for pharmaceutical patent manufacturers -- suggestions for future research.

Subject: Patent expiry--pharmaceutical industry

Subject: Intellectual property management--pharmaceutical industry

SNIPER No.: 2013/02708

Author: Allison, John Robert, 1948-

Author: Tiller, Emerson H.

Author: Zyontz, Samantha

Author: Bligh, Tristan

Title: Patent litigation and the internet


General Note: Originally published in: Stanford Technology Law Review, Vol. 3, 2012, pp. 1-35.

Summary: Patents on methods of doing business on the Internet (Internet patents) -- analysis of patent infringement litigation -- used both univariate comparisons and multiple regression techniques -- key findings -- Internet patents and their two subtypes, broad Internet business models and narrower Internet business techniques, were litigated at a far higher rate than other non-Internet patents (NIPs) -- Internet patents were between 7.5 and 9.5 times more likely to end up in infringement litigation, depending on the model used -- Internet patents on business models were litigated at a significantly higher rate than those on business techniques -- across both

Internet patents and NIPs, patents issued to small entities, especially individuals and small businesses, were much more likely to be litigated than those issued to large entities -- suggested further research




Subject: Internet

SNIPER No.: 2013/01347

Author: Wang, Shyh-Jen

Title: Patent portfolios for biotech inventions

Source: Nature Biotechnology. Vol. 31 No. 6, June 2013, pp. 501-503.

Summary: Patenting in the biotechnology industry -- strategies for patent portfolios -- maximising portfolios -- case studies -- cell-mediated immunity (CMI) -- inflammatory bowel disease (Crohn's disease and ulcerative colitis) -- derivatives of 2-benzamido-5-nitro-thiazole -- effects of recent court cases on broad patent scopes.

Subject: Intellectual property management--biotechnology industry

Subject: Patents--biotechnology industry

SNIPER No.: 2013/02704

Author: Tran, Sarah

Title: Patent powers


General Note: Originally published in: Harvard Journal of Law & Technology, Vol. 25 No. 2, Spring

2012, pp. 609-673.

Summary: Leahy-Smith America Invents Act -- key reforms to US patent system -- comprehensive analysis of how the Act transforms the U.S Patent and Trademark Office's authority -- power dynamic between the courts and the Agency -- need for new structure for judicial review -- proposal for framework that could promote agency accountability, certainty, and separation of powers.

Subject: United States. Leahy-Smith America Invents Act

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

SNIPER No.: 2013/02395

Author: Wendlandt, Dalila Argaez

Author: Tassel, Joseph Van

Title: Patent protection for human genes ends in the US


Summary: In Myriad the Supreme Court excluded naturally occurring DNA, such as genes, from the scope of patent protection -- not yet clear what impact the decision will have and that very uncertainty is fuelling concern throughout the medical and biotech industries.

Subject: Patentability--case law--United States


SNIPER No.: 2013/00577

Author: Srinivasan, Ravi


Author: Newman, Alastair

Title: Patent protection for new uses of know drugs


Summary: New medical uses of known drugs -- fragmented global patent protection for pharmaceuticals and biotechnology inventions -- protection for more incremental developments -- dosage regimes -- mode of administration -- targeting different aetiology -- patient groups.

Subject: Swiss-type claims

Subject: Patents--pharmaceutical industry

Subject: Patents--biotechnology industry

Subject: Pharmaceuticals

SNIPER No.: 2013/02728

Author: Abrams, David S.

Author: Akcigit, Ufuk

Author: Popadak, Jillian A.

Title: Patent value and citations: creative destruction or strategic disruption

Source: PIER Working paper. No. 13-065, 2013.

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

General Note: Also published as Research Paper (University of Pennsylvania Law School,

Institute for Law and Economics), no. 13-23, 2013.

General Note: Also published as NBER (National Bureau of Economic Research) Working Paper, no. 19647, November 2013.

Summary: Valuable patents are cited more -- this view has become standard in the empirical innovation literature -- NPE-derived dataset with patent-specific revenues find that the relationship of citations to value in fact forms an inverted-U, with fewer citations at the high end of value than in the middle -- the value of patents is concentrated in those at the high end, this is a challenge to both the empirical literature and the intuition behind it -- attempts to explain this relationship with a simple model of innovation, allowing for both productive and strategic patents -- evidence of greater use of strategic patents where it would be most expected -- among corporations, in field of rapid development and in more recent patents and where divisional and continuation applications are employed -- findings have important implications for our basic understanding of growth, innovation and intellectual property policy.




SNIPER No.: 2013/02634

Author: Kapoor, Rahul

Author: Karvonen, Matti

Author: Kassi, Tuomo

Title: Patent value indicators as proxy for commercial value of inventions



232.

Summary: Theoretical analysis of patent value as perceived by different stakeholders in the innovation lifecycle -- data is collected using semi-structured interviews with inventors, technology transfer personnel, patent attorneys, consultants and examiners -- views are presented for the most common patent value indicators -- a value indicator framework is developed for different stages in the patenting procedure -- contributes to a better understanding of value determinants' impact on the value of patent rights -- results indicate that different value indicators are perceived differently by various stakeholders -- more robust indicators can be developed by combining market data and customer knowledge.



SNIPER No.: 2013/02412

Author: Tuck, Emma

Title: Patentees cannot claim patent infringement damages for a patent which is later revoked


807.

Summary: Patent infringement -- Virgin Atlantic Airways Limited v Zodiac Seats UK Limited -- res judicata doctrine prevents re-litigation and multiple trials over the same issue -- Unilin Beheer BV v

Berry Floor NV -- Virgin held a patent over a reclining seat which converts into a flat bed -- Zodiac held to have infringed and ordered to pay damages -- Zodiac had opposed the patent at the

European Patent Office (EPO) -- claims of the patent were later revoked and Zodiac argued that

Virgin were no longer entitled to damages -- Court of Appeal disagreed but upon Appeal to the

Supreme Court Zodiacs appeal was allowed -- Supreme Court decided that the case law behind the Unilin principle had been wrongly decided -- law of res judicata clarified -- concurrent court cases and the danger of bifurcation.

Subject: Damages--case law--United Kingdom

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

Subject: Patent litigation--United Kingdom

SNIPER No.: 2013/02632

Author: Suzuki, Hideaki

Author: Oda, Tetsuaki

Title: Patenting or not patenting?: an empirical analysis of the strategic intellectual property management by Japanese firms


200.

Summary: Differences between products invention, process invention and process invention or products -- considers the presence or absence of direct infringement by making a comparison with the patented inventions to obtain the allegedly infringing product and analysing them -- statistical court data -- datasets from the Japan Patent Office's, called 'Survey of intellectual property activities' -- analyses the relationship between profitability and know-how or patent application -- considers the direction Japanese firms should aim for intellectual property management.

Subject: Intellectual property management--Japan

Subject: Intellectual property systems--Japan


SNIPER No.: 2013/02729

Author: Constand, Stephanie

Title: Patently a problem?: human gene patenting and its ethical and practical implications

Source: University of Sydney Law School Legal Studies Research Paper. No. 13/75, October

2013.

Summary: Renewed interest in the issue of gene patenting -- recent decisions of both the

Supreme Court of the United States and the Federal Court of Australia regarding the patentability of isolated genetic material -- Cancer Voices Australia v Myriad Genetics Inc -- upheld the validity of a patent over the isolated BRCA1 gene -- highlighted the wider implications of gene patenting within Australia -- legal issues arising from this judgment -- 'manner of manufacture' requirement for patentability -- analysis of the ethical consequences of gene patenting -- impact of the monopolistic market control that is facilitated by patents on the delivery of biogenetic healthcare services, industry investment and the dissemination of research results -- community concerns regarding limitations in access to genetic testing and treatment -- suggested ways to overcome this.

Subject: Human genome--patentability

Subject: Patenting of life forms

Subject: Ethics

SNIPER No.: 2013/02753

Author: Harris, Sonia

Title: The Patents Act 2013 (NZ), software patent reforms and Trans-Tasman implications

Source: Internet Law Bulletin. Vol. 16 No. 8-10, December 2013, pp. 190-193.

Summary: Reforms to the legislative framework for patent acquisition and protection in New

Zealand -- the New Zealand computer programs exemption -- computer programs "as such" not patentable in New Zealand -- what types of software inventions are likely to be patentable following commencement of the exemption provision -- how computer programs are treated under

Australia's patent legislation -- how internet-based software innovations likely to be treated in New

Zealand -- how will the developments in New Zealand impact on Australia patent jurisprudence -- appeal outcome in Research Affiliates may offer some well-needed edification.

Subject: Intellectual property systems--reform--New Zealand

Subject: Patent processing--law and legislation--Australia

Subject: Patent processing--law and legislation--New Zealand

SNIPER No.: 2013/02459

Author: Hu, Ruifa

Author: Wang, Xiaobing

Author: Huang, Jikun

Author: Cai, Jinyang

Title: Patents and China's research and development in agricultural biotechnology

Source: Nature Biotechnology. Vol. 31 No. 11, November 2013, pp. 986-988.

Summary: Survey of China's R&D in genetically modified (GM) crops -- study assessing Chinese scientist's knowledge of patents -- awareness of patent status of research tools and materials --


use of external research tools, materials and genes -- survey results suggests that scientists' knowledge and behaviour related to intellectual property rights (IPRs) in public agricultural R&D reflect their organisations' mandates -- Chinese scientists in public sector are more familiar with

IPRs -- infringements of IPRs still occur -- measures taken by Chinese government to manage the challenge of IPRs issues in the GM Special Program (GMSP)

Subject: Patents--agriculture industry--China

Subject: Intellectual property awareness--science and research industry--China

SNIPER No.: 2013/02494

Author: Cunningham, Sean C.

Title: Perfect model?


Summary: Cost of patent litigation is out of hand -- most expensive items -- attorney's fees, expert witness costs and e-discovery vendors -- Federal Circuit Advisory Council may have come up with a vehicle to control the cost of these three line items -- "A Model Order Limiting Excess Patent

Claims And Prior Art" -- primary goal in developing the order, to control the unreasonable cost of patent litigation -- strikes a fair balance by imposing limitations on both the patentee and the alleged infringer -- how it works -- key benefits of the model.

Subject: Patent litigation--costs

Subject: Patent litigation--management

SNIPER No.: 2013/02514

Author: Samuel, Gerald

Title: The perfect partnership?

Source: Intellectual Property Magazine. November 2013, p. 48.

Summary: Trans Pacific Partnership Agreement (TPPA) -- mooted by the United States on the back of Asia-Pacific Economic Cooperation (APEC), in order that a regional free trade agreement

(FTA) be negotiated among some of the APEC counties -- aims to liberalise trade and include commitments beyond those currently established under the World Trade Organization (WTO) -- position of the Office of the United States Trade Representative (USTR) on the TPPA, is that the agreement will reinforce the existing Trade Related Aspects of Intellectual Property Rights (TRIPS) obligations -- in Malaysia, non-governmental organisations (NGOs) and public interest groups have raised concerns over various aspects of the TPPA -- particularly pharmaceutical patents -- USTR's proposed provisions would forbid pre-grant oppositions in TPP countries -- data exclusivity -- proposals that may affect copyright law.

Subject: Draft Trans-Pacific Partnership Agreement

Subject: Free trade--Pacific Area

SNIPER No.: 2013/02707

Author: Rantanen, Jason A.

Title: Peripheral disclosure


General Note: Originally published in: University of Pittsburgh Law Review, Vol. 74 No. 1, Fall

2012, pp. 1-45.


Summary: Requirement that inventors disclose their inventions in return for a patent -- primary justification of the patent system -- limitations of conventional disclosure theory -- criticisms of the theory -- patents do not convey useful technological information -- inventors do no consult patents to obtain technical know-how -- theory of peripheral disclosure -- other disclosures of information that would not occur in the absence of a patent system -- scientific publications -- product marketing -- creation of self-disclosing inventions -- litigation -- licensing -- dissemination of technology -- implications of the theory -- response to criticism of the patent system -- addressing some of the weaknesses of conventional disclosure theory -- tool for understanding impacts of patent legislation -- changes to novelty rules -- creation of a prior user defence

Subject: Patent disclosure--analysis

SNIPER No.: 2013/00586

Author: Daley, Dianne

Author: Foga, Nicole

Title: Pharmaceutical companies score another victory as Pfizer loses appeal


Summary: Pharmaceutical patent infringement -- Jamaica -- Pfizer Ltd v. Medimpex Jamaica Ltd.,

NMF Pharmaceuticals Ltd. and Lasco Distributors Ltd. -- background to the case -- appeal and counter appeal -- Court of Appeal decision -- ongoing appeal to Judicial Committee of the Privy

Council.

Subject: Patent infringement--pharmaceutical industry--Jamaica

Subject: Pharmaceutical industry--case law--Jamaica

SNIPER No.: 2013/02402

Author: Beckett, Nick

Author: Pountney, David James

Title: Pharmaceutical compulsory licenses in emerging markets: necessity or threat?


Summary: Legal framework for compulsory licensing -- requirements of the Agreement on Traderelated Aspects of Intellectual Property Rights (TRIPS) -- Doha Declaration -- compulsory licensing of pharmaceuticals treating serious diseases -- situation in India -- generic companies can request compulsory licences from the independent patent controller -- licensing of Bayer's

Nexavar drug -- clause to prevent evergreening in India's patent law -- concern other countries may follow India's example and issue compulsory licences -- situation in China -- revised legislation strengthened compulsory licensing framework -- whether developing counties will begin to routinely use compulsory licences

Subject: Compulsory licensing--pharmaceutical industry--India

Subject: Compulsory licensing--pharmaceutical industry--China

SNIPER No.: 2013/02155

Author: Quirk, Andrew

Author: Mirandah, Denise

Title: Pharmaceutical patents in Singapore


Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 6, June-July 2013, p. 56.

Summary: AstraZeneca not getting all its own way in asserting a Singapore patent against Sanofi-

Aventis Singapore -- Sanofi's application to the Health Sciences Authority of Singapore for a product licence to allow Sanofi to market a competing product -- Sanofi's application for further and better particulars from Astra of how it alleged Sanofi's product infringed Astra's patent -- facts of the case -- analysis of the decision -- practical significance

Subject: Patent infringement--pharmaceutical industry--Singapore

Subject: Pharmaceuticals--case law--Singapore

SNIPER No.: 2013/02680

Author: Nie, Kevin

Title: The plight of merchandising rights in China


August 2013, pp. 29-43.

Summary: Merchandising rights -- China -- what merchandising rights are -- nature and types of merchandising rights -- commercial value of fictional characters -- inadequacies of current Chinese legal protections -- civil law -- copyright -- trade marks -- patents -- anti-unfair competition -- selecting appropriate protection paths -- breakthroughs in judicial practice -- Ultraman Tiga copyright dispute -- James Bond 007 trade mark dispute -- Liu Xiao Ling Tong (Monkey King) portrait case -- Yao Ming personality rights and unfair competition disputes.

Subject: Personality rights--China

Subject: Intellectual property licensing--China

Subject: Intellectual property infringement--China

SNIPER No.: 2013/02695

Author: Li, Celia Y.

Author: Tai, Guo

Title: Policies, changes and responses: discussion on the Third Amendment of China's

Trademark Law



Summary: Trade mark law reform -- China -- background to the amendment -- guidelines for the amendment -- coordination with international conventions and treaties -- needs arising from economic development -- amendments to the law -- scope of registrability -- clarification of timeframes -- simplification of application process -- bad faith opposition -- protection of unregistered marks -- trade marks versus business names -- well-known marks -- AIC actions -- infringement remedies -- punitive damages -- statutory damages -- burden of proof -- tips for foreign enterprises -- trade mark registration -- evidence collection -- preparation of contractual documents.


Subject: Trade mark systems--reform--China

SNIPER No.: 2013/02488

Author: Hagedorn, Mark A.


Title: Post-Therasense: the inequitable conduct defence


Summary: United States District Court of California decision in Kim Laube & Co v Wahl Clipper

Corp -- Laube engaged in inequitable conduct in procuring his patent -- inequitable conduct --

Therasense, Inc v Becton, Dickinson and Co. -- post-Therasense and the Laube decision -- successful defence of inequitable conduct in the future.

Subject: Legal defences--United States


SNIPER No.: 2013/02696

Author: Xie, Lijia

Author: Xu, Weikang

Title: Preemptive trademark registration of cartoon characters: legal protection of foreign cartoon character licensing in China



Summary: Trade mark protection of cartoon characters -- China -- registration of foreign properties by Chinese enterprises -- filing oppositions within the opposition period -- relative and absolute grounds for removing registrations -- ex officio removal -- injunctive relief from trade mark litigation based on conflict of IP rights.

Subject: Trade mark registration--China

Subject: Trade mark cancellation--China

SNIPER No.: 2013/02421

Author: Meale, Darren

Title: Premier League 1, Internet pirates 0: sports streaming website the latest to be blocked


823.

Summary: For the first time Section 97A blocking injunctions have been used by the sports industry to protect broadcast rights from a streaming website -- The Football Association Premier

League Ltd v British Sky Broadcasting Ltd and others -- s97A of the United Kingdom's Copyright,

Designs and Patents Act 1988 (CDPA) -- High Court can order Internet Service Providers (ISPs) to block subscribers from accessing infringing sites -- firstRow1.eu -- FirstRow not involved in litigation and UK ISPs did not appear -- orders sought decided by judge without a hearing -- matters needed to be established for block -- were the ISPs 'service providers' -- do the users and/or operators of FirstRow infringe copyright? -- do the users and/or operators use the ISPs' services to infringe? -- were the ISPs aware of the infringement? -- copyright infringements by

FirstRow and its users -- other section 97A injunction applications -- low-cost and speed a feature of the injunctions.

Subject: Intellectual property enforcement--case law--United Kingdom

Subject: Carriage service providers--United Kingdom

Subject: Piracy--culture and entertainment industry--United Kingdom

SNIPER No.: 2013/02692


Author: Yuan, Xiuting

Title: Problems in judicial protection of foreign corporate names



Summary: Corporate names -- China -- history and development of corporate names -- legal foundations -- elements of protection for Chinese translation of foreign business names -- requirement for well-known status -- conflict between registered trade marks and business names.

Subject: Commercial names--China

Subject: Trade marks--China

SNIPER No.: 2013/02749

Author: Ullrich, Hanns


Title: The property aspects of the European Patent with Unitary Effect: a national perspective for a

European prospect


13-17, 15 April 2013.

General Note: Also published in: I. Govaere, D. Hanf (eds.): Scrutinizing Internal and External

Dimensions of European Law (Les dimensions internes et externs du d roit européen à l’épreuve),

Liber Amicorum Paul Demaret, Brussels 2013, p. 481-.

Summary: Unitary patent -- Europe -- markets and market rules for patents -- markets for trade in patents -- rules for unitary patents as property -- indirect discrimination against non-European applicants -- discrimination against applicants in EU Member States not participating in enhanced cooperation.

Subject: Community Patent


Subject: Property law--Europe

SNIPER No.: 2013/02693

Author: He, Yuan

Author: Lu, Ping

Author: Ling, Zongliang

Title: Protectability of distinctive localized well-known product get-up



Summary: Get-up of well-known products -- free riding on New Balance "N" branding on running shoes -- China -- Quanzhou Niubanlun Sporting Goods Co. Ltd. v. New Balance Athletic Shoe, Inc.

-- facts of the case -- court judgments -- analysis of the decision -- whether protection should be available for localised get-ups -- justification for legal protection of trade dress -- response by opponents -- cope of legal protection for get-ups.

Subject: Trade dress--case law--China


Subject: Manufacturing and processing industry--case law--China


SNIPER No.: 2013/02756

Author: Ruiz Muller, Manuel



Title: Protecting shared traditional knowledge: issues, challenges and options

Source: Issue Paper (International Centre for Trade and Sustainable Development). No. 39,

October 2013.

Summary: Traditional knowledge -- overview of international and national policy and legal efforts -- prevailing trends in TK protection -- nature and features of traditional knowledge -- challenge of implementing prior informed consent -- consulting principles in the context of shared and widely distributed TK -- policy and legal options.

Subject: Traditional knowledge

SNIPER No.: 2013/02153

Author: Lightowlers, Jenni

Title: Protecting the dots, spots and bold colours of Australia's indigenous people


Summary: Protection of indigenous intellectual property in Australia -- need to enact more than a voluntary Code of Conduct -- limited ability of the Courts to extend the notions of statutory regimes to offer protection -- insufficient protection -- need for Australia to enact laws which acknowledge, respect and afford legal protection to traditional knowledge

Subject: Traditional cultural expressions--Australia

Subject: Indigenous issues in intellectual property--Australia

SNIPER No.: 2013/02683

Author: Gui, Meph Jia

Title: Protecting unregistered trademarks from preemptive registration in China: protection under

Article 31 of the Trademark Law


August 2013, pp. 60-63.

Summary: Unregistered trade marks -- protection against preemptive registration by third parties --

China -- registration through improper means -- unregistered marks already in use -- defining what is demonstrably influential -- whether preemptive registration is only prevented for the same goods.

Subject: Unregistered trade marks--China

Subject: Trade mark registration--China

SNIPER No.: 2013/02659

Author: Harris, Sonia

Title: Proving "use as a trade mark" in the domain name context: key principles and evidentiary requirements

Source: Internet Law Bulletin. Vol. 16 No. 7, November 2013, pp. 162-166.


Summary: Over view of the concept of "use as a trade mark" -- importance of evidence to support trade use of all registered marks -- standard of proof: prior use applications and opposition proceedings -- recent case law where trade use in the domain name context has been considered -

- opposition by Telstra Corporation to registration of "Next IP Distribution" filed by Next IP

Distribution Pty Ltd -- Edgetec International v Zippykerb (NSW) Pty Ltd -- opposition by Chirstou to registration of Wagging Tails filed by Tonch Pty Ltd -- opposition by Dot Easy Australia Pty Ltd to registration of trade mark application DOTEASY filed in the name of Doteasy Technology Inc --

Application by Mackay Airport Pty Ltd for registration of word mark "Mackay Airport" -- opposition by 1800-FLOWERS.COM, Inc to application under s 92 of the Trade Marks Act 1995 (Cth) by

Flowerscorp Pty Ltd to remove trade mark: 1800-FLOWERS Logo -- alternative causes of action and remedial relief -- common law passing off -- misleading and deceptive conduct.

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

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

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

SNIPER No.: 2013/02487

Author: Higer, David W.

Author: Goryunov, Eugene

Title: Questions remain over identifying 'real' parties-in-interest


Summary: America Invents Act -- created new post-grant challenge proceedings at the United

States Patent and Trademark Office (USPTO) -- post-grant review, inter partes review (IPR) and covered business method review -- each post-grant challenge is governed by a statute, a set of

USPTO rules, and the USPTO Trial practice Guide -- identification of who is a real party-in-interest is an important issue -- remains in a state of flux -- key consequences flow from being a real partyin-interest or privy of a petitioner -- decisions from the Patent Trial and Appeals Board (PTAB) -- ruling on who is a real party-in-interest or privy in the IPR context -- summaries of PTAB decisions.

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

SNIPER No.: 2013/02751

Author: Audretsch, David B.

Author: Feldman, Maryann P.

Title: R&D spillovers and the geography of innovation and production

Source: American Economic Review. Vol. 86 No. 3, June 1996, pp. 630-640.

Summary: Examines the spatial distribution of innovative activity and the geographic concentration of production in the United States -- why innovative activity in some industries tends to cluster geographically more than in other industries -- suggests that the location of production is more concentrated spatially -- may be geographic boundaries to information flows or knowledge spillovers, particularly tacit knowledge, among the firms in an industry -- empirical evidence suggests that, even after controlling for the degree of geographic concentration in production, innovative activity tends to cluster more in industries where knowledge spillovers play a decisive role -- an obvious complication in testing for this link is that innovative activity will be more geographically concentrated in industries where production is also geographically concentrated, simply because the bulk of firms are located within close proximity.

Subject: Large scale enterprises--research

Subject: Innovation (Technological)--management


Subject: Industrial research and development

SNIPER No.: 2013/02387

Author: Milone, Cheryl

Title: The real problem is patent quality, not NPE's


Summary: Non-practising entities -- patent owners that do not make or sell products -- United

States patent system -- patent trolls which manipulate the patent litigation process with poor quality patents to exterior nuisance settlements from businesses that are unable to unwilling to pay the cost of standing up to them in court -- prior art governing patent quality -- high invalidity rate -- ratio of assignments to patents in the US -- ratio of assignments and licences in the UK -- litigation of patented inventions 1800-1860 -- legal fallout for inadequate prior art searches.

Subject: Patent trolls--United States

Subject: Dispute resolution

SNIPER No.: 2013/02727

Author: Fontana, Roberto

Author: Nuvolari, Alessandro

Author: Shimizu, Hiroshi

Title: Reassessing patent propensity: evidence from a data-set of R&D awards 1977-2004

Source: Department of Economics School of Economics and Management Technical University of

Lisbon working paper. No. 09, 2013.

Summary: Exploratory study comparing systematically patented and unpatented innovations over the period 1977-2004 across industrial sectors -- main data source is the R&D 100 Awards competition organized by the journal Research and Development -- since 1963, the magazine has been awarding this prize to the 100 most technologically significant new products available for sale or licensing in the year preceding the judgments -- products winners of the R&D 100 awards competition are matched with USPTO patents -- examines the variation of patent propensity across different contexts (industries, geographical areas and organizations) -- findings are compared with previous assessments of patent propensity based on several sources of data.



Subject: Industrial research and development--statistics

SNIPER No.: 2013/02677

Author: Gurfinkel, Daniel

Author: Köster, Christian

Author: Walker, John

Title: Recent changes in international IP protection: Europe, the United States and Australia/New

Zealand in comparative perspective


2013, pp. 74-77.


Summary: Changes to international intellectual property systems -- Europe -- unitary European patent -- consequences for patent application drafting -- United States -- move toward exclusively online system for filing and managing trade marks -- changes to patent law from America Invents

Act -- Australia -- Raising the Bar Act amendments -- inventive step -- patent specifications -- reduced timeframes -- presumption of registrability for trade marks -- trade mark opposition -- New

Zealand -- adoption of absolute novelty standard for patents -- exclusion of software patents -- accession to Madrid protocol.

Subject: Intellectual property systems--Europe

Subject: Intellectual property systems--United States

Subject: Intellectual property systems--Australia

Subject: Intellectual property systems--New Zealand

SNIPER No.: 2013/00587

Author: Amaro, Juan Carlos

Author: Chagoya, Héctor

Title: Recent developments in clinical data exclusivity


Summary: Data exclusivity -- pharmaceuticals and biosimilars -- Mexico -- history evolution of data exclusivity regime -- new Guidelines for the Protection of Confidential Information of Medicines containing Pharmachemicals as a New Chemical Entity -- what to expect.

Subject: Data exclusivity--Mexico

Subject: Pharmaceuticals--Mexico

SNIPER No.: 2013/02740

Author: Cho, Hee-Jae

Author: Pucik, Vladimir

Title: Relationship between innovativeness, quality, growth, profitability and market value

Source: Strategic Management Journal. Vol. 26, No. 6, June 2005, pp. 555-575.

Summary: Study examining the relationship between innovativeness, quality, growth, profitability, and market value at the firm level -- from a resource-based view of a firm and organizational learning, innovation and quality literature -- proposes the innovativeness, quality, performance model, which describes how a firm's capability to balance innovativeness with quality drives growth and profitability, and in turn drives superior market value -- results of structural equation models indicate innovativeness mediates the relationship between quality and growth -- quality mediates the relationship between innovativeness and profitability -- both innovativeness and quality have mediation effects on market value -- both growth and profitability have mediation effects on market value -- implications for theories and practices are discussed.



SNIPER No.: 2013/02673

Author: Tan, Emily


Title: The relevance for Chinese enterprises of the new 'European Patent Package": interview with Professor Manuel Desantes, former Vice-President of EPO


2013, pp. 58-61.

Summary: European patent system -- relevance for Chinese industries -- why 'European patent with unitary effect', not 'unitary patent' -- advantages and disadvantages of the new system --

Unified Patent Court (UPC) -- whether new system will be cheaper and more reliable -- when new patent system will come into force -- transitional periods -- opt out provisions -- advice for Chinese enterprises -- involvement in China by Professor Desantes.

Subject: Desantes Real, Manuel--interviews

Subject: Unified Patent Court--interviews

Subject: Intellectual property offices staff--interviews--Europe

Subject: Patent systems--interviews--China

SNIPER No.: 2013/02510

Author: Van Schalkwyk, Herman

Title: Renewable energy and the South African patent landscape


Summary: Electricity generation in South Africa -- almost exclusively takes place in coal fired power stations -- environmental impact has forced the government to look to alternative sources of energy and particularly renewable energy -- main focus of government in the development of renewable energy -- solar -- wind and tidal energy -- biofuels.

Subject: Environmental issues in intellectual property--utilities supply industry--South Africa

Subject: Patent applications--South Africa

SNIPER No.: 2013/02724

Author: Australia. Parliament. Joint Standing Committee on Treaties

Title: Report 126: treaty tables on 21 November 2011 : Anti-Counterfeiting Trade Agreement

(Tokyo on 1 October 2011)

Source: 3D Printing: a Patent Overview. 2013.

Summary: Purpose of the report -- conduct of the Committee's review -- the anti-counterfeiting trade agreement (ACTA) in context -- reasons for Australia to take the proposed treaty action -- obligations -- implementation -- context for the negotiation of TRIPS -- national interest analysis -- clarity of terms -- 'intellectual property', 'piracy' and of 'commercial scale' -- copyright -- intellectual property -- patents -- criminal measures -- negotiation process and consultation -- ACTA treaty -- current status of ACTA -- list of recommendations -- IP Australia's witnesses -- represented by Ms

Tanya Duthie, Mr Ian Goss and Ms Vanessa Huntley.

Subject: Intellectual property--treaties

Subject: International trade

SNIPER No.: 2013/02699

Author: Kim, C. Leon

Title: Resolving the bifurcated trial dilemma between infringement and scope in Korea



Summary: IP related disputes in Korea heard through two separate routes -- scope confirmation trial (SCT) where alleged infringing party or owner of patent seeks ruling that the alleged infringing product/process falls outside the scope of a patent claim -- goes through the first route of Korean

Intellectual Property Office (KIPO) Board of Trials to Patent Court to Supreme Court -- patent infringement action goes through the second route of District Court to High Court to Supreme Court

-- bifurcated adjudication system creates problems for courts and the parties -- hypothetical scenario showing patentee's dilemma -- Korean Supreme Court decision on this issue -- practical consequences of final Trial Board decision -- potential problems and contradictions of the SCT regime -- legislative reform needed

Subject: Legal procedure--Korea

Subject: Patent infringement--Korea

SNIPER No.: 2013/02422

Author: Meale, Darren

Title: Rihanna's face on a T-shirt without a licence?: no, this time it's passing off


825.

Summary: High Court found passing off in a case between fashion chain Topshop and pop celebrity Rihanna -- Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) & Another -- no distinct

'image right' in English law -- tort of passing off can be used to protect the image of celebrities --

Robyn Fenty aka Rihanna -- image of Rihanna's face printed on a T-shirt -- Rihanna sued for passing off -- evidence -- the law behind passing off and false endorsement -- passing off proved by establishing that three elements are present -- goodwill and reputation present -- misrepresentation -- damage caused to goodwill -- significance of decision.

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

Subject: Personality rights--case law--United Kingdom

SNIPER No.: 2013/02418

Author: Clark, Birgit

Title: Rintisch revisited: Bundesgerichtshof decides PROT II


817.

Summary: Use of variant marks and the protection of a family of marks -- Bundesgerichtshof

(BGH) Case I ZR 84/09-PROTI II -- relation between Article 10(1) Directive 2008/95 and Article

26(3) German Trade Mark Act -- genuine use of a trade mark -- legal context -- Rintisch dispute --

PROTI, PROTIPLUS and Proti Power trade marks held by Mr Rintisch -- word trade mark registration for Protifit held by Mr Eder -- Court of Justice of the European Union (CJEU) decision --

BGH decision -- one off use of a variant mark no longer enough to qualify as genuine use of a core trade mark -- BGH remitted the case for appeal -- disputed issue with a growing case law history.

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

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

SNIPER No.: 2013/02651

Author: Biggs, Ella


Author: Diwell, Kylie

Title: A role for fair use in Australia, maybe?


Summary: Australian Law Reform Commission recommends a broad fair use exception be introduced into Australia's Copyright Act -- growing significance of user-generated content -- usergenerated content in Australia -- the proposals -- fair use exception should assist practitioners in advising clients whether creating and sharing user-generated content will infringe copyright -- applying copyright law to user-generated content -- transformative use development of fair use internationally -- Canadian Copyright Act under legislative reform -- what the proposals may mean for content creators and their lawyers.

Subject: Australia. Copyright Act 1968

Subject: Fair use (Copyright)--reform--Australia

Subject: Copyright--law and legislation--Australia

SNIPER No.: 2013/02754

Author: Bartels, Anja

Author: Starkie, Steven

Title: RPL Central Pty Ltd v Commissioner of Patents

Source: Internet Law Bulletin. Vol. 16 No. 8-10, December 2013, pp. 194-196.

Summary: Appeal from an opposition decision of the Australian Patent Office -- opposition to an innovation patent in the name of RPL Central Pty Ltd (RPL) was allowed on the basis that the claims do not define a manner of manufacture within the meaning of s6 of the Statute of

Monopolies of 1623.2 -- Federal Court upheld the appeal and found that all claims relate to a manner of manufacture -- a business method or process may be patentable if the method or process is implemented in a computer system -- claims are to be considered as a whole -- decision was inconsistent with Australian authority to disregard claimed features and determine whether what remains is a manner of manufacture -- awaiting further decisions in the field of computerimplemented inventions by the Full Federal Court.

Subject: IP Australia

Subject: Patentability--case law--Australia

Subject: Patents--law and legislation--Australia

Subject: Business methods--Australia

SNIPER No.: 2013/02734

Author: Aylen, David

Author: Rawal, Bhavya

Title: Russia's new IP court: a great leap forward



Summary: Inauguration and commencement of the new Intellectual Property Rights Court (IP

Court) in Moscow, Russia -- jurisdiction and judges of the IP Court -- Russia's new IP Court operates as a division under the umbrella of the Russian Arbitrazh (Commercial Court) system -- operates in some situations as a court of first instance and in other situations as an appellate court

-- levels of appeal -- transition period -- expected benefits of a specialised IP court -- comparison of

Russian IP Court with specialised IP Courts in other countries.


Subject: Patent litigation--procedure--Russia

Subject: Legal jurisdiction--Russia

SNIPER No.: 2013/02730

Author: Barresi, Veronica

Title: The scope of CTM injunctions: constitutional and practical aspects


Summary: Territorial application of remedies granted for the infringement of Community trade marks (CTMs) -- whether the geographical scope of injunctive relief granted for CTM infringement, as adopted by the EU legislator and interpreted by the European Court of Justice (CJEU), could be a workable model for guaranteeing legal certainty as well as the smooth operation of market rules.

Subject: Community Trade Mark

Subject: Trade mark infringement

Subject: Damages

SNIPER No.: 2013/02493

Author: Newman, David L.

Title: The selection process


Summary: Inventors and patent holders have a handful of choices for transferring the monetising technology -- current monetisation methods -- private negotiations -- litigation -- traditional patent infringement with contingent fee arrangements -- new contingent fee arrangements for patent litigation -- patent pools and standards setting -- alternatives to litigation -- patent aggregators -- patent brokers -- 'alternative licensing resolution' (ALR) auction steps.


Subject: Patents--management

SNIPER No.: 2013/02694

Author: Tan, Emily

Title: Sharing and learning: interview with Colin Birss, Justice of the High Court of Justice of

England and Wales



Summary: Interview with Justice Colin Birss -- how intellectual property rights are protected in the

United Kingdom -- discouraging effect of high litigation costs -- number of patent county courts

(PCCs) and annual case load -- UK practice on preliminary injunctions -- demonstrating an arguable case -- adequacy of damages awards -- reparations for incorrect grant of preliminary injunctions -- enforcement of preliminary injunctions -- business strategies for Chinese businesses operating in the UK.

Subject: Birss, Colin--interviews

Subject: Intellectual property systems--United Kingdom

Subject: Injunctions--United Kingdom


SNIPER No.: 2013/02491

Author: Guthrie, Robert

Title: Shooting for gold

Source: Intellectual Property Magazine. October 2013, p. 67.

Summary: Golden Balls Ltd v Office for Harmonisation in the Internal Market -- application to register 'Golden Balls' as two separate Community trade marks (CTMs) -- Intra Presse opposed the CTM applications, relying on its earlier CTM for 'Ballon D'Or' -- argued that there was a likelihood of confusion between the two marks -- Opposition Division at OHIM rejected the oppositions in their entirety -- Board of Appeal overturned those findings for many of the goods and services covered by the Golden Balls mark -- concluded that there was a likelihood of confusion -- found the marks were conceptually identical or at the least conceptually extremely similar --

General Court has now annulled the Board of Appeal's decisions -- a weak degree of conceptual similarity -- linguistic difference -- consumers do not automatically translate foreign language marks into their own language.

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

Subject: Confusing similarity

SNIPER No.: 2013/00575

Author: Wild, Joff

Title: A slowly turning tide


Summary: Intellectual property value -- recognition of IP value by investment community -- slow uptake by corporates -- patent auctions and other opportunities.


Subject: Investment

SNIPER No.: 2013/00704

Author: Laursen, Lucas

Title: Sluggish generics entry prompts calls for European patent reform

Source: Nature Medicine. Vol. 15 No. 11, November 2009, p. 1239.

Summary: Access to generic medicines -- Europe -- anticompetitive business practices by originator pharmaceutical companies -- delays by generic manufacturers -- reverse payments --

European Commission proposals -- US Federal Trade Commission (FTC) investigations.

Subject: Pharmaceuticals--Europe

Subject: Competition (Economics)--pharmaceutical industry--Europe

Subject: Intellectual property abuse--pharmaceutical industry--Europe

SNIPER No.: 2013/02675

Author: Wang, Yigang

Author: Fan, Li

Title: Some thoughts on the double patenting exception and the equitable estoppel



2013, pp. 66-70.

Summary: Invention and utility model patents -- China -- ban on double patenting -- ability to apply, but not be granted, both types of patent -- exception where utility model patent application is cancelled before standard patent is granted -- equity and fairness -- legal environment -- legislative purpose of exception -- Article 9 of the Patent Law and Article 41 of the Implementing Rules -- conclusions and recommendations.

Subject: Patent applications--China

Subject: Minor patents--China

SNIPER No.: 2013/02511

Author: Grobbelaar, Stefan

Author: Grobbelaar, Sara S.

Title: South African energy technologies within reach


Summary: Improving cost competitiveness for renewable energy technologies (RET) brings with it a range of investment opportunities -- cost reductions in wind and solar are expected to lead to the wider roll-out of such technologies -- stage of development and technology lifecycle of various

RETs has implications for the nature of government support -- implications for industry investment in terms of commercialisation -- opportunity in South Africa -- investment opportunities -- intellectual property protection in Africa and South Africa -- technology transfer in South Africa -- towards industry development in South Africa.

Subject: Utilities supply industry--South Africa

Subject: Investment--South Africa

SNIPER No.: 2013/02697

Author: Van Schalkwyk, Herman

Title: South African functional design protection for Chinese utility models



Summary: Utility models and functional designs -- South Africa -- aesthetic and functional designs

-- South African claim priority based on Chinese utility model design filing date -- value of South

African designs for Chinese utility model rights owners.


Subject: Industrial designs--South Africa

SNIPER No.: 2013/02685

Author: Lin, Bin

Author: Yu, Feng

Title: Statutory comparison of examinations of utility model for conspicuous substantive defects and of invention patent


August 2013, pp. 67-69.


Summary: Utility model examination -- China -- defects in subject matter, written description and lack of necessary technical features -- differences in subject matter examination for utility models and invention patents -- written description -- genus versus species -- functional limitation -- examination of dependent claims -- technical features in claims.


Subject: Patent examination--China

SNIPER No.: 2013/02508

Author: Prinsley, Mark

Title: A sticky subject: additive manufacturing and IP


Summary: Additive manufacturing -- 3D printing and analogous technologies have become mainstream -- implications of growth of this type of manufacturing -- growing interest in intellectual property rights protection for the technology -- 3D printing in the renewable industry -- production of solar panels -- possible to manufacture high quality low-volume products economically without the use of a large manufacturing plant -- intellectual property protection -- exhaustion of rights -- easier to reproduce products protected by trade mark rights

Subject: Intellectual property rights--manufacturing and processing industry

Subject: Innovation (Technological)

SNIPER No.: 2013/02682

Author: He, Yuan

Author: Chen, Luyang

Title: The study of whether spillover use of registered trademarks constitutes infringement


August 2013, pp. 56-59.

Summary: Trade mark infringement through spillover use -- grey legal areas -- analysing spillover use -- need to treat trade marks on a case-by-case basis when determining infringement.

Subject: Trade mark use--China

Subject: Trade mark infringement--China

SNIPER No.: 2013/02664

Author: Zhong, Hua

Title: Study on harmonising design patent affirmation and infringement standards in China


Summary: Designs patents -- China -- novelty and inventiveness -- prior art -- identical or substantially identical features -- affirmation and infringement standards -- design examination standards in Guidelines for Patent Examination -- need for amendment of Chinese design law.

Subject: Industrial design novelty--China

Subject: Industrial design originality--China

Subject: Industrial design examination--China

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


SNIPER No.: 2013/02669

Author: Nie, Kevin

Title: Suggestions for the trademark law amendments


2013, pp. 16-18.

Summary: Reform of Chinese Trademark Law -- draft for public comment -- basic provisions -- definition of a trade mark -- rights of trade mark owners -- bad faith registration -- granting process

-- trade mark opposition Trademark Office reviews -- narrowing of scope for opposition -- wellknown marks -- unauthorised use of well-known marks -- misleading the public -- application of dilution standards.


Subject: Trade mark owners' rights--China

Subject: Trade mark opposition--China

Subject: Famous trade marks--China

SNIPER No.: 2013/02154

Author: Green, Stuart

Title: Sunny Roo 'deceptively similar' to Sunny Boy, says Australian court


Summary: Federal Court of Australia decision in SMA Solar Technology v. Beyond Building

Systems (No. 5) [2012] FCA 1483 -- BBS's SUNNY ROO trade marks deceptively similar to SMA's

SUNNY BOY trade mark registration -- passing off -- misleading and deceptive conduct -- whether goodwill in the name -- accessorial liability -- interaction between the Trade Marks Act 1995 (Cth), the common law tort of passing off and the 'misleading and deceptive conduct' and the 'knowingly concerned' provisions of the Australian Consumer Law

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

Subject: Confusing similarity--case law--Australia

Subject: Competition law--Australia

Subject: Passing-off--Australia

SNIPER No.: 2013/02679

Author: Li, Doris

Title: The sunset of Adivon


August 2013, pp. 24-27.

Summary: Trade mark dispute between Adidas and Adivon -- China -- Adivon as a low end copycat of Adidas -- facts of the case -- solving disputes through business -- business risks associated with free riding on well-known marks.

Subject: Trade mark infringement--retail industry--China


Subject: Famous trade marks--case law--China


SNIPER No.: 2013/02705

Author: Rantanen, Jason A.

Author: Petherbridge, Lee

Title: Therasense v. Becton Dickinson: a first impression


General Note: Originally published in: Yale Journal of Law & Technology, Vol. 14, 2012, pp. 226-

265.

Summary: En banc decision of the United States Court of Appeals for the Federal Circuit in

Therasense v. Becton Dickinson -- inequitable conduct -- analysis of law and policy issues raised -how the policy of Therasense is to shift economic rents from the public and the patent office to the patent bar and those who seek patents -- results in serious efficiency problems -- implications for patent quality, patent litigation and patent practitioners -- whether the case will really change case outcomes -- whether it will solve the problem of applicant overdisclosure -- what the case might reveal about the "new" Federal Circuit

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

Subject: Patent disclosure--United States

SNIPER No.: 2013/02668

Author: Zhang, Guangliang, 1970-

Title: Thoughts on effect of patent protection in China with analysis of some important issues involved in amendment to Chinese patent law


Summary: Need for amendment of Chinese patent law -- effects of patent protection in China -- evidence in patent proceedings -- patent enforcement -- costs and damages -- effects of patent enforcement -- important issues -- time for invalidation decisions to take effect -- handling of wilful, collective and repeated infringements -- provision of accounts by infringers and consequences for failure to provide -- punitive damages for wilful infringement.

Subject: Patents--reform--China

Subject: Patent infringement--China

SNIPER No.: 2013/02691

Author: Nie, Kevin

Title: TIPR: vigorously expanding the new mode of technology transfer



Summary: Patent auctions -- China -- Tianjin Institute of Pharmaceutical Research (TIPR) -- promoting industrialisation of research -- managing corporate IP -- trialling pharmaceutical patent auctions.

Subject: Zou, Meixiang--interviews





SNIPER No.: 2013/02392

Author: Clover, Sara-Jayne

Title: Today and tomorrow in the IP market

Source: Intellectual Asset Management. No. 61, September-October 2013, p. 73-78.

Summary: IP Business Congress -- interviews with a number of delegates at the 2013 event --- single biggest issue currently facing -- considering the reasons to be positive about the IP market today -- what reasons do you have to worry -- what IP issues will delegates be discussing in 2014.


SNIPER No.: 2013/02635

Author: Nikzad, Rashid

Title: Trademark treaties and international trade


246.

Summary: Analyses the impact of joining the Madrid System on the number of trademark applications and the level of international trade of signatory countries -- description of the Madrid

System -- analysis of the number of trademark applications of selected countries suggests that the share of foreign applications via the Madrid System to total foreign applications increases to a limiting percentage three to five years after joining the Madrid System and then remains relatively stable -- finds that joining the Madrid System has a positive impact on the imports of signatory countries.

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

Protocols, etc., 1989 June 27

Subject: International trade marks

Subject: Trade mark systems

SNIPER No.: 2013/02726

Author: Jefferson, Osmat

Author: Köllhofer, Deniz

Author: Ehrich, Thomas H.

Author: Jefferson, Richard A.

Title: Transparency tools in gene patenting for informing policy and practice

Source: Nature Biotechnology. Vol. 31 No. 12, December 2013, pp. 1086-1093.

Summary: Gene patenting under intense scrutiny since the US Supreme Court Myriad decision -- many patent offices worldwide cannot access sophisticated search tools and databases to access patent-disclosed sequences -- not generally available to the public -- need for precise analysis of patents that disclose and reference genetic sequences -- data sets, standards compliance and analytical tools need to be improved -- data sets and analytical tools must be made openly accessible to provide basis for effective decision making and policy setting -- support biological innovation -- Cambia have developed PatSeq toolkit -- web resource The Lens -- web-based platform that allows data aggregation, analysis and visualization in an open, shareable facility -- potential for extension of this platform to global patent jurisdictions -- results of global survey of patent offices show more needs to be done to make this data freely available for aggregation.

Subject: Patenting of life forms


Subject: Human genome

Subject: Gene sequences

Subject: Patent searching

SNIPER No.: 2013/02703

Author: Smith, Joel

Author: Burke, Sarah

Title: UK Court of Appeal overturns Cadbury trade mark for colour purple, confirms invalidity of

Mattel scrabble tile mark


Summary: Judgments from England and Wales Court of Appeal -- Societé des Produits Nestlé SA v. Cadbury UK Limited -- JW Spears & Sons Limited & Ors v. Zynga Inc -- cases dealt with similar point of principle -- whether there was "a sign" registrable as a trade mark in accordance with the requirements of Article 2 of the Trade Marks Directive 2008/95/EC as interpreted in the judgments of the Court of Justice of the European Union (CJEU) -- facts of the cases -- Court of Appeal decisions -- business impact of the decisions -- protection for specific distinctive colours still available but will be more heavily scrutinised -- brand owners should avoid use of the word

'predominant' in trade marks applications for colours -- precision needed in drafting applications -- graphic representations for trade marks should be clear and precise

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

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

Subject: Trade mark registrability--Europe

SNIPER No.: 2013/01202

Author: Véron, Pierre

Title: Unified patent court: at last!


Summary: European unitary patent and Unified Patent Court -- latest developments -- issues under negotiation -- official schedule beyond 2013.

Subject: Unified Patent Court


SNIPER No.: 2013/01580

Author: Huggett, Brady

Title: University biotech patenting


Summary: Most active universities in biotechnology patenting -- patents granted covering the period 2008-2012 -- data from the US Patent and Trade Mark Office (USPTO) and the European

Patent office (EPO) -- biotech patenting on the rise, driven by United States trends.

Subject: Education and training industry--trends

Subject: Patents--trends


SNIPER No.: 2013/02416

Author: Macedo, Charles R.

Author: Goldberg, David P.

Title: US Supreme Court addresses patent eligibility of isolated DNA and cDNA in Myriad V


813.

Summary: The US Supreme Court ruled that isolated naturally occurring human DNA sequences cannot be patented but that manipulated DNA sequences can -- in addition the Court decided that a patent may be obtained for methods of producing isolated DNA -- Association for Molecular

Pathology v Myriad Genetics, Inc -- Myriad V -- Myriad's patents for the use of BRCA1 and BRCA2 genes to diagnose breast cancer -- challenge by medical associations, doctors and patients and various public groups -- legal history -- basic genetics behind case -- analysis of decision -- other patent eligible and ineligible biotechnology cases -- decision overturns decades of patent office practice but offers the possibility of patenting the manipulation of DNA sequences -- decision unlikely to be the last word on patent eligibility.



SNIPER No.: 2013/01048

Author: Heberden, Tim

Added author: Griffith Hack Consulting

Title: The value of Australian intellectual property

Source: Griffith Hack Research Study. February 2013.

General Note: A research study carried out by Griffith Hack Consulting.

Summary: Intellectual property value -- Australia -- questions for boards and investors -- research findings -- gap in balance sheets relating to intangibles -- off-balance sheet IP -- commercial implications -- investor perspectives -- maximising the value of technology and brands -- managing value at risk -- economic and legal characteristics of IP -- research methodology.

Subject: Value of intellectual property--Australia

SNIPER No.: 2013/02393

Author: Porter, Stevan

Author: Rakiec, Michelle

Title: Viewing patents through a financial lens


Summary: Growing importance of patents in business -- financial, technological and legal assets -- end practice patents tend not to be managed efficiently managed -- patents as financial properties

-- financially focussed patent portfolio management -- uncertainty and fluctuations in patent value -- patent cluster value correlation -- scenario modelling -- comprehensive managerial perspective.



SNIPER No.: 2013/02539


Author: Viscounty, Perry J.

Author: Barry, Jennifer L.

Author: Troutman, David D.

Author: Henderson, Tim B.

Title: Watch your mark: navigating the prohibitions on immoral, scandalous and disparaging trademarks


Summary: Obviously vulgar marks are unlikely to be registered -- this area of trade mark law is fraught with grey areas and close calls -- consider potential interpretations of, and public reaction to, a mark -- Lanham Act prohibition -- immoral or scandalous marks -- disparaging marks -- United

States Patent and Trademark Office's (USPTO) initial burden of proof regarding unregistrability -- if the mark is published, standing is broadly construed to allow oppositions -- context is key -- even well-meaning applicants must carefully evaluate possible disparaging meanings -- a sense of humour will not save a scandalous mark -- possible tactics.

Subject: Trade mark registrability--case law

Subject: Trade mark registration

SNIPER No.: 2013/02747

Author: Kur, Annette


Title: What kind of use is this?: open questions after ONEL/OMEL


13-15, 1 October 2013.

General Note: A slightly different and abridged version was published in: IPRinfo 3/2013. German translation published in: Zeitschrift für Immaterialgüter-, Informations- und Wettbewerbsrecht ; revue du droit de la propriété intellectuelle, de l'information et de la concurrence.

Summary: Trade mark use and ability to oppose national registrations -- use of Community Trade

Marks (CTMs) to oppose national trade mark applications -- Europe -- Leno Merken/Hagelkruis

Beheer case (ONEL/OMEL) -- what is considered genuine use by Benelux IP Office and Hungarian

IP Office -- potential to compromise ability of small and medium enterprises (SMEs) to defend their marks and goods -- interpretation of Article 15 of the Community Trade Mark Regulation (CTMR) by European Court of Justice (ECJ) -- lack of clear direction from ECJ -- requirement that territorial borders be disregarded when determining genuine use -- implications for OHIM practice.

Subject: Community Trade Mark--case law--Europe

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

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

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

SNIPER No.: 2013/02587

Author: Gearon, Patrick

Title: When is a threat unjustified?: Sudarshan Chemical Industries Ltd v Clariant Produkte

(Deutschland) GmbH



Summary: Court of Appeals recent decision in the case of Sudarshan Chemical Industries Ltd v

Clariant Produkte (Deutschland) GmbH -- wrongful threats regime in patent cases -- whether an actionable threat must be communicated to the person threatened or whether such a threat remained actionable in circumstances where the threat had only been communicated to a third party -- use of the Australian model of providing immunity to legal advisers may be worth emulating in England.

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

Subject: Intellectual property abuse

SNIPER No.: 2013/02489

Author: Morrison, Alan J.

Author: Ruzich, Richard

Title: Where state and federal interests collide


Summary: US states have long maintained standards of conduct for their attorneys -- federal government has exclusive domain over creating and enforcing the patent laws -- in Gunn, the

Supreme Court unanimously held that a state law claim alleging legal malpractice in the handling of a patent case need not be brought in federal court -- the patent suit -- the malpractice suit in

Texas -- Supreme Court's analysis in Gunn -- Gunn's impact.

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

Subject: Patent attorneys--United States

SNIPER No.: 2013/02681

Author: Dang, Penfei

Title: Wireless power transmission: a preliminary probe into WPT-related patents and standards of China, the United States and Japan


August 2013, pp. 44-49.

Summary: Wireless power transmission (WPT) standards -- Qi standard -- developments of WPTrelated standards -- Chinese progress with WPT standards -- WPT-related patent landscaping and countermeasures -- analysis of WPT-related patent applications -- China -- Japan -- United States -

- Europe -- patent licensing policies for main technical standards -- Wireless Power Consortium

(WPC) -- Alliance for Wireless Power (A4WP).

Subject: Standards (Technical)--utilities supply industry--China

Subject: Patents--utilities supply industry--China

SNIPER No.: 2013/02394

Author: Elkington, Bill

Title: Working together: open innovation and IP management


Summary: Open innovation -- round table discussion -- Bob Held -- Paul Bernal -- Tom Major -- what does open innovation means -- benefits of open innovation -- policies and processes developed to encourage and manage open innovation -- should collaborative development be an integral part of an effective open innovation strategy -- recommend that organisations deals with


the issue of contamination when sharing proprietary information back and forth -- ownership rights and the possible threats of joint ownership in collaborative developments -- role of the IP management organisation in encouraging and implementing open innovation policy and process -- which metrics could encourage open innovation.

Subject: Technology transfer


Subject: Innovation (Technological)

SNIPER No.: 2013/00780

Author: Russé, Béatrix de

Author: Hall, Bronwyn H.

Author: Jacob, Robin

Author: Molnár, István, Dr

Author: Mu, Rongping

Author: Nagaoka, Sadao, 1952-

Author: Boztosun, N. Ay şe Odman

Author: Peters, Ruud J.


Author: Overwalle, Geertrui van

Author: Harhoff, Dietmar

Author: Thumm, Nikolaus, 1967-

Added author: European Patent Office. Economic and Scientific Advisory Board

Title: Workshop on patent quality

Source: Workshop on Patent Quality. 2012.

General Note: "Initiated by the EPO Economic and Scientific Advisory Board, 7 May 2012,

European Patent Office, Munich".

Summary: Patent quality -- Europe -- definition of patent quality -- quality and patent value -- measuring patent quality -- improving patent quality -- pre-filing and pre-grant phases -- post-grant

-- cross-cutting issues.

Subject: Quality management

Subject: Patents


SNIPER No.: 2013/00782








Author: Boztosun, N. Ayşe Odman







Title: Workshop on patent thickets

Source: Workshop on Patents Thickets. 2013.

General Note: "Initiated by the EPO Economic and Scientific Advisory Board, 26 September 2012,

Leuven".

Summary: Patent thickets -- measuring patent thickets -- types of complexity and their costs -- uncertainty factors and freedom to operate -- search costs -- cost of legal action -- improvements to granting process -- improvements in dispute resolution -- improvement in standards IP management -- transparency -- market-based solutions.

Subject: Patent applications--Europe

Subject: Patent licensing--Europe

Subject: Patent pools--Europe

Subject: Standards (Technical)--Europe

SNIPER No.: 2013/00781







Author: Boztosun, N. Ay şe Odman







Title: Workshop on pricing and fees

Source: Workshop on Pricing and Fees. 2012.

General Note: "Initiated by the EPO Economic and Scientific Advisory Board, 8 May 2012,

European Patent Office, Munich".


Summary: Patent fees and pricing -- Europe -- institutional issues -- comparing existing fee policies -- stakeholder perspectives on role of patent fees and pricing -- areas for further investigaton -- cross-cutting issues.

Subject: Patent fees--Europe

SNIPER No.: 2013/02733

Author: Fink, Carsten

Author: Khan, Mosahid, 1969-

Author: Behrens, Vanessa

Author: Lamb, Ryan

Author: Le Feuvre, Bruno

Author: Miguelez, Ernest

Author: Raffo, Julio

Author: Zhou, Hao

Added author: World Intellectual Property Organization

Title: World intellectual property indicators 2013

Source: World Intellectual Property Indicators. 2013.

General Note: Eighth report in a series.

Summary: Annual international IP statistical survey -- World Intellectual Property Organisation

(WIPO) -- highlights -- IP filings have rebounded sharply in 2013 -- now exceeding pre-global economic crisis rates of growth -- patent filings grew by 9.2% in 2012, the fastest growth in the past

18 years -- industrial designs grew by 17%, the highest growth on record -- number of classes in trade mark applications grew by 6% -- continued rapid filing growth in China -- residents of China accounted for the largest numbers of applications filed throughout the world for the four types of IP rights (patents, utility models, trade marks and industrial designs) -- overview of IP activities -- patents, utility models and microorganisms -- trade marks -- industrial designs -- plant variety protection -- statistical tables

Subject: Patent Co-operation Treaty (1970 June 19)

Subject: Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977 April 28)

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

Subject: Hague Agreement Concerning the International Registration of Industrial Designs (1999

July 2)

Subject: Intellectual property--statistics


Subject: Minor patents--statistics

Subject: Trade marks--statistics

Subject: Industrial designs--statistics

Subject: Plant breeder's rights--statistics


© Commonwealth of Australia 2014

Published by: IP Australia

Discovery House, 47 Bowes Street, Phillip, ACT 2606

1300 65 10 10 www.ipaustralia.gov.au

SNIPER Bulletin January 2014

SNIPER Bulletin

Searchable Networked Intellectual

Property Electronic Resource

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SNIPER Bulletin January 2014

SNIPER Bulletin

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